Ex Parte Salato

Board of Patent Appeals and Interferences

Jan 25, 2008

10437731 (B.P.A.I. Jan. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOSEPH L. SALATO

Appeal 2008-0149
Application 10/437,731
Technology Center 3600
__________

Decided: January 25, 2008
__________

Before, TONI R. SCHEINER, DEMETRA J. MILLS, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
claims 1-9 and 11-18, all the claims remaining in the application, for
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Claims 1, 4, and 12 are representative and read as follows:
1. A motion waterfowl decoy, comprising:
(a) a body having at least one guide;
(b) at least one wing securable to the body and extending upwardly from
the body to a resting state; and
(c) an actuator connected to the at least one wing and passing through the
Appeal 2008-0149
Application 10/437,731

at least one guide, wherein the at least one guide is positioned on the body to
flex the at least one wing when the actuator is moved.

4. The motion decoy of claim 1, wherein the body is formed from flat
sheet material.

12. The motion decoy of claim 11, wherein the line has a handle
attached at a distal end of the line.

Cited References
Christmas US 2,909,859 Oct. 27, 1959
Berkley US 5,003,722 Apr. 2, 1991
Gazalski US 5,231,780 Aug. 3, 1993
Higdon US 5,375,363 Dec. 27, 1994

Grounds of Rejection
Claims 1-3, 5-7 and 11 stand rejected under 35 U.S.C. § 103(a) as
obvious over Higdon.
Claims 4, 8, 9 and 13 stand rejected under 35 U.S.C. § 103(a) as
obvious over Higdon in view of Berkley.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as obvious over
Higdon in view of Christmas.
Claims 14-15 stand rejected under 35 U.S.C. § 103(a) as obvious over
Higdon in view of Berkley and Gazalski.

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DISCUSSION
Background
The claimed invention relates to waterfowl motion decoys. Flexible,
resilient wings are secured to the body of the bird and extend upwardly and
away from the body. (Specification 3.) The actuator and guides for the bird
wing movement are configured to confer movement to the wing by flexing
the wing. (Specification 3.) The wing may include a hinge and a spring,
wherein the spring is biased against the hinge to maintain the wing in an
extended upward position. (Specification 3.)

Obviousness
Claims 1-3, 5-7 and 11 stand rejected under 35 U.S.C. § 103(a) as
obvious over Higdon.
The Examiner contends that
[t]he patent to Higdon shows a decoy having motion with a
body 12, 14, 16, 18, 20 having at least one guide 28, 84, 86.
Hidgon shows at least one wing 70 securable to the body and
laying along side the body in a resting state. Higdon shows an
actuator 76 connected to the at least one wing and passing
through guide 86. In reference to claims 1 and 3, Higdon does
not show the guide mounted on the body, but it would have
been obvious to mount the guide on the body since the function
is the same and no stated problem is solved. Further, it would
have been obvious to mount the wing in a raised position in a
resting state which is the reverse of what is shown by Higdon
since function is the same and no stated problem is solved.

(Final Rejection 2.)

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Application 10/437,731

Appellant contends that
the wing of Higdon cannot extend upwardly from the
body to a resting state, because of the hinge (Fig. 6.) which
causes the wing to open “outwardly and downward.”
. . .

A careful reading of the text of the patent at col. 4 lines
25-30 in conjunction with Fig. 6 demonstrates conclusively that
the wing opens downwardly. “The wing 70 is hinged to the
body 12 and pivots about an axis 71, which lies at an angle
alpha from the vertical. The angle alpha is preferably between
15 degrees and 45 degrees, so that the wing opens outward and
down-ward.”

(Br. 4.)

In making an obviousness determination over a combination of
prior art references, it is important to identify a reason why persons of
ordinary skill in the art would have attempted to make the claimed
subject matter. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741
(2007). When making such a determination, the scope of the prior art
and level of ordinary skill must be considered. Graham v. John Deere
Co., 383 U.S. 1, 17 (1966).
We agree with Appellant that Higdon fails to disclose “at least one
wing securable to the body and extending upwardly from the body to a
resting state,” as claimed. The wings on the decoy of Higdon move outward
and downward from the side of the bird upon actuation. In contrast, the
claimed wings are “extending upwardly from the body” in a resting state and
move downward upon actuation so that the wings splash the water.
(Specification 7.) We do not find that the Examiner has provided sufficient

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reason that would have prompted persons of skill in the art to have modified
Higdon by changing the direction of the wing movement to permit such
decoy to splash water upon flexing. Nor do we find the Examiner has
presented sufficient evidence of a reason to have moved the eyelet guide 86
of Higdon from the block beneath the decoy to the body of the decoy, as
claimed.
In view of the above, the rejection is reversed.

