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 1-9 and 15 are objected to because of the following informalities: Regarding claim 1, line 1, “reed insert” should be changed to a reed insert. Regarding claim 6, line 1, “wherein holder” should be changed to wherein the holder. Regarding claim 15, line 1, “holder” should be changed to the holder. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6 and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 6, lines 3-4, “the diaphragm” is indefinite. The diaphragm is only ever introduced in the preamble of claim 1 in association with an intended use of the holder and is not positively recited. Therefore, it is unclear if the diaphragm is required structure of claim 6.
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, 5-10, 12, and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Folmar (US 2021/0345598 A1).
Regarding claim 1, Folmar discloses a one-piece holder [108] for a game call [100], the game call [100] including reed insert [104] with a diaphragm [124] supported by a frame [112], the holder [108] comprising: a body portion [130] molded from an elastomeric material configured to retain to a resting shape (paragraph 0034), the body portion [130] including a top surface [152] and an inward-facing surface [142] that extends around a cutout [138] positioned at a front side [140] of the body portion [130]; a slot [146] formed in the inward-facing surface [142], the slot [146] being dimensioned to receive the frame [112] of the reed insert [104] so that the diaphragm [124] spans across the cutout [138]; a skirt [134] joined to the body portion [130] and extending from the body portion [130] in a direction away from the cutout [138]; a generally planar bottom surface (planar bottom surface of skirt [134]; see “bottom surface” in annotated Figures 6B and 8B below) of the holder [108]; and a relief [154] (also see “relief” in annotated Figures 6B and 8B below) extending away from a portion of the bottom surface (see “bottom surface” in annotated Figure 6B and 8B below) of the holder [108] to interrupt an air flow passing along the bottom surface (see “bottom surface” in annotated Figure 6B and 8B below) (paragraphs 0032-0038, Figures 1-3, 6B-8B, and annotated Figures 6B and 8B below); wherein the bottom wall [154] is a relief (i.e., a projecting detail or ornament)). It should be appreciated that the applicant’s functional language in the claim (to interrupt an air flow passing along the bottom surface) does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Additionally, Folmar’s relief is capable of performing this function.
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Regarding claim 3, Folmar discloses the holder [108] of claim 1, wherein the relief [154] (also see “relief” in annotated Figures 6B and 8B above) is integrally formed with the holder [108] (paragraphs 0035-0037, Figure 1, and annotated Figures 6B and 8B above).
Regarding claim 5, Folmar discloses the holder [108] of claim 1, wherein the relief [154] (also see “relief” in annotated Figures 6B and 8B above) is positioned adjacent to at least a portion of the cutout [138] (paragraphs 0035-0036, Figure 2, and annotated Figures 6B and 8B above).
Regarding claim 6, Folmar discloses the holder [108] of claim 1, wherein holder [108] includes a front end (see front side [140]) and a rear end (see midpoint of peripheral edge [168]), wherein air flows across the bottom surface (see “bottom surface” in annotated Figure 6B and 8B above) from the rear end (see midpoint of peripheral edge [168]) to the front end (see front side [140]) during use of the game call [100] and the diaphragm [124] is at the front end (see front side [140]) of the holder [108] and the relief [154] (also see “relief” in annotated Figures 6B and 8B above) is positioned to interrupt the air flow before the air flow reaches the diaphragm [124] (paragraphs 0032, 0035-0036, 0038, Figures 1, 8A, and annotated Figure 6B and 8B above). It should be appreciated that the applicant’s functional language in the claim (to interrupt the air flow before the air flow reaches the diaphragm) does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Additionally, Folmar’s relief is capable of performing this function.
Regarding claim 7, Folmar discloses the holder [108] of claim 1, wherein the relief [154] (also see “relief” in annotated Figures 6B and 8B above) creates turbulent air flow along the bottom surface (see “bottom surface” in annotated Figure 6B and 8B above) (paragraph 0038 and annotated Figures 6B and 8B above). It should be appreciated that the applicant’s functional language in the claim (creating turbulent air flow along the bottom surface) does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Additionally, Folmar’s relief is capable of performing this function.
Regarding claim 8, Folmar discloses the holder [108] of claim 1, wherein the elastomeric material is a plastisol or a rubber elastomer (paragraph 0034).
Regarding claim 9, Folmar discloses the holder [108] of claim 6, wherein the elastomeric material is suitable for inclusion in an oral cavity of a user (paragraph 0034).
