Ex parte Wackerman

Board of Patent Appeals and Interferences

May 24, 1999

08690994 (B.P.A.I. May. 24, 1999)

Application for patent filed August 1, 1996. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JACK WACKERMAN
____________
Appeal No. 1998-3007
Application No. 08/690,9941
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
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 12 to 22. Claims 1, 2, 4 to 6 and 8 to 11
have been allowed. Claims 3 and 7 have been canceled.
Appeal No. 1998-3007
Application No. 08/690,994
We AFFIRM-IN PART.
Appeal No. 1998-3007 Page 3
Application No. 08/690,994
BACKGROUND
The appellant's invention relates to a fishing lure and a
method of using a fishing lure. An understanding of the
invention can be derived from a reading of exemplary claims 12
and 19, which appear in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims (i.e., the applied
prior art) are:
Patterson 3,003,276 Oct.
10, 1961
Pippert 5,070,639 Dec. 10,
1991
Cole 5,522,170 June
4, 1996
Claims 12 and 14 stand rejected under 35 U.S.C. § 102(a)
as being anticipated by Cole.
Claims 13, 16 and 19 to 22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Cole.
Appeal No. 1998-3007 Page 4
Application No. 08/690,994
Claims 15 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Cole in view of Pippert.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Cole in view of Patterson.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 8, mailed May 27, 1998) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 7, filed March 3, 1998) and reply brief
(Paper No. 9, filed June 1, 1998) 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, and to the respective
positions articulated by the appellant and the examiner. As a
Appeal No. 1998-3007 Page 5
Application No. 08/690,994
consequence of our review, we make the determinations which
follow.
The anticipation issue
We sustain the rejection of claims 12 and 14 under 35
U.S.C. § 102(a).
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. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
Appeal No. 1998-3007 Page 6
Application No. 08/690,994
Claim 12
Claim 12 "reads on" the fishing lure shown in Cole's
Figure 3 as follows: A fishing lure comprising: a
substantially rigid head section having a bait simulating
appearance, a front end and a rear end (Cole's front section
37); a substantially rigid middle section having a front end
and a rear end (Cole's rear section 43); a multi-dimensional
pivot connection between said head section rear end and said
middle section front end (Cole's interlocking eyelets 50, 52);
a flexible material tail section having a front end and a rear
end, said front end of said tail section fixed to said rear
end of said middle section (Cole's tail 53); at least one hook
receiving connection fixed to at least one of said head and
middle sections (Cole's unlabeled connections from which the
unlabeled fish hooks are suspended); at least one attachment
for connecting at least one of said head and middle sections
to a fishing line (Cole's front eyelet 41); said head and
middle sections each have a top and a bottom (Cole's front
section 37 and rear section 43 each have a top and a bottom);
Appeal No. 1998-3007 Page 7
Application No. 08/690,994
and wherein said at least one hook-receiving connection
includes a connection at said bottom of at least one of said
head and middle sections (Cole's unlabeled connections from
which the unlabeled fish hooks are suspended include a
connection at the bottom of the front section 37 and rear
section 43); and a substantially continuous scoop formed in
said head section at said front end thereof and in said top of
said head section, said scoop dimensioned and configured to
cause erratic action of said head section as said lure is
pulled through the water (Cole's slightly concave surface 38).
The argument presented by the appellant that Cole does
not teach the claimed "scoop" is unpersuasive for the
following reasons.
First, it is our view that the recited function (i.e.,
"to cause erratic action of said head section as said lure is
pulled through the water") is met by Cole's slightly concave
surface 38. In that regard, Cole discloses (column 4, lines
Appeal No. 1998-3007 Page 8
Application No. 08/690,994
We have also considered the declaration of Al K. Kalin2
(dated August 20, 1997). However, that declaration does not
establish that Cole's Figure 3 embodiment is not capable of
erratic action as the lure is pulled through the water.
18-26) that in the second embodiment of the lure (i.e., Figure
3) the front face of the front section 37 is flat beveled or
slightly concave surface 38 such that the leading edge 39 of
the front face is located at the bottom of the lure and the
trailing edge 40 of the front face is at the top of the lure.
Cole teaches that "[s]uch a configuration causes the lure to
oscillate or wobble from side to side as it is pulled through
the water." In addition, Cole teaches (column 2, lines 7-10)
that in the second embodiment, "the front face of the first
section has a completely angled surface to reduce the
side-to-side motion of the lure somewhat and to produce more
of an irregular wiggle wobble type action." [Emphasis ours].
Thus, we find that the motion produced by Cole's slightly
concave surface 38 is erratic as the lure is pulled through
the water.2
Appeal No. 1998-3007 Page 9
Application No. 08/690,994
It is axiomatic that, in proceedings before the PTO,3
claims in an application are to be given their broadest
reasonable interpretation consistent with the specification,
and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary
skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983). Moreover, limitations are not to
be read into the claims from the specification. In re Van
Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir.
1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
Second, it is our opinion that Cole's slightly concave
surface 38 is formed in the front end and in the top of front
section 37. The term "top" in claim 12 must be given its
broadest reasonable meaning. Thus, we conclude that the3
"top" of the head section as used in claim 12 means an upper
portion of the head section. In reading claim 12 on Cole's
Figure 3 we note that the "top" of front section 37 is
considered to be the portion of front section 37 above the
level of the eye. Accordingly, Cole's slightly concave
surface 38 is formed in both the top of front section 37 and
in the front end of the front section 37.
Similarly, it is our determination that the claimed term
"scoop" is readable on Cole's slightly concave surface 38. As
Appeal No. 1998-3007 Page 10
Application No. 08/690,994
set forth in the appellant's reply brief (p. 2), the term
"scoop" requires a curvature. However, such curvature is
present due to the concave nature of Cole's surface 38.
Claim 14
We agree with the examiner that claim 14 is readable on
Cole's Figure 3.
The appellant argues (brief, p. 8, and reply brief, pp.
2-3) that "by the language of claim 14 itself, extending
through the entire lure body is not within the scope of claim
14." We do not agree. In that regard as set forth above,
limitations are not to be read into the claims from the
specification. In re Van Geuns, supra. We fail to find any
limitation in claim 14 that excludes the claimed pins from
extending to both sides of the middle section.
For the reasons stated above, the decision of the
examiner to reject claims 12 and 14 under 35 U.S.C. § 102(a)
is affirmed.
Appeal No. 1998-3007 Page 11
Application No. 08/690,994
The obviousness issues
We will not sustain the rejection of claims 13 and 15 to
22 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
Appeal No. 1998-3007 Page 12
Application No. 08/690,994
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
The appellant argues that the examiner has not set forth
a prima facie case of obviousness with regard to claims 13 and
15 to 22. We agree.
With regard to claim 13, and claims 16 to 18 and 21
dependent thereon, it is our opinion that the applied prior
art would not have suggested the scoop "extending from said
front end of said head section past said eyes." In that
regard, the examiner's determination that the above-noted
Appeal No. 1998-3007 Page 13
Application No. 08/690,994
We note that the patent to Wardrip (U.S. Patent No.4
2,503,529) was not applied by the examiner in the rejection of
claim 13. Wardrip shows in Figures 1-3 that the concave face
5 extends past the eyes 27.
We note that the SWIM BAIT lure cited by the appellant5 ®
was not applied by the examiner in the rejection of claim 15.
The SWIM BAIT lure teaches an open-top socket for receipt of®
a rattle in a soft flexible plastic tail section of the lure.
limitation of claim 13 would have been obvious is not
supported by any evidence and thus must be reversed.4
With regard to claim 15, it is our opinion that the
applied prior art would not have suggested the tail section of
soft flexible plastic having "an open-top socket for receipt
of a rattle." The examiner's determination that the above-
noted limitation of claim 15 would have been obvious is not
supported by evidence and thus must be reversed. In that
regard, we agree with the appellant (brief, pp. 11-12) that
Pippert does not teach or suggest an open-top socket for
receipt of a rattle in a soft flexible plastic tail section.5
With regard to claim 22, it is our opinion that the
applied prior art would not have suggested the shape of the
Appeal No. 1998-3007 Page 14
Application No. 08/690,994
scoop as recited in claim 22. In that regard, the examiner's
determination that the recited shape limitations of claim 22
would have been obvious is not supported by any evidence and
thus must be reversed.
With regard to claim 19, and claim 20 dependent thereon,
it is our opinion that the applied prior art would not have
suggested the recited method steps. The examiner's
determination that the method steps of claim 19 would have
been obvious is not supported by any evidence and thus must be
reversed. In that regard, we agree with the appellant (brief,
p. 10) that there is no suggestion or teaching in the applied
prior art of the recited step of "ripping" (see paragraph (a)
of claim 19) the tail section.
For the reasons stated above, the decision of the
examiner to reject claims 13 and 15 to 22 under 35 U.S.C. §
103 is reversed.
CONCLUSION
Appeal No. 1998-3007 Page 15
Application No. 08/690,994
To summarize, the decision of the examiner to reject
claims 12 and 14 under 35 U.S.C. § 102(a) is affirmed and the
decision of the examiner to reject claims 13 and 15 to 22
under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN PART
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-3007 Page 16
Application No. 08/690,994
NIXON & VANDERHYE
1100 NORTH GLEBE RD
8TH FLOOR
ARLINGTON, VA 22201-4714
APPEAL NO. 1998-3007 - JUDGE NASE
APPLICATION NO. 08/690,994
APJ NASE
APJ ABRAMS
SAPJ McCANDLISH
DECISION: AFFIRMED-IN PART
Prepared By: Gloria Henderson
DRAFT TYPED: 11 May 99
FINAL TYPED: