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 .
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 16-18 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 16 lines 2-3 there is a lack of antecedent basis for “the first connecting element”.
Claims 17 and 18 are rejected as being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 102
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, and 5-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2004123654A to Onishi.
Regarding claim 1 Onishi discloses: A solid bath agent comprising: a main body part (3 see Fig 3)which is water-soluble and configured to transition from a first form before dissolution, to a second form after dissolution (see Fig 4(a) and 4(b) showing the first form during dissolution); and a secondary body part (a, 2a,b- see Fig 3), at least a portion of which is contained in the main body part in the first form (note at least parts a, 2a and 2b are contained in the main body part in the first form as shown in Fig 4(a)), and which is not contained in the main body part in the second form (as seen in Fig 4(b)), wherein the secondary body part includes a first secondary body part (a) and a second secondary body part (2a, 2b), and in the second form, the first secondary body part is configured to sink in a liquid (from paragraph [0009] “Inside the capsule 2, a figure a imitating an animal, an animation character, or the like is accommodated. The shape a may be any size that can be accommodated inside the capsule 2. Further, since the specific gravity of the shape a is not required to be lighter than the specific gravity of the hot water in the bath because it is accommodated inside the capsule 2, the shape is manufactured unless the shape is made of metal or the like which is heavier than the buoyancy of the capsule 2.”, and the second secondary body part is configured to float in the liquid (from paragraph [0013] “As shown in FIG. 4A, the agent for encapsulating bath formed as described above sinks to the bottom of the bathtub when it is put into hot water b, and the agent 1 for solid bath gradually dissolves. As the dissolution of the solid bath agent 1 progresses, the capsule 2 is hollow, so that buoyancy acts and rises in the hot water b, the capsule 2 floats on the surface of the hot water…”.
Re-claim 2 Onishi discloses: the solid bath agent according to claim 1, wherein the first secondary body part (a) is entirely included in the main body part in the first form (see Fig 4(a) and Fig 3).
Re-claim5 Onishi discloses: the solid bath agent according to claim 1, wherein the first secondary body part (a) and the second secondary body part (2a, 2b) are directly or indirectly connected to each other (note since first secondary bod part a is encapsulated within second secondary body part (2a, 2b) it is readable as being directly connected with one another).
Re-claim 6 Onishi discloses: the solid bath agent according to claim 5, wherein the first secondary body part (a) and the second secondary body part (2a, 2b) are arranged so as to be close to each other in the first form (note Fig 3 shows the encapsulation of body part (a) within body part (2a,2b) and thus are readable as being “close” to each other in the first form.
Re-claim 7 Onish discloses: the solid bath agent according to claim 5, wherein the first secondary body part (a) and the second secondary body part (2a, 2b) are connected to each other via a first connecting element and at least part of the first connecting element is included in the main body part in the first form (Note from Fig 2 shows connecting elements (5, 6) formed on the respective body parts (2a, 2b) thus providing a “hermetically sealed hollow capsule (2)- see paragraph [0008]. Therefore, either or both of elements (5,6) is readable as a first connecting element that is included in the main body part in the first form (see Fig 4(a) since the formation of the capsule 2 is what connects body part (a) with body part (2a, 2b)).
Re-claim 8, note Onishi is readable as having the first connecting element (5 and/or 6) is configured to be in an unstretched state in the first form since the first connecting elements 5 and 6 are both attached to one another forming the sphere, i.e. since fitting projection “6” fits into fitting recess “5” forming the hermetically sealed sphere 2 the overall dimension or circumference of sphere 2 remains in the “unstretched state” since the projection 6 is not “moved in” a direction away from fitting recess 5 and in a stretched state in the second form, i.e. note the first connecting elements (5, 6) are pressed fitted into each other to form the sphere 2 that is encased in the bath agent 1 as shown in figure 3 and when desired to remove the toy (a) therein both halves of the sphere are stretched apart (fittings 5 and 6 moving in a direction to open sphere 2 and thus being in a stretched position.
