Ex Parte VanScoyocDownload PDFPatent Trial and Appeal BoardSep 26, 201312321961 (P.T.A.B. Sep. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/321,961 01/27/2009 Bruce K. VanScoyoc TSS12009 2959 76266 7590 09/26/2013 Timothy S. Stevens, Patent Attorney 5108 Foxpoint Circle Midland, MI 48642 EXAMINER AVILA, STEPHEN P ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 09/26/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRUCE K. VANSCOYOC ____________________ Appeal 2011-011717 Application 12/321,961 Technology Center 3600 ____________________ Before: JAMES P. CALVE, WILLIAM A. CAPP, and SCOTT A. DANIELS, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011717 Application 12/321,961 2 STATEMENT OF CASE Bruce K. VanScoyoc (Appellant) appeals under 35 U.S.C. § 134 from a rejection of claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Deinert (U.S. 4,103,844, iss. Aug. 1, 1978) and non-patent literature referred to as Big Jon Sports®, Captain's Pak - One Hand Crank, Manual Siderigger (hereinafter “Captain’s Pak One Hand Crank”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s invention is an anchor reel. Spec. 1, ll. 7-8. Claim 2, the only claim on appeal, is reproduced below: 2. Apparatus comprising a reel, a length of anchor line, one end of which anchor line is wound on the reel, the other end of which anchor line is attached to an anchor, a shaft, a crank, a clutch bearing, and a drag washer, the reel mounted on a first portion of the shaft, a second portion of the shaft mounted in the clutch bearing so that the shaft will rotate only in one rotational direction, the crank threadably attached to a threaded third portion of the shaft so that when the crank is rotated in the rotational direction permitted by the clutch bearing, the crank threads onto the threaded portion of the shaft thereby compressing a drag washer mounted on the shaft directly or indirectly in contact with the reel and the shaft so that the reel rotates in the rotational direction permitted by the clutch bearing to reel in the anchor line and so that when the crank is rotated in the rotational direction opposite the direction permitted by the clutch bearing, the crank unthreads from the threaded portion of the shaft thereby decompressing the drag washer mounted on the shaft directly or indirectly in contact with the reel and the shaft so that the reel can rotate in the rotational direction opposite that permitted by the clutch bearing so that the anchor line can be reeled out. Appeal 2011-011717 Application 12/321,961 3 ANALYSIS Prima Facie Obviousness of Claim 2 The Examiner finds that Deinert discloses a reel 2 having an anchor line 5 and an anchor (described, but not shown) for a boat. Ans. 4. The Examiner turns to Captain’s Pak One Hand Crank for the specific mechanism of an anchor reel, including a reel, crank, clutch and drag washer. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to use the reel mechanism from Captain’s Pak One Hand Crank in Deinert’s anchor reel. According to the Examiner, a person of ordinary skill in the art would have done this because it merely combined known features achieving predictable results and would have provided improved reeling, anchor handling, and lower cost. Ans. 4. Appellant traverses the rejection by arguing that Captain’s Pak One Hand Crank is used to lower and raise a ‘cannonball’ while the claimed invention is used to lower and raise an anchor. App. Br. 11. Appellant argues that overcoming this distinction would not have been obvious to one of skill in the art and supports this position with declarations from Stephen Emery, Mark Charles Romanack, William James Muirhead, Dennis Morgan, and Victor Lee Winstrom, each asserting that it would not be obvious to combine Captain’s Pak One Hand Crank with Dienert. App. Br. 11. 1 Based in large part on Appellant’s declaration testimony, Appellant contends that 1 “I never thought to use a device like the Big Jon Captain’s One Hand Crank to raise and lower my anchor.” Decl’n of Romanack, Muirhead, Morgan and Winstrom. Stephen Emery’s declaration asserts only slightly differently, “I never thought to use a device like the Big Jon Captain’s One Hand Crank to reel my anchor line.” Decl’n of Emery. Appeal 2011-011717 Application 12/321,961 4 the Examiner’s determination of obviousness is in error because one of skill in the art would not use the reel mechanism of Captain’s Pak One Hand Crank to raise and lower an anchor such as in Deinert. Id. Appellant considers a person of ordinary skill in the art to be a sport fisherman, not a professional equipment designer. Reply Br. 4. Appellant argues that Emery, Romanack, Muirhead, Morgan and Winstrom are each skilled in the art of sport fishing. App. Br. 10. In addition to the declarants, Appellant considers himself to be representative of persons of ordinary skill in the art. Reply Br. 4. Appellant argues that many sport fishing inventions are made by independent inventors like Appellant. Id. The Examiner responds by stating that manual anchor reels such as that taught by Deinert are well known in the boating art for raising anchors. Ans. 5. The Examiner discounts the probative value of Appellant’s declarations, stating that a person of ordinary skill in the art is a designer of anchor reels. Id. The Examiner explains, in essence, that the pertinent art or field of endeavor is that of designing anchor reels. Ans. 5. The Examiner notes, in contrast, that Appellant’s declarations are from the perspective of a lay, sport fisherman, rather than from the perspective of an artisan skilled in the field of designing anchor reels. Id. “The decision of obviousness vel non is made not from the viewpoint of the inventor, but from the viewpoint of a person of ordinary skill in the field of the invention.” Arkie Lures Inc. v. Gene Larew Tackle Inc., 119 F.3d 953, 956 (Fed. Cir. 1997). The person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). The actual inventor’s skill is not