Ex Parte Toman

Board of Patent Appeals and Interferences

Mar 30, 2009

11121818 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte ROBERT N. TOMAN

Appellant
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Appeal 2008-6207
Application 11/121,818
Technology Center 3600

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Decided1: March 30, 2009
_________________

Before JAMESON LEE, SALLY GARDNER LANE, and MICHAEL P.
TIERNEY Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Appellant’s claims 1-7 and 22. Claims 8-21 have been withdrawn. (App.
Br. 4). We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time 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 delivery).
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The real party in interest is said to be applicant Robert N. Toman.
(App. Br. 2).
Appellant’s application is directed to a fishing lure.
The Examiner relied on the following references:
Name Number Issue Date
Snyder 4,891,900 Jan. 9, 1990
Bleam 4,962,6100 Oct. 16, 1990
Tallerico 5,327,670 Jul. 12, 1994

The Examiner rejected claims 1, 2, 4-6, and 22 under 35 U.S.C.
§ 102(b) as being anticipated by either Tallerico or Snyder. The Examiner
also rejected claims 1, 2, 4-7, and 22 as being anticipated by Bleam.
Appellant argued separately for the patentability of claim 22. We review
claims 1 and 22. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as being
obvious over Tallerico, Bleam, or Snyder.
The Examiner rejected claim 7 as being under 35 U.S.C. § 103(a) as
being obvious over either Tallerico or Snyder in view of Bleam.
I. FINDINGS OF FACT
1. Appellant’s claim 1 recites:
An asymmetrically oscillating blade comprising:
a body including 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; and
wherein said blade is configured to asymmetrically oscillate
around a shaft when translated through water.

(App. Br. 22, Claims App’x.).

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2. Appellant’s claim 22 recites:
An asymmetrically oscillating blade comprising:
a body including 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 water; and
wherein said internal; angle is configured to be field modified
to vary said asymmetrical oscillation in response to an environment
condition.

(App. Br. 25, Claims App’x.).
3. Figures 3-1 and 3-2 of Appellant’s specification are reproduced
below.

Figure 3 depicts a top view (Figure 3-1) of an angled blade (200) and a
cross-sectional view (Figure 3-2) of the angled blade at line C of Figure 3-1.
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(Spec. ¶ [0028]). “[T]he angled blade (200) includes first and second faces
(300-1, 300-2) that converge at a ridge portion (310)” (id.), with an internal
angle (320) (id. at ¶ [0029]).
4. Appellant’s specification provides that “the configuration
and/or orientation of the first and second faces (300-1, 300-2 [of Figure 3-2])
causes the angled blade (200) to oscillate asymmetrically about the
shaft. . . .” (Spec. ¶ [0028]).
5. Figure 4 of Tallerico is reproduced below.

Figure 4 depicts the cross section of a fishing lure with a first side (48) and
an opposite side (50) and a longitudinal bend (44) between the two sides.
(Tallerico col. 4, ll. 42-44).

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6. Figure 3 of Bleam is reproduced below.

Figure 3 depicts “the bending of the blade” (Bleam col. 2, ll. 30) of a fishing
lure, with curved edges (18) (id. col. 2, ll. 66).
7. Figure 6 of Snyder is reproduced below.

Figure 6 depicts a cross-sectional view of a fishing lure with body halves 8a
and 8b positioned at an angle to each other. (See Snyder col. 3, ll. 36-37).
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8. Appellant’s claim 3 recites:
The asymmetrically oscillating blade of claim 1, wherein said
internal angle comprises between approximately 139 and 147 degrees
or between 151 and 159 degrees.

(App. Br. 22, Claims App’x.).
9. Neither Tallerico, Bleam, nor Snyder teaches an internal angle
between the sides of the blade that is between 139 and 147 degrees or
between 151 and 159 degrees. (Ans. 5-6).
10. Tallerico teaches that an “object of the present invention is to
provide an improved trolling lure in which the spoons or spinners are formed
having a shallow V section, including two planar elements with a shallow
curvature therebetween.” (Tallerico col. 3, ll. 11-15).
11. Tallerico teaches that
[t]he force developed . . . may also be used to simultaneously
provide the longitudinal bend 44 in the spoon 36, with the first
side 48 and 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.

