Ex parte Line

Board of Patent Appeals and Interferences

Feb 23, 1999

08511310 (B.P.A.I. Feb. 23, 1999)

Application for patent filed August 4, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RONNIE G. LINE
_____________
Appeal No. 98-1427
Application 08/511,3101
______________
ON BRIEF
_______________
Before COHEN, MEISTER and ABRAMS, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claim 1.
Claims 2 through 6, 8 through 10, and 15, the only other
claims remaining in the application, have been indicated to be
allowable by the examiner.
Appeal No. 98-1427
Application No. 08/511,310
2
Appellant’s invention pertains to an artificial snake or
eel-like fish bait. In the “BACKGROUND OF THE INVENTION”
section of the specification (page 1), appellant lists prior
art patents and characterizes the prior art as evidencing an
abundance of artificial fish lures which have been
designed such that the lure moves through the water
in an undulating manner so as to simulate the
swimming movement of a worm, snake or eel
(specification, page 2).
A stated object of the present invention is to “provide an
artificial fish bait which provides simulated appearance and
action to that of a live bait in order to effectively lure or
attract fish” (specification, page 3). A further
understanding of the invention can be derived from a reading
of claim 1, a copy of which appears in the APPENDIX to the
reply brief (Paper No. 11).
As evidence of anticipation, the examiner has applied the
document specified below:
Pond 5,136,801 Aug. 11,
1992
The following rejection is before us for review.
Appeal No. 98-1427
Application No. 08/511,310
3
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Pond.
The full text of the examiner's rejection and response to
the argument presented by appellant appears in the first
office action and answer (Paper Nos. 3 and 10), while the
complete statement of appellant’s argument can be found in the
main and reply briefs (Paper Nos. 9 and 11).
OPINION
We are constrained to reverse the rejection of claim 1
under 35 U.S.C. § 102(b), and enter a new ground of rejection,
infra, for the reason which follows. As explained below, our
reversal is procedural in nature, and is not based upon an
assessment of the applied prior art relative to the claimed
subject matter, i.e., the merits of the examiner’s rejection.
When claimed subject matter is indefinite, an evaluation
thereof relative to prior art is inappropriate. See In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) and
In re Steele, 305 F.2d 859, 862-863, 134 USPQ 292, 295 (CCPA
Appeal No. 98-1427
Application No. 08/511,310
To be definite under 35 U.S.C. § 112, second paragraph,2
claims must set and circumscribe a particular area with a
reasonable degree of precision and particularity. Claim
language must be read in light of a specification, as it would
be interpreted by one of ordinary skill in the art. See In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
4
1962). In the present case, a reading of claim 1 reveals to
us that this claim is indefinite within the meaning of 35
U.S.C. 112, second paragraph. The specific instances of
indefiniteness are set forth in a new ground of rejection,
infra. Since claim 1 is
indefinite, it follows that this panel of the board is unable
to
address the merits of the rejection of claim 1 under 35 U.S.C.
§ 102(b) based upon the patent to Pond.
NEW GROUND OF REJECTION
Under the authority of 37 CFR 1.196(b), this panel of the
board enters the following new ground of rejection.
Claims 1 through 6, 8 through 10, and 15 are rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite. 2
Appeal No. 98-1427
Application No. 08/511,310
In the recitation “snake or eel-like” fish bait of3
claim 1 (line 1) we understand “eel-like”, in light of the
underlying disclosure (page 2), to denote, e.g., a worm.
5
Independent claim 1 addresses an artificial snake or eel-
like fish bait to be pulled through water in one direction3
which comprises, inter alia, an elongated flexible material
having a unitary head, body, and tail, with the tail being a
flattened web-like strip substantially transverse to the
direction pulled through the water so as to retain, in a
static position, a
normally S-shaped curve extending above the head, but capable
of substantially undulating in one direction when pulled
through water.
Independent claim 8 is drawn to an artificial fish bait
comprising, inter alia, an elongated flexible material having
a unitary head, body, and tail, with the body and a flattened
web-like tail being formed so as to retain, in a static
position, a normally S-shaped curve extending above the head.
Claim 3, dependent from claim 8, specifies that the body
Appeal No. 98-1427
Application No. 08/511,310
6
is a flattened web-like strip.
As explained below, claims 1, 3, and 8, in particular,
are considered to be indefinite under the second paragraph of
35 U.S.C. § 112, since the metes and bounds thereof are not
defined with a reasonable degree of precision and
particularity.
Claim 1 (lines 4 through 8) expressly sets forth the
“tail” as a “flattened” web-like strip that retains, in a
static position, a normally “S-shaped curve”. However, as
depicted, for example, the tail is clearly not a flattened
strip. Thus, the characterization of the strip as being
flattened is simply inaccurate (indefinite). Further, the
recitation of both a “flattened” strip and an “S-shape curve”
adds an inconsistency which renders the claim indefinite in
meaning.
Claim 1 (lines 5 and 6) recites a “web-like” strip. It is
not apparent what is intended by the recitation of “web-like”,
i.e., even if a particular meaning were attributed to the term
web, the underlying disclosure does not inform us as to what
would be like a web relative to the claimed “strip”. Thus,
Appeal No. 98-1427
Application No. 08/511,310
See Ex parte Remark, 15 USPQ2d 1498, 1500 (BPAI 1990).4
7
this language renders claim 1 indefinite in meaning.4
Claim 1 (line 8) sets forth that, in a static position, a
normally S-shaped curve is “extending above the head”.
However, as disclosed (depicted in Figures 1, 2, and 10), only
water is above the head of the fish bait. Thus, the claim
language is indefinite (inaccurate).
Claim 8 (lines 3 and 4) expressly sets forth the “tail”
as being a “flattened” web-like tail that retains, in a static
position, a normally “S-shaped curve”. However, as depicted,
for example, the tail is clearly not flattened. The
“flattened” recitation is therefore an inaccurate (indefinite)
characterization. Further, the recitation of both a
“flattened” strip and an “S-shape curve” adds an inconsistency
which renders the claim indefinite in meaning.
Claim 8 (line 3) recites a “web-like” tail. It is not
apparent what is intended by the recitation of “web-like”,
i.e., even if a particular meaning were attributed to the term
Appeal No. 98-1427
Application No. 08/511,310
8
web, the underlying disclosure does not inform us as to what
would be like
a web relative to the claimed “tail”. Thus, this language
renders claim 1 indefinite in meaning.
Claim 8 (lines 4 and 5) sets forth that, in a static
position, a normally S-shaped curve is “extending above the
head”. However, as disclosed (depicted in Figures 1, 2, and
10), only water is above the head of the fish bait. Thus, the
claim language is indefinite (inaccurate).
Claim 3 recites a “flattened” and “web-like” strip. The
terms in quotes render claim 8 indefinite in meaning for the
reasons given above relative to the same terms appearing in
claims 1 and 8.
In summary, this panel of the board has reversed the
rejection of claim 1 under 35 U.S.C. § 102(b) as being
anticipated by Pond (procedural reversal). Additionally, we
have introduced a new ground of rejection in accordance with
37 CFR 1.196(b).
Appeal No. 98-1427
Application No. 08/511,310
9
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 98-1427
Application No. 08/511,310
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED;
37 CFR 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 98-1427
Application No. 08/511,310
11
James R. Head
Head and Johnson
228 West 17th Place
Tulsa, OK 74119
ICC/ki