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 .
Claim Objections
Claims 18 and 24 are objected to because of the following informalities:
Claim 18 is missing an ending period.
Claim 24 recites “secure the hook in bait to the sinker” but the wording seems awkward and does not entirely grammatically make sense. The hook already has applied bait from earlier steps in the claim and one could imagine the tape secures the hook into the bait or secure the hook in the bait but the wording feels incorrect. The original claim limitation “hook and bait” seemed better.
Appropriate correction is required.
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.
Claim 2, and 16-18 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 2 recites “the weight and sinker are without any longitudinal aperture” but it is written as if the weight and the sinker are two separate objects while in claim 1, the weight is part of the sinker. How can the claim limitations be referring to one part of the invention while also referring to the whole invention at the same time? Does it mean both that one part and the whole invention does not have a longitudinal aperture?
Additionally, as seen in fig. 3, recess 8 is a longitudinal aperture such that the claim is contradictory to the invention. For the purpose of examination, the Examiner interprets the claim to only mean the weight is without any longitudinal aperture therethrough.
Claim 16 depends upon claim 9 but claim 9 has been cancelled. Dependent claims 17-18 depends on claim 16 and has the same issue. For the purposes of examination, the Examiner interpret the claim to depend upon claim 1.
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.
Claims 1-3, 6, 8, 10-16, 19-20, and 22-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Osborne (GB 2165731).
Regarding claim 1, Osborne teaches of (fig. 1) a fishing sinker (fig. 2, device sinks in the water; p. 2 lines 12-17, device is a sinker) comprising:
a weight (weight nose section 3);
an elongate member (bait chamber 4 is elongate) extending from the weight (seen in fig. 1), a proximate end of the elongate member attached to the weight (3) (seen in fig. 1); and
an attachment point (attachment for wired accessory 6) at an opposite distal end of the elongate member for attaching a fishing line (seen in fig. 1), wherein the elongate member is configured to receive a baited hook (hook in fig. 1 can hold a bait) from a side of the elongate member (hook is received in a side of the elongate member 4);
wherein the elongate member (4) comprises a tubular part (elongate member 4 is tubular) attached to the weight (3) (seen in fig. 1) and an elongate part extending from the tubular part (seen in fig. 1), the elongate part presenting the recess for receiving a baited hook from a side of the elongate member (seen in fig. 1); and
wherein the elongate part extends for at least 2/3 the length of the tubular part (annotated fig. 1 below, elongate part can be interpretated as at least 2/3 length of bait chamber 4 from the end by 6 to the end by rubber band 8. Examiner notes that the claim claims that the elongate part presents the recess but the claim does not claim that the recess is the entire elongate part).
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Annotated fig. 1: Fig. 2 of Osborne
Regarding claim 2, Osborne teaches of claim 1, and wherein (fig. 1) the weight (4) is a solid unitary mass, and the weight and sinker are without any longitudinal aperture therethrough (as best understood by the 112b rejection above, p. 1 lines 18-33, the weighted nose section is connected to a vented bait chamber such that when the shuttle is in the water, water is flooded into the bait chamber and not the weighted nose section. In the manufacture of the shuttle, molten lead is poured into the crushed end of copper tubing and two cuts are made to form the vents 2. The forward edges of the cuts are eased into the centre of the shuttle and more molten lead is poured into the nose section 3 to seal it.).
Regarding claim 3, Osborne teaches of claim 1, and wherein (fig. 2) the mass of the weight (3) is much greater than the mass of the elongate member (4) so that a centre of mass of the sinker in a longitudinal direction of the sinker is at the weight (when the sinker is sinking in the water, the weight leads the sinking motion, showing that the centre of mass is at the weight. Additionally, the weight 3 is solid lead while the elongate member 4 is a piece of copper tubing, such that the mass of the weight 3 would be greater than the mass of the elongate member 4 so that the centre of mass of the sinker would be at the weight 3).
Regarding claim 6, Osborne teaches of claim 1, and wherein the length of the elongate member extending from the weight is 80mm to 140mm (p. 1 lines 54-56, 140 mm length of 28 mm dia. copper tubing is used for formation of the elongate member).
Regarding claim 8, Osborne teaches of claim 1, and wherein (figs. 1-2) the elongate member (4) presents a laterally facing open recess for receiving a baited hook (hook can hold bait) from a side of the elongate member (seen in fig. 1).
Regarding claim 10, Osborne teaches of claim 1, and wherein (fig. 1) the cross section of the elongate part corresponds with a portion of the cross section of the tubular part (seen in fig. 1).
