Ex Parte Weeda

Board of Patent Appeals and Interferences

Feb 18, 2011

10852494 (B.P.A.I. Feb. 18, 2011)

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.
10/852,494 05/24/2004 Kurt Francis Weeda 20040227-001 2832
7590 02/22/2011
Roger L. Belfay
829 Tuscarora Avenue
Saint Paul, MN 55102
EXAMINER
NGUYEN, TRINH T
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
02/22/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KURT FRANCIS WEEDA
____________

Appeal 2009-009851
Application 10/852,494
Technology Center 3600
____________

Before MICHAEL W. O’NEILL, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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Application 10/852,494

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STATEMENT OF THE CASE
Kurt Francis Weeda (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-19. We have jurisdiction
under 35 U.S.C. § 6(b).
The Invention
The claimed invention is to a float system including a buoyant
member having a toroidal structure and being repositionable about an
elongated member.
Claim 1, reproduced below with emphasis added, is representative of
the subject matter on appeal.
1. A float system, comprising:
(a) an elongated member having a lower end, and
an upper end, wherein said lower end of said
elongated member is secured within a cavity of a
hook member;
(b) said hook member having an open end
exposing said cavity and an opposed engaging end
placed along an axis through said open end and
said elongated member for releasably engaging a
fishing line;
(c) a first buoyant member having a toroidal
structure positioned about said elongated member,
wherein said first buoyant member may be
repositioned along said elongated member.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1-10 and 12-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Klinitski (U.S. Patent No. 2,236,215, issued Mar. 25,
1941) and Mosher (U.S. Patent No. 6,655,073 B2, Dec. 2, 2003).
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Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Klinitski, Mosher, and Pflueger (U.S. Patent No. 2,127,667, issued Aug. 23,
1938).

SUMMARY OF DECISION
We AFFIRM.

