11093969 (B.P.A.I. Jan. 20, 2012)

Ex Parte Meroney

Board of Patent Appeals and InterferencesJan 20, 2012

11093969 (B.P.A.I. Jan. 20, 2012)

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. 11/093,969 03/30/2005 Robert L. Meroney 1263.01-UPA-POA 9302 41471 7590 01/23/2012 Premier Law Group, PLLC 3975 University Drive SUITE 330 Fairfax, VA 22030 EXAMINER PARSLEY, DAVID J ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 01/23/2012 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 ____________________ BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ROBERT L. MERONEY ____________________ Appeal 2010-002934 Application 11/093,969 Technology Center 3600 ____________________ Before: FRED E. McKELVEY, and ROBERT A. CLARKE, and JONI Y. CHANG Administrative Patent Judges. CLARKE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002934 Application 11/093,969 2 Statement of the case Robert L. Meroney, the real party in interest (Brief, page 1), seeks review 1 under 35 U.S.C. Â§ 134(a) of a final rejection dated 10 March 2008. 2 The application was filed on 30 March 2005. 3 The application has been published as U.S. Patent Application Publication 4 2006/0096154 A1. 5 Claims 1-12 and 20 are on appeal. 6 The Examiner relies on the following evidence. 7 Berry U.S. Patent 2,785,497 18 Feb. 1955 Boehm U.S. Patent 1,866,289 02 Apr. 1930 Packer U.S. Patent 5,996,271 07 Dec. 1999 Landuydt U.S. Patent 4,819,365 11 Apr. 1989 Berry, Boehm, Packer and Landuydt are each prior art under 35 U.S.C. 8 Â§ 102(b). 9 10 We have jurisdiction under 35 U.S.C. Â§ 134(a). 11 Findings of fact 12 The following findings of fact are supported by a preponderance of the 13 evidence. 14 Additional findings as necessary may appear in the Analysis portion of the 15 opinion. 16 Appeal 2010-002934 Application 11/093,969 3 The invention 1 In the Appeal Brief,1 Appellant discusses only Claims 1, 7-9 and 20 and 2 relies on limitations contained in Claim 1 in discussing claims 7-9. 3 The invention is readily understood from Claims 1 and 20, which are 4 reproduced below from the Claims Appendix of the Appeal Brief [indentationâ€”5 see 37 C.F.R. Â§ 1.75(e)(1)(i)â€”and matter in brackets added; limitations in issue 6 italicized and underlined] 7 Claim 1 8 A fishing lure that simulates a live mudpuppyâ€™s side-to-side 9 swimming-motion, the fishing lure comprising: 10 [1] a lure body, wherein said lure body is shaped, colored and textured to 11 simulate that of a salamander from the family Proteidae, said lure body 12 comprising 13 [a] a head, 14 [b] a midsection, and 15 [c] a tail, 16 [2] wherein said midsection includes an inner cavity, 17 said inner cavity contains an anchoring means for connecting to a hook, 18 [3] said head defines an underside, 19 [4] said midsection comprises an exterior bottom side, 20 [5] said inner cavity is in direct communication with the exterior bottom 21 side of said midsection; and 22 [6] a motion-creating bill for creating a side-to-side swimming motion, 23 said bill is secured to said underside of said head. 24 Claim 20 25 A fishing lure that simulates a live salamander's side-to-side 26 swimming motion, the fishing lure comprising: 27 1 References to Appeal Brief and App. Br. are to the corrected appeal brief received on June 12, 2009. Appeal 2010-002934 Application 11/093,969 4 [1] a lure body, wherein said lure body is shaped, colored and 1 textured to simulate that of a salamander selected from the species 2 Necturus lewisi, Necturus maculosus, Necturus beyeri, Necturus 3 alabamensis , Necturus punctatus, and Proteus anguineus, said lure 4 body comprising 5 [a] a head, 6 [b] a midsection, and 7 [c] a tail, 8 [2] wherein said midsection includes an inner cavity, 9 said inner cavity contains an anchoring means for connecting to a hook, 10 [3] said midsection comprises an exterior bottom side, 11 [4] said inner cavity is in direct communication with the exterior 12 bottom side of said midsection, 13 [5] said head defines an underside; and 14 [6] a motion-creating bill for creating a side-to-side swimming 15 motion, said bill is secured to the underside of said head. 16 17 According to the Specification, fish caught using the lure will find escape 18 difficult by biting through the lure because anchoring means (32) is secured deep 19 within the lure inner cavity. Specification, page 8; Figures 2 and 3. It is believed 20 that the reference to anchoring means element 22 on page 8, line 58 of the 21 Specification, is actually a reference to anchoring means element 32. See page 8, 22 line 59 of the Specification and Figures 2 and 3. 