Ex Parte Ratte

Patent Trial and Appeal Board

Dec 21, 2012

10288136 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROBERT W. RATTE
__________

Appeal 2010-001510
Application 10/288,136
Technology Center 3600
___________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001510
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SUMMARY
Appellant appeals the Examiner’s following rejections of claims 1-9
and 16-33.
1. Claims 1, 3, 16, 17, 19, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Link (U.S. Patent No. 4,942,689).
2. Claims 2, 5, 9, and 21-32 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Link and Brown (U.S. Patent No. 5,946,849).
3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as obvious
over Link, Brown, and Biss (U.S. Patent No. 5,233,786).
4. Claims 4, 7, 18, and 33 stand rejected under 35 U.S.C. § 103(a)
as obvious over Link and Biss.
5. Claims 8 and 20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Link.
We affirm-in-part.

THE INVENTION
Due to lead’s toxicity, the recreational fishing industry has switched
from lead to bismuth sinkers. Bismuth is less toxic, but easily fractures.
Appellant accordingly covers a bismuth sinker with a compressive skin to
reduce fracturing. (Spec., p. 7, ll. 9-26.)

CLAIMS 1, 3, 16, 17, 19, AND 20
Claims 1, 3, 16, 17, 19, and 20 stand rejected as anticipated by Link.
Independent claims 1 and 16 each recite a skin that compressively covers a
frangible sinker body. Claims 3, 17, 19, and 20 each depend from claim 1 or
16.
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Claimed Compressive Skin
The Examiner and Appellant disagree as to whether Link’s coating 24
is a compressive skin, as claimed. (App. Br. 9-13; Ans. 4.) Appellant
argues the coating 24 is not “compressively engaged” against the weight 12;
that is, more than merely contacting the weight 12. (App. Br. 10.) The
Examiner finds the coating 24 inherently compresses the weight 12,
particularly because the coating 24 is viscously applied and would shrink to
squeeze the weight 12 when cured. (Ans. 4.)
Our analysis begins with the meaning of “compressively,” as claimed.
During examination, claim restrictions are given a broadest reasonable
interpretation consistent with the Specification. See Phillips v. AWH Corp.,
415 F.3d 1303, 1316-17 (Fed. Cir. 2005) (en banc). Claim 1 requires
compression sufficient “to inhibit fracture of the body of material.” The
Specification indicates that any amount of uniform compression will meet
this requirement. (Spec., p. 5, ll. 5-7.)1 Claim 16 does not require a
particular amount of compression, but merely requires the compressive skin
to “conform[] to substantially all of an exterior surface of the body … so as
to confine and retain” the frangible material during fracture. In light of the
above considerations, any amount of uniform compression will satisfy the
compression requirements of claims 1 and 16.

1 Note that this teaching is the only indication of how much compression is
meant by “compressively engaging … to inhibit fracture” (claim 1). Absent
this teaching, the Specification would lack an objective standard for
determining how much compression is required. A Specification must
provide an objective standard for claim terms of degree. See Seattle Box Co.
v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
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Link’s flexible rubber coating 24 uniformly conforms against the
entire exterior surface of the weight 12. (Link, col. 3, ll. 53-60; Fig. 2.)
Given the properties and conformity of Link’s coating 24, a skilled artisan
would have understood the coating 24 as uniformly compressing the weight
12 (to some degree) and as thus meeting the compression requirements of
claims 1 and 16. Where there is reason to conclude that the structure of the
prior art is capable of performing the claimed function, the burden shifts to
the Applicant to show the function distinguishes the claimed structure over
the prior art structure. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). Appellant has not
met this burden.
Claimed Frangible Body
The Examiner and Appellant disagree as to whether Link’s weight 12
is frangible, as claimed. (App. Br. 6-8; Ans. 3-4.) We agree with and adopt
Appellant’s argument, at pages 6-8 of the Appeal Brief, that Link’s weight is
not frangible as claimed.
Accordingly, we do not sustain the anticipation rejection of claims 1
and 16. As the above error also applies to dependent claims 3, 16, 17, 19,
and 20, we do not sustain the anticipation rejection of these claims as well.

