Hannu SalovirtaDownload PDFPatent Trials and Appeals BoardOct 25, 201913264297 - (D) (P.T.A.B. Oct. 25, 2019) Copy Citation 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. 13/264,297 11/01/2011 Hannu Salovirta PAT172USA 6773 24339 7590 10/25/2019 JOEL D. SKINNER, JR. SKINNER AND ASSOCIATES 212 COMMERCIAL ST. HUDSON, WI 54016 EXAMINER BURGESS, MARC R ART UNIT PAPER NUMBER 3647 MAIL DATE DELIVERY MODE 10/25/2019 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 PATENT TRIAL AND APPEAL BOARD Ex parte HANNU SALOVIRTA Appeal 2019-001167 Application 13/264,297 Technology Center 3600 Before JENNIFER D. BAHR, STEFAN STAICOVICI, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant,1 Hannu Salovirta, appeals from the Examiner’s decision to reject claims 13, 14, and 17–21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hannu Salovirta. Br. 4. Appeal 2019-001167 Application 13/264,297 2 CLAIMED SUBJECT MATTER The claims are directed to a fishing lure. Claim 13, reproduced below, is illustrative of the claimed subject matter: 13. A spinning, wobbler fishing lure, comprising: a. a wobbling front body, the body having a front end and a rear end, the front end of the body having a front loop adapted to be connectible to a fishing line, the rear end of the body having a rear loop, the body being non-spinning, wherein the front end of the front body is wider than the rear end of the front body so that the rear end may wobble in relation to the front end; b. a rear axle constructed of a wire-like material and having a front end with a front loop and a rear end with a rear loop, the front loop of the rear axle being connected to the rear loop of the body so that the axle may turn freely relative to the body and wobble; c. a pair of winglets rotatably disposed adjacent to each other on the rear axle, each winglet having a unitary, one- piece construction with a proximal end and a distal end, and including: i. a collar shaped base rotatably coupled about the axle, the base being disposed at the proximal end of the winglet, ii. a single blade extending distally from the base and having a predetermined pitch, the blade having a quarter-circle shape when viewed from the rear loop of the axle, and iii. the winglets having substantially the same size as each other, the pitches of the winglets being substantially the same, but disposed in opposite directions whereby the winglets rotate at substantially the same speed when the lure is in operation, but in opposing directions; iv. wherein the base is part of the unitary winglet body; d. wherein the winglets have a concave side and wherein the concave side of both winglets face towards the front loop; Appeal 2019-001167 Application 13/264,297 3 e. at least one rear hook, the at least one hook being connected to the body or to the rear loop of the axle; f. at least one body hook attached to the body, the at least one body hook being attached in a direction perpendicular to the rear axle; and g. whereby the opposing rotation of the two adjacent, same sized, same but oppositely pitched winglets on the freely movable rear axle pulses the front body sideward causing the rear end of the body to turn and also the rear axle to turn in the opposite direction of the front body with a natural fish-like movement. Br. 20–21 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Brown US 865,676 Sept. 10, 1907 Johnson US 2,722,079 Nov. 1, 1955 Blomquist US 4,501,087 Feb. 26, 1985 Benard US 5,133,147 July 28, 1992 REJECTION Claims 13, 14, and 17–21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Blomquist, Johnson, Benard, and Brown. Final Act. 2. OPINION Claim 13 The Examiner finds that Blomquist discloses many of the elements recited in claim 13, including a front body (element 32), a rear spinner (lure body 12), and at least one rear hook (fish hook 26). Final Act. 2 (citing Blomquist 5:24–43. The Examiner relies on Johnson and Benard to teach elements of claim 13 relating to the recited winglets, and on Brown to teach limitations regarding hooks being attached to the recited body. Id. at 2–5. Appeal 2019-001167 Application 13/264,297 4 Appellant first argues that the Examiner’s proposed combination of teachings would not have been obvious to a person of ordinary skill in the art because the Examiner relies on “four (4) different references and at least two design choices . . . to attempt to meet all of the elements of the claim.” Br. 9. This argument, by itself, does not apprise us of Examiner error. See In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991) (affirming obviousness rejection over thirteen references) (“The criterion . . . is not the number of references, but what they would have meant to a person of ordinary skill in the field of the invention.”).2 Next, Appellant