Appeal No. 2002-1906
Application 09/263,532
In proposing to combine Temple and Renaud to reject claims 1
and 2, the examiner submits that
it would have been obvious to provide Temple with soft
bodied plastic worms mounted on the shank of the hook
as shown by Renaud to use worms of different colors to
attract fish as disclosed by Renaud in column 3, lines
32-33. From Fig. 3 of Temple, which shows a worm [sic,
a shrimp] clamped between the two shanks, two worms
each mounted on a shank would have an equal diameter as
one worm mounted between the shanks and the two worms
would be clamped between the shanks [final rejection,
page 3].
The examiner’s position here is unsound for at least two
reasons. First, there is nothing in the combined teachings of
Temple and Renaud which would have suggested threading rubber
worm baits, such as those disclosed by Renaud, onto the hooks of
a device, such as that disclosed by Temple, specifically designed
to clamp live bait between the hooks. Second, even if this
modification were made, the combined teachings of the references
would still lack any suggestion of the clamping relationship
required by claims 1 and 2. The somewhat ambiguous conjecture
advanced by the examiner that “two worms each mounted on a shank
would have an equal diameter as one worm mounted between the
shanks and the two worms would be clamped between the shanks”
(final rejection, page 3) stems from an impermissible hindsight
reconstruction of the appellant’s invention. Bablick, applied in
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