Ex Parte Rydell

Board of Patent Appeals and Interferences

Mar 20, 2003

09263532 (B.P.A.I. Mar. 20, 2003)

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not written for publication and is not binding precedent of the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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THEODORE RYDELL
__________
Appeal No. 2002-1906
Application 09/263,532
___________
ON BRIEF
___________
Theodore Rydell appeals from the final rejection of claims 1
and 2, the only claims pending in the application.
THE INVENTION
The invention relates to “fishing lures wherein multiple
soft bodied plastic fishing baits are secured on multiple hooks
formed of a single wire” (specification, page 1). Representative
claim 1 reads as follows:
1. A soft bodied fishing lure comprising:
a) a double hook formed of a single length of wire and
having an eye formed in the middle of the length of wire, two
parallel hook shanks extending from the eye, each shank
terminating in a semicircular bend and having a hook point formed
at each end of the wire, and the semicircular bends are at an
angle to each other so that the hook points are spaced apart from
each other and the parallel shanks are resiliently biased towards
each other,
b) a first soft bodied plastic bait partially threaded onto
a first parallel shank of the double hook and the bait is clamped
in place along the first parallel shank by a second parallel
Appeal No. 2002-1906
Application 09/263,532
2
shank of the double hook and a second soft bodied plastic bait
partially threaded onto said second parallel shank of the double
hook and the second soft bodied bait is clamped in place along
the second parallel shank by said first parallel shank.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Temple 3,400,483 Sep. 10, 1968
Bablick 3,600,838 Aug. 24, 1971
Renaud 4,750,290 Jun. 14, 1988
THE REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Temple in view of Renaud.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Temple in view of Renaud and Bablick.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 7 and 9) and to the examiner’s final rejection
and answer (Paper Nos. 4 and 8) for the respective positions of
the appellant and the examiner regarding the merits of these
rejections.
DISCUSSION
Temple, the examiner’s primary reference, discloses in
Figures 4 and 5 a combination fishhook and live bait holder
formed from a single piece of wire material. The fishhook 1
consists of an eye 2, a shank 3 and a curved portion 4 having a
Appeal No. 2002-1906
Application 09/263,532
3
barb 5 at its end. The live bait holder 7, which is a
continuation of the fishhook extending from the eye 2, consists
of a pressure exerting loop 8, a bar clamp 9 and a curved portion
10 having a barb 11 at its end which effectively forms a second
fishhook oriented at an angle to the first fishhook. To attach
live bait, such as a fresh water shrimp, the pressure exerting
loop 8 is pressed inwardly to expand the spacing between the bar
clamp 9 and the shank 3 and the bait is slipped into the expanded
spacing and firmly held between the bar clamp and shank when the
pressure is released from the loop (see column 3, line 34,
through column 4, line 2).
Temple does not respond to the limitations in claim 1, or to
the identical limitations in claim 2, requiring first and second
soft bodied plastic baits partially threaded onto respective
parallel shanks of a double hook with each bait being clamped in
place along its shank by the other shank. To overcome this
deficiency, the examiner turns to Renaud.
Renaud discloses a double hook fishing jig comprising two
spaced hooks and a soft rubber or plastic worm bait threaded onto
the shank of each hook. Figures 1, 2, 4 and 5 show that the hook
shanks are spaced too far apart to permit them to clamp the baits
in place.
Appeal No. 2002-1906
Application 09/263,532
4
In proposing to combine Temple and Renaud to reject claims 1
and 2, the examiner submits that
it would have been obvious to provide Temple with soft
bodied plastic worms mounted on the shank of the hook
as shown by Renaud to use worms of different colors to
attract fish as disclosed by Renaud in column 3, lines
32-33. From Fig. 3 of Temple, which shows a worm [sic,
a shrimp] clamped between the two shanks, two worms
each mounted on a shank would have an equal diameter as
one worm mounted between the shanks and the two worms
would be clamped between the shanks [final rejection,
page 3].
The examiner’s position here is unsound for at least two
reasons. First, there is nothing in the combined teachings of
Temple and Renaud which would have suggested threading rubber
worm baits, such as those disclosed by Renaud, onto the hooks of
a device, such as that disclosed by Temple, specifically designed
to clamp live bait between the hooks. Second, even if this
modification were made, the combined teachings of the references
would still lack any suggestion of the clamping relationship
required by claims 1 and 2. The somewhat ambiguous conjecture
advanced by the examiner that “two worms each mounted on a shank
would have an equal diameter as one worm mounted between the
shanks and the two worms would be clamped between the shanks”
(final rejection, page 3) stems from an impermissible hindsight
reconstruction of the appellant’s invention. Bablick, applied in
Appeal No. 2002-1906
Application 09/263,532
1 This being so, it is unnecessary to delve into the merits
of the publication evidence of non-obviousness appended to the
appellant’s main brief.
5
combination with Temple and Renaud to reject claim 2, does not
cure the above noted shortcomings of the latter two references.
Thus, the reference evidence applied by the examiner is
insufficient to establish a prima facie case of obviousness with
respect to the subject matter recited in claims 1 and 2.1
Accordingly, we shall not sustain the standing 35 U.S.C. § 103(a)
rejection of claim 1 as being unpatentable over Temple in view of
Renaud, or the standing 35 U.S.C. § 103(a) rejection of claim 2
as being unpatentable over Temple in view of Renaud and Bablick.
Appeal No. 2002-1906
Application 09/263,532
6
SUMMARY
The decision of the examiner to reject claims 1 and 2 is
reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2002-1906
Application 09/263,532
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THEODORE RYDELL
W11091 WEST 10TH RD
POUND, WI 54161