Ex Parte Toman

Board of Patent Appeals and Interferences

Apr 16, 2009

11121822 (B.P.A.I. Apr. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT N. TOMAN,
Appellant
____________________

Appeal 2009-2191
Application 11/121,8221
Technology Center 3600
____________________

Decided:2 April 16, 2009
_____________________

Before CAROL A. SPIEGEL, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
I. Statement of the Case
Appellant appeals under 35 U.S.C. § 134 from an Examiner's final
rejection of claims 9-17. Claims 1-8, 18, and 19, the only other pending

1 The real party in interest is Robert N. Toman (Appeal Brief filed 13 August
2007 ("Br."), at 1).
2 The two month period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on
this page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic date).

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claims, are withdrawn from consideration (Br. 2;3 Ans. 24). We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134. We AFFIRM.
The subject matter on appeal is directed to a fishing lure having an
angled blade configured to allow the blade to oscillate asymmetrically
around a shaft when the lure is moved through water. Claims 9 and 12 are
illustrative and read (Br. Claims App'x at 15).
9. A freshwater fishing lure comprising:
a shaft in the form of a V shaped wire arm;
a fish hook coupled to said shaft; and
an asymmetrically oscillating blade rotatably
coupled to said shaft, said blade including a
substantially oval body having a first substantially
planar surface and a second substantially planar
surface, wherein said first substantially planar
surface and said second substantially planar
surface converge to form an internal angle,
wherein said blade is configured to asymmetrically
oscillate around a shaft when translated through
the water and wherein said asymmetrically
oscillating blade is sized between a 00 and an 13.

12. The fishing lure of claim 9, wherein said
internal angle comprises between approximately
139 and 159 degrees.

The Examiner has rejected (i) claims 9, 11, and 14-16 as unpatentable
under 35 U.S.C. § 102(b) over Bleam5 (Ans. 4); (ii) claims 9, 11, 12, and 14-
16 as unpatentable under 35 U.S.C. § 103(a) over Bleam (Ans. 5); (iii)
claims 10 and 13 as unpatentable under 35 U.S.C. § 103(a) over Bleam in

3 Appeal Brief Filed 14 August 2007 (“Br.”).
4 Examiner's Answer mailed 15 November 2007 ("Ans.").
5 U.S. Patent 4,962,610, Method of Constructing a Fishing Lure Blade and
Blade Constructed Thereby, issued 16 October 1990, to Bleam et al.
("Bleam").
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view of Johnson6 (Ans. 5-6); (iv) claim 17 as unpatentable under 35 U.S.C.
§ 103(a) over Bleam in view of Davis7 (Ans. 6); (v) claims 9-13, 16, and 17
as unpatentable under 35 U.S.C. § 103(a) over Boullt8 in view of Tallerico9
(Ans. 6-7); and, (vi) claims 14 and 15 as unpatentable under 35 U.S.C.
§ 103(a) over Boullt in view of Tallerico and further in view of Bleam (Ans.
7-8).
As to rejections (i) and (ii), Appellant argues that Bleam fails to teach
or disclose an asymmetrically oscillating blade as recited in claim 9, that
neither Johnson nor Davis remedy this deficiency, and that the internal angle
recited in claim 12 provides an unexpected range of asymmetrical
oscillations (Br. 4-10). As to rejections (iii) through (vi), Appellant agrees
that Boullt fails to disclose an asymmetrically oscillating blade as recited in
claim 9 and argues that neither Tallerico nor Bleam remedy this deficiency
in Boullt (Br. 11-12). Therefore, as to rejections (i) and (iii) through (vi), we
decide this appeal on the basis of claim 9 and, as to rejection (ii), we decide
this appeal on the basis of claims 9 and 12. 37 C.F.R. § 41.37(c)(1)(vii).
At issue is whether Appellant has shown that the Examiner erred in
finding that Bleam and Tallerico each teach or suggest a fishing lure having
a blade configured for asymmetrical oscillation around a shaft as recited in
claim 9; and, whether Appellant has shown that a blade having an internal

