Ex Parte Hreinsson et al

Patent Trial and Appeal Board

Mar 22, 2017

12602606 (P.T.A.B. Mar. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/602,606 04/05/2010 Einar Hreinsson 4952/0182PUS1 6320
60601 7590 03/22/2017
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
TSANG, LISA L
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
03/22/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EINAR HREINSSON, GEIR GGUMUND S S ON, and
HALLA JONSDOTTIR
Appeal 2015-005343
Application 12/602,606
Technology Center 3600
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
SEAN P. O’HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Einar Hreinsson et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 29—54.1 Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 1—28 have been cancelled. Br. 4.
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CLAIMED SUBJECT MATTER
Appellants’ disclosure “relates to using light to herd and/or guide
aquatic animals into an enclosure, which can be a fishing device, such as net
or traps.” Spec. 1. Claims 29 and 40 are independent. Claim 29,
reproduced below, illustrates the claimed subject matter.
29. A fishing device comprising:
a frame having a shape,
a net, which is attached to the frame and assumes the shape
of the frame to define an opening of the net at one end of the net,
and
a light source mounted on the frame, producing a light
beam which is directed only away from and forward of the net,
the frame being positioned at a front edge of the opening
of the net and sufficiently rigid to support the light source;
the light beam forming a light pattern extending away
from and forward of the net which creates a channel and repels
aquatic animals causing the aquatic animals to swim through the
channel into the opening and be caught in the net.
Br. 20 (Claims App.).
REJECTIONS
Appellants seek review of the following rejections:2
Claims 29-31, 33, 40-43, 46-48, and 50-52 under 35 U.S.C. § 102(b)
as anticipated by Conekin (US 1,138,542, issued May 4, 1915);
Claims 32 and 45 under 35 U.S.C. § 103(a) as unpatentable over
Conekin and Zabihi (US 6,449,895 Bl, issued Sept. 17, 2002);
2 The rejection of claims 29 and 40 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement, has been
withdrawn. Ans. 2—3.
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Claims 34, 35, 37, 38, 44, 49, 53, and 54 under 35 U.S.C. § 103(a) as
unpatentable over Conekin and Wigton (WO 02/089568 Al, published Nov.
14, 2002); and
Claims 36 and 39 under 35 U.S.C. § 103(a) as unpatentable over
Conekin and Patrick (US 6,203,170 Bl, issued Mar. 20, 2001).
ANALYSIS
Claims 29—31, 33, 40—43, 46—48, and 50—52 as anticipated by Conekin
Claim 29
The Examiner finds that Conekin discloses a fishing device that meets
all limitations of claim 29, including a frame (outriggers A), net B attached
to frame A, and light source 16 mounted on frame A. Final Act. 5; see
Conekin 1:60-66; Fig. 1. Appellants contend that Conekin fails to disclose
multiple limitations of claim 29. Br. 12.
First, Appellants contend that Conekin does not show “a net which
assumes the shape of the frame to define an opening of the net.” Id. The
Examiner responds that Figure 1 of Conekin shows net B attached to a frame
(tube 8) on opposite sides of net B, and net B “assumes the shape of the
frame,” at least by virtue of this attachment. Ans. 4. The Examiner adds
that this attachment also defines an opening (“near 11”) of net B at one end
thereof. Id. (citing Conekin, Fig. 1).
Appellants do not explain persuasively why net B of Conekin does not
assume the shape of the frame to define an opening of net B. Appellants’
contention amounts essentially to merely stating what claim 29 recites and
asserting generally that Conekin does not disclose the claim limitation. This
is insufficient. See 37 C.F.R. § 41.37(c)(iv) (“A statement which merely
points out what a claim recites will not be considered an argument for
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separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349,
1356 (Fed. Cir. 2011). Further, Figure 1 of Conekin shows that net B is
attached to tubes 8 and shorter lengths 10 of outriggers A. Conekin
describes that net B “is open at its forward end.” Conekin 1:61—66, Fig. 1.
Appellants do not apprise us of any error in the Examiner’s finding that
Conekin discloses “a net[] which . . . assumes the shape of the frame to
define an opening of the net,” as claimed.
Second, Appellants contend that Conekin does not disclose a “frame
at the front edge of the opening of the net.” Br. 12. The Examiner responds
that at least portions of Conekin’s frame, for example, “11” (cap 11) or
“distal edge of 10” are positioned at a front edge of the opening of net B.
Ans. 4.
Appellants do not explain persuasively why Conekin’s frame is not at
the front edge of the opening of net B. Appellants’ contention amounts
essentially to merely stating what claim 29 recites and asserting generally
that Conekin does not disclose the claim limitation. This is insufficient.
