Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE CALVIN G. STANDISH, JR.
Appeal No. 87-0178
July 26, 1988
Application for Patent filed May 21, 1984, Serial No. 612,749. Audible Fishing Lure.
Richard O. Bartz et al. for appellant
Primary Examiner--Nicholas P. Godici
Examiner--C. McKee
Before Calvert
Vice Chairman
Examiners-in-Chief
Garris
Examiner-in-Chief
ON BRIEF
This is a decision on the appeal from the final rejection of claims 1, 3, 5, 6, 9 through 14, 16 and 17, which are all of the claims remaining in the application.
The subject matter on appeal pertains to an audible fishing lure having an elongated linear wire body. At one end, the body includes a fish-line accommodating eye, a weight and a spinner arrangement. At the opposite end, the body includes another weight, a skirt-forming plurality of flexible bands, and a hook. The previously mentioned spinner arrangement comprises first and second arms which extend generally normal to the body. These arms are respectively connected to first and second rods which extend generally parallel to the body and which respectively carry spinners having oppositely turned ears. The ears of one spinner are extended in a direction opposite to the ears of the other spinner whereby the spinners rotate in opposite directions as the lure is moved through the water. Further, the spinners are disposed sufficiently close that during rotation portions of the spinners contact each other and thereby produce fish-attracting intermittent sounds.
The appealed subject matter is adequately illustrated by independent claim 11 which reads as follows:
11. An audible fishing lure comprising: an elongated linear body having a first end and a second end, hook means connected to the first end of the body, a loop having an eye connected to the second end of the body, first weight means mounted on the first end of the body, a first arm having a first end and a second end, second arm having a first end and a second end, said first and second arms extended generally normal to said linear body, second weight means connecting the first ends of the first and second arms to the second end of the body, a first rod connected to the second end of the first arm, a second rod connected to the second end of the second arm, said first and second rods extended generally parallel to the linear body, and being shorter than the linear body, first spinner means rotatably mounted on said first rod and second spinner means rotatably mounted on said second rod, said first and second spinner means each comprises a spinner having a generally V-shaped body and oppositely turned ears on opposite end portions of the body, said ears of one spinner being extended in opposite directions as the ears on the other spinner whereby the first and second spinner means rotate in opposite directions as the lure is moved forwardly in the water, said first and second spinner means having portions that contact each other on rotation of the spinner means thereby producing fish attracting intermittent sounds.
*2 The references of record relied upon by the examiner in the rejections before us are:
Gilliam 2,167,945 Aug. 1, 1939
Gordon 4,468,881 Sep. 4, 1984
Hanna et al. 4,510,710 Apr. 16, 1985
(Hanna) (filed May 25, 1983)
Claims 1, 3, 5, 9 through 13, 16 and 17 1 stand rejected under 35 USC 102(e) as anticipated by Hanna. It is the examiner's position that the shading of Hanna's drawing indicates the spinners illustrated therein are designed to rotate in opposite directions and accordingly that the lure disclosed by patentee is identical to the lure defined by the above-noted claims.
Claims 1, 3, 5, 9 through 13, 16 and 17 [FN1] stand alternatively rejected under 35 USC 103 as unpatentable over Hanna in view of Gilliam. Even assuming Hanna's drawing does not disclose appellant's claimed feature of oppositely rotating spinners, the examiner considers that it would have been obvious for one with ordinary skill in the art to provide the lure of Hanna with such a feature in view of Gilliam.
Claims 6 and 14 1 stand rejected under 35 USC 103 as unpatentable over Hanna in view of Gilliam, as applied above, and further in view of Gordon. It is the examiner's conclusion that it would have been obvious for one with ordinary skill in the art to form the skirt of Hanna with a plurality of elongated flexible bands mounted at the intermediate portions thereof as taught by Gordon.
The two issues raised on this appeal are (1) whether the Hanna patent has been eliminated as a reference against the appealed claims and, if not, (2) whether the claims patentably distinguish over Hanna as applied in the rejections above. For reasons which will become apparent hereinafter, these issues are resolved by determining the mechanism appellant must use in attempting to establish priority of invention over the Hanna patent.
