Ex Parte Pieczynski

Board of Patent Appeals and Interferences

Mar 29, 2007

10066267 (B.P.A.I. Mar. 29, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DARREN EDWARD PIECZYNSKI
__________

Appeal 2007-0800
Application 10/066,267
Technology Center 3600
__________

ON BRIEF
__________

Before MILLS, GRIMES, and LINCK, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to display
devices for use with ice fishing tip-ups. The Examiner has rejected the
claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
BACKGROUND
“Since the time ice fishing tip-ups and like devices have been in use,
there have been numerous ways users have made a strike apparent after
daylight hours. Common indicators on tip-ups are flags, some equipped
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with lights.” (Specification 1.) That is, a fish strike causes the flag to move
from a horizontal to vertical position, and the change in the flag’s position in
turn causes an attached light to turn on, indicating a strike has occurred. (Id.
at 1-2.)
The Specification discloses (page 4), as a preferred embodiment,
an ice fishing tip-up display compris[ing] a flashing light source
located at one end of an assembly; a tilt switch . . . ; a reflective
enclosure of said tilt switch/flashing light source; conductors
. . . ; a power source and circuitry means to supply power to
said flashing light source; and an attaching apparatus to attach
to a flag arm of a fishing device.

The Specification discloses that a reflective enclosure for the light
source provides a number of advantages. (Id. at 7.) For example, an ice
fishing tip-up is vulnerable to motorized traffic on a frozen lake. (Id.) When
a vehicle shines its lights on the reflective enclosure the vehicle’s operator
will be able to see where the fishing equipment is, and avoid it. (Id.)
The Specification discloses that the reflective light source enclosure
also allows the fisherman to verify the location of his equipment, and
determine whether the flag is horizontal or vertical, by simply scanning the
area with a flashlight. (Id.) “This is especially helpful if the unit is unarmed
without the power source or if electronic failure occurs, so that the fisherman
can still determine the flag position.” (Id. at 7-8.)
DISCUSSION
1. CLAIMS
Claims 8 and 9 are pending and on appeal and read as follows:
8. An ice fishing display device for use with an ice fishing
tip-up with a base assembly and a tip-up flag arm mounted to
the base assembly comprising:
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a reflective enclosure containing a light source and a
tiltable switch such that said light source is electrically
connected to said tiltable switch, and said reflective enclosure
can be seen by others when shined upon with lights to verify
position of said flag arm;
a power source detachably mounted to the base assembly,
wherein said power source includes a detachable connection to
said light source; and
an electrical connection to said light source, tiltable
switch and power source wherein conductors have connection
to said flag arm with removable fasteners along the length of
said flag arm,
whereby, when a fish strikes, said tip-up arm is released
from a lowered position and said tiltable switch electrically
connects to said power source to said enclosure so that said
light source illuminates to signal a user of a fish strike.

9. An ice fishing display device for use with an ice fishing
tip-up with a base assembly and a tip-up flag arm mounted to
the base assembly comprising:
a reflective enclosure containing a light source and
tiltable switch such that said light source is electrically
connected to said tiltable switch, and said reflective enclosure
can be seen by others when shined upon with lights to verify
position of said flag arm;
a power source; and
an electrical connection means to said light source,
tiltable switch and power source within said reflective
enclosure,
whereby when a fish strikes, said tip-up arm is released
from a lowered position and said tiltable switch electrically
connects to said power source to said enclosure so that said
light source illuminates to signal a user of a fish strike.

