Ex Parte Wheeler

Board of Patent Appeals and Interferences

Nov 20, 2007

10899352 (B.P.A.I. Nov. 20, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GARY EDWARD WHEELER
__________

Appeal 2007-0823
Application 10/899,352
Technology Center 3600
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Decided: November 20, 2007
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Before TONI R. SCHEINER, DONALD E. ADAMS, and NANCY J.
LINCK, Administrative Patent Judges.
Opinion by LINCK, Administrative Patent Judge. Opinion dissenting in
part by ADAMS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellant requests rehearing and
reconsideration of the Board’s March 28, 2007 Decision on Appeal
(“Decision”) with respect to the Board’s anticipation determinations
(Request for Reconsideration and Rehearing Under 37 C.F.R. §§ 41.50(b)
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Application 10/899,352

and 41.52(a)(1) (“Request”)). 1 We have reconsidered the Decision on the
points specifically raised in the Request; and
DENY the requested relief.

DISCUSSION
According to Appellant, our Decision —
1. Misinterpreted the phrase in claim 1, “elongated fishing rod being
made from a transparent, flexible material,” by (1) reading this language to
mean made of materials not disclosed in their Specification; and (2) reading
it to include the embodiment of claim 5 (Request 4-5);
2. Improperly “incorporated by reference” the Schmidt and Konrad
references (Request 6); and
3. Misinterpreted the phrase in claim 5, “a reflective material along
the interior side of its walls, said reflective [material] being located
proximate said free end of the fishing rod to facilitate the illumination of
said rod when said rod is bent due to the pull by a fish,” to include Konrad’s
fishing rod (Request 8-9).
We have carefully considered Appellant’s arguments and conclude
they have not established that the Board’s Decision should be modified.
First, as required by Federal Circuit precedent, we appropriately gave
the claim phrases their broadest reasonable interpretation, noting it is “the
general rule that words in patent claims are given their ordinary meaning in

1 The Board designated its Decision with respect to claim 5 as a new ground
of rejection. By filing his Request, Appellant has chosen to proceed before
the Board rather than continuing prosecution before the Examiner.
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the usage of the field of the invention, unless the text of the patent makes
clear that a word was used with a special meaning.” Toro Co. v. White
Consol. Indus., 199 F.3d 1295, 1299 (Fed. Cir. 1999). Thus, our
interpretation is not limited to embodiments disclosed in the Specification,
although it clearly includes those embodiments. We appropriately
interpreted claim 1 as having sufficient scope to include the subject matter of
claim 5, as claim 5 depends from claim 1. Thus, claim 1 necessarily
includes a fishing pole that is not 100% transparent. Appellant has not
shown the Board erred in so interpreting claim 1.
Second, Appellant miscomprehends our use of Kelly’s disclosure that
prior art poles typically have “a transparent or translucent rod through which
the light from the energized lamp is directed” (Decision, p. 6). This teaching
is itself a prior art teaching and does not require incorporation by reference
of the prior art cited by Kelly. Again, Appellant has not met his burden to
show our reliance on this teaching of Kelly’s was in error.
Third, with respect to claim 5, we correctly gave this claim its
broadest reasonable interpretation. The language “a reflective material
along the interior side of its walls” does not exclude the rod of Konrad.
There is no evidence Konrad’s rod would not “facilitate the illumination of
said rod when said rod is bent due to the pull by a fish.” Accordingly,
Appellant has not shown the Board erred with respect to its interpretation of
claim 5.

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CONCLUSION
The Request has been considered. Appellant has not shown the Board
misapprehended or overlooked any of the points made by Appellant. Thus,
relief on the merits is—
DENIED

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Adams, Administrative Patent Judge, dissenting.

