Ex Parte Miller

Patent Trial and Appeal Board

Jan 12, 2018

13852247 (P.T.A.B. Jan. 12, 2018)

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.
13/852,247 03/28/2013 James Calvin Miller 1366.1001101 3385
28075 7590 01/17/2018
SEAGER, TUFTE & WICKHEM, LLP
100 SOUTH 5TH STREET
SUITE 600
MINNEAPOLIS, MN 55402
EXAMINER
BARLOW, MORGAN T
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
01/17/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
GEN .USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES CALVIN MILLER
Appeal 2016-005139
Application 13/852,247
Technology Center 3600
Before MURRIEL E CRAWFORD, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant, James Calvin Miller, appeals under 35 U.S.C. § 134
from the Examiner’s rejections of claims 1, 2, and 4—20. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-005139
Application 13/852,247
STATEMENT OF THE CASE
The Appellant’s invention “relates generally to fishing floats or
bobbers.” (Spec. 1,11. 4—5.)
Illustrative Claim
1. A fishing bobber having a center of mass, comprising:
an elongate shaft having a first end, an opposing second
end, and a longitudinal axis extending therebetween;
an aperture at the first end configured to engage a fishing
line;
a counterweight float disposed proximate the second end
and fixedly attached to the elongate shaft; and
an axially movable primary float disposed on the
elongate shaft between the first end and the second end.
References
Holmes US 6,880,283 B2 Apr. 19,2005
Barrow US 2006/0283074 A1 Dec. 21,2006
Cartwright US 8,635,803 B1 Jan. 28, 2014
Rejections
I. The Examiner rejects claims 1, 2, 4—10, 13—17, 19, and 20
under 35 U.S.C. § 102(a) as anticipated by Barrow. (Final Action 2.)
II. The Examiner rejects claim 11 under 35 U.S.C. § 103 as
unpatentable over Barrow in view of Holmes. (Final Action 6.)
III. The Examiner rejects claim 12 under 35 U.S.C. § 103 as
unpatentable over Barrow in view of Cartwright. (Final Action 7.)
IV. The Examiner rejects claim 18 under 35 U.S.C. § 103 as
unpatentable over Barrow in view of Holmes. (Final Action 6.)
ANALYSIS
Claims 1 and 17 are the independent claims on appeal, with the rest of
the claims on appeal (i.e., claims 2, 4—16, and 18—20) depending therefrom.
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Application 13/852,247
(See Appeal Br., Claims App.) Independent claims 1 and 17 recite a
“fishing bobber” comprising a “shaft,” a “primary” or “pivot” float, and a
“counterweight” float. (Id.) The Examiner finds that Barrow discloses a
fishing bobber 10 comprising a shaft 14, a primary or pivot float (floatation
member 30), and a counterweight float (floatation member 32). (See Final
Action 3, 4.)
Independent claims 1 and 17 further recite limitations requiring one
float (i.e., the “primary” or “pivot” float) to be “movable” relative to the
shaft, and requiring the other float (i.e., the “counterweight” float) to be
“fixedly attached” to the shaft. (Appeal Br., Claims App.) The Examiner
finds that Barrow’s floatation member 30 is “axially movable” on shaft 14;
and the Examiner finds that Barrow’s floatation member 32 is “fixedly
attached” to shaft 14. (See Final Action 3,4.)
The Appellant argues that Barrow does not disclose both a floatation
member that is axially movable on shaft 14 and a floatation member that is
fixedly attached to shaft 14. (See e.g., Appeal Br. 7.)
We are persuaded by the Appellant’s position because, in the context
of the claimed invention, a float that is “movable” relative to the shaft is not
“fixedly attached” to the shaft; likewise, a float that is “fixedly attached” to
the shaft is not “movable” relative to the shaft. As noted by the Appellant,
the Specification draws a distinction between a float being “fixedly
attached” to the shaft and a float being “axially movable” relative to the
shaft. (See e.g., Appeal Br. 7—8.) A float that is “fixedly attached” to the
shaft (e.g., by “adhesive bonding,” “welding,” etc.) cannot be moved relative
to the shaft. (Spec. 6,11. 5—7.) In contrast, a float that is movable relative to
the shaft may be “axially adjusted” along the shaft “in order to align the
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Appeal 2016-005139
Application 13/852,247
pivot axis with the center of mass.” (Id. at 10,11. 10-11.) We agree with the
Appellant that “fixedly attached and axially movable are not identical or
equivalent arrangements.” (Appeal Br. 8.) Moreover, in the context of the
claimed invention, these arrangements are mutually exclusive.
Barrow discloses that “floatation members 30 and 32 may be slidably
received and frictionally retained on the first and second ends 20 and 22 of
the [shaft] 14, respectively.” (Barrow 119, bolding of reference numerals
omitted.) In other words, Barrow discloses that its two floatation
members 30 and 32 are retained on shaft 14 in the same manner.
According to the Examiner, Barrow’s floatation member 30 “is
slidably disposed” on shaft 14, and “axially movable” relative thereto.
(Final Action 3.) If so, Barrow’s floatation member 32, which is retained on
shaft 14 in the same manner, is also “axially movable” relative to shaft 14,
and thus not “fixedly attached” to shaft 14. We note that Barrow discloses
that, alternatively, the “two floatation members and the [shaft] may be
integrally formed” (Barrow 19); indicating that both floatation members can
be “fixedly attached” to the shaft. However, Barrow does not disclose, or
even infer, that one floatation member can be “axially movable” relative to
shaft 14 while the other floatation member is “fixedly attached” to shaft 14.
Thus, we do not sustain the Examiner’s rejection of independent
claims 1 and 17 under 35 U.S.C. § 102(a) as anticipated by Barrow
(Rejection I).
The Examiner’s further findings and determinations with respect to
the dependent claims do not compensate for the above-identified
shortcoming in the rejection of independent claims 1 and 17. (See Final
Action 3—7.) With particular reference to the rejections based upon
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Appeal 2016-005139
Application 13/852,247
obviousness (i.e., Rejections II—IV), as discussed above Barrow does not
teach that one floatation member can be axially movable relative to shaft 14
while the other floatation member is fixedly attached to shaft 14; and the
record relating to Holmes and Cartwright does not remedy this deficiency.
Although Holmes purportedly teaches floats having a certain claimed
dimensional relationship (see Final Action 6), in Holmes’s adjustable fishing
bobber, all of the floats “are slidably disposed on a tubular member”
(Holmes, col. 1,11. 48-49, see also Fig. 3). As for Cartwright, even if it
teaches a “threaded” shaft that “allow[s] mechanical adjustments” of a pivot
float (Final Action 7), Cartwright’s fishing device appears to have only one
float (i.e., foam fitting 26) coupled to its shaft-like housing 10 (see
Cartwright, col. 4,1. 60— 67).
Thus, we do not sustain the Examiner’s rejection of dependent
claims 2, 4—10, 13—16, 19, and 20 under 35 U.S.C. § 102(a) as anticipated by
Barrow (Rejection I); and we do not sustain the Examiner’s rejections of
dependent claims 11, 12, and 17 under 35 U.S.C. § 103 as unpatentable over
Barrow in view of Holmes or Cartwright (Rejections II—IV).
DECISION
We REVERSE the Examiner’s rejections of claims 1, 2, and 4—20.
REVERSED
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