throbber

`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: CHRISTOPHER JOHN RUDY,
`Appellant
`______________________
`
`2018-2106
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 10/360,681.
`______________________
`
`Decided: July 18, 2019
`______________________
`
`CHRISTOPHER JOHN RUDY, Port Huron, MI, pro se.
`
`
` THOMAS W. KRAUSE, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA, for
`appellee Andrei Iancu. Also represented by MARY L.
`KELLY, JOSEPH MATAL, COKE MORGAN STEWART.
` ______________________
`
`Before DYK, CHEN, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`Christopher John Rudy appeals a decision of the Pa-
`tent Trial and Appeal Board (the “Board”), upholding the
`Patent Examiner’s rejection of claims 48, 50–52, and 55–56
`of U.S. Patent Application No. 10/360,681 (“the ’681 appli-
`cation”). We conclude that the Board erred by holding
`
`

`

`2
`
`IN RE: RUDY
`
`claim 52 anticipated by the asserted prior art, but we dis-
`cern no reversible error in the Board’s determinations with
`respect to claims 48 and 50. Accordingly, we vacate the
`decision of the Board with regard to claim 52 and remand
`for further proceedings consistent with this opinion. Be-
`cause claims 55 and 56 depend from claim 52, we also va-
`cate the Board’s decision with respect to those claims.
`BACKGROUND
`I
`The claims of the ’681 application are directed to a
`“web-mounting fishing plug comprising a body having a
`slot or aperture into which a web can be inserted.” J.A. 17.
`According to the specification, a web is an insert such as a
`postage stamp, photograph, drawing, or piece of foil that
`can “enhance [the plug’s] appeal to the fisherman and per-
`haps even the fish.” J.A. 29. The claimed invention is de-
`signed to be “readily adaptable for conveniently mounting
`a web from a wide variety of webs,” thus permitting the
`addition of customized webs as well as devices producing
`light, movement, sound, or smell. J.A. 18. Figure 1 and
`Figure 3 of the ’681 application disclose a front and side
`view of an embodiment of the claimed web-mounting fish-
`ing plug:
`
`J.A. 36. In this embodiment, the body 10 is generally solid
`and has a slot 11 into which web can be inserted. J.A. 23.
`In another embodiment, depicted in Figure 9, the web re-
`ceiving slot is circular:
`
`

`

`IN RE: RUDY
`
`
`3
`
`
`
`J.A. 36.
`
`Claim 48 reads as follows:
`48. A web-mounting fishing plug comprising a plug
`body of a solid material that at least in part can
`transmit light; and, in the plug body, a narrow slot
`essentially along a front to rear or rear to front di-
`rection – wherein:
`the plug body is substantially thicker than
`the narrow slot;
`the narrow slot is:
`blind on one end from the plug body
`and open on an opposite end to the
`blind end such that from the open
`end to the blind end a first dimen-
`sion is defined along a first direc-
`tion;
`characterized in having a first wall
`having a linear and/or curved sec-
`ond dimension along a
`linear
`and/or curved second direction sub-
`stantially perpendicular to the first
`direction and a second wall con-
`forming in shape to that presented
`by the first wall by registering sub-
`stantially therewith but spaced
`apart closely from the first wall to
`define a third dimension between
`
`

`

`4
`
`IN RE: RUDY
`
`the first and second walls such that
`the first dimension and the second
`dimension are both substantially
`greater than the third dimension;
`and
`the plug further comprises the following:
`the thin web inserted into the narrow slot;
`a closure attached to the plug body, which
`covers the narrow slot to protect the thin
`web from moisture when fishing with the
`plug;
`at least one eye for receiving fishing line as-
`sociated with the plug body; and
`attached directly or indirectly to at least
`one of the plug body and the closure, at
`least one fishing hook.
`J.A. 589.
`Claim 50 and 51 recite:
`50. The plug of claim 48, wherein the web is a pho-
`tograph including a person, a postage stamp, a
`trading stamp, a tax stamp, a cartoon, a fishing li-
`cense, a business card, paper currency, or a sheet
`including a logo.
`51. The plug of claim 48, which further comprises
`the following:
`in the plug body, a cavity separate from the
`slot into which an insert additional to the
`thin web inserted into the narrow slot,
`which is selected from the group consisting
`of a sound-emitting insert, a light-emitting
`insert, a movement-providing insert, and a
`smell emitting insert; and
`
`

