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 .
Double Patenting
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,154,042 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art that claims 1-20 are included in and can be gleaned from claims 1-16 of U.S. Patent No. 11,154,042 B2.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,559,051 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art that claims 1-20 are included in and can be gleaned from claims 1-20 of U.S. Patent No. 11,559,051 B2.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,041,921 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art that claims 1-20 are included in and can be gleaned from claims 1-20 of U.S. Patent No. 12,041,921 B2.
Claims 1, 7-8, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 15 of U.S. Patent No. 11,039,606 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art that claims 1, 7-8, and 14 are included in and can be gleaned from claims 1, 8, and 15 of U.S. Patent No. 11,039,606 B2.
Claims 1, 7-8, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 15 of U.S. Patent No. 11,758,892 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art that claims 1, 7-8, and 14 are included in and can be gleaned from claims 1, 8, and 15 of U.S. Patent No. 11,758,892 B2.
Claim Objections
Claim 15 is objected to because of the following informalities:
In claim 15, line 4, “input planet gears” should read ---input planet gear---.
Appropriate correction is required.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Reference character “222” in Figures 3, 5, 7, and 8-9.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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 § 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 16-18 is 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.
Claim 6 recites the limitation "the output planet gears" in lines 5-8. How does “the output planet gears” in lines 5-8 of claim 6 relate to the “plurality of output planet gears” in the last line of claim 3? Is there a different set of output planet gears being claimed that differs from the plurality of output planet gears in the last line of claim 3? Suggestion to change “the output planet gears” to read ---the plurality of output planet gears---. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 16, the phrase "the spool comprises a spool shaft, a straight portion, a first curved portion, and a second curved portion, positioned centrally within an inner volume of the spool" in lines 1-3 renders the claim unclear. Are the parts of the spool including the spool shaft, a straight portion, first curved portion, and second curved portion all positioned centrally within the inner volume of the spool or is it only the spool shaft that is positioned centrally within the inner volume of the spool?
Claims 17-18 are rejected because they are dependents of claim 16.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-3, 8-10, 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatzfeld (DE3807468A1) in view of Yao (CN103758940A).
Regarding claims 1 and 8, Hatzfeld discloses a baitcaster and a fishing rod, comprising: a rod (Abstract); and a baitcaster coupled with the rod, the baitcaster configured to retrieve a fishing line (Abstract), a spool (1) defining an inner volume (inner diameter volume of spool 1 surrounding shaft 16); the gear set (GS; see Hatzfeld annotated Figure 1 below) configured to receive input mechanical energy from a first (“input” claim 8) shaft (IS) and transfer output mechanical energy through a second (“output” claim 8) shaft (16) to drive the spool (1) to retrieve a fishing line, the gear set (GS) comprising a plurality of gears (7, 9, 9b, 12, 12b), but fails to teach a gear set positioned at least partially within the inner volume of the spool.
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Hatzfeld, Annotated Figure 1
Yao teaches a similar fishing reel and further teaches a gear set (6, 11, 52, 53) positioned at least partially within the inner volume of the spool (1). It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the baitcaster of Hatzfeld to include the spool as taught by Yao in order to reduce space and provide a compact reel assembly.
Regarding claims 2 and 9, Hatzfeld discloses wherein the spool (1) is positioned between a first frame member (3; Figure 1) and a second frame member (4), the spool (1) rotatably supported by the first frame member (3) and the second frame member (4).
Regarding claims 3 and 10, Hatzfeld discloses wherein the first (“input” claim 10) shaft (IS) and the second (“output” claim 10) shaft (16) are concentrically aligned along an axis of the baitcaster, the spool (1) further comprising: a straight portion (SP; see Hatzfeld annotated Figure 1 below); a first curved portion (1C) positioned at a first end of the straight portion (SP); and a second curved portion (2C) positioned at a second end of the straight portion (SP); wherein the gear set (GS) comprises: a ring gear (7); and a carrier (11) configured to support a plurality of input planet gears (9, 9b) of the plurality of gears (7, 9, 9b, 12, 12b) and a plurality of output planet gears (12, 12b) of the plurality of gears (7, 9, 9b, 12, 12b); and the output shaft (16), but fails to teach wherein a spindle (“spool shaft” claim 10) of the spool is positioned centrally within the inner volume of the spool, the spindle fixedly coupled with the spool through a central member, the central member extending radially outwards from the spindle and dividing the inner volume into a first inner volume and a second inner volume, wherein a transition between the straight portion and the first curved portion divides the first inner volume into a first sub-volume and a second sub-volume.