Re-claim 9 Onishi discloses: the solid bath agent according to claim 1, wherein the first secondary body part (a) and the second secondary body part (2a, 2b) are made from different material (note from paragraphs [0008]- [0009] teaches that the capsule (2a, 2b, 2) is made of a transparent plastic and shape (a) can be made of metal).
Re-claim 10 Onishi discloses: the solid bath agent according to claim 1, wherein the first secondary body part (a) is configured to have a specific gravity greater than that of the second secondary body part (2a, 2b) (note as explained above with respect to claim 9, body part (a) is made from metal which has a specific gravity greater than that of the second secondary body part (2a, 2b) being made of plastic).
Re-claim 11 Onishi discloses: the solid bath agent according to claim 1, wherein the first secondary body part (a) and the second secondary body part (2a, 2b) each imitate different shapes respectively (as seen from Fig 2 and Fig 3).
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.
Claims 1-7 and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over US Pg pub 2014/0162525 to Duda, III in view of US Pg pub 2024/0164,357 to Milton.
Regarding claim 1 Duda III discloses: a solid bath agent comprising: a main body part (141) which is water-soluble and configured to transition from a first form before dissolution, to a second form after dissolution (paragraph [0019} “When the entire assembly submerged in an aqueous environment, channel 133 on bait head 131 and perforation 142 on capsule body 141 provide a means for water to enter capsule body 141. Capsule body 141 will be composed of a material for which water acts as a dissolving agent, resulting in the total decomposition of capsule body 141 in an aqueous environment.”; and a secondary body part (151), at least a portion of which is contained in the main body part in the first form, and which is not contained in the main body part in the second form (paragraphs [0018]- [0019] “Sponge animal 151 is initially compressed such that the entirety of its volume fits into the interior volume of capsule body 141…Thus, introduction to such an environment results in the dissolution of capsule body 141, thereby releasing sponge animal 151 from its compressed state.”, wherein the secondary body part includes a first secondary body part (151) and a second secondary body part (131), and in the second form, and the first secondary body part (151) is configured to sink in a liquid (Note paragraph [0019] explains that the first secondary body part (151) is a sponge and absorbs water to increase drag and provide realistic weight and therefore is readable as being configured to sink in a liquid). However, Duda III fails to disclose that in the second form the second secondary body part (131) is configured to float in the liquid.
US Pg pub 2024/0164357 to Milton discloses a fishing lure that has a bait head/secondary body part (302, 301 as seen in Fig 3A) that is configured to float in liquid (see paragraph [0039] which states that the lure member 301 is made of a plastic material having neutral buoyancy).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have made the bait head/second secondary body part of Duda III with the material properties of a plastic material with neutral buoyancy as taught by Milton depended upon the desired location with respect to the water level that the fishing lure toy resides and to create a more realistic fishing experience for the user.
Re-claim 2, Duda III as modified discloses: the solid bath agent according to claim 1, wherein the first secondary body part (151 of Duda III) is entirely included in the main body part (141- see Figure 1 of Duda) in the first form.
Re-claim 3 Duda III as modified discloses: the solid bath agent according to claim 2, wherein the second secondary body part (131- Figures 1-3 of Duda III) is not included in the main body part (141) in the first form (note only the first secondary body part 151 is encased in main body part 141 of Duda III while the second secondary body part 131 is exterior of the main body part 141 as shown in Figure 2).
Re-claim 4 Duda III as modified discloses: the solid bath agent according to claim 3, wherein a portion of the secondary body part (references to Duda III- note a portion of the secondary body part (134, 135)), which is included in the main body part, is configured to be visually unrecognizable in the first form (note as seen in Figure 1 of Duda III, the portions of the secondary body part (134, 135) in the first form is visually unrecognizable since they are “hidden” within main body part 141).
Re-claim 5 Duda III as modified discloses: the solid bath agent according to claim 1, wherein the first secondary body part (151 of Duda III) and the second secondary body part (131 of Duda III) are directly or indirectly connected to each other (note that Figure 3 of Duda III shows the first secondary body part (151) being directly connected to second secondary body part 131 via its connection to members 135 of the portion of the second secondary body part 131).