6 U.S. Patent 6,684,559 B2, Spinner-Type Fishing Lures, issued 3 February
2004, to Johnson et al. ("Johnson").
7 U.S. Patent 3,127,694, Fishing Spinning Lure, issued 7 April 1964, to
Lester M. Davis ("Davis").
8 U.S. Patent 5,605,004, Spinner Fishing Lure, issued 25 February 1997, to
Boullt et al. ("Boullt").
9 U.S. Patent 5,327,670, Trolling Lure, issued 12 July 1994, to Roy D.
Tallerico ("Tallerico").
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angle of between about 139 and 159 degrees, as recited in claim 12, provides
an unexpected range of asymmetric oscillation.
II. Findings of Fact ("FF")
The following findings of fact are supported by a preponderance of
the evidence of record.
A. The 822 Application
[1] According to the 822 specification ("Spec."), conventional spinner
blades "are primarily a shaped disc which is convex when viewed
from one broad side and concave when viewed from the opposite
broad side" (Spec. ¶ 2).
[2] The 822 specification describes an embodiment depicted in Figure 8
of a fishing lure 800 comprising a shaft, i.e., a wire arm 820 formed in
the shape of a "V," coupled on one end to fish hook 840 and on the
other end to an angled blade 200 which, as shown in Figure 3-2,
includes first and second faces 300-1 and 300-2 that converge at a
ridge portion 310, thereby defining an internal angle 320 (Spec. ¶¶ 31,
32, 45). Figures 8 and 3-2 are reproduced below.

{Figure 8 illustrates a spinner lure according to one embodiment of
Appellant's invention and Figure 3-2 depicts a cross-sectional view of an
angled blade according to one embodiment of Appellant's invention.}
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[3] According to the 822 specification, as the angled blade 200 spins
through the water, it rotates asymmetrically and produces a rhythmic
"thumping" which may be detected by a fish (Spec. ¶ 29).
[4] The degree of "thump" may be adjusted for various situations, e.g.,
low light or tall grass cover, by varying the gage of the angled blade
and/or by adjusting the degree of its internal angle (Spec. ¶¶ 30, 32,
36, 38).

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B. Bleam
[5] Bleam describes a fishing lure 10, e.g., as depicted in Figure 1,
including a shaft in the form of a V-shaped wire 30, attached at one
end to a fishing hook 28 and at the other end to a blade 12 which, as
shown in Figure 5 and the upper portion of Figure 3, includes first and
second surfaces extending from opposing side edges 18 to a central
concavo-convex portion 14,16 which contains a slot 22 cut through
the blade's body, as well as a kicker 46 (Bleam 2:56-3:20). Figure 1,
Figure 5, and the upper portion of Figure 3 are reproduced below.

{Figure 1 of Bleam is a perspective view of one embodiment of a fishing
lure including a metal blade. Figure 3 is a perspective view showing the first
step in the bending of the blade which involves inserting the blade into a
curved groove in a special tool. Figure 5 is a side elevational view of the
blade showing the flap folded completely over against the body of the
blade.}

[6] Bleam is directed to a method by which a blade body 12 may be bent
accurately and repeatedly such that kicker 46 is bent in exactly the
right places and at exactly the right angles to provide the blade with
the desired action in the water (Bleam 1:42-46).
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[7] Bleam states, at column 4, line 61, through column 5, line 10, that
[t]he blade 10 … exhibits properties that are
highly attractive to fish. When the lure is drawn
along or near the surface of the water, the blade 10
is able to spin on wire 36, and the lip 50 acts in the
manner of a stabilizer to maintain the blade at the
proper orientation as it spins in the water. The
scooping action provided by the gap formed
between the flap 48 and the lure body 12 creates
turbulence and a water pattern having a tornado
type effect. In addition, a "rooster tail" water
pattern is thrown out behind the blade as it moves
in the water. The overall effect is similar to a
buzzer bait effect.
When the blade is traveling beneath the
surface of the water, it spins in the manner of a
spinner bait and creates flashing light that is
attractive to fish. In addition, the scooping action
of the flap 48 creates a pattern of turbulence which
is also attractive to fish.
C. Boullt
[8] Boullt describes a fishing lure, e.g., as shown in Figure 1, comprising
a V-shaped wire shaft 20, a fish hook 42, and at least one spinner
blade 58 (Boullt 4:20-23; 5:31-34 and 66-67). Figure 1 is reproduced
below.