`

`IN RE: RUDY
`
`
`5
`
`the insert additional to the thin web in-
`serted into the narrow slot.
`J.A. 589–90.
`Claim 52 includes many of the same limitations as the
`above claims, but recites a “kit from which a web-mounting
`fishing plug can be assembled in a home environment,
`which comprises,” in relevant part: (1) “one and only one
`plug body,” (2) “at least one eye for receiving fishing line,”
`(3) “a closure that can be attached to the plug body,” and
`(4) “at least one fishing hook” attachable to the plug body
`or closure. J.A. 590. Claim 52’s requirement of “one and
`only one plug body” is not found in claims 48, 50, or 51.
`Claim 55 adds to the kit of claim 52 the features of claims
`50 and 51, and claim 56 further adds that the “closure can
`be attached to the plug body with the inclusion of threading
`of the closure to the plug body through provision of threads
`on the closure itself corresponding to threads on the plug
`body itself.” J.A. 591.
`
`II
`Mr. Rudy primarily challenges the Board’s affirmance
`of the Examiner’s rejection of claims 48 and 52 as antici-
`pated by U.S. Patent No. 3,423,868 (Le Master). Le Master
`discloses a “tail portion for the main body of a fishing lure”
`that is “adapted to produce an animated motion attractive
`to fish.” J.A. 638 col. 1 ll. 12, 23–24. Le Master’s lure
`
`

`

`6
`
`IN RE: RUDY
`
`comprises a main body 1 attached by eye bolts 6 to a tail
`assembly 5:
`
`J.A. 637. As shown in Figures 3 and 4 of Le Master (repro-
`duced below), tail assembly 5 comprises a “tapered hollow
`tail” body 7 having an interior space 9 and a coaxial central
`post 8. J.A. 638 col. 1 l. 66–col. 4 l. 20.
`Fig. 3
`
`

`

`IN RE: RUDY
`
`
`7
`
`J.A. 637.
`The Examiner found, and the Board agreed, that
`Le Master disclosed each and every limitation of claims 48
`and 52. In particular, with respect to claim 48, the Board
`found that Le Master disclosed a “fishing plug,” and that
`Mr. Rudy had not provided evidentiary support that would
`distinguish a fishing plug from Le Master’s tail portion of
`a fishing lure. The Board also found that Le Master dis-
`closed a “narrow slot” that met all of the dimensional limi-
`tations set forth in claim 48, which also satisfied the
`limitation in claim 48 that the plug body be “substantially
`thicker than the narrow slot.”
`With respect to claim 52, the Board found that “it is
`evident from the description of the tail assembly that the
`components make up a kit and that the tail assembly would
`be assemblable essentially anywhere, including at a per-
`son’s home.” J.A. 6. The Board also found that Le Master
`disclosed the limitation that the kit include “one and only
`one plug body,” as “Le Master may be regarded as being
`made up of a head body 1 and a plug body 7, and . . . plug
`body 7 is only a single plug body.” J.A. 6. The Board fur-
`ther noted that Mr. Rudy did “not contest this characteri-
`zation of Le Master.” J.A. 7.
`Mr. Rudy appeals. We have jurisdiction pursuant to
`28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`Mr. Rudy raises several challenges to the Board’s de-
`termination that Le Master anticipates claims 48 and 52. 1
`
`
`1 Mr. Rudy has also challenged the Board’s affirmance of
`the Examiner’s rejection of dependent claims 50–51 and
`55–56 as obvious over Le Master in view of other prior art
`references. The majority of his arguments, however, are
`premised on his view that Le Master does not disclose
`
`

