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 .
Election/Restrictions
During a telephone conversation with Timothy A. Czaja on 12/10/2025 a provisional election was made with traverse to prosecute the invention of Species XVIII, claims 1-11. The Applicant made a typo in the election response on 11/12/2025 and the intended elected invention is Species XVIII. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant's election with traverse of Species XVIII, claims 1-11 and Fig. 12, in the reply filed on 11/12/2025 is acknowledged. The traversal is on the ground(s) that the classification is the same and the field of search is the same and there is no clear indication of separate future classification and field of search such that there is a search and/or examination burden for Species I-XX. This is not found persuasive because the species would require separate classifications and a different field of search. Species I-XII are classified in A01K 87/007 for the built-in shape memory member. Species XIII, XIV, XVI, and XVIII have tapered designs and would include a search in B21B 2205/04. Species XV, XVII, and XIX have telescoping designs that are classified in A01K87/025. Species XX would require a search in at least B21B 2261/043 for segment 126 in the absence of the shape memory member 122. The specifics of the thickness and extension of the shape memory members in the sub-species would require a search in at least B21B 2261/00, B21B 2261/02, B21B 2261/04, and B21B 2265/16.
Applicant’s traversal on the ground that the species I-XX are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
The requirement is still deemed proper and is therefore made FINAL.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract is less than 50 words and the sentence is not a proper grammatically correct sentence. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 of prior U.S. Patent No. 12,070,023. This is a statutory double patenting rejection.
Claim 1 is anticipated by claim 1 of ‘023.
Claim 2 is anticipated by claim 1 of ‘023.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakahata et al. (US 20150272098), hereinafter Nakahata.
Regarding claim 1, Nakahata teaches of (fig. 1) a fishing rod (casting rod 1) comprising:
a rod body (base rod 5, intermediate rod 7, tip rod 10) extending from a handle end to a tip end (the fishing rod body extends from the tip at top guide 9 to a handle end of handle 5), wherein at least a portion of the rod body comprises a shape memory material (fig. 3, high specific gravity member 20) configured to self-return toward a normal shape upon removal of an applied load (fishing rod tips generally return to shape after applied force. ¶0027-0028, the shape memory material 20 is formed from nickel, titanium, a nickel-titanium alloy, or SUS, which are materials that vibrate and self-return toward a normal shape upon removal of an applied load).
Regarding claim 2, Nakahata teaches of claim 1, and (fig. 3) wherein the rod body includes a shaft (10) and the at least one shape memory member (20) is secured to the shaft (seen in fig. 3).
Claim Rejections - 35 USC § 103
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 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nakahata in view of Dunn (US 564742).
Regarding claim 3, Nakahata teaches of claim 2, but does not appear to teach of wherein the at least one shape memory member includes first and second tubular members.
Dunn teaches of wherein the at least tip section (tip-section C, Examiner notes the shape memory member of Nakahata is at the tip section) includes first and second tubular members (tip section C has first, second, third, and fourth tubular members).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nakahata to incorporate the teachings of Dunn of wherein the at least one shape memory member (shape memory of Nakhata is at the tip section) includes first and second tubular members in order to make the fishing rod telescopic for compacting the fishing rod for easy transport and storage.
Regarding claim 4, Nakahata as modified teaches of claim 3, and Dunn further teaches of wherein the first and second tubular members (tip section has first, second, third, and fourth tubular members) are arranged in a telescoping fashion relative to one another (seen in fig. 2, p. 1 lines 11-17 fishing rod is a telescopic rod).
Regarding claim 5, Nakahata as modified teaches of claim 4, and Dunn further teaches of (figs. 1-2) wherein the first tubular member (first section by tip-section C by sleeve b) is secured to the shaft (secured to shaft of intermediate B) and the second tubular member is slidably connected to the first tubular member (figs. 1-2, section next to the first tubular member slides into the first tubular member).
Regarding claim 6, Nakahata as modified teaches of claim 5, and wherein the at least one shape memory member further includes a third tubular member (fig. 1, section next to the second tubular member after sleeve F’) slidably connected to the second tubular member (seen in fig. 2).
Regarding claim 7, Nakahata as modified teaches of claim 4, and wherein (fig. 1) the first tubular member (first section by tip-section C by sleeve b) is secured to the shaft (secured to shaft of intermediate B) and the second tubular member is secured to the first tubular member (seen in fig. 1).
Regarding claim 8, Nakahata as modified teaches of claim 3, and wherein the first and second tubular members (as modified by Dunn, first tubular member by the tip end, second tubular member adjacent to the first tubular member) include a shape memory material (shape member material 20 of Nakahata extends from the tip end to the end of the second line guide 8B, which is analogous to the length from the tip end to line guide f1 of Dunn, such that the modification of first and second tubular members at the tip section of Nakahata would be at where the shape memory material is at).
Regarding claim 9, Nakahata as modified teaches of claim 8, and wherein the shape memory material is a shape memory metal alloy (¶0031, shape memory material 20 is a shape memory metal alloy nickel-titanium alloy).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nakahata, as applied to claim 8 above, and further in view of Anderson (US 20170020118).
Regarding claim 10, Nakahata as modified teaches of claim 8, but does not appear to teach of wherein the shape memory material comprises a shape memory polymer.
Anderson teaches of wherein the shape memory material comprises a shape memory polymer (¶0013, shape memory material can be shape-memory alloys such as nitinol or polymers such as polytetrafluoroethylene).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nakahata to incorporate the teachings of Anderson of wherein the shape memory material comprises a shape memory polymer in order to use material that is lighter and more flexible than alloys.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Nakahata, as applied to claim 8 above, and further in view of Fuller (US 1843714).
Regarding claim 11, Nakahata as modified teaches of claim 8, but does not appear to teach of wherein the shape memory material comprises spring steel.
Fuller teaches of wherein the shape memory material comprises spring steel (p. 2 lines 84-111, the fishing rod may be made of spring steel or of spring wire as its shape memory material).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nakahata to incorporate the teachings of Fuller of wherein the shape memory material comprises spring steel in order to have the rod take a curvature that bends like a whip at each tug of the fish and springing back quickly and sharply enough to prevent the fish from shaking off the hook upon relaxation of the struggle by the fish as motivated by Fuller on p. 2 lines 84-111.
Conclusion
The cited references made of record in the contemporaneously filed PTO-892 form and not relied upon in the instant office action are considered pertinent to applicant's disclosure, and may have one or more of the elements in Applicant’s disclosure and at least claim 1.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kimberly Berona can be reached at 571-272-6909. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZOE TAM TRAN/ Examiner, Art Unit 3647