Ex Parte Kirk

Board of Patent Appeals and Interferences

Jun 15, 2009

10953220 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte DAVID J. KIRK 8
____________________ 9
10
Appeal 2009-2324 11
Application 10/953,220 12
Technology Center 3700 13
____________________ 14
15
Decided:1 June 15, 2009 16
____________________ 17
18
Before FRED E. McKELVEY, Senior Administrative Patent Judge, and 19
LINDA E. HORNER and FRED A. SILVERBERG, Administrative Patent 20
Judges. 21
22
SILVERBERG, Administrative Patent Judge. 23
24
25
DECISION ON APPEAL26

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).
Appeal 2009-2324
Application 10/953,220

2
STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a rejection of 2
claims 12 and 13. Claims 1-10 have been canceled. Claim 11 has been 3
allowed. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 4
5
SUMMARY OF DECISION 6
We AFFIRM. 7
8
THE INVENTION 9
The Appellant’s claimed invention is directed to a repair kit 10
for fishing rods having a coupler to repair shafts of the broken rods 11
(Spec. 1:11-12 and Spec. 2:17-21). 12
The invention is readily understood by reference to Figures 7 13
and 9-11, and Claim 12. 14
Figure 7 is reproduced below: 15
16
Figure 7 shows the coupler 10 in preparation of a repair with a portion 17
of broken fishing rod 100 (Spec. 4:2-3). 18
19
Appeal 2009-2324
Application 10/953,220

3
Figure 9 is reproduced below: 1
2
Figure 9 shows the coupler 10 being twisted onto a first portion 100a 3
of the broken fishing rod 100 (Spec. 4:6-7). 4
5
Figure 10 is reproduced below: 6
7
Figure 10 shows the coupler 10 being twisted onto a second portion 8
100b of the broken fishing rod 100 (Spec. 4:8-9). 9
10
Figure 11 is reproduced below: 11
12
Figure 11 shows the repaired fishing rod with the coupler in place 13
(Spec. 4:10-11). 14
Appeal 2009-2324
Application 10/953,220

4
Claim 12, reproduced below, is representative of the claimed subject 1
matter (matter in bold and parentheses added) (App. Br. 2, 3 and 12) 2
12. A method of repairing a fishing rod 100 having a broken 3
shaft, having a first portion 100a and a second portion 100b, 4
and a plurality of eye ferrules (shown but not referenced) 5
(Spec. 6:8-16), comprising the steps of: 6
a) cleaning an edge of the first portion of said broken rod 7
shaft (Spec. 5:15-16 and fig. 7) 8
b) screwing one end of a cylindrical body 10 having two 9
open ends; and a plurality of formed threads 11 (Spec. 5:19-10
Spec. 6:7 and figs. 5-6), fixedly installed in said cylindrical 11
body 10 onto the first portion 100a of said broken rod shaft by 12
twisting said cylindrical body 10 to engage said plurality of 13
formed threads 11 with said broken rod shaft (Spec. 6:11-12 14
and fig. 9); 15
c) cleaning the edge of said second portion of said broken 16
rod shaft (Spec. 5:15-16 and fig. 7); and 17
d) screwing the other end of a cylindrical body 10 having 18
two open ends and a plurality of formed threads 11, fixedly 19
installed in said cylindrical body 10 onto the second portion 20
100b of said broken rod shaft by twisting said cylindrical body 21
10 to engage said plurality of formed threads 11 with said 22
second portion 100b of said broken rod shaft (Spec. 6:12-16 23
and figs. 10-11). 24
25
THE REJECTION 26
The Examiner relies upon the following as evidence of 27
unpatentability: 28
Mercado US 4,875,710 Oct. 24, 1989 29
Hickham US 5,125,147 Jun. 30, 1992 30
31
The following rejection by the Examiner is before us: 32
Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being 33
unpatentable over Hickham in view of Mercado. 34
Appeal 2009-2324
Application 10/953,220

