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December 20, 2008

Pole Position

Gary Wheeler cast for a fishing pole patent, and got snagged by the patent appeals board, which found Wheeler's illuminated transparent pole anticipated by fishing pole with a light bulb attached to the tip. The CAFC illuminated the pathetic shambles that the rejection-crazed patent office has become: they don't even comprehend §102.

In Gary Edward Wheeler (CAFC 2008-1215)

Wheeler argues that claim 1 cannot be anticipated by the Kelly reference, for Kelly does not show a transparent flexible illuminated pole. The Kelly fishing pole has a light bulb attached at the tip of the pole, connected by wires to the handle. Although the Board recognized that the Kelly pole is not transparent and is not illuminated except for the tip, the Board held that "the term 'elongated fishing pole [sic: rod] being made from a transparent, flexible material' does not require the entire rod to be made from a transparent, flexible material or to emit light along its entire length" (brackets in original). That is inaccurate, for Wheeler's specification and claim 1 state that the entire rod is transparent and flexible and illuminated. J.A. 61, 63.

On this appeal the PTO argues that Wheeler's rod is not necessarily transparent along its entire length because obstructions such as line guides or reflective material can be placed in or on the rod, thereby interrupting the transparency. However, the ground of rejection is "anticipation," and it is clear that Kelly does not show the Wheeler pole, even if the transparency is interrupted, for the Kelly pole is illuminated only at the tip and handle. See Akzo N.V. v. United States Int'l Trade Comm'n, 808 F.2d 1471, 1479 (Fed. Cir. 1986) ("anticipation requires that each and every element of the claimed invention is described in a single reference.").

Reversed and remanded. Anticipate the next appeal: Obzilla goes fishing.

Posted by Patent Hawk at December 20, 2008 2:47 PM | Prior Art

Comments

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Perhaps the idea of lighting the fishing pole is the sufficient to imply obviousness?

Posted by: Dio Gratia at December 20, 2008 4:07 PM

Ignoring your brash criticisms of the PTO...

The issue is whether Kelly (US 5644864, i.e. Fig. 1) adequately disclosed wherein the rod is made of a transparent, flexible material.

Kelly's preferred embodiment does not appear to disclose wherein the entire rod is a transparent material (i.e. Fig. 1). However, the examiner and the board apparently relied upon Kelly's disclosure of the prior art.

"Kelly's other teachings make up for this deficiency: In describing the prior art, Kelly states: "There are a variety of U.S. patents whose subject matter is illuminated fishing poles .... The typical illuminated pole has a hollow handle in which a lamp and power source is located and a transparent or translucent rod through which the light from the energized lamp is directed. In some poles..., the rod is illuminated by directing the light into the hollow center of the rod." Kelly, col. 1, 11.10-21"

Why the CAFC ignored this piece of evidence is beyond me...

Also, the CAFC interprets a rod "made of a transparent, flexible material" as *entirely* made of appears a bit too narrowing, especially since this interpretation is *inconsistent* with Claim 5 which apparently interrupts the transparent material.

Of course, the examiner would have been much better served by making a rock-solid 102/103 and maybe a 103 with another reference.

Posted by: xmnr at December 20, 2008 4:12 PM

xmnr,

Thanks for making my point of “brash criticism” of the PTO. The patent office, including the BPAI, is too often sloppy to the point of unprofessional in its rejections. The Wheeler case is just a poster-boy example.

As I mentioned in my blog, with reference to Obzilla, the examiner, and Board, could and should have raised the obviousness argument if applicable, as well as anticipation. The BPAI decision was split. The clue was in.

The plain fact remains that the PTO should not lose at the CAFC on such a simple case. If this was an isolated case, that would be one thing. But this is just part of a continuing pattern.

Posted by: Patent Hawk at December 20, 2008 4:49 PM

xmnr said:

Kelly's preferred embodiment does not appear to disclose wherein the entire rod is a transparent material (i.e. Fig. 1). However, the examiner and the board apparently relied upon Kelly's disclosure of the prior art.

"Kelly's other teachings make up for this deficiency: In describing the prior art, Kelly states: "There are a variety of U.S. patents whose subject matter is illuminated fishing poles .... The typical illuminated pole has a hollow handle in which a lamp and power source is located and a transparent or translucent rod through which the light from the energized lamp is directed. In some poles..., the rod is illuminated by directing the light into the hollow center of the rod." Kelly, col. 1, 11.10-21"

Why the CAFC ignored this piece of evidence is beyond me...

It is patent office policy not to rely on a reference’s disclosure of the prior art in a 102 rejection. Any disclosure in the background section of Kelly should have been brought in as part of a 103 rejection, with the preference being that the examiner find a separate reference to combine with Kelly in 103 rejection, instead of just relying on the background.

Posted by: Mr. Platinum at December 20, 2008 5:11 PM

Ok, so let me get this straight, the claim called for an illuminated FISHING POLE comprising: an elongated hollow FISHING ROD (this is different from the pole as a whole, it likely excludes the handle that would be included in "fishing pole" at least) having a free end and a fixed end, said ELONGATED FISHING POLE.

First the term ELONGATED FISHING POLE lacks antecedent basis in the claim, the only thing elongated in the claim so far is an ELONGATED HOLLOW FISHING ROD.