Thus, claim 9 is directed to an ice fishing display device comprising a
reflective enclosure containing an electrically connected light source and a
tiltable switch. The enclosure is visible when lights are shined on it. The
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device has a power source that is electrically connected to the light source
and switch.
Claim 8 is similar but additionally requires the device to have a power
source detachably mounted to the base assembly of an ice fishing tip-up, the
power source having a detachable connection to the light source.
Claim 8 further requires the electrical connection between the light
source, tiltable switch, and power source to have removable fasteners along
the length of the flag arm of an ice-fishing tip-up.
Claims 8 and 9 both require the enclosure containing the light source
and switch to be a “reflective enclosure.” Appellant argues that the
Examiner has incorrectly interpreted the term “reflective.” (Br. 11; Reply
Br. 1, 2, 4.)
It is well settled that “claims in an application are to be given their
broadest reasonable interpretation consistent with the specification and that
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir. 1983) (citation omitted).
The Specification does not provide a definition for the term
“reflective.” However, the paragraph spanning pages 7 and 8 of the
Specification describes the reflective enclosure as being visible when a
flashlight is shined on it. This is consistent with the requirement in both
claims 8 and 9 that the reflective enclosure “can be seen by others when
shined upon with lights to verify position of said flag arm.”
The Specification also states that when a vehicle’s lights shine on the
enclosure, it “will illuminate.” (Specification 7.) However, in our view,
interpreting “reflective” to mean that an object must emit light, rather than
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merely throw back the light that hits it, is contrary to the meaning that one of
ordinary skill would give the term.
Appellant’s argument supports this conclusion. Appellant urges that
one of ordinary skill in the art would understand the term “reflect” to mean
“to prevent passage of and cause to change direction, as a mirror reflects
light; to bend or fold back; to throw back light or sound.” (Br. 11; Reply Br.
4 (citing www.m-w.com/dictionary/reflection).) Thus, giving the term its
broadest reasonable interpretation, one of ordinary skill would understand
that the term “reflective” does not require an object to emit light.
We therefore interpret the term “reflective enclosure” to encompass
enclosures that obstruct the passage of at least some light, causing it to
change direction, as well as enclosures that throw back at least some of the
light that falls on them.
2. OBVIOUSNESS
Claim 8 stands rejected under 35 U.S.C. § 103 as obvious in view of
Muenchow1 and Eppley.2 (Answer 3.)
The Examiner cites Muenchow as describing an ice fishing tip-up
with a reflective enclosure containing an electrically connected light source,
tiltable switch and power source. (Final Rejection 2 (October 19, 2005).)
The Examiner states that “[t]he reflective enclosure inherently can be seen
by others when shined upon with lights to verify the location of the flag
arm.” (Id.)
The Examiner cites Eppley as disclosing a tip-up with a reflective
enclosure containing a light source and a connected tiltable switch. (Id.)

1 Muenchow, U.S. Patent 5,979,101, issued November 9, 1999.
2 Eppley et al., U.S. Patent 5,067,269, issued November 26, 1991.
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The Examiner notes that Eppley teaches the power source as being
detachably mounted to the base assembly, “having wire 18 mounted to flag
staff 14 as shown in Fig. 3 with removable fasteners (not labeled but see
Fig. 2).” (Id.)
While Muenchow does not describe the power source as being
detachably mounted to the base assembly with a detachable connection to