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Hatzfeld, Annotated Figure 1
Yao teaches a similar fishing reel and further teaches wherein a spindle (“spool shaft” claim 10) (SD; see Yao annotated Figure 5 below) of the spool (1) is positioned centrally within the inner volume of the spool (1), the spindle (SD) fixedly coupled with the spool (1) through a central member (CM), the central member (CM) extending radially outwards from the spindle (1) and dividing the inner volume into a first inner volume (1IV) and a second inner volume (2IV), wherein a transition between the straight portion (SP; SP of Hatzfeld) and the first curved portion (1C of Hatzfeld) divides the first inner volume (1IV) into a first sub-volume (1SV) and a second sub-volume (2SV). It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the baitcaster of Hatzfeld to include the spool as taught by Yao in order to reduce space and provide a compact reel assembly.
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Hatzfeld, Annotated Figure 1
Regarding claim 15, Hatzfeld discloses a gear set (GS) for a baitcaster, the gear set (GS) comprising: a ring gear (7); an input planet gear (9, 9b) configured to engage with the ring gear (7); an output planet gear (12, 12b) rotatably coupled with the input planet gears (9, 9b); a carrier (11) configured to support the input planet gear (9, 9b) and the output planet gear (12, 12b); and an output shaft (16) configured to drive a spool (1) of the baitcaster, but fails to teach wherein the gear set is position at least partially within the spool.
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Hatzfeld, Annotated Figure 1
Yao teaches a similar fishing reel and further teaches wherein the gear set (6, 11, 52, 53) is positioned at least partially within the inner volume of the spool (1). It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the baitcaster of Hatzfeld to include the spool as taught by Yao in order to reduce space and provide a compact reel assembly.
Regarding claims 16-17, Hatzfeld discloses wherein the spool (1) comprises a straight portion (SP), a first curved portion (1C), and a second curved portion (2C), but fails to teach a spool shaft positioned centrally within an inner volume of the spool, the spool shaft fixedly coupled with the straight portion through a central member extending radially between the spool shaft and the straight portion; wherein the central member divides the inner volume into a first inner volume and a second inner volume and a transition between the straight portion and the first curved portion divides the first inner volume into a first sub-volume and a second sub-volume.
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Hatzfeld, Annotated Figure 1
Yao teaches a similar fishing reel and further teaches a spool shaft (SD) positioned centrally within an inner volume of the spool (1), the spool shaft (SD) fixedly coupled with the straight portion (SP) through a central member (CM) extending radially between the spool shaft (SD) and the straight portion (SP); wherein the central member (CM) divides the inner volume into a first inner volume (1IV) and a second inner volume (2IV) and a transition between the straight portion (SP; SP of Hatzfeld) and the first curved portion (1C of Hatzfeld) divides the first inner volume (1IV) into a first sub-volume (1SV) and a second sub-volume (2SV). It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the baitcaster of Hatzfeld to include the spool as taught by Yao in order to reduce space and provide a compact reel assembly.
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Hatzfeld, Annotated Figure 1
Claim(s) 6-7, 13-14, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatzfeld, in view of Yao, and in further view of White (US2150088A).
Regarding claims 6-7, 13-14, and 19, modified Hatzfeld discloses wherein the gear set (GS) is configured to: receive input mechanical energy from the first (“input” claim 13) shaft (IS) at the ring gear (7); drive the plurality of input planet gears (9, 9b) through an engagement between the plurality of input planet gears (9, 9b) and the ring gear (7); drive the output planet gears (12, 12b) through a rotatable coupling (10, 10b) between the plurality of input planet gears (9, 9b) and the output planet gears (12, 12b); drive the spool (1) through an engagement between the second (“output” claim 13) shaft (16) and the output planet gears (12, 12b); wherein the gear set (GS) is positioned at a handle end (5) of the baitcaster, but fails to teach wherein the second (“output” claim 13) shaft is coupled with the spool at an opposite end of the spool; and the spool is driven through a coupling at an opposite end of the baitcaster.
