DETAILED ACTION
Notice of Pre-AIA or AIA Status
This action is in response to the application 18/765,152 filed 7/5/2024 which claims benefit of 63/526,180 7/11/2023.
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 and 3-20 pending. Claim 3 cancelled by Applicant.
In view of the amendments to the specification dated 11/10/2025, the previous corresponding objections are withdrawn.
In view of the amendments to the claims dated 11/10/2025, the previous corresponding claim objection is withdrawn.
In view of the amendments to the claims dated 11/10/2025, the previous rejection of claim 5 under 35 U.S.C. 112(b) is withdrawn.
The previous rejection of claims 13-14 under 35 U.S.C. 112(b) is maintained. Applicant has added in the word “predetermined” however, it remains unclear how the bait fish head portion and body portion substantially resemble a bait fish.
The amendments to claim 15 and 20 introduce clarity issues as discussed in the action below.
Response to Arguments
In view of Applicant’s amendments to the claims, the previous rejection of claims 1, 5-6, and 9 under 35 U.S.C. 102(a)(1) as being clearly anticipated by Pack (US 2005/0120613 A1)(hereinafter Pack) are withdrawn.
In view of Applicant’s amendments to the claims, the previous rejection of claims 1, 5-6, and 9 under 35 U.S.C. 102(a)(1) as being clearly anticipated by Pasley (US 2003/0159331 A1)(hereinafter Pasley) are withdrawn.
Applicant’s arguments regarding Kim (US 2008/0168700 A1)(hereinafter Kim) are not commensurate in scope with the claim language. Applicant relies on the following: “In the present invention the slot/channel forms an “L” shape with the hook eye fitting in the slot and the fishing line extending through the channel.” These features are not claimed.
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 1 and 3-20 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 1 recites the limitation "the channel entrance " in line 5. There is insufficient antecedent basis for this limitation in the claim.
Applicant replaced “slot” with “channel” in claim 1, but not throughout the dependent claims. Thus, there is insufficient antecedent basis for “the slot” in claims 3-4 and 9. Consistent language should be used throughout the claims where there is reference to the same component of the device.
Claim 13 recites the following: “wherein the head portion substantially resemble a predetermined bait fish head.” Claim 14 recites the following: “wherein the bait fish body substantially resembles a predetermined bait fish body.”
Bait fish heads and bodies have different shapes, sizes, colors, textures, scents, movement/behaviors, etc. based on factors such as species, age, health, living/dead, etc. Also, the degree/extent the head portion an bait fish body resemble a bait fish is unclear. As currently drafted, it is unclear how the bait fish head portion and body portion substantially resemble a bait fish.
Claim 15 recites the limitation "the bard" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 20 recites the limitation "the rod" in line 2. Is this the same “rod” as the one recited in claim 15, line 4?
Claims 3-20 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 1-3, 5-9, and 15-18, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (US 2008/0168700 A1)(hereinafter Kim).
RE Claim 1: Kim discloses a slide bait (100) comprising:
a head portion (130) having a channel which passes from a first side to a second side (para 0023) and a first portion of the channel sized to receive an eye of a fish hook (Fig 6) and a second part of the channel sized to receive a fishing line (receives part of the hook which is comparable in size to fishing line – as currently drafted, the claim does not require fishing line in part of the channel), and an attachment member (134) secured to the second side of the head portion (Fig 5), wherein the second side has a predetermined profile and the channel entrance is positioned distal to the attachment member (Fig 6); and
a bait body (110) securing to the head portion (130) via the attachment member (134)(assembled view Fig 7D), wherein a fishing hook (120) extends through the bait body and a fishing hook barb extends out of a top surface of the bait body (para 0024-0026)(Fig 6)(also see Figs 7C-D).
RE Claim 3: Kim discloses the slide bait of claim 1 as previously discussed and further discloses
wherein the slot is sized to receive a hook (paras 0024-0026)(Fig 6).
