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 .
Application Status
Claims 1-8 are pending and have been examined in this application. Claims 1-8 are previously presented or original.
Examiner notes that Claims filed 10/28/2025 indicate that claim 1 has been amended, however no amendments were found in review of the claim, and therefore the claim appears to have been previously presented and the claim indicator appears to be a typo.
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 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 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over (US 20060179705 A1) to Markley in view of (US 7761951 B1) to O’Neal, (US 1943479 A) to Hesson, and (US 4852290 A) to Wallace.
In regards to claim 1, Markley teaches an adjustable fishing rod butt for use with a fishing reel and a rod blank, comprising: a first elongate member (Markley; 22); a second elongate member (Markley; 20) comprising an adjustable reel seat portion on an upper surface thereof (Markley; 46, 44); a hinge coupling the first elongate member to the second elongate member (Markley; 50 at 10),
Wherein the first elongate member comprises several openings (Markley; 74) which receive protrusions (Markley; 90) in the second elongate member, and locks an angular relationship of the first and second elongate members relative to one another (Markley; see FIG 5).
Markley fails to teach the first elongate member comprising an opening in a bottom surface thereof, the second elongate member having an arcuate positioning arm externally attached to a bottom surface thereof, wherein the arcuate positioning arm is configured to be positioned into the opening in the first elongate member;
the hinge comprising a u-shaped portion at a terminal end of a selected one of the first and second elongate members and a tongue portion at a terminal end of the other one of the first and second elongate members, wherein the tongue portion is configured to fit within the u- shaped portion, and wherein the u-shaped portion and the tongue portion comprise coaxially aligned openings for receiving a hinge pin to hingeably couple the first and second elongate members;
and a locking pin configured to lockingly engage the arcuate positioning arm via engagement with an opening in the arcuate positioning arm positioned within an alignment locking member including a transverse opening provided with the first elongate member to lock an angular relationship of the hingeably coupled first and second elongate members relative to one another, wherein the transverse opening is configured to align with the opening in the arcuate positioning arm.
O’Neal teaches the hinge comprising a u-shaped portion at a terminal end of a selected one of the first and second elongate members (O’Neal; U shaped portion at a terminal end of 32, into which 34 is inserted) and a tongue portion at a terminal end of the other one of the first and second elongate members (O’Neal; a tongue portion 34 at a terminal end of 14, 30, 36, 48, 50), wherein the tongue portion is configured to fit within the u- shaped portion (O’Neal; see FIG 3 where the tongue portion of 34 fits in between the U shaped ends of 32), and wherein the u-shaped portion and the tongue portion comprise coaxially aligned openings for receiving a hinge pin to hingeably couple the first and second elongate members (O’Neal; hinge pin 76 which passes through coaxial openings to couple the two portions together, see FIG 3)
PNG
media_image1.png
314
452
media_image1.png
Greyscale
Markley and O’Neal are analogous art from similar fields of endeavor i.e. angularly adjustable joints for handheld tools.
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 device of Markley such that the hinge has a u shaped portion and a tongue portion such as taught by O’Neal. The motivation for doing so would be to provide stabilization of the hinge to prevent breakage or separation of the elongate members at the joint.
Markley as modified by O’Neal fail to teach the first elongate member comprising an opening in a bottom surface thereof, the second elongate member having an arcuate positioning arm externally attached to a bottom surface thereof, wherein the arcuate positioning arm is configured to be positioned into the opening in the first elongate member;
and a locking pin configured to lockingly engage the arcuate positioning arm via engagement with an opening in the arcuate positioning arm positioned within an alignment locking member including a transverse opening provided with the first elongate member to lock an angular relationship of the hingeably coupled first and second elongate members relative to one another, wherein the transverse opening is configured to align with the opening in the arcuate positioning arm.
