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 .
This document is responsive to applicant’s claims filed 11/8/2024.
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 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.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP3738105, hereinafter 105.
Regarding claim 1, 105 discloses:
A lure (1) for fishing comprising a main body portion having an interior portion provided with a cavity (5, 6) and having at least one high refractive index glass bead and/or at least one specular bead (3) capable of reflecting external light (see paragraph 0016), the cavity being partially or completely visible from outside (see paragraph 0013), the at least one high refractive index glass bead and/or the at least one specular bead being disposed in an outer surface of the main body portion, in an inner surface of the main body portion, and/or inside the cavity (inside the cavity as shown in fig 4), and the at least one high refractive index glass bead and/or the at least one specular bead disposed in the outer surface, in the inner surface, and/or inside the cavity being configured to reflect the external light (see paragraph 0016).
Regarding claim 4, 105 discloses:
The lure according to claim 1, wherein in a case where the at least one high refractive index glass bead and/or the at least one specular bead is disposed inside the cavity, the at least one high refractive index glass bead and/or the at least one specular bead is enclosed in the cavity (see at least fig 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 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 of this title, 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 2, 6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over JP3738105, hereinafter 105 in view of Wilson et al. (US 4,862,631).
Regarding claim 2, 105 discloses the lure of claim 1, but does not disclose:
wherein in a case where the at least one high refractive index glass bead and/or the at least one specular bead is disposed in the outer surface of the main body portion and/or the inner surface of the main body portion, a coating material containing the at least one high refractive index glass bead and/or the at least one specular bead is disposed in the outer surface and/or the inner surface.
Wilson teaches a lure having high refractive index glass beads (see at least col 4, lines 38-53) disposed in the outer surface of the main body portion (see fig 3, ref 20), a coating material containing the at least one high refractive index glass bead (see at least col 4, line 54 – col 5, line 28).
It would have been obvious to one of ordinary skill in the art at the time of filing to combine the lure of 105 with the exterior glass beads of Wilson yielding the predictable result of providing a lure with a light-reflective exterior to attract game fish.
Regarding claim 6, 105 as modified discloses:
The lure according to claim 2, where in a case where a coating material containing the at least one high refractive index glass bead and/or the at least one specular bead is applied, the at least one high refractive index glass bead and/or the at least one specular bead is partially exposed on a resin layer of the coating material or embedded in the resin layer of the coating material (see at least col 4, line 54 – col 5, line 28).
Regarding claim 9, 105 discloses the lure of claim 1 and that the beads have a refractive index different from water, but does not disclose:
wherein the high refractive index glass bead is a spherical reflective bead having a refractive index of from 1.4 to 2.6.
Wilson teaches a lure having high refractive index glass bead is a spherical reflective bead having a refractive index of 1.8-2.3 (see col 4, lines 38-42). It would have been obvious to one of ordinary skill in the art at the time of filing to combine the lure of 105 with the beads of Wilson yielding the predictable result of providing a specific desired range of refractive index for a fishing lure.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over JP3738105, hereinafter 105 in view of Altman (US 3,614,199).
Regarding claim 3, 105 discloses the lure of claim 1, but does not disclose:
wherein in a case where the at least one high refractive index glass bead and/or the at least one specular bead is disposed in the outer surface of the main body portion and/or the inner surface of the main body portion, a tape member containing the at least one high refractive index glass bead and/or the at least one specular bead is attached to the outer surface and/or the inner surface.
Altman teaches a tape of high refractive index glass beads (see at least col 2, lines 40-70). It would have been obvious to one of ordinary skill in the art at the time of filing to combine the lure of 105 with the reflective tape of Altman yielding the predictable result of providing an additional feature to the lure designed to return light without substantial diffusion when its angle of incidence is approximately normal and to return light with substantial diffusion when its angle of incidence is substantially oblique (see abstract).
Claim 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over JP3738105, hereinafter 105 in view of Obviousness.
Regarding claim 10, 105 discloses the lure of claim 1 and that the beads can be of shapes other than spheres, such as a triangular pyramid, but does not disclose the specific shapes of hexahedral, octahedral, dodecahedral, or icosahedral. It would have been an obvious matter of design choice to select the shape of the bead to be tetrahedral because there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23 (CCPA 1956).
Regarding claims 11 and 12, 105 discloses the lure of claim 1 except for the bead being soda lime glass, heat-resistant glass, quartz glass, hard glass, borosilicate glass, titanium barium glass, ABS resin, or acrylic resin. It would have been obvious to one having ordinary skill in the art at the time of filing to select one of the claimed materials, since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,161,099. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims contain substantially the same limitations. The present claims are generally more broad versions of the parent claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is found in the Notice of Reference Cited (PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD G DAVIS whose telephone number is (571)270-5005. The examiner can normally be reached Mon-Thurs 8am-6:00pm EST.
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/RICHARD G DAVIS/Primary Examiner, Art Unit 3644