RE Claim 5: Kim discloses the slide bait of claim 1 as previously discussed and further discloses
wherein the head portion and the bait body substantially align (Fig 7D) and the slide bait mimic a fish body (Fig 7D).
RE Claim 6: Kim discloses the slide bait of claim 1 as previously discussed and further discloses
wherein the attachment member comprises a corkscrew rod (134a may be formed in a spiral per para 0026).
RE Claim 7: Kim discloses the slide bait of claim 1 as previously discussed and further discloses
wherein the attachment member comprises a straight rod (134).
RE Claim 8: Kim discloses the slide bait of claim 1 as previously discussed and further discloses
wherein the bait body has a channel sized to fit a hook (insertion hole in worm per para 0026)(receives attachment member which could be construed as a hook, also could receive a hook).
RE Claim 9: Kim discloses the slide bait of claim 1 as previously discussed and further discloses
wherein the slot of the head portion and the attachment member of the head portion are positioned relative to one another (Figs 3-7B).
RE Claim 15: Kim discloses a slide bait lure (100) comprising:
a head portion (130) having a slot connected to a channel extending through the head portion (para 0023), and wherein the slot is sized to fit an eye of a fish hook and the channel is sized to fit a fishing line (receives part of the hook which is comparable in size to fishing line – as currently drafted, the claim does not require fishing line in part of the channel), and a rod extending from the head portion and wherein the slot and the rod are positioned a predetermined distance apart (Figs 5-6); and
a bait body (110) securing to the head portion (130)(Fig 7D);
wherein the slot is sized to receive a hook eye (para 0023)(Fig 6), and a hook bend extends through an upper portion of the bait body and the bard is exposed above the bait body (para 0024-0026)(Fig 6)(also see Figs 7C-D)(consider orientation during insertion, also consider flipping the lure upside down – merely orientation).
RE Claim 16: Kim discloses the slide bait of claim 15 as previously discussed and further discloses
wherein the bait body (110) has a channel extended through a portion of an upper end (insertion hole in worm per para 0026; see Fig 7A).
RE Claim 17: Kim discloses the slide bait of claim 15 as previously discussed and further discloses
wherein the bait body (110) has a slot through a portion of the bait body (insertion hole in worm per para 0026; see Fig 7A).
RE Claim 18: Kim discloses the slide bait of claim 17 as previously discussed and further discloses
wherein the slot (insertion hole per para 0026) of the bait body (110) aligns with a rod (134) of the head portion (130)(Fig 7A-7D).
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.
Claims 4 and 19, as best understood, rejected under 35 U.S.C. 102(a)(1) as anticipated by Kim or, in the alternative, under 35 U.S.C. 103 as obvious over Kim in view of Hawkins (US 6,718,683 B2)(hereinafter Hawkins).
RE Claim 4 (and 19): Kim discloses the slide bait of claim 1 (and 15) as previously discussed.
Kim further discloses the hook held in place within the slot of the head (per para 0024-0025) and appears to teach a pressure fit (“the support recesses 132c and 132d have a width same as or slightly greater than that of the fixed portion 122 of the hook 120” per para 0025).
Should Applicant disagree the slot holds hook 120 by pressure fit, the following combination is provided.
Hawkins teaches a fishing lure (analogous art) and further teaches a slot is sized to pressure fit a hook in place (col 3, ln 35-40).
Therefore, 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 Kim in view of Hawkins such that the slot is sized to pressure fit a hook in place as taught by Hawkins for the advantages of securely retaining the hook within the head, preventing loss during casting.
For claim 19, “the slot” is interpreted to be the slot of the head portion (claim 15, line 2).
Claims 10-14 and 20 rejected under 35 U.S.C. 102(a)(1) as anticipated by Kim or, in the alternative, under 35 U.S.C. 103 as obvious over Kim in view of Nakamichi (US 7,841,127 B1)(hereinafter Nakamichi).
