Ex Parte Sitton

Board of Patent Appeals and Interferences

Jul 29, 2002

08989574 (B.P.A.I. Jul. 29, 2002)

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for publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GARY L. SITTON
____________
Appeal No. 2002-0606
Application No. 08/989,574
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 6,
15 to 18, 20 and 22. Claims 19, 21 and 23 have been objected to as depending from a
non-allowed claim. Claims 7 to 10 and 14 have been withdrawn from consideration.
Claims 11 to 13 have been canceled.
We REVERSE.
Appeal No. 2002-0606
Application No. 08/989,574
Page 2
1 In determining the teachings of Nobusato, we will rely on the translation of record provided by
the Japanese Patent Office.
BACKGROUND
The appellant's invention relates to a fishing hook having improved penetration
capability which is comprised of two or more materials (specification, p. 1). A copy of
the claims under appeal is set forth in the appendix to the appellant's brief.
The prior art reference of record relied upon by the examiner in rejecting the
appealed claims is:
Nobusato JP 6-2692361 Sept. 27, 1994
Claims 1 to 5, 15 to 17, 20 and 22 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Nobusato.
Claims 6 and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Nobusato.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection (Paper No. 17, mailed February 7, 2001) and the answer (Paper No. 20,
Appeal No. 2002-0606
Application No. 08/989,574
Page 3
mailed September 11, 2001) for the examiner's complete reasoning in support of the
rejections, and to the brief (Paper No. 19, filed July 9, 2001) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The anticipation rejection
We will not sustain the rejection of claims 1 to 5, 15 to 17, 20 and 22 under
35 U.S.C. § 102(b).
To support a rejection of a claim under 35 U.S.C. § 102(b), it must be shown that
each element of the claim is found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984).
Appeal No. 2002-0606
Application No. 08/989,574
Page 4
All the claims under appeal are drawn to a fish hook comprising, inter alia,
(1) integral eye, shank, bight, and barb formed of plastic and (2) a member, comprised
of a material having a hardness greater than that of the plastic, running longitudinally
through a portion of the plastic wherein one end of the member extends through the
plastic comprising the barb to form the point of the barb.
The appellant argues (brief, pp. 4-5) that claims 1 to 5, 15 to 17, 20 and 22 are
not anticipated by Nobusato since Nobusato lacks a member which extends through the
plastic comprising the barb (i.e., the member must extend through a plastic barb). We
agree. While Nobusato does disclose a fishhook made of a metal member 1 covered
with plastic 2 (see Figures 1-4), Nobusato does not teach a member extending through
the plastic comprising the barb to form the point of the barb. In that regard, as shown in
Figures 1 and 4 of Nobusato, the metal member 1 does not extend through the plastic
comprising the barb. Likewise, while the metal member 1 does extend through the
plastic to form the barb as shown in Figures 2 and 3 of Nobusato, the metal member 1
does not extend through the plastic comprising the barb.
Since all the limitations of claims 1 to 5, 15 to 17, 20 and 22 are not found, either
expressly described or under principles of inherency, in Nobusato for the reasons set
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Application No. 08/989,574
Page 5
forth above, the decision of the examiner to reject claims 1 to 5, 15 to 17, 20 and 22
under 35 U.S.C. § 102(b) is reversed.
The obviousness rejection
We will not sustain the rejection of dependent claims 6 and 18 under 35 U.S.C.
§ 103 for the reason set forth above with respect to their parent claims. In that regard,
the examiner has not set forth any rationale as to why the above-noted limitation not
taught by Nobusato would have been obvious at the time the invention was made to a
person of ordinary skill in the art. Accordingly, the decision of the examiner to reject
claims 6 and 18 under 35 U.S.C. § 103 is reversed.
Appeal No. 2002-0606
Application No. 08/989,574
Page 6
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 5, 15 to 17, 20
and 22 under 35 U.S.C. § 102(b) is reversed and the decision of the examiner to reject
claims 6 and 18 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2002-0606
Application No. 08/989,574
Page 7
MARK R. WISNER
WISNER & ASSOCIATES
2925 BRIARPARK, SUITE 930
HOUSTON, TX 77042
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