Hesson teaches the first elongate member (Hesson; 4) comprising an opening in a bottom surface thereof (Hesson; slot 8 is an opening through a bottom surface of 4), the second elongate member (Hesson; 2) having a positioning arm (Hesson; Brace 9) externally attached to a bottom surface thereof (Hesson; 9 attached through 10 to what could be considered a bottom surface based on orientation of the device), wherein the positioning arm is configured to be positioned into the opening in the first elongate member (Hesson; 11 is a singular opening in 9, and 9 is allowed to slidingly engage 8); and a locking pin (Hesson; 12, 14, 13) configured to lockingly engage the positioning arm, via engagement with an opening in the positioning arm (Hesson; see FIG 1 and 2 where the locking pin engages the opening 11) positioned within an alignment locking member including a transverse opening provided with the first elongate member (Hesson; alignment locking member being comprised of 8 and portion of 4 which receives 9, with transverse opening being the opening through which 12, 14, 13 passes) to lock an angular relationship of the hingeably coupled first and second elongate members relative to one another, wherein the transverse opening is configured to align with the opening in the positioning arm (Hesson; see FIG 2 where the locking pin 12, 14, 13 locks 4 and 2, which are hingeably coupled, in an angular relationship with each other; and the transverse opening through which 12, 14, 13 passes aligns with the opening 11 in the positioning arm 9).
PNG
media_image2.png
520
394
media_image2.png
Greyscale
Markley and Hesson are analogous art from similar fields of endeavor, i.e. angularly adjustable handheld pole tools.
It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Markley as modified by O’Neal to substitute the angular positioning mechanism with the one of Hesson, including the opening, the adjustable arm, and the locking pin. The motivation for doing so would be to provide an external arm that would mechanically support the fishing rod handle in its angular position to resist the strain against pulling up a fish and to minimize the amount of parts required for adjustment.
Markley as modified by Hesson fail to explicitly teach where the positioning arm is an arcuate positioning arm.
Wallace teaches where the positioning arm is an arcuate positioning arm (Wallace; see FIG 1 with 24 being arcuate).
Markley, Hesson, and Wallace are analogous art from similar fields of endeavor i.e. angularly adjustable handheld pole tools.
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 device of Markley as modified by O’Neal and Hesson such that the positioning arm is specifically arcuate, such as taught by Wallace. The motivation for doing so would be to utilize an arm that follows the natural arc of a change in angle.
In regards to claim 2, Markley as modified by O’Neal, Hesson, and Wallace teach the adjustable fishing rod butt of claim 1, wherein the angular relationship between the first and second elongate members relative to one another are at an angle equal to or less than 180 degrees (Markley; less than 180 degrees in FIGs 1, 2, and 5).
In regards to claim 3, Markley as modified by O’Neal, Hesson, and Wallace teach the adjustable fishing rod butt of claim 1, wherein the locking pin (Hesson; 12, 13, 14) comprises a head portion (Hesson; tip of pin 12 with the head) and a shaft portion (Hesson; shaft of 12, see FIG 9) extending from the head portion, a linear channel extending along a longitudinal length of the shaft terminating at a detent positioning proximate to the head portion (Hesson; threads on 12 which extend along the longitudinal length of the shaft and end in a detent along the shaft), and a resilient o-ring intermediate the head portion and the shaft (Hesson; see FIG 2 where ring 14 is between the head and the shaft).
In regards to claim 4, Markley as modified by O’Neal, Hesson, and Wallace teach the adjustable fishing rod butt of claim 1, wherein the first and second elongate members comprise aluminum (Markley; [0045] aluminum).
In regards to claim 5, Markley as modified by O’Neal, Hesson, and Wallace teach the adjustable fishing rod butt of claim 1, further comprising a hinge pin (O’Neal; 76) provided in the coaxially aligned openings (O’Neal; in 70, 72) including a head and a shaft extending from the head including a threaded terminal portion (O’Neal; see FIG 3 where 76 has a wider head and a shaft extending from the head, with a threaded terminal portion to engage with the threaded bore of 70, 72, see FIG 5) , wherein at least one of the coaxially aligned openings in the u-shaped portion includes a threaded portion configured to threadingly receive the threaded terminal portion of the hinge pin (O’Neal; where bores 70, 72 may be threaded, see FIG 5 to receive the hinge pin).
