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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the ribs of claim 5 and the varying wall thickness of claim 10 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2, 7, 10, 15, 16, and 18-20 are objected to because of the following informalities:
In line 1 of claim 2, the phrase “comprises a first” should read “comprises the first”
In line 1 of claim 7, the phrase “wherein the diameter” should read “wherein a diameter”
In line 1 of claim 10, the phrase “wherein the thickness” should read “wherein a thickness”
In line 2 of claim 15, the phrase “for the hand” should read “for a hand”
In line 1 of claim 16, the phrase “the tube” should read “the solid tube”
In line 4 of claim 18, the phrase “the handle end” should read “the handle” or “the first end”
In line 5 of claim 18, the phrase “wherein the diameter” should read “wherein a diameter”
In line 5 of claim 18, the phrase “the second tube” should read “the second hollow tube”
In line 6 of claim 18, the phrase “than the diameter” should read “than a diameter”
In line 6 of claim 18, the phrase “the first tube” should read “the first hollow tube”
In line 6 of claim 18, the phrase “the second tube” should read “the second hollow tube”
In line 7 of claim 18, the phrase “the first tube” should read “the first hollow tube”
In line 7 of claim 18, the phrase “the second tube” should read “the second hollow tube”
In line 2 of claim 19, the phrase “to the end” should read “to an end”
In line 2 of claim 20, the phrase “wherein the diameter” should read “wherein a diameter”
In line 4 of claim 20, the phrase “securing the second tube in position” should read “securing the third hollow tube in position”
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-12 and 18-20 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.
Regarding claim 1, the limitation “wherein the exterior surfaces of the baffle portion” in lines 11-12 lacks proper antecedent basis in the claims. For the purpose of examination, the examiner interprets the limitation as “wherein exterior surfaces of the baffle portion.”
Regarding claim 4, the limitation “a handle portion” in line 1 renders the claim indefinite. It is unclear if this handle portion is meant to be the same handle portion recited in claim 1 or a different handle portion. For the purpose of examination, the examiner interprets the handle portion of claim 4 to be the same handle portion as in claim 1.
Regarding claim 5, the limitation “the inner portion of the hollow tube” in lines 1-2 lacks proper antecedent basis in the claims. Additionally, claim 1 already recites “an inner surface” of the wall of the hollow tube. For the purpose of examination, the examiner interprets the limitation as “the inner surface of the wall of the hollow tube.”
Regarding claim 8, the limitation “the exterior wall of the tube” in lines 1-2 lacks proper antecedent basis in the claims. Additionally, claim 1 already recites “a wall” of the hollow tube. For the purpose of examination, the examiner interprets the limitation as “the wall of the tube.”
Regarding claims 18 and 20, the limitations “a means for fixedly securing the second [hollow] tube in position” in line 7 of claim 18 and “a means for fixedly securing the [third hollow tube] in position” in line 4 of claim 20 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclose is devoid of any structure that performs the function in the claims. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2, 3, 6, 7, 9-12, and 19 are rejected due to their dependency on rejected 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.
Claims 1-4, 6, and 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Griffeth et al. (US 20220378037 A1), herein referred to as Griffeth.
Regarding claim 1, Griffeth discloses a raking stick game calling device (see fig 1B), comprising: a hollow tube (100) configured to generate sound waves by vibrating responsive to air flowing through the hollow tube (see at least paragraph 0003), the hollow tube comprising: a first end (111) comprising a first aperture (112); a wall (114+118+109) extending from the first end to a second end (107) opposite the first end, the wall having an inner surface defining an interior volume (see fig 1B); wherein the first aperture provides access to the interior volume (see fig 1B); wherein a flow path is defined through the hollow tube from the first end, through the interior volume, and out the second end (see fig 1B); and a handle portion (105) positioned between the first end and the second end (see fig 1B); and a baffle portion (portion of 102 having 121) wherein the baffle portion is reinforced for strength (via 121) and wherein the exterior surfaces of the baffle portion are parallel to one another and not tapered (see fig 1B).
Regarding claim 2, Griffeth discloses the raking stick game calling device of claim 1, wherein the first end comprises a first aperture flared as a mouthpiece (see fig 1B).
Regarding claim 3, Griffeth discloses the raking stick game calling device of claim 2, wherein the first aperture flared as a mouthpiece is located next to a raised portion (120) of the device to provide a grip stop.
Regarding claim 4, Griffeth discloses the raking stick game calling device of claim 3, wherein the device has a handle portion (105) adjacent to the raised grip stop portion (see fig 1B).
Regarding claim 6, Griffeth discloses the raking stick game calling device of claim 1, wherein the tube is formed of plastic (see paragraph 0057).
Regarding claim 8, Griffeth discloses the raking stick game calling device of claim 1, wherein only a portion of the exterior wall of the tube is configured with reinforcement material to strengthen the exterior wall (see fig 1B).
Regarding claim 9, Griffeth discloses the raking stick game calling device of claim 1, wherein the baffle portion is a consistent outer diameter and is not tapered (see fig 1B; note that the baffle portion is considered the portion between 110 and 107 which contains 121).
Regarding claim 10, Griffeth discloses the raking stick game calling device of claim 1, wherein the thickness of the tube wall is thinner in sections to reduce weight (see fig 1B; note that the tube wall is thicker at each 120 and thinner everywhere else).
Regarding claim 11, Griffeth discloses the raking stick game calling device of claim 1, wherein the handle portion is textured or has a material overlaid on it to improve grip (at 120).
Claims 13, 15, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allen (US 4610641 A).
