Ex Parte Ziober

Board of Patent Appeals and Interferences

Feb 28, 2011

11068650 (B.P.A.I. Feb. 28, 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.
11/068,650 02/23/2005 James R. Ziober Rod 8374
42811 7590 02/28/2011
KAJANE MCMANUS
550 MARINA PARKWAY
SUITE E2, PMB 88
CHULA VISTA, CA 91910
EXAMINER
SMITH, KIMBERLY S
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
02/28/2011 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 JAMES R. ZIOBER

Appeal 2009-012808
Application 11/068,650
Technology Center 3600
____________

Before WILLIAM F. PATE III, STEVEN D.A. McCARTHY and
KEN B. BARRETT, Administrative Patent Judges.

McCARTHY, 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 on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012808
Application 11/068,650

2
STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 1-8. More specifically, the Examiner rejects: 3
claims 1, and 6-8 under 35 U.S.C. § 102(b) as being 4
anticipated by Herring (US 5,560,137, issued Oct. 1, 1996); 5
claims 2, 4 and 5 under 35 U.S.C. § 103(a) as being 6
unpatentable over Herring and Dysarz (US 5,120,016, issued 7
Jun. 9, 1992); and 8
claim 3 under § 103(a) as being unpatentable over 9
Herring and Dunlap (US 3,902,269, issued Sept. 2, 1975). 10
The Examiner has withdrawn claim 9 from consideration. We have 11
jurisdiction over the appeal under 35 U.S.C. § 6(b). 12
We sustain the rejections of claims 1, 2 and 4-8. We do not sustain 13
the rejection of claim 3. 14
Claim 1 is the only independent claim: 15
1. A balanced fishing rod support and leverage 16
device comprising a rod engaging portion 17
extending upwardly from a balanced pivotable 18
base at a centered position along the base in a fixed 19
perpendicular position relative thereto, the rod 20
engaging portion having a free end portion angled 21
relative thereto and adapted to receive a butt of a 22
fishing pole therein and the pivotable base being 23
adapted to be engaged under the feet of a user, 24
with the rod engaging portion extending upwardly 25
therebetween and the angled free end portion 26
extending away from the user, the device being 27
pivotable toward and away from a user to leverage 28
a fish toward the user without allowing for 29
horizontal buckling of the rod and device. 30
31
Appeal 2009-012808
Application 11/068,650

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ISSUES 1
The Appellant argues the rejections of claims 1 and 6-8 as a group. 2
(See App. Br. 4-6). Claim 1 is representative. The Appellant argues the 3
rejections of claims 2, 4 and 5 as a group. The Appellant presents no 4
argument suggesting that claim 2, 4 or 5 might be patentable if claim 1 is not 5
patentable, however. (See App. Br. 6-8). The Appellant argues the rejection 6
of claim 3 separately. (See App. Br. 8-9). 7
This appeal turns on the following issues: 8
First, does Herring describe a pivotable base at a 9
centered position along the base in a fixed perpendicular 10
position relative thereto such that the device is pivotable toward 11
and away from a user to leverage a fish toward the user without 12
allowing for horizontal buckling of the rod and device? (Br. 4-13
6). 14
Second, do the evidence and technical reasoning 15
underlying the rejection of claim 3 adequately support the 16
conclusion that the subject matter of claim 3 would have been 17
obvious? (Br. 8-9). 18
19
FINDINGS OF FACTS 20
The record supports the following findings of fact (“FF”) by a 21
preponderance of the evidence. 22
1. We adopt and incorporate by reference the Examiner’s findings in 23
the Examiner’s Answer starting at page 3, line 6 (“[R]egarding claim 1 . . .”) 24
and ending at page 3, line 17 (“. . . in a direction away from the user.”). This 25
includes a drawing extracted from Figure 1 of Herring and reproduced on 26
Appeal 2009-012808
Application 11/068,650

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page 3 of the Examiner’s Answer, labeled to illustrate how the Examiner 1
reads the limitations of claim 1 onto structure depicted by Herring. 2
3
4
The drawing is a perspective view depicting a T-shaped stabilizer foot 92, a 5
T shaped extension 93, end caps 32 and shafts connecting these parts as 6
described in column 3, lines 37-42 and 49-51 of Herring. The Examiner 7
labels the T-shaped stabilizer foot 92 as the “base;” the T shaped extension 8
93 as the “free end portion;” and the shaft connecting the T-shaped stabilizer 9
foot 92 to the T shaped extension 93 as the “rod engaging portion.” 10
2. We adopt and incorporate by reference the Examiner’s findings in 11
the Examiner’s Answer starting at page 3, line 20 (“Herring does not 12
disclose . . .”) and ending at page 4, line 4 (“. . . to hold items within the 13
tube.”). 14
3. We adopt and incorporate by reference the Examiner’s findings in 15
the Examiner’s Answer starting at page 4, line 11 (“Herring does not . . .”) 16
and ending at page 4, line 16 (“. . . may be inserted.”). 17
4. We adopt and incorporate by reference the Examiner’s findings 18
in the Examiner’s Answer starting at page 6, line 1 and ending at page 6, line 19
7. 20
Appeal 2009-012808
Application 11/068,650

