Ex Parte Polachek

Patent Trial and Appeal Board

Aug 21, 2013

11487188 (P.T.A.B. Aug. 21, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/487,188 07/14/2006 Michael L. Polachek 1355 5542
45021 7590 08/22/2013
FORREST L. COLLINS LAW OFFICES, LLC
FORREST L. COLLINS
P. O. BOX 41096
BRECKSVILLE, OH 44141-0096
EXAMINER
BERONA, KIMBERLY SUE
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
08/22/2013 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 MICHAEL L. POLACHEK
____________

Appeal 2011-009186
Application 11/487,188
Technology Center 3600
____________

Before: JAMES P. CALVE, WILLIAM A. CAPP and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2011-009186
Application 11/487,188
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THE INVENTION
Appellants’ invention is a fishing lure. Spec. 4. Claim 1, the sole
independent claim on appeal, reproduced below, is illustrative of the subject
matter on appeal.
1. A fishing lure hook assembly comprising:
a fishing lure hook assembly base;
a fishing lure hook assembly base upper triangular region
connected to said fishing lure hook assembly base;
a fishing lure hook assembly base triangular region
interior channel located within fishing lure hook assembly base
upper triangular region;
a fishing lure hook assembly base fish hook;
said fishing lure hook assembly base fish hook having a
fishing lure hook assembly base fish hook straight region;
said fishing lure hook assembly base fish hook straight
region extending into said fishing lure hook assembly base
triangular region interior channel and fixed in place said fishing
lure hook assembly base triangular region interior channel.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 1-7 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
2. Claims 1-5 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lamar and Wacha.
Lamar
Wacha
Gill
US 3,248,820
US 6,618,979 B2
US 7,140,146 B2
May 3, 1966
Sep. 16, 2003
Nov. 28, 2006
Appeal 2011-009186
Application 11/487,188
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3. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lamar, Wacha and Gill.
OPINION
Indefiniteness
The Examiner considers the following limitation of claim 1 to be
indefinite:
said fishing lure hook assembly base fish hook straight region
extending into said fishing lure hook assembly base triangular
region interior channel and fixed in place said fishing lure hook
assembly base triangular region interior channel.
Clms. App’x. The examiner construes it to mean, “said fishing lure hook
assembly base fish hook straight region extending into said fishing lure hook
assembly base triangular region interior channel and being fixed in place in
said fishing lure hook assembly base triangular region interior channel.”
Ans. 3-4. Appellant agrees with this construction. App. Br. 10.
The test for definiteness under 35 U.S.C. § 112, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). However,
inasmuch as it appears that the subject limitation is capable of construction
and no alternative construction has been suggested by either the Appellant or
the Examiner, we do not sustain the section 112 rejection.
Unpatentability of Claims 1-5 and 7
The Examiner finds that Lamar discloses all of the limitations of
claim 1 except that it does not disclose fixing the straight region of the hook
into the interior channel of the base triangular region. Ans. 4. The
Examiner relies on Wacha as fixing the straight region of a fish hook to
Appeal 2011-009186
Application 11/487,188
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another element, which is accomplished by a rivet. Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to fix Lamar’s fish hook in the channel as
taught by Wacha to achieve the claimed invention. Id. According to the
Examiner, a person of ordinary skill in the art would have done this to
maintain the proper positioning of the hook. Id.
Appellant traverses the Examiner’s rejection by first arguing that the
straight region of Lamar’s fish hook (shank 26, Fig. 12) is not fixed. App.
Br. 10. Next, Appellant argues that Wacha fixes a hook to a lure by means
of a rivet. App. Br. 10. Appellant argues that the combined teachings of
Lamar and Wacha would not lead to the present invention. Reply Br. 4. We
agree.
Lamar discloses a fish hook that fits into slots 15 and 17 in deflecting
plate 13. See e.g., Lamar, Fig. 2, 3 & 6. Lamar teaches that “the hook is
slidable with respect to the slots.” Lamar, col 3, ll. 73. This sliding
movement facilitates baiting the hook. Lamar, col. 3, l. 73 – col. 4, l. 10
(“for convenience and celerity in impaling the bait body upon the hook”).1
The Examiner’s stated reason for combining Lamar and Wacha was to
“fix the fish hook” in the channel so as to “maintain the proper positioning
of the hook.” Ans. 4. We are not certain what the Examiner meant by
“proper positioning” of the hook, but it appears to us that Lamar’s invention
contemplated movement of the hook vis-à-vis the deflecting plate in order to
facilitate baiting the hook. Id. Fixing Lamar’s hook with a rivet would

1 Lamar discloses an alternative embodiment in Figures 12, 13 and 14
the features a fish hook with a straight shank and slots 31 and 32 in the
deflecting plate. Movement of the hook relative to the deflecting plate is
disclosed in Columns 5 and 6 of Lamar’s specification.
Appeal 2011-009186
Application 11/487,188
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impair this salutary functionality by making it more difficult to bait the
hook. We do not agree with the Examiner that a person of ordinary skill in
the art would be motivated to modify Lamar in a manner that would impair
its utility. Thus, the Examiner’s rejection is not supported by an adequate
reason to combine the known elements in the fashion claimed by the patent
at issue. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(requiring articulated reasoning with rational underpinning to support a legal
conclusion of obviousness).
Accordingly, we do not sustain the obviousness rejection of claims 1-
5 and 7.
Unpatentability of Claim 6
The rejection of claim 6 suffers from the same infirmity as the
rejection of claims 1-5 and 7 above. Accordingly, and for the same reasons
as expressed above, we do not sustain the rejection of claim 6.

DECISION
The decision of the Examiner to reject claims 1-7 is indefinite under
35 U.S.C. § 112, second paragraph is REVERSED.
The decision of the Examiner to reject claims 1-7 is unpatentable
under 35 U.S 103(a) is REVERSED.

REVERSED
rvb