In this latter regard, the appellant has attempted to eliminate the patent as a reference supporting the above-noted rejections by filing an affidavit under 37 CFR 1.131. [FN2] However, the examiner has refused to consider the affidavit in light of his determination that appellant and Hanna are claiming the same patentable invention and that, as a consequence, priority of invention can be established only by way of an interference proceeding. The appellant disagrees with this determination and has argued the matter on this appeal in conformance with the practice outlined in the Manual of Patent Examining Procedure (MPEP) at § 2308.01 ("... the rejection may be appealed to the Board of Patent Appeals and Interferences, and the question of whether the application and the reference patent are claiming the same invention may be argued on appeal ...").
OPINION
*3 We have carefully considered the entire record before us, including each of the arguments and comments advanced by the appellant and the examiner in support of their respective positions. These considerations lead us to conclude that appellant and Hanna are claiming the same patentable invention and that, as a consequence, the Hanna patent has not been eliminated as a reference by the § 1.131 affidavit of record. Although appellant is claiming the "same patentable invention" as Hanna, as that term is defined by 37 CFR 1.601(n) for purposes of an interference, the appealed claims cannot be properly regarded as anticipated by the Hanna disclosure. Therefore, we will not sustain the § 102(e) rejection. However, we will sustain the § 103 rejections since, in our opinion, the examiner has established a prima facie case of obviousness which has not been successfully rebutted by objective evidence of nonobviousness. Our reasons follow.
It is well settled that, when the claims of a United States patent are not patentably distinct from the claims under rejection, an interference proceeding, rather than a § 1.131 affidavit, is the mechanism an applicant must use in attempting to establish priority of invention over the patent. In re Clark, 457 F.2d 1004, 173 USPQ 359 (CCPA 1972); In re Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962); MPEP §§ 715 and 2308.01.
To determine if an interference proceeding, rather than a § 1.131 affidavit, is the proper mechanism for establishing priority of invention in this case, we must apply the test enunciated in the appropriate interference rules for resolving whether the patent claims and the rejected claims are patentably distinct. In this regard, the current interference rules, 37 CFR 1.601 through 1.688, were promulgated as implementation for the interference provisions of the Patent Law Amendments Act of 1984 (Public Law 98-622) and replaced the former interference rules, 37 CFR 1.201 through 1.288, as of February 11, 1985. The current interference rules apply to all interferences declared on or after February 11, 1985, except in special circumstances not existing in this case. See MPEP § 2300.01. Accordingly, we will refer to the current interference rules for guidance in determining the appropriate mechanism by which appellant may attempt to establish priority of invention over Hanna.
At 37 CFR 1.601(i), the term "interference" is defined as "a proceeding instituted in the Patent and Trademark Office before the Board to determine any question of patentability and priority of invention between two or more parties claiming the same patentable invention." When the parties involve an applicant and a patentee, the rule specifies that "[a]n interference may be declared between one or more pending applications and one or more unexpired patents naming different inventors when, in the opinion of an examiner, any application and any unexpired patent contain claims for the same patentable invention." The term "same patentable invention" is defined at § 1.601(n) in the following manner:
*4 Invention "A" is the "same patentable invention" as an invention "B" when invention "A" is the same as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of invention "B" assuming invention "B" is prior art with respect to invention "A."
Further guidance on this matter is provided by MPEP § 2306 which states in part:
The requirement that the claims of the application and of the patent define the same patentable invention in order for an interference to exist does not mean that the application claim or claims must necessarily be identical to the corresponding claim or claims of the patent. All that is required under present practice is that a claim of the application be drawn to the same patentable invention as a claim of the patent. An application claim is considered to be drawn to the same patentable invention as a patent claim if it recites subject matter which is the same as (35 USC 102), or obvious in view of (35 USC 103), the subject matter recited in the patent claim (37 CFR 1.601(n)). The test is analogous to that applied for double patenting, i.e., if the applicant's claim would have been subject to a double patenting rejection of the "same invention" or "obviousness" type (see § 804) if the patent and application were by the same inventive entity, then the application and patent claim are directed to the same invention.
In light of the above, it is evident that an interference proceeding is the appropriate mechanism for determining priority of invention in this case if appellant and Hanna are claiming the "same patentable invention" within the meaning of 37 CFR 1.601(n). Stated otherwise, appellant must attempt to establish priority of invention by way of an interference proceeding, rather than by way of an affidavit under 37 CFR 1.131, if appellant's claimed invention is the same as (35 USC 102) or is obvious in view of (35 USC 103) Hanna's claimed invention.
As an aid in comparing the respective inventions claimed by appellant and Hanna, patentee's sole claim is reproduced below:
1. A fishing lure comprising:
(a) a shank with barbed hook means at its rear end and eyelet means at its front end;
(b) a body with a skirt attached to the shank adjacent the hook means;
(c) a plurality of arms attached to the shank adjacent the eyelet means and having rear portions extending generally toward the body from the eyelet means;
(d) propeller means rotatably mounted on the arms' rear portions and wherein the arms' rear portions are spaced apart and the propellers are dimensioned so that when the propellers turn in response to movement of the lure in the water, the propellers strike each other only as a result of their rotation and provide lift to the lure; and
*5 (e) flotation devices mounted on the arms' rear portions rearward of the propellers.
At this point, we reemphasize our earlier statement that the issues in this case are resolved by determining the mechanism appellant must use in attempting to establish priority of invention. This is because an affirmative determination that the appealed invention is the same as or obvious in view of patentee's claimed invention (i.e., that priority of invention must be established by an interference proceeding) necessarily leads to the conclusion that the appealed invention is the same as or obvious in view of patentee's disclosed invention. Therefore, we shall consider the issue of whether Hanna has been eliminated as a reference (i.e., whether an interference proceeding or the § 1.131 affidavit of record must be used to establish priority of invention) simultaneously with the issue of whether the claims on appeal are patentable over Hanna as applied in the § 102 and § 103 rejections before us.
Concerning these issues, the examiner acknowledges that appellant's claimed invention is not the same as (35 USC 102) patentee's claimed invention since Hanna's claim does not recite that the propellers rotate in opposite directions as required by the independent claims on appeal. However, it is the examiner's conclusion that the majority of the appealed claims are anticipated by patentee's disclosed invention. At odds with this conclusion is the examiner's finding that:
Although the shading in the drawing Figs. of Hanna indicates that the spinner ears in one spinner are "extended in the opposite direction as the ears in the other spinner" as recited, whether this feature is shown is not entirely clear (Answer, page 4).
The examiner's finding of fact regarding Hanna's vagueness on this matter, with which we agree, controverts his conclusion of law regarding anticipation. This is because anticipation of a claimed product cannot be predicated on mere conjecture as to the characteristics of a prior art product. See W.L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303, 314 (Fed.Cir.1983). It follows that, even if Hanna is available as prior art against the claims on appeal, the above-noted § 102(e) rejection cannot be sustained.
As for the obviousness considerations, in the examiner's view, it would have been prima facie obvious for one with ordinary skill in the art to provide Hanna's claimed lure with the opposite rotation feature in view of Gilliam. We agree. Gilliam discloses a lure having oppositely rotating spinners whereby the lure simulates the actions of a winged insect without turning or twisting the fishing line; see lines 5-28 on the left-hand side of page 1 of patentee's specification. This disclosure, in our opinion, would have suggested to an artisan with ordinary skill the desirability and thus the obviousness of providing the lure claimed by Hanna with oppositely rotating propellers or spinners in order to obtain the benefits taught by Gilliam. A fortiori, it would also have been prima facie obvious to provide the lure disclosed by Hanna with this feature. In either case, Hanna's claimed or disclosed lure, when modified to include the opposite rotation feature, meets the limitations recited in appealed claims 1, 3, 5, 9 through 13, 16 and 17. It follows that Hanna is available as a reference against these claims (i.e., since these claims define the "same patentable invention" as claimed by Hanna, the § 1.131 affidavit is ineffective) and that Hanna and Gilliam evidence a prima facie case of obviousness with respect to the invention defined by these claims.
