Ex parte Wallace

Board of Patent Appeals and Interferences

Oct 17, 2001

08843060 (B.P.A.I. Oct. 17, 2001)

1
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not written for publication and is not binding precedent of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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM R. WALLACE
__________
Appeal No. 2000-2015
Application 08/843,060
___________
ON BRIEF
___________
Before COHEN, FRANKFORT, and BAHR, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 5, all of the claims pending in
this application.
Appellant’s invention relates to a lighted fishing rod
assembly that includes a light source (20) disposed on the rod
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Application 08/843,060
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member towards a free end thereof and spaced a slight distance
apart from a tip of the free end. The light source is
provided within a housing (24), which housing is disposed
within the rod member (i.e., forms a part of the rod member)
at a slight distance apart from a tip of the free end. See
Figures 1, 3, 4 and 5 of the application drawings, and the
specification at pages 3, 4 and 5. Independent claim 1 is
representative of the subject matter on appeal and a copy of
that claim can be found in the Appendix to appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ward 5,586,403 Dec.
24, 1996
Kelly 5,644,864 Jul. 8,
1997
(filed Nov. 13,
1995)
Claims 1 through 5 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Kelly in view of Ward.
Rather than reiterate the examiner's full statement of
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Application 08/843,060
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the above-noted rejection and the conflicting viewpoints
advanced by the examiner and appellant regarding the
rejection, we make reference to the final rejection (Paper No.
18, mailed August 6, 1999) and the examiner's answer (Paper
No. 21, mailed March 24, 2000) for the reasoning in support of
the rejection, and to
appellant’s brief (Paper No. 20, filed January 10, 2000) and
reply brief (Paper No. 22, filed May 25, 2000) for the
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determination
which follows.
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In rejecting claims 1 through 5 under 35 U.S.C. § 103(a)
on the basis of the collective teachings of Kelly and Ward it
is the examiner’s position (final rejection, page 3), that
Kelly shows all of the elements recited except for the light
source being spaced a slight distance from the rod tip free
end. To address this difference, the examiner turns to Ward,
urging that this reference discloses a fishing rod (10) with a
light source (46) located on the rod towards a free end
thereof and spaced a slight distance apart from a tip of the
free end. From these teachings, the examiner has concluded
that it would have been obvious to one of ordinary skill in
the art “to provide Kelly with the light source mounted a
slight distance from the rod tip as shown by Ward since the
exact location of the light is a matter of design choice to be
determined by routine experimentation.”
Having reviewed and evaluated the applied references, we
are of the opinion that the examiner’s position regarding the
purported obviousness of claims 1 through 5 on appeal
represents a classic case of the examiner using impermissible
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Application 08/843,060
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hindsight in order to reconstruct appellant’s claimed subject
matter. In our opinion, there is no motivation or suggestion
in the applied patents to Kelly and Ward which would have
reasonably led one of ordinary skill in the art to modify the
rod of Kelly in the particular manner urged by the examiner so
as to provide that rod with a light source in a housing
wherein the housing is disposed within the rod member and
spaced a slight distance apart from a tip of the free end of
the rod member. In fact, it appears to us that if one of
ordinary skill in the art were inclined to alter the fishing
rod of Kelly in view of the teachings and suggestions found in
Ward, they would have either merely included an additional
light source like that specifically shown in Ward on the rod
of Kelly, retaining the light source at the tip of the rod in
Kelly, or eliminated the light source at the tip of the rod in
Kelly and replaced it with a light source applied to the rod
in the particular manner shown and taught by Ward.
As urged by appellant (reply brief, page 2), the broad
concept of having a light source spaced a slight distance from
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the tip of a fishing rod as in Ward does not itself provide
sufficient teaching, suggestion or motivation for structurally
modifying the rod member in Kelly so as to have a light source
and housing structure incorporated therein as specifically
called for in appellant’s claim 1 on appeal. The examiner’s
added reliance on design choice to somehow justify the
combination of Kelly and Ward is also misplaced.
We note that the mere fact that the prior art could be
modified in the manner urged by the examiner would not have
made such modification obvious unless the prior art suggested
the desirability of the modification. See In re Gordon, 773
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) and In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992). In this case, it is our opinion that the examiner
has impermissibly drawn from appellant’s own teaching and
fallen victim to what our reviewing Court has called “the
insidious effect of a hindsight syndrome wherein that which
only the inventor has taught is used against its teacher.”
W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
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1553, 220 USPQ 303, 313 (Fed. Cir. 1983).
Since we have determined that the teachings and
suggestions that would have been fairly derived from Kelly and
Ward would not have made the subject matter as a whole of
claim 1 on appeal obvious to one of ordinary skill in the art
at the time of appellant’s invention, we must refuse to
sustain the examiner’s rejection of that claim under 35 U.S.C.
§ 103(a). It follows that the examiner's rejection of
dependent claims 2 through 5 under 35 U.S.C. § 103(a) based on
Kelly and Ward will also not be sustained.
In light of the foregoing, the decision of the examiner
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to reject claims 1 through 5 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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