DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/16/2024.
Applicant's election with traverse of Sub-species IV, 2, and iv in the reply filed on 02/16/2024 is acknowledged. The traversal is on the ground(s) that “It is respectfully submitted that the subject matter of all species is sufficiently related that a thorough search for the subject matter of any one species would encompass a search for the subject matter of the remaining species…could be made without serious burden…the examiner must examine them on the merits…”. This is not found persuasive because each of the species requires a unique search not required in the search of the other species and that the uniqueness of each search may require employing different search strategies or search queries such as the “one or more reflecting surfaces or one or more reflectors…are provided on each of at least any two of an outer face of the main body portion, an inner face of the main body portion, and an inside cavity”. If applicant is traversing on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the Examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-11 and 13-15 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.
In regard to claim 1, the phrase “one or more reflecting surfaces that are planar or one or more reflectors with planar surfaces that are each configured to specularly reflect light from the outside, and are provided on each of at least any two of an outer face of the main body portion, an inner face of the main body portion, and an inside of the cavity” renders the claim vague and indefinite since the elected Sub-species IV shown in Figure 5 has reflectors 7 disposed only on an inner face of the main body portion 2 and not any other additional location to include either “an outer face of the main body portion” or “an inside of the cavity”. The language in question appears to be directed to the non-elected embodiments illustrated in Figures 9-15 and not to the elected embodiment as illustrated in Figure 5. The elected embodiment of Sub-species IV illustrated in Figure 5 only has the plurality of reflectors in lure 1, one or more reflecting members 4 provided on an inner face of main body portion 2 and therefore the phrase in question of claim 1 fails to properly recite the elected embodiment of Sub-species IV since the phrase in question is not generic to Sub-species IV because the phrase in question recites that the one or more reflecting surfaces/reflectors are provided on each of at least two of an outer face of the main body portion, an inner face of the main body portion, and an inside of the cavity. That is, Sub-species IV only requires the reflecting members 4 being on an inner face of the main body portion 2 and that there are no other reflecting members 4 anywhere else on the lure for fishing which includes either the outer face of the main body portion or inside of the cavity as claimed in the phrase in question.
In regard to claim 2, the phrase “wherein the one or more reflecting surfaces or the one or more reflectors that are configured to specularly reflect the light from the outside are provided on each of the outer face of the main body portion, the inner face of the main body portion, and the inside of the cavity” renders the claim vague and indefinite since the elected Sub-species IV shown in Figure 5 has reflectors 7 disposed only on an inner face of the main body portion 2 and not any other additional location to include either “an outer face of the main body portion” or “an inside of the cavity”. The language in question appears to be directed to the non-elected embodiments illustrated in Figures 9-15 and not to the elected embodiment as illustrated in Figure 5. The elected embodiment of Sub-species IV illustrated in Figure 5 only has the plurality of reflectors in lure 1, one or more reflecting members 4 provided on an inner face of main body portion 2 and therefore the phrase in question of claim 1 fails to properly recite the elected embodiment of Sub-species IV since the phrase in question is not generic to Sub-species IV because the phrase in question recites that the one or more reflecting surfaces/reflectors are provided on each of at least two of an outer face of the main body portion, an inner face of the main body portion, and an inside of the cavity. That is, Sub-species IV only requires the reflecting members 4 being on an inner face of the main body portion 2 and that there are no other reflecting members 4 anywhere else on the lure for fishing which includes either the outer face of the main body portion or inside of the cavity as claimed in the phrase in question.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-11 and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by JP 10-127209 to Ito.
