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 .
Application Status
Claims 1-10 are pending and have been examined in this application.
This communication is the first action on the merits.
As of the date of this action, an information disclosure statement (IDS) has been filed on 5/20/2025 and reviewed by the Examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 2, 5, and 7 are 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.
The current formatting of claim 2 creates some confusion about how the limitations are meant to be read, the claim currently reads “an angle formed by
the sliding surface, and
a plane including a point at a longest distance from the sliding surface in the rear body, and a straight line on the sliding surface that passes through a center point of the sliding surface and intersects perpendicularly to a sliding direction
is 5 to 95 degrees”, the examiner believes that this claim is intending to state that the angle is formed by the sliding surface and the plane and that the angle between the two surfaces is between 5 and 95 degrees. The examiner thinks that the claim would be clearer if it was reworded to something along the lines of “an angle formed by the sliding surface and a plane; wherein the plane includes a point at a longest distance from the sliding surface in the rear body, and a straight line on the sliding surface that passes through a center point of the sliding surface and intersects perpendicularly to a sliding direction, and that the angle is between 5 to 95 degrees”.
Claim 5 currently states “a natural length of the compression coil spring is 6.1 to 50.1 mm”, it is not clear to the examiner if this length range is the range that the spring can exist between its most compressed and elongated lengths without plastic deformation, or if this range is a range of possible lengths for the spring in in an uncompressed state. The examiner believes that the second interpretation is the desired limitation and the claim will be examined in this manner.
Claim 7 states “two shafts with a fishing hook at a center”, it is not clear if either of the two shaft are the shaft that is introduced in claim 6 which this claim depends upon, additionally it is not clear if the fishing hook that is introduced in this claim is the same hook that is introduced in claim 1 or if this is a second hook, furthermore it is not clear what center is being referred to by the “a center”. Based on the applicants disclosure the examiner believes that there are meant to be a pair of offset shafts with the single fishing hook located in the space between the two shafts.
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.
Claims 1, 2, 4, 6, and 8 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Shutrits (US #2,991,580).
Regarding claim 1, Shutrits teaches a lure, comprising: a front body (16); a fishing hook (18) locked to the front body (14, 16, and 18 as seen in figures 2, and 3); and a rear body (20) having a groove portion (20, and 22 as seen in figure 5), wherein the groove portion of the rear body hides at least a part of the fishing hook (18, and 22 as seen in figure 1, and 18 as seen in figure 2), the front body and the rear body are connected to be relatively slidable (16, and the rear body as seen in figure 2, and 16, and 20 as seen in figure 3, as can be seen the rear body can slide along the rear surface of the front body), and when the front body and the rear body relatively slide, the fishing hook protrudes from the rear body (16, 18, and 20 as seen in figure 3).
Regarding claim 2, Shutrits teaches the lure according to claim 1, wherein the rear body includes a sliding surface with the front body (The front and rear bodies as seen in figures 1, 2, 3, and 5), and an angle formed by the sliding surface, and a plane including a point at a longest distance from the sliding surface in the rear body, and a straight line on the sliding surface that passes through a center point of the sliding surface and intersects perpendicularly to a sliding direction is 5 to 95 degrees (As can be seen in the figures an angle can be formed between the sliding surface and a plane formed through the distal end of the rear body and the center of the sliding surface, and as can be seen as the rear body moves over the sliding surface the angle formed would change with the movements and the rear body is capable of being moved to a position where the angle is between 5 and 95 degrees).
Regarding claim 4, Shutrits teaches the lure according to claim 1, comprising an elastic member (28), wherein the elastic member urges the front body and the rear body in opposite directions from each other (16, 28, and the rear body as seen in figure 2, and 16, 20, and 28 as seen in figure 3, and Column 2, lines 37-67, this teaches that the spring urges the front body rearwards and the rear body forward which results in the bodies being urged in opposite directions).
Regarding claim 6, Shutrits teaches the lure according to claim 1, comprising: a shaft (28); and a shaft hole through which the shaft is inserted (The opening in the rear body seen that receives the shaft), wherein the shaft is provided at one of the front body and the rear body (16, and 28 as seen in figure 2), and the shaft hole is provided in another one of the front body and the rear body (The opening in the rear body seen that receives the shaft).
Regarding claim 8, Shutrits teaches the lure according to claim 1, further comprising another member (14), wherein the front body has a groove portion (16, and 18 as seen in figure 5), the another member fixes a fishing hook (14, and 18 as seen in figure 2, and Column 2, lines 7-16), and the another member and the groove portion of the front body have portions that are along a shape of the fishing hook (14, 16, and 18 as seen in figure 2, as can be seen the front body and the another body are placed along the body of the hook).
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Shutrits (US #2,991,580).
Regarding claim 3, Shutrits teaches the lure according to claim 1, but does not explicitly teach a maximum slide distance of the front body and the rear body is 6 to 50 mm. However, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the bodies slide a distance of 6 to 50 mm, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233. The motivation for having the bodies slide a distance of 6 to 50 mm is that it allows the body to sufficiently deform to allow the hook to be exposed while still allowing the fish to bite the lure.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Shutrits (US #2,991,580) in view of Odem (US #8,371,060).
Regarding claim 7, Shutrits teaches the lure according to claim 6, but does not teach two shafts with a fishing hook at a center, wherein a distance between the two shafts is 3 to 25 mm. However, Odem does teach two shafts (22 as seen in figure 3) with a fishing hook at a center (3, and 22 as seen in figure 3). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have a pair of shafts with the hook between the shafts because Shutrits and Odem are both multipiece fishing lures with springs. The motivation for having a pair of shafts with the hook between the shafts is that it allows the system to use additional springs to improve the movements of the lure while also helping to keep the hook protected until it is desired to be exposed. But Odem does not explicitly teach that a distance between the two shafts is 3 to 25 mm.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the distance between the shafts be 3 to 25 mm, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233. The motivation for having the distance between the shafts be 3 to 25 mm is that it allows the lure to maintain a compact design while providing space for the hook.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Shutrits (US #2,991,580) in view of Ince (US #7,114,285).
Regarding claim 9, Shutrits teaches the lure according to claim 8, but does not teach that the another member has a lip. However, Ince does teach that the another member has a lip (11A, and 11B as seen in figures 1, and 2, as can be seen the body that has the line eyelet also has a lip). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the another member have a lip because Shutrits and Ince are both fishing lures with line eyelets ate the front of the lure. The motivation for having the another member have a lip is that it can allow the lure to move through the water in a more dynamic manner which can help attract fish.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Shutrits (US #2,991,580) in view of Bryant (US #12,458,007).
Regarding claim 10, Shutrits teaches the lure according to claim 1, but does not teach that a material of the rear body is hard plastic. However, Bryant does teach that a material of the rear body is hard plastic (Column 3, lines 1-14). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the body made from a hard plastic because Shutrits and Bryant are both fishing lures. The motivation for having the body made from a hard plastic is that it allows the body to be durable and cheap and easy to manufacture.
Allowable Subject Matter
Claim 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM LAWRENCE GMOSER whose telephone number is (571)270-5083. The examiner can normally be reached Mon - Thu 7:00-5:00.
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, 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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/WILLIAM L GMOSER/Primary Examiner, Art Unit 3647