Appeal No. 2003-0067
Application No. 09/713,480
in any plane wished, i.e., in a vertical plane with barb above shank or a vertical plane with barb
below shank, and hook and bait will not spin or twist line.” As further explained at col. 4, lines
35-45:
The buoyancy provided by bait 10 is useful in many instances to provide a desired
orientation of hook 20 as, for example, when fishing in waters where current is
present, or when line is being brought in by the fisherman as shown in FIG. 4. That
is, the combined buoyant effect of egg 10 and the speed and direction of the current
or the bringing in of the line will insure that the egg is presented to the fish, which
are often facing in the upstream direction for feeding, in advance of the hook and
with barb above or below shank as in FIG. 4.
In assessing the teachings of Robertaccio, the examiner has determined (answer, page 3) that
the fishhook thereof “is vertically oriented.” The examiner considers (answer, page 3) that Figures
2-4 of Robertaccio “show the buoyant bodies (10) causing the hook to be vertically oriented with the
pointed end of the hook above the eye as disclosed in the appellants [sic, appellant’s] claims.” The
linchpin of each of the rejections is the examiner’s determination to the effect that Robertaccio’s
“vertically oriented” fishhook meets the requirement of each of the independent claims that the hook
orients in water with the point above the eye and with the shank vertically oriented.
The difficulty we have with the standing rejections under 35 U.S.C. § 103(a) is the apparent
failure on the examiner’s part to take into account the claim terminology calling for the various
elements of the claimed combination to be related in a manner that causes the shank to be vertically
oriented in the water. As aptly pointed out by appellant, the fact that the fishhook of Robertaccio as
a whole may be oriented in a vertical plane in the water does not necessarily mean that the shank is
vertically oriented. This is made clear from a consideration of Robertaccio’s Figures 2-4, where, if
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007