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
No claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/09/2024.
Applicant’s election without traverse of Species II in the reply filed on 09/09/2024 is acknowledged.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,751,551. Although the claims at issue are not identical, they are not patentably distinct from each other because they commonly claim a hydrofoil fishing lure apparatus, comprising: an artificial lure having a body, the body taking a form that resembles an exocoetidae, the body comprising a pair of wing-like pectorals vs. a pair of retractable wing-like pectorals, a head, and a caudal fin; a hydrofoil that comprises a strut and a lifting surface.
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) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mastropaolo 6,658,784 in view of Winslow 2,545,185 or Swanningson 3,898,758 or Raquel Des. 243,954, Moorhead 2022/0046906 or Correll et al. 5,193,299, and Majszak 9,554,566.
In regard to claim 2, Mastropaolo discloses a hydrofoil fishing lure apparatus (see Fig. 1), comprising: an artificial lure having a body (11), the body comprising a pair of wing-like pectorals (39), a head (tapered leading end of 11 shown in Fig. 3), and a caudal fin (51, 53); and a hydrofoil that comprises a strut (15) and a lifting surface (13), the strut (15) and the lifting surface (13) being positioned underneath the body (11) of the artificial lure (see Figs. 1-2), the lifting surface lifting at least a portion of the body out of water when the hydrofoil fishing lure apparatus is being trolled (at very high speeds lifting surface 13 will cause lift resulting in at least upper surface 33 being out of water during trolling; to utilize the fishing lure as an outrigger, surface fishing is accomplished with the forward fins 39 located closest to the tail rudder 47 as shown in Fig. 3 and the tail rudder 47 is swung to its most extreme position---see col. 5, lines 39-44 [also see col. 4, lines 52-60]; also upper enclosure 29 and keel member 27 form upper body 11 which is a sealed chamber that is water tight and is further filled with foam 31 and thus provides buoyancy to the fishing lure and in the event of a leak in the upper body 11, foam 31 retains the necessary buoyancy to cause the fishing lure to float to the surface if not being towed), the strut for the hydrofoil being attached to the body (at 21) of the artificial lure, wherein the hydrofoil enables the hydrofoil fishing lure apparatus to be fished without using a kite, but does not disclose the body taking a form that resembles an exocoetidae. Winslow and Swanningson and Raquel disclose a trolling device (1 OR 12 OR see Fig. 2) comprising a body taking a form of a fish (see Fig. 1 or 4 OR see Fig. OR see Fig. 2) and comprising a pair of pectorals (9 OR 24 OR pectorals shown in Figs. 1-3), a head (head of 1 OR 22 OR head seen in Fig. 2), and a caudal fin (rear end of 1 OR 15 OR tail seen in Fig. 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the body of Mastropaolo such that it takes a form that resembles a fish in view of Winslow, Swanningson or Raquel in order to provide a trolling device that appears like any other fish so as not to make the fish sought to be caught to be wary of the artificial nature of the trolling device and even cause these fish to be attracted to the trolling device. Mastropaolo and Winslow, Swanningston or Raquel do not disclose the body taking a form that resembles an exocoetidae. Moorhead and Correll et al. disclose a body taking a form that resembles an exocoetidae (see Fig. 1 and Abstract OR see Fig. 1). 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 body taking a form that resembles a fish of Mastropaolo and Winslow, Swanningston or Raquel such that the body takes a form that resembles an exocoetidae in view of Moorhead or Correll et al. in order to provide a body that resembles a specific prey species of fish that is particularly sought by certain predatory fish species so as to attract these fish to the trolling rigs and reduce their wariness. Mastropaolo does not disclose the body being configured to receive one or more hooks. Majszak discloses a trolling device for controlling movement of fishing line and lure speed wherein the trolling device (10) can be attached to a downrigger device (114) by a connector member (116 may be of a fixed nature or may be a quick release connector) at the leading end (114) of the trolling device (10) and the fishing line (110) is drawn through the channel (26) in the trolling device (10) and has a lure or baited hook (118) at the end of the line (110) and the fisher is able to control the movement of the line (110) and the speed of the lure (118) by virtue of the fact that the line (110) moves freely through the channel and that Majszak discloses an alternative configuration of the trolling device (10) wherein an upper portion of the trolling device (10) has an opening (90) that enables attachment of various devices or apparatus and may be used to attach a hook (86) and that other apparatus or objects may be attached to the lower portion (22) of the trolling device (10) such as hooks (86); therefore Majszak discloses a fishing lure apparatus comprising the body (12 of 10) being configured to receive (at 84, 90 of 12) one or more hooks (86). 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 body of Mastropaolo such that it is configured to receive one or more hooks in view of Majszak in order to be able to utilize the trolling device as an actual fishing lure that can itself actually hook and catch fish and not merely be used as a fishing line guiding device for trolling attached fishing lures.
In regard to claim 3, Mastropaolo discloses wherein the strut is positioned towards a front half of the body (see Fig. 1 or 2 wherein upper edge 21 of 15 begins nearly at the front end of 11).
In regard to claim 4, Mastropaolo discloses wherein the lifting surface (13) of the hydrofoil fishing lure apparatus stabilizes the body of the artificial lure in a plane that is generally orthogonal to the strut (see Fig. 2).
Claim(s) 5-6 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mastropaolo 6,658,784 in view of Winslow 2,545,185 or Swanningson 3,898,758 or Raquel Des. 243,954, Moorhead 2022/0046906 or Correll et al. 5,193,299, and Majszak 9,554,566 as applied to claim 1 above, and further in view of Sioutis 2010/0089303 or Waite et al. 2010/0000461 or Binger et al. 7,363,872.
In regard to claim 5, Mastropaolo discloses the lifting surface (13) comprising a wing-like structure (see Fig. 1), the wing-like structure comprising substantially the same cross-section at the front and rear edges (see Fig. 2), but does not disclose wherein the wing-like structure comprising a thicker cross section at a front-edge of the lifting surface positioned towards a front portion of the body of the artificial lure and a thinner cross section at a rear-edge of the lifting surface positioned towards a rear portion of the body of the artificial lure, the thicker cross section being larger in dimension than the thinner cross section. Sioutis and Waite et al. and Binger et al. disclose a hydrofoil comprising a lifting surface (lift producing foils C1, C2 OR 36 OR 26 of 22), wherein the wing-like structure comprising a thicker cross section at a front-edge of the lifting surface positioned towards a front portion of the body of the artificial lure and a thinner cross section at a rear-edge of the lifting surface positioned towards a rear portion of the body of the artificial lure (see Figs. 3-4 OR see Figs. 1-3, 5 OR see Figs. 1-3), the thicker cross section being larger in dimension than the thinner cross section. 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 lifting surface of Mastropaolo such that the wing-like structure comprising a thicker cross section at a front-edge of the lifting surface positioned towards a front portion of the body of the artificial lure and a thinner cross section at a rear-edge of the lifting surface positioned towards a rear portion of the body of the artificial lure, the thicker cross section being larger in dimension than the thinner cross section in view of Sioutis or Waite et al. or Binger et al. in order to provide a lifting surface which will provide a greater lift as the hydrofoil travels through the water.
In regard to claim 6, Mastropaolo discloses a biasing element (51) causing the hydrofoil fishing lure apparatus to steer either right or left when trolled (see col. 4, lines 41-61 and col. 5, lines 39-44 & 49-54).
In regard to claim 10, Mastropaolo discloses wherein the biasing element comprises an uneven weight distribution (foam 31 within 11) for the lifting surface (11).
In regard to claim 11, Mastropaolo discloses wherein the uneven weight distribution is resultant from a plurality of distinct weights (small weights may be attached to openings 18, 20) that are either attached to (small weights attached to openings 18, 20 are thereby attached to lifting surface 11; see col. 3, lines 16-18) and/or embedded within the lifting surface.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mastropaolo 6,658,784 in view of Winslow 2,545,185 or Swanningson 3,898,758 or Raquel Des. 243,954, Moorhead 2022/0046906 or Correll et al. 5,193,299, Majszak 9,554,566, and Sioutis 2010/0089303 or Waite et al. 2010/0000461 or Binger et al. 7,363,872 as applied to claim 6 above, and further in view of Putz, II 5,018,296 or Wooley 8,979,604.
In regard to claim 7, Mastropaolo discloses wherein the biasing element (51) comprises one or more vertical protrusions that protrude from a lower surface of a surface (49) on the body (11), but does not disclose wherein the biasing element comprises one or more vertical protrusions that protrude from an upper or lower surface of the lifting surface. Putz, II and Wooley disclose wherein the biasing element comprises one or more vertical protrusions (upwardly turned lateral ends of 44 as shown in Figs. 1, 5 OR downwardly turned protrusions on opposing sides of 40) that protrude from an upper or lower surface of the lifting surface (upper surface of 44 OR lower surface of 40). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the biasing element of Putz, II or Wooley that comprises one or more vertical protrusions that protrude from an upper or lower surface of the lifting surface for the biasing element comprising one or more vertical protrusions that protrude from a lower surface of a surface on the body of Mastropaolo in order to provide an alternative placement for the vertical protrusions of the biasing element which will still cause movement of the fishing lure apparatus in the desired direction during towing during a trolling operation.
In regard to claim 8, Mastropaolo and Wooley disclose wherein the one or more vertical protrusions comprises a protrusion (downwardly turned protrusions on opposing sides of 40 of Wooley) that extends from the lower surface of the lifting surface (lower surface of 40 of Wooley) and includes a bend (see Fig. of Wooley) that protrudes to a left or right side of the body of the artificial lure (see Figs. 3-6 of Mastropaolo).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mastropaolo 6,658,784 in view of Winslow 2,545,185 or Swanningson 3,898,758 or Raquel Des. 243,954, Moorhead 2022/0046906 or Correll et al. 5,193,299, Majszak 9,554,566, and Sioutis 2010/0089303 or Waite et al. 2010/0000461 or Binger et al. 7,363,872 as applied to claim 6 above, and further in view of Koch 4,745,702.
In regard to claim 9, Mastropaolo does not disclose wherein the biasing element comprises the strut, the strut comprising a thicker cross section at a front-edge of the strut positioned towards a front portion of the body of the artificial lure and a thinner cross section at a rear-edge of the strut positioned towards a rear portion of the body of the artificial lure, the thicker cross section being larger in dimension than the thinner cross section. Koch discloses a strut (22, 24, 26) and a lifting surface (lower occurrence of 34 in Fig. 1 or 3), a biasing element (22, 24, 26) causing the fishing lure apparatus to steer either right or left when trolled (see Fig. 4A or 5), wherein the biasing element comprises the strut, the strut comprising a thicker cross section at a front-edge of the strut positioned towards a front portion of the body of the artificial lure and a thinner cross section at a rear-edge of the strut positioned towards a rear portion of the body of the artificial lure (see Fig. 2 & col. 3, lines 24-36), the thicker cross section being larger in dimension than the thinner cross section. 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 strut of Mastropaolo such that the strut comprises the biasing element, the strut comprising a thicker cross section at a front-edge of the strut positioned towards a front portion of the body of the artificial lure and a thinner cross section at a rear-edge of the strut positioned towards a rear portion of the body of the artificial lure, the thicker cross section being larger in dimension than the thinner cross section in view of Koch in order to provide means associated with the strut for directing the fishing lure apparatus in either a left or right direction.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mastropaolo 6,658,784 in view of Winslow 2,545,185 or Swanningson 3,898,758 or Raquel Des. 243,954, Moorhead 2022/0046906 or Correll et al. 5,193,299, Majszak 9,554,566, and Sioutis 2010/0089303 or Waite et al. 2010/0000461 or Binger et al. 7,363,872 as applied to claim 6 above, and further in view of Ruppa 6,055,765 or Hemmerle 5,185,951.
Alternatively in regard to claim 10, Mastropaolo does not disclose wherein the biasing element comprises an uneven weight distribution for the lifting surface. Ruppa discloses a body (1), a strut (4) and a lifting surface (10), wherein the biasing element comprises an uneven weight distribution for the lifting surface (greater number of amount of weight material 5, such as grainy bulk material such as lead pellets, toward the rear of 10 which wider at its rear and narrower at its front), wherein the uneven weight distribution is resultant from a plurality of distinct weights (lead pellets 5) that are either attached to and/or embedded within the lifting surface (see Fig. 3). Hemmerle discloses a lifting surface (10) and a biasing element (32, 34) which comprises an uneven weight distribution for the lifting surface (32 is placed toward the rear opposite the front in Fig. 3 and 34 is placed to the right in Fig. 3), wherein the uneven weight distribution is resultant from a plurality of distinct weights (32, 34) that are either attached to and/or embedded within the lifting surface (32, 34 embedded within 10). 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 biasing element of Mastropaolo such that it comprises an uneven weight distribution for the lifting surface in view of Ruppa or Hemmerle in order orient the fishing lure apparatus during travel through the water as desired.
In regard to claim 11, Mastropaolo and Ruppa or Hemmerle disclose wherein the uneven weight distribution is resultant from a plurality of distinct weights (5 of Ruppa) that are either attached and/or embedded within the lifting surface (13 of Mastropaolo; 10 in Fig. 3 of Ruppa).
Claim(s) 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mastropaolo 6,658,784 in view of Winslow 2,545,185 or Swanningson 3,898,758 or Raquel Des. 243,954, Moorhead 2022/0046906 or Correll et al. 5,193,299, Majszak 9,554,566, as applied to claim 1 above, and further in view of Uhrig 2008/0148623 or Uhland 2010/0275501.
