Ex Parte 7191969 et al

Patent Trial and Appeal Board

Nov 26, 2013

95000642 (P.T.A.B. Nov. 26, 2013)

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.
95/000,642 12/07/2011 7191969 58469 4824
909 7590 11/26/2013
Pillsbury Winthrop Shaw Pittman, LLP (NV)
PO Box 10500
McLean, VA 22102
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
11/26/2013 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
____________

PURE FISHING, INC.
Requester and Respondent

v.

GLOBERIDE, INC.
Patent Owner and Appellant
____________

Appeal 2013-010177
Reexamination Control 95/000,642
Patent 7,191,969 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, DANIEL S. SONG, and BRETT MARTIN,
Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

This is a decision on the appeal by the Patent Owner from the Patent
Examiner’s decision to reject pending claims 1-6 in the above-identified inter
partes reexamination of U.S. Patent No. 7,191,969 B2. The Board’s jurisdiction
for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We affirm.

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Patent 7,191,969 B2

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BACKGROUND
The patent in dispute in this appeal is U.S. Patent No. 7,191,969 B2 (“the
‘969 patent”) which issued March 20, 2007. The claims are directed to a “fishing
reel configured for a casting operation by an angler.” An amended request for
inter partes reexamination of the ‘969 patent under 35 U.S.C. §§ 311-318 and 37
C.F.R. §§ 1.902-1.997 was filed December 7, 2011 by Third-Party Requester, Pure
Fishing, Inc.
Independent claims 1 and 6, and dependent claims 2-5, are pending in this
inter partes reexamination. Claim 1 is representative and reproduced below
(underlining and brackets relative to original patent claim):
1. A fishing reel configured for a casting operation by an angler
comprising:
a reel body;
a spool rotatably supported by the reel body;
a handle shaft rotatably supported by the reel body;
a handle arm provided at a distal end of the handle shaft, the
handle arm including a pair of inner portions attached to the handle
shaft and extending in opposite directions, corresponding distal end
portions, and corresponding bent portions, each bent portion of the
handle arm coupling an associated one of the opposing distal end
portions to an associated one of the inner portions attached to the
handle shaft;
a pair of knob portions, each knob portion being provided on a
corresponding one of the opposite distal end portions of the handle
arm;
a transmission mechanism that transmits a rotation of the
handle shaft to the spool via a drag device capable of adjusting
braking force; and
a braking force controlling element rotatably supported by the
handle shaft, the braking force controlling element including an
adjusting portion for adjusting the braking force applied to the drag
device and an operation portion for the adjusting portion,
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wherein the operation portion includes a plurality of projections
which radially extend from a center portion thereof near an axis center
of the handle shaft, and each of the plurality of projections includes a
bent portion and an intermediate portion, the bent portion formed at
the intermediate portion of the operation portion and bent toward the
reel body side, [and]
wherein [a] each distal end portion of the handle arm is bent
toward the reel body side by the bent portions of the handle arm
extending along the bent portions of the plurality of projections of the
braking force controlling element so as to extend the distal end
portions of the handle arm over a plane on which an outer surface of
the center portion of the operation portion resides; and
wherein a length of each of the distal end portions of the handle
arm is shorter than a length of each of the corresponding inner
portions of the handle arm attached to the handle shaft, extending
from the axis center of the handle shaft to each of the corresponding
bent portions of the handle arm, to enable the angler to perform a
rotation operation of the adjusting portion using fingers on a hand
while at least one of said pair of knob portions are held in a palm of
said hand.
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as obvious in view of VS
Reel Ad (“the VS Reel”),1 Kaneda2 or Zwayer,3 and Chang.4

CLAIM INTERPRETATION
Claim 1 is directed to a “fishing reel configured for a casting operation by an
angler.” Patent Owner contends that “this configuration is not merely intended
use, but rather indicates specific design features known in the art of fishing reel
manufacture that are indicative of the type of fishing reel claimed.” (Appeal Br.
5.) Specifically, Patent Owner identifies several features of the claimed reel which

