Ex Parte Martinsen et al

Board of Patent Appeals and Interferences

Feb 13, 2012

10125739 (B.P.A.I. Feb. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT MARTINSEN and SVEIN-INGE STANGENES
____________

Appeal 2010-001133
Application 10/125,739
Technology Center 3600
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Before JENNIFER D. BAHR, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert Martinsen and Svein-Inge Stangenes (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting
claims 9-12. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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Application 10/125,739

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THE INVENTION
Appellants’ claimed invention “relates to a device for use in fishing
from a boat in order to bring a fishing hook out to the side of the boat.”
Spec. 1, ll. 2-3.1 Claim 9, reproduced below, is the sole independent claim
and is representative of the subject matter on appeal.
9. A device for bringing a fishing hook attached to a fishing
line out to the side of a boat during trolling, wherein the device
comprises,
• an elongated hull (5),
• a keel (6),
• an attachment loop (7), said attachment loop being
connected to one side of said hull at two points, the first point
located relatively forward along the hull, and the second point
located relatively aft along the hull, and
• a release device (8) affixed to attachment loop (7),
wherein said release device is arranged to hold the fishing line
such that the fishing line itself provides the towing force to the
device during trolling and wherein the release device is
positioned on the attachment loop such that the towing force of
the fishing line causes the keel to assume an oblique angle with
respect to the flow of water during trolling, and wherein
• said release device is further arranged to release the line
when a fish bites on the hook such that the fishing line becomes
disengaged from the release device and ceases to exert a towing
force on the device.

1 Citation to “Spec.” refers to the English language Specification filed on
June 28, 2002.
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Application 10/125,739

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THE EVIDENCE
The Examiner relies upon the following evidence:
Delsol US 3,318,038 May 9, 1967
Terilli US 3,462,870 Aug. 26, 1969
Duffy US 3,818,624 Jun. 25, 1974
Cuda US 4,763,437 Aug. 16, 1988
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Delsol
and Terilli.
2. Claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Delsol, Terilli, Cuda, and Duffy.
ISSUES
The Examiner determined that Delsol discloses the device of claim 9
except for a release device arranged to release the fishing line when a fish
bites on the hook. Ans. 3. The Examiner determined that “[i]t would have
been obvious to one having ordinary skill in the art at the time of the
invention to use the release device as taught by Terilli with the apparatus of
Delsol as to allow for unrestricted play of the fishing line.” Id. The
Examiner also determined that it would have been obvious to further modify
Delsol to add the eyelet of Cuda, as called for in claim 12, “so as to allow for
retrieving the apparatus when the line becomes disengaged from the release
device.” Ans. 4.
Appellants argue that “[t]he release device of Terilli is arranged solely
to react to fish strike, and Terilli contains no disclosure whatsoever that the
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Application 10/125,739

