Ex Parte Meier et al

Board of Patent Appeals and Interferences

Apr 30, 2010

10377355 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte INVENTIVE DESIGNS, LTD.
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Appeal 2009-013056
Application 10/377,355
Technology Center 3600
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Decided: April 30, 2010
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Before SALLY GARDNER LANE, JAMESON LEE, and
RICHARD TORCZON, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Inventive
Designs, Ltd. (“Inventive Designs”), under 35 U.S.C. § 134(a) from a final
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rejection of claims . We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.1
References Relied on by the Examiner
Caston 3,199,243 Aug. 10, 1965
Ives 5,131,180 Jul. 21, 1992

U.S. Patent No. 6,574,906 B1 issued to Meler et al. and assigned to
Inventive Designs, Ltd. (“Inventive Designs’ ‘906 Patent”)

The Rejections on Appeal
The Examiner rejected claims 59-117 under the judicially created
doctrine of obviousness-type double patenting over claims 1-18 of Inventive
Designs’ ‘906 Patent.
The Examiner rejected claims 59-117 under 35 U.S.C. § 103(a) as
unpatentable over Caston and Ives.

The Invention
The invention relates to a container that is capable of attaching to a
fishing rod and operates to store fishing devices, such as a lures, hooks,
tackle and bait. (Spec. 1-3.)
Claim 59 is reproduced below (App. Br. pp. 37-38):
59. A container for fishing tackle, the container adapted to be
secured to a fishing rod, comprising at least two panel portions and
including a bottom, which is disposed proximally on the container
with respect to the rod when the container is secured to the rod, a top,
which is disposed distally on the container with respect to the rod

1 References in this opinion to “App. Br.,” “Ans.,” and “Reply Br.”
refer, respectively, to the Substitute Appeal Brief filed November 01, 2005,
the Substitute Examiner’s Answer mailed February 5, 2009, and the Reply
Brief filed April 06, 2009.
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when the container is secured to the rod, and two sides which extend
at least partially between the bottom and the top;

at least some of which panel portions are attached to each other
along at least a portion of at least one side of the container and along
at least a portion of the bottom of the container to form a cavity with
an opening adjacent to the top of said container;

at least one of said panel portions formed from a flexible
material that is adapted to allow the container to flex and to at least
partially conform to the shape of a fishing rod and at least partially
encircle the rod when the container is secured to the rod;

at least one fastener portion and at least one cooperating
fastener portion positioned on at least one of said panel portions
adjacent to the top of said container;

said fastener portions adapted to facilitate said container to at
least partially encircle the rod and secure said container to the rod
when said fastener portions connect to each other; and simultaneously
said fastener portions adapted to retain the fishing tackle in said cavity
by constricting the opening to said cavity when said fastener portions
connect to each other; and

said fastener portions adapted to allow unconstrained release of
the fishing tackle from said cavity through said opening while
simultaneously freeing said container from the rod when said fastener
portions disconnect from each other.
B. ISSUES
1. Has Inventive Designs shown that the Examiner erred in
rejecting its claims on the basis of the obviousness-type double patenting
over Inventive Designs’ ‘906 Patent?
2. Has Inventive Designs shown that the Examiner erred in
rejecting its claims based on the teachings of Caston and Ives?
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C. FINDINGS OF FACT
1. Caston discloses a fishing hook holder that is attached to a
fishing rod. (Caston 1:6-13.)
2. Caston’s Figures 2 and 3 are reproduced below:

The Figures above depict views of Caston’s fishing hook holder.

3. Caston’s fishing hook holder is formed as a series of connected
panels,15, 16, 17, 18, and 19 that fold together to contain fishing hooks and
disassembled pieces of a fishing rod. (Caston 2:7-12.)
4. Elements 12 and 14 are shown and described as parallel
foldlines arranged between individual panels. (Id.; Fig. 3.)
5. As shown in Figure 3, the panels are connected only along the
foldlines so that when the holder is unfolded it lies flat. (Id.)
6. Ives discloses a fishing safety pouch for securing the lure and
hooks of a fishing rod while the rod is carried. (Ives 1:6-13.)
7. The pouch attaches to the reel of the rod and holds the fishing
line taut. (Id.)

