Ex Parte Hopkins

Patent Trial and Appeal Board

Aug 19, 2016

12948898 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/948,898 11/18/2010 Samuel P. Hopkins
36787 7590 08/23/2016
BL YNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
Hopkins-1001 4802
EXAMINER
CLERKLEY, DANIELLE A
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
08/23/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@BLKLawGroup.com
cbelleci@BLKLawGroup.com
blynn@BLKLawGroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL P. HOPKINS
Appeal 2014-007976 1,2
Application 12/948,898
Technology Center 3600
Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6, 8-15, and 21-23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant's Specification ("Spec.," filed Nov. 18,
2010), Appeal Brief ("Appeal Br.," filed Mar. 21, 2014), and Reply Brief
("Reply Br.," filed July 14, 2014), as well as the Final Office Action ("Final
Action," mailed Oct. 10, 2013) and the Examiner's Answer ("Answer,"
mailed May 13, 2014).
2 Appellant identified Samuel P. Hopkins as the real party in interest.
Appeal Br. 3.
Appeal2014-007967
Application 12/823,490
According to Appellant, "th[ e J invention relates to an improved fish
hook that has antimicrobial properties to reduce the chance of infection in
fish[] that are caught and released during the course of fishing and reduce
the chance of infection to anglers and others that may be accidentally
impaled on the hook." Spec. i-f 2. Independent claims 1 and 10 are the only
independent claims under appeal. See Appeal Br., Claims App. We
reproduced claim 1, below, as representative of the appealed claims.
Id.
1. A fish hook comprising: an eye, a shank, a bend and
at least one impaling end, and a coating including at least a binder
and an antimicrobial substance on the outer surface of at least a
portion of the least one impaling end and bend, and configured
to reduce microbial activity on the surface of the fish hook.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
Claims 1, 3, 10, and 11 under 35 U.S.C. § 103(a) as unpatentable over
Littlejohn (US 1,377,359, iss. May 10, 1921) and Burrell (US 6,723,350 B2,
iss. Apr. 20, 2004);
claims 2 and 21under35 U.S.C. § 103(a) as unpatentable over
Littlejohn, Burrell, and Shikani (US 5,762,638, iss. June 9, 1998);
claims 4, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over
Littlejohn, Burrell, and Sarangapani (US 7,381,751 B2, iss. June 3, 2008);
claims 5, 8, and 15 under 35 U.S.C. § 103(a) as unpatentable over
Littlejohn, Burrell, and Mandel (US 2002/0177863 Al, pub. Nov. 28, 2002);
claim 6 under 35 U.S.C. § 103(a) as unpatentable over Littlejohn,
Burrell, and Whiteford (US 2008/0207581 Al, pub. Aug. 28, 2008);
2
Appeal2014-007967
Application 12/823,490
claims 9 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Littlejohn, Burrell, and McNicol (US 2003/0148945 Al, pub. Aug. 7, 2003);
claim 22 under 35 U.S.C. § 103(a) as unpatentable over Littlejohn,
Burrell, Shikani, and Sarangapani; and
claim 23 under 35 U.S.C. § 103(a) as unpatentable over Littlejohn,
Burrell, Shikani, and Whiteford.
See Final Action 2-7; see Answer 2-3.
ANALYSIS
Independent claim 1 recites the following:
1. A fish hook comprising: an eye, a shank, a bend and
at least one impaling end, and a coating including at least a binder
and an antimicrobial substance on the outer surface of at least a
portion of the least one impaling end and bend, and configured
to reduce microbial activity on the surface of the fish hook.
Appeal Br., Claims App. In the Final Office Action, the Examiner finds that
T •, .i1 • 1 1• 1 .i1 1 • 1 l"9 1 1 1 1 •1 1 • T""t. 11 ' LnUeJonn msc10ses me crn1mea nsnnooK, wnue re1ymg on nurreu w
disclose the claimed coating. See Final Action 2-3. We agree with
Appellant, however, that Littlejohn discloses a surgical needle rather than a
fishhook, and, thus, the Examiner's determination that Littlejohn teaches a
fishhook is in error. See Appeal Br. 11-13; see Reply Br. 1-5.
In the Response to Argument section of the Answer, the Examiner
determines that "[i]f the prior art structure is capable of performing the
intended use, then it meets the claim." Answer 4. Even assuming that the
Examiner is correct, however, the Examiner does not provide evidence or
reasoning sufficient to convince us that Littlejohn's surgical needle is
capable of hooking a fish.
3
Appeal2014-007967
Application 12/823,490
Based on the foregoing, we do not sustain the obviousness rejection of
claim 1, or the obviousness rejections of its dependent claims 2---6, 8, and 9,
inasmuch as the Examiner does not establish that any other reference
remedies the deficiency in the rejection of claim 1. Further, independent
claim 10 recites a similar limitation, and, thus, we do not sustain either the
obviousness rejection of the independent claim or the obviousness rejections
of its dependent claims 11-15 and 21-23.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1---6,
8-15, and 21-23.
REVERSED
4