DISCUSSION
Issue
In light of the Appellant’s contentions and the Examiner’s positions,
the issue before us is as follows:
Whether Mosher teaches away from the Examiner’s proposed
modification of Klinitski’s hook member (screw cap 6) to include “an
opposed engaging end placed along an axis through said open end and said
elongated member for releasably engaging a fishing line” (App. Br. 12,
Claim Appendix) as taught by Mosher’s hook member 30.
Analysis
Appellant argues that the Examiner erred in modifying Klinitski’s
float 1, which has a bulbous shaped ball of cork and a hook member (screw
cap 6), by Mosher’s hook member 30 because Mosher discloses that
“conventional bobbers have a bulbous shape making it difficult to achieve
the desired buoyancy with the bait and hook applied” (Col. 1, ll. 34-36) so as
to teach away from the Examiner’s proposed combination. App. Br. 9-10.
The Examiner’s position is that Klinitski teaches the invention
substantially as claimed, except that Klinitski’s hook member (screw cap 6)
fails to have “an opposed engaging end placed along an axis through the
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open end and the elongated member for releasably engaging a fishing line”
as recited in claim 1. Ans. 3-4. The Examiner posits that Mosher discloses
a float system similar to that of Klinitski and that Mosher’s hook member 30
cures the deficiency of Klinitski’s hook member (screw cap 6). Ans. 4. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to have modified the hook member (screw cap 6) of Klinitski so as
to include the structure of hook member 30 as taught by Mosher, so as to
provide an attachment means for a fishing line as well as other devices such
as a weight. Id.
Klinitski discloses a fishing float 1 having a ball of cork with a bore 2
extending diametrically therethrough. P. 1, col. 1, ll. 41-45. The ball of
cork is seated on a tube 3 which frictionally engages the bore 2 of the ball of
cork. P. 1, col. 1, ll. 46-48. One end 4 of the tube 3 is rounded and closed
and extends only slightly beyond a first end of the bore of the ball of cork.
P. 1, col. 1, ll. 48-50. The other end 5 of the tube 3 extends well beyond the
second end of the bore 2 of the ball of cork and is screw threaded for mating
with a screw cap 6 having a weight 7. P. 1, col. 1, ll. 51-54. The screw cap
6 has an annular groove 8 in which a ring 9 is seated and the ring 9 has a
split eye 10 through which a fishing line is threaded. Fig. 1 and p. 1, col. 1,
l. 54 through col. 2, l. 3 and p. 1, col. 2, l. 54 through p. 2, col. 1, l. 1.
Mosher discloses an adjustable bobber system 10 including a hook
member 30 connected to a buoyant member 20 and a first weight member 40
slidably positioned about the buoyant member 20. Fig. 1 and col. 4, ll. 35-
41. The hook member 30 includes an open end 31 exposing a cavity 35 for
receiving the buoyant member 20. Fig. 3 and col. 5, ll. 15-20. The hook
member 30 has an opposite engaging end comprising a jaw 34 having a slot
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36 which is wider than the diameter of fishing line 14 to allow free
movement of the fishing line 14 therewithin. Col. 5, ll. 23-29.
Whether a reference teaches away from a claimed invention is a
question of fact. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005).
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, … would be led in a direction divergent from the
path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335
(Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d
1353, 1360 (Fed. Cir. 1999)). “When a piece of prior art ‘suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant’ the piece of prior art is said
to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)). A prior art reference must be considered in its
entirety, i.e., as a whole, including portions that would lead away from the
claimed invention. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1550 (Fed. Cir. 1983). However, “[t]he prior art’s mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed . . . ” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004).
We disagree with Appellant that Mosher teaches away from the
Examiner’s proposed modification of Klinitski by Mosher. We note that the
Examiner did not modify Mosher to have the bulbous member of Klinitski,
but rather modified Klinitski’s hook member (screw cap 6) to include “an
opposed engaging end placed along an axis through the open end and the
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elongated member for releasably engaging a fishing line” as taught by the
hook member 30 of Mosher. Although at column 1, lines 34-36, Mosher
states that a bulbous shape makes it difficult to achieve the desired buoyancy
with the bait and hook applied, Mosher does not criticize, discredit, or
otherwise discourage the modification of Klinitski’s hook member (screw
cap 6) by the engaging end of the hook member 30 of Mosher. Since there
is no teaching or suggestion in Mosher that to modify the hook member
(screw cap 6) of Klinitski by the engaging end of the hook member 30 of
Mosher is unlikely to be productive of the result sought by Appellant,
Mosher fails to teach away from the Examiner’s proposed combination.
Moreover, Mosher does not state that a bulbous member can never be
used with an adjustable bobber system. Rather, Mosher only states that a
bulbous member makes it “difficult to achieve the desired buoyancy with the
bait and hook applied.” Such a disclosure does not completely prohibit the
use of a bulbous member.
In view of the foregoing, we sustain the Examiner’s rejection of claim
1 under 35 U.S.C. § 103(a) as unpatentable over Klinitski and Mosher.
Since Appellant does not argue the Examiner’s rejections of claims 2-19
separately from the rejection of claim 1, we also sustain the Examiner’s
rejection of claims 2-10 and 12-19 under 35 U.S.C. § 103(a) as unpatentable
over Klinitski and Mosher and the Examiner’s rejection of claim 11 under
35 U.S.C. § 103(a) as unpatentable over Klinitski, Mosher, and Pflueger.
CONCLUSION
Mosher fails to teach away from the Examiner’s proposed
modification of Klinitski’s hook member (screw cap 6) to include “an
opposed engaging end placed along an axis through said open end and said
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elongated member for releasably engaging a fishing line” (App. Br. 12) as
taught by Mosher’s hook member 30.
DECISION
We affirm the Examiner’s rejection of claims 1-10 and 12-19 under
35 U.S.C. § 103(a) as unpatentable over Klinitski and Mosher and the
Examiner’s rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over Klinitski, Mosher, and Pflueger.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Klh

ROGER L. BELFAY
829 TUSCARORA AVENUE
SAINT PAUL, MN 55102