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 01/27/2026 the following represents the changes from the previous claims: Claims 7-16 and 18-19 were amended, and Claims 2-4 were canceled. Claims 1, 5-19 are presented for examination.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: relative to a reference frame.
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, 5-19 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 1 and 17, the limitation “relative to a reference frame” in line 8 is unclear as to what part of the fishing lure comprises the reference frame as the specification does not specify what the reference frame is.
Claims 5-16 and 18-19 are 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, 5-19 are rejected under 35 U.S.C. 103 as being unpatentable over St. John (US 20200323185 A1) in view of HAMAGUCHI (US 20150250154 A1 as cited in IDS) or Bomann (US 6393757 B2).
Regarding claim 1, St. John teaches a bibless fish lure having a body (1), the body comprising a rigid head (head section of body 1 with ballast component 601 of lead) and one or more flexible fins (fins of 2 in Fig. 5) attached to the head and wherein the entirety of the body is unjointed (see Fig. 5); the head having a ventral side (bottom side of head section of 1) and a dorsal side (top side of head section of 1) with a tow point (11) attached to the dorsal side (see Fig. 5), and a hook adapter (lower occurrence of 602 in Fig. 6 capable of receiving a hook thereat) attached to the ventral side (see Fig. 6); the head having a weight (601) located primarily in a ventral portion towards a front of the head (see Fig. 6); wherein the head and the fins are shaped so that, when the lure is lifted upwards or pulled forwards through water, the body vibrates in a repetitive oscillation (the resistance provided by the dorsal side of the body 1 as the body 1 moves upwardly through the water column results in oscillation as the water attempts to move past the dorsal side of the body 1 during ascent of the body 1 during lure retrieval) comprising primarily a rotation about a longitudinal axis of the body (axis of body 1) relative to a reference frame moving with the body; and wherein the head (head section of 1) has a generally oval cross-section (see Fig. 10) along a substantial portion of a length of the head that comprises a dorsal region having little (see Fig. 10 wherein the dorsal region of the head has little curvature; the term “little lateral curvature” is a relative term that fails to particularly claim any degree of curvature and that in comparison to another surface with a large lateral curvature, the term can be interpreted as any curvature which is to a degree less than the another surface with large lateral curvature) or no lateral curvature.
However, St. John does not disclose a squid lure having the body comprising the rigid head and one or more flexible tentacles.
Hamiguichi and Bomann teaches a bibless squid lure having the body (main body 10 of Hamiguichi OR 102 of Bomann), the body comprising the rigid head (right end section of 10 with 19,20 having lead weight 42 therein of Hamiguichi OR end of 102 generally toward 112 with lead head 126 therein of Bomann) and one or more flexible tentacles (17 of Hamiguichi OR 108 and 110 of Bomann). 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 bibless fish lure of St. John such that it is a bibless squid lure having a body comprising a rigid head and one or more flexible tentacles in view of Hamiguchi et al. or Bomann in order to provide a fishing lure that represents an alternative prey species other than a fish which is in the form of a squid so as to catch predatory fish which prefer squid over fish as a food source.
Regarding claim 5, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 1, and St. John as modified by Hamiguchi et al. and Bomann further teaches wherein the head comprises a mantle portion (see examiner’s illustration of Fig. 5 of St. John and 13 of Hamiguchi) and a mid-portion (see examiner’s illustration of Fig. 5 of St. John 13 and 15 of Hamiguchi) with the mid-portion located between the mantle and the one or more flexible tentacles (Fig. 2 of Hamiguchi).
PNG
media_image1.png
508
794
media_image1.png
Greyscale
Regarding claim 6, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 5, and St. John further teaches wherein the mid-portion comprises two eye cavities (see Fig. 9 as the eye’s are inserted into concave shaped cavities), the eye cavities describing a concave shape and located on opposite sides of the mid-portion (see Fig. 9).
In the event that applicant disagrees with examiner’s interpretation of St. John as modified by Hamiguchi et al. and Bomann wherein the eye cavities are a concave shape, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the eye cavities of St. John as modified by Hamiguchi et al. and Bomann to be a concave shape depending on the user’s design preference, since a mere change in size or shape of a component is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 7, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 1, and St. John further teaches having a head length and a maximum head thickness (see Figs. 5 and 9), wherein the tow point (11) is located at a tow point distance from a tip of the head (see Fig. 5).
St. John as modified by Hamiguchi et al. and Bomann does not specifically teach a ratio of the tow point distance to the head length is between 0.55 and 0.25.
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 lure taught by St. John as modified by Hamiguchi et al. and Bomann to include a ratio of the tow point distance to the head length between 0.55 and 0.25 because doing so would have provided a fishing lure in the shape of a squid with dimensions suitable for the lure to be drawn through the water by a fishing line secured to the towing point and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 8, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 7, and St. John further teaches wherein the head has a maximum height and maximum head thickness (see Figs. 5 and 9).
St. John as modified by Hamiguchi et al. and Bomann does not specifically teach a ratio of the maximum head thickness to the maximum head height is between 0.35 and 0.55.
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 lure taught by St. John as modified by Hamiguchi et al. and Bomann to include a ratio of the maximum head thickness to the maximum head height between 0.35 and 0.55 because doing so would have provided head dimensions suitable for closely simulating the appearance of a squid bait and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 9, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 8, and St. John further teaches wherein an eye thickness of the head is a cross-sectional distance measured between respective lowest points of concave eye cavities (Figs. 5 and 9).
St. John as modified by Hamiguchi et al. and Bomann does not specifically teach a ratio of the eye thickness to the maximum head thickness is between 0.85 and 1.
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 lure taught by St. John as modified by Hamiguchi et al. and Bomann to include a ratio of the eye thickness to the maximum head thickness is between 0.85 and 1 because doing so would have provided life like head and eye dimensions suitable for closely simulating the appearance a squid bait and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 10, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 7, and St. John as modified by Hamiguchi et al. and Bomann further teaches where the lure has an overall length measured from the tip of head (Fig. 5 of St. John) to a tip of a longest tentacle when extended in a direction along a length of the lure (Figs. 1-3 of Hamiguchi and fig. 9 of Bomann).
St. John as modified by Hamiguchi et al. and Bomann does not specifically teach a ratio of the head length to the overall length is between 0.4 and 0.6.
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 lure taught by St. John as modified by Hamiguchi et al. and Bomann to include a ratio of the head length to the overall length between 0.4 and 0.6 because doing so would have provided head and overall length dimensions suitable for closely simulating the appearance a squid bait and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 11, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 7, and HAMAGUCHI further teaches wherein the one or more flexible tentacles (16) define a tentacle shoulder (figs. 2-3 depict the tentacle shoulder) wherein the body has a tentacle shoulder thickness at the tentacle shoulder (figs. 2-3).
St. John as modified by Hamiguchi et al. and Bomann does not specifically teach a ratio of the maximum head thickness to the shoulder thickness is 1.1 to 1.4.
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 lure taught by St. John as modified by Hamiguchi et al. and Bomann to include a ratio of the maximum head thickness to the shoulder thickness 1.1 to 1.4 because doing so would have provided head and tentacle shoulder dimensions suitable for closely simulating the appearance a squid bait and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 12, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 1, and Bomann further teaches wherein the one or more flexible tentacles comprises at least one longer tentacle (110) and at least one shorter tentacle (108), the at least one longer tentacle having a longer tentacle distance as compared to the at least one shorter tentacle and the at least one shorter tentacle having a shorter tentacle distance as compared to the at least one longer tentacle (there are eight relatively short tentacles 108 and two longer tentacles 110, col. 12 lines 55-57 for the purpose of providing a squid lure with longer tentacles that splay outward in a fluttering, undulating manner so the squid presents a very realistic undulating swimming action of a natural bait fish).
Regarding claim 13, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 12, and St. John as modified by Hamiguchi et al. and Bomann further teaches having a head length (Figs. 5-6 and 9 of St. John) and a maximum head thickness (Figs. 5-6 and 9 of St. John), wherein the tow point (11 of St. John) is located at a tow point distance from a tip of the head (see Fig. 5 of St. John); the shorter tentacle distance (there are eight relatively short tentacles 108 and two longer tentacles 110, col. 12 lines 55-57 of Bomann).
St. John as modified by Hamiguchi et al. and Bomann does not specifically teach a ratio of the tow point distance to the head length is between 0.55 and 0.25 and a ratio of the head length added to the shorter tentacle distance to the head length is between 0.55 and 0.75.
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 lure taught by St. John as modified by Hamiguchi et al. and Bomann to include a ratio of the tow point distance to the head length between 0.55 and 0.25 and a ratio of the head length added to the shorter tentacle distance to the head length between 0.55 and 0.75 because doing so would have provided head and tentacle dimensions suitable for closely simulating the appearance a squid bait and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skillin the art. In re Aller, 105 USPQ 233.
Regarding claim 14, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 1, and St. John further teaches wherein the lure has a head length (Figs. 5-6 and 9) and a maximum head thickness (Figs. 5-6 and 9), wherein the tow point (11) is located at a tow point distance from a tip of the head (see Figs. 5-6) and the dorsal region having little (see Fig. 10 wherein the dorsal region of the head has little curvature; the term “little lateral curvature” is a relative term that fails to particularly claim any degree of curvature and that in comparison to another surface with a large lateral curvature, the term can be interpreted as any curvature which is to a degree less than the another surface with large lateral curvature) or no lateral curvature has a maximum thickness (see Figs. 5-6 ).
St. John as modified by Hamiguchi et al. and Bomann does not specifically teach a ratio of the tow point distance to the head length is between 0.55 and 0.25; and a ratio of the maximum thickness of the dorsal region having little or no curvature to the maximum head thickness is between 0.55 and 0.7.
