DETAILED ACTION
Notice of Pre-AIA or AIA Status
This action is in response to the application 18/752,441 filed 6/24/2024 which claims benefit of 63/509,830 filed 6/23/2023.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Claims 1-8 and 11 pending in the Application. Claims 1-5 previously withdrawn by Applicant. Claims 9-10 cancelled by Applicant. Thus, claims 6-8 and 11 examined below.
The previous objection to the drawings is maintained. Applicant did not amend the drawings and/or specification and did not address the previous objection in the remarks dated 9/25/2025.
Claims 9-11 were previously rejected under 35 U.S.C. 112(b). Applicant’s remarks (page 5) suggest the claims were amended to overcome the rejection. Claims 9 and 10 were cancelled. However, the limitation of claim 9 which rendered the claim indefinite was added to claim 6. Thus, claims 6 is now indefinite and rejected under 35 U.S.C. 112(b).. Claims 7-8 and 11 depend on claim 6 and are therefore rejected under 35 U.S.C. 112(b). Also, in view of the amendment, a new rejection under 35 U.S.C. 112(b) is made in the action below.
Response to Argument
RE Kalazich (US 2005/0268525 A1)(hereinafter Kalazich)
In view of the amendments to the claims, claims 6, 8, and 11 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable by Kalazich in a new/different interpretation of the art.
RE Fredericks (US 862,150)(hereinafter Fredericks)
In view of the amendments to the claims, the previous rejection of claims 6 and 8 under 35 U.S.C. 102(a)(1) as being unpatentable by Fredericks is withdrawn.
RE Fredericks in view of Kandlbinder (US 6,247,260 B1)(hereinafter Kandlbinder)
In view of the amendments to the claims, the previous rejection of claims 9-10 under 35 U.S.C. 103 as being unpatentable by Fredericks in view of Kandlbinder (US 6247260 B1)(hereinafter Kandlbinder) is withdrawn.
RE Kandlbinder
Applicant’s response does not appear to contain arguments specific to the previous rejection of claims 6, 8-9, and 11 as being anticipated by Kandlbinder (non-final rejection dated 6/25/2025 pages 5-6).
Applicant’s argument regarding the Kandlbinder reference relates to the previous rejection of claims 9-10 under 35 U.S.C. 103 as being unpatentable over Fredericks in view of Kandlbinder. Applicant states: “the hook enters through the top O-ring (104) and not through an arbitrary hole within the mesh” (remarks page 6). This argument is not persuasive. There is no O-ring (104) in the device of Kandlbinder.
In Kandlbinder the hook 14 extends through an opening 16 in the protector 10, through the bait 12, and out of an opposite corresponding mesh hole as seen in see Fig 3 (sharp, pointed end of hook 14 projecting through the mesh protector bag 10).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 14 (page 4, line 4 and throughout).
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 Interpretation
Claim 6, line 1 recites: “A system for making a fishing bait…” which does not clearly set forth the statutory category which the invention belongs to.
It has been determined that the claims are directed to a product (“a system”) and the appropriate principles for interpreting claims for that particular category of invention have been applied. Also, see the restriction dated 4/14/2025 and Applicant’s response without traverse dated 6/16/2025.
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 6-11 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.
For purposes of examination on the merits, the claims, as best understood, are examined in the Action below.
Claim 6 appears to recite method steps within an apparatus claim.
For example, in claim 6: “the receiving hook traversing into an arbitrary mesh hole of the plurality of mesh holes, through the bait material, and out of an opposite corresponding mesh hole of the plurality of mesh holes”
This limitation appears to describe the insertion of the hook/sharp end of the hook through the mesh and the bait (method step). For purposes of examination on the merits, it is interpreted that the hook extends through an arbitrary mesh hole, through the bait material, and out of an opposite corresponding mesh hole.
Furthermore, the following limitation is repeated in claim 6: “a receiving hook; the receiving hook traversing into an arbitrary mesh hole of the plurality of mesh holes, through the bait material, and out of an opposite corresponding mesh hole of the plurality of mesh holes; and the bait mesh wrap and the bait material being suspended on the receiving hook.” As currently drafted, it is unclear if there is one or two receiving hooks in the system. If there are two is the first one different than the second?
For purposes of examination on the merits, it is interpreted that this limitation was repeated due to a copy and paste error.
RE Claim 11: As currently drafted, claim 11 depends on claim 9. Claim 9 was cancelled by Applicant. The details of claim 9 were added to claim 6. For purposes of examination on the merits, it is interpreted that claim 11 should depend on claim 6.
Claims 7-8 and 11 rejected under 35 U.S.C. 112(b) for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
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 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 6, 8, and 11, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kalazich.