5
ISSUE 1
The issue before us is whether the Appellant has shown that the 2
Examiner erred in rejecting claims 12 and 13 over Hickham in view of 3
Mercado. The issue turns on whether: (1) Hickham teaches away from 4
combining the teachings of Hickham and Mercado (App. Br. 4); (2) it would 5
have been possible for one having ordinary skill in the art to combine the 6
teachings of Hickham and Mercado in the manner claimed (App. Br. 7); and 7
(3) the Examiner failed to articulate a proper rationale as to why it would 8
have been obvious to combine the teachings of Hickham and Mercado (App. 9
Br. 9). 10
11
FINDINGS OF FACT 12
We find that the following enumerated findings are supported by at 13
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 14
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 15
proceedings before the Office). 16
1. Appellant admits that “Hickham does teach a repair coupling for 17
fiberglass rods” (App. Br. 7). 18
2. Appellant further admits that adhesive “makes field repairs more 19
cumbersome because the user must keep a bottle of adhesive handy 20
at all times. Over time, adhesive becomes old and unusable, 21
requiring it to be replaced” (App. Br. 10). 22
3. Hickham discloses a method for repairing a broken section of a 23
fishing rod (col. 1, ll. 7-20). Hickham’s fishing rod includes (1) a 24
large tapered section 11 with a frayed end 13, and (2) a small 25
Appeal 2009-2324
Application 10/953,220

6
tapered section 12 with a frayed end 14. Each of the sections has 1
one or more line ferrules F (col. 3, l. 63-col. 4, l. 6 and fig. 1). 2
4. Hickham further discloses that the method for repairing a broken 3
section of a fishing rod includes (1) placing a uniform cylindrical 4
sleeve 20 over the fractured site on the large tapered section 11 5
(col. 4, ll. 14-20 and fig. 2), (2) injecting epoxy filler 25 into the 6
bore 22 of sleeve 20 between the sleeve 20 and the large tapered 7
section 11 (col. 4, ll. 22-31 and fig. 3), (3) placing the small 8
tapered section into the bore 22 of sleeve 20 until the frayed ends 9
13, 14 abut (col. 4, ll. 32-43 and fig. 5), (4) aligning the line 10
ferrules F (col. 6, l. 3; wherein line ferrules F and rod eyes appear 11
to be the same element, note col. 4, ll. 2-4 and 61), and 12
(5) allowing the epoxy filler 25 to set (col. 3, ll. 32-35 and col. 6, 13
l. 4). 14
5. Hickham still further discloses that the fishing rod’s large tapered 15
section 11 is hollow (figs. 2-5, left-most portion of the sectional 16
view of section 11). 17
6. Mercado discloses a method for attaching a fitting to a length of 18
pipe. Mercado’s method includes (1) providing abrasive threads 19
on a surface of a fitting, and (2) bringing the abrasive threads into 20
contact with a surface of a length of pipe so that threads are 21
abraded into the surface of the length of pipe (col. 4, ll. 12-18). 22
7. Mercado further discloses that the method can also be performed 23
without using adhesive material between the abrasive threads and 24
the pipe (col. 4, ll. 12-24 and col. 8, ll. 18-20). 25
Appeal 2009-2324
Application 10/953,220

7
8. Mercado still further discloses joining two fiberglass reinforced 1
pipes 12, 14 by a coupling 10 (col. 4, ll. 54-57 and fig. 1). 2
Mercado’s coupling 10 (1) is an elongated cylindrical sleeve, (2) is 3
preferably made of fiberglass reinforced resin (col. 5, ll. 4-7), 4
(3) has a wall 16 (col. 5, l. 5), and (4) has bells 18, 20 and threads 5
24 provided in an internal surface of wall 16 (col. 5, ll. 8 and 6
28-30). 7
9. Mercado still further discloses that the threads 24 are abrasive so 8
that when the coupling 10 is torqued (twisted) onto the end of the 9
length of pipe, threads are cut into the outer surface of the length of 10
pipe by threads 24 (col. 5, ll. 32-35). 11
10. Mercado still further discloses that (1) the threads 24 are tapered, 12
as they gradually increase to a full height from the edge of the bells 13
18, 20 (col. 5, l. 8) over the first 2.5 thread revolutions (col. 5, 14
ll. 28-32, and fig. 4), (2) the full height of the threads 24 is about 15
0.11 inches (col. 5, ll. 44-45), (3) the maximum depth that the 16
threads 24 will cut into the outer surface of the lengths of pipe is 17
about 0.0825 inches (col. 5, ll. 48-50), and (4) the threads 24 cut 18
into the pipeline that are exposed when the repair coupling 10 is 19
backed off should not adversely impact the bursting strength of the 20
pipeline because they are very shallow in comparison to the wall 21
thickness of most pipes (col. 8, ll. 23-27). 22
11. Mercado still further discloses repairing an existing pipeline 56 by 23
using threaded coupling 58, which is the same as coupling 10 24
except that the threads 24 extend across the length of the coupling 25
Appeal 2009-2324
Application 10/953,220