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{Figure 1 of Boullt is an elevation view of a preferred fishing lure
embodiment.}

[9] According to Boullt, any spinner blade may be used with its fishing
lure since
[t]he purpose … is obviously to attract fish,
therefore, the combination of color, texture, shape,
and configuration may vary as to the type of fish to
be attracted and the movement characteristics,
along with the depth variations created by each
design (Boullt 6:11-25).
D. Tallerico
[10] Figures 2 and 4 of Tallerico depict a spinner blade 36 having a
longitude bend 44, first and second sides 48, 50 each being flat and
non-coplanar with one another, and areas containing pores 40 for
retaining pockets of fish attractant scent 46 (Tallerico 3:11-15; 4:17-
20, 36-49). Figures 2 and 4 are reproduced below.

{Figure 2 of Tallerico is a perspective view of a spinner blade and Figure 4
is a cross-sectional view of Figure 2.}

[11] Tallerico states at column 4, lines 40-60,
The forced developed during the knurling process
may also be used to simultaneously provide the
longitudinal bend 44 in the spoon 36, with the first
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side 48 and the opposite second side 50 of the
spinner 36 each being flat and non-coplanar with
one another in order to provide better spinning
action while trolling. The pores 40 or knurled
areas 42 provide small depressions which serve to
retain small pockets of fish attractant scent 46, as
shown in the cross section of FIG. 4. It will be
understood that the spoon or spinner 36 of FIGS. 2
and 4 is identical in construction to the spoons or
spinners 12, 14, and 16 shown in FIG. 1, the only
difference being One [sic] of size or scale. FIG. 1
shows a small spinner 16, a medium sized spinner
12, and a larger spinner 14 installed thereon. This
is but one of numerous possible combinations, in
which different size spinners or spinners of equal
size may be used.
Trolling lure 10 is used by trolling or
otherwise moving the lure through the water, to
impart a spinning or fluttering action to the
spinners 12, 14, and/or 16.
III. Discussion
A. Legal principles
A prior art reference must disclose every limitation of the claimed
invention, either expressly or inherently, to anticipate. In re Schrieber, 128
F.3d 1437, 1477 (Fed. Cir. 1997). However, "[w]here, … the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product." In re Best, 562 F.2d
1252, 1255 (CCPA 1977).
The factual inquiry to determine whether an invention is obvious
under 35 U.S.C. § 103 requires consideration of (1) the scope and content of
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the prior art, (2) the differences between the claimed subject matter and the
prior art, (3) the level of ordinary skill in the art, and (4) secondary
considerations, e.g., unexpected results. Graham v. John Deere Co., 383
U.S. 1, 17 (1966). "Section 103 forbids issuance of a patent when 'the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S.Ct.
1727, 1734 (2007). "If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability." Id. at 1740.
Furthermore, "the suggestion to modify the art to produce the claimed
invention need not be expressly stated in one or all of the references used to
show obviousness. 'Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.'" Cable
Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1025 (Fed. Cir. 1985)
(quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
B. Rejections based on Bleam
1. Positions of the Examiner and Appellant
As to claim 9, the Examiner found that "[t]he blade of Bleam (10) has
substantially the same basic structure as appellant's blade including the first
and second substantially planar surfaces which converge to form an internal
angle therebetween and is therefore capable of spinning asymmetrically as
claimed" (Ans. 10).
Appellant argues that it is unreasonable to suggest that the curved side
edges in Bleam teach or suggest the first and second substantially planar
surfaces recited in claim 9 (Br. 5) and that Bleam teaches that its blade spins
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in a traditional symmetrical manner at column 4, line 61, through column 5,
line 9 (Br. 6; see FF 7). Appellant contends these arguments apply to the
rejections under both §§ 102 and 103 (Br. 7).
The Examiner contends that the first and second substantially planar