(Tallerico col. 4, lines 40-46).
12. Snyder teaches that “[w]hile too each of the body halves 8a and
8b are formed at a 50 degree angle relative to a vertical plane through the
longitudinal midline 16 [f]or a combined 100 degree angle, other angles may
also be employed . . . .” (Snyder col. 3, ll. 36-39).
13. Appellant’s claim 7 recites:
The asymmetrically oscillating blade of claim 1, wherein said
body comprises a thickness of between approximately 0.015 and
0.040 inches.

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(App. Br. 23, Claims App’x.).
14. Bleam teaches a blade with “a body 12 . . . approximately 0.025
inch[es] thick.” (Bleam col. 2, ll. 60-62).
II. PRINCIPLES OF LAW
"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." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987) (citation omitted).
“It is well settled that the recitation of a new intended use of an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “[W]here the Patent
Office has reason to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.” In re Swinehart, 439 F.2d
210, 213 (CCPA 1971).
III. ISSUE
Are the fishing lures taught in Bleam, Tallerico, and Snyder
“configured to asymmetrically oscillate around a shaft when translated
through water,” as claimed?
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IV. ANALYSIS
Claims 1, 2, 4-7
Appellant claims a fishing lure with two planar surfaces, which
“converge to form an internal angle . . . .” (FF 1; see FF 3). The Examiner
found that this lure is anticipated by Tallerico, Bleam, or Snyder.
Appellant argues that “[d]ue to the fact that Tallerico is silent with
regard to the oscillation of the disclosed lures, Tallerico fails to teach, either
expressly or inherently, a blade configured to asymmetrically oscillate
around a shaft when translated through water, as claimed in independent
claim 1.” (App. Br. 9). Appellant raises similar arguments against
anticipation by Bleam and Snyder. (See App. Br. 11 and 13).
Tallerico, Bleam, and Snyder each teach a fishing lure with two planar
surfaces oriented with an internal angle between them. (See FFs 5-7). The
Examiner found that “[t]he blade of Bleam (10) has the same basic structure
as appellant’s blade including the first and second substantially planar
surfaces which converge to form an integral angle therebetween and is
therefore capable of spinning asymmetrically as claimed by appellant.”
(Ans. 10). The Examiner made similar findings in regard to Tallerico and
Snyder. (Ans. 8-9 (“There is no single structure being recited that is not
shown and disclosed by the Tallerico patent.”) and 13 (“the blade of Snyder
(2, 3) has the same basic structure as appellant’s blade including the first and
second substantially planar surfaces which converge to form an angle
therebetween and is therefore capable of spinning asymmetrically as claimed
by appellant.”).
Appellant argues that, instead, “Tallerico discloses a blade providing
‘good spinning action,’ without reference to any asymmetrical oscillation.
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See Tallerico col. 4, lines 45-60.” (Reply Br. 2). Appellant also argues that
the blade taught in Bleam “creates turbulence and a water pattern having a
tornado (or symmetrically circular) type effect” and that this blade “spins in
the manner of a traditional spinner bait, which spinning is symmetrical. (See
Bleam Col. 4, lines 61 through Col. 5, line 9).” (App. Br. 16.). Finally,
Appellant argues that Snyder teaches a type of fishing lure that has a
“swimming or side-to-side swaying action” at column 1, lines 5-11, and so
does not teach or suggest a “blade configured to asymmetrically oscillate
around a shaft, as claimed in independent claim 1.” (App. Br. 13 (emphasis
in original)).
We are not persuaded that the blades taught in Tallerico, Bleam, and
Snyder do not also oscillate asymmetrically, while exhibiting the other
movements described. (See Ans. 10 (“Bleam et al. uses the term ‘tornado
type effect’ to describe that the blade spins about an axis, but the term does
not inherently define the spin of the blade (10) as being symmetrical.”)).
Appellant’s specification explains that the configuration and/or orientation
of the two faces “causes the angled blade . . . to oscillate asymmetrically
about the shaft . . . .” (FF 4). But no criteria of configuration or orientation
is specified other than that the two faces converge to form an internal angle.
Thus, the blades of Tallerico, Bleam, and Snyder, which “converge to form
an internal angle” as claimed, also oscillate asymmetrically.
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Appellant has explained neither how the claimed blade is structurally
different from those taught in Tallerico, Bleam,2 and Snyder, nor why it
would function differently.
Appellant argues that the Examiner relies on inherency to make the
anticipation rejections, but “fails to provide any reasonable basis for
concluding that the lures taught by Tallerico, [Bleam et al., and Snyder]
necessarily oscillate in an asymmetrical manner when translating through
water, as claimed.” (Reply Br. 3 (emphasis in original)). The Examiner
shows, though, that Appellant’s claimed blade existed in the prior art and
Appellant’s specification explains that the orientation of the faces of a blade
cause it to oscillate asymmetrically. (FF 4). Thus, the burden has shifted to
Appellant to show that the prior art lures do not oscillate asymmetrically.
See Swinehart, 439 F.2d at 213. Appellant has not met this burden. Thus,
we are persuaded that the prior art lures inherently oscillate asymmetrically.
Tallerico, Bleam, and Snyder teach each and every element recited in
claim 1. See Verdegaal, 814 F.2d at 631. Accordingly, the Examiner did