*6 For analogous reasons, we also consider Hanna to be available as a reference against the remaining appealed claims 6 and 14 which the examiner has rejected as unpatentable over Hanna in view of Gilliam, as applied above, and further in view of Gordon. [FN3] Concerning this rejection, the examiner contends that it would have been prima facie obvious for one with ordinary skill in the art to mount the skirt-forming flexible bands of Hanna at the intermediate portions thereof in view of Gordon. We agree. In our opinion, it would have been prima facie obvious to form the skirt of patentee's lure, as disclosed or as claimed, in this manner so as to obtain an inner and outer skirt arrangement having greater, more natural action as taught by Gordon (e.g., see lines 28-59 of column 1).
In summary, we believe the examiner has established a prima facie case that appellant's claimed invention is obvious over Hanna's claimed invention and therefore that the § 1.131 affidavit of record is an ineffective mechanism for eliminating the Hanna patent as a reference against the appealed claims. It necessarily follows that, in our opinion, the examiner has also established that appellant's claimed invention would have been prima facie obvious over Hanna's disclosed invention.
As indicia of nonobviousness, the appellant has made general allegations that his claimed lure enjoys commercial success; see item 4 on pages 9 and 10 of the main brief. However, the only evidence of record concerning commercial success comprises a statement by the inventor in the § 1.131 affidavit that more than 5,000 lures "constructed according to the disclosure and claims of my patent application" have been sold. The affidavit statement does not reflect the time period during which the lures were sold or the average number of product sales per unit of time which would normally be expected in the market place under consideration. Accordingly, we cannot determine whether appellant's lure, in fact, has been commercially successful. Further, the inventor's statement that his commercial lure is "constructed according to the disclosure and claims of my patent application" does not constitute probative evidence that the lure which has been sold corresponds to the lure defined by the appealed claims or that whatever commercial success may have occurred is attributable to the construction defined by the appealed claims. In short, a nexus between the claimed invention and the alleged success has not been established. Such a nexus must be established before considerations of commercial success become relevant to the issue of obviousness versus nonobviousness. Vandenberg v. Dairy Equipment Co., 740 F.2d 560, 224 USPQ 195, 199 (Fed.Cir.1984). We conclude, therefore, that the prima facie case of obviousness established by the applied reference evidence has not been successfully rebutted by objective evidence of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
*7 Other than the above-mentioned allegations of commercial success, the appellant has not specifically contested the examiner's conclusions of obviousness. Rather, appellant argues that the examiner has not applied the proper test for determining whether the appealed invention and the patented invention are the same. According to appellant, the proper test is whether his claimed invention would infringe the invention claimed by Hanna. In appellant's view, there would be no infringement in this case since his claimed invention includes oppositely rotating spinners but not floatation devices whereas patentee's claimed invention includes floatation devices but not oppositely rotating spinners. Appellant stresses that patentee specifically claims floatation devices which are disclosed as being a significant aspect of Hanna's invention whereas appellant does not and cannot claim floatation devices or any structure equivalent thereto since his disclosure contains no support for such a limitation.
Notwithstanding appellant's arguments to the contrary, it is clear from our earlier discussion that the examiner has applied the proper test for determining whether appellant and Hanna are claiming the "same patentable invention." We emphasize that considerations, such as, whether Hanna's claimed floatation devices constitute a significant or material limitation and whether appellant's claims or disclosure include such floatation devices or structure equivalent thereto, are not by themselves determinative of the issue. The test is plainly and simply whether Hanna's claimed invention renders appellant's claimed invention unpatentable under either 35 USC 102 or 35 USC 103. As previously noted, we consider the appealed invention to be unpatentable under 35 USC 103 in view of the patented invention. Since appellant and Hanna are claiming the "same patentable invention," the affidavit of record under 37 CFR 1.131 is inappropriate and, unless appellant can establish priority of invention over Hanna by way of an interference, the patent is available as a reference against the claims on appeal.
