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
Claims 29-30 and 33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/22/2025.
Applicant's election with traverse of Species H: Fig. 23 in the reply filed on 05/22/2025 is acknowledged. The traversal is on the ground(s) that “The undersigned attorney respectfully traverses the need to elect one of the listed species at least because the Examiner has not specified which different classification areas would have to be searched if all purported species were considered, and believes that a manageable number of classification areas would be required if all purported species were considered.” This is not found persuasive because as indicated in the restriction requirement filed 04/01/2025, the examiner has provided examples of employing different search strategies or search queries in view of the different species. The examiner is not required to provide all of the reasons as to why there is a serious search and/or examination burden for the patentably distinct species. MPEP 808.02 states that search burden can be established by elements (A), (B), or (C). None of which take into account a "manageable number of classification areas”. The Examiner has noted that element (C) A different field of search has been satisfied (see pages X-Y of the restriction requirement). No arguments are found directed to this particular element.
In response to applicant’s arguments that, “By summarily concluding that the application contains claims directed to groups that are "independent or distinct," the Examiner has failed to demonstrate the independence and distinctness required for the use of the discretionary authority to require restriction that is provided by 35 U.S.C. §121.”. This is not found persuasive because MPEP 806.04 clearly states, “Where an application includes claims directed to different embodiments or species that could fall within the scope of a generic claim, restriction between the species may be proper if the species are independent or distinct.”.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the solar panel and batteries, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 21, 23, 28, and 35-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Denmon; Terry (US 20200113174 A1).
Regarding claim 21 Denmon discloses a decoy (Fig. 14); [0046] comprising: a body having a head portion connected to a body portion that is connected to a tail portion, the body adapted to represent a game animal (Fig. 14; 501); and a detachable moveable member (Fig. 15; 615) removable from the body, wherein the moveable member is moveable about an axis between a first position and a second position relative to the body [0046], the detachable movable member having a first surface with a first region and a second region separate from the first region, the first region having a first visual indicia (Fig. 15; 615a) and a second region having a second visual indica (Fig. 15; 615b), the second visual indicia being different than the first visual indicia [0046], the first visual indica and the second visual indicia configured to simulate the appearance and behavior of the game animal [0046].
Regarding claim 23 Denmon, as shown above, discloses all of the limitations of claim 21. Denmon further discloses comprising a motor (107); [0045] connected to the detachable moveable member, the motor adapted to move the moveable member from the first position to the second position.
Regarding claim 28 Denmon, as shown above, discloses all of the limitations of claim 21. Denmon further discloses wherein the detachable moveable member is adapted to oscillate between the first position and the second position [0045].
Regarding claim 35 Denmon, as shown above, discloses all of the limitations of claim 23. Denmon further discloses wherein the motor is powered by batteries [0054].
Regarding claim 36 Denmon, as shown above, discloses all of the limitations of claim 23. Denmon further discloses further comprising a housing (Fig. 15; 602); wherein the detachable moveable member is disposed within the housing (Fig. 15).
Regarding claim 37 Denmon, as shown above, discloses all of the limitations of claim 21. Denmon further discloses wherein the first visual indica is at least partially hidden in the first position (Fig. 17); [0046], and the first visual indica is partially not hidden in the second position.
Regarding claim 38 Denmon, as shown above, discloses all of the limitations of claim 21. Denmon further discloses wherein the detachable moveable member is a wedge (Fig. 9; 115); [0044].
Regarding claims 39-40 Denmon discloses a duck decoy system (Fig. 14); [0046] comprising:
A remote control in operative communication with a motor [0058];
a body having a head portion connected to a body portion that is connected to a tail portion, the body adapted to represent a duck [0055]; a detachable movable member removable from a body (Fig. 15; 615), wherein the detachable moveable member is moveable about an axis between a first position and a second position relative to the body [0045], the detachable moveable member having a first surface with a first region (Fig. 15; 615a) and a second region separate from the first region (Fig. 15; 615b), the first region having a first visual indicia, the second region having a second visual indicia, the first visual indicia being different than the second visual indicia, the first visual indicia and the second visual indica configured to simulate the appearance and behavior of the duck [0045]; and a motor (107); [0045] connected to the detachable moveable member, the motor being adapted to move the detachable moveable member from the first position to the second position.
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) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Denmon; Terry (US 20200113174 A1) in view of Jarboe; Nathan (US 20200077640 A1).
Regarding claim 22 Denmon, as shown above, discloses all of the limitations of claim 21. Denmon does not disclose wherein the detachable moveable member is moveable from the first position to the second position by wind.
Jarboe teaches wherein the detachable moveable member is moveable from the first position to the second position by wind [0046].
It would have been obvious to one of ordinary skill within the art before the effective filing date of the claimed invention to have modified the detachable moveable member of Denmon to be moveable from the first position to the second position by wind, as taught by Jarboe, in order to mimic more natural movement [0004].
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Denmon; Terry (US 20200113174 A1) in view of Layfield; Corey (US 12144336 B1).
Regarding claim 34 Denmon, as shown above, discloses all of the limitations of claim 21. Denmon does not disclose wherein the motor is powered by a solar panel.
Layfield teaches wherein the motor is powered by a solar panel (Col. 4, lines 50-60).
It would have been obvious to one of ordinary skill within the art before the effective filing date of the claimed invention to have substituted the batteries of Denmon with the solar panel of Layfield in order to provide a renewable energy source.
Claim(s) 24-27 and 31-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Denmon; Terry (US 20200113174 A1) in view of Price, Fred F. SR. et al. (US 20020069571 A1).
Regarding claims 24-25 Denmon, as shown above, discloses all of the limitations of claim 21. Denmon does not disclose a third region and a third visual indicia; a fourth region and a fourth visual indicia.
Price teaches a third region and a third visual indicia (Fig. 6; 149b); a fourth region and a fourth visual indicia (149a); [0048].
It would have been obvious to one of ordinary skill within the art before the effective filing date of the claimed invention to have modified the detachable moveable member of Denmon to include third and fourth regions and visual indicia, as taught by Price, in order to create a visual illusion of species-specific coloration [0048], and since duplication of the essential working parts of a device involves only routine skill in the art.
Regarding claim 26 Denmon, as shown above, discloses all of the limitations of claim 21. Denmon does not disclose a pattern. Price teaches a pattern [0047]-[0048].
It would have been obvious to one of ordinary skill within the art before the effective filing date of the claimed invention to have modified the first visual indicia of Denmon to include a pattern, as taught by Price, in order to create a visual illusion of species-specific coloration [0048].
Regarding claim 27 Denmon in view of Price, as shown above, discloses all of the limitations of claim 26. Denmon in view of Price does not disclose wherein the pattern includes a pattern of black and white.
It would have been obvious to one of ordinary skill within the art before the effective filing date of the claimed invention to have modified the pattern of Denmon and Price to include a pattern of black and white, providing the predictable result of attracting a particular game animal as desired by a user.
Regarding claim 31-32 Denmon in view of Price, as shown above, discloses all of the limitations of claim 25. Denmon in view of Price does not disclose wherein the first indicia and the second indicia are the same and the third indicia is different; wherein the third indicia is the same as the fourth indicia.
It would have been obvious to one of ordinary skill within the art before the effective filing date of the claimed invention to have modified the first and the second indicia are the same and the third indicia is different; wherein the third indicia is the same as the fourth indicia, providing the predictable result of attracting a particular game animal as desired by a user.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY LOWERY whose telephone number is (571)270-3228. The examiner can normally be reached M-F 7 am-4 pm MST.
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, Timothy Collins can be reached at 571-272-6886. 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.
/BRITTANY A LOWERY/Examiner, Art Unit 3644
/MONICA L PERRY/Primary Examiner, Art Unit 3644