Regarding claim 13, Allen discloses a raking stick game calling device (see fig 1), comprising: a solid tube (12a; see col 2, lines 64-65) comprising: a first end (at leftmost 30 as viewed in fig 1) comprising a handle (leftmost 16 as viewed in fig 1); a second end (at 18) opposite the first end (see fig 1); a wall (wall of 12a) extending from the handle to the second end (see fig 1); the wall shaped in the form of an antler with one or more points (20, 22, 24; see fig 1); the texture of the wall being smooth or having raised nodes like an elk antler (wall is smooth; see fig 1).
Regarding claim 15, Allen discloses the raking stick game calling device of claim 13, wherein the handle has a raised portion (28) near the first end to form a grip stop for the hand (see fig 1).
Regarding claim 16, Allen discloses the raking stick game calling device of claim 13, wherein the tube is formed of a plastic (see col 2, line 64 – col 3, line 6).
Claims 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pringnitz (US 11134673 B2).
Regarding claim 18, Pringnitz discloses a raking stick game calling device (see fig 4), comprising: a tube (10) comprising: a first end (at 32) comprising a handle (140); a first hollow tube (12) connected to the handle end (see fig 4); a second hollow tube (60) connected the first hollow tube wherein the diameter of the second tube is less than the diameter of the first tube (see fig 4) wherein the second tube is able to slide at least partially into the first tube (see fig 2) and has a means for fixedly securing the second tube in position (130).
Regarding claim 19, Pringnitz discloses the raking stick game calling device of claim 18, wherein the second hollow tube has a weight (rightmost 130 as viewed in fig 4) attachable to the end of the second hollow tube.
Regarding claim 20, Pringnitz discloses the raking stick game calling device of claim 18, wherein the second hollow tube has a third hollow tube (14) connected to it wherein the diameter of the third hollow tube is less than the diameter of the second hollow tube (see fig 4) and the third hollow tube is able to slide at least partially into the second hollow tube (see fig 2) and has a means for fixedly securing the second tube in position (130).
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.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Allen (US 4610641 A).
Regarding claim 17, Allen discloses the raking stick game calling device of claim 13, but is silent regarding the length of the device and therefore does not explicitly disclose wherein the overall length of the device is between 22 and 26 inches.
However, Allen does indicate that larger sized antlers are advantageous (see col 1, lines 35-37). Additionally, Allen teaches variations in the overall shape of the device (see col 2, lines 40-49). One of ordinary skill in the art would recognize that a change in the overall length of the device would result in differing sounds and ease of clashing the device members together. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the overall length of the device between 22 and 26 inches in order to achieve the desired sound, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Claims 5, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Griffeth et al. (US 20220378037 A1), herein referred to as Griffeth, in view of Jones (US 4335539 A).
Regarding claim 5, Griffeth discloses the raking stick game calling device of claim 1, but does not explicitly disclose wherein at least a section of the inner portion of the hollow tube is shaped with ribs to imitate an elk’s esophagus.
However, Griffeth does teach that it could be advantageous to include differing textures within the hollow tube in order to produce a variety of sounds (see at least paragraphs 0053 and 0059).
Additionally, Jones teaches that it is known in the art of game calling devices (see fig 1) for an inner portion (see fig 2) of a hollow tube (40) of the device to be shaped with ribs (45). The purpose for including the ribs is to effect change to the sound produced by the device (see col 3, lines 8-12). 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 the hollow tube disclosed by Griffeth with ribs as taught by Jones in order to effect a desired change to the sound produced by the device.
Regarding claim 7, Griffeth discloses the raking stick game calling device of claim 1, but does not explicitly disclose wherein the diameter of any portion of the device is not greater than 3 inches.
However, Griffeth does teach that the baffle portion of the device (i.e., the portion of the device with the largest diameter) can have a variety of diameters depending on the type of sound a user wants to generate (see paragraph 0053). Additionally, Jones teaches that it is known in the art of game calling devices (see fig 1) for the diameter of a baffle portion of the device to be 1 inch (see col 2, lines 17-18). One of ordinary skill in the art would recognize that a change in the diameter of the device would result in differing sounds. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the device of Griffeth with the diameter of any portion of the device not greater than 3 inches as taught by Jones in order to achieve the desired sound, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Regarding claim 12, Griffeth discloses the raking stick game calling device of claim 1, but does not explicitly disclose wherein the device length is over 22.5 inches in overall length but under 26 inches in overall length.
However, Griffeth does teach that the baffle portion of the device can have a variety of lengths depending on the type of sound a user wants to generate (see paragraph 0053). Additionally, Jones teaches that it is known in the art of game calling devices (see fig 1) for the overall length of the device to be between 22.5 inches and 26 inches (see col 2, lines 27-30). One of ordinary skill in the art would recognize that a change in the overall length of the device would result in differing sounds. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the device of Griffeth with an overall length of between 22 and 26 inches as taught by Jones in order to achieve the desired sound, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Allen (US 4610641 A), in view of Baisden (US 6769211 B1).
Regarding claim 14, Allen discloses the raking stick game calling device of claim 13, but does not explicitly disclose wherein the handle is wrapped in cork, foam, tape, or rubber.
Baisden, however, teaches that it is known in the art of game calling devices to wrap a handle (13) of a raking stick (see fig 1) in rubber (see col 2, lines 37-39). The purpose for wrapping the handle in rubber is to ensure a comfortable grasp for the user (see col 2, lines 37-41). 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 the handle disclosed by Allen to be wrapped in rubber as taught by Baisden in order to ensure a comfortable grasp for the user.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The examiner notes that the prior art cited on PTO-892 but not relied upon for this rejection discloses game calling devices relevant in scope and structure to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christine M Mills whose telephone number is (571) 272-8322. The examiner can normally be reached from Monday - Thursday, 7:30 - 5:30 EST.
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, Namrata Boveja, can be reached on (571) 272-8105. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675
Prosecution Insights