In Re: Rudy ( 2019 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: CHRISTOPHER JOHN RUDY,
Appellant
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2018-2106
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 10/360,681.
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Decided: July 18, 2019
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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.
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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.
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AFFIRMED IN PART, VACATED AND REMANDED
IN PART
COSTS
No costs.