surfaces recited in claim 9 are each bounded by a respective side edge (18)
on one side and on the other side by a respective longitudinal bend extending
along a side of the concave surface (14), e.g., as shown in Bleam Figure 3
(Ans. 9, 12; see also FF 5). According to the Examiner, blade 10 of Bleam
is capable of asymmetrically oscillating because it has the same structure as
recited in claim 9 and lacks any accompanying structure which would
prevent the blade from moving in an asymmetrical manner (Ans. 10, 12).
The Examiner also contends that Bleam does not state that spin on the blade
is symmetrical at column 4, line 61, through column 5, line 9, (Ans. 10, 12).
As to claim 12, Appellant argues that forming an internal angle
between approximately 139 and 159 degrees "provides an unexpected
desired range of asymmetrical oscillations that generate a desired 'thump,'
depending on the fishing situation presented to the angler. See Specification,
paragraphs [0033] through [0039]" (Br. 8). Appellant further argues that the
Examiner has not provided any explanation why it would have been obvious
to provide the claimed internal angle (Br. 9).
According to the Examiner,
a person of ordinary skill in the art would have
readily designed the internal angle according to the
amount of turbulence to be generated by the blade
and the desired spin on the blade and because the
blade with an internal angle in this range would
serve to catch water wherein a slightly larger
internal angle would catch more water causing
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more spinning versus a slightly smaller internal
angle which catches less water (Ans. 13).
In other words, selection of the internal angle depends on the fishing
situation presented to the angler, e.g., the aggressiveness of the fish, the
water conditions, and the temperature of the water (Ans. 13-14).
2. Analysis
Here, the Examiner has presented a sufficient factual basis for finding
that lure 10 of Bleam, in particular blade 12, has the same or substantially
the same structure as the lure recited in claim 9 (compare FF 2 with FF 5)
and Appellant has not shown otherwise. Best, 562 F.2d at 1255. To the
extent Bleam may be said to describe any portion of blade 12 as not
substantially planar, Bleam refers to concavo-convex portion 14,16 (FF 5)
which, as the Examiner has pointed out, does not correspond to the first and
second substantially planar surfaces recited in claim 9.
We also agree with the Examiner that Bleam does not expressly state
at column 4, line 61, through column 5, line 9, that the spin on blade 12 is
symmetrical (FF 7) and Appellant has not established that the cited passage
in Bleam inherently discloses that the spin on blade 12 is necessarily
symmetrical. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092
(Fed. Cir. 1997) (nothing in the rules or in jurisprudence requires the fact
finder to credit unsupported or conclusory assertions); In re Schulze, 346
F.2d 600, 602 (CCPA 1965) (argument in the brief does not take the place of
evidence of record).
Similarly, as to claim 12, a conclusory assertion that an internal angle
between approximately 139 and 159 degrees "provides an unexpected
desired range of asymmetrical oscillations that generate a desired 'thump,'
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depending on the fishing situation presented" (Br. 8) is insufficient to
demonstrate unexpected results to overcome a prima facie conclusion of
obviousness. For example, Appellant has provided no data comparing
"thumps" generated within and without a range of internal angles between
139 and 159 degrees in any fishing situation, let alone a representative
number of fishing situations commensurate in scope with the claimed
invention.
Therefore, based on the foregoing we will sustain the rejections of (i)
claims 9, 11, and 14-16 under § 102 over Bleam; (ii) claims 9, 11, 12, and
14-16 under § 103 over Bleam; (iii) claims 10 and 13 under § 103 over
Bleam in view of Johnson, and (iv) claim 17 under § 103 over Bleam in
view of Davis.
C. Rejections based on Boullt and Tallerico
1. Positions of the Examiner and Appellant
The Examiner admits that Boullt does not disclose a fishing lure
having an asymmetrically oscillating blade having first and second
substantially planar surfaces as recited in claim 9 ( Ans. 6-7). The Examiner
found that Tallerico discloses asymmetrically oscillating blades 12,14,16