argues “Blomquist does not expressly disclose that its lure 10 is modifiable with: (1) an axle with counter-rotating winglets (Johnson), (2) quarter-circle blade shape (design choice), (3) unitary, one- piece construction (Benard), and (4) body has a perpendicular hook (Brown).” Br. 9–10. The Examiner replies that the express disclosure referred to by Appellant is not necessary for a proper rejection based on obviousness, and, “[i]f the primary reference ‘expressly disclosed’ the other features, no secondary references would have been necessary and the rejection would have been made under 35 U.S.C. [§] 102(b).” Ans. 4. The Examiner has the better position on this issue. A holding of obviousness can be based on a showing that “there was an apparent reason to 2 One can imagine that a large number of prior art references might be needed to address all the steps of a claim reciting, in detail, a method including all the activities performed during a typical morning at the office. Nonetheless, the subject matter of such a claim, depending on the employee, might well have been obvious to a person of ordinary skill in the art. Appeal 2019-001167 Application 13/264,297 5 combine the known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Such a showing requires, “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” . . . . [H]owever, the analysis need not seek out precise teachings directed to the specific 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. Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner provided adequate reasoning for combining the teachings of Johnson, Benard, and Brown with those of Blomquist (Final Act. 3–5), and merely pointing out that Blomquist “does not expressly disclose” its combinability with these other references does not address this reasoning. Next, Appellant argues that the lures in the prior art structures are significantly different from each other, as follows. The Blomquist lure 10 spins with a single body 12 which is elongated and stamped. It has a single tail hook 26. The Johnson lure 10 spins via two separate spinners 20 and 24 mounted on a rod 12. It has a single tail hook 30. The Benard lure 1 in Figs. 1 and 2 cited by the Examiner has an ovoid body 2 with a duct (through which rod 5 passes) and a spiral wing 4. It has a single tail hook 9. The Brown lure has a body 1 with an anterior spinner 7, a tail hook 4 and two body hooks 4. The only thing that the 4 prior art lures have in common is that they are primarily spinning lures. Somewhat ironically, this commonality is a key point of difference relative to applicant’s lure, which is absolutely a wobbling lure. Br. 10 (emphasis omitted). This argument does not address the Examiner’s findings of fact or reasoning in incorporating the teachings of the cited references, and, Appeal 2019-001167 Application 13/264,297 6 therefore, fails to apprise us of Examiner error. To the extent Appellant’s statement is meant to assert that the cited references are non-analogous art, all of the cited references teach fishing lures, and, therefore, are in the same field of endeavor as Appellant’s invention. With respect to the wobbling limitation, the Examiner addresses this feature on page 4 of the Final Action. Appellant argues that the Examiner erred in interpreting claim 13 inasmuch as, in light of Appellant’s Specification, element 32 of Blomquist does not fall within the broadest reasonable interpretation of the term “body.” Br. 10. Appellant does not propose any particular interpretation of this limitation in claim 13, much less refer to the Specification as supporting such an interpretation. See id. Rather, Appellant notes that Blomquist uses the term “lure body” to refer to the structure identified with reference to number 12 rather than element 32. Id. Thus, according to Appellant, Blomquist’s element 32 cannot be considered a “body” as recited. In reply, the Examiner discusses reference numbers 12 and 32 in Blomquist and states: The problem appears to be that Blomquist refers to 32 as a “minnow-shaped element” (part of “anti-twist means” 30), and refers to 12 as “lure body.” Throughout prosecution the examiner has acknowledged that Blomquist is using different terms for these elements than what the examiner uses in the rejection, and has attempted to clarify this for the appellant several times (including multiple telephone conversations). But the fact remains that it is a perfectly valid interpretation to refer to element 32 as a “front body” and 12 as a “spinner” when mapping the prior art to the claims for the rejection. Ans. 5. Thus, the Examiner agrees that Blomquist does not use the same nomenclature as Appellant, but maintains that element 32 nonetheless qualifies as a front body as recited in claim 13. Appeal 2019-001167 Application 13/264,297 7 During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).3 In the Summary of the Claimed Subject Matter (Br. 6)4 Appellant notes, “the body is described in the specification beginning at page 2, line 29 to page 3, [line 8].” This portion of the Specification states: Thus, Figure 1 shows a lure-type fishing device 1, in which there is a suitably shaped body 2, possibly resembling a small fish or other bait, which can be made from wood, plastic, or any other material whatever that is conventionally used for manufacturing lures. The body part 2 can be equipped with a coating, which can be suitably coloured, as is the manner in this field, and weights or other auxiliary components, such as guide plates, can be added to it, if necessary. In the usual manner, in the front part of the body there is a suitable loop 3, to which a line 4 for pulling the lure is attached. Depending on the weight distribution of the body, the line 4 may be attached in different parts of the body, 3 The interpretation of the term “body” was at issue in Smith. Smith, 871 F.3d at 1376–77. 4 Appellant refers to claim 1 in this section. However, claim 1 has been cancelled, and we understand Appellant to intend to summarize claim 13 in this portion. Appeal 2019-001167 Application 13/264,297 8 however, normally in the very front part of the same. A sufficient number of hooks 5, 6 are added for catching a fish. The hooks can be attached permanently or movably. One conventional form of movable attachment is to attach to the lure a loop made of wire-like metal, to which the loop of the hook is secured. Of course, various types of spacer pieces can also be used, if desired. Spec. 2:29–3:8 (emphasis added). Consistent with this description, element 32 of Blomquist can resemble a small fish. (“The lure 10 embodying the invention preferably includes, as an integral part thereof, a new and improved fishing line anti- twist means 30, which includes the novel minnow-shaped element 32.”). Blomquist 5:5–8. Also consistent with this description, a small loop 445 is present in the front part of Blomquist’s element 32. See Blomquist, Fig. 1. The only other limitation disclosed in this portion of the Specification that is not explicitly described as optional is the hook. Although the Examiner proposes to modify element 32 of Blomquist by adding a directly attached hook based on the disclosure in Brown (Final Act. 4–5), element 32 of Blomquist, in its unmodified state, is indirectly attached to hook 26. See Blomquist, Fig. 1. Further, in light of the Specification, the broadest reasonable interpretation of the term “body,” by itself, does not require an attached hook inasmuch as claim 13 additionally recites “at least one rear hook, the at least one hook being connected to the body or to the rear loop of the axle.” Br. 21 (Claims App.) (emphasis added). A prior version of this limitation, in the original version of claim 13, submitted by amendment on September 15, 2014, omitted the word “rear” and merely recited “at least one hook, the at least one hook being connected to the body or to the rear 5 Reference number 44 is absent from Blomquist’s specification. Appeal 2019-001167 Application 13/264,297 9 loop of the axle.”6 Thus, Appellant chose to explicitly recite the “hook connection” limitation in claim 13. The fact that the hook connection was explicitly recited in claim 13 implies that the broadest reasonable interpretation of the word “body” in claim 13 does not require connection with a hook, otherwise, there would be no need to recite the hook connection explicitly. Thus, based on the Specification and the original version of claim 13, we agree with the Examiner that the broadest reasonable interpretation of the term “body” in claim 13 reads on element 32 of Blomquist. As noted above, the Examiner relies on Brown to teach a hook attached to a body and modifies the structure disclosed by Blomquist in light of this teaching. See Final Act. 4–5. Appellant also argues that it would not have been obvious to modify Blomquist’s body 12 to include a hook because body 12 spins, and the addition of a hook would interfere with spinning. Br. 10. Appellant’s argument on this point is without merit because, as the Examiner points out, the rejection of claim 13 relies on element 32 of Blomquist (not lure body 12) for the recited body. See Final Act. 2. Thus, Appellant’s argument does not address the rejection of claim 13 as set forth in the Final Office Action. The Examiner relies on Johnson to teach a pair of rotatable winglets and determines that it would have been a matter of design choice to a skilled artisan to modify these winglets to have the shape of a quarter circle as recited in claim 13. Final Act. 3–4. 