Ex Parte Denby

Board of Patent Appeals and Interferences

Jun 23, 2009

09546502 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL L. DENBY

Appellant
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Appeal 2009-003065
Application 09/546,502
Technology Center 3600

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Decided1: June 24, 2009
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Before JAMESON LEE, SALLY GARDNER LANE, and SALLY C.
MEDLEY Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
The appeal, under 35 U.S.C. § 134(a), is from a Non-Final Rejection
of Appellant’s claims 1-3 and 37-41. Claims 4-36 have been canceled.
(App. Br. 3). We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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The real party in interest is said to be applicant Michael L. Denby.
(App. Br. 2).
Appellant’s application is directed to a connection for a fishing lure.
The Examiner relied on the following references:
Name Number Issue Date
McMahon 578,762 March 16, 1897
Drosdak 4,864,767 September 12, 1989
Drosdak 5,469,652 November 28, 1995

The Examiner rejected claims 1-3 and 37 under 35 U.S.C.
§ 103(a) over McMahan and Drosdak ‘652. Appellant does not provide any
separate arguments for the patentability of claims 2, 3, and 37, which
depend on claim 1. We review claim 1 as a representative claim. See 37
C.F.R. § 41.37(c)(1)(vii).
The Examiner rejected claims 38-41under 35 U.S.C. § 103(a) over
Drosdak ‘767 and Drosdak ‘652. Appellant did not provide any separate
argument for the patentability of claims 39-41, which depend on claim 38.
We review claim 38 as a representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii).
I. PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l v. Teleflex Inc., 550 US 398, 416 (2007). “[W]hen a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.” Id. at 417 (quoting
Sakraida v. Ag Pro, Inc., 425 US 273 (1976)).
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II. ISSUE
Would those of skill in the art have combined the device of Drosdak
‘652 with the device of either McMahon or Drosdak ‘767?
III. FINDINGS OF FACT AND ANALYSIS
Claim 1
Findings of Fact
1. Appellant’s claim 1 recites:
Apparatus for receiving and securing an end segment of a line
comprising:
a body including a receptacle having inwardly directed
extensions, an open first end leading to the receptacle and an opposing
second end;
the receptacle capable of receiving therein and the extensions
impinging thereagainst the end segment; and
a pair of resilient hooks attached to the second end of the body
and disposed in an overlapping state forming a continuous loop in
which a lure is engagable to the coupler by forcing the hooks apart
and threading one of the hooks into and through a hook eye of the
lure.

(App. Br. 20, Claims App’x.).
2. Figure 2 of Appellants’ specification is reproduced below.

Figure 2 depicts a connector with a receptacle (25) and a coupler (26).
(Spec. 14, ll. 9-12).
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3. Figure 3 of Appellants’ specification is reproduced below.

Figure 3 depicts a cross-section of the receptacle (25) with an open end (32)
and an opposing end (31). (Spec. 14, ll. 14-17). The receptacle (25) has
extensions or teeth (35) that extend away from the open end (32). (Spec. 14,
l. 21, through 15, l. 1).
4. Figure 2 of Drosdak ‘652 is reproduced below.

Figure 2 depicts a leader (1) for a fishing line connected to a connector (7)
that has an open end and an opposing end. The body of the connector (7)
has a socket (9) with inwardly extending teeth or barbs (10). (Drosdak ‘652
col. 2, ll. 52-62).
5. Drosdak explains that lead and connector allow for easy
attachment of a second line, without the need for tying knots. (Drosdak col.
1, l. 64, through col. 2, l. 4).
6. Figure 1 of McMahon is reproduced below.
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Figure 2 depicts a fishing-line equipped with an attachment (E). (McMahon
ll. 42-44).
7. Figure 2 of McMahon is reproduced below.
.
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Figure 2 depicts the fishing-line attachment device (E) with an eye (b) which
is made of a coiled piece of wire and is resilient. (McMahon ll. 51-55).
8. McMahon explains that a fishing line can be secured in the
device (E) by passing it through eye (b) and then between the shanks (a) and
the coil that forms the eye (b) so that it is secured within eye (b). (McMahon
ll. 56-66).
9. McMahon explains that the device (E) allows a line to be
quickly and easily secured, as well as quickly and easily disconnected when
desired. (McMahon ll. 73-80).

Analysis
The Examiner rejected Appellant’s claim 1 under 35 U.S.C. § 103(a)
over Drusdak ‘652 and McMahon. In claim 1, Appellant recites an
apparatus with two elements: (1) a body with a receptacle having inwardly
directed extensions, and (2) a pair of resilient hooks that overlap in a
continuous loop. (FF2 1). An embodiment of Appellant’s claimed
apparatus, depicted in Figure 2 of Appellant’s specification, shows the
receptacle and hooks (FF 2), while Figure 3 shows the teeth inside the
receptacle (FF 3).
Drusdak ‘652 teaches a connector for a fishing line that has a socket,
or receptacle, with inwardly extending teeth and an open end. (FF 4). The
connector allows for easy attachment of a line, without the need for tying
knots. (FF 5).

