Ex Parte SCOPELITIS

Patent Trial and Appeal Board

Jul 25, 2018

14522942 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/522,942 10/24/2014
52554 7590
Southeast IP Group, LLC.
P.O. Box 14156
GREENVILLE, SC 29610
07/25/2018
FIRST NAMED INVENTOR
Edward G. SCOPELITIS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SC0-002 6179
EXAMINER
KIM, SHINH
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
07/25/2018 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
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD G. SCOPELITIS
Appeal2017-010930
Application 14/522,942 1
Technology Center 3600
Before BART A. GERSTENBLITH, MATTHEWS. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-11. The rejections of claims 4---6 are
withdrawn. 2 See Answer 3, 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appellant, Edward G. Scopelitis, is identified as the real party in
interest. Appeal Br. 1.
2 The Answer (pages 2-3) states that the rejections of claims 4 and 6 are
withdrawn, but without mentioning claim 5. The Answer (page 5) states that
"[ c ]laim[ s] 4---6 recite[ ] allowable subject matter" and provides no response
to the Appellant's arguments regarding any of claims 4---6. Accordingly, we
understand the rejections of claims 4---6 to be withdrawn.
Appeal2017-010930
Application 14/522,942
ILLUSTRATIVE CLAIM
1. A bait retaining device comprising:
a generally U-shaped strip having two generally straight
legs and a base member connecting said legs forming a
generally U-shape;
series of teeth protruding from said legs on an inner
portion of said legs facing the other leg, said teeth protruding
generally perpendicularly from said legs for penetrating the
bait; and
means for operatively connecting the base member to a
fishing hook.
CITED REFERENCES
The Examiner relies upon the following references:
Walton
Hauck
Francklyn
Boucek
us 3,200,532
us 3,543,434
us 4,791,751
us 6,061,948
REJECTIONS
Aug. 17, 1965
Dec. 1, 1970
Dec. 20, 1988
May 16, 2000
I. Claims 1-3 are rejected under 35 U.S.C. § 103 as unpatentable
over Walton and Hauck.
II. Claims 7-11 are rejected under 35 U.S.C. § 103 as unpatentable
over Walton, Hauck, Francklyn, and Boucek.
2
Appeal2017-010930
Application 14/522,942
FINDINGS OF FACT
The findings of fact relied upon below are supported by a
preponderance of the evidence.
ANALYSIS
Independent Claim 1
The Appellant argues that the Examiner erred in rejecting independent
claim 1, because Walton teaches away from the invention and from "the
combination of Walton and Hauck." See Appeal Br. 4. Further, the
Appellant argues that the rejection is erroneous, because the combination of
Walton and Hauck would render Walton's device inoperable. See id. at 5.
Neither argument- each of which is addressed separately, below-is
persuasive of error, such that we sustain the rejection of claim 1 under
35 U.S.C. § 103.
1. Teaching Away
As to the teaching-away issue, the Appellant points out that "claim 1
recites a bait retaining device having teeth protruding perpendicularly from
the legs for penetrating the bait." Appeal Br. 5. By contrast, according to
the Appellant, "Walton teaches ' [ t ]he opposing teeth 14--15 and 16-17
engage the sides of the bait rather lightly to prevent the pointed parts of
these teeth from penetrating the sides thereof,"' thereby providing the
"benefit of keeping the bait alive but secured." Id. (citing Walton, col. 1,
11. 63----67, col. 2, 11. 18-23). "Therefore," the Appellant asserts, "Walton
teaches away from the use of penetrating teeth." Id.
3
Appeal2017-010930
Application 14/522,942
As the Appellant acknowledges, the use of bait-securing teeth "for
penetrating the bait," as recited in claim 1, is taught explicitly in Hauck. Id.
Indeed, the rejection relies upon Hauck (not Walton) for this identified
feature of claim 1, stating that "Walton does not directly disclose the teeth to
protrude perpendicular from the legs for penetrating the bait," but "Hauck
discloses a bait retaining device comprising legs having teeth (Element 16)
that protrude perpendicularly from the leg (Element 11) for penetrating the
bait (Figure 3)." Final Action 3; see also Answer 4. Furthermore, the
Examiner's Answer states that "[p ]roviding teeth that are positioned at
various angles is an obvious modification well known in the art" and that
"[t]he gripping and penetrating mechanism of the teeth to secure the bait is
enhanced by the angle of the teeth relative to the bait and the inner surface of
the base." Answer 4.
The Federal Circuit has explained that the obviousness analysis must
resolve opposing teachings in the prior art:
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.
See [Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n.8 (Fed. Cir. 2000)] ("The fact that the motivating benefit
comes at the expense of another benefit, however, should not
nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one another.").
Where the prior art contains "apparently conflicting" teachings
(i.e., where some references teach the combination and others
teach away from it) each reference must be considered "for its
power to suggest solutions to an artisan of ordinary skill ....
consider[ing] the degree to which one reference might
4
Appeal2017-010930
Application 14/522,942
accurately discredit another." In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991).
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
Accordingly, a combination of references may be obvious even if the
combination eliminates a benefit of one of the references. See In re
Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) ("On this record, the Board
properly found that one of ordinary skill would have been motivated to
pursue the desirable properties taught by Wong, even at the expense of
foregoing the benefit taught by Gross.")
In regard to claim 1, regardless of whether Walton might teach
claim 1 's feature of "teeth ... for penetrating the bait," Hauck indisputably
does so. See Appeal Br. 5. Accordingly, Walton's alleged teaching away
from the claimed subject matter could not undermine the Examiner's
determination of obviousness. Therefore, the Appellant's teaching-away
argument is not persuasive of error in the rejection of claim 1.
2. Inoperability
As to the inoperability issue, the Appellant argues that claim 1 is not
obvious, because "the proposed modification of Walton with Hauck renders
Walton inoperable as a live bait holder," because "the protruding teeth of
Hauck would penetrate the bait, mortally wounding it." Id. ( citing In re
Gordon, 733 F.2d 900 (Fed. Cir. 1984) and In re Ratti, 270 F.2d 810 (CCPA
1959)).
Yet, the combination or modification of prior art teachings, as set
forth in the Final Office Action, does not rely upon the angular orientation of
Walton's teeth, the degree of pressure they impart, or the effect thereof;
5
Appeal2017-010930
Application 14/522,942
instead, the Final Office Action relies upon Hauck for these features. See
Final Action 3. Therefore, the combination cannot be said to render Walton
inoperable, on account of claim features that are not attributed to Walton's
teachings. See Gordon, 733 F .2d at 902 (by modifying the reference, as
proposed in the rejection, "it would be rendered inoperable for its intended
purpose"); see also Univ. of Md. Biotechnology Inst. v. Presens Precision
Sensing GmbH, 711 F. App'x 1007, 1010 (Fed. Cir. 2017) (nonprecedential)
("Even assuming that extra-vessel sensors are a 'basic principle' of Weigl,
Ratti, 270 F.2d at 813, that principle is independent ofWeigl's pertinence to
the Board's obviousness determination.")
Accordingly, the Appellant's inoperability argument also fails to
persuade us of error in the rejection of claim 1.
Dependent Claim 2
Dependent claim 2 recites:
2. The bait retaining device set forth in claim 1, wherein
said means for operatively connecting the base member to a
fishing hook is an anchor pin connected to a loop positioned at
a top of said fishing hook and where said anchor pin terminates
at an end opposite said fishing hook with a connection to said
base member.
According to the rejection, the "top portion" of element 20 in
Walton's Figure 5 teaches the recited "anchor pin." Final Action 3.
The Appellant contends that the Examiner erred in rejecting claim 2,
as obvious over Walton and Hauck, because the references do not teach or
suggest the recited "anchor pin." Appeal Br. 6. Specifically, the Appeal
Brief argues that Walton's element 20 is a fishing hook, such that the "top
6
Appeal2017-010930
Application 14/522,942
portion" of element 20 "is not an independent anchor pin to be affixed to a
loop of a fishing hook." Id. (citing Walton, col. 2, 11. 12-18, Figs. 4, 5).
In order for Walton to teach or suggest the features added by claim 2,
it must teach or suggest not simply the claimed "anchor pin" as an isolated
structure, but all of its associated limitations - i.e., "an anchor pin
connected to a loop positioned at a top of said fishing hook and where said
anchor pin terminates at an end opposite said fishing hook with a connection
to said base member."
Thus, the Examiner's position (see Final Action 3) - that the "top
portion" of a fishing hook (specifically, element 20 in Walton's Figure 5)
teaches the recited "anchor pin" - becomes problematic, in regard to the
requirements that the "anchor pin" be "connected to a loop positioned at a
top of said fishing hook" and "terminate[] at an end opposite said fishing
hook with a connection to said base member." In particular, because
Walton's element 20 is itself a fishing hook, it cannot "terminate[] at an end
opposite said fishing hook" - let alone "with a connection to said base
member" - as claim 2 requires. Even if the non-pointed end of Walton's
fishing hook were regarded as the "termina[l]" portion thereof, Walton's
element 20 does not disclose any "connection to said base member," at that
end location. See Walton, Figs. 4, 5.
Accordingly, we do not sustain the rejection of claim 2 under
35 U.S.C. § 103.
Claim 3
Dependent claim 3 recites: "The bait retaining device set forth in
claim 1, wherein said base member defines a hole for receiving a retaining
pin." (Emphasis added).
7
Appeal2017-010930
Application 14/522,942
According to the rejection, element 23 of Walton's Figure 5 discloses
the features added by claim 3. Final Action 3; see also Answer 5.
Walton's Figure 5 is reproduced below:
F/G_5
12ct
Ji
1t~21
Figure 5 shows an elevation view of Walton's bait holder, with fishing
hook 20 depicted in partial cross-section. Figure 5 also shows element 23,
which Walton describes as "a hook-receiving-clamping-portion," that is
"formed in the bent part 13a" of Walton's device, such that "the hook 20 is
clamped in the bent part 23." Walton, col. 2, 11. 13-17.
Asserting error in the rejection of claim 3, the Appellant argues, in
part, that Walton's element 23 "does not actually define a hole," as recited in
claim 3, because Walton's element 23 is shaped to form opposing
convolutions that cooperate to clamp fishing hook 20 between them. Appeal
Br. 7 (citing Walton, col. 2, 11. 12-18, Figs. 4, 5).
Notably, Walton's "hook-receiving-clamping-portion" 23 and "bent
part" 13a are shapes formed in what Walton calls a "thin metallic spring
band material." Walton, col. 1, 11. 45--46; col. 2, 11. 13-14. Walton's
Figure 5 shows these features in an edgewise view, wherein these features
8
Appeal2017-010930
Application 14/522,942
appear as a series of bends in the "thin metallic spring band" - but without
bending back upon itself, such that it does not form any closed loop. See id.
at col. 1, 1. 17, Fig. 5.
The adequacy of the rejection turns on the construction of the term
"hole" in claim 3 - specifically, whether claim 3 's "hole" encompasses
Walton's bent clamping portion ( element 23).
"During examination, 'claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). Sources for claim construction may include
intrinsic sources - such as the claims, the Specification, and the cited
references), as well as extrinsic sources ( such as technical treatises and
dictionaries). See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582-84 & n.6 (Fed. Cir. 1996). Yet, "there is no magic formula or
catechism for conducting claim construction," nor is there any requirement
to "consider[] any particular sources" or to "analyze sources in any specific
sequence, as long as those sources are not used to contradict claim meaning
that is unambiguous in light of the intrinsic evidence." Phillips v. A WH
Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en bane).
In this instance, a general-purpose dictionary serves as a helpful
starting point. Definitions of the word "hole" most compatible with
mechanical structures, such as the claimed embodiments are: a "cavity" and
an "opening in or through anything." Webster's New Twentieth Century
Dictionary 866 (2d ed. 1980).
9
Appeal2017-010930
Application 14/522,942
With reference to the claims, although either a "cavity" or an
"opening in or through anything" could, per claim 3, "receiv[e] a retaining
pin," the definition of an "opening in or through anything" comports better
with claim 4 (which depends from claim 3) and further recites "a shaft of
said anchor pin extending through said hole" ( emphasis added).
The Specification refers to "hole 26," which corresponds to the "hole"
of claim 3 - for example, stating: "The base member 24 may have a
hole 2 6 defined by the base member 24 through which the shaft of the
anchor pin 32 can pass, as shown in Figure 4." Spec. 9, 11. 21-22 (emphasis
added). Figure 4 of the Specification is reproduced below:
~KW. 14-
106
FIG. -4-
Figure 4 shows an exploded elevation drawing of a portion of one of the
disclosed embodiments, showing hole 26 as dashed lines in side view,
indicating that hole 26 forms an opening that extends completely through
base member 24.
Altogether, the evidence from the claims, Specification, its Figures, as
well as the dictionary definition cited above, support a construction of
10
Appeal2017-010930
Application 14/522,942
claim 3 's "hole" as an opening that extends through the recited "base
member."
The Appellant (see Appeal Br. 7) contends that element 18 of Hauck's
Figures 1 and 2 supports a construction of the term "hole" that would
distinguish it from Walton's "hook-receiving-clamping-portion." Hauck is a
proper source to consider, for claim construction, because prior art
references considered by the Examiner constitute intrinsic evidence that is
available to aid in the construction of claim terms. See V-Formation, Inc. v.
