dissenting.
I respectfully dissent. The district court correctly held, in a thorough and well-reasoned opinion, that United States Patent No. 4,530,179 (“the T79 patent”), issued in 1985, was invalid because the fishing lure it claims would have been obvious under 35 U.S.C. § 103 in light of the prior art before the district court. I would not overturn that decision and do not believe the majority has shown a basis for doing so.
The ’179 patent has 20 claims. Only three of the claims — 1, 11, and 20 — are independent. Claim 1 reads as follows:
In a fishing lure comprising a body part and at least one hook part connected thereto, the improvement wherein said body part is formed of a plastisol of a resin dispersed in an organic solvent, said plastisol being impregnated with sufficient salt to impart a salty taste to said body part.
Claim 11 reads as follows:
A body for a fishing lure in the form of a soft-bodied animal, said body being formed of a plastisol of a resin dispersed in an organic solvent, said plastisol being impregnated with sufficient salt to impart a salty taste to said body part.
Claim 20 reads as follows:
A body for a fishing lure in the form of a soft-bodied worm, frog or lizard, said body being formed of a resilient plastic material impregnated with sufficient salt to impart a salty taste to said body part, said plastic material being substantially free of organic fish attractant.
The dependent claims contain additional limitations, concerning, for example, the shape of the lure, the type of plastisol, and the amount of salt.
The 179 patent itself admits that all of the elements of the claimed invention, other than the addition of salt to a conventional plastisol lure, were known in the art. For example, the patent specification states the following:
Conventional fishing lures having soft plastic bodies are well known. Such lures are *959frequently formed as worms, frogs, lizards, small fish or the like. In addition to the body part, such lures include a hook part, comprising one or more hooks, and an attachment part for attaching the lure to the line.... In some instances, such lures include an odorant which produces a scent to attract fish.
Col. 1,11. 8-22.
The plastisol is formulated and heated according to known techniques for controlling the properties of plastisols, to give the lure body a desired degree of resilience and tensile strength.
Col. 2,11. 3-6.
With respect to the limitation of claim 20 regarding the absence of “organic fish attractant,” the “Background of the Invention” section of the ’179 patent recognizes this limitation was present in the prior art. There, the patentee discussed the use of conventional plastic lures that attract fish due to their physical resemblance to frogs, insects or other animals, their “flash” as they move through the water and the sound waves they create. Col.l, 11. 8-22. The patentee also disclosed that, “[i]n some instances,” odorants could be added. Col. 1,11. 21-22. It is inferable that at least the conventional lures without odorants did not contain organic attractants. With respect to the limitation regarding the use of an organic solvent to disperse the plastic, the patent discloses that “[m]any different plasticizers may be used in the plastisols, and may be chosen in accordance with known criteria to provide proper physical properties____” Col. 2, 11. 20-25. Moreover, one of the solvents explicitly disclosed by Larew is also disclosed by the prior art, United States Patent No. 2,979,778 to FitzSimons (“the ’778 patent”).
Therefore, the only new element is the addition of salt as a non-organic attractant. However, it is beyond dispute that it was known in the prior art that fish are attracted to certain smells and tastes. As discussed by the district court, the ’778 patent clearly discloses that fish are attracted to certain tastes. An object of the invention of the ’778 patent was to “provide a method for making an artificial lure having an odor and texture that duplicates, as nearly as possible, the odor and texture or taste of natural bait.” In hypothesizing why the invention was successful, the ’778 patent states that the fish appeared to not be discouraged by one unsuccessful nibble but instead returned in an effort to consume the entire bait, likely “attributable to the fact that the texture of the plastic body simulates the taste of the nymph, while the attractant simulates its odor.” Likewise a 1972 article states that fish depend heavily on their senses of smell and taste. Richard Martin, “Spice Up Your Lures,” Outdoor Life, December 1972 at 80. This article also discloses that one study showed that certain fish are “able to detect salt and sugar in truly miniscule amounts.” Id. at 127. Although not discussed by the district court, United States Patent No. 3,854,234, cited in the ’179 patent, discloses an artificial bait with a doughball-type core incorporating cheese, animal by-products, com syrup or cereal grain which “emits enticing and tantalizing odors and a flavor source known to be savory and attractive to fish.”
Moreover, the prior art demonstrates that the particular substance used as a flavor source in this invention — salt—was a known fish attractant. For example, in Byron Dalrymple, Modem Book of the Black Bass 90 (1972), the author states:
Salt is definitely an attractor. This is thought to be the reason that solutions used to preserve such items as pork rind, which contain much salt, are actually an attractor. I have caught dozens of bass with fly-fishing tackle using a small strip of pork rind taken from a salt solution and impaled on a bare hook. I have watched many of them take the lure. They approach, appear to sniff or evaluate it, then inhale it.
Also, United States Patent No. 3,079,722, issued in 1963, discloses a fishing lure with an inner body portion consisting of water, yeast, salt and squirrel hair. When the inner body becomes moist, it “emits a peculiar odor which is very effective in attracting fish to the lure.” Additionally, an entry entitled the Salted Dynamite for Danker Trout, in The 197Jp Sports Afield Almanac (Ted Resting ed., 1974) discloses that one method of catch*960ing bigger fish is to add salt to minnows and freeze before use. The almanac further states “[r]eal monster trout will take those salt-flavored minnows as if they are going out of style.” Id.
Thus, it was well-known in the art that fish were attracted by certain smells and tastes and that salt was just such an attractor, even in small quantities. In light of this prior art, the district court correctly held that the ’179 patent is invalid for obviousness.
I believe the strongest argument presented by Gene Larew Tackle, Inc. (“Larew”) and the majority opinion in favor of reversing the district court is that the prior art taught away from adding salt to a plastic lure. Larew argues the ’778 patent “specifically cautioned against the use of any plastic-insoluble additive as a fish attractant in his plastisol lure.” Larew also points to the testimony of two witnesses who testified that they were afraid a violent reaction, even an explosion, might occur if a foreign substance was added to the plastisol.
This argument, however, does not change my view of the correct outcome. The ’778 patent actually says only that “[w]hile a wide variety of attractant materials are available, it is desirable that the oil or other attractant be miscible in the plasticizer.” Thus, it does not specifically caution against the use of salt, but only suggests the use of a miscible, i.e., a mixable, material is more desirable. Salt is miscible in plastic, at least long enough to pour the lures, as evidenced by the success of the salty lures. It is not required to be soluble. Thus, the ’778 patent does not teach away from the invention of the ’179 patent.
As for the testimony of the witnesses, which we assume to be true on summary judgment, such testimony is insufficient to overcome the overwhelming evidence of obviousness before the district court. Those of skill in the art had been adding a variety of substances to plastic lures for quite some time, see, e.g., the ’778 patent, and Larew has failed to point to any evidence which would demonstrate that salt was thought to be any different than any of the other additives. Moreover, the trial court found that the record demonstrated as a matter of law that two other individuals had added some quantity of salt to their lures, either as a filler or to keep the mold from sticking, without ill effect.
Likewise, even when the evidence of secondary indicia of obviousness is considered, as it must be, my view of the correct result is not changed. Even where such evidence exists, it may not be compelling enough to overcome the strong showing of obviousness in light of the prior art. See B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1583, 37 USPQ2d 1314, 1318-19 (Fed. Cir.1996) (“Considering the minor differences between the claimed invention and the teachings of [the prior art], the secondary considerations were not sufficiently compelling.”). This is such a case.