8
58, between the existing pipeline 56 and a joining pipe 62 (col. 7, l. 1
67-col. 8, l. 16, and figs. 6 and 6A). 2
12. The ordinary meaning of the word “rod” includes “a pole with a 3
line for fishing.” Merriam-Webster’s Collegiate Dictionary (10th 4
ed. 1996). 5
13. The ordinary meaning of the word “pole” includes “a long slender 6
cylindrical object.” Merriam-Webster’s Collegiate Dictionary 7
(10th ed. 1996). 8
14. The ordinary meaning of the word “pipe” includes “a tubular or 9
cylindrical object, part.” Merriam-Webster’s Collegiate 10
Dictionary (10th ed. 1996). 11
15. Additional findings as necessary appear in the Analysis portion of 12
this opinion. 13
14
PRINCIPLES OF LAW 15
Appellant has the burden on appeal to the Board to demonstrate error 16
in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d 1606, 17
1614 (BPAI 2008) [burden on appeal] (on appeal, applicant must show 18
examiner erred); Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex 19
parte Catan, 83 USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 20
USPQ2d 1509, 1519 (BPAI 2007). See also In re Kahn, 441 F.3d 977, 985-21
86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a 22
rejection [under § 103] by showing insufficient evidence of prima facie 23
obviousness or by rebutting the prima facie case with evidence of secondary 24
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 25
(Fed. Cir. 1998)). 26
Appeal 2009-2324
Application 10/953,220

9
“Section 103 forbids issuance of a patent when ‘the differences 1
between the subject matter sought to be patented and the prior art are such 2
that the subject matter as a whole would have been obvious at the time the 3
invention was made to a person having ordinary skill in the art to which said 4
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 5
(2007). The question of obviousness is resolved on the basis of underlying 6
factual determinations including (1) the scope and content of the prior art, 7
(2) any differences between the claimed subject matter and the prior art, (3) 8
the level of skill in the art, and (4) where in evidence, so-called secondary 9
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 10
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions 11
might be reordered in any particular case, the [Graham] factors continue to 12
define the inquiry that controls.”). 13
In KSR, the Supreme Court stated that “when a patent claims a 14
structure already known in the prior art that is altered by the mere 15
substitution of one element for another known in the field, the combination 16
must do more than yield a predictable result.” Id. at 416 (citing United 17
States v. Adams, 383 U.S. 39, 50-51 (1966)). 18
In KSR the Supreme Court held that “[i]f a technique has been used to 19
improve one device, and a person of ordinary skill in the art would recognize 20
that it would improve similar devices in the same way, using the technique is 21
obvious unless its actual application is beyond his or her skill.” See KSR at 22
417. 23
In KSR, the Supreme Court stated that: 24
[o]ften, it will be necessary for a court to look to 25
interrelated teachings of multiple patents; the 26
effects of demands known to the design 27
Appeal 2009-2324
Application 10/953,220

10
community or present in the marketplace; and the 1
background knowledge possessed by a person 2
having ordinary skill in the art, all in order to 3
determine whether there was an apparent reason to 4
combine the known elements in the fashion 5
claimed by the patent at issue. 6
KSR, 550 U.S. at 418. The Court noted that “[t]o facilitate review, this 7
analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 8
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained 9
by mere conclusory statements; instead, there must be some articulated 10
reasoning with some rational underpinning to support the legal conclusion of 11
obviousness.”)). However, “the analysis need not seek out precise teachings 12
directed to the specific subject matter of the challenged claim, for a court 13
can take account of the inferences and creative steps that a person of 14
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. 15
In KSR, the Supreme Court stated that: 16
Helpful insights, however, need not become rigid 17
and mandatory formulas; and when it is so applied, 18
the TSM test is incompatible with our precedents. 19
… There is no necessary inconsistency between 20
the idea underlying the TSM test and the Graham 21
analysis. But when a court transforms the general 22
principle into a rigid rule that limits the 23
obviousness inquiry, as the Court of Appeals did 24
here, it errs 25
26
Id. at 419. 27
Whether a reference teaches away from a claimed invention is a 28
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “A 29
reference may be said to teach away when a person of ordinary skill, upon 30
reading the reference, … would be led in a direction divergent from the path 31
Appeal 2009-2324
Application 10/953,220