having first and second surfaces forming an internal angle as recited in claim
9 (Ans. 7). The Examiner concluded that it would have been obvious to
substitute the angled blade of Tallerico for the relatively flat blade of Boullt
"in order to provide a blade that can catch the water and cause fluttering of
the blade to attract fish" (Ans. 15). The Examiner noted that there is no
structure associated with the blade of Tallerico (or Boullt or Bleam) that
would prevent the blade from oscillating asymmetrically and that the water
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force in a particular fishing situation may affect the oscillation and action of
a blade (Ans. 15).
Appellant argues that Tallerico only discloses a blade providing good
spinning action, without any reference to asymmetrical oscillation, e.g., at
column 4, lines 45-60 (Br. 11; see FF 11). According to Appellant, since
none of Boullt, Tallerico, and/or Bleam teach or suggest a fishing lure blade
configured to oscillate asymmetrically around a shaft when translated
through water, the obviousness rejection must fail (Br. 11-12).
2. Analysis
The PTO has the initial burden to establish a prima facie case of
obviousness under 35 U.S.C. § 103. In re Fine, 837 F.2d 1071, 1074 (Fed.
Cir. 1988); In re Piasecki, 745 F.2d 1468, 1471-72 (Fed. Cir. 1984). The
PTO can satisfy this burden by showing some objective teaching in the art or
prior knowledge in the art which would have led one of ordinary skill in the
art to the subject matter claimed. Fine, 837 F.2d at 1075.
Here, the Examiner relies on prior knowledge in the art. In other
words, the Examiner's position, as we understand it, is that one of ordinary
skill in the art would have expected an angled blade to "catch" water when it
is moved along/through the water and, therefore, flutter, i.e., move in an
irregular fashion or oscillate asymmetrically. Similarly, an ordinarily skilled
artisan would not have expected a flat blade to "catch" water and, therefore,
flutter asymmetrically. Appellant's argument that Tallerico does not refer to
asymmetric oscillation, e.g., at column 4, lines 45-60, does not address the
"fluttering" knowledge asserted by the Examiner (nor Tallerico's disclosure
of a lure which has a fluttering action when trolled or otherwise moved
through the water (FF 11)). It is well-settled that "the suggestion to modify
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the art to produce the claimed invention need not be expressly stated in one
or all of the references used to show obviousness. 'Rather, the test is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art.'" Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
at 1025. Thus, this argument is not persuasive of Examiner error.
Based on the foregoing, we will sustain the rejections of (v) claims 9-
13, 16, and 17 under § 103 over Boullt in view of Tallerico, and of (vi)
claims 14 and 15 under § 103 over Boullt in view of Tallerico and Bleam.
D. Conclusion
Appellant has not shown that the Examiner erred in finding that
Bleam and Tallerico each teach or suggest a fishing lure having a blade
configured for asymmetrical oscillation around a shaft as recited in claim 9;
and, Appellant has not shown that a blade having an internal angle of
between about 139 and 159 degrees, as recited in claim 12, provides an
unexpected range of asymmetric oscillation.
IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 9, 11,
and 14-16 as unpatentable under 35 U.S.C. § 102(b) over Bleam is
AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 9, 11, 12, and 14-16 as unpatentable under 35 U.S.C. § 103(a) over
Bleam is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 10 and 13 as unpatentable under 35 U.S.C. § 103(a) over Bleam in
view of Johnson is AFFIRMED;
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FURTHER ORDERED that the decision of the Examiner to reject
claim 17 as unpatentable under 35 U.S.C. § 103(a) over Bleam in view of
Davis is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 9-13, 16, and 17 as unpatentable under 35 U.S.C. § 103(a) over
Boullt in view of Tallerico is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 14 and 15 as unpatentable under 35 U.S.C. § 103(a) over Boullt in
view of Tallerico and further in view of Bleam is AFFIRMED; and,
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. §
1.136(a).
AFFIRMED

ack

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