Regarding claim 11, Osborne teaches of claim 1, and wherein (fig. 1) the elongate member (4) is formed from length of tube with a side portion removed (seen in fig. 1), the tubular part of the elongate member comprising a full cross section of the tube (area in front of the removed portion) and the elongate part comprising a portion of the cross section of the tube (seen in fig. 1).
Regarding claim 12, Osborne teaches of claim 1, and wherein (fig. 2) the elongate part (recess of elongate member 4) comprises one-quarter to three-quarters of the cross section of the tubular part (seen in fig. 2) and is preferably one-half of the cross section of the tubular part (elongate part seems sufficiently one-half of the cross section of the tubular part).
Regarding claim 13, Osborne teaches of claim 11, and wherein the tube comprises a circular cross section or a square cross section (fig. 2, of the options, the cross section is circular).
Regarding claim 14, Osborne teaches of claim 1, and wherein the distal end of the elongate member (fig. 1, 4) is open (seen in fig. 1).
Regarding claim 15, Osborne teaches of claim 1, and (fig. 1) wherein the elongate member (4) is configured to operate as a vane, to cause the sinker to rise to the surface during retrieval (p. 1 lines 25-33, upon retrieval the shuttle will tend toward the water surface).
Regarding claim 16, Osborne teaches of claim 1, and wherein the tubular part extends from the weight to present a rearwardly facing recess for receiving a fish attractant (seen in fig. 1, a fish attractant can be attached to the hook and is received in the rearwardly facing recess).
Regarding claim 19, Osborne teaches of claim 1, and wherein (fig. 1) the attachment point (6) is an aperture through the elongate member (4) at the distal end of the elongate member (seen in fig. 1).
Regarding claim 20, Osborne teaches of claim 1, and wherein the weight has a mass of 2 to 8 ounces (p. 1 lines 54-62, 85 grams of molten lead is used for the weight. 85 grams is approximately 3 ounces).
Regarding claim 22, Osborne teaches of claim 1, and wherein (fig. 4) the sinker comprises a hook (seen in fig. 4) attached to the sinker (fig. 1, attached at point 10) to trail slightly behind or towards a weight end of the sinker during retrieval to configure the sinker as a fishing lure during retrieval (p. 1 lines 44-47, Fig. 4 shows the shuttle upon retrieve. The hook is trailing slightly behind the weight end during retrieval).
Regarding claim 23, Osborne teaches of claim 22, and wherein (fig. 1) the hook (seen in fig. 1) is attached to the attachment point by a line separate from a main fishing line attached to the attachment point during use (fishing hook has a separate line that is attached at point 10 and through the line extending through point 10 to point 6, the fishing hook is attached to the attachment point 6 during use).
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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Osborne in view of Miklos (US 4798021)
Regarding claim 4, Osborne teaches of claim 1, but does not appear to teach of wherein the mass of the elongate member is less than half the mass of the weight.
Miklos teaches of adjusting the mass of the device based on location (body 34 can be filled with air and different weights such as the weight 34W in different parts of the body such as cylindrical portion 34C, 34V, and 34W).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Osborne to incorporate the teachings of Miklos of adjusting the distribution of the masses in the device, such as wherein the mass of the elongate member is less than half the mass of the weight, in order to change the mass and buoyancy of the apparatus such that it affects the depth at which it will travel and manner in which the apparatus responds to changes in direction of the waves as motivated by Miklos in col. 3 lines 65-col. 4 line 11.
It should be noted that the relative mass distribution as claimed does not show criticality as disclosed in the specifications or the drawings. One of ordinary skill in the arts would have adjusted the masses in the elongate member and the weight such that the combination of both masses gave the desired buoyancy, depth at which it will travel, and manner in which the apparatus responds to changes in direction of waves in order to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 5, Osborne teaches of claim 1, but does not appear to teach of wherein the mass of the elongate member is less than 25% of the mass of the weight.
Miklos teaches of adjusting the mass of the device based on orientation or bias (body 34 can be filled with air and different weights such as the weight 34W in different parts of the body such as cylindrical portion 34C, 34V, and 34W).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Osborne to incorporate the teachings of Miklos of adjusting the distribution of the masses in the device, such as wherein the mass of the elongate member is less than 25% of the mass of the weight, in order to change the mass and buoyancy of the apparatus such that it affects the depth at which it will travel and manner in which the apparatus responds to changes in direction of the waves as motivated by Miklos in col. 3 lines 65-col. 4 line 11.
It should be noted that the relative mass distribution as claimed does not show criticality as disclosed in the specifications or the drawings. One of ordinary skill in the arts would have adjusted the masses in the elongate member and the weight such that the combination of both masses gave the desired buoyancy, depth at which it will travel, and manner in which the apparatus responds to changes in direction of waves in order to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. 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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Osborne in view of Roser (EP 1506709).