RE Claim 6: Kalazich discloses a system (Fig 2) for making a fishing bait by utilizing a bait mesh wrap comprising:
a bait mesh wrap (20; para 0080);
a bait material (F; para 0080);
the bait mesh wrap (20) comprising a mesh body and a plurality of mesh holes (Fig 2)(also para 0080);
the plurality of mesh holes being distributed throughout the mesh body (Fig 2; also para 0080);
the bait material being situated upon the mesh body (F in 20 as seen in Fig 2 and described in para 0080);
the bait material being enveloped by the mesh body (20 is a sleeve which holds F per para 0080 and seen in Fig 2);
a receiving hook (24);
the receiving hook traversing into an arbitrary mesh hole of the plurality of mesh holes (Fig 2), through the bait material (24 extends through 10 as seen in Figs 1 and 3), and out of an opposite corresponding mesh hole of the plurality of mesh holes (best seen in Fig 2); and
the bait mesh wrap and the bait material being suspended on the receiving hook (Fig 2).
RE Claim 8: Kalazich discloses the system as claimed in claim 6, as previously discussed and further discloses
wherein the mesh body is made from a malleable mesh material (para 0076).
RE Claim 11: Kalazich discloses the system as claimed in claim 1 as previously discussed and further discloses further comprising:
the receiving hook comprising a sharp end (point on 24), a hook bend (bend between the barbed end and the shaft of 24), and a hook shank (shaft of the hook 24)(24 is a conventional fishing hook);
the hook bend being positioned adjacent to the sharp end (Fig 2);
the hook shank being positioned adjacent to the hook bend (Fig 2), opposite to the sharp end (Fig 2);
the sharp end and the hook bend traversing into the arbitrary mesh hole, through the bait material, and out of the opposite corresponding mesh hole (Fig 2)(para 0080); and
the bait mesh wrap and the bait material being positioned along the hook shank (Fig 2).
Claims 6, 8, and 11, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kandlbinder.
RE Claim 6: Kandlbinder discloses a system (Figs 1-4) for making a fishing bait by utilizing a bait mesh wrap comprising:
a bait mesh wrap (bait protector 10);
a bait material (bait 12);
the bait mesh wrap comprising a mesh body and a plurality of mesh holes (col 3, ln 65 – col 4, ln 5);
the plurality of mesh holes being distributed throughout the mesh body (col 3, ln 65- col 4, ln 5)(also Figs 1-4);
the bait material being situated upon the mesh body (Figs 1-4)(col 3, ln 20 – 33);
the bait material being enveloped by the mesh body (Figs 1-4)(col 3, ln 20 – 33);
a receiving hook (hook 14);
the receiving hook traversing into an arbitrary mesh hole of the plurality of mesh holes (Figs 1-3)(col 3, ln 20-30), through the bait material (14 extends through 12 as seen in Figs 1 and 3), and out of an opposite corresponding mesh hole of the plurality of mesh holes (best seen in Fig 3); and
the bait mesh wrap and the bait material being suspended on the receiving hook (Fig 3).
RE Claim 8: Kandlbinder discloses the system as claimed in claim 6, as previously discussed and further discloses
wherein the mesh body is made from a malleable mesh material (col 3, ln 65 – col 4, ln 5).
RE Claim 11: Kandlbinder discloses the system as claimed in claim 1 as previously discussed and further discloses further comprising:
the receiving hook comprising a sharp end (point), a hook bend (bend between the barbed end and the shaft), and a hook shank (shaft of the hook);
the hook bend being positioned adjacent to the sharp end (Figs 1 and 3);
the hook shank being positioned adjacent to the hook bend (Figs 1 and 3), opposite to the sharp end (Figs 1 and 3);
the sharp end and the hook bend traversing into the arbitrary mesh hole, through the bait material, and out of the opposite corresponding mesh hole (Figs 1-3)(col 3, ln 20-30); and
the bait mesh wrap and the bait material being positioned along the hook shank (Fig 3).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 7, as best understood, rejected under 35 U.S.C. 103 as being unpatentable over Kalazich.
RE Claim 7: Kalazich discloses the system as claimed in claim 6 as previously discussed and further discloses further comprising:
the bait mesh wrap further comprising a first lateral end and a second lateral end (opposing ends of 140);
the mesh body being wrapped around the bait material (para 0103);
the first lateral end being wrapped around the bait material (para 0103);
the second lateral end being wrapped around the bait material, opposite to the first lateral end (para 0103); and
the second lateral end overlapping the first lateral end (para 0103).
Regarding the limitation: “the bait material being centered on the mesh body”
Kalazich teaches some degree of a central placement of the bait material within the mesh body (140) because the mesh body (140) is wrapped around the bait (per para 0101-0103).
Should it be contemplated the central placement previously described is not the same as the bait material is “centered” on the mesh body, 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 Kalazich such that the bait material is centered on the mesh body, since it has been held that rearranging parts of an invention involves only routine skill in the art. See MPEP 2144.04 (VI) (C) citing In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). This would be done to facilitate attaching the tie elements together.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 dated 6/25/2025.
These documents present alternative designs similar in scope which illustrate relevant features in comparison to the Applicant’s submission. The cited prior art include various devices for attaching fishing bait to hooks for attracting prospective game fish.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA E GRABER whose telephone number is (571)272-4640. The examiner can normally be reached M-F 7:30-5.
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 D Collins can be reached on 571-272-6886. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA E GRABER/Examiner, Art Unit 3644
/MONICA L PERRY/Primary Examiner, Art Unit 3644