Ex Parte Reynolds et al

Patent Trial and Appeal BoardAug 12, 2013

11378745 (P.T.A.B. Aug. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID W. REYNOLDS and MARTHA J. REYNOLDS ____________ Appeal 2011-008299 Application 11/378,745 Technology Center 3700 ____________ Before JENNIFER D. BAHR, GAY ANN SPAHN, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-3, 7-9, 13-16, and 19-22. The Examiner also objected to the drawings. Ans. 2. The drawing objections, however, are not within the jurisdiction of the Board and will not be addressed. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-008299 Application 11/378,745 2 Claimed Subject Matter Claims 1, 9, and 16 are the independent claims on appeal. Claim 1 is illustrative of the subject matter on appeal and, with emphasis added, recites: 1. A fish stringer system comprising: a stringer having an outer diameter and a reduced diameter portion; a plurality of snap assemblies, each snap assembly comprising: a slider having a slot for receiving the reduced diameter portion of the stringer, the slider having an internal dimension greater than the outer diameter of the stringer, thereby allowing the slider to slide past the reduced diameter portion onto the outer diameter of the stringer; a swivel coupled to the slider; a snap coupled to the swivel, wherein the snap is configured for attachment to a fish; and a clip having an attachment portion and a snap- carrying portion, the attachment portion comprising a first spring bias in a first closed position, the snap- carrying portion comprising a second spring bias in a second closed position, wherein the snap-carrying portion is dimensioned to carry all the snaps of the plurality of snap assemblies, wherein the attachment portion of the clip is dimensioned to receive the stringer, wherein the plurality of snap assemblies are attached to the stringer in a single motion by attaching the attachment portion of the clip to the stringer when the plurality of snap assemblies are attached to the snap-carrying portion of the clip with none of the sliders coupled to the stringer by pushing the attachment portion of the clip onto the stringer with sufficient force to overcome the first spring bias, resulting in the stringer within the attachment portion, wherein the plurality of snap assemblies may be unattached from the stringer in a single motion by unattaching the attachment portion of the clip from the stringer when the plurality of snap assemblies are Appeal 2011-008299 Application 11/378,745 3 attached to the snap-carrying portion of the clip by pushing the attachment portion of the clip off the stringer with sufficient force to overcome the first spring bias, resulting in removing the attachment portion from the stringer. Rejections The Examiner has withdrawn the rejections listed at pages 3-4 of the Answer. As such, the following Examiner’s rejections are before us for review: claims 1-3, 7-9, and 13-15 are rejected under 35 U.S.C. § 102(b) as anticipated by Reynolds ’426 (CA 2,043,426 A1, pub. Mar. 5, 1992)1; and claims 1-3, 7-9, 13-16, and 19-22 are rejected under 35 U.S.C. § 102(b) as anticipated by Reynolds ’509 (CA 2,043,509 A1, pub. Mar. 5, 1992)2. OPINION Anticipated by Reynolds ’426 The Examiner finds that Reynolds ’426 discloses a fish stringer system including a stringer 73, a plurality of snap assemblies 89 having a slider 95, a swivel 99, and a snap 97, and a clip 101 having an attachment portion 109 and a snap carrying portion 123, as called for in independent claims 1 and 9. Ans. 6-7 (citing Reynolds ’426, figs. 3-6). The Appellants contend that the Examiner’s rejection of independent claims 1 and 9 is in error because Reynolds ’426 does not teach “removing the snap assemblies 1 It is notable that the inventors in Reynolds ’426 and the Appellants share the same names, David W. Reynolds and Martha J. Reynolds. See Ans. 9. 2 It is notable that the inventors in Reynolds ’509 and the Appellants share the same names, David W. Reynolds and Martha J. Reynolds. See Ans. 10. Appeal 2011-008299 Application 11/378,745 4 in a single motion as claimed” and “removing the clip from the stringer as claimed, and especially does not teach removing the clip from the stringer in a single motion as claimed.” Br. 8. In response to the Appellants’ contentions, the Examiner explains that the contentions are directed to an intended use of the claimed invention. Ans. 8. We agree. “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708- 709 (Fed Cir. 1990); see In re Best, 562 F.2d 1252, 1255 (CCPA 1977). We also agree with the Examiner that the structure of Reynolds ’426 is capable of performing the claimed intended use. Ans. 9. Furthermore, the Examiner correctly explains that the Appellants “ha[ve] set forth no structural differences between the invention in the instant application and that of Reynolds ‘426” and “ha[ve] not set forth any reason . . . why the elements of Reynolds ‘426; the stringer, plurality of snap assemblies and clip are not capable of performing the claimed recited function.” Id. Thus, the Examiner’s rejection of independent claims 1 and 9 as anticipated by Reynolds ’426 is sustained. The Appellants provide a separate heading for the rejection of dependent claims 2, 3, 7, 8, and 13-15, however, the Appellants merely rely on the arguments presented for claims 1 and 9. For the same reasons that we sustained the rejection of claims 1 and 9, we likewise sustain the rejection of claims 2, 3, 7, 8, and 13-15 as anticipated by Reynolds ’426. Anticipated by Reynolds ’509 The Examiner finds that Reynolds ’509 discloses all of the limitations of independent claims 1, 9, and 16. Ans. 7-8 (citing Reynolds ’509, figs. 1- Appeal 2011-008299 Application 11/378,745 5 5). The Appellants’ contentions against the Examiner’s anticipation rejection of independent claims 1, 9, and 16 as anticipated by Reynolds ’509 are nearly identical to the Appellants’ contentions against the anticipation rejection by Reynolds ’426. See Br. 8-9. The Examiner’s response to the Appellants’ contentions against the anticipation rejection based on Reynolds ’509 is nearly identical to the Examiner’s response to the Appellants’ contentions against the anticipation rejection based on Reynolds ’426. Ans. 7-9.3 For substantially the same reasons as discussed above, with regards to the anticipation rejection based on Reynolds ’426, the Examiner’s rejection of independent claims 1, 9, and 16 as anticipated by Reynolds ’509 is sustained. The Appellants provide a separate heading for the rejection of dependent claims 2, 3, 7, 8, 13-15, and 19-22; however, the Appellants merely rely on the arguments presented for claims 1, 9, and 16. For the same reasons that we sustained the rejection of claims 1, 9, and 16, we likewise sustain the rejection of claims 2, 3, 7, 8, 13-15, and 19-22 as anticipated by Reynolds ’509. DECISION We AFFIRM the rejections of claims 1-3, 7-9, 13-16, and 19-22. 3 In the Response to Arguments section, at page 10 of the Answer, the Examiner uses the element numbers of Reynolds ’426, for example “stringer cable 73,” rather than the element numbers of Reynolds ’509. This is a minor oversight in the Examiner’s response. This oversight does not affect the accuracy of the findings in the Examiner’s rejection of claims 1-3, 7-9, 13-16, and 19-22 as anticipated by Reynolds ’509 at pages 7-8 of the Answer. Appeal 2011-008299 Application 11/378,745 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh