Ex Parte Moffitt

Patent Trial and Appeal Board

Mar 13, 2013

12034192 (P.T.A.B. Mar. 13, 2013)

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.
12/034,192 02/20/2008 Patrick E. Moffitt MOF0004-01CT 7713
7590 03/14/2013
PATRICK MOFFITT
P.O. BOX 616
PEAPACK, NJ 07977
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
03/14/2013 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 PATRICK E. MOFFITT
____________

Appeal 2011-000313
Application 12/034,192
Technology Center 3600
____________

Before STEVEN D. A. McCARTHY, RICHARD E. RICE and
TIMOTHY O’HEARN, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patrick E. Moffitt (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to methods applicable to
recreational bait fishing and to commercial “longlining.” Spec., para.
[0002]. Claims 1 and 18 are independent. Claim 1, reproduced below, is
illustrative of the claims on appeal:
1. A method of commercial long line fishing with a
main line and a plurality of branch lines connected to the main
line, comprising:
rigging a plurality of branch lines by attaching a hook at
or near the end of each of the lines and by attaching a bait
attachment device on each of the plurality of branch lines at a
distance from the hook;
attaching bait to the bait attachment device on each of the
plurality of lines; and
attaching each of the plurality of branch lines to a main
line.
REFERENCES RELIED ON BY THE EXAMINER
Bond US 1,670,185 May 15, 1928
Allen US 2,996,827 Aug. 22, 1961
Goodman US 3,217,443 Nov. 16, 1965
Krieg US 3,421,250 Jan.14, 1969
Hague US 4,862,633 Sep. 5, 1989

THE REJECTIONS
Claims 1, 3, 5, 7, 15, 18 and 20 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Krieg.
The following claims are rejected under 35 U.S.C. § 103(a): claims 2,
8 and 19 as being unpatentable over Krieg and Hague; claim 4 as being
unpatentable over Krieg, Hague and Bond; claim 6 as being unpatentable
over Krieg and Goodman; claims 9-13 as being unpatentable over Krieg and
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Bond; claim 14 as being unpatentable over Krieg, Bond and Allen; and
claims 16 and 17 as being unpatentable over Krieg.

