Ex Parte RatteDownload PDFBoard of Patent Appeals and InterferencesOct 3, 200710973635 (B.P.A.I. Oct. 3, 2007) Copy Citation The opinion in support of the decision being entered today is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte ROBERT W. RATTE _____________ Appeal 2007-0201 Application 10/973,635 Technology Center 3600 ____________ Decided: October 3, 2007 _______________ Before TERRY J. OWENS, HUBERT C. LORIN, and JOSEPH A. FISCHETTI, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL The Appellant appeals from a rejection of claims 10-15, which are all of the pending claims. THE INVENTION The Appellant claims a method for making a fishing sinker. Claims 10 and 14 are illustrative: Appeal 2007-0201 Application 10/973,635 10. The film method of making a bismuth fishing sinker: comprising the steps of: pouring a bismuth in a molten state into a fishing sinker mold; allowing the bismuth to solidify in the fishing sinker mold to form a one-piece bismuth fishing sinker; removing the one-piece solidified bismuth fishing sinker from the fishing sinker mold; placing a shrink wrap material around an exterior surface of the one-piece solidified bismuth fishing sinker; and heating the shrink wrap film material to bring the shrink wrap film into compressive confinement of the one-piece solidified bismuth fishing sinker to thereby inhibit the fracturing of the bismuth fishing sinker if the bismuth fishing sinker is impacted by an external force. 14. The method of making a fishing sinker comprising the steps of: pouring a frangible metal having a specific gravity of at least 7.0 into a fishing sinker mold; allowing the frangible metal to solidify in the fishing sinker mold to form a fishing sinker; removing the solidified fishing sinker from the fishing sinker mold; and covering the exterior surface of the solidified fishing sinker with a layer of skin to thereby provide fracture resistance to the frangible material. 2 Appeal 2007-0201 Application 10/973,635 THE REFERENCES Biss US 5,233,786 Aug. 10, 1993 Brown US 5,946,849 Sep. 07, 1999 THE REJECTION Claims 10-15 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combined disclosures of Brown and Biss. OPINION The rejection is affirmed as to claims 10-12, 14 and 15, and reversed as to claim 13. Claims 10-12, 14 and 15 Brown teaches that “lead-containing fishing devices are frequently lost during use, which can result in poisoning of the environment and of the animals therein” (col. 1, ll. 23-25). Brown discloses a fishing device such as a lure, jig or sinker which, to avoid the toxicity of lead, is made of bismuth, alone or in combination with other non-toxic metals (col. 1, ll. 46-47; col. 1, l. 1 – col. 2, l. 7). The fishing device is formed by casting, spin molding, dropping, punching or any other suitable method (col. 1, ll. 63-65). Biss likewise teaches that lost lead fishing sinkers are toxic to the environment (col. 1, ll. 11-15). Biss replaces lead with steel or other metal shot, preferably steel made of iron and other elements but having less than 1 percent of toxic heavy metals (col. 1, ll. 36-39; col. 2, ll. 37-41). Biss’s sinker is elongated and flexible and comprises a string of metal or steel shot (12) separated by annular indentations (11) in a tubular jacket (15) that preferably is heat shrunk polyolefin (col. 1, ll. 46-50; col. 2, ll. 6-8; 31-35). 3 Appeal 2007-0201 Application 10/973,635 The sinker can be cut with a knife at the annular indentations to alter the weight of the sinker to compensate for changing water conditions, to reduce the likelihood of an overweight sinker snagging on underwater objects such as rocks and sunken debris, and to render the sinker useful with different types of bate, lures and tackle (col. 1, ll. 24-29; col. 2, ll. 45-51). The Appellant argues that one of ordinary skill in the art would not have combined Brown’s disclosure of a single sinker with Biss’s disclosure of a sinker having at least two metal shot attached by a tubular jacket (Br. 7- 13).1 Biss makes his sinker out of steel or other metal shot that, unlike lead, is nontoxic (col. 2, ll. 6-8; 37-41). Brown teaches that bismuth is a nontoxic substitute for lead in fishing sinkers (col. 1, ll. 47-49; col. 1, l. 66 – col. 2, l. 1). Hence, Brown would have led one of ordinary skill in the art, through the use of no more than ordinary creativity, to use bismuth as Biss’s nontoxic metal. See KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). The Appellant argues that Biss’s