White teaches a similar fishing reel and further teaches wherein the second (“output” claim 13) shaft (8; Figure 1) is coupled with the spool (21) at an opposite end of the spool (21); and the spool (21) is driven through a coupling (14, 19, 27, 28) at an opposite end of the baitcaster. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the baitcaster of Hatzfeld to include the second/output shaft and spool coupling as taught by White in order to cause slippage of the fishing line during casting or during excessive tension of the fishing line to prevent breakage of the fishing line.
Regarding claim 20, Hatzfeld teaches wherein the gear set (GS) is configured to receive the input torque through a handle (5; Figure 1) at the first end of the baitcaster, but fails to teach wherein the output shaft extends centrally through a spool shaft of the spool and selectably rotatably couples with the spool shaft at a second end of the spool shaft, wherein the gear set is positioned at least partially within an inner volume of the spool of the baitcaster at a first end of the baitcaster and drive the spool through a coupling between the output shaft and the spool at a second end of the baitcaster.
Yao teaches a similar fishing reel and further teaches the gear set (6, 11, 52, 53) is positioned at least partially within an inner volume of the spool (1). It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the baitcaster of Hatzfeld to include the spool as taught by Yao in order to reduce space and provide a compact reel assembly.
White teaches a similar fishing reel and further teaches wherein the output shaft (8; Figure 1) extends centrally through a spool shaft (22) of the spool (21) and selectably rotatably couples with the spool shaft (22) at a second end of the spool shaft (22), wherein the gear set (40, 41, 37) is configured to drive the spool (21) through a coupling (14, 19, 27, 28) between the output shaft (8) and the spool (21) at a second end of the baitcaster. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the baitcaster of Hatzfeld to include the output shaft, spool shaft, and spool coupling as taught by White in order to cause slippage of the fishing line during casting or during excessive tension of the fishing line to prevent breakage of the fishing line.
Allowable Subject Matter
Claims 4-5, 11-12, and 18 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:
Claims 4 and 11 would be allowable over the prior art of record because the prior art of record fails to teach or fairly suggest the entire combination of elements set forth including for disclosing wherein the ring gear extends through the first sub-volume and terminates in the second sub-volume and the plurality of input planet gears are positioned at least partially within the first sub-volume and the second sub-volume.
Yao is the closest prior art, but fails to teach wherein the ring gear extends through the first sub-volume and terminates in the second sub-volume and the plurality of input planet gears are positioned at least partially within the first sub-volume and the second sub-volume.
Claims 5 and 12 would be allowable over the prior art of record because the prior art of record fails to teach or fairly suggest the entire combination of elements set forth including for disclosing wherein the carrier is positioned entirely within the second sub-volume.
Yao is the closest prior art and further teaches wherein the plurality of output planet gears are positioned entirely within the second sub-volume, but fails to teach wherein the carrier is positioned entirely within the second sub-volume.
Claim 18 would be allowable over the prior art of record because the prior art of record fails to teach or fairly suggest the entire combination of elements set forth including for disclosing wherein the ring gear extends through the first sub-volume and terminates in the second sub-volume; the input planet gear is positioned at least partially within the first sub-volume and the second sub-volume; and the carrier is positioned entirely within the second sub-volume.
Yao is the closest prior art and further teaches wherein the output planet gear is positioned entirely within the second sub-volume, but fails to teach wherein the ring gear extends through the first sub-volume and terminates in the second sub-volume; the input planet gear is positioned at least partially within the first sub-volume and the second sub-volume; and the carrier is positioned entirely within the second sub-volume.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional references listed on form PTO-892 are cited for their relevance to the disclosed invention and demonstration of the state of the art.
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/H.S./Examiner, Art Unit 3654
/Victoria P Augustine/ Supervisory Patent Examiner, Art Unit 3654
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