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 .
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.
Regarding claim 1, Claim 1 of ‘023 teaches of a fishing rod comprising:
a rod body extending from a handle end to a tip end, the rod body including:
a shaft; and at least one shape memory member secured to the shaft (the shape memory member is secured over the shaft) and comprising a shape memory material;
wherein the shape memory member is configured to self-return toward a normal shape upon removal of an applied load and is configured to return the rod body toward a predetermined longitudinal shape upon removal of the applied load (A normal shape inherently has a predetermined longitudinal shape. The rod body comprises of the shape memory member such that the shape memory member returning to a normal shape upon removal of an applied load is also returning the rod body toward a predetermined longitudinal shape upon removal of the applied load).
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.
Claim 1 is 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), the rod body including:
a shaft (10); and
at least one shape memory member (fig. 3, high specific gravity member 20) secured to the shaft (seen in fig. 3) and comprising a shape memory material (¶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);
wherein the shape memory member is 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. Even if the rod promotes vibrating for a long time, the vibration will eventually stop and return the shape memory member to its normal shape upon removal of an applied load) and is configured to return the rod body toward a predetermined longitudinal shape upon removal of the applied load (fig. 3, shape memory material 20 is a part of the rod body such that when the shape memory member self-returns toward its normal shape upon removal of an applied load, it also returns the rod body toward its predetermined longitudinal shape upon removal of the applied load).
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 3-7, 9 and 17 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 1, but does not appear to teach of wherein the at least one shape memory member includes first and second tubular members, and further wherein the first tubular member includes a shape memory material apart from the second tubular member and the shaft, and the second tubular member includes a shape memory material apart from the first tubular member and the shaft.
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 between the sleeves b1, f, f1, f2 that are telescopic to one another) wherein the first tubular member (tube between sleeve f2 and sleeve E) is apart from the second tubular member (tube between sleeve f1 and f2) and the shaft (intermediate section B), and the second tubular member (tube between sleeve f1 and f2) is apart from the first tubular member (tube between sleeve f2 and sleeve E) and the shaft (B) (telescopic rods have the tubular members apart from adjacent tubular members and the shaft such that the tubular members can be telescoped into one another as seen in fig. 2).
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 making the tip section be formed of telescopic tubular members and keeping the original components and shape memory member of Nakahata intact such that wherein the at least one shape memory member includes first and second tubular members, and further wherein the first tubular member includes a shape memory material apart from the second tubular member and the shaft, and the second tubular member includes a shape memory material apart from the first tubular member and the shaft in order to be able 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 9, Nakahata as modified teaches of claim 3, 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).
Regarding claim 17, Nakahata as modified teaches of claim 3, but does not appear to teach of wherein each of the first and second tubular members has a tapered shape.
Dunn teaches of wherein each of the first and second tubular members (fig. 1, tubular members of the tip section between the sleeves) has a tapered shape (seen in fig. 1).
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 each of the first and second tubular members has a tapered shape in order to make the tubular members telescopic to one another such that the fishing rod can be compacted for easy transport and storage.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nakahata, as applied to claim 3 above, and further in view of Anderson (US 20170020118).
Regarding claim 10, Nakahata as modified teaches of claim 3, 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 3 above, and further in view of Fuller (US 1843714).
Regarding claim 11, Nakahata as modified teaches of claim 3, 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.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-7, 9-11 and 17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argued that Nakahata’s invention is for promoting vibrations for a long period of time, and as such it does not read upon the Applicant’s invention of being configured to self-return toward a normal shape upon removal of an applied load and is configured to return to the rod body toward a predetermined longitudinal shape upon removal of the applied load. The Examiner respectfully disagrees.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the vibrations of Nakahata being applied for a long time does not teach of self-returning) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The claim does not claim that the invention cannot vibrate for a long time until it returns to its normal shape and the predetermined longitudinal shape upon removal of the applied load. The claim merely claims for the shape memory member to be configured to self-return toward a normal shape upon removal of an applied load and to be configured to return the rod body toward a predetermined longitudinal shape upon removal of the applied load, which will happen eventually when the vibrations stop.
In response to applicant's argument that the sleeves f, f1, and f2 of Dunn does not teach of the first tubular member includes a shape memory material apart from the second tubular member and the shaft, and that the second tubular member includes a shape memory material apart from the first tubular member and the shaft as claimed because the shape memory material/high specific gravity member 20 of Nakahata is entirely inside of the shaft and Dunn does not teach of a shape memory material, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The tubular members being referred to in Dunn are not the sleeves but the telescopic tubes in between the sleeves. Dunn teaches that the tip section, or any part of the fishing rod, can be comprised of a plurality of tapered tubular members to make a telescopic rod as explain on p. 1 lines 11-17. This teaching is applied to Nakahata to make the tip section into first and second tubular members, while keeping the other components of the fishing rod intact such as the shape memory material 20 being entirely inside the tubular member. The tubular members are formed separate from one another and the shaft such that they are telescopic to one another as seen in fig. 2 of Dunn. These sliding telescopic tubular members teaches of claim 5 as seen in fig. 2 of Dunn and explained on p. 1 lines 11-17.
Conclusion
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.
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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/ZOE TAM TRAN/ Examiner, Art Unit 3647
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