1 Ryobi, “RB the Ryobi Brand Fishing Tackle Catalog” 2001 (text in Japanese).
2 Kaneda et al., Des. 422,047, issued March 28, 2000.
3 Zwayer, US 5,692,692, issued December 2, 1997.
4 Chang, AU 2004/100355 A4, published June 3, 2004.
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are said to “limit the claims to bait casting reels, and exclude boat reels.”5 (Id.)
These features include the claimed (1) “handle arm including a pair of inner
portions attached to the handle shaft and extending in opposite directions”; (2)
“pair of knob portions, each knob portion being provided on a corresponding one
of the opposite distal end portions of the handle arm,” and (3) the following
recitation in claim 1:
wherein a length of each of the distal end portions of the handle arm is
shorter than a length of each of the corresponding inner portions of the
handle arm attached to the handle shaft, extending from the axis
center of the handle shaft to each of the corresponding bent portions
of the handle arm, to enable the angler to perform a rotation operation
of the adjusting portion using fingers on a hand while at least one of
said pair of knob portions are held in a palm of said hand.
(Id. at 10; claim 1.)
Based on these features, Patent Owner asks us to interpret the claimed
fishing reel to be a bait casting reel. Since claims are given their broadest
reasonable interpretation in view of the patent specification, we first turn to the
written description of the ‘969 patent. In re Morris, 127 F.3d 1048, 1055 (Fed.
Cir. 1997); In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010); In re
Abbott Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012).
The ‘969 patent describes the claimed fishing reel as an improvement over a
“compact reel (bait casing reel) which frequently performs casting and reeling”
(‘969 patent, col. 2, ll. 49-55 and col. 5, ll. 17-25). Figure 1 of the ‘969 patent,

5 Patent Owner refers to “boat reels,” but does not provide a definition of a boat
reel. Based on the record, we interpret a boat reel to mean a fishing reel that is
used on boats typically for trolling, rather than bait casting.
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reproduced below, shows an embodiment of the claimed invention:

Figure 1 shows handle bent portion 21f, operation portion 27 including bent
portion 27f, distal handle ends 21e, and handle knobs 21g.
The ‘969 patent states that the handle arm of the related one-knob bait
casting reel is bent toward the reel body side to enhance its operability [shown as
element 21f in Fig. 1], but because of the drag operation portion, the handle “arm
length become[s] long and it is not suitable for a compact fishing reel.” (‘969
patent, col. 4, ll. 62 to col. 5, l. 2; see fig. 1, 21f; fig. 6 of related reel). To address
this problem, the patent describes forming a bent portion in the drag operation
portion (id. at col. 5, ll. 3-17; see fig. 1, 27f). The ‘969 patent states:
With this arrangement, a radial length of the handle arm 21a can be
shortened as compared with the related bait casting reel provided with
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a flat drag operation portion (which does not have a bent portion).
Therefore, the fishing reel according to the present invention is
suitable for a compact reel which is provided with a short handle and
frequently performs casting and reeling operations.
(Id. at col. 5, ll. 17-25.) The claims recite a handle arm portion with “bent
portions” and an operation portion with “bent portions.” Thus, from reading the
’969 patent, it is evident that the bent handle portion 21f and the bent drag
operation portion 27f (id., fig. 1) comprise the structures of the disclosed reel
which is asserted by the Patent Owner to make the reel “configured for a casting
operation by an angler.”
Although the ‘969 patent compares its reel to a related bait casting reel (e.g.,
id. at col. 5, ll. 19-21), the patent falls short of limiting the reel “according to the
present invention” to a so-called bait casting reel, but rather characterizes it as
“suitable for a compact reel which is provided with a short handle and frequently
performs casting and reeling operations.” (Id. at col. 5, ll. 22-25.) The evidence
discussed below shows that boat trolling reels can also perform casting and reeling
functions (see infra at pp. 9-12; Exhibit A of Appeal Br. (“Clash of the Titans”)).
Thus, we shall not limit the claim to a bait casting reel.
We also do not find sufficient evidence that structures (1) through (3),
described above by Patent Owner, distinguish bait casting reels from boat reels.
There is no statement that these structures are intended to exclude boat reels. The
term “boat reel” does not even appear in the ’969 patent. Patent Owner’s
contentions are largely attorney argument that lack adequate supporting evidence
or testimony. Arguments of counsel cannot take the place of evidence lacking in
the record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).

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DISCUSSION
Claim 1 is drawn to a fishing reel “configured for a casting operation by an
angler.” The disputed limitations of the claim are as follows (underlining added
for emphasis):
(1)
a handle arm provided at a distal end of the handle shaft, the handle
arm including a pair of inner portions attached to the handle shaft and
extending in opposite directions, corresponding distal end portions,
and corresponding bent portions, each bent portion of the handle arm
coupling an associated one of the opposing distal end portions to an
associated one of the inner portions attached to the handle shaft;

(2)
a pair of knob portions, each knob portion being provided on a
corresponding one of the opposite distal end portions of the handle
arm;

