Ex Parte Roh

Board of Patent Appeals and Interferences

Dec 17, 2009

11209298 (B.P.A.I. Dec. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WARREN EDWARD ROH
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Appeal 2009-005194
Application 11/209,298
Technology Center 3600
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Decided: December 17, 2009
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Before: LINDA E. HORNER, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Warren Edward Roh (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1 and 3-8. Claims 18-22
are withdrawn. Claims 2 and 9-17 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We REVERSE.
Appellant’s claimed invention is a two-dimensional fishing lure.
Spec. 2:3. Claim 1, reproduced below, is representative of the subject matter
on appeal.
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Application 11/209,298

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1. A two dimensional fishing lure, comprising:
a base material;
a backing material adhered to the base material; and
a pair of mirrored shapes scored in the base material.
Appellant seeks review of the Examiner’s rejection of claims 1 and 5-
8 under 35 U.S.C. § 102(b) as anticipated by U.S. Patent No. 4,307,531 to
Honse (issued Dec. 29, 1981).1 Appellant also seeks review of the
Examiner’s rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Honse and U.S. Patent No. 5,125,182 to Holder (issued
Jun. 30, 1992).
The Examiner found that Honse discloses a fishing lure having a pair
of images “scored” in the base material. Ans. 3-4. In reaching this finding,
the Examiner interpreted “scored” to mean “marked with lines.” Ans. 3.
Based in part on this finding, the Examiner concluded Honse anticipates
claims 1 and 5-8, and that the subject matter of claims 3 and 4 would have
been obvious over Honse and Holder.
Appellant contends Honse does not disclose a pair of images “scored”
in the base material, because “scored” as used in claim 1, does not mean “to
mark with lines,” but rather means “a line (as a scratch or an incision) made
with a sharp instrument.” App. Br. 6 (citing to Webster’s dictionary).
The issue presented by this appeal is, has Appellant shown the
Examiner erred in finding Honse discloses images “scored” in the base
material?

1 In the Examiner’s Answer, the heading of this rejection mistakenly lists
claim 2 as rejected; however, the Status of Claims section correctly notes
that claim 2 is cancelled. Ans. 3, 2.
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Application 11/209,298

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Claim 1 recites “a pair of mirrored shapes scored in the base material”
(emphasis added). Claims 3-8 depend, directly or indirectly, from claim 1.
The plain language of the claim states that the scoring is “in” the base
material. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)
(“[C]laims are interpreted with an eye toward giving effect to all terms in the
claim.”). In contrast, under the Examiner’s interpretation of claim 1, a mark
with a line would be “on,” rather than “in” the base material. Consistent
with the claim language, the Appellant’s Specification describes that scoring
forms the lures so that they may be punched out of the base material.
Spec. 4:15-16; see also Spec. 5:12-19. Interpreting score to include the
meaning of “to mark with lines” is unreasonable in light of the Specification
because a line marked on the base material would not be “in” the base
material, and would not form lures so that they could be punched out of the
base material.
Giving claim 1 the “broadest reasonable interpretation consistent with
the specification” and “in light of the specification as it would be interpreted
by one of ordinary skill in the art,” we conclude the base material must be
scored with a scratch, incision, or other marking that is “in” the base
material. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). With this claim construction in mind, we turn to the prior art.
Honse discloses artificial fish skin to be used as a substitute for whole
natural bait fish or bait fish parts, or as a decoration that is attachable to a
fishing lure. Honse, col. 1, ll. 7-9; figs. 1, 6. Honse discloses establishing a
pattern of a typical bait fish, with identifying markings and typical features,
on a sheet of flexible plastic material 21 using indelible ink, or other fast dye
materials. Honse, col. 3, ll. 37-44; fig. 3. The same pattern is established on
Appeal 2009-005194
Application 11/209,298

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thin, shiny material 22. Honse, col. 3, ll. 44-45; fig. 3. Flexible plastic
material 21 is then superimposed on the thin, shiny material 22 so that the
fish patterns match. Honse, col. 3, ll. 46-49; fig. 3. The two layers (flexible
plastic material 21 and thin, shiny material 22) are then positioned on the
fish pattern of sheet 24, and the three-layer laminate is folded in half to form
a simulated fish. Honse, col. 3, ll. 49-51; figs. 1, 3. Honse discloses
severing the three layers into symmetrical halves. Honse, col. 3, ll. 54-56.
Honse does not disclose the perimeter line of the fish pattern being marked
by a scratch, an incision, or other marking in any of the three layers 21, 22,
and 24, and does not disclose how the excess material around the perimeter
of the fish for the layers 21, 22, and 24 is removed. Honse, passim.
We agree with Appellant that Honse does not disclose a pair of mirror
shapes scored into a base material as required by claim 1. Because Honse
does not disclose each element of claim 1, Honse does not anticipate
claim 1. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
(Fed. Cir. 1987) (“A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference.”). Further, the rejection of dependent claims 5-8 is
also in error by virtue of their dependence from claim 1. In the rejection of
claims 3 and 4 under 35 U.S.C. § 103(a), the Examiner relies on Honse for
the same erroneous finding of fact, and does not allege that Holder teaches a
modification to cure this deficiency. Ans. 4. Therefore, we also cannot
sustain the rejection of claims 3 and 4.
We reverse the decision of the Examiner to reject claims 1 and 3-8.

REVERSED
Appeal 2009-005194
Application 11/209,298

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