Claims 4, 8, 9 and 13 stand rejected under 35 U.S.C. § 103(a) as
obvious over Higdon in view of Berkley.
Higdon is discussed above. The Examiner acknowledges that Higdon
does not show the body formed from a flat sheet of material. (Final
Rejection 3.) Berkley shows a bird with a flat body. (Berkley, Figs. 1, 3,
and 7.) The Examiner concludes, that “it would have been obvious to
provide Higdon with a flat body as shown by Berkley since merely one
mechanically equivalent body is being substituted for another and the
function is the same.” (Final Rejection 3).
Appellant contends that “neither cited reference discloses wings
extending upwardly and outwardly from the body to a resting state. In
Higdon the wing lies against the body in the resting state.” (Br. 6.)
As discussed above, we agree with Appellant that Higdon fails to
suggest wings extending upwardly and outwardly from the body to a resting
state. We do not find that Berkley overcomes the deficiencies of Higdon.
The rejection is reversed.

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Claim 12 stands rejected under 35 U.S.C. § 103(a) as obvious over
Higdon in view of Christmas.
The Examiner acknowledges that Higdon does not show a handle on
the end of the line. (Final Rejection 4.) Thus, the Examiner relies on
Christmas show to show a decoy with a line 53 having a handle 55. (Final
Rejection 4.) The Examiner argues it would have been obvious to provide
Higdon with a handle as shown by Christmas for the purpose of providing a
larger gripping area. (Final Rejection 4.)
We do not find the combination of Higdon and Christmas overcomes
the above noted deficiencies in Higdon with respect to the wing position at
rest. Thus the rejection is reversed.

Claims 14-15 stand rejected under 35 U.S.C. § 103(a) as obvious over
Higdon in view of Berkley and Gazalski.
Higdon and Berkley are discussed above. Berkley shows slots 10, 12
in the body into which the wings are inserted. (Final Rejection 4.) The
Examiner acknowledges that the combination of Higdon as modified by
Berkley does not show a downwardly extending rib protruding from each of
the wings. (Final Rejection 4.)
According to the Examiner, the patent to Gazalski shows a decoy
having a body 8 with slots 5 having downwardly extending ribs 3, 4
protruding from the body. (Final Rejection 4.) Gazalski shows the wings 15
of flexible material, but does not disclose a forward sleeve to receive a
reinforcing flexible rib 3 or 4. (Final Rejection 4.) Gazalski discloses in
column 2, lines 47-53 that the wings can be attached by any suitable means.

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(Final Rejection 4.) In Galzalski the wings are at rest in a downward
position (Fig. 3) and the wings flap and extend upwardly upon actuation.
(Gazalski, col. 3, ll. 2-7.) The Examiner concludes it would have been
obvious to attach the wings using a forward sleeve which the support rods 3,
4 are inserted in. (Final Rejection 4.)
We do not find the combination of Higdon and Gazalski overcomes
the above noted deficiencies in Higdon with respect to the wing position at
rest. Thus the rejection is reversed.

SUMMARY
The rejection of claims 1-3, 5-7 and 11 under 35 U.S.C. § 103(a) as
obvious over Higdon is reversed.
The rejection of claims 4, 8, 9 and 13 under 35 U.S.C. § 103(a) as
obvious over Higdon in view of Berkley is reversed.
The rejection of claims 12 under 35 U.S.C. § 103(a) as obvious over
Higdon in view of Christmas is reversed.
The rejection of claims 14-15 under 35 U.S.C. § 103(a) as obvious
over Higdon in view of Berkley and Gazalski is reversed.

REVERSED

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BRIGGS AND MORGAN P.A.
2200 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402

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