PNG
media_image3.png
209
267
media_image3.png
Greyscale
In regards to claim 6, Markley as modified by O’Neal, Hesson, and Wallace teach the adjustable fishing rod butt of claim 1, wherein the first and second elongate members are substantially cylindrical shaped (Markley; see FIGs 5, 6 where both elongate members are substantially cylindrical shaped).
In regards to claim 7, Markley as modified by O’Neal, Hesson, and Wallace teach the adjustable fishing rod butt of claim 1 wherein the adjustable reel seat portion comprises a first annular hood proximate to the hinge, a second annular hood in spaced relationship to the first annular hood (Markley; 48, 47 hoods to hold a reel, see FIG 2), and a nut abutting the second annular hood in threaded engagement with the first elongate member (Markley; 45 threadedly engaged with 47, see FIG 2) and configured to movably position the second annular hood relative to the first annular hood so as to retain a fishing reel between the first and second annular hoods (Markley; see FIG 2 with reel 44 retained between 47, 48), wherein the first and second annular hoods comprise at least one recessed portion configured to receive a fishing reel tongue of the fishing reel (Markley; recessed portions within 47, 48 to receive the reel tongue of 44).
In regards to claim 8, Markley as modified by O’Neal, Hesson, and Wallace teach the adjustable fishing rod butt of claim 1, wherein the positioning arm comprises at least one opening (Hesson; 9 has opening 11) and the locking pin is configured to selectively engage the at least one opening (Hesson; see FIG 1 and 2 where the locking pin engages the opening 11) and lock the angular relationship of the first and second elongate members relative to one another (Hesson; see FIG 2 where the locking pin 12, 14, 13 locks transverse to the opening 8, and FIG 1 where the members 4 and 2 are locked at an angle with respect to one another).
Response to Arguments
Applicant's arguments filed 10/28/2025 have been fully considered but they are not persuasive.
Applicant argues that the 103 rejections are improper hindsight reconstruction, and are references drawn from different fields and address distinct problems; each reference being designed for a unique context with structural and functional requirements that are not analogous to those of an adjustable fishing rod butt intended for deep sea sport fishing. Applicant argues each prior art is part of a device which is not for fishing, and that the technical challenges are different, and that the rationales stated in the rejections are general and non-specific.
Examiner respectfully disagrees. The prior art references are analogous art from the same field of endeavor, i.e. angularly adjustable rod implements and tools. Further, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, the argument that the intended use of the device as being “for deep sea sport fishing” with unique technical challenges does not provide specific differentiation of the claimed structure and the cited references. Applicant poses arguments such as that the mechanisms used in the instant invention and fishing rods require mechanisms which withstand torque, dynamic loads, and repetitive stress. However, the claims do not cite structures which are different from the prior art such that the prior art’s structures do not teach this. It is asserted that the prior art’s structures teach the claims as-written when applied in combination and would be applicable to improve upon Markley’s fishing rod for a fishing application.
Regardless of the intended use purpose of each device, the prior art are all related in that they teach and suggest known advantageous structures which assist in angularly adjusting rod-shaped tools and implements. One of ordinary skill in the art, when looking to improve upon the functionality of an angularly adjustable fishing rod, would naturally look towards other angularly adjustable mechanisms. Applicant’s assertion that one of ordinary skill would have only looked at other fishing implements excludes the clear relationship between angularly adjustable tools. One of ordinary skill would not have exclusively looked towards the fishing industry to solve a specific problem of improving upon an angular joint.