Benetton Grp. SpA, 401 F.3d 1307, 1311-12 (Fed. Cir. 2005) (construing
claim language, in view of a prior art reference, employing the term at issue,
that was of record in the prosecution of the patent-in-suit). However,
although Hauck' s Figures 1--4 show that element 18 is an opening in "hinge
section" 13, through which a fishing line may pass, Hauck characterizes
element 18 as an "aperture," not a "hole." Hauck, col. 3, 11. 5-8, Figs. 1--4.
This is a critical difference, because the present claim construction issue
turns upon the meaning of a word ("hole") chosen by the Appellant to
delineate the boundary of the patent rights being sought, notwithstanding the
similarity of the prior art element to that of the Appellant's disclosed
embodiment. Even though it has been said that "[a]n invention exists most
importantly as a tangible structure or a series of drawings" and its "verbal
portrayal is usually an afterthought written to satisfy the requirements of
patent law," Autogiro Co. of Am. v. United States, 384 F.2d 391, 397 (Ct. Cl.
1967), such "verbal portrayal[ s ]" are often paramount in matters of claim
interpretation, where, for example, "we look to the words of the claims
themselves ... to define the scope of the patented invention," Vitronics, 90
F.3d at 1582. Indeed, calling a "rose" by another name might not alter its
11
Appeal2017-010930
Application 14/522,942
fragrance, but doing so would impair its significance for determining what
word should be used to describe a particular flower in question.
Regardless of Hauck's deficiency, for the purpose of the present
analysis, other cited references do illuminate the claim interpretation issue.
For example, Walton (col. 2, 11. 26-27 (emphasis added)) refers to
fishing line 21 that "extends through the hole 12b provided in the end
portion of part 12," as shown in its Figure 6, reproduced below:
f19
Figure 6 depicts fishing line 21 entering one side of "part 12" and exiting on
the other side, through "hole 12b" - an opening that extends entirely
therethrough. Id. at col. 2, 11. 26-27, Fig. 6.
Furthermore, the Francklyn reference, which also is cited in the Final
Office Action, is replete with elements identified as "holes." For example,
Francklyn refers to "[a] brass flat screw 20 dimensioned to pass through
clearance holes 30, 48 and 74." Francklyn, col 5, 11. 39--41 (emphasis
added). Francklyn, thus, uses the word "hole" in the same sense as claim 3
in this Appeal- i.e., an opening that extends entirely through a member.
Thus, the usages in the Walton and Francklyn references reinforce the
construction of claim 3 's "hole" as an opening that extends entirely through
the recited "base member."
12
Appeal2017-010930
Application 14/522,942
As noted above, the rejection relies upon Walton's element 23 for the
disclosure of claim 3's "hole." Walton's element 23 -identified in the
reference as "a hook-receiving-clamping-portion" (Walton, col. 2, 11. 13-14)
- is formed by bends in a "thin metallic spring band" (id. at col. 1, 11. 45-
46), but the band does not bend back on itself to form a closed loop, nor is
there any opening in the band that might constitute an opening in it through
which another member may pass - in the manner of our construction of
claim 3's "hole." Further, there is a degree of incongruity in the Examiner's
position that the bends in Walton's element 23 define a "hole," because
Walton does not use the word "hole" to describe element 23, but does use
the word "hole" to describe a structure having markedly different
characteristics - an opening through a member ( element 12b shown in
Walton's Figure 6). See Walton, col. 2, 11. 26-27, Fig. 6.
Accordingly, we are persuaded that the Examiner erred in rejecting
claim 3 under 35 U.S.C. § 103.
Dependent Claims 7-11
Claims 7-11 are argued as a group. Appeal Br. 10-12. Claim 7 is
selected for analysis herein. See 37 C.F.R. § 41.37(c)(l)(iv).
The Appellant contends that the Examiner erred in rejecting claim 7,
as obvious over Walton, Hauck, Francklyn, and Boucek, because the
references do not teach or suggest "a support piece disposed adjacent to said
base member and in between said legs." See Appeal Br. 10-11.
The rejection states that Boucek teaches the recited "support piece"
within a base member, in elements 24 and 50 shown in Boucek' s Figures.
Final Action 5.
13
Appeal2017-010930
Application 14/522,942
In one embodiment, Boucek describes element 24 as "[t]he head
portion" of a tied fly lure that is "generally made by wrapping heavy thread
around the shank 22A of the hook 22 until a desired thickness is obtained."
