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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Double Patenting
Claims 1-2 of this application are patentably indistinct from claim 4 of Application No. 18/405,442. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/405,442 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the only distinctions of claim language in the reference claims are limitations that further narrow the scope of the claims, as compared to the examined claims. In other words, as illustrated in the comparative analysis below, all limitations of the examined claims are present in the reference claims, with additional limitations present only in the reference claims, and without any distinctions present only in the examined claims. Note that in the table below, claim language that is overlapping (identical) between the examined claims and the reference claims is unformatted, while underlined portions designate claim language that is different. The limitation “wherein the one end of the bail is attached to the line slider by a fixing screw” in claim 1 of the examined application is not identical to any claim language in the reference application. However, limitations in claim 4 of the reference application “wherein an insertion hole into which the one end of the bail is inserted is formed on a side surface of the line slider,” “an attachment portion provided at the one end of the bail, and disposed in the line slider,” and “wherein the attachment portion is fixed to the line slider by tightening the fixing screw from a line slider side” make the limitation of the examined application obvious. The one end of the bail must be attached to the line slider by the fixing screw in order to meet the remaining limitations of the claim which establish the attachment portion (part of the one end of the bail) being fixed to the line slider by the fixing screw.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examined Application (18/405,432)
Reference Application (Claim 4 of 18/405,442)
(Limitations from Claim 1)
A fishing spinning reel comprising:
a rotor rotated by a winding operation of a handle;
a bail support member attached to a support arm of the rotor, and supporting a bail;
a line roller supported by the bail support member, and guiding a fishing line to a spool around which the fishing line is wound and held;
and a line slider supporting one end of the bail, and guiding the fishing line picked up by the bail to the line roller,
wherein the one end of the bail is attached to the line slider by a fixing screw.
(Limitations from Claim 2)
further comprising: an attachment portion provided at the one end of the bail and disposed in the line slider
wherein the attachment portion is fixed to the line slider by tightening the fixing screw from a line slider side.
(Limitations from Claim 1)
A fishing spinning reel comprising:
a rotor rotated by a winding operation of a handle;
a bail support member attached to a support arm of the rotor, and supporting a bail;
a line roller supported by the bail support member, and guiding a fishing line to a spool around which the fishing line is wound and held;
and a line slider supporting one end of the bail, and guiding the fishing line picked up by the bail to the line roller,
wherein an insertion hole into which the one end of the bail is inserted is formed on a side surface of the line slider, and an opening edge portion of the insertion hole comprises a surface substantially orthogonal to an axis of the insertion hole.
(Additional Limitations from dependent Claim 4)
further comprising: an attachment portion provided at the one end of the bail, and disposed in the line slider
through the insertion hole; and a fixing screw for fixing the line slider to the bail support member,
wherein the attachment portion is fixed to the line slider by tightening the fixing screw from a line slider side.
Specification
The disclosure is objected to because of the following informalities:
“an insertion hole” is used by reference characters “33c1” (Para. 0024, Ln. 2) and “34e” (Para. 0025, Ln. 3). For clarity, examiner suggests “an insertion hole” (Para. 0024, Ln. 2) should read --a fixing insertion hole-- or be replaced by another component name which differentiates the feature referenced by “33c1” from the feature referenced by “34e”
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato (JP H10276629, English translation from Espacenet which was provided by Applicant).
Regarding Claim 1, Sato, Figures 1-3 and 7, teaches a fishing spinning reel (spinning reel; See Sato, Ln. 156) comprising: a rotor 3 rotated by a winding operation of a handle 1; a bail support member 40 attached to a support arm 31 of the rotor, and supporting a bail 46; a line roller 45 supported by the bail support member 40, and guiding a fishing line to a spool 4 around which the fishing line is wound and held (See Sato, Ln. 330-333); and a line slider 44 supporting one end 46c of the bail 46, and guiding the fishing line picked up by the bail 46 to the line roller 45 (See Sato, Ln. 349-351),
wherein the one end 46c of the bail 46 is attached to the line slider 44 by a fixing screw 56 (See Sato, Ln. 291-293).
Regarding Claim 4, Sato is advanced above.
Sato further teaches wherein an insertion hole 44g into which the one end 46c of the bail 46 is inserted is formed on a side surface 44b of the line slider 44 (See Sato, Ln. 347-348), and
the insertion hole 44g has an inner diameter larger than an outer diameter of the one end 46c of the bail 46 (inner diameter of the insertion hole 44g must be larger than outer diameter of the one end of the bail 46c to allow for penetration of the hole by the bail; See Sato, Fig. 7).
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (JP H10276629, English translation from Espacenet which was provided by Applicant), as applied to claims 1 and 4 above, and further in view of Fujioka (JP 2009278915A).
Regarding Claim 2, Sato is advanced above.
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Figure 1. Annotated Figure 7 from Sato
Sato, annotated Figure 1 above, teaches an attachment portion 46c’ provided at the one end 46c of the bail 46 and disposed in the line slider 44,
wherein the attachment portion 46c’ is fixed to the line slider 44 (See Sato, Ln. 500-505).
Sato teaches all the elements of the fishing spinning reel except for wherein the attachment portion is fixed to the line slider by tightening the fixing screw from a line slider side.
Although Sato is silent on forces fixing the attachment portion other than the friction created by shape memory allow deformation causing the end 46c of the bail 46 to wrap around shaft 43, it is implied that when screw 56 is secured, it could contribute to the force fixing the attachment portion to the line slider.
Additionally, Fujioka, Figures 1-6, teaches tightening the fixing screw 75 from a line slider 35 side (See Fujioka, Para. 0032, Ln. 2-5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Sato with a fixing screw which is tightened from the line slider side, as taught by Fujioka, for the purpose of preventing damage to the fishing line while in operation (i.e. the fishing line does not hit the screw when it becomes tangled) (See Fujioka, Para. 0032, Ln. 1-11).
Regarding Claim 3, Sato in view of Fujioka are advanced above.
Sato, annotated Figure 1 above, further teaches an accommodation portion 44’ having a bottomed tubular shape, provided in the line slider 44, and accommodating the attachment portion 46c’ (See Sato, Ln. 500-505),
wherein the fixing screw 56 is inserted into the line slider 44 through an opening 43’ of the accommodation portion 44’ (See Sato, Ln. 291-293).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIFFANY DOMONIQUE JEFFERSON whose telephone number is (571)272-0403. The examiner can normally be reached Monday-Friday 10am-7:30pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Momper can be reached at (571)270-5788. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.D.J./Examiner, Art Unit 3654
/ANNA M MOMPER/Supervisory Patent Examiner, Art Unit 3654