6 The original claim set included only claims 1–11. See Preliminary Amendment filed on October 13, 2011. Appeal 2019-001167 Application 13/264,297 10 Appellant argues that “[m]odifying this specific [winglet] geometry is not a trivial exercise and would have a significant effect on function, including potentially destroying function.” Br. 11. Appellant further argues, “[w]ithout hindsight reconstruction, modification of Johnson’s blade could only be accomplished after extensive experimentation.” Id. at 11–12. In response, the Examiner notes that Appellant’s Specification appears to indicate that the shape of the winglets is not critical, and, therefore, reliance upon the design choice doctrine is appropriate. Ans. 6 (citing Spec. 3:26–27). The Examiner has the better position on this issue. The Specification states, “Figure 2 shows the movements of the winglets as a series of images. The winglets are approximately shaped as quarter circles, though this is in no way essential.” Spec. 3:26–27 (emphasis added). Thus, Appellant’s Specification explicitly states that the quarter-circle shape of the winglets is not essential. Moreover, Appellant provides no objective evidence or persuasive technical argument as to why the quarter-circle shape of the winglets would make any difference in performance. Appellant next argues “[i]t would not be obvious to modify Johnson’s blades 20 and 24 by substituting the collar shaped base of Benard for the existing connections of Johnson.” Br. 12. Specifically, Appellant contends Johnson’s blades have a long shape that connects to rod 34 via a pair of spaced apart lugs 36 and 38. Id. In contrast, Appellant argues, the aspect of Benard’s ovoid body 2 that couples to the rod is relatively short, which makes the use of an axial duct logical in Benard. Id The Examiner replies by noting that the rejection of claim 13 does not propose to modify the blades disclosed in Johnson such that Johnson’s disclosure lure would be changed. Ans. 7. Instead, the rejection merely Appeal 2019-001167 Application 13/264,297 11 incorporates Johnson’s teaching of the use of two spinning blades (winglets) in place of Blomquist’s existing spinning body. Id. Appellant’s argument on this point appears to rely on a bodily incorporation of winglets 20, 24 of Johnson into the structure disclosed by Blomquist. We agree with the Examiner that the proposed combination of the teachings of Blomquist, Johnson, and Benard does not require the precise proportions of the components to be maintained in the modified version of the lure taught by Blomquist. In any event, even assuming for the sake of argument that the proportions of the components in the cited references were maintained, Appellant does not explain persuasively why these proportions would pose any problem in combining the teachings of Blomquist, Johnson, and Benard. Thus, Appellant’s argument on this point is unpersuasive. Claim 13 requires that “the front end of the front body is wider than the rear end of the front body so that the rear end may wobble in relation to the front end.” Br. 20 (Claims App.). The Examiner determines that this shape would have been an obvious matter of design choice. Final Act. 5. Appellant contends that “[t]he wider front end of the front body relieves the pressure of the flow so that the winglets are able to move the rear end of the front boy and wobble,” and, therefore, the Examiner erred in relying on design choice to address the “wider front” limitation. Br. 13–14. Appellant’s Summary of the Claimed Subject Matter refers only to Figure 1 and page 2, line 29 to page 3, line 8 of the Specification as providing support for the “wider front” limitation. Id. at 6. It is not evident from Appellant’s Figure 1 that the recited shape makes any difference in performance of the claimed fishing lure. The cited portion of the Specification states: Appeal 2019-001167 Application 13/264,297 12 Thus, Figure 1 shows a lure-type fishing device 1, in which there is a suitably shaped body 2, possibly resembling a small fish or other bait, which can be made from wood, plastic, or any other material whatever that is conventionally used for manufacturing lures. The body part 2 can be equipped with a coating, which can be suitably coloured, as is the manner in this field, and weights or other auxiliary components, such as guide plates, can be added to it, if necessary. In the usual manner, in the front part of the body there is a suitable loop 3, to which a line 4 for pulling the lure is attached. Depending on the weight distribution of the body, the line 4 may be attached in different parts of the body, however, normally in the very front part of the same. A sufficient number of hooks 5, 6 are added for catching a fish. The hooks can be attached permanently or movably. One conventional form