11
that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. 1
Cir. 2001). “[W]hen the prior art teaches away from combining certain 2
known elements, discovery of a successful means of combining them is 3
more likely to be nonobvious.” KSR, 550 U.S. at 416 (citing United States v. 4
Adams, 383 U.S. 39, 51-52 (1966)). “When a piece of prior art ‘suggests 5
that the line of development flowing from the reference’s disclosure is 6
unlikely to be productive of the result sought by the applicant’ the piece of 7
prior art is said to ‘teach away’ from the claimed invention.” Medichem, 8
S.A. v. Rolabo, S.L.¸ 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re 9
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In Medichem, however, the 10
Federal Circuit further explained: 11
[O]bviousness must be determined in light of all 12
the facts, and there is no rule that a single 13
reference that teaches away will mandate a finding 14
of nonobviousness. Likewise, a given course of 15
action often has simultaneous advantages and 16
disadvantages, and this does not necessarily 17
obviate motivation to combine. See [Winner Int'l 18
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 19
(Fed. Cir. 2000)] ("The fact that the motivating 20
benefit comes at the expense of another benefit, 21
however, should not nullify its use as a basis to 22
modify the disclosure of one reference with the 23
teachings of another. Instead, the benefits, both 24
lost and gained, should be weighed against one 25
another."). Where the prior art contains 26
"apparently conflicting" teachings (i.e., where 27
some references teach the combination and others 28
teach away from it) each reference must be 29
considered "for its power to suggest solutions to an 30
artisan of ordinary skill.... consider[ing] the degree 31
to which one reference might accurately discredit 32
another." In re Young, 927 F.2d 588, 591 (Fed. 33
Appeal 2009-2324
Application 10/953,220

12
Cir. 1991). 1
Id. 2
The analogous-art test requires that the Board 3
show that a reference is either in the field of the 4
applicant's endeavor or is reasonably pertinent to 5
the problem with which the inventor was 6
concerned in order to rely on that reference as a 7
basis for rejection. References are selected as 8
being reasonably pertinent to the problem based on 9
the judgment of a person having ordinary skill in 10
the art. 11
12
In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citation omitted). “A 13
reference is reasonably pertinent if, even though it may be in a different field 14
from that of the inventor’s endeavor, it is one which, because of the matter 15
with which it deals, logically would have commended itself to an inventor’s 16
attention in considering his problem.” In re ICON Health & Fitness, Inc., 17
496 F.3d 1374, 1379-1380 (Fed. Cir. 2007) (citation omitted). “Familiar 18
items may have obvious uses beyond their primary purpose.” KSR, 550 U.S. 19
at 420. 20
21
ANALYSIS 22
Appellant argues claims 12 and 13 as a group. As such, we select 23
claim 12 as representative of the group, and claim 13 will stand or fall with 24
claim 12. 37 C.F.R. § 41.37(c)(1)(vii) (2007). 25
Appellant contends that Hickham teaches away from the suggested 26
combination (App. Br. 4). Appellant further contends that Hickham rejected 27
methods that work on hollow rods as not being truly representative of the art 28
of fishing rods (App. Br. 5). Appellant still further contends that someone 29
Appeal 2009-2324
Application 10/953,220