determinative. Id. Appeal 2011-011717 Application 12/321,961 5 In order to ascertain the level of ordinary skill in the art, we first must determine what the applicable “art” is. Our supervising court uses the term “art” as synonymous with the inventor’s field of endeavor. See, e.g., In re Dance, 160 F.3d 1339, 1343 (Fed.Cir. 1998). In the instant case, we agree with the Examiner that the applicable field of endeavor is that of equipment design for anchor reels and similar devices. As such, Appellant’s declaration testimony is not probative of what would have been obvious to a person of ordinary skill in the art as such testimony is from the perspective of a sport fisherman, not someone skilled in the art of designing equipment such as anchor reels. Inasmuch as Appellant has hinged his case on non- probative evidence, we do not find Appellant’s arguments based on such evidence to be persuasive.2 Appellant does not otherwise dispute that anchor reels such as that disclosed by Dienert, and reel mechanisms such as Captain’s Pak One Hand Crank, are well known in the art. Ans. 5, App. Br. 10. See In re Chevenard, 139 F.2d 709, 713 (CCPA 1943) (appellant failed to demand that the examiner produce authority for his statement). Under the circumstances, we believe the Examiner’s findings of fact regarding the teachings of the prior art are supported by a preponderance of the evidence. Appellant next argues that the combination of Deinert and Captain’s One Hand Crank is obvious only in hindsight. App. Br. 11. However, Appellant’s general allegation of hindsight does not explain why the 2 We similarly accord no weight to declarants opinions on the legal conclusion of obviousness as it is well settled that an opinion on the ultimate legal conclusion is not evidence. Nutrition 21 v. United States, 930 F.2d 867, 871 n.2 (Fed. Cir. 1991); Avia Group Int'l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1564 (Fed.Cir. 1988) (An opinion on the legal conclusion of obviousness is neither necessary nor controlling). Appeal 2011-011717 Application 12/321,961 6 proposed modifications are based solely on Appellant’s own disclosure. Appellant relies only upon the conclusory statements in the appended declarations that the combination was not obvious to Emery, Romanack, Muirhead, Morgan or Winstrom. Id. As discussed supra, the Declarants’ opinions on obviousness are not probative on the pertinent fact issues and otherwise do not carry any weight on the ultimate legal conclusion of obviousness. Consequently, we find that the Examiner’s findings and conclusions regarding a prima facie case of obviousness based on the first three Graham factors are well supported.3 Secondary Considerations of Nonobviousness Appellant seeks to overcome the Examiner’s prima facie case of obviousness by submitting evidence of secondary considerations from Stephen Emery, Mark Charles Romanack, William James Muirhead, Dennis Morgan, and Victor Lee Winstrom. App. Br. 10-11. The Declarants testify that the claimed invention fulfills a long felt need and, that the use of Captain’s Pak One Hand Crank as an anchor reel is an unexpected result. Id. Long-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem. Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1178 (Fed. Cir. 1993). Establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution. In re Gershon, 372 F.2d 535, 539 (CCPA 1967). The relevance of long-felt need depends on several 3 “Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.” Graham v. John Deere Co. 383 U.S. 1, 17 (1966) Appeal 2011-011717 Application 12/321,961 7 factors. First, the need must have been a persistent need that was recognized by those of ordinary skill in the art. Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1382 (Fed. Cir. 1983); see also Gershon, 372 F.2d supra at 539. Second, the long-felt need must not have been satisfied by another before the invention by applicant. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved”). Third, the invention must in fact satisfy the long-felt need. In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). Evidence pertaining to secondary considerations must be taken into account whenever present. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007). However, it does not necessarily control the obviousness conclusion. See e.g. Leapfrog Enters. Inc. v. Fisher-Price Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)(“given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion” of obviousness); see also Newell Cos., Inc, 864 F.2d supra at 768. Appellant admits that there is little, if any difference, between the prior art and the claimed invention. The Captain's Pak One Hand Crank has almost the same structure as the claimed invention. The difference is centered on the fact that the Captain's Pak One Hand Crank raises and lowers a downrigger weight while the claimed invention raises and lowers an anchor. Both are used on boats by fisherman. Both are operated manually. And fisherman were well aware of manually operated anchor line reels as taught by Deinert et al. Reply Br. 5. Appellant’s declarations fall short of identifying an art- recognized problem that existed in the art for a long period of time without Appeal 2011-011717 Application 12/321,961 8 solution. In particular, Appellant fails to identify any need in the art that remained unsatisfied in view of the teachings of Deinert and other anchor reels that the Examiner stated, and Appellant conceded, were well known in the art. In the instant case, Appellant’s relatively weak showing on secondary considerations of non-obviousness is insufficient to overcome the Examiner’s strong case of prima facie obviousness. Accordingly, we sustain the rejection of claim 2 as unpatentable over Deinert and Captain’s Pak One Hand Crank. DECISION For the above reasons, the Examiner’s rejection of claim 2 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009). AFFIRMED mls Copy with citationCopy as parenthetical citation