Richard ZakDownload PDFPatent Trials and Appeals BoardOct 1, 20212021001338 (P.T.A.B. Oct. 1, 2021) 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. 15/403,610 01/11/2017 Richard Zak SK12376 8785 44088 7590 10/01/2021 KAUFHOLD DIX PATENT LAW P. O. BOX 89626 SIOUX FALLS, SD 57109 EXAMINER ARK, DARREN W ART UNIT PAPER NUMBER 3647 NOTIFICATION DATE DELIVERY MODE 10/01/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): jason@kaufholdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD ZAK Appeal 2021-001338 Application 15/403,610 Technology Center 3600 Before JENNIFER D. BAHR, DANIEL S. SONG, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Richard Zak. Appeal Br. 2. Appeal 2021-001338 Application 15/403,610 2 CLAIMED SUBJECT MATTER The claims are directed to a fishing float assembly. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A fishing float assembly being configured to float on a body of water, said assembly comprising: a float being configured to float in water, said float being configured to be coupled to a fishing line thereby facilitating the float to be cast into the water; and a plurality of beads, each of said beads being positioned in said float wherein said plurality of beads is configured to retain said float in an upright position in the water. Appeal Br. 10 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Benjestorf US 4,817,326 Apr. 4, 1989 Noble US 7,415,792 B1 Aug. 26, 2008 Nakagawa (citation to the English translation) JP H10-165061 June 23, 1998 REJECTIONS 1. Claims 1–3 and 5–9 are rejected under 35 U.S.C. § 103 as being unpatentable over Noble in view of Nakagawa. Final Act. 2. 2. Claims 4 and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Noble in view of Nakagawa and Benjestorf. Final Act. 4–5. Appeal 2021-001338 Application 15/403,610 3 OPINION Rejection 1: Noble in view of Nakagawa The Examiner rejects claims 1–3 and 5–9 as being unpatentable over Noble in view of Nakagawa. Final Act. 2. In rejecting independent claim 1, the Examiner finds that Noble discloses a fishing float assembly substantially as claimed, but fails to disclose a plurality of beads in the float. Final Act. 2. The Examiner relies on Nakagawa for disclosing a plurality of beads being positioned in float, and concludes that it would have been obvious to one of ordinary skill in the art to have modified the float of Noble “to incorporate the teachings of Nakagawa to provide beads inside the float” using “known methods with no change in their respective functions” to yield predictable results. Final Act. 2. The Examiner also concludes that such combination would have been made to “allow[] the buoyancy to be adjusted by increasing or decreasing the amount of beads in the float as taught by Nakagawa.” Final Act. 3; see also Nakagawa ¶¶ 18 (“Therefore, the buoyancy can be adjusted by increasing or decreasing the number of weights in the weight storage chamber 15.”), 19, 24. We agree with the Examiner’s findings and conclusion. The Appellant argues that the beads of Nakagawa “are internally positioned and related exclusively to the purpose of buoyancy,” and that “[t]here is nothing to relate the beads . . . to orientation.” Appeal Br. 6. In that regard, the Appellant asserts that “there is nothing to support any conclusion that the beads of Nakagawa influence the orientation rather than the weight,” and “any relationship of the bead of Nakagawa to orientation is purely speculative or concluded without any supporting evidence.” Appeal Br. 6. Thus, according to the Appellant, “the line of argument used to Appeal 2021-001338 Application 15/403,610 4 support the allegation of obviousness is merely a conclusory statement of obviousness based upon speculation . . . of what one of ordinary skill in the art would recognize about Noble and Nakagawa.” Appeal Br. 7. The Appellant’s arguments are unpersuasive. As the Examiner points out, Noble discloses a fishing float assembly that floats in an upright orientation and is configured to be coupled to a weight (30), and also explicitly teaches that “the choice of the size and density of the float (1) and the mass of the weight (30) will dictate the vertical position of the float’s water line (50) on the surface (51) of the water.” Ans. 4 (citing Noble col. 4, ll. 7–11; Fig. 5). Accordingly, we agree with the Examiner that “[t]herefore, Noble recognizes the basic premise of utilizing a weight associated with the float in order to retain the float in an upright position in the water.” Ans. 4; see also id. at 8 (“Noble at least recognizes that external weight (31) is the deciding factor which results in the upright orientation of the float.”). As the Examiner also points out, Nakagawa discloses that “the buoyancy can be adjusted by increasing or decreasing the number of weights in the weight storage chamber,” and addresses the problem of maintaining orientation of fishing rigs so as to reduce the likelihood of tackle becoming caught, which requires the float to be retained in an upright position as shown in Figures 1 and 2 of Nakagawa. Ans. 5–6 (citing Nakagawa ¶¶ 4, 18, 23; Figs. 1, 2). Accordingly, the Examiner is further correct in finding that “it is inherent that the float (A) of Nakagawa will assume an upright position when the float is positioned in a body of water when a sufficient quantity of beads (23) are adjustably placed within the first chamber (15) by the user so as to overcome the buoyancy presented by the amount of air stored within the second chamber (14).” Ans. 6. Appeal 2021-001338 Application 15/403,610 5 Thus, we agree with the Examiner’s conclusion that substitution of the single weight of Noble with beads of Nakagawa would have been obvious “not only because it would allow the user to adjust the degree of weight/ballast provided by the beads to the float, but also to retain the weighting means within the float to thereby reduce the likelihood of the susceptible protruding external weight (31) of Noble becoming snagged upon any underwater obstructions it may encounter.” Ans. 6. The Appellant further argues that the problem being solved by the claimed invention is “to facilitate a desired orientation of a float on a water surface,” and that the Examiner’s motivation for the proposed modification “is not directed to a problem that has been shown to be 1) ‘known in the art’ 2) ‘at the time of the invention’ and 3) ‘addressed by the patent.” Appeal Br. 7. Such arguments are unpersuasive. As discussed above, Noble discloses that weight is an important factor in “the vertical position[ing] of the float’s waterline 50 on the surface 51 of the water,” thereby establishing that the impact of weight on the vertical orientation of a float was already well- known and appreciated in the art at the time of the invention. Noble col. 4, ll. 7–11. Moreover, as to the problem being solved, “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007); cf. Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“[o]ne of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”). Appeal 2021-001338 Application 15/403,610 6 As discussed above, the Examiner has articulated a reason with rational underpinnings that is sufficient to support the conclusion of obviousness. KSR, 550 U.S. at 418. Accordingly, we affirm the Examiner’s rejection of claim 1. The Appellant relies on dependency on claim 1, or on the arguments submitted thereto, in support of patentability of the remaining claims. Appeal Br. 8. Thus, claims 2, 3, and 5–9 fall with claim 1. Rejection 2: Noble in view of Nakagawa and Benjestorf The Examiner rejects claims 4 and 10 as being unpatentable over Noble in view of Nakagawa and Benjestorf. Final Act. 4, 5. The Appellant unpersuasively relies on dependency on claim 1, or on the arguments submitted with respect to claim 1, in support of patentability of these claims. Appeal Br. 8. Thus, the Examiner’s rejection of claims 4 and 10 is affirmed. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5–9 103 Noble, Nakagawa 1–3, 5–9 4, 10 103 Noble, Nakagawa, Benjestorf 4, 10 Overall Outcome 1–10 Appeal 2021-001338 Application 15/403,610 7 TIME PERIOD FOR 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 Copy with citationCopy as parenthetical citation