In regard to claim 1, Ito discloses a lure for fishing comprising: a main body portion (1,2) that includes a cavity (cavity defined inside 1) inside the main body portion, wherein a portion or an entirety of the cavity is visible from outside (lure body 1 is formed by joining a pair of surface-treated transparent body halves 2 to each other), and one or more reflecting surfaces (opposing sides of reflecting plate 3) that are planar or one or more reflectors with planar surfaces (see Fig. 1) that are each configured to specularly reflect light from the outside (reflecting plate 3 is formed from metal and its surface is subjected to metal vapor deposition processing and its opposing surfaces are flat and smooth), and are provided on one (interpreted in light of the 35 U.S.C. 112(b) rejection above) of
In regard to claim 2, Ito discloses wherein the one or more reflecting surfaces (opposing sides of reflecting plate 3) or the one or more reflectors that are configured to specularly reflect the light from the outside are provided on one (interpreted in light of the 35 U.S.C. 112(b) rejection above) of the outer face of the main body portion, the inner face of the main body portion (inner face defined by 1,2), and the inside of the cavity (3 is inside 1), and the lure is configured so that the light from the outside is specularly reflected once (light from the outside is reflected once off of each of the opposing sides of 3) or plural times on one of the outer face of the main body portion, the inner face of the main body portion (inner face defined by 1,2), and the inside of the cavity (inside 1).
In regard to claim 3, Ito discloses wherein each of the one or more reflecting surfaces (opposing sides of reflecting plate 3) or the one or more reflectors has a circular shape, a polygonal shape (see Fig. 1), an arc shape, or a scaly shape.
In regard to claim 4, Ito discloses wherein at least some of the one or more reflecting surfaces (opposing sides of reflecting plate 3) or at least some of the one or more reflectors have a wave shape, a polygonal shape (see Fig. 1), a polyhedral shape, or a tile shape (see Fig. 1).
In regard to claim 5, Ito discloses wherein in a case where the one or more reflecting surfaces (opposing sides of reflecting plate 3) or the one or more reflectors are provided on the inside of the cavity (inside of 1), and the one or more reflecting surfaces (opposing sides of reflecting plate 3) or the one or more reflectors are directly or indirectly supported by a portion (at 4a-d of 1) of the main body portion (1,2).
In regard to claim 6, Ito discloses wherein the one or more reflecting surfaces (opposing sides of reflecting plate 3) or the one or more reflectors are formed integrally with the main body portion (3 is assembled with 1,2 to form an integral fishing lure assembly as shown in Figs. 1-2).
In regard to claim 7, Ito discloses wherein the main body portion (1,2) is configured to diffuse and transmit the light from the outside (lure body 1 is formed by joining a pair of surface-treated transparent body halves 2 to each other).
In regard to claim 8, Ito discloses wherein the light from the outside or light reflected to the outside develops color (the lure body 1 is given a color and can be appropriately changed according to the target fish and the color can be applied to the surface of the lure body 1 by the surface treatment and by mounting the reflector 3 in the transparent lure body 1, a unique color is exhibited by a synergistic effect of the reflector 3 and the surface treatment of the lure body 1 itself) from transmission through the main body portion (1,2).
In regard to claim 9, Ito discloses wherein the one or more reflecting surfaces (opposing sides of reflecting plate 3) or the one or more reflectors are provided on the inner face (at 4a-d of 1) of the main body portion, and the one or more reflecting surfaces (opposing sides of reflecting plate 3) or the one or more reflectors are formed by using vapor deposition coating (metal vapor deposition processing), a holographic film hologram processing), a hologram sheet (hologram processing), metal adhesion, resin adhesion, or glass-sheet adhesion.
In regard to claim 10, Ito discloses wherein the main body portion (1,2) is of resin (lure body 1 made of plastic that can be formed by injection molding) or metal.
In regard to claim 11, Ito discloses wherein the lure has a plurality of the reflecting surfaces (opposing sides of reflecting plate 3) or a plurality of the reflectors, and each of the plurality of the reflecting surfaces (opposing sides of reflecting plate 3) or each of the plurality of the reflectors has an identical shape (see Fig. 1).