Second, knowing that the rod and the pole are different things (i.e. the rod is part of the pole), it is plain to see that the term elongated fishing pole being made from a transparent, flexible material is anticipated by a flexible fishing rod with a light bulb on the end so long as the light bulb is transparent. This is easy to see when you make a psuedo claim in the reference of the prior art. You could claim the prior art fishing pole thus: An illuminated fishing pole comprising: a flexible fishing rod, said fishing pole being made from a transparent, flexible material wherein the material comprises a light bulb and a flexible fishing rod.

How would the CAFC f this up so badly? Why would the examiner not make the requirement to fix the 112 lack of antecedent basis problem first so as to remedy the whole problem? Why does xmnr above f up every single analysis he performs?

The impermissible reading into the claim limitations from the spec that the CAFC performs is outrageous as well.

Posted by: 6000 at December 20, 2008 8:13 PM

"It is patent office policy not to rely on a reference’s disclosure of the prior art in a 102 rejection."

That's a policy I've never heard of. If they claim explicitly what they put in the background then they're getting a 102 from me.

Posted by: 6000 at December 20, 2008 8:15 PM

Also, it is hilarious that the CAFC put [sic] after "fishing pole" and then implied the board meant "elongated fishing rod" instead. The board meant what it said, an elongated fishing POLE being made from a transparent flexible material does not require the entire rod to be made from a transparent flexible material or to emit light along its entire length.

I hope the pto goes for round 2.

All that said, it's hilarious someone would appeal such a case, I can 103 it in a few seconds search time.

Posted by: 6000 at December 20, 2008 8:24 PM

On my next break I decided to spend 10 secs.

Wheeler has a 2004 date.

5172508. Nuff said.

Claim 5.

"The illuminated fishing pole of claim 1 wherein said elongated hollow fishing rod further comprises a reflective material being located along the interior side of its walls and proximate said free end of the fishing rod to facilitate the illumination of said rod when the rod is bent due to pull by a fish."

5172508: These fiber optic cables will act to conduct the light therealong with little loss, providing a source of illumination at each of their forward ends.

Nuff said.

Why can't I get the easy cases? Seriously, I could handle 10 seconds of searching per day.

Posted by: 6000 at December 20, 2008 11:16 PM

"Ignoring your brash criticisms of the PTO..."

I think Hawk's criticism is rather mild compared to the rebuke the Court gave the BPAI.

It reminds me of the case from a few months back that dealt with a claim to a flexible or rigid foam (or whatever it was) and the associate solicitor tried to come up with a whole new argument during the Fed. Cir. hearing. The judges weren't amused then. They're not amused now.

This is just shoddy work from the PTO at all levels. There's no need to pull any punches.

Posted by: JD at December 22, 2008 8:53 AM

The CAFC was correct here, in its statement that "However, the ground of rejection is 'anticipation,' and it is clear that Kelly does not show the Wheeler pole...." If the PTO wants to argue that the Wheeler pole is not actually transparent along its entire length as claimed, they should have made 112 1st and 2nd rejections for either inadequate disclosure or indefinite scope. Instead, they made the fatal error of issuing a 102 rejection, then arguing that the claim did not actually mean what it said, since the specification doesn't enable it. This is a rookie error, and they deserved to be slapped down by the Fed. Cir.

Posted by: Defector at December 22, 2008 10:46 AM

JD; as I recall, the office argued that rigid foam could be made flexible by crushing/breaking it up.

Sheesh.

Posted by: Steve M at December 22, 2008 6:05 PM

"Instead, they made the fatal error of issuing a 102 rejection, then arguing that the claim did not actually mean what it said, since the specification doesn't enable it."

They said no such thing. They said that the claim DOES NOT REQUIRE the rod or the pole to be transparent along its entire length. And it does not. The only rookie here is you. Jebus people learn to read claims. They also say that such a limitation could not even be improperly read into the claim because the specification does not provide support for such a thing. That doesn't mean they said that the claim may, under any weird circumstance still be properly interpreted as being limited to having a pole that is transparent along its entire length. Because it is not.

Posted by: 6 at December 22, 2008 7:42 PM

What's all this about emitting light over the length of the thing? I don't see that in the claim. Can't imagine this case taking much time at the EPO. In the USA it seems to be generating more heat than light. If only the attorney were to write a claim that recites the technical features necessary to solve the objective technical problem (as in the EPO) the case would sail through to issue, free of dispute and controversy, and give the patent owner a patent robust against validity attacks. Let's have some clarity here, shall we?

Posted by: MaxDrei at December 23, 2008 12:32 AM

Interestingly, the BPAI judge who dissented here was the author of the foam decision referenced by Steve M.

Posted by: hmm at December 23, 2008 7:34 PM

You're right that the words "along its entire length" is not in the claim. However, the claim required "an elongated hollow fishing rod . . . being made from a transparent, flexible material." A prior art fishing rod with a light at the tip does not meet this limitation. I'm not suggesting this claim is patentable. (It would have been simple enough to combine a light-sabre toy (or any leaky light guide) with a glow-in-the-dark fishing rod.) However, it should not have been rejected on this art.

The PTO's argument, "that Wheeler's rod is not necessarily transparent along its entire length because obstructions such as line guides or reflective material can be placed in or on the rod, thereby interrupting the transparency." was rightly rebuked by CAFC.

Posted by: Defector at December 30, 2008 11:03 AM