Boucek, col. 2, 11. 20-23, Fig. 3. Another of Boucek's embodiments
describes element 24 as a "fly head," wherein the concave side ( defining a
"receiving chamber," element 33) of a cap-like "head portion 35 is slid over
and securely fitted to the fly head 24." Id. at col. 6, 1. 61---col. 7, 1. 7,
Figs. 12-14. Boucek's Figure 12 is reproduced below:
Boucek's Figure 12 shows the assembly of a fishing lure, in which the cap-
like head portion 35 is oriented to be fitted over fly head 24. Id. at col. 4,
11. 65----67, col. 6, 1. 61---col. 7, 1. 7, Fig. 12. The relationship of these parts,
when assembled, is shown in Figure 13 below:
25 ,-20
r --~ ~y._ - ./t' \.,........,,. _______ _.y. ..... ,~\ ...---------
w-· --~~ ~---~---
~
FIG. 19
Figure 19 depicts the fishing lure embodiment of Figure 18, in assembled
form, wherein the weights 50 are retained within the receiving chamber of
the head portion. Id. at col. 5, 11. 24-26, col. 7, 11. 49---61, Figs. 18-19.
The Appellant contends that neither element 24 nor element 50 of
Boucek teaches or suggests the "support piece" in the above-identified
limitation of claim 7, because Boucek describes neither element "as being
designed to provide or as providing any support to maintain the shape of a
U-shaped strip." Appeal Br. 11. "Instead, the fly head 24 is part of a fishing
lure 20 and is analogous to Applicant's bait 30 not to its support piece." Id.
15
Appeal2017-010930
Application 14/522,942
(citing Boucek, col. 7, 11. 1-7, Fig. 13). Further, the Appellant argues,
element 50 (the weight), "is too small and insufficiently shaped to support
the 'legs' of a U-shaped strip." Id. (citing Boucek, Figs. 18, 19).
The Appellant presumes that the claimed "support piece" must
perform the function of providing support to maintain the shape of a U-
shaped strip. See id. However, claim 7 recites no such function of the
"support piece," but simply requires "a support piece disposed adjacent to
said base member and in between said legs." The claim language does not
state what, if anything, is being supported by the "support piece," let alone
how such function would be performed. The Appellant cites to the
Specification (page 10, lines 1-3) as indicating that the disclosed "support
piece" helps the base to retain its U-shape, during use. Id. Yet, the
Specification also describes other functions that the disclosed "support
piece" might perform:
The support piece 36 may further define a hole about the center
through which the anchor pin 12 may be inserted, the anchor
pin 12 inserted there through and terminating at the distal end
from the hook 28, including a head 16 bigger than the hole,
defined by the support piece 36. The support piece 36 may be
made from different types of material, in order to provide
different characteristics. For instance, the support piece may be
made from a dense metal, such as lead, to provide weight for
bottom fishing or deepwater fishing, or alternatively, the
support piece 36 may be made from a buoyant plastic or other
material, in order to provide buoyancy to the bait retaining
device for topwater or shallow water fishing. The support piece
36 may further be removable and interchangeable with other
support pieces to provide for increased or decreased buoyancy.
Spec., p. 10, 11. 3-13. Claim elements do not necessarily possess every
advantage or purpose shown in the Specification. See E-Pass Techs., Inc. v.
16
Appeal2017-010930
Application 14/522,942
3Com Corp., 343 F.3d 1364, 1371 (Fed. Cir. 2003). Indeed, "limitations are
not to be read into the claims from the specification." In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). Accordingly, the "support piece" of claim
7 need not perform the function that the Appellant ascribes to this recited
element.
Furthermore, the Appellant's assertions that Boucek' s elements 24
and 50 could not support a U-shaped base, are speculative and contrary to
Boucek's disclosure, which indicates that elements 24 and 50 support the
positioning of concave cap-shaped head portion 35, in their respective
embodiments. See Boucek, col 4, 1. 65---col. 5, 1. 5, col. 5, 11. 22-26, col. 6,
1. 55---col. 7, 1. 15, col. 7, 11. 49---61, Figs. 12-13, 18-19.
Therefore, the Appellant's arguments are not persuasive of error in the
rejection of claim 7. Accordingly, we sustain the rejection of claims 7-11
under 35 U.S.C. § 103.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1 and 7-11
under 35 U.S.C. § 103.
We REVERSE the Examiner's decision rejecting claims 2 and 3
under 35 U.S.C. § 103.
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-IN-PART
17