of movable attachment is to attach to the lure a loop made of wire-like metal, to which the loop of the hook is secured. Of course, various types of spacer pieces can also be used, if desired. Spec. 2:29–3:8. We do not find, in the quoted portion, or elsewhere in the Specification, any indication that the “wider front” limitation has any effect on performance of the lure.7 Indeed, the Specification indicates that the winglets may be disposed in front of the body and that the movements are essentially the same as when the winglets are located at the rear of the lure. See Spec. 5:24–33. Accordingly, we are not apprised of Examiner error in the determination that this limitation would have been an obvious matter of design choice to a skilled artisan. Appellant contends that the proposed combination of the teachings of the prior art does not result in winglets that have a concave side that faces towards the front loop as required by claim 13. Br. 14–15. 7 The “wider front” limitation was not in the original claims and was added by amendment on December 27, 2016. It appears that, to the extent this recitation does not amount to the addition of new matter, the only support for this limitation comes from Figure 1. Appeal 2019-001167 Application 13/264,297 13 The Examiner correctly notes that the concave portions of spinners 20, 24 of Johnson face the front loop, contrary to Appellant’s contention. Ans. 9 (citing Johnson, Fig. 1). We have considered all of Appellant’s arguments in support of the patentability of claim 13, but find them unavailing. Accordingly, we sustain the rejection of claim 13. Claim 14 Claims 14 depends from claim 13 and recites, “the body has an oval, non-spinning configuration.”8 Br. 21 (Claims App.). Appellant argues that the Examiner erred in determining that providing a non-spinning body is a mere design choice because such a configuration has an effect, specifically, it optimizes a wobbling motion. Br. 16. The Examiner responds, correctly, that the rejection of claim 14 does not rely on the doctrine of design choice to address the “non-spinning” limitation. Ans. 9–10; see also Final Act. 5–6. Rather, Blomquist discloses that element 32 is a non-spinning component. In this regard, Blomquist states, “the action of the water on the element 32 resists rotational forces.” Blomquist 5:38–40. Accordingly, we sustain the rejection of claim 14. 8 As claim 13 requires the front end of the body to be wider than the back end, the required configuration in claim 14 is not, apparently, a perfect oval configuration. Otherwise, dependent claim 14 would contradict claim 13, from which claim 14 depends. Appeal 2019-001167 Application 13/264,297 14 Claims 17 and 18 Appellant does not make arguments for the patentability of either of claims 17 and 18 aside from those set forth for claim 13. See Br. 9–18. Accordingly, these claims fall with claim 13 from which they depend. Claim 19 Claim 19 depends from claim 13 and recites, “the winglets collar shaped base has a longitudinal length and the blade has a radial length, and wherein the longitudinal length of the base is less than the radial length of the blade.” Br. 22 (Claims App.). The Examiner determines that (i) Benard discloses the claimed relative lengths and it would have been obvious to incorporate this structure in the proposed modified version of Blomquist “to obtain the desired winglet appearance, motion or form factor,” and (ii) such a configuration would have been a matter of design choice. Final Act. 7–8. Appellant argues that, “[a]though Benard discloses a shorter base than blade, modification of the Benard blade in view of Johnson would require a substantial and nonobvious rework of the arrangements of both references.” Br. 17 (emphasis added). Appellant’s argument is unpersuasive because the proposed combination of the prior art’s teachings does not modify the structure of Benard, and instead incorporates teachings from Benard in the device disclosed by Blomquist. See Final Act. 7. Further, Appellant’s argument does not address the alternative rejection set forth by the Examiner, namely, that providing such a configuration would have been a matter of design choice (where Johnson teaches winglets without the claimed proportions). Appeal 2019-001167 Application 13/264,297 15 Claim 20 Claim 20 depends from claim 13 and recites five different positions of the two winglets. Br. 22–23 (Claims App.); see also Fig. 2. The Examiner finds that the proposed modification to add counter-rotating winglets to the lure taught by Blomquist will function to meet the five different positional limitations recited in claim 20 because “this will happen with any counter- rotating, quarter circle shaped spinners.” Final Act. 8. Appellant argues that the claimed rotation sequence