(3)
operation portion includes a plurality of projections which radially
extend from a center portion thereof near an axis center of the handle
shaft, and each of the plurality of projections includes a bent portion
and an intermediate portion, the bent portion formed at the
intermediate portion of the operation portion and bent toward the reel
body side

(4)
wherein a length of each of the distal end portions of the handle arm is
shorter than a length of each of the corresponding inner portions of the
handle arm attached to the handle shaft

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The Examiner cited the VS Reel Ad as showing most of the structures
recited in claim 1. A portion of the VS Reel Ad with the photograph of the VS
Reel is reproduced below:

The photograph reproduced above from the VS Reel Ad shows a reel with
bent handle (above limitation (1)) and operation bent portions (above limitation
(3)) as recited in claim 1. The Examiner found that VS Reel differs from the
claimed invention “only in that there are two handles [in the claimed reel] and [in]
the relative dimension [of the distal end portions]” (RAN 3). The latter correspond
to limitations (2) and (4) above, respectively. However, the Examiner found that
the use of double handles was conventional and known in the art, citing Kaneda
and Zwayer to support this finding (id.). The Examiner further found that Zwayer
discloses an inwardly bent handle on a reel using an inwardly bending star drag
wheel in a reel that uses two handles (id.). For the dimension of the distal handle
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portion being shorter than the inner handle portion, the Examiner relied upon the
drawings in Chang depicting a reel with these dimensions (id.). The Examiner
stated that it would have been obvious to one of ordinary skill in the art to have
modified the VS Reel “so that the distal portion is shorter than the inner portion as
a mere conventionality of design to make the reel more compact in view of the
teaching of Chang.” (Id. at 3-4; see also Comments by Requester dated May 16,
2012 and Exhibit E attached to the Comments).
Patent Owner contends that VS Reel is not “configured for a casting
operation by an angler” as claimed, because it lacks a pair of knobs including inner
portions and a length of a distal portion which is shorter than the inner portions
(Appeal Br. 11-12). Patent Owner argues that the Examiner “erred in combining
the teachings of a boat reel [VS Reel] with the teachings of a bait casting reel
[Kaneda and Zwayer].” (Id. at 18.)
. . . one of ordinary skill in the art would not mix the teachings of boat
reels and bait casting reels (e.g., duplicating handles on a boat reel
such as that of the VS Reel Ad), because that would at most modify a
reel configured for one use into a reel configured for another. Those
features that are characteristic of a boat reel (e.g., the large
asymmetrical handle arm) are designed for the benefit of improving
deep water fishing (such as by facilitating retracting a large amount of
line), while those features that are characteristic of a casting reel (e.g.,
being light weight with two closely spaced handle knobs) are designed
for the benefit of improving casting-based fishing (such as by
facilitating the throw of the rod to perform the casting operation, and
facilitating the quick retraction of the shorter amount of casted line).
(Id.)
There is insufficient evidence to support the strict demarcation made by
Patent Owner between bait casting reels and boat reels. As argued by Requester,
there is evidence that “boat reels” are used for casting. Requester provided an
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article titled “Clash of the Titans,” which describes two fishing reels found on
“charter” boats that are used as offshore and trolling reels (Exhibit A of Appeal Br.
(“Clash of the Titans”), p. 1 under the heading “Impressions”; p. 4). Despite being
used on boats, and being used for offshore purposes and trolling, the articles states
that the reels are suitable and used for casting, and even describes the features that
make it useful for this purpose:
Casting: Its (sic) unlikely that these conventionals will serve as
primary casting reels for most anglers, as they are more about live
lining than tossing lures, but that doesn’t mean that these reels can’t
chuck heavy metal. We found both of these reels evenly matched
when it came to tossing jigs and offshore plugs. Both reels resisted
backlashes well, and utilize a very similar centrifugal anti-backlash
system that makes use of interchangeable brake collars. Both reels
have a click free spool tension adjustment knob, making it easy to
make quick corrections with different lure weights. With both reels,
make sure to never excessively loosen the cap as this is a spot where
corrosive saltwater can enter the reel. All in all both reels cast
surprisingly well, making them even more useful for a wide range of
applications. (Category winner; Tie)
(Exhibit A, p. 4)
Patent Owner contends that the fact the boat reels are said to “cast
surprisingly well” indicates that they are not structurally configured for casting
(Appeal Br. 13). This argument is not persuasive. The article does say that it is
“unlikely” the reels “will serve as primary casting reels,” but the article goes on to
describe specific structures such as a centrifugal anti-backlash system and click
free spool tension that enable them to perform casting and “chuck heavy metal.”
We find this evidence persuasive that so-called “boat reels” can be configured and
are used for casting, and it is not mutually exclusive that a reel used on a boat for
offshore fishing and trolling can also have structural features that configure it to be
used for casting.
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In addition to both reel types being used for bait casting, there is also
evidence of structural similarities between the reels. For example, both boat and
bait casting reels are double-bearing types and utilize star wheel drag adjusters
adjacent to the handle (see Requester Resp’t Br. 9). Significantly, both the VS
Reel for a boat and the Zwayer reel, which is said to have a cast mode (col. 4, l.
45), have handle and star portions (RAN 4 citing to Fig. 4 of Zwayer). Because of
this overlap in operation and structure between reels for bait casting and boat reels
for trolling, one of ordinary skill in the art would have found the teachings in bait
casting reels pertinent when designing a boat reel. Consequently, there is
sufficient evidence that one of ordinary skill in the art would have found the
teachings of Kaneda, Zwayer, and Chang applicable to the VS Reel.
Patent Owner contends that it would not have been obvious to modify the
