Ex Parte Kruger

Board of Patent Appeals and Interferences

Apr 30, 2003

09665907 (B.P.A.I. Apr. 30, 2003)

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written for publication and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte C. BAXTER KRUGER
____________
Appeal No. 2002-1969
Application No. 09/665,907
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 8, all of the claims remaining in
this application. Claims 9 through 16 have been canceled.
Appellant's invention is directed to a method of
constructing a fishing lure and, more particular, to a method of
making a life-like fishing lure having a tail slot and a nylon
hair strand tail affixed in the tail slot. Independent claim 1
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is representative of the subject matter on appeal and a copy of
that claim can be found in the Appendix to appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Wrege 1,459,042 Jun. 19, 1923
Cordell, Jr. (Cordell) 3,191,336 Jun. 29, 1965
Root et al. (Root) 4,908,975 Mar. 20, 1990
Claims 1 and 4 through 8 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cordell in view of Wrege.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cordell in view of Wrege as applied to
claim 1 above, and further in view of Root.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding those rejections, we make reference to the final
rejection (Paper No. 5, mailed August 15, 2001) and examiner's
answer (Paper No. 8, mailed March 26, 2002) for the reasoning in
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Application No. 09/665,907
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support of the rejections, and to appellant's brief (Paper No. 7,
filed January 14, 2002) and reply brief (Paper No. 9, filed
May 28, 2002) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
Independent claim 1 sets forth appellant's novel method of
constructing a fishing lure (Fig. 1) including a tail slot (54)
in the rear end of tail section (16) of the lure and a tail (12)
affixed in the slot. That method includes, inter alia, the steps
of a) providing a plurality of nylon strands; b) binding an
insert end of the strands; c) shaping the bound insert end to fit
in the tail slot; d) trimming a flared end of the strands,
opposite the insert end, into a desired shape; and e) affixing
the bound insert end in the tail slot. A description of
appellant's claimed method is set forth on pages 5 and 6 of the
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Application No. 09/665,907
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specification, wherein it is clear that the lure includes a tail
section (16) with a pre-existing tail slot (54) into which a tail
formed of nylon fibers or strands is to be mounted.
Turning to the examiner's rejection of claims 1 and 4
through 8 under 35 U.S.C. § 103(a), we note that the examiner's
position is set forth on pages 2 and 3 of the final rejection,
which has been incorporated into the examiner's answer by
reference (answer, page 3). According to the examiner, Cordell
discloses all of the steps of appellant's method set forth in
claim 1 except for using nylon strands to form the tail and
trimming a flared end of the strands opposite from the insert end
into a desired shape. Wrege is relied upon for its showing of
what the examiner urges is a "trimmed tail 6." In the examiner's
view, it would have been obvious to one of ordinary skill in the
art to provide Cordell with a trimmed tail as shown by Wrege for
the purpose of making the tail resemble the tail of a fish. With
respect to the requirement for nylon strands, the examiner takes
the position that it would have been obvious to employ nylon
since the material is based on the suitability for the intended
purpose (citing In re Leshin, 277 F.2d 197, 199, 125 USPQ 416,
417-18 (CCPA 1960)).
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Application No. 09/665,907
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The examiner's findings with regard to Cordell are set forth
as follows:
Cordell shows providing a plurality of fibers 30,
binding an insert end of the strands 31, shaping the
bound insert end to fit in the tail slot (as shown in
Fig. 6), and affixing the bound insert end in the tail
slot by casting the lead body around the bound insert
as shown in Fig.7.
Appellant contends that the examiner has mischaracterized
the Cordell patent and that Cordell does not separately bind then
shape a plurality of bound nylon strands at the bound insert end
to fit in a tail slot, and then subsequently affix the bound
insert end into the slot, as required in claim 1 on appeal. We
agree with appellant.
Cordell discloses a process of forming a fishing lure
wherein an end portion of the filament tuft (16) or (30) can be
embedded directly in the lead body (15)/(29) of the lure during
the process of molding the lure body. More particularly, the end
portion of the filament tuft which is to be embedded in the lead
body is first enclosed in a sleeve (30) or jacket (17) which can
be in the form of a metallic strip that is wrapped around the end
portion of the filament tuft (col. 2, lines 54-56). The material
of the sleeve or jacket is selected to have a melting point
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higher than that of lead, so that when the sleeve enclosed end
portion of the filament tuft is placed in a mold (Figs. 3 and 6)
and molten lead is poured around the same, the sleeve/jacket
effectively protects the filaments against heat damage and the
filament tuft becomes securely embedded in the lead body as the
latter cools. Figure 6, pointed to by the examiner, shows the
jacket or sleeve (31) inserted in a mold (32), along with the
shank (26') of a fish hook, prior to the time that molten lead is
poured into the mold via inlet (19).
In looking at Cordell, it is clear that no slot exists in a
lure body during the time that the filament tuft (16) or (30) and
jacket (17) or sleeve (31) are being assembled and formed, indeed
no lure body exists in Cordell at all at that time. Thus, there
is no step in Cordell, or need of a step, of "shaping the bound
inset end to fit in the tail slot" of a lure, as in appellant's
claim 1 on appeal. While there may be some shaping of the sleeve
(31) or jacket (17) in Cordell to ensure a proper fit in the
mold, there is no shaping of the bound insert end to fit in a
tail slot of the lure, as required in appellant's claims on
appeal. In Cordell, the molten lead conforms to the shape of
that portion of the filament sleeve or jacket in the mold and
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thereby forms around the sleeve or jacket creating a secure
embedment of the same in the lead body as the latter cools.
Thus, even if Cordell and Wrege were to be combined in the manner
urged by the examiner, the result would not be a method like that
set forth in appellant's claims 1 and 4 through 8 on appeal.
Since we have determined that the teachings and suggestions
which would have been fairly derived from Cordell and Wrege would
not have made the subject matter as a whole of independent claim
1 on appeal obvious to one of ordinary skill in the art at the
time of appellant's invention, we must refuse to sustain the
examiner's rejection of that claim under 35 U.S.C. § 103. In
addition, we observe that it follows from the above determination
that the examiner's rejection of dependent claims 4 through 8 on
the basis of the combined teachings of Cordell and Wrege also
will not be sustained.
The next rejection for our review is that of claims 2 and 3
under 35 U.S.C. § 103(a) as being unpatentable over Cordell,
Wrege and Root. We have reviewed the added reference to Root,
but find nothing therein which overcomes or provides for the
deficiencies we have noted above with regard to the basic
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combination of Cordell and Wrege. Accordingly, the examiner's
rejection of dependent claims 2 and 3 under 35 U.S.C. § 103(a)
will likewise not be sustained.
In view of the foregoing, the examiner's decision rejecting
claims 1 through 8 of the present application under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
CEF/lbg
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Application No. 09/665,907
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