Ex parte Moore

Board of Patent Appeals and Interferences

Mar 31, 2000

08410496 (B.P.A.I. Mar. 31, 2000)

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not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEFFERY MOORE
_____________
Appeal No. 1999-2361
Application 08/410,496
______________
ON BRIEF
_______________
Before PATE, STAAB and McQUADE, Administrative Patent Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-8,
11, 12, 16 and 17 and the examiner's refusal to allow claims
13-15 as amended after final rejection. Since claims 9 and 10
have been canceled, these are all the claims remaining in the
application.
With respect to claims 7 and 15, the examiner has neither
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Application 08/410,496
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included a rejection of these claims in the examiner's answer
nor has he indicated their allowability. Accordingly, to
clarify the record, we will, in our decision, consider the
rejection of claims 7 and 15 as advanced by the examiner in
the final rejection.
The claimed invention is directed to an artificial
fishing lure with a parabolically shaped anterior section, a
parabolically shaped posterior section and a circumvoluted
middle section which includes a 90 degree twist therein. The
circumvoluted middle section and the posterior section
comprise less than half the length of the fishing lure but the
balance of the lure's mass, therefore making the center of
gravity of the fishing lure rearward of the fishing lure's
longitudinal center.
The claimed subject matter can be further considered with
reference to the claims on appeal appended to appellant's
brief.
The references of record relied upon by the examiner as
evidence of obviousness are:
Turner 2,244,378 Jan. 29, 1940
Panicci 3,418,744 Dec. 31, 1968
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The following reference was cited in a rejection of
claims 7
and 15 in the final rejection:
Baker, Jr. (Baker) 4,891,901 Jan. 9, 1990
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THE REJECTIONS
Claims 1, 2, 8, 16 and 17 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Turner.
Claims 3-6 and 11-14 stand rejected under 35 U.S.C. § 103
as unpatentable over Turner in view of Panicci.
Claims 7 and 15 were rejected in the final rejection
under 35 U.S.C. § 103 as unpatentable over Turner in view of
Panicci and Baker.
With respect to the rejection based on Turner alone, the
examiner is of the opinion that it would have been obvious to
merely reverse the lure body of Turner, thereby rendering the
claimed subject matter of claims 1 and 8 prima facie obvious.
With respect to the rejection based on Turner in view of
Panicci, it is the examiner's opinion that Panicci shows the
claimed 90 degree twisted middle section. Therefore, the
examiner is of the view that it would have been obvious to
make the twist of Turner of the specified 90 degrees.
OPINION
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellant and the examiner. As
a result of this review, it is our conclusion that the
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Application 08/410,496
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examiner has not
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Application 08/410,496
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established a prima facie case of obviousness with respect to
the subject matter on appeal. Therefore, the rejections on
appeal are reversed. Our reasons follow.
In the instant appeal, the examiner's rationale for the
rejection is reminiscent of the situation in In re Gordon, 733
F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). In that case, a
rejection under 35 U.S.C. § 103 was reversed. The rationale
for the rejection was that the claimed subject matter was
prima facie obvious from the reference subject matter turned
upside down. The Federal Circuit reasoned that it would not
have been obvious to turn the reference subject matter upside
down, in use, absent some motivation or suggestion therefor.
In the situation at bar, the examiner provides no such
motivation or suggestion. Accordingly, we are constrained to
reverse.
We also note the presence in the examiner's arguments of
the long discredited obvious to try rationale for a 35 U.S.C.
§ 103 rejection. The examiner expressly argues that one
skilled in the art would be inclined to try the opposite
configuration. Obvious to try is not the proper standard to
be applied under 35 U.S.C.
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Application 08/410,496
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§ 103.
Neither Pancci nor Baker, contains any disclosure that
would ameliorate this fundamental shortcoming of the
examiner's rejection of the independent claims. Accordingly,
the rejections of all claims on appeal are reversed.
The rejections on appeal are reversed.
REVERSED

WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 1999-2361
Application 08/410,496
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Appeal No. 1999-2361
Application 08/410,496
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DAVID E. BENNETT
RHODES COATS & BENNETT
909 GLENWOOD AVENUE
P.O. BOX 5
RALEIGH, NC 27602
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WFP/dal