Ex Parte Lucky

Board of Patent Appeals and Interferences

May 28, 2009

11151668 (B.P.A.I. May. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAN LUCKY
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Appeal 2009-003997
Application 11/151,668
Technology Center 3600
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Decided:1 May 28, 2009
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
7-10, all the claims pending. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-003997
Application 11/151,668

STATEMENT OF THE CASE
The present invention is directed to a fishing rod holder. Claim 7 is
representative of the subject matter on appeal:
7. A fishing rod holder, comprising:
a housing having an open top end, a bottom wall spaced from said top
end and a side wall extending between said top end and said bottom wall
forming a hollow interior;
a lid fixed to said top end of said housing, said lid being formed with a
central bore and a number of circumferentially spaced outer holes located
adjacent to said side wall;
a number of tubes each having an upper end, a lower end and a hollow
interior, each of said tubes being inserted through one of said outer holes in
said lid into said hollow interior of said housing, said upper end of each tube
being connected to said lid; and
a number of fasteners each extending from said side wall of said
housing into engagement with said lower end of one of said tubes to mount
said tubes in a fixed position within said housing, each of said fasteners
extending through said hollow interior of one of said tubes at said lower end
thereof to form a rod stop which engages and supports one end of a fishing
rod.

The Examiner relies on the following evidence:
McEwen US 5,131,179 Jul. 21, 1992
Galante US Des. 328,775 Aug. 18, 1992
Fiedor US 5,971,333 Oct. 26, 1999

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over Galante, Fiedor, and McEwen.
We reverse.
ISSUE
The issue raised by this rejection on appeal is whether Appellant has
established that the Examiner erred in concluding that the combined
teachings of Galante, Fiedor, and McEwen would have suggested a fishing
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Application 11/151,668

rod holder with fasteners extending from the side wall of a housing and
engaging the lower ends of tubes to mount the tubes in a fixed position
within the housing, the fasteners extending through the hollow interiors of
the tubes to form rod stops which support the ends of fishing rods held in the
tubes.
FINDINGS OF FACT
FF1 Figure 1 of Galante’s design patent, reproduced immediately
below, illustrates an ornamental design for an angler’s bucket:

Figure 1 of Galante is a front perspective view of an angler’s bucket.
FF2 Fiedor discloses a self supporting implement stand “comprising
an outer peripheral shell frame having top and bottom surfaces disposed
thereon. The top surface has multiple openings . . . sized to receive
elongated shafts such as . . . the handles of tools, toys, [and] sporting goods”
and hold them “in the vertical position” (Fiedor, col. 1, ll. 51-58).
“[T]ubular isolation means are disposed between the top and bottom
surfaces . . . [and] are sized to conform to the multiple openings disposed in
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Application 11/151,668

the top surface and are rigidly retained between the top and bottom surfaces
so as to extend between the top and bottom surfaces in a longitudinal
direction” (id. at col. 1, ll. 60-66). The implement stand may be used alone,
or slipped into a cylindrical shell frame, which may be a rigid plastic bucket
(id. at col. 2, l. 10).
FF3 Figure 2 of Fiedor, reproduced below, is an isometric view of
the tool implement stand:

Figure 2 is “an isometric view of the tool implement stand . . . illustrating
how outer cylindrical shell frame or bucket 22 is removable and replaceable
within base 12 of tool implement stand 10” (Fiedor, col. 3, ll. 7-11).
FF4 McEwen discloses a device “which allows a fisher to have two
unattended steady fishing pole lines in the water at the same time”
(McEwen, col. 1, ll. 11-13). The device comprises:
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Application 11/151,668

[T]wo fishing pole holders which are attached on opposite sides
of a portable fish bucket. Each holder is basically a tripod with
two front legs pivotally connected by a first sleeve to a
cylindrical tube for holding a single fishing pole by its handle.
Each tube is secured at one end near to the bottom edge of the
fish bucket by a leakproof nut and bolt arrangement.

(McEwen, col. 1, ll. 56-62.)
FF5 Figure 2 of McEwen, a portion of which is reproduced
immediately below, is a perspective view of the device:

Figure 2 is a perspective view of McEwen’s device comprising a bucket 10
with “[a] pair of first sleeves 20 and 22 . . . attached to bolts 24 and 26,
respectively, which are shown protruding from tubes 16 and 18,
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Application 11/151,668