Regarding claim 10, Folmar discloses a game call [100] comprising: a holder [108] with a body portion [130] molded from an elastomeric material configured to retain to a resting shape (paragraph 0034), the body portion [130] including a top surface [152] and an inward-facing surface [142] that extends around a cutout [138] positioned at a front side [140] of the body portion [130]; a reed insert [104] including a diaphragm [124] stretched across a frame [112], the reed insert [104] configured to extend across the cutout [138] when the reed insert [104] is received in the holder [108]; a slot [146] formed in the inward-facing surface [142], the slot [146] being dimensioned to receive the frame [112] of the reed insert [104] so that the diaphragm [124] spans across the cutout [138]; a skirt [134] joined to the body portion [130] and extending from the body portion [130] in a direction away from the cutout [138]; a generally planar bottom surface (planar bottom surface of skirt [134]; see “bottom surface” in annotated Figures 6B and 8B above) of the holder [108]; and a relief [154] (also see “relief” in annotated Figures 6B and 8B above) extending away from a portion of the bottom surface (see “bottom surface” in annotated Figures 6B and 8B above) of the holder [108] to interrupt an air flow passing along the bottom surface (see “bottom surface” in annotated Figures 6B and 8B above) (paragraphs 0032-0038, Figures 1-3, 6B-8B, and annotated Figures 6B and 8B below); wherein the bottom wall [154] is a relief (i.e., a projecting detail or ornament)). It should be appreciated that the applicant’s functional language in the claim (to interrupt an air flow passing along the bottom surface) does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Additionally, Folmar’s relief is capable of performing this function.
Regarding claim 12, Folmar discloses the game call [100] of claim 10, wherein the relief [154] (also see “relief” in annotated Figures 6B and 8B above) is integrally formed with the holder [108] (paragraphs 0035-0037, Figure 1, and annotated Figures 6B and 8B above).
Regarding claim 14, Folmar discloses the game call [100] of claim 10, wherein the relief [154] (also see “relief” in annotated Figures 6B and 8B above) is positioned adjacent to at least a portion of the cutout [138] (paragraphs 0035-0036, Figure 2, and annotated Figures 6B and 8B above).
Regarding claim 15, Folmar discloses the game call [100] of claim 10, wherein holder [108] includes a front end (see front side [140]) and a rear end (see midpoint of peripheral edge [168]), wherein air flows across the bottom surface (see “bottom surface” in annotated Figures 6B and 8B above) from the rear end (see midpoint of peripheral edge [168]) to the front end (see front side [140]) during use of the game call [100] and the diaphragm [124] is at the front end (see front side [140]) of the holder [108] and the relief [154] (also see “relief” in annotated Figures 6B and 8B above) is positioned to interrupt the air flow before the air flow reaches the diaphragm [124] (paragraphs 0032, 0035-0036, 0038, Figures 1, 8A, and annotated Figure 6B and 8B above). It should be appreciated that the applicant’s functional language in the claim (to interrupt the air flow before the air flow reaches the diaphragm) does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Additionally, Folmar’s relief is capable of performing this function.
Regarding claim 16, Folmar discloses the game call [100] of claim 10, wherein the relief [154] (also see “relief” in annotated Figures 6B and 8B above) creates turbulent air flow along the bottom surface (see “bottom surface” in annotated Figure 6B and 8B above) (paragraph 0038 and annotated Figures 6B and 8B above). It should be appreciated that the applicant’s functional language in the claim (creating turbulent air flow along the bottom surface) does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Additionally, Folmar’s relief is capable of performing this function.
Regarding claim 17, Folmar discloses the game call [100] of claim 10, wherein the elastomeric material is a plastisol or a rubber elastomer (paragraph 0034).
Regarding claim 18, Folmar discloses the game call [100] of claim 17, wherein the elastomeric material is suitable for inclusion in an oral cavity of a user (paragraph 0034).
Allowable Subject Matter
Claims 2, 4, 11, and 13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claims 2 and 4, the combinations including the generally planar bottom surface including a bottom surface of the body portion and a bottom surface of the skirt, wherein the relief is formed along the bottom surface of the body portion in the inventions as claimed are neither disclosed nor rendered obvious by the prior art. Regarding claims 4 and 13, the combinations including the relief having a thickness that is greater than a thickness of a bottom wall of the body portion in the inventions as claimed are neither disclosed nor rendered obvious by the prior art. Folmar is the closest art as outlined above. However, Folmar’s relief [154] (also see “relief” in annotated Figures 6B and 8B above) is integral with a bottom surface/wall [154] of the body portion [130] and therefore the relief is neither formed along the bottom surface of the body portion or thicker than a bottom wall of the body portion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Jacobsen (US 5,520,567) which discloses a similar game call.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY B. WALTER whose telephone number is (571)270-5286. The examiner can normally be reached Monday - Friday: 8:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571)272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711