Appeal No. 2004-1004
Application No. 10/011,074
Claims 1 & 8: The Welch Reference
“To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997).
The examiner argues (final Office action, page 3):
Referring to claims 1 and 8, Welch discloses a
fishing lure comprising a substantially sold [sic,
solid] flexible body portion - 10, at least one
independent weight - 20 at least partially
encapsulated in the substantially solid flexible body
portion and stationary relative thereto and wherein
each of the weights is insoluble in water - see for
example figures 1-4 and columns 1-3.
The appellant, on the other hand, points out that Welch
does not disclose a fishing lure with a body portion that is
“flexible,” as that term is defined in the specification.3
(Appeal brief, pages 5-6.)
1 and 3-7 stand or fall together. Claim 9 is dependent on
independent claim 8. Claims 8 and 9 stand or fall together.”
The appellant, however, does not provide any argument on why
claims 8 and 9 are considered to be separately patentable from
claims 1 and 3-5. Accordingly, claims 1, 3-5, 8, and 9 stand or
fall together. 37 CFR § 1.192(c)(7)(2003)(effective Apr. 21,
1995).
3 The present specification defines the term “flexible” as
follows: “As used herein the term ‘flexible’ is to be construed
to mean that the material from which the body portion of the
lure is made is flexible and elastomeric or polymeric.”
(Underscoring added; p. 2, ll. 11-13.)
4
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