Further, Figure 1 of Conekin shows that the “front [right] edge of the
opening of the net [B]” is attached to outriggers A. See id. As shown, at
least the portion of upper outrigger A adjacent the front edge of net B (i.e., at
upper shorter length 10 or cap 11), and the portion of lower outrigger A
adjacent the front edge of net B (i.e., at lower shorter length 10 or cap 11),
can be considered “at” the front edge. Accordingly, Appellants do not
apprise us of any error in the Examiner’s finding that Conekin discloses the
limitation of “the frame being positioned at a front edge of the opening of
the net.”
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Third, Appellants contend:
The net of the present invention is mounted on a frame, which
forms the opening into the net. None of the fishing devices have
such a frame that surrounds the opening into the net and carry
the light sources so that the [sic] can form an extension of the net
and thereby broaden the zone of fishing in front of the device.
Br. 14 (emphasis added).
We note, however, that claim 29 does not recite that the net is
“mounted on a frame,” but rather, recites that the net is “attached to the
frame.” Also, claim 29 does not recite that the frame “surrounds the
opening,” or that the light sources form “an extension of the net.”
Limitations that do not appear in the claims cannot be relied upon for
patentability. In re Self 671 F.2d 1344, 1348 (CCPA 1982). Accordingly,
Appellants’ contention is not persuasive.
Fourth, Appellants contend that Conekin’s outriggers A do not “define
an opening of the net[,] nor do they form the opening into the net.” Br. 15.
However, claim 29 recites “a net, which is attached to the frame and
assumes the shape of the frame to define an opening of the net at one end of
the net.” Claim 29 also recites that attachment of the net to the frame, not
the frame itself, “define[s] an opening of the net.” Accordingly, Appellants’
contention is not persuasive.
Fifth, Appellants contend that Conekin does not disclose “a light
beam directed only away from and forward of the net.” Br. 12 (emphasis
added). In support, Appellants provide annotated Figure I (relating to
Conekin) and Figure II (relating to the present invention), and contend that
“the light source is directed forwards and towards (I) the net, but not
forward and away (II) as in the present invention.” Id. at 15 (emphasis
added).
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The Examiner disagrees with Appellants’ contention. Ans. 3.
Particularly, the Examiner construes the limitation “away from” to mean
“not towards or into (the net),” and construes the limitation “forward of’ to
mean “not behind or towards the front of (the net).” Id. The Examiner then
determines that Figure 1 of Conekin appears to disclose a light beam
(represented by dashed lines from element 14) directed only away from and
forward of the net, rather than directed towards a rear end of the net. Id. at
3^4. The Examiner adds that the light beam does not appear to penetrate the
net itself. Id. at 4.
We agree with the Examiner that Figure 1 of Conekin shows that the
light is directed “only away from and forward of’ net B. Appellants appear
to acknowledge that Conekin emits light “forward of the net.” Br. 15.
Regarding emission from light bulbs 16, Conekin discloses that “[t]he light
passing through the lenses 19 is directed diagonally across the course of the
vessel and as indicated in Fig. 1 merges into a zone in advance of the net.'”
Conekin 2:3—6 (emphasis added), Figs. 1, 2. Conekin shows that the light
emitted in advance of net B (i.e., away from and forward of net B) produces
a light zone “extending away from and forward of’ net B. Id. Fig. 1.
Conekin does not disclose that light is emitted from light bulbs 16 either
toward net B, or in a direction that is not forward of net B. Accordingly,
Appellants do not apprise us of any error in the Examiner’s finding that
Conekin discloses “a light source mounted on the frame, producing a light
beam which is directed only away from and forward of the net,” as claimed.
Sixth, Appellants contend that Conekin does not disclose “the creation
of a channel and the repelling of aquatic animals to swim through the
channel.” Br. 12. The Examiner responds that the light pattern of Conekin
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does create a “channel.” Ans. 5 (citing Conekin, Fig. 1). The Examiner
explains that the light beam of Conekin would repel aquatic animals, for
example, by blinding species not accustomed to light. Id. at 4—5. The
Examiner also determines that this does not prevent the light from also
“guiding” the animals, “because they would swim in a direction in which
they were not repelled, i.e. be guided in that direction.” Id. at 5.
Claim 29 recites that the light pattern “creates a channel and repels
aquatic animals causing the aquatic animals to swim through the channel
into the opening and be caught in the net.” Br. 22 (Claims App.). This is a
functional limitation because it defines the light beam by what it does, rather
than by what it is. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971).
Appellants have not apprised us of any error in the Examiner’s finding that
Conekin meets all the structural limitations of claim 29.
Regarding light emission by light bulbs 16, Conekin explains that:
any fish that may move into the light zone will be blinded by the
light so as not to become aware of the approach of the net and
vessel and thus dodge them. In this manner an extremely
efficient apparatus is provided which serves initially to attract the
fish and subsequently to blind them so that they may be caught
in the net.
Conekin 2:7—14, Figs. 1,2.