the light source, as recited in claim 8, the Examiner urges that “it would
have been obvious to provide Muenchow with a remote power source as
shown by Eppley et al for the purpose of changing the power source without
having to disassemble the reflective enclosure.” (Id.)
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342, 68 USPQ2d 1940,
1947 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985, 180 USPQ
580, 583 (CCPA 1974)). Appellant argues that Muenchow and Eppley fail
to teach a reflective enclosure containing a light source and tiltable switch,
as required in claim 8. (See Br. 11-12; Reply Br. 4.) Specifically, Appellant
urges that the Examiner is incorrect in asserting that the enclosures of
Muenchow and Eppley are inherently reflective because they are visible.
(Br. 11.)
Appellant argues that the rejection “confuses ‘visibility’ with
‘reflectivity.’” (Br. 11; Reply Br. 4.) Appellant further urges that “persons
skilled in the art know that: reflective items may be visible to some extent
even when a light is not directly shined on them; and that a mirror has a
front surface which is reflective and a rear surface which is non-reflective
but may still be visible.” (Br. 12.)
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Thus, Appellant argues, those skilled in the art do not consider the
term “reflective” to be synonymous with the term “visible.” (Br. 12; Reply
Br. 1-2.) For example, Appellant cites Rosco, Inc. v. Mirror Lite Co., 304
F.3d 1373, 64 USPQ2d 1676 (Fed. Cir. 2002), as a case in which the U.S.
Court of Appeals for the Federal Circuit considered patent claims containing
the terms “reflective” and “non-reflective” in reference to surfaces of a
mirror lens. (Br. 12; Reply Br. 2.)
We do not find Appellant’s argument persuasive. We can agree, for
the sake of argument, that some reflective items, presumably those that also
emit light, may be visible even when a light is not directly shined on them.
We also agree with Appellant (Reply Br. 2) that objects such as stars may be
visible because they emit light.
However, the definition provided by Appellant for the term “reflect”
(Br. 11; Reply Br. 4 (citing www.m-w.com/dictionary/reflection)) does not
require a reflective item to be visible even when a light is not directly shined
on it. Rather, Appellant’s proffered definition supports the premise that one
skilled in the art would reasonably interpret the term “reflective” to
encompass items that obstruct the passage of light, causing it to change
direction, as well as items that throw back at least some of the light that
shines on them.
The enclosure containing Muenchow’s light source, switch, and
power source is “made as a continuous cylindrical tube of flexible
waterproof material” which has “[a] tubular lens [that] is built into and
protrudes from the sleeve closed end.” (Muenchow, col. 3, ll. 50-55.) Since
it is not entirely transparent, Muenchow’s enclosure obstructs, changes the
direction of, and throws back a sufficient amount of light to allow it to be
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seen. (See, e.g., Muenchow, Figure 1 (element 25), and Figure 2.) Thus, the
enclosure containing Muenchow’s light source, switch, and power source is
“reflective,” as one skilled in the art would understand that term. We
therefore agree with the Examiner that Muenchow discloses a reflective
enclosure, as required in claim 8.
Appellant further argues (Br. 12) that
those skilled in the art know that a reflective item when shined
upon by an external light will turn back the light impinging on
the reflective item in the direction of the external light. This is
quite different than a tree becoming visible during daylight
hours, as the viewer does not have to be located in the direction
between the tree and the sun for the tree to be visible.
Indeed, claim 8 (as well as claim 9) specifically state[s]
that “said reflective enclosure can be seen by others when shined
upon with lights to verify position of said flag arm.”

