Ex Parte Polachek

Patent Trial and Appeal BoardAug 21, 2013

11487188 (P.T.A.B. Aug. 21, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/487,188 07/14/2006 Michael L. Polachek 1355 5542 45021 7590 08/22/2013 FORREST L. COLLINS LAW OFFICES, LLC FORREST L. COLLINS P. O. BOX 41096 BRECKSVILLE, OH 44141-0096 EXAMINER BERONA, KIMBERLY SUE ART UNIT PAPER NUMBER 3644 MAIL DATE DELIVERY MODE 08/22/2013 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 MICHAEL L. POLACHEK ____________ Appeal 2011-009186 Application 11/487,188 Technology Center 3600 ____________ Before: JAMES P. CALVE, WILLIAM A. CAPP and JEREMY M. PLENZLER, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-009186 Application 11/487,188 - 2 - THE INVENTION Appellants’ invention is a fishing lure. Spec. 4. Claim 1, the sole independent claim on appeal, reproduced below, is illustrative of the subject matter on appeal. 1. A fishing lure hook assembly comprising: a fishing lure hook assembly base; a fishing lure hook assembly base upper triangular region connected to said fishing lure hook assembly base; a fishing lure hook assembly base triangular region interior channel located within fishing lure hook assembly base upper triangular region; a fishing lure hook assembly base fish hook; said fishing lure hook assembly base fish hook having a fishing lure hook assembly base fish hook straight region; said fishing lure hook assembly base fish hook straight region extending into said fishing lure hook assembly base triangular region interior channel and fixed in place said fishing lure hook assembly base triangular region interior channel. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: The following rejections are before us for review: 1. Claims 1-7 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 2. Claims 1-5 and 7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lamar and Wacha. Lamar Wacha Gill US 3,248,820 US 6,618,979 B2 US 7,140,146 B2 May 3, 1966 Sep. 16, 2003 Nov. 28, 2006 Appeal 2011-009186 Application 11/487,188 - 3 - 3. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lamar, Wacha and Gill. OPINION Indefiniteness The Examiner considers the following limitation of claim 1 to be indefinite: said fishing lure hook assembly base fish hook straight region extending into said fishing lure hook assembly base triangular region interior channel and fixed in place said fishing lure hook assembly base triangular region interior channel. Clms. App’x. The examiner construes it to mean, “said fishing lure hook assembly base fish hook straight region extending into said fishing lure hook assembly base triangular region interior channel and being fixed in place in said fishing lure hook assembly base triangular region interior channel.” Ans. 3-4. Appellant agrees with this construction. App. Br. 10. The test for definiteness under 35 U.S.C. § 112, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). However, inasmuch as it appears that the subject limitation is capable of construction and no alternative construction has been suggested by either the Appellant or the Examiner, we do not sustain the section 112 rejection. Unpatentability of Claims 1-5 and 7 The Examiner finds that Lamar discloses all of the limitations of claim 1 except that it does not disclose fixing the straight region of the hook into the interior channel of the base triangular region. Ans. 4. The Examiner relies on Wacha as fixing the straight region of a fish hook to Appeal 2011-009186 Application 11/487,188 - 4 - another element, which is accomplished by a rivet. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to fix Lamar’s fish hook in the channel as taught by Wacha to achieve the claimed invention. Id. According to the Examiner, a person of ordinary skill in the art would have done this to maintain the proper positioning of the hook. Id. Appellant traverses the Examiner’s rejection by first arguing that the straight region of Lamar’s fish hook (shank 26, Fig. 12) is not fixed. App. Br. 10. Next, Appellant argues that Wacha fixes a hook to a lure by means of a rivet. App. Br. 10. Appellant argues that the combined teachings of Lamar and Wacha would not lead to the present invention. Reply Br. 4. We agree. Lamar discloses a fish hook that fits into slots 15 and 17 in deflecting plate 13. See e.g., Lamar, Fig. 2, 3 & 6. Lamar teaches that “the hook is slidable with respect to the slots.” Lamar, col 3, ll. 73. This sliding movement facilitates baiting the hook. Lamar, col. 3, l. 73 – col. 4, l. 10 (“for convenience and celerity in impaling the bait body upon the hook”).1 The Examiner’s stated reason for combining Lamar and Wacha was to “fix the fish hook” in the channel so as to “maintain the proper positioning of the hook.” Ans. 4. We are not certain what the Examiner meant by “proper positioning” of the hook, but it appears to us that Lamar’s invention contemplated movement of the hook vis-à-vis the deflecting plate in order to facilitate baiting the hook. Id. Fixing Lamar’s hook with a rivet would 1 Lamar discloses an alternative embodiment in Figures 12, 13 and 14 the features a fish hook with a straight shank and slots 31 and 32 in the deflecting plate. Movement of the hook relative to the deflecting plate is disclosed in Columns 5 and 6 of Lamar’s specification. Appeal 2011-009186 Application 11/487,188 - 5 - impair this salutary functionality by making it more difficult to bait the hook. We do not agree with the Examiner that a person of ordinary skill in the art would be motivated to modify Lamar in a manner that would impair its utility. Thus, the Examiner’s rejection is not supported by an adequate reason to combine the known elements in the fashion claimed by the patent at issue. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring articulated reasoning with rational underpinning to support a legal conclusion of obviousness). Accordingly, we do not sustain the obviousness rejection of claims 1- 5 and 7. Unpatentability of Claim 6 The rejection of claim 6 suffers from the same infirmity as the rejection of claims 1-5 and 7 above. Accordingly, and for the same reasons as expressed above, we do not sustain the rejection of claim 6. DECISION The decision of the Examiner to reject claims 1-7 is indefinite under 35 U.S.C. § 112, second paragraph is REVERSED. The decision of the Examiner to reject claims 1-7 is unpatentable under 35 U.S 103(a) is REVERSED. REVERSED rvb