Re-claim 6 Duda III as modified discloses: the solid bath agent according to claim 5, wherein the first secondary body part (151 of Duda III) and the second secondary body part (131 of Duda III) are arranged so as to be close to each other in the first form (see Figure 1 of Duda III).
Re-claim 7 Duda III as modified discloses: the solid bath agent according to claim 5, wherein the first secondary body part (151- Duda III) and the second secondary body part (131- Duda III) are connected to each other via a first connecting element (134, 135- Duda III as shown in Figures 1 and 2), and at least part of the first connecting element (135) is included in the main body part in the first form as shown in Figures 1 and 2).
Re-claim 9 Duda III as modified discloses: the solid bath agent according to claim 1, wherein the first secondary body part (151 of Duda III) and the second secondary body part (131- as modifed by Milton) are made from different material (note first secondary body part 151 is made of a sponge material while secondary body part 131 as modified by Milton is made of plastic).
Re-claim 10 Duda III as modified discloses: the solid bath agent according to claim 1, wherein the first secondary body part (151 of Duda III) is configured to have a specific gravity greater than that of the second secondary body part (131- as modified by Milton) (note the first secondary body part 151 of Duda III is made of a sponge material that absorbs water thus increasing its weight which would result in an overall specific gravity greater than that of the second secondary part 131 that is adapted to have a neutral buoyancy as modified by Milton)
Re-claim 11 note the claimed features are readily apparent in the device of Duda III and as shown in Figure 3.
Re-claim 12 note Duda III has the secondary body part (131) further including a third secondary body part (fishing rod or pole see paragraph [0017] of Duda III), and the third secondary body part (fishing rod/pole) is not included in the main body part in the first form. Note due to the breadth of the instant claim paragraph [0017] of Duda III explains that “the eyelet 132 allowing for attachment of hook 122. Hook 122 provides an eyelet 121 allowing for attachment to line 111, the distal end of which may be attached to a pole or rod” which can be interpreted as not being included/attached in the first form.
Re-claim 13 Duda III has the third secondary body part (fishing rod/pole) configured so as not to be engageable with the second secondary body part (131) in the first form, and the third secondary body part (fishing rod/pole) is configured so as to be engageable with the second secondary body part (131) in the second form. Note due to the breadth of the instant claim paragraph [0017] of Duda III explains that “the eyelet 132 allowing for attachment of hook 122. Hook 122 provides an eyelet 121 allowing for attachment to line 111, the distal end of which may be attached to a pole or rod” which can be interpreted as not being included/attached in the first form, but when the device is placed in water leading to the second form the third secondary body part (fishing rod/pole) would necessarily be attached/engaged with the second secondary body part (131) during simulated fishing play.
Re-claim 14, note due to the breadth of the instant claim Duda III’s third secondary body part (fishing rod/pole) is not engageable with the first secondary body part (151) in the second form (note as explained above as the hook 122 is a separate distinct item from that of the main body part 141 and may allow for attachment to the fishing rod/pole, the fishing rod/pole can be broadly interpreted as “not engageable” when the fishing pole is disconnected from the main body part 141.
Re-claim 15 Duda III as modified and reference to Duda III teaches: the solid bath agent according to claim 12, wherein the third secondary body part (fishing rod/pole) includes a gripping part (a fishing rod or pole would inherently have a gripping part), a second connecting element (111) (as shown in Figure 1 of Duda III), and a first engaging part (hook 122,123), and the second connecting element (111) is configured to connect the gripping part and the first engaging part (hook 122,123) to each other.
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over US Pg pub 2014/0162525 to Duda, III in view of US Pg pub 2024/0164,357 to Milton as applied to claims 1, 12 and 15 above, and further in view of CN 104353238 A to Gai.
Re-claim 16, Duda III as modified and refence to Duda III discloses: the solid bath agent according to claim 15, wherein the first secondary body part (151) and the second secondary body part (131) are connected to each other via the first connecting element (134 and/or 135 see Figure 2 of Duda III). However Duda III as modified fails to specifically disclose and the first connecting element (134 and/or 135) and the second connecting element (111) are made of a same material.
