Ex Parte Whipple

Board of Patent Appeals and Interferences

Mar 25, 2008

10939229 (B.P.A.I. Mar. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WILLIAM F. WHIPPLE
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Appeal 2008-0822
Application 10/939,229
Technology Center 3600
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Decided: March 25, 2008
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Before DONALD E. ADAMS, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a fishing
weight and hook combination, which the Examiner has rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Background
“Artificial or plastic worms, jigs and spinner baits are some of the
most popular and versatile fishing lures in use today” (Spec. 1). The
Specification notes that a “popular rigging technique involves the use of an
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Application 10/939,229

exposed hook point but with a wire weedguard covering the point of the
hook to keep the lure from becoming snagged” (Spec. 1). According to the
Specification, the “weight in such lures is usually employed to keep the lure
on the bottom of the lake, river or the like and to help in casting the
lightweight lure” (Spec. 1). “However, with a freely sliding weight on the
line, it often happens during fishing that the weight will slide up the line
before a fish is hooked” (Spec. 2).
Appellant teaches a
fishing weight and hook combination . . . .The fishing
weight has a front portion having an elongated bore
therethrough for receiving a fishing line therethrough and a
rear portion having a slit in the side thereof intersecting the
front portion bore and sized for the fish hook eye to slide
sideways therein. The fishing weight has an enlarged hollow
area at the intersection of the front portion elongated bore
and the rear portion slit sized for the fishing hook eye to
rotate therein so that sliding the eye of the hook sideways
into the rear portion of the slit and rotating the eye, locks the
fishing hook to the weight.

(Spec. 4.)
Statement of the Case
The Claims
Claims 1-3 and 5-8 are on appeal. We will focus on claim 1, which is
representative and reads as follows:
1. A fishing weight and hook combination comprising: a
fish hook having a shank having a barbed point at one end
and an eye for attaching a fishing line at the other end
thereof;
a solid fishing weight having a side and front and rear
portions, said front portion having an elongated bore
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therethrough for receiving a fishing line therethrough and
said rear portion having a slit in the side thereof intersecting
said front portion bore and sized for said fish hook eye to fit
sideways therein, said solid fishing weight having an
enlarged hollow area at the intersection of said front portion
elongated bore and said rear portion slit, said enlarged
hollow area being sized for said fish hook eye to rotate
therein locking said hook eye to said solid fishing weight;
whereby sliding said hook eye sideways into said fishing
weight rear portion slit and rotating said eye locks said
fishing hook to said weight.

The prior art
The Examiner relies on the following prior art reference to show
unpatentability:
Blackwell US 5,335,441 Aug. 9, 1994
The issues
The rejections as presented by the Examiner are as follows:
Claims 1-3 and 5-8 stand rejected under 35 U.S.C. § 103(a), as being
obvious over Blackwell.
35 U.S.C. § 103(a) rejection over Blackwell
The Examiner reasons that
Blackwell uses the protective sleeve as part of the weight. Blackwell
shows the weight and the sleeve (which is read as the weight) as
having an elongated bore there through for receiving the fishing line.
Blackwell has a slit or a slot 19 having a longitudinal portion 23
which intersects a portion of the bore and is sized for a fish hook eye
to fit sideways therein.

(Ans. 3.)
The Examiner argues that “the hook is connected to [the] tubular
sleeve 12 which is part of the weight” (Ans. 4).
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Appellant argues that Blackwell
does not teach, as in the present invention, a solid fishing
weight (such as 27 in Blackwell) which has been totally
reshaped to provide a slot therein with an enlarged portion
where the slot intersects the bore passing through the weight
to thereby allow a fishing hook to be slid in sideways with
the eye of the hook rotated within the enlarged area of the
solid fishing weight to movably lock the hook.

(App. Br. 7.)
Appellant argues that the “present invention eliminates every feature
of the Blackwell patent and would require a total redesign starting from
scratch to produce the present invention using a solid weight to hold a hook
and lure together without a protective sleeve or crooked hook or bayonet
type connection.” (App. Br. 10.)
In view of these conflicting positions, we frame the obviousness
issues before us as follows:
Would it have been obvious to a person of ordinary skill to modify the
Blackwell lure into the structure of claim 1, where the weight and lure
protection device are combined to function as a single entity?
Findings of Fact
1. Blackwell teaches a “means for securing the weight to the lure
in such a manner as to protect the lure during use” (Blackwell 1:37-39).
2. Blackwell teaches “a new and improved lure protection device
that is manufactured in various sizes so that it can accommodate different
size lures and weights” (Blackwell 2:15-17).
3. Blackwell discloses a fish hook with a shank and barbed point
and an eye for attaching fishing line (see Blackwell 4:16, fig. 1).
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4. Blackwell teaches that a “weight 27 defines a cylindrical
passage 33 therethrough extending substantially axially from a tip 34
defined by a conical portion 28 to the proximate center of end 31. The size
of cylindrical passage 33 is such that only a fishing line 18 may totally pass
therethrough” (Blackwell 4:42-47, fig. 1).
5. Blackwell teaches a lure protection device 11 comprising a
sleeve 12, where the “combination of hook 21, lure 32 and weight 27 is then
urged into sleeve 12 such that weight 27 is placed in frictional contact with
the interior surface of the conically tapered portion 14” (Blackwell 4:53-56,
fig. 1).
6. Blackwell discloses that the hook is secured by slot 19 in notch
26 (see Blackwell 4:56-59, fig. 1).
7. Blackwell teaches “an adhesive (not shown) may be applied to
the external surface of weight 27 for enhancing the securing of it into conical
abutment with sleeve 12” (Blackwell 5:15-18).
8. Blackwell teaches that “[w]eight 27 is held in loaded position
by the tension on fishing line 18 and by the reaction force placed on it by
eyelet 34 when hook 21 has engaged notch 26” (Blackwell 5:24-28).
9. Blackwell teaches that “weight 27 counters the natural
buoyancy of a lure 32 and allows the tackle to submerge” (Blackwell 4:39-
42).
Discussion of 35 U.S.C. § 103(a) over Blackwell
We conclude that the Examiner has set forth a prima facie case that
claim 1 would have been obvious to the ordinary artisan in view of
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Blackwell. Blackwell teaches a fishing weight and hook combination in
which a fish hook is coupled to a weight and sleeve (FF 1-9).
We use the broadest reasonable interpretation to interpret claim 1.
See, e.g., In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) (“[D]uring
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification.”). While the Specification
discusses the “fishing weight” and prefers that it be formed from metal
(Spec. 5:4-6), neither the Specification nor claim 1 exclude a weight with a
metal core that is surrounded by other materials. Blackwell states that
“weight 27 counters the natural buoyancy of lure 32 and allows the tackle to
submerge” (Blackwell 4:39-42). Blackwell also teaches that the weight may
be secured to the sleeve by means of an adhesive (see FF 7).
When the weight of Blackwell is secured by adhesive to the sleeve, as
expressly suggested by Blackwell, the two components form a single entity
which meets the requirements of the “solid fishing weight” of claim 1. We
note that the Supreme Court has recently emphasized that “the [obviousness]
analysis need not seek out precise teachings directed to the subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ”. KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). In this context, the
person of ordinary skill would recognize that when the sleeve and weight of
Blackwell are adhered together, these become a single entity, which has the
functions of both counteracting the buoyancy of the lure and attaching the
hook to a notch in the sleeve (see FF 6-9).
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We are not persuaded by Appellant’s argument that the invention is
drawn to a “solid fishing weight (such as 27 in Blackwell) which has been
totally reshaped” (App. Br. 7). Claim 1 does not distinguish Blackwell,
because when Blackwell adheres the weight 27 to the sleeve 12, Blackwell
has formed a solid, physically linked object which meets all of the
requirements of the fishing weight of claim 1 (see FF 6-9).
We reject Appellant’s arguments that Blackwell’s weight lacks
elements recited in claim 1 (see App. Br. 8). Appellant is not interpreting
the weight limitation as being met by the adhered weight and sleeve together
(FF 5, 7). It is well settled that, “in a section 103 inquiry, ‘the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”’ Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) .)
In the instant case, Blackwell’s embodiment of an adhered weight and sleeve
render the claimed fishing weight of claim 1 obvious (see FF 5-9).
We also reject Appellant’s argument that a component has been
eliminated from Blackwell relative to claim 1 (App. Br. 9). Claim 1
includes no requirement that the fishing weight cannot partly enclose the
lure (see claim 1). As already noted, the sleeve and weight of Blackwell,
when adhered, meet the requirements of the claimed fishing weight.
Consequently, the sleeve is not eliminated in Blackwell, but is incorporated
into the weight. As the Supreme Court noted, a “patent for a combination
which only unites old elements with no change in their respective functions
... obviously withdraws what is already known into the field of its monopoly
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and diminishes the resources available to skillful men.” Great Atlantic &
Pacific Tea Co. v. Supermarket Equipment Corp., 71 S.Ct. 127, 130 (1950)
(quoted with approval in KSR, 127 S.Ct. at 1739).
We are not persuaded by Appellant’s argument that the “Blackwell
patent does not rotate the hook and does not hold the hook with the eye of
the hook” (App. Br. 9). First, Blackwell teaches placement of the hook eye
into the weight and sleeve combination and Blackwell teaches that “[w]eight
27 is held in loaded position by the tension on fishing line 18 and by the
reaction force placed on it by eyelet 34 when hook 21 has engaged notch 26”
(Blackwell 5:24-28). However, even if this teaching is discounted, the claim
is drawn to a product, not a method, and the product of Blackwell has a
hollow area, which is the only structural element of claim 1 (see Claim 1).
That hollowed area would have been capable of permitting the eyelet 34 to
rotate into a locking position where notch 26 engages the hook as
functionally required by claim 1 (see Blackwell, fig. 1). We note that when
the eyelet of hook 34 is rotated as recited in claim 1, the shank of hook 21
also rotates, permitting notch 26 to engage the hook.
We affirm the rejection of claim 1 as obvious over Blackwell. Claims
2-3 and 5-8 fall with claim 1 as they were not separately argued.
CONCLUSION
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
103(a). Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the
rejections of claims 2-3 and 5-8 as these claims were not argued separately.

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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)(2006).
AFFIRMED

Ssc:

WILLIAM M. HOBBY, III
157 E. NEW ENGLAND AVENUE, # 375
WINTER PARK, FL 32789
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