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release device could simultaneously accommodate the towing force itself.”
Br. 5. Appellants assert that “[t]he modification of Delsol with the release
device of Terilli would thus cause Delsol to cease to function as intended.”
Br. 6. As to claim 12, Appellants relied on the same inoperability arguments
as made for claim 9. Br. 8.
The issues presented by this appeal are:
Did the Examiner provide an adequate reason based on rational
underpinnings to explain why one of ordinary skill in the art would have
added the release device of Terilli to the apparatus of Delsol?
Does the teaching of Cuda cure the deficiencies in the combination of
Delsol and Terilli?
ANALYSIS
Delsol discloses a fishing apparatus 10 having a plate 11 mounted
below a float 12. Col. 1, l. 69 – col. 2, l. 4. A ring 13 is mounted on one
side of plate 11 so as to slide freely along portions of an elastic band 14,
which is attached to the plate 11. Col. 2, ll. 4-8. A fishing line 19 extends
through ring 13. Col. 2, l. 9. A cork float 16 is mounted on the fishing line
19 on one side of the ring 13, and a sinker 17 is mounted on the fishing line
19 on the other side of ring 13. Col. 2, ll. 9-11. The float 16 and sinker 17
are larger than the ring 13 so that the movement of the line is limited to the
run through the ring. Col. 2, ll. 11-14.
Delsol describes the operation of the invention as follows:
After attaching a live bait to the hook 19a at the end of the line
19, the angler moves the drift ring 13 from central position to a
position approximately one-third of the distance from the
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upstream edge of the plate 11. The direction of the current in
the river is from the right to the left in FIG. 1. He places the
apparatus in the water near the bank without casting it. He then
walks up the bank of the river against the direction of the
stream exerting tension on the line. This has the effect of
elastically moving the ring 13 away from the plane of the plate
11, thus forming an irregular quadrangular lateral pyramid, the
apex of which is the ring 13, the sides of which are formed by
the portions of the rubber band 14. The plate 11 automatically
and instantaneously adapts itself to the current and the sinker 17
comes up to the ring 13 but cannot pass through it. The result is
that, by the action of the two contrary forces, i.e., the force of
the current on the plate 11 due to the position of the plate
caused by 35 the formation of the elastic quadrangular pyramid
described above and the continued tension exerted by the angler
on the fishing line 19, the plate and apparatus move up the
current without difficulty describing a circle of which the angler
is the center.
When the angler decides that the apparatus has moved
out into the current sufficiently, he ceases to exert tension on
the line 19. The apparatus then follows the current carrying
with it the live bait fixed to the hook 19a on the line. The ring
13 retracts against the plate 11 again and the fishing line runs
through the ring until the cork 16 comes up against the ring.
When the angler decides that the apparatus has traveled
sufficiently far downstream, he again exerts tension on the line,
moves along the bank against the current and, as before, the
apparatus 50 again moves out and up the stream.
. . .
When the fishing has been completed, the user gives a
sharp jerk on the line 19 and the plate 11 turns on its side and
lies flat on the water, so that it can be easily brought into the
bank by skimming it over the surface of the water.
Col. 2, ll. 15-61 (emphasis added).
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We agree with Appellants that the Examiner’s proposed modification
to add Terilli’s release device to Delsol’s apparatus would render Delsol’s
apparatus unfit for its intended purpose. Even if one of ordinary skill could
adapt the spring constant of the release device of Terilli to withstand the
forces from the current while at the same time being capable of releasing
upon a fish strike, if one were to use such a release device in the apparatus of
Delsol, the angler would no longer be able to exert sufficient tension on the
fishing line so as to move the apparatus up the current and would no longer
be able to exert a sharp jerk on the apparatus to retrieve it from the water
upon completion of fishing without causing the release device to open. The
only connection between the angler and Delsol’s apparatus is via the fishing
line, so if Terilli’s release device were used, then upon a fish strike or
exertion on the fishing line to move the apparatus up the current or
application of a sharp jerk to retrieve the apparatus from the water, the
release would open, Delsol’s apparatus would be left to float freely in the
water, and the angler would no longer be connected to the apparatus. This
modification would make subsequent retrieval of the apparatus difficult.
Based on these reasons, the Examiner’s reason to modify Delsol’s apparatus
to use the release device of Terilli, i.e., “to allow for unrestricted play of the
fishing line,” is not based on rational underpinnings.
The Examiner stated that in the event that the release device is
released prior to fishing being completed, e.g., upon a fish strike, “the
jerking motion required to recover that apparatus would not be subjected
upon the release device but on the eyelet as taught by Cuda per claim 12.”
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Ans. 5. The Examiner’s rejection of claim 9, however, does not include a
proposed modification to add the eyelet of Cuda to the apparatus of Delsol.
For this reason, we do not sustain the rejection of claim 9, or its dependent
claim 10, under 35 U.S.C. § 103(a) as unpatentable over Delsol and Terilli.
With regard to claims 11 and 122, the Examiner relies on Duffy to
teach “the use of an acute keel to aid in the directing of the fishing device
away from the fisherperson.” Ans. 4. Thus, the Examiner does not rely on
Duffy to cure the deficiencies in the combination of Delsol and Terilli noted
supra. The Examiner relies on Cuda to teach “an elongated hull comprising
two pontoons” (claim 11) and “an eyelet (33) affixed to an attachment loop”
(claim 12). Ans. 3-4. Cuda’s disclosure of a hull having two pontoons does
not correct the deficiencies in the combination of Delsol and Terilli noted
supra.
The Examiner appears to rely on Cuda’s disclosure of an “eyelet” to
attempt to cure the deficiencies in the combination of Delsol and Terilli.
Ans. 5. Cuda teaches horizontal attachment strips 31 and 32 attached to
hulls 11 and 12. Col. 3, ll. 42-44; figs. 7-10. The strips 31 and 32 are
provided with holes 33 “to allow the fisherman 15 to attach the line for
controlling the device 10.” Col. 3, ll. 44-46. Thus, Cuda does not disclose
an eyelet affixed to an attachment loop, as called for in claim 12. The
Examiner has not provided reasons why one of ordinary skill in the art

2 Claim 12 is a multiple dependent claim that depends from claims 9-11. We
understand the rejection of claims 12/9 and 12/10 to be based on the
combination of Delsol, Terilli, and Cuda and the rejection of claim 12/11 to
be based on the combination of Delsol, Terilli, Cuda, and Duffy.
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would have been led, in view of the teaching of Cuda, to add an eyelet to
Delsol’s elastic bands 14 to meet the claimed “eyelet (9) affixed to
attachment loop (7)” as called for in claim 12. Further, even if one were to
add an eyelet to Delsol’s modified apparatus so that the apparatus can be
retrieved upon release of Terilli’s release device, such a modification would
still not cure the deficiency that the angler would no longer be able to exert
sufficient tension on the fishing line so as to move the apparatus up the
current without causing the release device to open. For these reasons, we
cannot sustain the rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Delsol, Terilli, Cuda, and Duffy.
CONCLUSIONS
The Examiner did not provide an adequate reason based on rational
underpinnings to explain why one of ordinary skill in the art would have
added the release device of Terilli to the apparatus of Delsol.
The teaching of Cuda does not cure the deficiencies in the
combination of Delsol and Terilli.
DECISION
The decision of the Examiner to reject claims 9-12 is REVERSED.

REVERSED

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