Regarding claim 7, Osborne teaches of claim 1, but does not appear to teach of wherein the weight presents a nose cone shape to provide an aerodynamic profile.
Roser teaches of (fig. 1) wherein the weight (abstract, weight is in the conical part 1) presents a nose cone shape to provide an aerodynamic profile (seen in 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 have modified Osborne to incorporate the teachings of Roser of wherein the weight presents a nose cone shape to provide an aerodynamic profile in order to direct direction of the water and the air towards a single point such as to modify the hydrodynamics and aerodynamic profile.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Osborne in view of Kwong et al. (US 20110197493), hereinafter Kwong.
Regarding claim 17, Osborne teaches of claim 16, but does not appear to teach of comprising a sponge received in the rearwardly facing recess for receiving a liquid fish attractant.
Kwong teaches of (fig. 1A) comprising a sponge (¶0026, attractant tablet 104 can be in a sponge format) received in the rearwardly facing recess for receiving a liquid fish attractant (attractant tablet chamber 109) (¶0026, liquid dye can simply to be impregnated into attractant tablet 104 when it is in a sponge format).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Osborne to incorporate the teachings of Kwong of comprising a sponge received in the rearwardly facing recess for receiving a liquid fish attractant in order to use an attractant that users can easily tell whether the sponge is still effective by simply observing the color of the sponge as motivated by Kwong in para. 0026.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Osborne.
Regarding claim 18, Osborne teaches of claim 16, but does not appear to teach of wherein the rearwardly facing recess has a volume of 1 to 5 millilitres.
However, it should be noted that the volume as claimed does not show criticality as disclosed in the specifications or the drawings. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the volume of the rearwardly facing recess to have any desired volume, such as a volume of 1 to 5 millilitres in order to adjust how big or small the user wants the sinker to be and how much attractant the user wants to attach to the sinker or how much space to allow the hook to freely move in and out of the recess, 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.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Osborne in view of Wrape (US 7530194).
Regarding claim 21, Osborne teaches of claim 1, but does not appear to teach of wherein the elongate member is formed from aluminium.
Wrape teaches of wherein (fig. 8) the elongate member (casing 20) is formed from aluminium (col. 5 lines 28-38, casing material essentially comprises aluminum, steel or brass).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Osborne to incorporate the teachings of Wrape of wherein the elongate member is formed from aluminium in order to use material capable of providing the necessary structural rigidity for the sinker as it is used in the water as motivated by Wrape in col. 5 lines 28-38. Additionally, it should be noted that the material as claimed does not show criticality as disclosed in the specifications or the drawings. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to use aluminum instead of copper for the sinker, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 24-30 are rejected under 35 U.S.C. 103 as being unpatentable over Osborne in view of Roser (EP 1506709), and Fishing Sinker - Public group post on Facebook (https://www.facebook.com/groups/ 1593751180840274/posts/2588380128044036/'?comment_id=25940309308 I 2289), hereinafter Fishing Sinker.
Regarding claim 24, Osborne teaches of (fig. 1) method of fishing using a sinker as claimed in claim 1 (see rejection of claim 1 above), wherein the method comprises:
attaching a fishing line to the attachment point (fig. 1, fishing line going through ring 6) with a hook attached to the line or a secondary line attached to the sinker (hook attached to fishing line through another line at point 10), and applying bait to the hook (claim 1, baited hook means applying bait to the hook);
placing the baited hook in the sinker on the elongate member (4) from a side of the elongate member (seen in fig. 1),
casting the sinker with attached baited hook a distance into a body of water (p. 1 lines 5-6, sinker is used during casting),
whereby the sinker sinks to the bottom of the body of water (p. 1 lines 42-43, sinker sinks to the sea bed) and
allowing the baited hook to release from the sinker (p. 1 lines 25-33, bait is expelled from the chamber and is allowed to be released from the winker when it hits the bottom of the body of water).
Osborne does not appear to teach of casting using a fishing rod and reel,
wrapping tape with dissolvable adhesive around the hook and bait and elongate member to secure the hook in bait to the sinker; and the tape adhesive dissolves in the water.
Roser teaches of casting using a fishing rod and reel (¶007, fishing weight of bait is casted by being connected to the reel of the fishing rod).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Osborne to incorporate the teachings of Roser of casting the sinker with attached baited hook a distance into a body of water using a fishing rod and reel in order to use equipment for angling and fishing such that it is casted across an adequate distance and can be retrieved through the reel.
Fishing Sinker teaches of wrapping tape with dissolvable adhesive around the hook and bait and elongate member to secure the hook in bait to the fishing device (p. 1, wrap the bait in with gummed paper. The picture shows the gummed paper wraps the bait around the elongate member of the hook.),
the tape adhesive dissolves in the water (p. 1, The gummed paper washes off in the water and releases the bait).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Osborne to incorporate the teachings of Fishing Sinker of wrapping tape with dissolvable adhesive around the hook and bait and elongate member to secure the hook and bait to the sinker, the tape adhesive dissolves in the water in order to secure the hook and bait to the sinker and control the release of the bait from the sinker to be when the sinker is deeper into the water and not within impact.
Regarding claim 25, Osborne as modified teaches of claim 24, and wherein the method comprising retrieving the line, hook and sinker using the rod and reel, causing the sinker to lift to the surface of the water during retrieval (p. 1, lines 30-33, retrieval causes the sinker to lift toward the water surface by using the rod and reel to move it towards the water surface).
Regarding claim 26, Osborne as modified teaches of claim 24, and Fishing Sinker further teaches of wherein (p. 1) the tape has the adhesive applied to one side (gummed paper needs to have an adhesive applied on at least one side), and wrapping the tape around the elongate member adheres the tape to itself to attach the baited hook to the elongate member (wrap the bait with the gummed paper; the picture shows the gummed paper over the elongate member of the lure such that the tape is adhered to itself).
Regarding claim 27, Osborne as modified teaches of claim 26, and wherein the adhesive is activated by wetting (p. 1, lick the paper to wrap the gummed paper and have the adhesive work).
Regarding claim 28, Osborne as modified teaches of claim 24, and Fishing Sinker further teaches of wherein the tape is biodegradable (p. 1, gummed paper adhesive washes off in the water, meaning it is broken down by water and is biodegradable).
Regarding claim 29, Osborne teaches of (fig. 1) a method of manufacturing a sinker as claimed in claim 1 (see rejection above for claim 1), the method comprising:
providing a parent length of tube (p. 1 lines 48-72, formed from 28mm copper tubing), and cutting the parent tube into pieces (140mm length of 28 mm dia. copper tubing is cut), wherein each piece forms the elongate member (cut the copper tubing into 140mm lengths where each can be the elongate member);
removing a side portion from the piece of tube to form the elongate member comprising a tubular part and an elongate part (p. 1 lines 53-55, the tubing is then cut open as shown to form the bait chamber 4);
adding the attachment point to the distal end of the elongate member (p. 1 lines 67-72, holes are then drilled in the tail to receive the split ring 6); and
attaching the tubular part of the elongate member to the weight (p. 1 lines 54-62, The forward edges of the cuts are eased into the centre of the shuttle and more molten lead is then poured into the nose section 3 to seal it).
Regard claim 30, Osborne teaches of claim 29, and wherein the step of attaching the tubular part to the weight comprises placing an end portion of the tubular part in a mould and poring molten material into the mould to form the weight moulded to the tubular part (p. 1 lines 54-62, A 140 mm length of 28mm dia. copper tubing is crushed at one end thus inducing an elliptical cross section and longitudinal curvature. The 'lips' 1 of the crushed end are then braised. 85 grams of molten lead is poured into the crushed end and two cuts to form the vents 2 are made 6mm or so above the level of the cooled lead. The forward edges of the cuts are eased into the centre of the shuttle and more molten lead is then poured into the nose section 3 to seal it.).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8, and 10-30 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 argues that the Osborne sinker requires a substantial portion of the bait to fit within the tubular portion which may be difficult if the bait is a whole fish and thus would not be able to teach claim 1. The Examiner respectfully disagrees.
The argument does not relate to what is claimed in claim 1. Claim 1 does not claim for a whole fish to be the bait. A bait the size of a small piece of chum or a worm can be used as the bait and be used in the Osborne sinker. The argument does not seem to relate to the amendment. The amendment amends in claim 9 and further claims that the elongate part extends for at least 2/3 the length of the tubular part, which Osborne teaches as recited above. The elongate part can be interpretated as at least 2/3 length of bait chamber 4 from the end by 6 to the end by rubber band 8 as seen in annotated fig. 1. Examiner notes that the claim claims that the elongate part presents the recess but the claim does not claim that the recess is the entire elongate part
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the length of the elongate member extending from the weight is important for the correct flight of the sinker during casting) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Nevertheless, the Osborne sinker is able to be casted and fly through the air correctly to the body of water as seen in fig. 2 of Osborne.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Applicant merely asserts the Examiner used hindsight reasoning without specifically pointing out what claims or what limitations the Examiner used hindsight reasoning.
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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The cited references made of record in the contemporaneously filed PTO-892 form and not relied upon in the instant office action are considered pertinent to applicant's disclosure, and may have one or more of the elements in Applicant’s disclosure and at least claim 1.
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/ZOE TAM TRAN/ Examiner, Art Unit 3647