DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
As per the submission to the Office filed on 12/18/2025, the following represents the changes from the previous claims: Claims 1-4, 6-7, 9, 11-13 and 22 were amended, Claim 5 was withdrawn, and Claims 14-20 were canceled. Claims 1-4 and 6-13 and 21-22 are presented for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For claims 6-7, the limitation “the outer portion” in line 1 lacks antecedent basis.
Claim 8 is rejected as being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4 and 6-12 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Hobbins (US 20070261289 A1) in view of Green (US 4790100 A).
Regarding claim 1, Hobbins teaches a lure, comprising:
a core (5) having a surface shape with added coloration (fig. 1A and [0047]) that resembles an anatomy of a species of food for a game fish ([0047] and fig. 1A); and
an outer translucent portion (10 and [0047]) molded in an external shape around the core (figs. 1A-1B and abstract, [0045] as the core is placed within the outer translucent portion during the molding process) to encapsulate the core ([0042]), the outer translucent portion being at least partially flexible ([0045]) and defining a surface (outer surface of 10) adapted to cause the lure to move in conformance with a mode of transit as the lure is moved through water (intended use as Hobbins is capable of defining a surface adapted to cause the lure to move in conformance with a mode of transit as the lure is moved through water ([0042] and [0044])).
However, Hobbins does not explicitly state a solid core, the solid core including different regions with varying degrees of flexibility; and the outer portion is from a same material as the solid core.
Green teaches a solid core (9 and fig. 3 depict the core to be solid) including different regions (10 and 11) with varying degrees of flexibility (Col. 4, lines 44-50 and Col. 6, lines 11-14 as 11 is flexible and can vary in thickness); and the outer portion (2) is from a same material as the solid core (Col. 5, lines 38-42 as both the outer portion and the solid core can be molded of a soft plastic, and so both are made of the same material).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the core of Hobbins to include a solid core, the solid core including different regions with varying degrees of flexibility; and the outer portion is from a same material as the solid core as taught by Green in order to enhance the appearance of the lure to look like it is swimming (Col. 4, lines 63-66 of Green) and to form a lure that will further attract a specific type of fish (Col. 5, lines 38-42 of Green).
Regarding claim 2, Hobbins as modified by Green teaches the lure of claim 1, and Hobbins further teaches wherein the solid core presents a three-dimensional appearance ([0042], [0043] and [0047] and Fig. 1A as the solid core is a braided reinforcement, and so has a three-dimensional appearance) of at least one of: a schooling baitfish, a bottom baitfish, a crustacean, an amphibian, a worm, a grub, an insect, a spider, a leech, or other creature attractive to fish ([0047] and Fig. 1A).
Regarding claim 3, Hobbins as modified by Green teaches the lure of claim 1, and Hobbins further teaches wherein the surface shape and coloration of the solid core represents an anatomical feature of a creature ([0047] and fig. 1A).
Regarding claim 4, Hobbins as modified by Green teaches the lure of claim 3, and Hobbins further teaches wherein the surface shape and coloration of the solid core comprises at least one of: paint, one or more metallic flakes or pieces, or glitter ([0047]).
Regarding claim 6, Hobbins as modified by Green teaches the lure of claim 1, and Hobbins further teaches wherein the outer portion is sufficiently translucent to not significantly distort an appearance of the solid core when viewed in at least one of air or water ([0047]).
Regarding claim 7, Hobbins as modified by Green teaches the lure of claim 1, and Hobbins further teaches wherein the outer portion comprises at least one physical feature not comprised or represented by the solid core (fig. 1B).
Regarding claim 8, Hobbins as modified by Green teaches the lure of claim 7, and Hobbins further teaches wherein the at least one physical feature comprises at least one of a fin, wing, tail, flange, flap or other hydrodynamic or mechanical fluid control surface (fig. 1B).
Regarding claim 9, Hobbins as modified by Green teaches the lure of claim 1, and Hobbins further teaches wherein the outer translucent portion comprises coloration adapted to affect a surface appearance of at least a portion of the lure ([0045] as the outer portion 10 can be made of any material, and so can be made of a material with coloration).