23 Prior art 24 Berry 25 The Examiner relies on Berry in both rejections of record. Berry describes a 26 lure having a body designed to simulate live animals. Col. 1, ll. 15-16. The 27 Examiner found and Appellant did not contest that the lure was shaped and 28 textured to simulate a salamander from the family Proteidae and the genus 29 Appeal 2010-002934 Application 11/093,969 5 Necturus. Berry describes a beaded chain (39) extending from the tail to the head 1 of a fishing lure from which hooks (44) and (45) are connected via shanks (46) and 2 (47) and short wires (48) and (49). Col. 2, ll. 25-35; Figure 3. 3 Boehm 4 Boehm describes a fish lure having a hook (10) extending from the exterior 5 bottom surface of the midsection of the lure. The shank of the hook is embedded 6 in the body of the lure and secured to the forward end in the loop (11) of the leader 7 (12) within the midsection of lure and extends to the exterior bottom surface of the 8 midsection of the lure. Pg. 2, ll. 4-8; Figure 3. 9 Packer 10 Packer describes a fish lure that simulates a salamander from the family 11 Proteidaes and genus Necturus. The midsection of the lure has an inner cavity 12 (36). The inner cavity communicates with the external water via an aperture in the 13 bottom surface of the midsection of the lure at (34). Figure 1; figure 2; and col. 3, 14 ll. 22-37. A fish hook may be inserted into the solid head of Packer. Col. 2, ll. 29-15 31. 16 Landuydt 17 The Examiner found and Appellant did not contest that Landuydt describes 18 a fishing lure having a bill (3) extending from the head of the lure (see Figure 1). 19 The Examiner found also found and the Appellant did not contest that the bill is 20 motion creating. Ans. 8. 21 Appeal 2010-002934 Application 11/093,969 6 The two rejections 1 Rejection 1: Claims 1-4, 6-9, and 30 stand rejected under Â§ 103(a) over 2 Berry and Boehm. 3 Rejection 2: Claims 1-3, 5, 10-12, and 20 stand rejected under Â§ 103(a) over 4 Packer, Landuydt and Berry. 5 Analysis 6 Issues 7 Based on the issues raised and the arguments made in the Appeal Brief, the 8 issues boil down to: 9 First, did the Examiner articulate a rational basis for why it would have been 10 obvious to one of ordinary skill in the art to have secured a motion-creating bill to 11 the head of a lure in view of Berry and Boehm? 12 Second, did the Examiner articulate a rational basis for why it would have 13 been obvious to one of ordinary skill in the art to have placed the beaded chain and 14 shank of the hook of Berry within the chamber of Packer? 15 16 First Issue 17 Claim 1 and 20 plainly recite that a motion creating bill is attached to the 18 underside of the head of the lure. The Examiner found that Berry at column 2, 19 lines 48-55 described items (13), (14), (17) and (18) as creating side-to-side 20 swimming motion and that figures 1-3 described that items (13) and (14) are 21 attached to the head of the lure. Ans. 4. Appellant argues that the Examiner has 22 misread Berry and that elements (13), (14), (17) and (18) are not described as 23 imparting side-to-side motion. Appellant also argues that symmetrically provided 24 Appeal 2010-002934 Application 11/093,969 7 appendages should preclude a side-to-side motion. App. Br. 7, 8. The Examiner 1 made additional findings that the recitation of side-to-side motion argued by 2 Appellant is a preamble limitation and that the many appendages of either Berry or 3 Boehm would cause at least some side-to-side swimming motion. Ans. 13. 4 Berry at column 2, lines 48-55, describes lateral motion created by recesses 5 (19), (20), (21) and (22) all of which are described as behind the head of the lure 6 and none of which are appendages. Accordingly, we cannot find support for the 7 Examinerâ€™s reliance of Berryâ€™s disclosure at column 2, lines 48-55 to teach legs 8 (13), (14), (17) and (18) as imparting side-to-side motion. 9 Claims 1 and 20 both recite after their preambles: â€œa motion-creating bill for 10 creating a side-to-side swimming motion, said bill is secured to the underside of 11 said head.â€ Accordingly, we cannot find support for the Examinerâ€™s finding that 12 appellantâ€™s argument regarding side-to-side motion is based on a preamble 13 limitation. 