RE Claim 10: Kim discloses a slide bait lure (100) comprising:
a head portion (130) having a slot which passes from a first side to a second side (para 0023), a first portion of the channel sized to receive an eye of a fish hook (Fig 6) and a second part of the channel sized to receive a fishing line (receives part of the hook which is comparable in size to fishing line – as currently drafted, the claim does not require fishing line in part of the channel) and an attachment member (134 with 134a) secured to the second side of the head portion (Fig 5),
a bait body (110) secured to the head portion (130) via the attachment member (Fig 7D); and
a hook inserted into the slot and passing through a portion of the bait body (Figs 3-7D).
Concerning then following limitation: “wherein the attachment member comprises a corkscrew rod and a straight rod”
Kim teaches the attachment member (134 with 134a) comprises a straight rod (134 has a central rod with projections 134a) and also teaches a corkscrew (projections 134a may be formed in a spiral per para 0026).
Should Applicant disagree Kim teaches the attachment member comprises both a straight rod and corkscrew. Nakamichi teaches a fishing lure (analogous art) with a bait body and an attachment member.
Nakamichi further teaches wherein the attachment member comprises a straight rod (pin 111) and a corkscrew (spiral 113)(Figs 3-6).
Therefore, 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 Kim in view of Nakamichi such that the attachment member comprises a straight rod and a corkscrew as taught by Nakamichi for the advantages of secure attachment of the bait body to the fishing rig.
Kim as modified further teaches wherein the slot is positioned distal to a top edge of the head portion and the attachment member is positioned distal to a bottom edge of the head portion (Fig 6).
RE Claim 11: Kim as modified discloses the slide bait of claim 10 as previously discussed and Kim further discloses
wherein the slot is sized to securely fit the hook within the slot (paras 0024-0026).
RE Claim 12: Kim as modified discloses the he slide bait of claim 10 as previously discussed.
Kim teaches a channel in the bait body (insertion hole in worm per para 0026) for the attachment member.
Concerning “the bait body has a channel sized to receive the hook” -
Upon insertion of the hook into the bait body a channel is created.
Also, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use multiple channels (specifically add a second channel for the hook in addition to the one for the attachment member), since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See MPEP 2144.03 VI B citing In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). This would be done for the advantages of facilitating insertion of the hook into the bait body (para 0026).
RE Claim 13: Kim as modified discloses the slide bait of claim 10 as previously discussed and Kim further discloses
wherein the head portion substantially resembles a bait fish head (insomuch as Applicant’s head portion substantially resembles a predetermined bait fish head, so does 130 in Kim).
RE Claim 14: Kim as modified discloses the slide bait of claim 10 as previously discussed and Kim further discloses
wherein the bait body substantially resembles a predetermined bait fish body (insomuch as Applicant’s bait body substantially resembles a predetermined bait fish body so does 110 in Kim), and matches the head portion resemblance.
RE Claim 20: Kim discloses the slide bait of claim 15 as previously discussed.
Concerning the following limitation: “wherein the head portion has a first surface with a cork screw rod extending out of the first surface and is positioned distal to a rod which is extending from the first surface.”
Kim teaches the attachment member (134 with 134a) comprises a straight rod (134 has a central rod with projections 134a) and also teaches a corkscrew (projections 134a may be formed in a spiral per para 0026).
Should Applicant disagree Kim teaches the attachment member comprises both a straight rod and corkscrew. Nakamichi teaches a fishing lure (analogous art) with a bait body and an attachment member.
Nakamichi further teaches wherein the head portion has a cork screw rod (113) which is positioned distal to the rod (111) (compare Nakamichi Figs 3-4 to Applicant’s Fig 1-2 for “positioned distal to the rod”).
Therefore, 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 Kim in view of Nakamichi such that wherein the head portion has a first surface with a cork screw rod extending out of the first surface and is positioned distal to a rod which is extending from the first surface, as taught by Nakamichi for the advantages of secure attachment of the bait body to the fishing rig.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892 dated 5/9/2025.
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 fishing lures and jig head assemblies.
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
/TIMOTHY D COLLINS/Supervisory Patent Examiner, Art Unit 3644