Appeal 2007-2318
Application 10/947,324
“offered to show copying (secondary indicia of [non]obviousness)” (id. at
12). The Declaration of Ron A. Davis is “offered to show how the industry
views the CHATTERBAITTM, how the instant invention is different from
the prior art, and the commercial success of the instant invention” (id. at
13). (CHATTERBAITTM is the commercial embodiment of the claimed
lure; Br. 3.)
The evidence provided in the declarations does not overcome the
prima facie cases of obviousness. The evidence in all three declarations
suffers from the same problem: it is limited to the CHATTERBAITTM
commercial embodiment of what is claimed, while claims 18 and 19 are so
broadly written that they encompass embodiments that are either already
described in the prior art or obvious based on what has been described.
We take no position on whether the CHATTERBAITTM itself is
patentable: that issue is not before us. Even assuming that Appellant’s
evidence shows that the CHATTERBAITTM is patentable, however, the
scope of claims 18 and 19 as presently written precludes their issuance. See
KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1397
(2007) (“If the claim extends to what is obvious, it is invalid under § 103.”);
In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960) (“It is
well settled that a generic claim cannot be allowed to an applicant if the
prior art discloses a species falling within the claimed genus.”).
OTHER ISSUES
Claim 18 seems to say that the blade is part of the jig (“said jig
including a body, . . . a hook, . . . an eyelet, . . . ; and a blade”). Claim 18
also requires that the blade strike the jig, meaning that they have to be
12
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013