CLAIMS 2, 5, 9, AND 21-32
Claims 2, 5, 9, and 21-32 stand rejected as obvious over Link and
Brown. Claim 2 depends from claim 1 and adds that the frangible body
includes bismuth. Independent claim 21 recites a bismuth sinker that can
fracture under fishing conditions. Claims 5, 9, and 22-32 each depend from
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claim 2 or 21. Thus, each of claims 2, 5, 9, and 21-32 requires a frangible or
fracturable (under fishing conditions) body comprising bismuth.
Brown uses a lead-free, bismuth sinker to reduce toxicity. (Brown,
abstract; col. 1, ll. 50-56; col. 2, ll. 15-22.) The Examiner determined it
would have been obvious to substitute Brown’s bismuth sinker material for
Link’s lead sinker material so as to likewise reduce toxicity. (Ans. 4-5.)
Appellant argues that Link and Brown teach away from this
modification because “Link et al. specifically teaches the use of a fishing
weight made with a lead body and the reference of Brown specifically
teaches the opposite, namely lead-free fishing devices.” (App. Br. 16.)
Appellant’s argument is not persuasive. Link does not teach away
from the use of bismuth, but merely selects lead for its sole embodiment. “A
reference does not teach away […] if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.” DePuy
Spine, Inc. v. Medtronic Sofarnor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (citation omitted).
Appellant also argues that Brown’s bismuth material is malleable, not
frangible as claimed, particularly because Brown touts the material as
performing similarly to lead. (App. Br. 17-18.) Appellant’s Specification
teaches that bismuth alloys of 97% bismuth and 3% tin are frangible.
(Spec., p. 3, ll. 8-16.) Brown teaches a bismuth alloy of “about” 98%
bismuth and 2% tin. (Brown, col. 2, ll. 1-14.) Given the similar
compositions of Appellant’s and Brown’s bismuth alloys, a skilled artisan
would have understood Brown’s alloy as being likewise “frangible” in view
of the Specification. See Phillips, 415 F.3d at 1316-17 (claims terms are
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given a broadest reasonable interpretation consistent with their
Specification).
For the reasons above, we sustain the obviousness rejection of claims
2, 5, 9, and 21-32.

CLAIM 6
Claim 6 stands rejected as obvious over Link, Brown, and Biss.
Appellant argues only that claim 6 is allowable in view of depending from
claim 1. (App. Br. 19.) As Brown cures the only identified error with
respect to claim 1, particularly by suggesting the above-noted substitution of
Brown’s bismuth alloy for Link’s lead sinker material, we sustain the
obviousness rejection of claim 6.

CLAIMS 4, 7, 18, AND 33
Claims 4, 7, 18, and 33 stand rejected as obvious over Link and Biss.
Appellant argues that claims 4, 7, 18, and 33 are each allowable in view of
depending from claim 1 or 16. (App. Br. 19.) Given the Examiner’s error
with respect to claims 1 and 16, as well as the omission of Brown from this
rejection, we do not sustain the obviousness rejection of claims 4, 7, 18, and
33.

CLAIMS 8 AND 20
Claims 8 and 20 stand rejected as obvious over Link. Appellant
argues that claims 8 and 20 are each allowable in view of depending from
claim 1 or 16. (App. Br. 19.) Given the Examiner’s error with respect to
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claims 1 and 16, as well as the omission of Brown from this rejection, we do
not sustain the obviousness rejection of claims 8 and 20.

NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
35 U.S.C. §103(a) Rejection
For reasons presented supra, Brown cures the only error identified
with respect to claims 1, 3, 4, 7, 8, 16-20, and 33. Accordingly, though we
reverse the § 102(b) and § 103(a) rejections of claims 1, 3, 8, 16, 17, 19, and
20 over Link, we reject these claims under § 103(a) as unpatentable over
Link and Brown. And, though we reverse the § 103(a) rejection of claims 4,
7, 18, and 33 over Link and Biss, we reject these claims under § 103(a) as
unpatentable over Link, Biss, and Brown. We reject claims 1, 3, 4, 7, 8, 16-
20, and 33 under the same reasoning applied by the reversed rejections,
except for finding that Link’s sinker weight is not frangible and further
determining that it would have been obvious to substitute Brown’s frangible
bismuth sinker material for Link’s lead sinker material so as to reduce
toxicity.

DECISIONS
The Examiner’s decision rejecting claims 1, 3, 4, 7, 8, 16-20, and 33 is
reversed.
The Examiner’s decision rejecting claims 2, 5, 6, 9, and 21-32 is
affirmed.
This decision contains a new ground of rejection pursuant to
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37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new e]vidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. …
(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same record. …
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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