Ex Parte Hugunin

Board of Patent Appeals and Interferences

Mar 26, 2004

09739718 (B.P.A.I. Mar. 26, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JIM HUGUNIN
_____________
Appeal No. 2004-0541
Application No. 09/739,718
______________
ON BRIEF
_______________
Before PAK, TIMM, and DELMENDO, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 18, 20 through 24 and
26 through 32, which are all the claims pending in the above-
identified application.
Claims 18 and 23 are representative of the subject matter on
appeal and read as follows:
Appeal No. 2004-0541
Application No. 09/739,718
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18. A fishing lure, comprising:
a spoonlike body portion;
at least one cavity formed in said body portion; and
a scent receiving element located in said at least one
cavity, wherein said body portion defines a plane and said
scent receiving element defines a plane, and said scent
receiving element being embedded in said body portion such
that said plane of said scent receiving element is coplanar
with said plane of said body portion.
23. A fishing lure comprising:
a body portion having an end, said end defining a
contour; and
a scent receiving element attached to and extending
from said end of said body portion, said scent receiving
element adapted to conform to the contour of said end of
said body portion.
The prior art references relied upon by the examiner are:
Walker 4,962,609 Oct. 16, 1990
Mooers 6,061,947 May 16, 2000
(Filed Jul. 21, 1999)
Monticello et al. (Monticello) 6,301,823 B1 Oct. 16, 2001
(Filed Jun. 7, 2000)
Claims 18, 20, 21, 26 and 29 through 31 stand rejected under
35 U.S.C. § 102(e) as being anticipated by the disclosure of
Mooers. Claims 18, 20, 21, 26 and 28 through 31 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by the disclosure
of Monticello. Claims 23, 24, 27 and 32 stand rejected under
35 U.S.C. § 102(b) as being anticipated by the disclosure of
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Application No. 09/739,718
1 According to page 310 of Webster’s II New Riverside
University Dictionary (1994) attached to this decision,
“coplanar” means “[l]ying or occurring in the same plane.”
2 It cannot be said that Mooers or Monticello expressly or
inherently teaches the shape and size of the scent receiving
3
Walker. Claim 22 stands rejected under 35 U.S.C. § 103 as
unpatentable over the disclosure of Mooers.
We reverse the aforementioned rejections and remand the
application to the examiner for appropriate action consistent
with the instruction below.
An anticipation under Section 102 is established only when a
single prior art reference discloses, either expressly or under
the principles of inherency, each and every element of a claimed
invention. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990); RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.), cert.
dismissed, 468 U.S. 1228 (1984).
Here, the examiner has not demonstrated that Mooers or
Monticello inherently or expressly teaches a scent receiving
element being embedded in the spoon-like body portion of a
fishing lure such that the plane of the scent receiving element
is “coplanar”1 with the plane of the spoon-like body portion as
required by claim 18.2 See also the Brief, pages 6, 9 and 10.
Appeal No. 2004-0541
Application No. 09/739,718
element which conforms exactly to the size and shape of the
cavity of the spoon-like body portion so that, upon inserting,
their every contour lies in the same plane. This “coplanar”
requirement is to prevent the scent receiving element from
interfering with “the performance of the lure.” Compare the
Answer in its entirety with the Brief, pages 6, 9 and 10,
together with the specification, page 12.
4
Nor has the examiner evinced that Moores teaches embedding the
scent receiving element in a spoon-like body portion as required
by claim 18. See also the Brief, page 6. Similarly, the
examiner has not demonstrated that Walker expressly or inherently
teaches placing a scent receiving material at the end of a body
portion of a fishing lure such that the contour of the scent
receiving material conforms to the contour of the end of the body
portion as required by claim 23. See also the Brief, page 12.
Thus, on this record, we concur with the appellant that the
examiner has not established a prima facie case of anticipation
within the meaning of 35 U.S.C. § 102. Accordingly, we reverse
the examiner’s Section 102 rejections.
We also reverse the examiner’s Section 103 rejection of
claim 22 as unpatentable over the disclosure of Mooers. On this
record, the examiner has not explained why one of ordinary skill
in the art would have been led to arrive at the above missing
features in Mooers. See the Answer in its entirety.
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Application No. 09/739,718
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As a final point, we note that Monticello teaches a fishing
lure having an absorbent material 21 corresponding to the claimed
scent receiving material embedded in a spoon-like body. See
column 2, lines 31-40 and column 4, lines 42-46, together with
Figure 1. Although Monticello is silent as to the contour of the
scent receiving material relative to the contour of the spoon-
like body (coplanar), it requires that the scent receiving
material be contained in the spoon-like body. See column 4,
lines 42-43. From our perspective, one of ordinary skill in the
art embedding the scent receiving material into the spoon-like
body would have been led to place the scent receiving material
into the spoon-like body in such a manner that the surface of the
body is continuous and does not interfere with the aerodynamic
performance of a fishing lure. In other words, it would have
been prima facie obvious to one of ordinary skill in the art to
ensure that the plane of the embedded scent receiving element is
either “coplanar” or substantially “coplanar” to the plane of the
spoon-like body of a fishing lure. One of ordinary skill in the
art would have been led to the claimed “coplanar” feature,
motivated by a reasonable expectation of successfully maintaining
the intended superior performance of an original fishing lure
design. Thus, upon return of this application, the examiner is
Appeal No. 2004-0541
Application No. 09/739,718
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advised to reopen the prosecution of this application and
determine which claims would have been obvious in light of the
teachings of Monticello.
We also note that Mooers refers to U.S. Patent No. 5,595,015
issued to Jensen on Jan 21, 1997 which is said to teach placing a
scented bait at the bottom end of the body of a fishing lure.
Thus, the examiner is to review the content of Jensen and
determine whether Jensen alone, or in combination with Walker,
affects the patentability of the subject matter defined by claim
23 and its dependent claims.
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Application No. 09/739,718
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In view of the foregoing, we reverse the examiner’s Section
102 and 103 rejections and remand the application to the examiner
to take appropriate action not inconsistent with the above
instruction.
REVERSED/REMANDED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
CKP/hh
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Application No. 09/739,718
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