ANALYSIS
Claims 1, 3, 5, 7, 15, 18 and 20 – Anticipation – Krieg
Appellant argues claims 1, 3, 5, 7 and 15 as a group and claims 18 and
20 as a group; App. Br. 10-12. We select claims 1 and 18 as representative;
thus, claims 3, 5, 7 and 15 stand or fall with claim 1 and claim 20 stands or
falls with claim 18. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Krieg discloses all of the recited steps and
limitations of claims 1 and 18. Ans. 3-4. The Examiner pertinently finds
that Krieg discloses attaching a bait attachment device (Krieg’s elements 14,
18, 20, 22 or 12, 30, 32, 34) on each of two branch lines (Krieg’s elements
26 and 48) at a distance from a hook (attached at the end of each branch
line). Id. at 8 (referencing Krieg, figs. 1 and 2). The Examiner further finds
that Krieg discloses attaching bait (spinner 24) to the bait attachment device
“via latch/clasp – at 20 or 32.” Id. The Examiner finds that Krieg also
discloses attaching the plurality of branch lines to a main line 60 via
intervening components. Id. at 4.
We do not agree with Appellant’s argument that the claims require
first attaching a bait attachment device to a line and “then” attaching bait to
the bait attachment device. App. Br. 11; Reply Br. 4. Unless the steps of a
method claim actually recite or implicitly require an order, the steps are not
ordinarily construed to require one. Altiris Inc. v. Symantec Corp., 318 F.3d
1363, 1369 (Fed. Cir. 2003); Interactive Gift Express, Inc. v. CompuServe
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Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2000); see also Loral Fairchild
Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999). Here,
nothing in the language of claim 1 or claim 18 requires the recited steps to
be performed in a particular order.
We also do not agree with Appellant’s argument that “[t]he
Examiner’s Answer does not . . . clearly specify what the bait attachment
device is.” Reply Br. 4. The Examiner clearly identifies Krieg’s elements
14, 18, 20, 22 and 12, 30, 32, 34 as defining two bait attachment devices.
The first of these devices includes wire leader 14, convolutions 18, spring
latch 20 and a pair of decorative beads or spacers 22, and the second
includes wire leader 12, convolutions 30, spring latch 32 and decorative
beads or spacers 34. See Krieg, col. 2, ll. 31-36 and 40-44, fig. 1.
Appellant argues that, if items 12, 30 and 32 of Krieg are considered
the bait attachment device, then Krieg fails to teach or suggest a branch line.
App. Br. 11. Appellant also argues that Krieg does not disclose attaching a
bait attachment device on a branch line that is connected to a main line, at a
distance from the hook. Id. This argument is conclusory and does not point
to any specific error in the Examiner’s findings. In particular, this argument
does not adequately rebut the Examiner’s findings that Krieg’s elements 48
and 26 are branch lines attached to bait attachment devices at a distance
from a hook (at latches 32 and 20, respectively) and connected to main
line 60 through intervening components. See Ans. 4, 8.
Appellant additionally argues that there is no bait attachment device in
Krieg “that allows bait attached to the line to be removed” (App. Br. 11) and
that “claim 1 requires the bait to be on the bait attachment device (Reply Br.
5, emphasis added). However, claims 1 and 18 do not recite the step of
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removing bait from the bait attachment device or limit the term “bait
attachment device” to a device that allows both attachment and removal of
bait; further, claim 1 recites attaching bait “to,” not “on,” the bait attachment
device (see Ans. 8-9).
We have considered all of Appellant’s arguments. However, we are
not persuaded of any error in the Examiner’s findings with respect to claims
1 and 18. Accordingly, we sustain the rejection of claims 1 and 18 under
35 U.S.C. § 102(b) as being anticipated by Krieg. Claims 3, 5, 7, 15 and 20
fall with claims 1 and 18.
Claims 2, 8 and 19 – Obviousness – Krieg and Hague
Appellant argues that dependent claims 2, 8 and 19 are patentable
because Krieg and Hague do not individually teach or suggest the steps and
limitations of independent claims 1 and 18 and thus the combination of
Krieg and Hague does not teach or suggest those steps and limitations. App.
Br. 13-14. As discussed supra, Krieg alone discloses all of the steps and
limitations of claims 1 and 18. Accordingly, we sustain the rejection of
claims 2, 8 and 19 under 35 U.S.C. § 103(a) as being unpatentable over
Krieg and Hague.
Claim 4 – Obviousness – Krieg, Hague and Bond
Claim 4 recites that “the bait stays in a fish's mouth cavity during
hook setting.” Bond discloses a fishing lure comprising a spoon 19
connected at one end to a line 20 and at the other end to a hook 30. Bond,
fig. 1. The Examiner finds that the spoon (bait) of Bond’s fishing lure stays
in the fish’s mouth during hook setting. Ans. 5. In response to Appellant’s
argument that Bond does not disclose this feature (App. Br. 14), the
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Examiner contends that it is “an inherent feature of fishing lures.” Ans. 9
(emphasis added).
Based on the record before us, we cannot find by a preponderance of
the evidence that the spoon of Bond’s lure necessarily stays in a fish's mouth
cavity during hook setting. The Examiner has not explained, for example,
why spoon 19 might not be pulled from a fish’s mouth by line 20 during
setting of hook 30 in the fish’s mouth.1 See Bond, fig. 1. Inherency cannot
be established by mere probabilities or possibilities.2 Accordingly, we do
not sustain the rejection of claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Krieg, Hague and Bond.
Claim 6 – Obviousness – Krieg and Goodman
Claim 6 recites that “the bait is pulled free from the bait attachment
device during hooking.” Goodman discloses a fishing lure comprising
spoon elements 48 and hook 50 carried by a leader 46 that pulls free from a
tension release device 44 when the lure become snagged. Goodman, col. 2,
ll. 40-42, fig. 1.3 The Examiner finds that, as disclosed in Goodman, the bait