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8. Ives’ Figures 1 and 2 are reproduced below

The figures above depict views of Ives’ lure and hook pouch.

9. Ives’ pouch 9 includes an interior cavity that is formed by
folding the pouch over along line “A” bringing edges “C” and “D” together.
(Id. at 3:32-35.)
10. Velcro adhesion strips 21a, 21b, 22a, and 22b located along
edges “C,” “D,” and “E” operate to secure the pouch in its folded
configuration. (Id. at 3:42-46.)
D. PRINCIPLES OF LAW
The legal conclusion of obviousness must be supported by an
articulated reasoning with a rational underpinning. In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006).
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E. ANALYSIS
The Examiner advanced two separate grounds of rejection for claims
59-117. The first ground is on the basis of obviousness-type double
patenting and the second ground is over prior art.
The Double Patenting Rejection
The Examiner rejected claims 59-117 under the judicially created
doctrine of obviousness-type double patenting over claims 1-18 of Inventive
Designs ‘906 Patent. That rejection was presented in each of the Final
Rejection mailed May 17, 2004 and the Examiner’s Answer mailed February
5, 2009. Inventive Designs does not challenge that rejection or even address
it in either the Appeal Brief or the Reply Brief. On the record before us,
Inventive Designs has not set forth any basis for reversing the double-
patenting rejection. Accordingly, the rejection is sustained.
The Prior Art Rejection
The Examiner also rejected claims 59-117 as unpatentable over
Caston and Ives. Claims 59 and 91 are the independent claims. The
remaining claims 60-90 and 92-117 are ultimately dependent on one of those
independent claims. Claim 59 is drawn to a container for fishing tackle.
Claim 91 is drawn to an apparatus for fishing that includes a container for
fishing tackle having all the features of claim 59. Inventive Designs argues
claims 59-117 collectively based on features appearing in claim 59. We
focus on the features that are in dispute.
Claim 59 calls for a container that is adapted to be secured to a fishing
rod and has a top, bottom, and two sides. The container includes two panel
portions that are attached to one another so as to form a cavity with an
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opening at the top of the container. In particular, the panel portions are
“attached to each other along at least a portion of at least one side of the
container and along at least a portion of the bottom of the container to form a
cavity with an opening adjacent to the top of the said container[.]” (App. Br.
37 Claim App’x.) The Examiner first contends that the above-quoted
limitation is present in Caston. Alternatively, the Examiner contends that
the limitation would have been obvious in view of the teachings of Ives.
Both of the Examiner’s contentions are not adequately supported by the
record.
With respect to Caston, the Examiner points to element 14 as being a
side edge and element 12 as being a closed bottom of a container. (Ans.
4:19-25.) Caston discloses a fishing hook holder that is attached to a fishing
rod. (Caston 1:6-13.)
Caston’s Figures 2 and 3 are reproduced below:

The Figures above depict views of Caston’s fishing hook holder.

Caston’s fishing hook holder is formed as a series of connected panels
15, 16, 17, 18, and 19 that fold together to contain fishing hooks and
disassembled pieces of a fishing rod. (Caston 2:7-12.) Elements 12 and 14
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are shown and described as parallel foldlines arranged between individual
panels. (Id.; Fig. 3.) Specifically, foldline 12 is located between panels 16
and 17 and foldline 14 is located between panels 18 and 19. Those foldlines
are disclosed as being parallel to one another, yet the Examiner found that
foldline 14 connects the side of a container while foldline 12 connects the
bottom of the container. The Examiner does not explain the basis for that
finding. While the Examiner was initially free to reasonably choose which
portions of Caston’s holder constituted its top, bottom, and sides, once
chosen, those designations must thereafter remain consistent. Because the
Examiner determined that Caston’s foldline 14 runs along the side of its
container, that means that parallel foldline 12 also runs along the side of the
container. The Examiner’s arbitrary designation of foldline 12 as being at
the bottom of the container is unreasonable. As shown in Caston’s Figures 2
and 3, the bottom of Caston’s fishing hook holder must be unconnected to
one another so that the sections of a fishing pole may extend through the
holder and so that the holder may unfold. None of the panels that make up
Caston’s folding holder are disclosed as joining any other panel along the
bottom of the holder.
The Examiner also concluded that the pertinent limitation of claim 59
would have been obvious in light of Ives. Ives discloses a fishing safety
pouch for securing the lure and hooks of a fishing rod while the rod is
carried. (Ives 1:6-13.) The pouch attaches to the reel of the rod and holds
the fishing line taut. (Id.)

