Ex Parte Reed

Board of Patent Appeals and Interferences

Apr 30, 2004

10011074 (B.P.A.I. Apr. 30, 2004)

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not written for publication and is not binding precedent of the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

Paper No. 14

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HERB REED
__________

Appeal No. 2004-1004
Application No. 10/011,074
___________

ON BRIEF
___________

Before WALTZ, KRATZ, and DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL & REMAND

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s final rejection of claims 1 through 9
(final Office action mailed Feb. 3, 2003, paper 5) in the above-
identified application. Claims 10 through 22, which are the
only other pending claims, have been withdrawn from further
consideration pursuant to 37 CFR § 1.142(b)(2003)(effective Dec.
22, 1959). (Office action mailed Jul. 30, 2002, paper 2, page
2.)
Appeal No. 2004-1004
Application No. 10/011,074

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The subject matter on appeal relates to a fishing lure.
Further details of this appealed subject matter are recited in
representative claims 1, 2, and 8 reproduced from the
application, as amended on Dec. 2, 2002 (paper 3):
1. A fishing lure comprising:
a substantially solid flexible body portion;
at least one weight at least partially
encapsulated within said substantially solid flexible
body portion and stationary relative thereto; and
wherein said at least one weight being insoluble
in water.

2. A fishing lure as defined in claim 1 wherein
said at least one weight is completely encapsulated in
said flexible body.

8. A fishing lure comprising:
a substantially solid flexible body portion;
a plurality of independent weights, each said
weight being at least partially encapsulated in said
substantially sold [sic, solid] flexible body portion
and stationary relative thereto; and
wherein each of said weights is insoluble in
water.

The examiner relies on the following prior art references
as evidence of unpatentability:
Welch 1,689,541 Oct. 30, 1928

Elges 6,484,434 B1 Nov. 26, 2002
(filed Nov. 27, 2000)

Claims 1 and 8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Welch. (Examiner’s answer mailed Oct. 20, 2003,
paper 10, page 3; final Office action, page 3.) Also, claims 1
through 5, 8, and 9 stand rejected under 35 U.S.C. § 102(e) as
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Application No. 10/011,074

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anticipated by Elges. (Answer, page 3; final Office action,
page 3.)1
We reverse: (i) the 35 U.S.C. § 102(b) rejection of
appealed claims 1 and 8 as anticipated by Welch; and (ii) the 35
U.S.C. § 102(e) rejection of appealed claim 2 as anticipated by
Elges. We affirm, however, the 35 U.S.C. § 102(e) rejection of
appealed claims 1, 3 through 5, 8, and 9 as anticipated by
Elges.2 Also, we remand this application pursuant to 37 CFR §
1.196(a)(2003)(effective Aug. 20, 1989).

1 On page 3 of the answer, the examiner states: “Claims 1-9
are rejected under 35 U.S.C. 103(a). This rejection is set
forth in prior Office Action, Paper No. 5.” We note, however,
that claim 5 was not finally rejected under 35 U.S.C. § 103(a).
Instead, claims 1-4, 8, and 9 were finally rejected under 35
U.S.C. § 103(a) as unpatentable over U.S. Patent 2,149,054
issued to Jones on Feb. 28, 1939 in view of Elges or Welch
(final Office action, p. 3), while claims 6 and 7 were finally
rejected under U.S.C. § 103(a) as unpatentable over Jones in
view of Welch or Elges and further in view of U.S. Patent
3,035,368 issued to Collins on May 22, 1962 (id. at p. 5).
Also, the examiner contradicts the statement made on page 3 of
the answer by commenting as follows: “The rejections of claims
1-9 under 35 U.S.C. 103(a) using the Jones reference US 2149054
as modified by Elges, Welch and/or Collins reference US 3035368,
are dropped in that applicant’s arguments are persuasive.”
(Answer, p. 4.) Notwithstanding this confusion, we note that
the examiner does not dispute the appellant’s understanding
(reply brief filed Dec. 22, 2003, paper 11, pp. 6-7) that the 35
U.S.C. § 103(a) rejections based on Jones as a principal
reference have been withdrawn. (Office letter mailed Feb. 10,
2004, paper 12.) We presume, therefore, that these rejections
are not before us in this appeal.

2 The appellant submits: “Claims 2-7 are dependent on
independent claim 1. Claim 2 is separately patentable. Claims
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Application No. 10/011,074

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Claims 1 & 8: The Welch Reference
“To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997).
The examiner argues (final Office action, page 3):
Referring to claims 1 and 8, Welch discloses a
fishing lure comprising a substantially sold [sic,
solid] flexible body portion - 10, at least one
independent weight - 20 at least partially
encapsulated in the substantially solid flexible body
portion and stationary relative thereto and wherein
each of the weights is insoluble in water - see for
example figures 1-4 and columns 1-3.

The appellant, on the other hand, points out that Welch
does not disclose a fishing lure with a body portion that is
“flexible,” as that term is defined in the specification.3
(Appeal brief, pages 5-6.)

1 and 3-7 stand or fall together. Claim 9 is dependent on
independent claim 8. Claims 8 and 9 stand or fall together.”
The appellant, however, does not provide any argument on why
claims 8 and 9 are considered to be separately patentable from
claims 1 and 3-5. Accordingly, claims 1, 3-5, 8, and 9 stand or
fall together. 37 CFR § 1.192(c)(7)(2003)(effective Apr. 21,
1995).