Additionally, 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). Further, In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In the instant case, Markley’s angularly adjustable fishing rod suggests the aspect of angular adjustments, and each of O’Neal, Hesson, and Wallace all teach angularly adjustable tools. Therefore it would have been obvious for one of ordinary skill to have combined these references as stated in the rejections above, since doing so is suggested in the prior art, and these hinges, adjustable joints, and mechanisms are demonstrated as being known and advantageous. Markley teaches where such adjustability is desired in the fishing arts, and O’Neal, Hesson, and Wallace teach these mechanisms utilized in similarly angularly adjustable rod and hand-held tools. The prior art further provides structures which suggest improvements known in the art; providing a u shaped hinge instead of a two-part hinge provides stability on both sides of the tang of a hinge, providing an external arm to support the elongate members at positions away from the hinge provides support against forces, etc. These are all well-known motivations which would have been obvious to one of ordinary skill in the art and would have motivated one of ordinary skill to combine the teachings of these references.
It is therefore asserted that the references of Markley, O’Neal, Hesson, and Wallace are all applicable and that the combination as provided in the 103 rejection above teaches the claim language as written. It is further respectfully noted that these argued advantages for the intended use of the device are not requirements of the claims. The claims do not have any language with define the instant invention as structurally different from the prior art. The combination of the prior art currently teaches the claims as-written.
Applicant argues that Markley teaches away from the external mechanism of Hesson, and that Hesson’s mechanism would defeat the purpose of Markley’s design and introduce new problems. Applicant then argues that O’Neal’s hinge would require significant redesign of Markley, and that fishing applications would render Hesson’s mechanism inadequate or unreliable. Applicant also argues Wallace’s arcuate arm is incompatible with the requirements of an adjustable fishing rod butt which must withstand repeated angular adjustments and substantial forces during use. Applicant argues that the prior art fails to suggest the claimed combination and teach away from it and present structures which are incompatible with each other.
Examiner respectfully disagrees. Markley does not have any statement to teach away from the benefits of an external mechanism. Just because Markley’s device promotes the teaching of its angular adjustment mechanism does not mean it is teaching away from improvements which would be provided from references such as O’Neal, Hesson, and Wallace.
It is asserted that O’Neal’s hinge would have been applicable to Markley’s hinge, and that incorporating a hinge with a u-shape on either side of a tang would be within the purview of one of ordinary skill in the art. Further, it is asserted that Hesson’s mechanism would be capable of providing the angular adjustment needed for a fishing rod when fishing, and that Wallace’s arcuate arm is capable of withstanding repeated forces, as it supports a fishing rod which would necessarily experience forces from fishing. Finally, there is no support for the prior art being ‘incompatible’ with each other. It is asserted that these structures taught by the prior art obvious and the references do not interact in such a way as to make the primary reference inoperable or incapable of its intended use of an angularly adjustable fishing rod.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues the technical advantages of the arcuate positioning arm, the u-shaped hinge, the locking pin and argues that the prior art fails to teach these advantages.
Examiner notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the instant case, it is asserted that these features which are argued, the arcuate positioning arm, the u-shaped hinge, and the locking pin mechanisms are all taught by the combined references in the prior art and all demonstrate distinct known advantages as provided in the statements of motivation in the 103 rejection above. Just because applicant has noted that there are other advantages of these structures cannot be the basis for patentability when the differences are otherwise obvious.
As stated above, applicant argues several features, improvements, technical advantages, and the like, which is asserted by applicant to make the claimed invention different or distinct from the prior art. However, Examiner asserts that this is not supported in the claim language as there is no specific claim language incorporated which differentiates the structure of the claimed invention and how these structures are meant to provide the intended use or unique technical advantages over the prior art. The combination of the cited prior art teaches the claims as-written and would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATELYN T TRUONG whose telephone number is (571)272-0023. The examiner can normally be reached on Monday - Friday: 8-6.
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, KIMBERLY BERONA can be reached on (571) 272-6909. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATELYN T TRUONG/Primary Examiner, Art Unit 3647