VS Reel with the features of a casting reel. Specifically, Patent Owner argues that
one of ordinary skill would not have modified the single T-shaped knob of the VS
Reel with the teachings in Kaneda and Zwayer of a pair of knobs, because the VS
Reel is a boat reel and the latter are casting reels (Rebuttal Br. 3-4 & 13-14; Appeal
Br. 15).
Duplication of the handle knob on a boat reel would take away the
advantages of the large asymmetrical handle, and may interfere with
the operation of the reel when quickly releasing or retracting a large
amount of line. As such, boat reels and casting reels teach away from
being modified to more resemble the other, and one of ordinary skill
would not turn to one to attempt to improve the other (e.g., by
duplicating parts on the VS Reel Ad to make the VS Reel Ad more
like a casting reel).
(Rebuttal Br. 14.)
The evidence shows that both single-knob and double-knob reels were
known in the art. For example, evidence was provided that casting reels were
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known to have both single-knobs (US 4,043,521; col. 2, ll. 21-24; col. 3, ll. 50-51;
fig. 2 showing handle 114; Requester Resp’t Br. 3-4; Declaration of Patrik
Svensson, an engineer designing fishing reels since 1992 and an employee of the
Requester; ¶¶ 1 & 4) and double-knobs (Kaneda and Zwayer). The ‘969 patent
describes the claimed double-knob casting reel as an improvement over a “related”
bait casting reel which has only a single knob (‘969 patent, col. 2, ll. 37-55; col. 4,
l. 62 to col. 5, l. 2; col. 5, ll. 17-21; figs. 6 and 7). This evidence supports a finding
that single-and double-knobs in fishing reels were interchangeable and a matter of
choice on the part of the fishing reel designer. (Svensson Decl. ¶ 4.) Citing to
various published patents, Mr. Svensson stated that it “has long been known to
fishing reel designers that double-bearing or conventional style reels can use either
one or two knobs.” Id. at ¶ 4.) In contrast, there is no persuasive evidence that a
skilled worker in the art would have been dissuaded from making such a knob
modification to the VS Reel, when the interchangeability of such knobs in casting
reels was well known.
Patent Owner argues that adding a second knob to VS Reel would interfere
with its function, and that further shortening the distal handle portion would
interfere with the adjusting portion (Appeal Br. 20-21). In response, Requester
pointed to figures 1 and 2 of Chang as illustrating that the “T-shape knob does not
extend radially inward past the axis of rotation of the handle . . . [thus], if such a
handle was reconfigured as a double arm handle with a pair of knobs, such a
modification would not result in interference of the T-shape knobs.” (Requester
Comments, p. 5, dated May 16, 2012.) Requester’s argument is logical and
persuasive.
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It does not appear to have been disputed that the VS Reel is a boat or trolling
reel. However, strikingly, the VS Reel has the same features expressly described
in the '969 patent as its invention. The ‘969 patent states that the handle arm is
bent toward the reel body side (21f) to enhance its operability, however, because of
the drag operation portion, the handle “arm length become[s] long and it is not
suitable for a compact fishing reel.” (‘969 patent, col. 4, ll. 62 to col. 5, l. 2; see
fig. 1, 21f). To address this issue, the patent describes forming bent portions in the
drag operation portion (id. at col. 5, ll. 3-17; see fig. 1, 27f) that make it “suitable
for a compact reel [that] is provided with a short handle and frequently performs
casting and reeling operations.” (Id. at col. 5, ll. 17-25.)
The structural features of bent handle and drag operation portions are shown
in the VS Reel Ad (RAN 2-3). Despite this explicit disclosure, Patent Owner
states that “the VS Reel Ad does not disclose, teach, or suggest a ‘fishing reel
configured for a casting operation by an angler,’ as recited in claim 1.” (Appeal Br.
11-12). To the contrary, the structure specifically relied upon in the ‘969 patent as
making the reel suitable for casting and reeling is found in the VS Reel fishing
pole, which is inconsistent with Patent Owner’s statement.
Claim 1 recites that the claimed fishing reel is “configured for a casting
operation by an angler.” There is adequate evidence that a fishing reel, such as the
VS Reel, may be configured for a specific purpose, such as trolling offshore on a
boat or for casting as claimed (Patent Owner Rebuttal Br. 2-4). However, Patent
Owner takes that one step further and seems to argue that a reel can only be
configured for one function, e.g., trolling versus casting, precluding a trolling boat
reel from being configured so as to be suitable for casting as well. In other words,
Patent Owner appears to be construing “configured” in claim 1 to mean that the
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intent of the designer was to design a fishing reel for bait casting, and the
superfluous finding that a trolling boat reel can be used for casting does not mean
that the reel is “configured for a casting operation” (id. at 5-6). However, Patent
Owner has not identified a persuasive basis for reading “configured for a casting
operation” to indicate the intent of the designer, or as excluding other reels that
may have been designed with a different intended use. As long as a reel has
structures that enable it to be used for casting, it would meet the claimed limitation
of a “fishing reel configured for a casting operation by an angler.”
We agree that “configured” means “to put together or arrange the parts of in
a specific way or for a specific purpose.”6 But trolling or boat reels, as indicated
by “Clash of the Titans,” have specific structures that are arranged in a specific
way to enable them to perform the casting function, i.e., the centrifugal anti-
backlash system and click free spool tension (supra at pp. 9-10). Indeed, the VS
reel also has the specific features of a bent handle and operations portions that the
‘969 patent expressly teaches make it suitable for casting and reeling operations
(‘969 patent, col. 5, ll. 22-25; supra at pp. 5-6 and 12-13). Thus, the VS Reel has
the same features described in the ‘969 patent as making a reel configured for
casting.
With regard to Chang, a reason was provided by the Examiner as to why one
of ordinary skill would have modified the VS Reel with Chang’s teaching of a
shortened distal handle portion (RAN 3-4). Patent Owner did not identify a flaw in
this reasoning and we find none.
Even if we interpreted the claim as drawn to a bait casting reel, and if strictly
modifying the VS Reel with the teachings in Kaneda, Zwayer, and Chang would