1 “Inherency can be established when ‘prior art necessarily functions in
accordance with, or includes, the claimed limitations.’” Bettcher Indus.,
Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (quoting In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.Cir.2002)).
2 Bettcher Indus., 661 F.3d at 639 (“’Inherency . . . may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.’”) (quoting In re Oelrich,
666 F.2d 578, 581 (CCPA 1981)).
3 Goodman expressly discloses that “if the hook 50 becomes snagged the
tension release device 44 operates to release it and the spoons 48.”
Goodman, col. 2, ll. 56-58 (bold omitted).
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(spoon elements 48) is pulled free from the bait attachment device (tension
release device 44) during hooking. Ans. 6.4
Appellant argues that Goodman’s tension device “is not a bait
attachment device and it does not include any way to hold bait” and that “no
bait is pulled free from the tensioning device during hooking, as required by
claim 6.” App. Br. 15. These arguments are not responsive to the rejection
as articulated by the Examiner. Further, claim 6 does not require the bait
attachment device “to hold bait.” Rather, claim 6, which depends from
claim 1, requires “attaching” bait to the bait attachment device. Appellant
has not persuaded us that tension release device 44 is not a bait attachment
device or that attaching spoons 48 to tension release device 44 via leader 46
does not satisfy the recited step of “attaching bait to the bait attachment
device.”
Appellant finally argues that dependent claim 6 is patentable because
Krieg and Goodman do not individually teach or suggest the steps and
limitations of claim 1 and accordingly the combination of those references
fails to teach or suggest the method of claim 1. See App. Br. 15-16. For the
reasons discussed supra in connection with claim 1, as well as claim 6, we
disagree.
Accordingly, we sustain the rejection of claim 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Krieg and Goodman.
Claims 9-13 – Obviousness – Krieg and Bond
Claim 10 recites that “the fish does not take the bait and the hook

4 The phrase “during hooking” in claim 6 is broader than the phrase “during
hook setting” in claim 4 and reasonably encompasses hooking (snagging) an
obstacle in the water, as the Examiner reasons.
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simultaneously into its mouth.” The Examiner finds that Bond’s lure
comprising a hook and a spoon inherently discloses that “the fish would first
envelope the hook in its mouth prior to enveloping the bait since the hook
[i]s located at the end of the associated branch line.” Ans. 10. The
Examiner has not explained, however, why a fish would necessarily
approach the bait from the end of the branch line, and not from some other
direction. See Bettcher Indus., 661 F.3d at 639.
Accordingly, we do not sustain the rejection of claim 10 under
35 U.S.C. § 103(a) as being unpatentable over Krieg and Bond.
Appellant argues that the combination of Krieg and Bond does not
teach or suggest claim 1 and argues that claims 9 and 11-13 are patentable
based on their dependency from claim 1. App. Br. 16. This vague argument
does not constitute a separate argument for the patentability of any of
claims 9 and 11-13 pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (2011) and is
insufficient to persuade us of error in the Examiner’s rejection.5
Accordingly, we sustain the rejection of claims 9 and 11-13 under
35 U.S.C. § 103(a) as being unpatentable over Krieg and Bond.
Claim 14 – Obviousness – Krieg, Bond and Allen
Claim 14 depends from claim 10. For the reasons discussed supra
with respect to claim 10, we do not sustain the rejection of claim 14.

5 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the
Board reasonably interpreted its rule as requiring “more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”).
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Claims 16 and 17 – Obviousness – Krieg
Appellant argues the patentability of claims 16 and 17 based solely on
their dependency from claim 1. App. Br. 18. For the reasons discussed
supra with respect to claim 1, we sustain the rejection of claims 16 and 17.

DECISION
We affirm the rejections of claims 1-3, 5-9, 11-13 and 15-20.
We reverse the rejections of claims 4, 10 and 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

JRG