We are mindful of appellant's point that "the phrase 'does not claim the rejected invention' [in 37 CFR 1.131] should be construed favorably to an applicant, if possible, so that unless the applicant is clearly claiming the same invention as the U.S. patent reference, he will not lose his rights under Rule 131"; In re Eickmeyer, 602 F.2d 974, 202 USPQ 655 at 661 (CCPA 1979). In this regard, it is emphasized at 202 USPQ 661 of In re Eickmeyer, supra, that:
If it is determined that an applicant cannot use a 131 affidavit to antedate the effective date of a U.S. patent reference because it claims the subject matter of the rejected claim, there should be no question that his application and the reference application or patent "contain claims for substantially the same invention" and, thus, meet the test for instituting an interference.
*8 As reflected by our analysis above, however, there is no question in this case that appellant and Hanna are claiming the "same patentable invention" and thus meet the interference test of 37 CFR 1.601. Moreover, we note that 37 CFR 1.131 is to be amended, effective September 12, 1988, by inserting "the same patentable invention as defined in § 1.601(n) as" before the phrase "the rejected invention." See the Miscellaneous Amendments of Patent Rules (Final Rule) at 53 F.R. 23728 (June 23, 1988) wherein it is stated that "[t]he purpose of the amendment to § 1.131(a) is to ensure that an applicant who is claiming an invention which is identical to, or obvious in view of, i.e., the same patentable invention as claimed in a domestic patent, cannot employ an affidavit under § 1.131 as a means for avoiding an interference with the patent."
By way of guidance, we point out that, in order to initiate an interference in this case, appellant must submit an appropriate showing under 37 CFR 1.608; see item 4 in the first column of MPEP 2306. More specifically, appellant must file a prima facie showing under 37 CFR 1.608(b) that he is entitled to priority of invention over Hanna; see MPEP 2308 through 2308.02. For clarification purposes, we also point out that the § 1.131 affidavit of record is inadequate to establish the prima facie showing required by 37 CFR 1.608(b) because, for example, the § 1.131 showing of record does not include the necessary affidavit from at least one corroborating witness.
As a final matter of concern, we note that the appellant and the examiner have devoted much discussion and argument to the question of whether it would have been obvious to remove Hanna's floatation devices from his claimed lure. We have not considered this question since it is not germane to the issue of whether appellant's claimed invention is obvious in view of patentee's claimed invention. This is because the claims on appeal are sufficiently broad in scope as to encompass a lure having floatation devices. In other words, the appealed claims do not exclude floatation devices and therefore do not distinguish themselves from the floatation devices claimed by Hanna.
In summary, we have determined that appellant and Hanna are claiming the "same patentable invention" as defined in 37 CFR 1.601(n) and accordingly, that the § 1.131 affidavit of record is not appropriate for antedating the Hanna patent. Further, we have sustained the rejections under 35 USC 103 based on the teachings of Hanna and the other references applied by the examiner. However, we have not sustained the rejection under 35 USC 102(e).
*9 For the above stated reasons, the decision of the examiner is affirmed.
37 CFR 1.136(a) does not apply to the time for taking any subsequent action in connection with this appeal.
AFFIRMED
BOARD OF PATENT APPEALS AND INTERFERENCES
Vice Chairman
Robert F. Stahl
Examiner-in-Chief
Bradley R. Garris
Examiner-in-Chief
FN1. While we fully appreciate the metes and bounds of the appealed claims, we note the following informalities which are deserving of correction. In claim 10, on lines 1 and 2, the phrase "the first and second arms" lacks strict antecedent basis and should read--the pair of arms--. Similarly, in claim 14, on lines 1 and 2, the phrase "said flexible skirt" lacks strict antecedent basis and should read--said flexible skirt means--.
FN2. 37 CFR 1.131(a) provides that an affidavit or declaration thereunder may be used "When any claim ... is rejected on reference to a domestic patent which substantially shows or describes but does not claim the rejected invention, ..." (emphasis added).
FN3. The examiner has not specifically addressed whether these claims define the "same patentable invention" as the claim of Hanna within the meaning of 37 CFR 1.601(n). However, the differences between patentee's claimed and disclosed inventions, in this instance, have no bearing on the question of obviousness vis-a-vis appealed claims 6 and 14. Therefore, the considerations involved in the § 1.601(n) determination are identical to the considerations involved in the § 103 rejection.
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