2 Appellant argues that “the portion of the lure described in Bleam as
teaching a first and a second substantially planar surface (18) is actually
taught in Bleam as being ‘curved side edges.’ (See Bleam, Col. 2, line 66;
Col. 3, lines 33-38).” (App. Br. 12). The Examiner noted that he “realizes
that the side edge (18) itself cannot represent a planar surface and that [he]
originally used the reference number 18 to designate the first and second
substantially planar surfaces since number 18 has an associated reference
line which points closest to the structure which [he] intended to direct
appellant’s attention to as the first and second substantially planar surfaces.”
(Ans. 12). Appellant has not persuaded us that the lure taught in Bleam
lacks “a first substantially planar surface and a second substantially planar
surface.” (Ans. 8).
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not err in rejecting claim 1 under 35 U.S.C. § 102(b) over Tallerico, Bleam,
or Snyder.
Claim 22
Appellant argued against the rejections of claim 22 separately from
the rejection of claim 1, but asserted only that “the arguments made above
with respect to independent claim 1 are equally applicable to independent
claim 22.” (App. Br. 10, 12, and 14). Because we are not persuaded by
Appellant’s arguments in regard to the rejections of claim 1 over Tallerico,
Bleam, or Snyder, we are not persuaded the Examiner erred in rejecting
claim 22 over the same references.
Claim 3
Claims 3 depends from claim 1 and recites “wherein said internal
angle comprises between approximately 139 and 147 degrees or between
151 and 159 degrees.” (FF 8). The Examiner rejected claim 3 under 35
U.S.C. § 103(a) as being obvious over Tallerico, Bleam, or Snyder, though
the claimed ranges are not taught. (Ans. 5 and 6; FF 9). The Examiner
found that “[i]t would have been an obvious matter of design choice to make
the internal angle such that it is between approximately 139 and 147 degrees
or between 151 and 159 degrees . . . .” (Ans. 5; see Ans. 6 for similar finding
regarding Bleam and Snyder). Discovery of an optimum value can be
obvious if the value is a result effective variable of the claimed subject
matter. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
The Examiner found that
Tallerico discloses at Col. 4, lines 40-46, that 'The force
developed . . . may also be used to simultaneously provide the
longitudinal bend 44 in the spoon 36, with the first side 48 and
opposite second side 50 of the spinner each being flat and non-
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coplanar with one another in order to provide better spinning
action while trolling,' and at Col. 3, lines 11-15 that 'Another
object . . . is to provide an improved trolling lure . . . spinners
are formed having a shallow V section, including two planar
elements with a shallow curvature therebetween.' Therefore,
Tallerico has taken into account that configuring the first and
second planar surfaces such that they form an internal angle is
for improving the spinning action of the blade and that
Tallerico also discloses that the angle may be less than 180
degrees but greater than 90 degrees as evidenced by what is
shown in Tallerico's Figure 4.

(Ans. 13-14l; see also FFs 10-11). Thus, those of skill in the art would have
known that the angle between the surfaces of a fishing lure determines its
motion and would have had a reason to modify the angle to obtain a specific
motion for “better spinning action while trolling.” (Id. at 13).
Similarly, Snyder teaches that “other angles may also be employed”
between the planar faces of the lures. (FF 12). Thus, those of skill in the art
would have reason to look for any reasonable angle that would maintain the
function of the fishing lure.
Appellant argues that “paragraphs [0030] through [0032] [of
Appellant’s specification] describe that forming the internal angle between
approximately 139 and 147 degrees and 151 and 159 degrees provides the
unexpected result of producing a desired range of asymmetrical oscillations
that generate a desired ‘thump,’ depending on the fishing situation presented
to the angler.” (App. Br. 15). “It is well settled that a prima facie case of
obviousness may be rebutted ‘where the results of optimizing a variable,
which was known to be result effective, (are) unexpectedly good’” In re
Boesch, 617 F.2d 272, 276 (CCPA 1980). Appellant has not provided
sufficient evidence that the motion obtained with the claimed angles was
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unexpected, in view of the teaching of Tallerico. Furthermore, Appellant
did not compare the effects of the claimed angles with the angles taught in
Tallerico or any other prior art. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) (“when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”) (citation omitted).
Accordingly, the Examiner did not err in rejecting claim 3 under 35
U.S.C. § 103(a) over Tallerico or Snyder.
Finally, the Examiner did not point to portions of Bleam that teach the
effect of an angle between the surfaces of the blade on the motion of the
lure. (See App. Br. 16 and 17). Thus the Examiner has not shown that it was
known to those of skill in the art to modify the angle of the lures taught in
Bleam without knowledge of Appellant’s specification. While the prior art
need not have taught optimizing the angle to control asymmetric oscillation,
the Examiner must provide some reason for optimization that was known in
the art. Cf. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007) (“it
can be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”); see In re Dillon, 919 F.2d 688, 693 (Fed.
Cir. 1990) (“it is not necessary in order to establish a prima facie case of
obviousness that both a structural similarity between a claimed and prior art
compound (or a key component of a composition) be shown and that there
be a suggestion in or expectation from the prior art that the claimed
compound or composition will have the same or a similar utility as one
newly discovered by applicant.”). We do not find a reason to optimize the
angles taught in Bleam in the Examiner’s Answer.
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Accordingly, the Examiner erred in rejecting claim 3 under 35 U.S.C.
§ 103(a) over Bleam or Snyder.
Claim 7
Claim 7 depends from claim 1 and recites “wherein said body
comprises a thickness of between approximately 0.015 and 0.040 inches.”
(FF 13). The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as being
obvious over Tallerico or Snyder in view of Bleam. (Ans. 5 and 7). While
Tallerico does not teach a blade of a fishing lure that has the recited
thickness, the Examiner found that Beam teaches a blade of “approximately
0.025 inch[es] thick” (FF 14) and that “[i]t would have been obvious to a
person of ordinary skill in the art to modify the blade of Tallerico such that it
has a thickness between approximately 0.015 and 0.040 inches in view of
Bleam et al. in order to provide a blade of ample thickness that will not be
resistant to spinning under low trolling speeds.” (Ans. 5; see also Ans. 7 for
similar finding regarding Snyder in view of Bleam).
Appellant argues only that neither Tallerico, Bleam, nor Snyder
teaches “a blade configured to asymmetrically oscillate around a shaft when
translated through water.” (App. Br. 16; see also App. Br. 20). As
discussed above, we find that Tallerico, Bleam, and Snyder teach this
element of claim 1, which is included in dependent claim 7.
Accordingly, the Examiner did not err in rejecting claim 7 under 35
U.S.C. § 103(a) over either Tallerico or Snyder in view of Bleam.
V. ORDER
Upon consideration of the record and for the reasons given,
the Examiner’s rejection of claims 1, 2, 4-6, and 22 under 35 U.S.C.
§ 102(b) over Tallerico is AFFIRMED;
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the Examiner’s rejection of claims 1, 2, 4-7, and 22 under 35 U.S.C.
§ 102(b) over Bleam is AFFIRMED;
the Examiner’s rejection of claims 1, 2, 4-6, and 22 under 35 U.S.C.
§ 102(b) over Snyder is AFFIRMED;
the Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) over
Tallerico is AFFIRMED;
the Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) over
Bleam is REVERSED;
the Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) over
Snyder is AFFIRMED;
the Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) over
Tallerico and Bleam is AFFIRMED; and
the Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) over
Snyder and Bleam is AFFIRMED.
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

rvb

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