13
looking to Hickham would be directed away from methods involving pipe 1
joining as possible solutions to repair of fiberglass fishing rods (App. Br. 7). 2
Hickham discloses a method of repairing fishing rods (Facts 3-4). 3
Hickham, in trying to find a possible solution to fishing rod repair, looked to 4
patents that provided fishing rod repair solutions (col. 1, ll. 56-58 and col. 2, 5
ll. 25-28), and to patents that related generally to demountable structures and 6
to methods of joining pipe (col. 2, ll. 41-68). Hickham, in analyzing the 7
prior art fishing rod repair solutions, noted the deficiencies of the cited prior 8
art fishing rod repair solutions, that is, the cited prior art solutions to fishing 9
rod repair contemplated a hollow rod, while fishing rods were not always 10
hollow. We agree with the Examiner’s finding (Ans. 5) that Hickham’s 11
analysis is not a rejection of all methods that work on hollow rods, just those 12
methods that work only on hollow rods. 13
Therefore, a person of ordinary skill, upon reading Hickham, would 14
not be led in a direction divergent from the path that was taken by Appellant. 15
See In re Haruna, 249 F.3d at 1335. Further, fishing rods and pipes are both 16
similarly-shaped objects (Facts 12-14). Therefore, since Hickham in trying 17
to find a possible solution to fishing rod repair, looked to patents that 18
provided fishing rod repair solutions and to patents that related to methods 19
of joining similarly-shaped objects (pipes), a person having ordinary skill 20
would also look toward such patents. “References are selected as being 21
reasonably pertinent to the problem based on the judgment of a person 22
having ordinary skill in the art.” See In re Kahn, 441 F.3d at 987. 23
Appellant still further contends that there is no teaching, suggestion or 24
motivation in Hickham or Mercado, either alone, or in combination for 25
making the proposed combination (App. Br. 7). To the extent the Appellant 26
Appeal 2009-2324
Application 10/953,220

14
is arguing for a rigid application of the teaching-suggestion-motivation test, 1
this argument is not persuasive in light of the Court’s decision in KSR. 550 2
U.S. at 419 (holding that it is error to apply the teaching-suggestion-3
motivation test as a rigid formula to limit the obviousness inquiry). 4
Appellant still further contends that the Examiner failed to articulate a 5
proper rationale as to why it would have been obvious to combine the 6
teachings of Hickham and Mercado (App. Br. 9). 7
Hickham discloses a method for repairing a broken section of a 8
hollow fiberglass fishing rod (Facts 1, 3 and 5) by (1) placing a uniform 9
cylindrical sleeve 20 over the fractured site on a large tapered section 11, (2) 10
injecting epoxy filler 25 into a bore 22 of sleeve 20 between the sleeve 20 11
and the large tapered section 11, (3) placing the small tapered section into 12
the bore 22 of sleeve 20 until the frayed ends 13, 14 abut, (4) aligning the 13
line ferrules F, and (5) allowing the epoxy filler 25 to set (Fact 4). Mercado 14
discloses joining two fiberglass reinforced pipes 12, 14 by a fiberglass 15
reinforced coupling 10 (Fact 8), the coupling 10 having internal tapered 16
threads 24 that are abrasive (Facts 9-10). Mercado further discloses that 17
when the coupling 10 is torqued (twisted) onto the end of the length of pipe, 18
threads are cut into the outer surface of the length of pipe by threads 24 (Fact 19
9). Mercado still further discloses repairing an existing pipeline 56 by using 20
a threaded coupling 58, which is the same as coupling 10 except that the 21
threads 24 extend across the length of the coupling 58, between the existing 22
pipeline 56 and a joining pipe 62 (Fact 11). Mercado still further discloses 23
that the method can also be performed without using adhesive material 24
between the abrasive threads and the pipe (Fact 7). 25
Appeal 2009-2324
Application 10/953,220

15
The Examiner articulated that combining the teachings of Hickham 1
and Mercado by substituting in Hickham for his coupling mechanism 2
including sleeve 20 and epoxy 25, the coupling mechanism including 3
coupling 10, 58 having internal threads 24 as taught by Mercado would 4
simplify the repair process by making the repair less cumbersome and 5
eliminating the need for the epoxy (Ans. 6-7). We agree with the Examiner’s 6
analysis and find that eliminating the need for the epoxy makes the repair 7
process less cumbersome (Fact 2), and would also eliminate the time needed 8
for the epoxy to set (Fact 4). 9
The Appellant’s claimed invention is directed to a fishing rod repair 10
kit using a hollow threaded coupler to repair and join two ends of a broken 11
fishing rod shaft (Spec. 1:11 12, Spec. 2:17-21 and Spec. 6:8-16, and figs. 7-12
11). Mercado’s invention is directed to a hollow pipe repair method using a 13
hollow threaded coupling 58 to join two lengths of pipe 56, 62 (Fact 11). 14
We find that both the Appellant’s fishing rod repair kit and Mercado’s 15
invention are solving the same problem of repairing a broken cylindrical 16
object. We find that it would have been obvious to a person having ordinary 17
skill in the art to apply Mercado’s pipe repair method to repair broken 18
fishing rods, such as in Hickham, since fishing rods and pipes are both 19
similarly-shaped objects (Facts 12-14) and the application of Mercado’s 20
method to repair broken fishing rods would function in the same manner, 21
that is, join two cylindrical objects by a hollow threaded coupler. 22
The modification proposed by the Examiner is the simple substitution 23
of one known cylindrical object coupler for another to perform the same 24
function of holding two cylindrical objects or two portions of a cylindrical 25
object together. In other words, Mercado’s threaded coupling is used to join 26
Appeal 2009-2324
Application 10/953,220

