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
Newly submitted claims 25-27 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the invention of claim 25 recites a completely alternate invention comprising an alternate housing arrangement, waterproofing arrangement, splasher orientation, etc. which requires a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 25-27 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions 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 inventions 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 invention.
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) 1-2, 6, 8-13, and 18-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Crowe US 7043865 in view of Solomon US 2004/0211106.
Regarding claim 1, Crowe teaches a decoy apparatus comprising:
a. a first housing (shown surrounding motor 24 in figure 3A), a motor (24), a power source (32), a splasher (26), and a support member (10), wherein said motor is housed within said housing (as shown),
b. wherein said housing defines an exterior shell and an interior chamber (as shown and understood to those with ordinary skill in the art),
c. wherein at least said motor are substantially housed within said housing (as previously described) and said splasher is located external to said housing (as shown);
d. wherein said motor, power source, and splasher are communicatively coupled and configured such that the power source is capable of actuating the motor which in turn causes the splasher to rotate (summarized in figure 2);
e. wherein when the decoy apparatus is deployed in a body of water (figure 2), the splasher defines a length between two opposing ends and extends generally with respect to a surface of the body of water and is positioned such that, during rotation, a first one of said opposing ends is in the body of water while a second one of said opposing ends is above the surface of the body of water, and as the splasher continues to rotate the opposing ends alternately move into and out of the body of water, causing water to splash when the splasher is acted upon by the motor (42 of figure 3C); and
but does not specify the power source also housed within the housing; the splasher extending generally vertically with respect to the surface of the body of water; or f. wherein the splasher comprises a first pattern and a second pattern and wherein the first pattern is darker than the second pattern;
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to consolidate the motor and power source within a housing, in order to efficiently protect the elements from weather, etc. since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Additionally, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide various color patterns to the splasher, in order to meet design preferences; since applicant has disclosed that a monochromatic scheme would work equally as well, etc.
Furthermore; Solomon teaches a “generally vertical” orientation to a similar type of splasher (25 of figure 8). Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide such an orientation to the splasher of Crowe, in order to meet design preferences; since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 2, the references teach the decoy apparatus of claim 1 wherein Crowe further teaches comprising a controller in operative communication with said motor, said controller capable of actuating the motor (35 figure 3A).
Regarding claim 6, the references teach the decoy apparatus of claim 1 but do not specify wherein the motor rotates the splasher at a rate between 1-100 rpm when actuated by the motor.
However, motors capable of such rpms are known. Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide a motor with such functional capabilities, in order to meet user design preferences, etc. since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 8, the references teach the decoy apparatus of claim 1 wherein Crowe further teaches comprising a structure that mimics the look of at least a portion of an avian animal (36 figure 2).
Regarding claim 9, the references teach the decoy apparatus of claim 8 wherein Crowe further teaches comprising a wing member in proximity to said structure (as shown in figure 2).
Regarding claim 10, the references teach the decoy apparatus of claim 8 wherein Crowe further teaches the structure houses a second motor, said second motor connected to at least one action member selected from a wing member, a foot member, or a paddle member (column 8 lines 36-43).
Regarding claim 11, the references teach the decoy apparatus of claim 10 wherein Crowe further teaches the second motor is operatively connected to at least one wing member (see claim 10 rejection), but does not specify wherein said motor rotates said wing member at a speed of greater then 50 rpm.
However, motors capable of such rpms are known. Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide a motor with such functional capabilities, in order to meet user design preferences, etc. since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 12, the references teach the decoy apparatus of claim 2 wherein Crowe further teaches the controller further comprises a remote control in electronic communication with a receiver (column 7 lines 44-52).
Regarding claim 13, the references teach the decoy apparatus of claim 10 but do not specify wherein the two motors are in electronic communication with the same power source.
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide such arrangement, in order to meet user design preferences for efficient use of a single power source, etc.; since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 18, the references teach the decoy apparatus of claim 1 wherein Crowe further teaches the decoy apparatus is configured to produce a water effect and a strobe effect (by way of the rotation at the water line, as best understood by Applicant’s disclosure), but does not specify wherein the motor and splasher are configured such that the motor causes the splasher to rotate at a rate of greater than 350 rpm.