In regard to claim 13, Ito discloses wherein each of the one or more reflecting surfaces (opposing sides of reflecting plate 3) or each of the one or more reflectors are configured to reflect light at a brightness that is 40% or more of the brightness of ideal specular reflection (surfaces of the opposing sides of reflecting plate 3 are formed by metal vapor deposition processing and they are planar surfaces as shown in Fig. 1).
In regard to claim 14, Ito discloses wherein the main body portion (1,2) simulates the shape of a bait fish (1,2 has the general shape of a baitfish as shown in Figs. 1-2).
In regard to claim 15, Ito discloses wherein the lure is a stick bait (elongated shape of 1,2 resembles a stick), a spoon, a plug (1,2 resembles a plug type fishing lure), a spinner or a jig.
Claim(s) 1-7, 9, 10, 11, 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by JP 2010-154762 to Hayakawa.
In regard to claim 1, Hayakawa discloses a lure for fishing comprising: a main body portion (2) that includes a cavity (A) inside the main body portion, wherein a portion or an entirety of the cavity is visible from outside (lure body 2 having transparency), and one or more reflecting surfaces (4) that are planar (see Figs. 1-2 or 11-12) or one or more reflectors (4 on 3a-b or 7a-b) with planar surfaces (see Figs. 1-2 or 11-12) that are each configured to specularly (reflecting plate 3 or 7, wherein the reflecting plate 3 is formed of synthetic resin and in order to form the reflecting surface 4 on the surface thereof, a metal thin film layer is formed by plating or vapor deposition, a metal plate or a metal foil is attached) reflect light from the outside (reflecting plate 3 or 7, wherein the reflecting plate 3 is formed of synthetic resin and in order to form the reflecting surface 4 on the surface thereof, a metal thin film layer is formed by plating or vapor deposition, a metal plate or a metal foil is attached), and are provided on one of (interpreted in light of the 35 U.S.C. 112(b) rejection above) of at least any two of an outer face of the main body portion, an inner face (2d) of the main body portion, and an inside of the cavity (A), and the lure is configured so that light from the outside is specularly reflected once (light reflected off of one of 4 on 3a or 7a in Fig. 3 or 12) or plural times on each of the at least any two of the outer face of the main body portion, the inner face (light reflected off of 4 on 3a or 7a then reflects off of 4b or 7b in Fig. 3 or 12) of the main body portion, and the inside of the cavity (light reflected off of 4 on 3a or 7a then reflects off of 4b or 7b in Fig. 3 or 12).
In regard to claim 2, Hayakawa discloses wherein the one or more reflecting surfaces (4) or the one or more reflectors (4 on 3a-b or 7a-b) that are configured to specularly reflect the light from the outside are provided on one (interpreted in light of the 35 U.S.C. 112(b) rejection above) of the outer face of the main body portion, the inner face of the main body portion (2d), and the inside of the cavity (A), and the lure is configured so that the light from the outside is specularly reflected once (light reflected off of one of 4 on 3a or 7a in Fig. 3 or 12) or plural times (light reflected off of 4 on 3a or 7a then reflects off of 4b or 7b in Fig. 3 or 12) on one of the outer face of the main body portion, the inner face of the main body portion (2d), and the inside of the cavity (A).
In regard to claim 3, Hayakawa discloses wherein each of the one or more reflecting surfaces (4) or the one or more reflectors (4 on 3a-b or 7a-b) has a circular shape, a polygonal shape (see Figs. 1-2 or 10-11), an arc shape, or a scaly shape.
In regard to claim 4, Hayakawa discloses wherein at least some of the one or more reflecting surfaces (4) or at least some of the one or more reflectors (4 on 3a-b or 7a-b) have a wave shape, a polygonal shape (see Figs. 1-2 or 10-11), a polyhedral shape, or a tile shape (see Figs. 1-2 or 10-11).