In regard to claims 12-13, Mastropaolo does not disclose wherein the lifting surface comprises a translucent polymer that comprises a refractive index of about 1.33 to about 1.35. Uhrig discloses a fishing jig with a weed guard (25) that is composed of a plurality of stiff fibers of translucent material having a refractive index approximately equal to that of water and that the refractive index of water is approximately 1.33 (index of refraction of salt water is 1.35) so that the fibers of the weed guard become substantially invisible to the naked eye and to the eye of a bass or similar fish (see para. 0013). Uhland discloses a transmissive fishing swivel (100) with a refractive index which is nearly the same as that of water, wherein the refractive index of fresh water is 1.30 while that of saltwater may be about 1.35 and that the more similar the refractive index of a material is to that of water, the more difficult the material is for fish to see (see paras. 0044-45). 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 lifting surface of Mastropaolo such that it comprises a translucent polymer that comprises a refractive index of about 1.33 to about 1.35 in view of Uhrig or Uhland in order to disguise the lifting surface so that wary predatory fish cannot view it and become suspicious of the purpose of the fishing lure apparatus.
In regard to claim 14, Mastropaolo and Uhland disclose wherein the translucent polymer comprises a shaded translucent polymer (pigments, dyes or other colorants may be added to the material to achieve a color that is less detectable in certain waters; see paras. 0054-57).
Claim(s) 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mastropaolo 6,658,784 in view of Winslow 2,545,185 or Swanningson 3,898,758 or Raquel Des. 243,954, Moorhead 2022/0046906 or Correll et al. 5,193,299, Majszak 9,554,566, as applied to claim 1 above, and further in view of Minera 3,044,208.
In regard to claim 15, Mastropaolo does not disclose a hinged joint positioned between the strut and the lifting surface of the hydrofoil. Minera disclose a strut (1) and a lifting surface (9) and a hinged joint (7) positioned between the strut and the lifting surface of the hydrofoil (see Fig. 1). 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 strut and lifting surface of Mastropaolo such that there is a hinged joint therebetween in view of Minera in order to allow a change of angle of attack for the lifting surface depending on the direction of intended travel of the fishing lure apparatus.
In regard to claim 16, Mastropaolo and Minera disclose wherein the hinged joint (7 of Minera) is configured to alter an angle of attack for the lifting surface (13 of Mastropaolo; 6 of Minera) of the hydrofoil (the position of 9 of Minera assumes either of one of two positions separated by 180 degrees; see Figs. 1, 2).
In regard to claim 17, Mastropaolo and Minera disclose wherein the hinged joint is configured to bias the hydrofoil fishing lure apparatus to steer either left or right when trolled (the forward edge 2 of Minera is beveled and thus causes the device to move left or right depending upon which side the line 30 extends; see col. 3, line 69 to col. 4, line 5).
In regard to claim 18, Mastropaolo and Minera disclose wherein the hinged joint enables the lifting surface to rotate in at least two degrees of freedom (rings 7 of Minera allow rotation in either lateral and forward to rear directions).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mastropaolo 6,658,784 in view of Winslow 2,545,185 or Swanningson 3,898,758 or Raquel Des. 243,954, Moorhead 2022/0046906 or Correll et al. 5,193,299, Majszak 9,554,566, and Minera 3,044,208 as applied to claim 15 above, and further in view of Fukushima 4,894,946.
Alternatively in regard to claim 18, Mastropaolo and Minera do not disclose wherein the hinged joint enables the lifting surface to rotate in at least two degrees of freedom. Fukushima discloses an otter board with a strut (1, 2) and a lifting surface (4), wherein the grooves (5) that form part of the connection between the strut (1) and lifting surface (4) and enables member (2) to move in a two-dimensional space (see col. 2, lines 39-55). 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 hinged joint of Mastropaolo and Minera such that it enables the lifting surface to rotate in at least two degrees of freedom in view of Fukushima in order to allow for a greater degree of adjustability in the positioning of the lifting surface with respect to the strut at the hinged joint.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mastropaolo 6,658,784 in view of Winslow 2,545,185 or Swanningson 3,898,758 or Raquel Des. 243,954, Moorhead 2022/0046906 or Correll et al. 5,193,299, Majszak 9,554,566, as applied to claim 1 above, and further in view of Martino 10,542,829 or Nock 2012/0186507.
In regard to claim 19, Mastropaolo does not disclose a hinged joint positioned between the strut and the body of the artificial lure. Martino and Nock disclose a hinged joint (142,162 OR hinged connection between 103a & 102; see para. 0069) positioned between the strut (138, 140 OR 103a) and the body (112 OR 102). 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 fishing lure apparatus of Mastropaolo such that it comprises a hinged joint positioned between the strut and body of the artificial lure in view of Martino or Nock in order to provide an adjustment means for altering the angle of the strut with respect to the body so as to further affect the angle of inclination of the lifting surface to which the strut is attached and thus change the performance characteristics of the fishing lure apparatus as it travels through the water.
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