2 Finding of fact.
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McMahon teaches a fishing-line attachment device with an eye made
of coiled, resilient wire. (FFs 6 and 7). The device of McMahon secures a
line by passing it through the eye and between the coils (FF 8), so that the
line can be easily and quickly secured, while also being easily and quickly
disconnected (FF 9).
The devices of both Drusdak ‘652 and McMahon allow for easy
attachment of a fishing line. If combined, these devices would also allow for
the easy attachment of a fishing line at either side of the resulting device.
Thus, one skilled in the art would have had a reason to combine the devices.
In the absence of a showing that the combination yields more than
predictable results, the combination is obvious. See KSR, 550 US at 416,
417. We are not persuaded by Appellant’s argument that there is no
teaching or suggestion in the prior art references to combine them. (See
App. Br. 9).
Appellant argues that substituting the coupler (b) of McMahon with
the coupler of Drosdak ‘652 “does not make the invention.” (App. Br. 9).
But, Appellant does not point to any element that is missing from the
combination of the two couplers. Appellant has not persuaded us that the
claimed apparatus would not have been obvious.
According to Appellant, Drosdak ‘652 “teaches away” from
McMahon because Drosdak ‘652 expressly teaches that it is for connecting a
leader and a fly line and because it teaches that the connector can have
various shapes or styles, as long as there is a female threaded socket present.
(App. Br. 9-10). To the extent Appellant is arguing that the embodiments
taught in Drosdak ‘652 teach away from the device of McMahon, we do not
find this argument persuasive. That Drosdak ‘652 teaches alternative
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embodiments does not mean that it teaches away from an embodiment that
renders the claimed apparatus obvious. See Syntex LLC v. Apotex, Inc. 407
F.3d 1371, 1380 (Fed. Cir. 2005) (“Under the proper legal standard, a
reference will teach away when it suggests that the developments flowing
from its disclosures are unlikely to produce the objective of the applicant's
invention.”); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

Claim 38
Findings of Fact
10. Appellant’s claim 38 recites:
Apparatus for receiving and securing an end segment of a line
comprising:
a body including a receptacle having inwardly directed
extensions, an open first end leading to the receptacle and an opposing
second end;
the receptacle capable of receiving therein and the extensions
impinging thereagainst the end segment; and
a pair of opposing plates attached to the second end of the body
and biased together and prongs carried by and between the plates
capable of securing a hook eye of a lure.

(App. Br. 22, Claims App’x.).
11. Figure 1 of Drosdak ‘767 is reproduced below.

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Figure 1 depicts a fly line connector (10) with a body (11) (Drosdak ‘767
col. 2, ll. 59-60) and opposing jaws, or plates, (14 and 14’) with teeth (18)
that can grip a fishing line (Drosdak ‘767 col. 3, ll. 3-8).
12. Drosdak teaches that the connector allows for rapid changing of
leaders of a fly line without tying knots. (Drosdak ‘767 col. 1, ll. 61-63).

Analysis
The Examiner rejected Appellant’s claim 38 under 35 U.S.C. § 103(a)
over Drusdak ‘652 and Drusdak ‘767. Appellant’s claim 38 recites an
apparatus with two elements: (1) a body with a receptacle having inwardly
directed extensions, and (2) a pair of opposing plates biased together with
prongs between the plates. (FF 10).
The connector of Drusdak ‘652, which attaches a fishing line, has
been discussed above and teaches element (1) of Appellant’s claimed
apparatus.
Drusdak ‘767 teaches a fishing line connector with opposing plates
attached to an end, wherein the opposing plates have teeth that can grip a
fishing line. (FF 11). Appellant does not contest that the ability to grip a
fishing line indicates that the plates are capable of securing a hook eye of a
lure. Thus, Drosdak ‘767 teaches element (2) of Appellant’s claimed
apparatus.
The devices of both Drusdak ‘652 and Drosdak ‘767 allow for easy
attachment of a fishing line, without tying knots. If combined, these devices
would also allow for the easy attachment of a fishing line at either end of the
resulting device. In the absence of a showing that the combination yields
more than predictable results, the combination is obvious. KSR, 550 US at
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416, 417. Thus, we are not persuaded by Appellant’s argument that there is
no teaching or suggestion in the prior art reference to combine them. (See
App. Br. 15).
Appellant argues that the rejection requires substituting the coupler of
Drosdak ‘7673 with a threaded female socket of Drosdak ‘652, but that this
new apparatus is not the claimed apparatus. (App. Br. 15). Appellant has
not pointed to any claimed element that is missing when the connector of
Drosdak ‘652 is combined with the connector of Drosdak ‘767. Thus,
Appellant’s argument that the claimed apparatus would not have been
obvious over both prior art references is not persuasive.
Appellant also argues that Drosdak ‘652 teaches away from the
combination for the same reasons Appellant argued that it taught away from
a combination with McMahon because Drosdak ‘652 includes embodiments
that would not result in the claimed device when combined with Drosdak
‘767. Appellant does not point to any teaching regarding the alternative
embodiments in Drosdak ‘652 that would suggests to those in the art that the
combination of disclosures are unlikely to produce the objective of the
applicant's invention. Thus, Drosdak ‘652 does not “teach away” from a
combination with Drosdak ‘767. See Gurley, 27 F3d at 553; Syntex, 407
F.3d at 1380.
IV. ORDER
Upon consideration of the record and for the reasons given,

3 Appellant actually wrote: “replacing McMahon’s coupler 14, 14’ with a
threaded female socket of Drosdak ‘652.” (App. Br. 15). We understand
“McMahon” to be a typographical error because McMahon has no element
14 or 14’, while Drosdak ‘767 does.
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the rejection of claims 1-3 and 37 under 35 U.S.C.
§ 103(a) over McMahan and Drosdak ‘652 is AFFIRMED; and
the rejection of claims 38-41under 35 U.S.C. § 103(a) over Drosdak
‘767 and Drosdak ‘652 is AFFIRMED.
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a).
AFFIRMED

ack
cc:
Michael Winfield Goltry
PARSONS & GOLTRY
400 North Central Avenue, Suite 1220
Phoenix, AZ 85012