In regard to claim 5, Hayakawa discloses wherein in a case where the one or more reflecting surfaces (4) or the one or more reflectors (4 on 3a-b or 7a-b) are provided on the inside of the cavity (A), and the one or more reflecting surfaces (4) or the one or more reflectors (4 on 3a-b or 7a-b) are directly or indirectly supported by a portion (2d; see 3 Fig. or 12) of the main body portion (2).
In regard to claim 6, Hayakawa discloses wherein the one or more reflecting surfaces (4) or the one or more reflectors (4 on 3a-b or 7a-b) are formed integrally with the main body portion (3 or 7 is integrally formed with 2).
In regard to claim 7, Hayakawa discloses wherein the main body portion (2) is configured to diffuse and transmit the light from the outside (2 is transparent).
In regard to claim 9, Hayakawa discloses wherein the one or more reflecting surfaces (4) or the one or more reflectors (4 on 3a-b or 7a-b) are provided on the inner face (2d) of the main body portion, and the one or more reflecting surfaces (4) or the one or more reflectors (4 on 3a-b or 7a-b) are formed by using vapor deposition coating (wherein the reflecting plate 3 is formed of synthetic resin and in order to form the reflecting surface 4 on the surface thereof, a metal thin film layer is formed by plating or vapor deposition, a metal plate or a metal foil is attached), a holographic film, a hologram sheet, metal adhesion, resin adhesion, or glass-sheet adhesion.
In regard to claim 10, Hayakawa discloses wherein the main body portion (2) is of resin (lure body 2 of synthetic resin) or metal.
In regard to claim 11, Hayakawa discloses wherein the lure has a plurality of the reflecting surfaces (4) or a plurality of the reflectors (4 on 3a-b or 7a-b), and each of the plurality of the reflecting surfaces (4) or each of the plurality of the reflectors (4 on 3a-b or 7a-b) has an identical shape (see Figs. 1-2 or 10-11).
In regard to claim 13, Hayakawa discloses wherein each of the one or more reflecting surfaces (4) or each of the one or more reflectors (4 on 3a-b or 7a-b) are configured to reflect light at a brightness that is 40% or more of the brightness of ideal specular reflection (the metal thin film layer formed by plating or vapor deposition, a metal plate or a metal foil is attached is capable of specularly reflecting light at a brightness that is 40% or more of the brightness of ideal specular reflection).
In regard to claim 14, Hayakawa discloses wherein the main body portion (2) simulates the shape of a bait fish (see Figs. 1-2 or 10-11).
In regard to claim 15, Hayakawa discloses wherein the lure is a stick bait (see Figs. 1-2 or 10-11), a spoon, a plug (see Figs. 1-2 or 10-11), a spinner or a jig.
Claim Rejections - 35 USC § 103
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.
Claim(s) 6 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 10-127209 to Ito in view of Yoshida 6,202,337.
Alternatively in regard to claims 6 and 9, Ito discloses the one or more reflecting surfaces (opposing sides of reflecting plate 3) being formed separately from the main body portion (1,2), but does not disclose wherein the one or more reflecting surfaces or reflectors are formed integrally with the main body portion or the one or more reflecting surfaces or the one or more reflectors are provided on the inner surface of the main body portion. Yoshida discloses a fishing lure (2) comprising a main body portion (main body of 2) having a cavity (cavity inside 2 shown in Fig. 2) therein, wherein the cavity is partially or entirely visible from an outside (plastic is transparent or translucent material); and one or more reflecting surfaces (5) capable of reflecting light from the outside is provided on the main body portion (the colored coating 5 may be implemented by an integral forming technique such as press bonding, hot stamping, or adhesive bonding or a colored sheet or printing, painting or vacuum forming of a pattern), the one or more reflecting surfaces are provided on the inner surface (each of the pair of identical complementary lure members 11,12 has a reflective layer 13 provided on the inner wall thereof comprising a multiplicity of projections 14) of the main body portion, and the one or more reflecting surfaces (reflection film 15) are formed of vapor deposition coating (reflective film 15 may be implemented by developing a vapor deposited film). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the one or more reflecting surfaces of Ito such that they are formed integrally with the main body portion and are provided on the inner surface of the main body portion in view of Yoshida in order to provide one or more reflecting surfaces which are placed as close as possible to the exterior surface of the main body portion so as to lessen the distance traveled and to arrange the reflecting surfaces about the inner periphery of the main body portion so that incoming light from all directions with respect to the main body portion may be reflected outwardly to all surrounding areas of the lure so as to visually attract predatory fish to the fishing lure from all locations about the lure so as to increase the chances of catch the lurking predatory fish.