Regarding claim 10, Hobbins as modified by Green teaches the lure of claim 9, and Hobbins further teaches wherein the coloration comprises at least one of paint, one or more metallic flakes or parts, or glitter ([0045] as the outer translucent portion 10 can be made of any material, and so can comprise of at least one of paint, one or more metallic flakes or parts, or glitter).
Regarding claim 11, Hobbins as modified by Green teaches the lure of claim 1, and Hobbins further teaches wherein at least a portion of the solid core is flexible ([0044]).
Regarding claim 12, Hobbins as modified by Green teaches the lure of claim 1, and Green further teaches wherein the same material comprises a soft polymer (Col. 5, lines 38-42).
Regarding claim 21, Hobbins as modified by Green teaches the lure of claim 1, and Hobbins further teaches wherein the species of food for the game fish is a real species of food for the game fish (Fig. 1A).
Regarding claim 22, Hobbins as modified by Green teaches the lure of claim 1, and Green further teaches wherein the solid core (9) defines a durometer gradient (Col. 4, lines 44-50 and Col. 6, lines 11-14 as 11 is flexible and can vary in thickness and 10 is a pellet-like body).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hobbins as modified by Green as applied to claim 1 above, and further in view of Hobbins (US 20070261289 A1 hereon referred to as Hobbins’2).
Regarding claim 13, Hobbins as modified by Green teaches the lure of claim 1, and Hobbins further teaches wherein the outer translucent portion (10) defines a durometer gradient ([0045] as the outer translucent portion defines a durometer gradient as it is made of a soft polymer and fig. 1B depicts the outer translucent portion to be varying in thickness).
In the event that applicant disagrees with examiner’s interpretation of the durometer gradient, Hobbins’2 teaches wherein the outer translucent portion (hybrid musky fishing lure in [0057]) defines the durometer gradient ([0057] as the hybrid musky fishing lure can have a hard plastic body and a soft bait tail).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the outer translucent portion of Hobbins as modified by Green to have a durometer gradient as taught by Hobbins’2 in order to give the lure a more realistic appearance as it moves through the water as it is well known in the art.
Response to Arguments
Applicant’s arguments filed on 12/18/2025 have been fully considered but they are not persuasive.
Applicant argues “Our observation is that Hobbins discloses a reinforcement shell - the inner item always being a fiber braid reinforcement shell (FBRS) - that is only ever a different material from Hobbins' soft bait lure body - the outer item always being an elastomer. Hobbins therefore does not disclose or suggest "...molded in an external shape around the solid core from a same material as the solid core..." as recited in claim 1.
Green is specifically directed to a flexible fishing lure with removable core member, which would not be regarded by the person of ordinary skill in the art to be useful for suggesting that an outer translucent portion (which Green does not disclose) is molded to an external shape around the solid core from a same material as the solid core to encapsulate the solid core. Green does not disclose such a configuration and, were Green to be so modified then Green would be unable to provide a flexible fishing lure with removable core member, as Green requires.”.
The examiner respectively disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues “Furthermore, there is nothing in Green that is encapsulated and is also flexible.”.
The examiner respectively disagrees as Hobbins is relied upon to teach the outer portion to encapsulate the core ([0042] of Hobbins).
Applicant further argues “Claim 13 was rejected under 35 U.S.C. 103 as being unpatentable over Hobbins, Green and Hobbins'2 (United States Patent Application Publication No. 2007/0261289A1). We are unsure of the propriety of a single Hobbins publication being regarded as two different publications for supporting an obviousness rejection. If Hobbins is being cited as having alternative embodiments, we would value a clarification to that effect. If there is another Hobbins reference that should have been cited, we would value clarification to that effect.”.
Hobbins teaches a different embodiment in [0057] to teach the durometer gradient. While this different embodiment is within the same publication as the previously stated Hobbins, the different embodiment is treated as a separate reference.
All other claims with arguments are similarly unpersuasive as they relate to claim 1 and the art used for those claims were used for other features that are not claimed in claim 1.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAHAR ALMATRAHI whose telephone number is (571)272-2470. The examiner can normally be reached M-F 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached at 571-272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAHAR ALMATRAHI/Examiner, Art Unit 3643 /DARREN W ARK/Primary Examiner, Art Unit 3647