is not provided by merely any counter rotating, quarter shaped spinner. Applicant’s claimed rotation sequence requires substantially same sized and pitched, oppositely pitched, and forwardly oriented concave sided winglets, each having a single blade, outwardly extending from a collar. No reference comes even close to disclosing this required structure. Br. 18. In response, the Examiner states, “even if one spinner is held stationary, rotating any (quarter circle-shaped) spinner about its axis will result in the configurations recited. There is no unique feature to the current invention that causes this to happen.” Ans. 10. Appellant’s argument on this point is unavailing because the Examiner’s proposed combination of references results in a device that meets all the structural limitations recited in claims 13 and 20, and, the Examiner’s explanation of how the counter-rotating winglets will achieve the recited positions is correct. In this regard, we note that claim 20 does not require that the recited positions occur at any particular rotational position in absolute terms. In other words, although Appellant’s Figure 2 would appear to depict two winglets rotating in opposite directions at exactly the same Appeal 2019-001167 Application 13/264,297 16 speed, and, therefore, achieving each of the five recited positions in the same location with each rotation,9 this requirement is not set forth in claim 20. Thus, the Examiner is correct in finding that any two counter-rotating winglets, having the recited shapes, will eventually satisfy all five positional states recited in claim 20. Claim 21 Independent claim 21 recites, in part, “the widest part of the front blade, the front end, is farthest from the rear axle and the winglets thus provide a strong lateral movement to the rear axle, which then increase and decrease rapidly with pulse from the winglets, to provide a natural, fish-like movement to the lure.” Br. 24 (Claims App.).10 To address these limitations in claim 21, the Examiner states: As modified, the opposing rotation of the two adjacent, same sized, same but oppositely pitched winglets on the freely movable rear axle pulses the front body sideward causing the rear end of the body to turn and also the rear axle to turn in the opposite direction of the front body with a natural fish-like wobbling movement. Final Act. 11 (citing Johnson 2:57–65). Appellant argues, “[t]he feature of the combined effect of the winglet design disposed farthest from the wide front end front body functioning to strengthen lateral movement to the rear axle, which then increases and 9 For example, in each stage of rotation depicted in Figure 2, the winglets 11, 12 appear to have moved by exactly the same amount, but in opposite directions. 10 It appears that claim 21 should have used the word “pulses” rather than “pulse.” Appeal 2019-001167 Application 13/264,297 17 decreases rapidly with winglet pulses, is not disclosed or suggested individually by any of the applied references.” Br. 18. In response, the Examiner characterizes Appellant’s argument as an attack on the references individually rather than on the proposed combination of teachings. Ans. 11. Further, the Examiner states, “as the [E]xaminer has explained several times, all claimed features are clearly taught by the prior art, properly combinable, and easily understood by one of ordinary skill in the art.” Id. Although we agree with the Examiner that Appellant’s argument for the patentability of claim 21 discusses the individual disclosures of the cited references, we cannot sustain the rejection of claim 21 because the Examiner’s findings fall short of addressing all the requirements of this claim and Appellant’s argument is sufficient to apprise us of this shortcoming. Specifically, the requirement that the lateral movement of the rear axle increases and decreases rapidly with pulses from the winglets is not addressed by the Examiner. See Final Act. 8–13. Further, the portion of Johnson relied upon in the rejection of claim 21 discloses a wobbling motion imparted to lure 10 and describes that lure 10 has the appearance of a fish traveling through water, but does not indicate that this movement increases or decreases rapidly or is characterized by pulses from the winglets. Accordingly, we do not sustain the rejection of claim 21. CONCLUSION We affirm the rejection of claims 13, 14, and 17–20 and reverse the rejection of claim 21. Appeal 2019-001167 Application 13/264,297 18 DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 13, 14, and 17–21 § 103 Blomquist, Johnson, Benard, and Brown 13, 14, and 17–20 21 Overall Outcome 13, 14, and 17–20 21 FINALITY AND RESPONSE 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-IN-PART Copy with citationCopy as parenthetical citation