Claim(s) 6 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2010-154762 to Hayakawa in view of Yoshida 6,202,337.
Alternatively in regard to claims 6 and 9, Hayakawa discloses the one or more reflecting surfaces (4) or reflectors (4 on 3a-b or 7a-b) being formed separately from the main body portion (2), but does not disclose wherein the one or more reflecting surfaces or reflectors are formed integrally with the main body portion or the one or more reflecting surfaces or the one or more reflectors are provided on the inner surface of the main body portion. Yoshida discloses a fishing lure (2) comprising a main body portion (main body of 2) having a cavity (cavity inside 2 shown in Fig. 2) therein, wherein the cavity is partially or entirely visible from an outside (plastic is transparent or translucent material); and one or more reflecting surfaces (5) capable of reflecting light from the outside is provided on the main body portion (the colored coating 5 may be implemented by an integral forming technique such as press bonding, hot stamping, or adhesive bonding or a colored sheet or printing, painting or vacuum forming of a pattern), the one or more reflecting surfaces are provided on the inner surface (each of the pair of identical complementary lure members 11,12 has a reflective layer 13 provided on the inner wall thereof comprising a multiplicity of projections 14) of the main body portion, and the one or more reflecting surfaces (reflection film 15) are formed of vapor deposition coating (reflective film 15 may be implemented by developing a vapor deposited film). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the one or more reflecting surfaces of Hayakawa such that they are formed integrally with the main body portion and are provided on the inner surface of the main body portion in view of Yoshida in order to provide one or more reflecting surfaces which are placed as close as possible to the exterior surface of the main body portion so as to lessen the distance traveled and to arrange the reflecting surfaces about the inner periphery of the main body portion so that incoming light from all directions with respect to the main body portion may be reflected outwardly to all surrounding areas of the lure so as to visually attract predatory fish to the fishing lure from all locations about the lure so as to increase the chances of catch the lurking predatory fish.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2010-154762 to Hayakawa in view of JP 10-127209 to Ito.
In regard to claim 8, Hayakawa does not disclose wherein the light from the outside or light reflected to the outside develops color from transmission through the body. Ito discloses wherein the light from the outside or light reflected to the outside develops color from transmission through the body (the lure body 1 is given a color and can be appropriately changed according to the target fish and the color can be applied to the surface of the lure body 1 by the surface treatment and by mounting the reflector 3 in the transparent lure body 1, a unique color is exhibited by a synergistic effect of the reflector 3 and the surface treatment of the lure body 1 itself). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the lure for fishing of Hayakawa such that the light from the outside or light reflected to the outside develops color from transmission through the body in view of Ito in order to provide a unique color exhibited by a synergistic effect of the reflecting surfaces/reflectors and the color of the body acting together to enhance the light entering into the body from outside.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 10/31/2025 is sufficient to overcome the rejection of claims 1-11 and 13-15 based upon Swenson 3,031,792, 1-11 and 13-15 based upon Choi 8,402,688, and claims 1-11 and 13-15 based upon Choi 8,402,688 in view of Swenson 3,031,792.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARREN W ARK whose telephone number is (571)272-6885. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kimberly Berona can be reached at (571) 272-6909. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARREN W ARK/Primary Examiner, Art Unit 3647
DWA