`

`8
`
`IN RE: RUDY
`
`On appeal, Mr. Rudy bears the burden of proving that the
`Board committed reversible error. In re Watts, 354 F.3d
`1362, 1369
`(Fed. Cir. 2004).
` Anticipation under
`35 U.S.C. § 102(b) is a question of fact, reviewed for sub-
`stantial evidence. In re Gleave, 560 F.3d 1331, 1334–35
`(Fed. Cir. 2009).
`First, Mr. Rudy argues that Le Master does not disclose
`a “fishing plug” as required by the claims, and instead dis-
`closes a tail assembly in an articulated lure. As evidence,
`Mr. Rudy points to a citation to a Wikipedia article in his
`brief to the Examiner that states that a fishing plug “is an
`artificial fishing lure used primarily for casting, which typ-
`ically has a gang hook or hooks.” J.A. 571. The article also
`reportedly states that a fishing plug is “a popular type of
`hard-bodied fishing lure” and that the term “plug” is “usu-
`ally used for shorter, deeper-bodied lures which imitate
`deeper-bodied fish, frogs and other prey.” Id.
`The Board affirmed the Examiner’s finding that
`Le Master’s tail assembly discloses all of Mr. Rudy’s cited
`elements of a fishing plug, in that it is hard-bodied, is in-
`tended to be cast into the water, and has gang hooks at-
`tached thereto. The Board also noted that Mr. Rudy had
`failed to provide full copies of the evidence he relied upon,
`which limited its review. We agree that Mr. Rudy has not
`provided sufficient evidentiary support to distinguish the
`claimed “fishing plug” from the type of lure described in
`Le Master. Without further evidence that a person of ordi-
`nary skill in the art would understand the word “fishing
`plug” to exclude Le Master’s tail assembly, or a specific def-
`inition of the word “fishing plug” in the specification, we
`
`
`every element of independent claims 48 and 52. We have
`also considered Mr. Rudy’s arguments that are specific to
`only the dependent claims, but find them unpersuasive.
`
`

`

`IN RE: RUDY
`
`
`9
`
`see no error in the Board’s decision affirming the Exam-
`iner’s rejection.
`Mr. Rudy also argues that Le Master’s tail piece alone
`cannot anticipate his claims, because without Le Master’s
`main body attachment, the tail piece will not achieve its
`intended purpose of producing an animated motion attrac-
`tive to fish. The requirement for anticipation, however, is
`that the prior art reference disclose “each and every limi-
`tation of the claimed invention.” Schering Corp. v. Geneva
`Pharmaceuticals, 339 F.3d 1373, 1377 (Fed. Cir. 2003). So
`long as Le Master’s tail assembly discloses all the claimed
`features, it anticipates Mr. Rudy’s claims. Because claims
`48 and 52 do not require that the fishing plug produce an
`animated motion attractive to fish, this feature of Le Mas-
`ter is irrelevant to the question of anticipation.
`Mr. Rudy next argues that Le Master does not disclose
`the limitation in claims 48 and 52 that the walls of the slot
`be substantially parallel to each other, as the slot in
`Le Master is tapered to a narrow point. Contrary to Mr.
`Rudy’s argument, however, claims 48 and 52 are not so lim-
`ited. Instead, the claims state that the second wall of the
`narrow slot “conform[s] in shape to that presented by the
`first wall by registering substantially therewith.” J.A. 589.
`As reasonably found by the Examiner, the fact that
`Le Master’s slot has tapered ends has no bearing on
`whether the walls of Le Master’s interior space register
`substantially with one another. We thus conclude that
`substantial evidence supports the Examiner’s finding that
`the walls of Le Master’s interior space satisfy this claim
`limitation.
`Similarly, Mr. Rudy argues that Le Master does not
`disclose the limitation that “the plug body is substantially
`thicker than the narrow slot.” In particular, Mr. Rudy ar-
`gues that Le Master does not meet the dimensional re-
`quirements of the narrow slot disclosed in claims 48 and
`52, as the width of the outer wall of the plug body is not
`
`