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Ives’ Figures 1 and 2 are reproduced below

The figures above depict views of Ives’ lure and hook pouch.

Ives’ pouch 9 includes an interior cavity that is formed by folding the
pouch over along line “A” bringing edges “C” and “D” together. (Id. at
3:32-35.) Velcro adhesion strips 21a, 21b, 22a, and 22b located along edges
“C,” “D,” and “E” operate to secure the pouch in its folded configuration.
(Id. at 3:42-46.) The Examiner points to Ives’ adhesion strips 22a and 22b
as being along a “bottom” of the pouch and generally concludes that it
would have been obvious in light of that disclosure to join the panels of
Caston’s fish hook holder along the bottom in the same manner. (Ans. 5:6-
10.)
As discussed above, the bottom of Caston’s panels must remain
unconnected to one another so that parts of a fishing rod can extend through
the holder and so that the holder may unfold. Ives’ pouch receives a fishing
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lure and fishing line and is not configured to receive a fishing rod that
extends through the pouch. The Examiner does not explain why Ives’
disclosure, which is unconcerned with enveloping a fishing rod, would have
led a person of ordinary skill in the art to connect any portion of the bottom
of Caston’s panels through which a fishing rod must extend and which are
configured to unfold from one another.
The legal conclusion of obviousness must be supported by an
articulated reasoning with a rational underpinning. In re Kahn, 441 F.3d at
988. On this record, the Examiner has not provided a rational basis for
concluding that the claim feature of a container having panels that are joined
along a portion of their bottom and sides would have been obvious over
Caston and Ives.
Inventive Designs also contests the Examiner’s finding of fact with
respect to another limitation of claim 59. Claim 59 requires the additional
feature of “at least one fastener portion and at least one cooperating fastener
portion positioned on at least one of said panel portions adjacent to the top
of said container” (emphasis added). In accounting for that limitation, the
Examiner pointed to Caston’s fastener portions 21 and 22. The Examiner
found that one of those portions “appears to be about an inch from the top of
the container” and is thus adjacent to the top of the container as required.
(Ans. 9:6-8.) Inventive Designs attacks that finding as lacking any basis in
the record.
We agree with Inventive Designs. The Examiner does not point to
any support for his determination that Caston’s fasteners are “about an inch”
from the top of its holder. That determination is merely speculation as
Caston does not provide the dimensions for any portions of its holder.
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Moreover, as shown in Caston’s Figure 3, each of fasteners 21 and 22 are
located in the middle of a panel, equidistant from the panel’s top and bottom.
Inventive Designs’ claims distinguish the top of the container from the
bottom and require that the fastener portions be adjacent or near the top. We
do not see how Caston’s fasteners, which are the same distance from the top
and bottom of its holder, can reasonably be viewed as being adjacent either
of those locations. The Examiner has not adequately accounted for the
requirement of fasteners that are adjacent the top of a container as required
by the claims.
For the foregoing reasons, we do not sustain the rejection of claims
59-117 as unpatentable over Caston and Ives.
F. CONCLUSION
1. Inventive Designs has not shown that the Examiner erred in
rejecting its claims on the basis of the obviousness-type double patenting
over Inventive Designs’ ‘906 Patent.
2. Inventive Designs has shown that the Examiner erred in
rejecting its claims based on the teachings of Caston and Ives.
G. ORDER
The rejection of claims 59-117 under the judicially created doctrine of
obviousness-type double patenting over claims 1-18 of Inventive Designs
‘906 Patent is affirmed.
The rejection of claims 59-117 under 35 U.S.C. § 103(a) as
unpatentable over Caston and Ives is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED

JOHN S. PRATT, ESQ
KILPATRICK STOCKTON, LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA GA 30309