We do not find Appellant’s argument persuasive. We agree with
Appellant to the extent he argues that, when lights are shined on them,
objects having relatively high reflectivity can be more easily seen at greater
distances than objects having relatively low reflectivity.
However, the claims do not limit the enclosures to any particular
degree of reflectivity. Thus, the claims encompass enclosures having any
degree of reflectivity. As discussed supra, because the enclosure containing
Muenchow’s light source and switch necessarily obstructs, changes the
direction of, and throws back at least some of the light that impacts it, that
enclosure is “reflective,” as one skilled in the art would understand that term.
Because the claims encompass any degree of reflectivity, we agree
with the Examiner that Muenchow discloses a reflective enclosure that can
be seen by others when shined upon with lights, as required in claim 8.
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Appellant further argues that one of ordinary skill would not have
been motivated by Eppley to modify Muenchow’s device by providing it
with a remote power source, because Muenchow teaches the importance of
maintaining the power supply within a waterproof sleeve. (Br. 13-14; Reply
Br. 3.) Appellant argues that “it would be contrary to the teaching and
purpose of Muenchow to modify its enclosed local power source in
exchange for the remote power source as shown in Eppley et al. This flies in
the face of the Muenchow teaching.” (Br. 14.)
It is true that a prima facie case of obviousness based on multiple
references may be established “only by showing some objective teaching in
the prior art or that knowledge generally available to one of ordinary skill in
the art would lead that individual to combine the relevant teachings of the
references.” In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). “The fact that the motivating benefit comes at the expense of
another benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870
(Fed. Cir. 2006) (quoting Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8, 53 USPQ2d 1580, 1587 n.8 (Fed. Cir. 2000)).
The ultimate determination of obviousness is based on a
preponderance of the evidence. In re Kahn, 441 F.3d 977, 989, 78 USPQ2d
1329, 1338 (Fed. Cir. 2006). We agree with the Examiner that, when the
advantages of Eppley’s remote power source are weighed against
Muenchow’s enclosed power source, one of ordinary skill would have been
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motivated to combine Muenchow’s device with Eppley’s remote power
source.
Both power sources are attached to the tip-ups by similar attachment
means. (See Eppley, Figures 2-4, item 28; Muenchow Figure 1, and col. 3,
ll. 60-65 (“The . . . light system 25 is secured to the arm 19 of the tipup flag
alert 17 by a pair of circular bands 73, which may be flexible rubber
rings.”).) Eppley’s power source can be replaced by simply removing the
source and attaching a new one. However, because Muenchow’s power
source is contained within an enclosure (Muenchow, Figure 3), the
additional steps of disassembling and reassembling the enclosure are
required in order to reattach the power source to the tip-up. We therefore
agree with the Examiner (Answer 4) that Eppley’s remote power source is
more convenient that Muenchow’s.
Eppley’s remote power source also provides the advantage of easy
deactivation, allowing the user to conserve the power source when it is not
needed. (Eppley, col. 3, ll. 44-47 (“To preserve the power source during
other than low light hours or hours of darkness, the light device is
deactivated by simply removing battery clip 24 from battery 25.”).)
Because Eppley’s remote power source has distinct advantages
compared to Muenchow’s, we agree with the Examiner that the references
can be properly combined.
Appellant further argues that “in this very crowded area of
technology, improvements, which the non-artisan may view as minor, are
still significant and patentable.” (Br. 13) We are not persuaded by this
argument.
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“The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.” In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991). As
discussed supra, we agree with the Examiner that one of ordinary skill,
apprised by Eppley of the advantages of a remote power source for tip-up
display devices, would have been motivated to provide Muenchow’s device
with a remote power source. We therefore also agree with the Examiner that
one of ordinary skill would have considered claim 8 obvious over
Muenchow and Eppley. The obviousness rejection of claim 8 is affirmed.
3. ANTICIPATION
Claim 9 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Muenchow. (Answer 3.)
The Examiner cites Muenchow as disclosing, for use with an ice
fishing tip-up, a device having an enclosure containing an electrically
connected power source 31, tiltable switch 29, and LED light 33. (Final
Rejection 3 (October 19, 2005).) The Examiner states that “Muenchow
shows an inherently reflective enclosure partially due to the lens 39 for the
LED light 33.” (Id.)
Appellant argues that, “[u]nder the doctrine of inherency, if an
element is not expressly disclosed in a prior art reference, the reference will
still be deemed to anticipate a subsequent claim if the missing element ‘is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.’” (Br. 14 (quoting Cont’l Can
Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed.
Cir. 1991) (emphasis by Appellant).) Appellant urges that there is no
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evidence in the record necessarily demonstrating that Muenchow’s enclosure
is reflective. (Id. at 15.)
The Examiner responds that “the missing material is necessarily
present since the enclosure of Muenchow is a reflective enclosure since it
would partially prevent[] the passage of light and cause [it] to change
direction.” (Answer 4.)
We agree with the Examiner that the enclosure containing
Muenchow’s light source, switch, and power source is inherently reflective.
As discussed supra, one of ordinary skill would interpret the term
“reflective” to encompass objects that obstruct the passage of at least some
light, causing it to change direction, as well as objects that throw back at
least some of the light that impacts them. Muenchow’s enclosure is “made
as a continuous cylindrical tube of flexible waterproof material” which has
“[a] tubular lens [that] is built into and protrudes from the sleeve closed
end.” (Muenchow, col. 3, ll. 50-55.)
Thus, since it is not entirely transparent, Muenchow’s enclosure
obstructs, changes the direction of, and throws back a sufficient amount of
light to allow it to be seen. (See, e.g., Muenchow, Figure 1 (item 25), and
Figure 2.) The enclosure containing Muenchow’s light source, switch, and
power source is therefore necessarily “reflective,” as one skilled in the art
would understand that term. We therefore agree with the Examiner that
Muenchow inherently describes a reflective enclosure.
Because we agree with the Examiner that Muenchow describes a
device having all of the elements required in claim 9, we affirm the
anticipation rejection.
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SUMMARY
We affirm the obviousness rejection of claim 8 and anticipation
rejection of claim 9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

Demetra J. Mills )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Eric Grimes )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Nancy J. Linck )
Administrative Patent Judge )

EG
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Irving M. Weiner
Weiner + Burt PC
635 N. US 23
P.O. Box 186
Harrisville, MI 48740

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