However, motors capable of such rpms are known. Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide a motor with such functional capabilities, in order to meet user design preferences; etc., since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 19, the references teach the decoy apparatus of claim 18 but again do not specify wherein the motor and splasher are configured such that the motor causes the splasher to rotate at a rate of greater than 500 rpm.
However again, motors capable of such rpms are known. Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide a motor with such functional capabilities, in order to meet user design preferences; etc., since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 20, the references teach the decoy apparatus of claim 11 wherein the decoy apparatus is configured to produce a water effect and a strobe effect (again by way of the rotation at the water line, as best understood by Applicant’s disclosure), but do not specify wherein both the splasher and the at least one wing member rotate at a rate of greater than 300 rpm, and wherein the first motor rotates the splasher at a rate equal to or greater than the rate that the second motor rotates the at least one wing member.
However again, motors capable of such rpms are known. Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide a motor with such functional capabilities, in order to meet user design preferences; etc., since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Furthermore, it would also have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide such arrangement of rates, in order to meet user design preferences; etc., since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 21, the references teach the decoy apparatus of claim 1, wherein rotation of the splasher at greater than or equal to 100 rpm causes said first pattern and said second pattern to produce a strobe effect visible to a flying animal at a distance (see previous rejections with regards to motor/splasher speed).
Regarding claim 22, the references teach the decoy apparatus of claim 1 wherein rotation of the splasher at greater than or equal to 300 rpm causes said first pattern and said second pattern to produce a strobe effect visible to a flying animal at a distance (see previous rejections).
Regarding claim 23, the references teach the decoy apparatus of claim 21, but do not specify wherein less than one inch of the splasher enters the body of water when rotating.
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide such an orientation, in order to meet design requirements for various types of birds to attract, etc.; shifting the position of the splasher would not have modified the operation of the device in an unknown manner.
Regarding claim 24, the references teach the decoy apparatus of claim 1, but do not specify wherein the motor is configured to selectively rotate the splasher at a first speed and at a higher, second speed, wherein rotation of the splasher at the first speed causes the splasher to splash water without causing said first pattern and said second pattern to produce a strobe effect, and wherein rotation of the splasher at the second speed causes the splasher to splash water and causes said first pattern and said second pattern to produce a strobe effect.
Solomon; however, teaches a variable speed switch for the motor (claim 4). Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide such a motor, in order to meet design requirements for various types of birds to attract, etc.; since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Crowe and Solomon in view of Twohig US 8188691.
Regarding claim 14, the references teach the decoy apparatus of claim 1 but do not specify further comprising a reverser, wherein when activated, the motor causes the splasher to spin in one direction and then the reverser causes the motor to spin the splasher in the opposing direction.
Twohig; however, does teach such functions (column 3 lines 21-40). Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide such functions, in order to enhance types of replications to the user, etc.
Response to Arguments
Applicant's arguments filed 12/15/25 have been fully considered.
Response to applicant’s arguments directed towards the amendments to claim 1 can be found in the updated rejections above.
Applicant’s arguments directed towards the obviousness of various motor speeds to meet design preferences are not convincing at least because applicant has disclosed that various motor rpms are optional (applicant’s paragraph 0029) so are clearly not critical towards the novelty of the invention, etc. Furthermore, because applicant has described multiple various optional rpms, applicant has consequently not presented how a particular rpm solves any stated problem or is for any particular novel purpose and therefore it appears that the invention would perform equally as well with any various motor rpms. Applicant’s disclosure has not described that the particular speed of the motor/splasher is the novelty of the invention.
In response to applicant's arguments towards the rejection of claim 14, 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).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WONG whose telephone number is (571)272-7889. The examiner can normally be reached Monday through Friday from 8:00am to 4:30pm MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Collins can be reached at (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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/JESSICA B WONG/Primary Examiner, Art Unit 3644