3 The present specification defines the term “flexible” as
follows: “As used herein the term ‘flexible’ is to be construed
to mean that the material from which the body portion of the
lure is made is flexible and elastomeric or polymeric.”
(Underscoring added; p. 2, ll. 11-13.)
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Application No. 10/011,074

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We agree with the appellant on this issue. When read in
light of the specification, the recited term “flexible” would be
understood by one skilled in the relevant art to require an
elastomeric or polymeric material.4 Because the examiner does
not account for this limitation, no prima facie case of
anticipation can exist.5
Claims 1-5, 8, & 9: Elges
Elges describes a fishing lure including, inter alia, a
body 412, which may be composed of rubber (i.e., elastomer), and
a stationary weight 450 at least partially encapsulated within
the body. (Figure 4; column 3, lines 9-43.) The examiner
further determined (answer, page 4) that “[r]ubber is a common
flexible material...” Elges, therefore, describes, either

4 In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989)(“When the applicants state the meaning that the
claim terms are intended to have, the claims are examined with
that meaning, in order to achieve a complete exploration of the
applicant’s invention and its relation to the prior art.”); see
also Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998)(“When the
specification explains and defines a term used in the claims,
without ambiguity or incompleteness, there is no need to search
further for the meaning of the term.”).

5 We decline to make an initial determination on whether
the subject matter of any of the appealed claims would have been
obvious over Welch, alone or in combination with other art,
within the meaning of 35 U.S.C. § 103(a). On remand, however,
the examiner is free to do so.

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Application No. 10/011,074

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expressly or inherently, every limitation of the invention
recited in appealed claim 1.
The appellant argues that Elges discloses “rubber [] only
in passing” and that “[t]here are numerous types of rubber,
including both flexible and inflexible rubbers.” (Reply brief
filed Dec. 22, 2003, page 5.) Furthermore, the appellant
contends that Elges teaches away from using a flexible rubber
and that a flexible rubber would render Elges’s lure inoperable.
(Id.)
We see no merit in the appellant’s arguments. Rubber is
one of only a few materials enumerated in Elges as suitable for
the lure body. Accordingly, Elges’s disclosure is sufficient to
anticipate appealed claim 1. In re Schaumann, 572 F.2d 312,
315, 316, 197 USPQ 5, 8, 9 (CCPA 1978)(holding that “the
disclosure of a chemical genus...constitute[s] a description of
a specific compound” within the meaning of §102 where the
specific compound falls within a genus of a “very limited number
of compounds.”).
Regarding the appellant’s argument on the flexibility or
inflexibility of the rubber, neither the express terms of
appealed claim 1 nor the description in the specification place
any limitation on the degree of flexibility of the lure body.
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Application No. 10/011,074

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Thus, the term “flexible body portion” as recited in appealed
claim 1 encompasses or reads on elastomers or polymers that are
flexible to any degree of flexibility, however small that degree
of flexibility might be. Also, the appellant proffers no
objective evidence to establish that: (i) completely inflexible
rubbers exist; and (ii) minimally flexible rubbers cannot be
used as the lure body for purposes of Elges’s invention.
Accordingly, we cannot reverse the examiner’s rejection on this
basis.
As to appealed claim 2, the appellant argues that Elges
does not describe at least one weight that is completely
encapsulated in the flexible body. (Reply brief, page 6; appeal
brief, page 8.) Because the examiner offers no rebuttal, we
reverse this rejection as to appealed claim 2.
The rejection is affirmed as to appealed claims 1, 3
through 5, 8, and 9 but reversed as to appealed claim 2.
Remand
In the reply filed Dec. 2, 2002, the appellant amended
claims 1 and 8 by inserting “substantially solid” before the
recitation “flexible body portion.” The examiner should analyze
whether claims 1 and 8, as amended, comply with the requirements
of 35 U.S.C. § 112.
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Application No. 10/011,074

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Additionally, the examiner should analyze the scope of the
appealed claims through claim interpretation. In particular,
the examiner should ascertain the scope and meaning of the term
“substantially solid,” taking into account any enlightenment
found in the specification. In this regard, we observe that the
specification does not appear to contain any express definition
for the term “substantially solid” but that Figures 7 and 8, for
example, describe hollow bodies. Under these circumstances, the
examiner should reconsider applying Jones against the appealed
claims in rejections under 35 U.S.C. §§ 102 and 103.
Summary
In summary, we reverse the examiner’s rejections under: (i)
35 U.S.C. § 102(b) of appealed claims 1 and 8 as anticipated by
Welch; and (ii) 35 U.S.C. § 102(e) of appealed claim 2 as
anticipated by Elges. We affirm, however, the examiner’s
rejection under 35 U.S.C. § 102(e) of appealed claims 1, 3
through 5, 8, and 9 as anticipated by Elges. Also, we remand
this application pursuant to 37 CFR § 1.196(a)(2003)(effective
Aug. 20, 1989).
Time Period for Taking Action
This application, by virtue of its “special” status,
requires an immediate action. See MPEP § 708.01(D)(8th ed.,
Rev. 1, Feb. 2003). Thus, it is important that the Board be
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Application No. 10/011,074

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promptly informed of any action affecting the appeal in this
case.
This decision includes a remand to the examiner.
Therefore, for purposes of appeal, this decision is not final.
37 CFR § 1.196(e)(2003)(effective Aug. 20, 1989).

Appeal No. 2004-1004
Application No. 10/011,074

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Thomas A. Waltz )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Peter F. Kratz )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )

RHD/kis
Appeal No. 2004-1004
Application No. 10/011,074

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