I respectfully disagree with the majority’s decision to deny
Appellant’s request for rehearing.
Appellant identified the following three errors in the majority
Decision entered March 28, 2007:
A. The majority misinterpreted the phrase “‘elongated fishing rod
being made from a transparent, flexible material,’” as it appears in
Appellant’s claim 1, to mean “a rod that is not entirely made from a
transparent, flexible material” (Request 3).
B. The majority improperly relied upon Schmidt and Konrad to
affirm the Examiner’s rejection of claims 1-4 under 35 U.S.C. § 102(b) over
Kelly (Request 6-7).
C. The majority misinterpreted the subject matter of Appellant’s
claim 5 and therefore erroneously entered a new ground of rejection of claim
5 under 35 U.S.C. § 102(b) over Konrad (Request 8-9).
I take each in order.

A. The interpretation of claim 1:
The majority interprets the phrase “elongated fishing pole being made
from a transparent, flexible material,” as set forth in Appellant’s claim 1, to
represent a genus of fishing poles that range from completely transparent to
something less than 100% opaque2 (supra 3). According to the majority,

2 E.g., a fishing pole wherein only the tip is transparent (see Decision 15).
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this is the broadest reasonable interpretation of claim 1; that includes, but is
not limited to, the embodiments disclosed in Appellant’s Specification (id.).
In reaching this conclusion the majority opines that since Appellant’s
Specification discloses that “reflective material 50 can be placed anywhere
along the interior side 52 of the fishing rod walls 54” (Spec. 5: 6-7), the
disputed phrase “does not require the entire rod to be made from a
transparent, flexible material, or to emit light along its entire length”
(Decision 4).
In reaching their conclusion, the majority completely dismisses the
preceding sentence in the cited portion of Appellant’s Specification that
explains that “[t]he reflective material 50 is located proximate said free end
16 of the fishing rod 14 to facilitate the illumination of the rod 14 when it is
bent due to the pull by a fish” (Specification 5: 4-6).
As our appellate reviewing court stated in Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005) (en banc), “claims ‘must be read in view of
the specification, of which they are a part.’” Id. at 1315 (quoting Markman,
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)
(en banc). The “specification ‘is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.’” Phillips, 415 F.3d at 1315 (internal
citations omitted). Further, “[i]t is the person of ordinary skill in the field of
the invention through whose eyes the claims are construed. Such person is
deemed to read the words used in the patent documents with an
understanding of their meaning in the field, and to have knowledge of any
special meaning and usage in the field.” Multiform Desiccants, Inc. v.
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Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998). See also Hoechst
Celanese Corp. v. B.P. Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)
(“A technical term used in a patent document is interpreted as having the
meaning that it would be given by persons experienced in the field of the
invention, unless it is apparent from the patent and the prosecution history
that the inventor used the term with a different meaning.”)
Here, when the claims are read in view of the Specification and
through the lens of a person of ordinary skill in the art, it is clear that (1) the
rod is made of a transparent, flexible material and (2) when a reflective
material is placed on the transparent rod, it is done in a manner that will
“facilitate the illumination of the rod when it is bent due to the pull of a fish”
(Decision 17; Request 5; Specification 5: 4-6). The majority fails to
appreciate that “if the entire interior surface of the rod, but for the tip, is
coated with reflective material the rod cannot be illuminated, and reflective
material is not positioned in a manner that facilitates the illumination of the
rod when it is bent due to the pull of a fish” (Decision 22-23).
In sum, the majority failed to interpret claim 1 in view of a full and
fair reading of Appellant’s Specification as would a person of ordinary skill
in this art. As a result, the majority improperly denied Appellant’s request
for reconsideration. Therefore, I dissent.

B. The majority’s reliance on Schmidt and Konrad:
In support of their decision to affirm the rejection of claims 1-4 under
35 U.S.C. § 102(b) over Kelly, the majority directed attention to column 1,
lines 10-21 of Kelly. For clarity, and to be complete, the cited section is
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reproduced below along with the remaining three lines of the second
paragraph not included in the majority’s citation:
There are a variety of U.S. patents whose subject matter
is illuminated fishing poles. The purpose of these prior art
fishing poles is to provide illumination for the person fishing
during dusk, night, and dawn hours. A sample of illuminated
fishing poles includes U.S. Pat. Nos. 5,347,741 issued to
Konrad and 5,172,508 issued to Schmidt et al.
The typical illuminated pole has a hollow handle in
which a lamp and power source is located and a transparent or
translucent rod through which the light from the energized lamp
is directed. In some poles such as that of Konrad, the rod is
illuminated by directing the light into the hollow center of the
rod. In other poles, such as that of Schmidt, the rod is
illuminated by directing the light into optical fibers of varying
lengths that carry the light through the rod to various locations
within the rod.