teaching that short, compact sinkers “simply do not allow for any further adjustments to be made in the original sinker’s weight” (col. 1, ll. 42-44) and thus teaches away from Brown’s single sinker (Br. 8). Although Biss starts with an elongated, flexible sinker (col. 1, l. 47), Biss teaches that the sinker can be cut to alter the weight of the sinker to reduce the likelihood of it snagging, compensate for changing 4 Appeal 2007-0201 Application 10/973,635 water conditions, or render it useful for different types of bait, lures and tackle (col. 1, ll. 24-29; col. 2, ll. 45-51). That disclosure would have led one of ordinary skill in the art, through no more than ordinary creativity, to cut the elongated sinker down to a size as small as one metal shot if that were the size that provided the desired reduction in the likelihood of snagging, etc. Moreover, the Appellant’s claim 1 preamble does not limit the claimed invention to a one-piece sinker, and the shrink wrapping step does not require that the shrink wrap film contains only a single one-piece sinker. That claim’s “comprising” transition term opens the claim to forming other one-piece bismuth sinkers and including them in the shrink wrap film. See In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981). Hence, the claim encompasses Biss’s multiple shot sinker where each shot is formed of bismuth by Brown’s molding (col. 1, l. 64). The Appellant argues that because lead is soft, malleable and ductile, Brown’s disclosure that alloys containing about 98 wt% bismuth and about 2% tin or antimony, or about 99 wt% bismuth and about 1 wt% zinc, have performance characteristics like those of lead (col. 2, ll. 11-22), indicates that the alloys are not frangible (Br. 15-19). Brown’s sinker also can be substantially pure bismuth (col. 1, ll. 65-66). As acknowledged by the Appellant (Spec. 7:12-15), bismuth meets the requirement in the Appellant’s independent claim 14 of a frangible metal having a specific gravity of at least 7.0. 1 Because the arguments in the Appellant’s Reply Brief are essentially the same as those in the Brief, we limit our discussion to the Brief. 5 Appeal 2007-0201 Application 10/973,635 The Appellant argues that Brown does not disclose placing a shrink wrap film around the sinker and does not disclose that the shrink wrap film provides compressive confinement (Br. 19-22). That argument is deficient in that the Appellant is attacking the reference individually when the rejection is based on a combination of references. See In re Keller, 642 F.2d 413, 426, 208 USPQ 871, 882 (CCPA 1981); In re Young, 403 F.2d 754, 757-58, 159 USPQ 725, 728 (CCPA 1968). Biss is relied upon by the Examiner for a disclosure of placing a shrink wrap film around a sinker (Ans. 3). As for the argument that there is no disclosure of compressive confinement, the Appellant’s shrink wrap film is conventional (Spec. 8:8-9). Biss’s shrink wrap film also appears to be conventional and, therefore, appears to provide the compressive confinement of the Appellant’s conventional shrink wrap film. For the above reasons we are not convinced of reversible error in the rejection of claims 10-12, 14 and 15. Claim 13 Claim 13 requires “cutting the elongated cylindrical tube to a length about equal to a length of the solidified bismuth fishing sinker.” The Examiner argues that “the case exists where Biss uses the entire length of the sinker noting column 2, line 47, which states that the body may be cut” (Ans. 5). If Biss’s tube is not cut, then the cutting requirement of the Appellant’s claim 13 is not met. The Examiner argues that “[c]utting Biss between the steel or other metal shot at the indentations 11, when viewing Figs. 4-6 of Biss, would result in the cylindrical tube having a length that is about equal to the length of one metal shot” (Ans. 6). The tube in Biss’s 6 Appeal 2007-0201 Application 10/973,635 figures 4-6 is not cylindrical. Hence, cutting that tube does not meet the Appellant’s claim 13 requirement of cutting a cylindrical tube. The Examiner, therefore, has not established a prima facie case of obviousness of the invention claimed in the Appellant’s claim 13. DECISION The rejection of claims 10-15 under 35 U.S.C. 103 over the combined disclosures of Brown and Biss is affirmed as to claims 10-12, 14 and 15, and reversed as to claim 13. AFFIRMED-IN-PART vsh CARL. L. JOHNSON JACOBSON AND JOHNSON SUITE 285 ONE WEST WATER STREET ST. PAUL MN 55107 7 Copy with citationCopy as parenthetical citation