Although Conekin does not explicitly disclose the specific functional
language recited in claim 29, this does not defeat a finding of anticipation
because “[i]t is well settled that the recitation of a new intended use for an
old product does not make a claim to that old product patentable.” See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). When the Patent Office
“has reason to believe” that a functional limitation is inherently disclosed by
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a prior art reference, the burden shifts to an appellant to show that the
functional limitation cannot be met by the reference. Id. at 1478.
Appellants’ Specification states: “In the present context the term
‘Channel’ is a course: The channel consists of one or more restraint forming
a path into which aquatic animals may be directed.” Spec. 3. This
description does not indicate that the channel must have any particular
configuration. To the extent it is Appellants’ position that the claimed
channel should be construed as forming “an extension of the net” (see Br.
14—15), or having a particular configuration, claim 29 does not recite any
such limitations. In Conekin, fish are attracted to the light zone formed by
light bulbs 16, and move into and are blinded (repelled) by the light zone.
Conekin discloses that the light “limits” the fish “so that they may be caught
in the net.” These fish would appear to need to swim through the light zone
and the opening of net B in order for them to be caught in net B.
In view of Conekin’s disclosure, the Examiner has a reasonable basis
to believe that Conekin’s fishing device is capable of meeting the disputed
functional limitation. Consequently, the burden shifts to Appellants to show
that this limitation cannot be met by Conekin. See Schreiber, 128 F.3d at
1478. Appellants assert, “[i]f the Conekin device would be used in the
present invention it would guide all the fish away from the net.” Br. 15
(emphasis added). However, the pertinent issue is whether Conekin’s
fishing device meets the functional limitation when used as taught in
Conekin, not as used in the present invention. Appellants’ contention that
Conekin does not meet the functional limitation is not persuasive. Thus, we
sustain the rejection of claim 29 as anticipated by Conekin.
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Claims 30, 31, 33, and 51
Claims 30, 31, 33, and 51 depend from claim 29. Br. 22, 24 (Claims
App.). Appellants state generally what these dependent claims recite, but
fail to address the specific findings made by the Examiner for any of these
claims. Id. at 16—18; Final Act. 6—7. This is insufficient. See In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice
to require an applicant to identify the alleged error in the examiner’s
rejections”). As Appellants do not apprise us of any error in the Examiner’s
findings, we sustain the rejection of claims 30, 31, 33, and 51 as anticipated
by Conekin.
Claims 40—43, 46—48, 50, and 52
Claim 40 recites a method for guiding aquatic animals into a fishing
device comprising limitations similar to those in claim 29. Br. 23 (Claims
App.). Appellants rely on the arguments made for claim 29 for patentability
of claim 40. Br. 16. Accordingly, we sustain the rejection of claim 40 as
anticipated by Conekin for reasons similar to those discussed for claim 29.
For claims 41—43, 46-48, 50, and 52, which depend from claim 40,
Appellants state generally what is recited, but fail to address the specific
findings made by the Examiner for any of these dependent claims. Br. 16—
18; Final Act. 6—7. As Appellants do not apprise us of any error in the
Examiner’s findings, we sustain the rejection of claims 41—43, 46-48, 50,
and 52 as anticipated by Conekin.
Claims 32 and 45 as unpatentable over Conekin and Zabihi
Appellants do not apprise us of any error in the Examiner’s findings
for Zabihi, or in the Examiner’s reasoning for combining the teachings of
Conekin and Zabihi, but instead rely essentially on the dependency of claims
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32 and 45 from claims 29 and 40, respectively, for patentability. Br. 18. We
sustain the rejection of claims 32 and 45 as unpatentable over Conekin and
Zabihi for the same reasons discussed for claims 29 and 40.
Claims 34, 35, 37, 38, 44, 49, 53, and 54 as unpatentable over Conekin and
Wigton
Appellants do not apprise us of any error in the Examiner’s findings
for Wigton, or in the Examiner’s reasoning for combining the teachings of
Conekin and Wigton, but instead rely essentially on the dependency of
claims 34, 35, 37, 38, 44, 49, 53, and 54 from claim 29 or 40 for
patentability. Br. 19—20. We sustain the rejection of these dependent claims
as unpatentable over Conekin and Wigton for the same reasons discussed for
claims 29 and 40.
Claims 36 and 39 as unpatentable over Conekin and Patrick
Appellants do not apprise us of any error in the Examiner’s findings
for Patrick, or in the Examiner’s reasoning for combining the teachings of
Conekin and Patrick, but instead rely essentially on the dependency of
claims 36 and 39 from claim 29 for patentability. Br. 21. We sustain the
rejection of claims 36 and 39 as unpatentable over Conekin and Patrick for
the same reasons discussed for claim 29.
DECISION
The Examiner’s decision rejecting claims 29—54 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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