`

`10
`
`IN RE: RUDY
`
`substantially thicker than the width of narrow slot. How-
`ever, the dimensional limitations of claims 48 and 52 only
`require that the length of the wall of the slot from the open
`end to the closed end (the “first dimension”) and the per-
`pendicular width of that wall (the “second dimension”) be
`substantially greater than the distance between the two
`walls of the slot defining the air space (the “third dimen-
`sion”). See J.A. 589. Substantial evidence supports the
`Board’s finding that Le Master meets these requirements.
`While Mr. Rudy attempts to limit the “plug body” that must
`be substantially thicker than the narrow slot to the outer
`walls of the plug body, the plain language of the claims does
`not compel such a restriction. It is thus reasonable to in-
`terpret Le Master’s plug body, when both the walls and co-
`axial central post are considered, as being “substantially
`thicker” than the narrow slot.
`Looking specifically at claim 52, Mr. Rudy argues that
`Le Master does not disclose or describe a kit assembly for
`its fishing lure. As the Board properly pointed out, how-
`ever, Le Master presents the invention as an assortment of
`components that can be assembled at any location. J.A. 6.
`The description of a “kit” that “can be assembled for home
`use” in the preamble is the exact type of intended use we
`have consistently held does not limit claim scope. See Cat-
`alina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d
`801, 808 (Fed. Cir. 2002) (“[A] preamble is not limiting
`‘where a patentee defines a structurally complete invention
`in the claim body and uses the preamble only to state a
`purpose or intended use for the invention.’” (quoting Rowe
`v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997))). Accordingly,
`Le Master need not expressly disclose a kit for home as-
`sembly in order to anticipate claim 52. Instead, as the
`Board indeed found, Le Master need only disclose the nec-
`essary components of the claimed kit that are capable of
`assembly in a home environment.
`Mr. Rudy finally argues that Le Master cannot antici-
`pate claim 52 because claim 52 expressly limits the kit to
`
`

`

`IN RE: RUDY
`
`
`11
`
`include “one and only one plug body,” while Le Master dis-
`closes a plug body consisting of two pieces. We agree with
`Mr. Rudy. The Board erred in its adoption of the Exam-
`iner’s analysis of this claim limitation. The Examiner’s
`characterization of Le Master as potentially describing a
`“head body” and a “plug body” is contradicted by Le Master
`itself, which describes the invention as a “tail portion for
`the main body of a fishing lure.” J.A. 638 col. 1 l. 12. The
`Examiner’s renaming of Le Master’s components does not
`change the fact that the “body” in Le Master includes both
`the “tail portion” and the segment to which the tail portion
`is attached.2 While it may be that Le Master’s disclosure
`of both a main body and a tail could together constitute
`“one and only one plug body,” this is not the ground that
`the Examiner relied on in its rejection, nor the Board in its
`affirmance. We therefore remand to the Board to consider
`whether claim 52’s limitation of “one and only one plug
`body” requires that the plug body consist of a single com-
`ponent, or whether Le Master’s disclosure of a plug body
`consisting of two separate components suffices to disclose
`this limitation. As the Board’s affirmance of the Exam-
`iner’s obviousness rejections of dependent claims 55–56 re-
`lied on Le Master’s disclosure of this limitation, we also
`vacate the Board’s decision with respect to those claims.
`CONCLUSION
`For the foregoing reasons, we affirm the Board’s opin-
`ion with respect to claims 48 and 50–51, vacate the Board’s
`opinion with respect to claims 52 and 55–56, and remand
`for further proceedings consistent with this opinion.
`
`
`2 While the Board states that Mr. Rudy did not contest
`this characterization of Le Master’s components, J.A. 6–7,
`Mr. Rudy unequivocally argued that two separate compo-
`nents could not satisfy the limitation of “one and only one
`plug body,” J.A. 573, 634.
`
`

`

`12
`
`IN RE: RUDY
`
`
`AFFIRMED IN PART, VACATED AND REMANDED
`IN PART
`
`COSTS
`
`No costs.
`
`

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