DETAILED ACTION
Notice of Pre-AIA or AIA Status
This action is in response to the application 19/022,875 filed 1/15/2025 which claims priority to JAPAN 2024-015288 02/02/2024.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Claims 1-11 pending. Claims 10-11 new.
In response to the amendments to the claims, the previous objections to claims 4 and 9 dated 8/22/2025 are withdrawn.
In response to the amendments to the claims, the previous rejection of claim 3 under 35 U.S.C. 112(b) dated 8/22/2025 is withdrawn.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 1-11 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamane et al. (US 2021/0386043 A1)(hereinafter Yamane).
RE Claim 1: Yamane discloses a lure (42; Fig 6A), comprising:
a main body (44) having a head at a front portion (near 46) and a tail at a rear portion (near 48, opposite end),
a support part (spring 52) extending in a front-rear direction inside the main body (44)(Figs 6A-B) and configured to elastically deform in an intersecting direction that intersects with the front-rear direction (spring, see col 7, ln 55-60 and Figs 6A-B);
a weight (weight 50) slidably supported by the support part (52) inside the main body (col 7, ln 40-55); and
a guide portion (shaft 54) provided on an inner surface of the main body (44) and configured to guide the weight in the front-rear direction or the intersecting direction (col 7, ln 30-55).
RE Claim 2: Yamane further discloses the lure according to claim 1, further comprising
a restricting portion (surface of 57 which 50 strikes as seen in Fig 6B) configured to restrict at least one end portion of the support part from moving in the front-rear direction relative to the main body (stops motion of 50 and 52 in the direction towards rear of lure).
Allowable Subject Matter
Claims 9-11 allowed.
Claims 3-8 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not disclose, either alone or in combination, the details of slit portions provided on the head and configured to guide an end portion of the support part in the intersecting direction (claim 3); the guide portion extends in the front-rear direction or the intersecting direction such that, when in the second position at the rear portion, the weight is located above the first position at the front portion (claims 4-7); further comprising a biasing member configured to bias the weight in at least a forward direction (claim 8, also claim -11), along with the remaining limitations of the claim.
This statement is not intended to necessarily state all the reasons for allowance or all the details why the claims are allowed and has not been written to specifically or impliedly state that all the reasons for allowance are set forth (MPEP 1302.14).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
These documents present alternative designs similar in scope which illustrate relevant features in comparison to the Applicant’s submission. The cited prior art include various fishing lures with internal support components and oscillating components.
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 MARIA E GRABER whose telephone number is (571)272-4640. The examiner can normally be reached M-F 7:30-5.
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, Timothy D Collins can be reached on 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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/MARIA E GRABER/Examiner, Art Unit 3644
/TIMOTHY D COLLINS/Supervisory Patent Examiner, Art Unit 3644