Ex Parte Ratte

Board of Patent Appeals and Interferences

Oct 3, 2007

10973635 (B.P.A.I. Oct. 3, 2007)

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today is not binding precedent of the Board.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
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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:

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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.

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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).
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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
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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.
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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
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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

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JACOBSON AND JOHNSON
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