6 http://www.thefreedictionary.com/configure
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not result in a bait casting reel (because the VS Reel would still be a boat reel), we
still would affirm the rejection. It is not necessary to bodily incorporate the
structures of Kaneda, Zwayer, and Chang into the VS Reel to make an obvious
embodiment comprising all of the claimed limitations. Specifically, in the
rejection proposed by the Requester and adopted by the Examiner (RAN 2
referring to rejection proposed by Requester on May 11, 2012; (the actual date was
May 16, 2012); Action Closing Prosecution, dated June 19, 2012, p.2), Requester
had alternatively proposed modifying the bait casting reels of Kaneda and/or
Zwayer with the teachings in the VS Reel Ad (Requester Comments dated May 16,
2012, p. 8-9). The VS Reel Ad gives an explicit reason for bending the handle as
shown in the photograph reproduced above: to eliminate horizontal shaking for
ease of reeling (VS Reel Ad, p. 2 of translation (Exhibit D). Reeling is performed
in bait casting as well (RAN 3: 13), and therefore would have been seen as a
benefit when combined with the bait casting reels of Kaneda, Zwayer, and Chang.
For the foregoing reasons, we affirm the rejection of claim 1 as obvious in
view of VS Reel Ad, Kaneda or Zwayer, and Chang.

Claims 2-6
Patent Owner’s arguments for these claims are the either the same or
substantially the same as for claim 1. Consequently, for the reasons given above,
and for the reasons given by the Examiner and Requester, we affirm the rejections
of dependent claims 2-5 and independent claim 6.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

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AFFIRMED

Patent Owner:

PILLSBURY WINTHROP SHAW PITTMAN, LLP (NV)
PO Box 10500
McLean, VA 22102

Third Party Requester:

ROYLANCE, ABRAMS, BERDO & GOODMAN, LLP
1300 19th Street, NW
Suite 600
Washington, DC 20036