respectively” (McEwen, col. 2, ll. 32-36). “The bucket 10 also has a lid 14
which may be removed therefrom for the purpose of placing either bait or
caught fish inside” (id. at col. 2, ll. 37-39).
FF6 “The dual tubes 16 and 18 are attached upright to the bucket 10.
A pair of second sleeves 30 and 32 are slipped over upper ends of the tubes
16 and 18” (McEwen, col. 2, ll. 43-45). “The tube 16 is fastened pivotally at
its lower end by a bolt and nut arrangement 38 near to a bottom edge 11 of
the bucket 10. At its upper end, the tube 16 is open and supports a handle
portion of a conventional . . . fishing pole P” (id. at col. 2, ll. 59-63). “[T]he
tube 16 may pivot smoothly around the arrangement 38” (id. at col. 3, ll. 48-
49), to “an angle A selected by the fisher from a vertical axis Y of the bucket
10” (id. at col. 2, ll. 65-66).
The tube 16 is retained in its inclined position by the first sleeve
20 and the second sleeve 30. The first sleeve 20 is secured at a
midsection of the tube 16 by the bolt 24 that is, in turn, clamped
to two pivoable front legs 40 and 42. Together, the tube 16 and
the front legs 40, 42 form a tripod for holding the fishing pole P
by its handle at the selected angle A.

(Id. at col. 2, l. 65 to col. 3, l. 5.)
PRINCIPLES OF LAW
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). Obviousness requires a suggestion of all the elements in a claim
(CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003))
and “a reason that would have prompted a person of ordinary skill in the
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relevant field to combine the elements in the way the claimed new invention
does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
ANALYSIS
All of the claims on appeal require a fishing rod holder comprising a
bucket-like housing containing circumferentially spaced tubes, and, among
other things:
[A] number of fasteners each extending from said side wall of
said housing into engagement with said lower end of one of
said tubes to mount said tubes in a fixed position within said
housing, each of said fasteners extending through said hollow
interior of one of said tubes at said lower end thereof to form a
rod stop which engages and supports one end of a fishing rod.

(Claim 7, emphasis added.)
The Examiner concluded that it would have been obvious “to take the
device of Galante and add the lid of Fiedor, so as to allow for objects located
inside the housing to be protected and to allow for the tubes to be securely
held in place” (Ans. 4).
The Examiner acknowledges that neither Galante nor Fiedor discloses
fasteners extending from the sidewall of the housing to fix the lower ends of
the tubes within the housing and to form rod stops at the lower ends of the
tubes. However, the Examiner finds that McEwen discloses fasteners (bolt
and nut arrangements 38) which extend from the sidewall of a housing
(bucket 10) through the lower ends of tubes 16, 18, where the fasteners fix
the tubes in position and also form rod stops (Ans. 4). The Examiner
concluded that it would have been obvious for one of ordinary skill in the art
“to add the rod stops of McEwen” to Galante’s bucket, as modified by
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Application 11/151,668

Fiedor, “so as to allow for the depth of the rod into the tube to be controlled
so as to facilitate easy entry and removal of the rod from the tube” (id.).
Appellant contends that the claims require “that each of the fasteners
extends from the side wall of the housing into engagement with the lower
end of one of the tubes to mount the tubes in a fixed position within the
interior of the housing” (App. Br. 11), but McEwen’s “nut and bolt
arrangement 38 . . . mounts a tube 16 to the outside of the bucket 10” (id.).
Appellant contends that McEwen’s nut and bolt arrangement 38 “permit[s]
the tube 16 to pivot relative to the bucket 10 and then be tightened down
when a desired position of the tube 16 is obtained” (id.). Moreover,
McEwen’s tube, together with pivotable legs 40 and 42, forms a tripod “to
assist in stabilizing the bucket with the tube oriented at different angles”
(id.).
Appellant’s argument is persuasive. Even if we assume for the sake
of argument that McEwen’s fastener (nut and bolt arrangement 38) forms a
rod stop at the lower end of tube 16, we agree with Appellant that the cited
references would not have led one of skill in the art to “add the rod stops of
McEwen” to Galante’s bucket (as modified by Fiedor), which would entail
moving McEwen’s two tubes and their associated fasteners from the exterior
of the bucket to the interior. The primary purpose of McEwen’s fasteners is
to attach each of tubes 16, 18 to the outside of the bucket, and to allow each
tube to pivot into an appropriate position to act as a leg of one of two
tripods. The two tripods allow a user to have two unattended, stable fishing
pole lines in the water at the same time (FF4, FF5, FF6). Moving
McEwen’s fasteners to the interior of the bucket would defeat that purpose.
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Application 11/151,668

CONCLUSIONS OF LAW
Appellant has established that the Examiner erred in concluding that
the combined teachings of Galante, Fiedor, and McEwen would have
suggested a fishing rod holder with fasteners extending from the side wall of
a housing and engaging the lower ends of tubes to mount the tubes in a fixed
position within the housing, the fasteners extending through the hollow
interiors of the tubes to form rod stops which support the ends of fishing
rods held in the tubes.
Accordingly, the rejection of claims 7-10 under 35 U.S.C. § 103(a) as
unpatentable over Galante, Fiedor, and McEwen is reversed.

REVERSED

Ssc:

GRAY ROBINSON, P.A.
P.O. Box 2328
FT. LAUDERDALE, FL 33303-9998
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