14 Finally, we consider the Examinerâ€™s finding that the many appendages of 15 Boehm and Berry would cause at least some side-to-side swimming motion to be 16 either the taking of official notice or to be an explanation based on logic by the 17 Examiner since no documentary evidence supporting the Examinerâ€™s finding was 18 provided. Appellantâ€™s argument that the described appendages being symmetrical 19 should preclude side-to-side motion, was made prior to this finding by the 20 Examiner, and we cannot find that the argument was addressed by the Examiner. 21 It is clear that the prior argument by the Appellant would preclude the taking of 22 official notice as the record previously included a reason why the subsequently 23 noticed fact is not considered to be correct. Cf. In re Ahlert, 424 F.2d 1088, 1091 24 Appeal 2010-002934 Application 11/093,969 8 (CCPA 1970). Considering the Examinerâ€™s finding as being based on logical 1 reasoning, we note that the reasoning did not address the prior argument by 2 Appellant or make specific fact finding of how symmetrical appendages would 3 impart side-to-side motion. Similarly, the Examiner did not account for the 4 express description in Berry that other structures impart lateral motion to the lure. 5 Accordingly, we are not persuaded that the Examiner has presented the requisite 6 factual support for the conclusion that the appendages of Berry provide side-to-side 7 swimming motion as required by the claims. 8 9 Second Issue 10 Claims 1 and 20 both require that the lureâ€™s midsection includes an inner 11 cavity containing an anchoring means for connecting to a hook and that the same 12 inner cavity be in direct communication with the exterior bottom side of the lureâ€™s 13 midsection. The Examiner found that Packer described an inner cavity (36) that 14 directly communicated with the exterior surface of the midsection at (34). Ans. 8. 15 The Examiner found that Berry describes an inner cavity containing an anchoring 16 means (39) for securing to a hook. Ans. 9. The Examiner reasoned that replacing 17 the hook inserted in the solid head portion of Packer with the anchoring means and 18 hook of Berry would be an equivalent effective means of attaching a fishing hook 19 so that the curved hook portion is disposed at the bottom of the lure. Ans. 15. 20 Appellant argues that neither Packer nor Landuydt teach an inner cavity 21 which contains an anchoring means. App. Br. 13-14. Appellant argues that Berry 22 fails to describe an inner cavity in direct communication with the exterior bottom 23 side of the midsection. The arguments constitute an attack on the references 24 Appeal 2010-002934 Application 11/093,969 9 individually. Applicable precedent holds that attacks on alleged deficiencies of 1 individual references is not a proper way to argue an obviousness issue. In re 2 Keller, 642 F.2d 413, 426 (CCPA 1981) (one cannot show nonobviousness by 3 attacking individual references where a combination of references is used to 4 support rejection). The Examiner cited Packer to show that a chamber within the 5 midsection of a lure directly communicating with the exterior bottom surface of the 6 midsection is known. The Examiner cited Berry to show the prior use of an 7 internal anchoring chain to which fishing hooks are attachedâ€”a feature sought by 8 Appellant. Appellant has used a known element for its known purpose to achieve a 9 predictable result. KSR Intâ€™l Inc. v. Teleflex Inc., 550 U.S. 398, 416 (2007). 10 Accordingly, we are not persuaded by this argument. 11 Appellant also argues that Berry cannot be relied upon to cause side-to-side 12 motion. In the second ground of rejection, the Examiner expressly relied upon the 13 teaching of Landuydt, not Berry, for a motion creating bill. Ans. 8. Accordingly, 14 we are not persuaded by this second argument. 15 Other arguments 16 We have considered the remaining arguments advanced by Appellant and 17 find none that warrant reversal of the Examinerâ€™s Rejection 2. Cf. Hartman v. 18 Nicholson, 483 F.3d 1311, 1315 (Fed. Cir. 2007). 19 Decision 20 Upon consideration of the appeal, and for the reasons given herein, it is 21 ORDERED that the decision of the Examiner rejecting claims 1-4, 6-9 22 and 20 as being unpatentable under 35 U.S.C. Â§ 103(a) over Berry and Boehm is 23 reversed. 24 Appeal 2010-002934 Application 11/093,969 10 1 FURTHER ORDERED that the decision of the Examiner rejecting 2 claims 1-3, 5, 10-12 and 20 as being unpatentable under 35 U.S.C. Â§ 103(a) over 3 Packer, Landuydt and Berry is affirmed. 4 5 FURTHER ORDERED that no time period for taking any subsequent 6 action in connection with this appeal may be extended under 37 C.F.R. 7 Â§ 1.136(a)(1)(iv). 8 AFFIRMED-IN-PART 9 KMF