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5. Herring’s T-shaped extension 93 has three connection points, one 1
point at the end point of the T-shape. Figures 8 and 9 of Herring depict the 2
T-shaped extension 93 connecting to other structures at each of the three 3
connection points. (Herring, col. 3, ll. 39-42 and col. 5, ll. 9-23). 4
5
ANALYSIS 6
First Issue 7
The Appellant contends that Herring’s stabilizer foot 92 is not 8
pivotable because the stabilizer foot 92 “is used to create two points (one at 9
each end of foot 92) of a three point . . . stabilization structure for Herring's 10
hands-free rod holder assembly.” (Br. 5). The Appellant further contends 11
that when Herring’s rod holder “is studied in its true environment” (Br. 6) 12
(emphasis omitted), it is a hands free device and as such not equivalent to 13
the Appellant’s hands-on device. (See Id.) 14
The Examiner correctly finds Herring’s base is a balanced pivotable 15
base (FF 1) at a centered position along the base in a fixed perpendicular 16
position relative thereto. The Examiner also correctly finds Herring 17
“discloses all parts of the claimed invention [of claim 1].” (Ans. 5). Since 18
claim 1 is open-ended, the Examiner is correct in concluding that “[t]he fact 19
that Herring discloses additional structure does not negate that which is 20
disclosed by Herring.” (Ans. 5). Herring’s disclosure of additional structure 21
that provides a three point hands free design does not imply that the 22
anticipatory disclosure of Herring is not anticipatory. 23
The anticipatory aspect of Herring’s description is Herring’s free end 24
portion, rod engaging portion and base, as labeled in FF1. The base is 25
pivotable toward and away from a user to leverage a fish toward the user 26
Appeal 2009-012808
Application 11/068,650

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without allowing for horizontal buckling of the rod and device. (See FF 4). 1
Figure 1 of Herring depicts the T-shaped stabilizer foot 92, the T shaped 2
extension 93, the end caps 32 and the shafts connecting these parts as a unit 3
separable from other structure making up Herring’s hands free fishing rod 4
assembly. Since the separable structure meets the claim limitation, the 5
possibility that other structure described by Herring might, under some 6
circumstances, hinder the pivotal movement of the base (that is, of the T-7
shaped stabilizer foot 92) does not imply that the base is incapable of 8
pivoting. 9
10
Second Issue 11
The Examiner incorrectly concludes it would have been obvious “to 12
use the stop member as taught by Dunlap with the apparatus of Herring so as 13
to limit the depth at which the fishing [rod] may be inserted.” (Ans. 4). The 14
Examiner reasons that because the T-shaped extension 93 “in Herring is 15
directed to a mounting structure . . . one would find it obvious in light of the 16
Dunlap feature to place a stop member therein to restrict the depth of 17
insertion of an object placed there.” (Ans. 7). 18
The Appellant correctly contends the proposed modification of 19
Herring’s T shaped extension 93 to include a stop such as Dunlap’s is not 20
logical. (Br. 8). The basis of the Appellant’s contention is that placing a 21
stop member to restrict depth of insertion would have run counter to the 22
purpose of securing objects “within and through” the T-shaped extension 93. 23
(Id.). The use of a stop member like Dunlap’s within a connector such as the 24
T shaped extension 93 might have prevented other structures, such as a 25
Herring’s straight extension 91 or a fishing pole, from potentially extending 26
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Application 11/068,650

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securely into or, especially, through the three connection points of the T-1
shaped extension 93. Therefore, the Examiner’s conclusion lacks articulated 2
reasoning with some rational underpinning to support the legal conclusion of 3
obviousness. 4
5
CONCLUSIONS 6
Herring describes a pivotable base at a centered position along the 7
base in a fixed perpendicular position relative thereto such that the device is 8
pivotable toward and away from a user to leverage a fish toward the user 9
without allowing for horizontal buckling of the rod and device. We sustain 10
the rejections of claims 1 and 6-8 under 35 U.S.C. § 102(b) as being 11
anticipated by Herring. Since the Appellant presents no argument 12
suggesting that claim 2, 4 or 5 might be patentable if claim 1 is not 13
patentable (see App. Br. 6-8), we sustain the rejections of claims 2, 4 and 5 14
under § 103(a) as being unpatentable over Herring and Dysarz. 15
The evidence and technical reasoning underlying the rejection of 16
claim 3 does not adequately support the conclusion that the subject matter of 17
those claims would have been obvious. We do not sustain the rejection of 18
claim 3 under § 103(a) as being unpatentable over Herring and Dunlap. 19
20
DECISION 21
We AFFIRM the Examiner’s decision rejecting claims 1, 2 and 4-8. 22
We REVERSE the Examiner’s decision rejecting claim 3. 23
Appeal 2009-012808
Application 11/068,650

8
No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1) (2009). 3
4
AFFIRMED-IN-PART 5
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Klh 8
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KAJANE MCMANUS 12
550 MARINA PARKWAY 13
SUITE E2, PMB 88 14
CHULA VISTA, CA 91910 15