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 1-20 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 1-20 are included in and can be gleaned from claims 1-20 of U.S. Patent no. 11,039,606 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. 11,477,971 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader and all of the current claim limitations are found in the patented claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,758,892 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader and all of the current claim limitations are found in the patented claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,102,074 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader and all of the current claim limitations are found in the patented claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 9-15, and 19-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by White (US2150088A).
Regarding claims 1, 11, and 20, White discloses a fishing apparatus (“fishing rod assembly” claim 11) (“fishing reel” claim 20), comprising: a rod (page 1, column 1, lines 36-44); a reel (Figure 1) coupled with the rod, a body (1, 2); Figure 1) defining a first end (2) and a second end (1); a spool (21) extending between the first end (1) and the second end (2); a drive (“spool drive mechanism” claim 11) (32, 8) configured to receive an input torque at the first end (1), and drive the spool (21) through a coupling at the second end (2), wherein the drive (32, 8) comprises a gear (“gear set” claim 20) (39, 37) positioned at least partially within an inner volume of the spool (21); and an output shaft (8), wherein the output shaft (8) is configured to receive an output torque from the gear (8).
Regarding claims 2 and 12, White discloses wherein the spool (21) comprises a spool shaft (22-24; Figure 1) having a central bore, the spool shaft (22-24) positioned centrally within the spool (21).
Regarding claims 3 and 13, White discloses wherein the output shaft (8) extends through the central bore of the spool shaft (22-24), the output shaft (8) selectably rotatably coupled with the spool (21; page 1, column 2, lines 38-52; page 2, column 2, lines 32-50).
Regarding claims 4 and 14, White discloses wherein the drive (“spool drive mechanism”) (32, 8) comprises a spool engagement mechanism (14, 19, 27, 28) at an end of the spool shaft (22-24) that is proximate the second end (2) of the body (1, 2), the spool engagement mechanism (14, 19, 27, 28) configured to transition between a first state (page 2, column 2, lines 32-50, positive connection) to fixedly couple the spool (21) with the output shaft (8) so that the spool (21) and the output shaft (8) rotate in unison and a second state (page 2, column 2, lines 32-50, slippage connection) to de-couple the spool (21) from the output shaft (8) so that the spool (21) and the output shaft (8) are configured to rotate relative to each other.
Regarding claims 5 and 15, White discloses wherein the spool engagement mechanism (14, 19, 27, 28) comprises: an engagement member (14, 19) configured to translate along the output shaft (8) between a first position (positive connection) and a second position (slippage connection), the engagement member (14, 19) fixedly coupled with the output shaft (8) and comprising an interfacing portion (27, 28) configured to engage an interfacing portion (23) of the spool shaft (22-24), wherein the interfacing portion (27, 28) of the engagement member (14, 19) and the interfacing portion (23) of the spool shaft (22-24) are configured to interlock with each other to rotatably fixedly couple the output shaft (22-24) with the spool (21) so that the output shaft (8) and the spool (21) rotate in unison when the engagement member (14, 19) is in the first position (positive connection position).
Regarding claims 9 and 19, White discloses wherein the drive (“spool drive mechanism” claim 19) (32, 8) receives the input torque from an input shaft (32) rotatably coupled to the spool (21).
Regarding claim 10, White discloses wherein the input shaft (32) is rotatably coupled with a handle (33; Figure 1).
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) 6-8 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over White in view of Long (US1980345A).
Regarding claims 6-8 and 16-18, White discloses the fishing apparatus and fishing rod assembly above, but fails to teach wherein the engagement member comprises an annular groove configured to receive a corresponding portion of a linkage; wherein the spool engagement mechanism further comprises a spring configured to bias the engagement member into the first position; wherein the linkage is positioned at the second end of the body, the linkage configured to receive a user input to transition the engagement member between the first position and the second position.
Long teaches a similar fishing reel and further teaches wherein the engagement member (12; Figure 1) comprises an annular groove (12b) configured to receive a corresponding portion of a linkage (14); wherein the spool engagement mechanism (5a, 12a, 12b, 12) further comprises a spring (13) configured to bias the engagement member (12) into the first position; wherein the linkage (14) is positioned at the second end (left side in Figure 1) of the body (1), the linkage (14) configured to receive a user input to transition the engagement member (12) between the first position (page 1, line 38-66 engaged) and the second position (release). It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the fishing apparatus and fishing rod assembly of White to include the spring and linkage as taught by Long in order to allow the engagement member to normally maintain pressure against the spool shaft without the need of making adjustments to a screw member to permit rotation of the spool and to further allow the engagement member to be released from the spool shaft to permit free spool with a quick response of the user.
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
/ANNA M MOMPER/Supervisory Patent Examiner, Art Unit 3619