While examiner notes fishing lines are inherently made of a plastic material which is of a “same material”, i.e. plastic, as that of the first connecting element (134 and/or 135) of second secondary body part (131) as modified by Milton to be made of plastic, CN 104353238A to Gai teaches the fishing rod, fishhook, and fishing lines can be made of a common plastic and the fishing line wire is nylon (see Abstract of Gai)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have made the second connecting element (111) of Duda III out of plastic/nylon as taught by Gai for increased durability in water environments.
Regarding claim 17, Duda III as modified by Milton and Gai discloses a second engaging part (see element 132 of Duda III as shown in Figure 1) however fails to show the second secondary body part (131 of Duda III) having a spherical shape (note the shape of second secondary body part 131 of Duda III is conical in shape). However, Figure 1 of Duda III discloses one end portion of the main body 141 being spherical in shape. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have made the second secondary part (131) in a spherical shape as taught by Duda III, dependent upon the desired water flow pattern/drag as the main body part 141 is pulled through the water and further applicant has not provided any disclosed criticality for having such spherical shape.
Re-claim 18 Duda III as modified by Milton and Gai discloses: the solid bath agent according to claim 17, wherein the third secondary body part (fishing rod/pole), in the second form, is configured to be engageable with either the second engaging part (132) or the first connecting element (134 and/or 135) via the first engaging part (hook 122/123) as seen in Figure 1 of Duda III.
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, 5, 6, and 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 18/964,356 in view of JP H0515945U herein referred as JP’945.
Regarding claim 1, while examiner notes that copending application 18/964,356 anticipates all the features of claim 1 of the instant application and would have the secondary body part including a first secondary body part and a second secondary body part due to the breadth of this claim limitation and the fact that the secondary part of copending application 18/964,356 is broadly readable as having “multiple body parts” since a shape can be subdivided into a multitude of parts/areas and thus meets the claimed limitation. Note instant claim 1 does not specifically call for individual, distinct and separate pieces comprising the secondary part. However, if the above interpretation is not convincing, JP’945 discloses a secondary body part 6 having a first secondary body part 8 and a second secondary body part 6,7 (see figures 1-3 of JP’945.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have applied the teachings of JP’945, i.e. a secondary body part having a first and second body part in the device of copending application 18/964,356 depending on the desired shape of a toy to be exposed to increase entertainment of the user.
Re-claims 5 and 6, note the device of copending application 18/964,356 as modified by JP’945 does have the first secondary body part (8- Figure 2 of JP’945) and the second secondary body part (6,7) directly connected and close to each other via embedment of first secondary body part (8) within second secondary body part (6,7) as shown in figure 2 of JP’945.
Re-claims 9, 10 and 11, copending application 18/964,356 as modified and reference to JP’945 discloses the first (8) and second (6,7 secondary parts being made from a different material (Abstract of JP’945 indicates second body part (6) being formed from a synthetic flexible material and first body part (8) being a weight/metal having a greater specific gravity than second body part (6) and wherein both body parts each imitate different shapes (as seen in Figures 1-3 of JP’945).
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent no 2415742 of Hiltabidel et al discloses spherical shaped end portion of lure.
JP 3240450 U, JP 3149792U, US Patent no. 8,394,750 to Forgash, US Patent 2,677,913 to Swartz, US Patent no 843,330 to Drought all disclose related solid bath agents with a main body part and a secondary body part contained within.
US patent 7,497,045 to Crowe et al and US Pg pub 2001/0047609 to Orgeron et al both disclose the use of a spherical bobber connected to a fishing lure.
US Pg pub 2003/0040251 to Todokoro, US Patent no 5,050,876 to Chuang and JP 2001149637 A to Kikuchi all disclose a toy fish having a separate fishing rod..
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER M POON whose telephone number is (571)272-6891. The examiner can normally be reached on Mon-Thurs. from 8am to 2pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Thomas, can be reached at telephone number 571-272-8004. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER M POON/Supervisory Patent Examiner, Art Unit 3643
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