16
two hollow shafts and a broken fishing rod likewise have two hollow shafts, 1
so the application of Mercado’s threaded coupling to join the hollow shafts 2
of Hickham’s broken fishing rod is just the predictable use of Mercado’s 3
threaded coupling according to its established function. KSR, 550 U.S. at 4
417. Further, using the improved technique of Mercado in combination with 5
the teachings of Hickham would yield the predictable result of eliminating 6
the need for epoxy and make the repair process less cumbersome (Fact 2) 7
and less time consuming (Fact 4). See KSR, 550 U.S. at 416-17. See also 8
Anderson's-Black Rock, Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57 9
(1969) (paving repair apparatus consisting of a combination of three known 10
elements, all performing their established functions in the combination, held 11
obvious). We find that the Examiner articulated a proper rationale as to why 12
it would have been obvious to combine the teachings of Hickham and 13
Mercado. 14
Appellant still further contends that Mercado’s threads 24 would 15
splinter the outer surface of a rod making it unusable (App. Br. 9). 16
However, Appellant has provided no support for this contention. Appellant 17
has the burden on appeal to the Board to demonstrate error in the Examiner’s 18
position. See In re Kahn, 441 F.3d at 985-86. Mercado discloses that the 19
maximum depth (0.0825 inches) that the threads 24 will cut into the outer 20
surface of a length of pipe is very shallow in comparison to the wall 21
thickness of the pipe and that any exposed threads should not adversely 22
impact the bursting strength of the pipe (Fact 10). Fishing rods and pipes are 23
both similarly-shaped objects (Facts 12-14). We find that the maximum 24
depth that Mercado’s threads 24 will cut into the outer surface of a length of 25
pipe is also very shallow relative to the thickness of a conventional hollow 26
Appeal 2009-2324
Application 10/953,220

17
fishing rod. Therefore, we find that Mercado’s threads 24 would similarly 1
not affect the strength of a similarly shaped fishing rod (Facts 12-14). 2
Accordingly, we find that Mercado’s threads 24 would also not splinter an 3
outer surface of a similarly shaped fishing rod, and make it unusable. 4
Further, a person of ordinary skill is a person of ordinary creativity, 5
not an automaton. KSR, 550 U.S. at 421. It would not be beyond the skill of 6
a person of ordinary skill to know how to adapt the depth of the threads of 7
Mercado’s coupling, if necessary, to make it suitable for use on a fishing 8
rod. “The test for obviousness is not whether the features of a secondary 9
reference may be bodily incorporated into the structure of the primary 10
reference; nor is it that the claimed invention must be expressly suggested in 11
any one or all of the references.” In re Keller, 642 F.2d 413, 425 (CCPA 12
1981) (internal citations omitted). 13
Therefore, we conclude that the Appellant has not demonstrated that 14
the Examiner erred in rejecting claim 12 over Hickham in view of Mercado. 15
The Appellants have likewise not demonstrated error in the Examiner’s 16
rejection of claim 13, which depends from claim 12. We affirm the rejection 17
of claims 12 and 13 under 35 U.S.C. § 103 as being unpatentable over 18
Hickham in view of Mercado. 19
20
CONCLUSION OF LAW 21
We conclude that the Appellant has not shown that the Examiner 22
erred in rejecting claims 12 and 13 under 35 U.S.C. § 103(a) as being 23
unpatentable over Hickham in view of Mercado. 24
25
Appeal 2009-2324
Application 10/953,220

18
DECISION 1
The decision of the Examiner to reject claims 12 and 13 over 2
Hickham in view of Mercado is affirmed. 3
No time period for taking any subsequent action in connection with 4
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 5
6
AFFIRMED 7
8
9
10
11
12
13
mls 14
15
MICHAEL TAVELLA 16
2051 BRIGADIER DRIVE 17
ANCHORAGE, AK 99507 18