(Kelly, col. 1, ll. 10-24.)
Appellant asserts “that the mention of the Schmidt or Konrad
references in Kelly is not legally sufficient to rise to the level of
consideration for purposes of anticipation” (Request 6). I agree with
Appellant, and the majority does not dispute, that Kelly’s citation of Schmidt
and Konrad is not an incorporation of the entire teachings of either reference
into Kelly for the purposes of sustaining an anticipation analysis (Request
7).
Nevertheless, the majority asserts that
Appellant miscomprehends our use of Kelly’s disclosure that
prior art poles typically have “a transparent or translucent rod
through which the light from the energized lamp is directed”
(Decision, p. 6). This teaching is itself a prior art teaching and
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does not require incorporation by reference of the prior art cited
by Kelly.

(Supra 3.)
The problem with the majority’s analysis is that by failing to
appreciate the context in which Kelly uses the phrase “a transparent or
translucent rod through which the light from the energized lamp is directed,”
the majority has misinterpreted the teachings of Kelly. Thus, the question is
not whether Kelly recites this phrase, but rather the question is in what
context does Kelly use this phrase? As the only prior art fishing poles
discussed in this section of Kelly are those of Schmidt and Konrad, in its
proper context, the phrase relied upon by the majority refers to the fishing
poles taught by Schmidt and Konrad.
Therefore, even if the majority had found that Kelly incorporated the
entire teachings of Schmidt and Konrad by reference, Kelly, Schmidt, and
Konrad all fail to anticipate Appellant’s claimed invention (see Decision 18-
24).
Because the majority misconstrued the teachings of Kelly, I dissent
from the majority’s conclusion to deny Appellant’s request for
reconsideration.

C. Appellant’s claim 5:
The majority found that “Konrad clearly discloses ‘reflective material
along the interior side’ of his rod’s ‘walls’ and very near or close to the end”
(Decision 8). Stated differently, Konrad teaches a fishing rod, wherein
illumination occurs at the rod tip (Decision 25). Appellant asserts that “[t]he
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purpose of . . . [the] reflective material is to help facilitate the illumination of
the rod when the rod is bent. Without this material, the illumination of the
free end of the rod would be hampered due to the bend in the rod and the
fact that light does not bent” (Request 8).
The majority asserts that “[t]he language ‘a reflective material along
the interior side of its walls’ does not exclude the rod of Konrad. There is no
evidence Konrad’s rod would not ‘facilitate the illumination of said rod
when said rod is bent due to the pull by a fish’” (supra 3).
The majority’s relies on Konrad’s teaching of an illuminated rod tip
(Decision 21). While the majority clings to their interpretation of the
claimed invention and Konrad, the majority fails to explain how Konrad
teaches the illumination of the rod as required by Appellant’s claim 5 when
only the tip of Konrad’s rod is illuminated (see Decision 21-25).
The majority relies on Konrad as a new ground of rejection.
Therefore, it is the majority’s burden of establishing a prima facie case of
anticipation. In re Sun, 22 F.3d 1102 (Fed. Cir. 1993). It is only after the
majority has established a prima facie case of anticipation that the burden
shifts to Appellant to overcome the majority’s prima facie case. Id. In this
instance, for the reasons set forth in the decision (Decision 12-25), the
majority has not established a prima facie case of anticipation. Accordingly,
the majority has improperly attempted to shift the burden to Appellant.
Accordingly, I dissent from the majority’s decision to deny Appellant’s
request for rehearing.

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CONCLUSION
In conclusion, I would grant Appellant’s request for rehearing and
reverse the rejections of record.

Ssc

BRENT A. CAPEHART
P.O. Box 1797
HARRISON, AR 72602

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