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 lure taught by St. John as modified by Hamiguchi et al. and Bomann to include a ratio of the tow point distance to the head length between 0.55 and 0.25 and a ratio of the maximum thickness of the dorsal region having little or no lateral curvature to the maximum head thickness between 0.55 and 0.7 because doing so would have provided squid lure dimensions suitable for closely simulating the appearance a squid bait and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 15, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 14, and St. John further teaches having the maximum thickness of the flat region and maximum head height (see Figs. 5-6 and 9).
St. John as modified by Hamiguchi et al. and Bomann does not specifically teach a ratio of the maximum thickness of the flat region to the maximum head height is between 0.23 to 0.35.
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 lure taught by St. John as modified by Hamiguchi et al. and Bomann to include a ratio of the maximum thickness of the flat region to the maximum head height is between 0.23 to 0.35 because doing so would have provided squid lure dimensions suitable for closely simulating the appearance a squid bait and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 16, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure according to claim 7, and St. John further teaches wherein the hook adapter is located a distance from the tip of the head (see Figs. 5-6).
St. John as modified by Hamiguchi et al. and Bomann does not specifically teach the distance from the tip of the head to the hook adaptor measured along a length of the lure is less than the tow point distance.
Applicant's disclosure fails to identify the criticality of the claimed limitation(s). Therefore, the limitation(s) has/have not been given patentable weight. 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 lure taught by St. John as modified by Hamiguchi et al. and Bomann to make the distance from the tip of the head to the hook adaptor measured along a length of the lure less than the tow point distance, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 17, St. John teaches a bibless fish lure consisting of body (1) having a rigid head (head section of body 1 with ballast component 601 of lead) and one or more flexible fins (fins of 2 in Fig. 5) attached to the head (see Fig. 5), the head having: a ventral side (bottom side of head section of 1) and a dorsal side (top side of head section of 1) with a tow point (11) attached to the dorsal side (see Fig. 5) and a hook adapter (lower occurrence of 602 in Fig. 6 capable of receiving a hook thereat) attached to the ventral side (see Fig. 6), and a weight (601) located primarily in a ventral portion towards a front of the head (see Fig. 6); wherein the head and the fins are shaped so that, when the lure is lifted upwards or pulled forwards through water, the body vibrates in a repetitive oscillation (the resistance provided by the dorsal side of the body 1 as the body 1 moves upwardly through the water column results in oscillation as the water attempts to move past the dorsal side of the body 1 during ascent of the body 1 during lure retrieval) comprising primarily a rotation about a longitudinal axis of the body (axis of body 1) relative to a reference frame moving with the body; and wherein the head (head section of 1) has a generally oval cross- section (see Fig. 10) along a substantial portion of a length of the head that comprises a dorsal region having little (see Fig. 10 wherein the dorsal region of the head has little curvature; the term “little lateral curvature” is a relative term that fails to particularly claim any degree of curvature and that in comparison to another surface with a large lateral curvature, the term can be interpreted as any curvature which is to a degree less than the another surface with large lateral curvature)or no lateral curvature, and the entirety of the body is unjointed (see Fig. 5).
However, St. John does not disclose a squid lure having the body consisting the rigid head and one or more flexible tentacles.
Hamiguichi and Bomann teaches a bibless squid lure having the body (main body 10 of Hamiguichi OR 102 of Bomann), the body consisting the rigid head (right end section of 10 with 19,20 having lead weight 42 therein of Hamiguichi OR end of 102 generally toward 112 with lead head 126 therein of Bomann) and one or more flexible tentacles (17 of Hamiguichi OR 108 and 110 of Bomann). 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 bibless fish lure of St. John such that it is a bibless squid lure having a body comprising a rigid head and one or more flexible tentacles in view of Hamiguchi et al. and Bomann in order to provide a fishing lure that represents an alternative prey species other than a fish which is in the form of a squid so as to catch predatory fish which prefer squid over fish as a food source.
Regarding claim 18, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure of claim 1, and St. John as modified by Hamiguchi et al. and Bomann further teaches wherein the body is integrally formed so that the head is directly connected to the tentacles (fig. 5 of St. John, figs. 1-3 of Hamiguchi and fig. 9 of Bomann).
Regarding claim 19, St. John as modified by Hamiguchi et al. and Bomann teaches the bibless squid lure of claim 17, and St. John as modified by Hamiguchi et al. and Bomann further teaches wherein the body is integrally formed so that the head is directly connected to the tentacles (fig. 5 of St. John, figs. 1-3 of Hamiguchi and fig. 9 of Bomann).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 5-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s Declaration
The affidavit under 37 CFR 1.132 filed 01/27/2026 is sufficient to overcome the rejection of claims 1, 5-19 based upon HAMAGUCHI as modified by Ichiyanagi.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAHAR ALMATRAHI/Examiner, Art Unit 3643 /DARREN W ARK/Primary Examiner, Art Unit 3647
Prosecution Insights