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 .
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.
Claim 1 (as well as dependent claims 2-12, 14-16, and 18-22 due to dependency) is 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.
Claim 1 recites the limitation, “each fin having curved upper and lower surfaces which taper outwardly and then inwardly towards each other”, which is vague and indefinite since it appears as though the claim is intending to claim tapered fins which taper in two directions. The figures (for example, Fig. 14 shows a consistent thickness in a horizontal direction) only appear to support a tapered portion from a leading edge to a trailing edge, not a tapered portion which tapers outwardly and inwardly towards each other. Therefore, for the purposes of examination, the examiner will be interpreting the claim as only having a taper from a leading edge to a trailing edge the thickest portion of the fins being proximate the leading edge.
Claim 1 recites the limitation "the thickest portion" in line 7. There is insufficient antecedent basis for this limitation in the 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Langelaan; Jacob Willem (US 20150104985 A1).
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Regarding claim 1 Langelaan discloses a keel for a bird decoy (Fig. 1; 201, 104, 102); (the keel is structurally capable of use with a bird decoy) the keel comprising: a. a keel body having a generally tear drop shape [0032], the keel body having a leading edge and a trailing edge (shown in Fig. 2), an upper portion (upper portion seen in Fig. 1 extending above the fins) and a lower portion (shown in Fig. 1 as being covered by the fins); b. a pair of fins (Fig. 2; 102) extending outwardly from the lower portion of the keel body in generally opposite directions (Fig. 1), each fin having curved upper and lower surfaces (seen in Fig. 2) which taper from the leading edge to the trailing edge (see exploded, annotated Fig. 2) , the thickest portion of the fins being proximate the leading edge (Fig. 2); and c. an attachment feature (shown in annotated figure above) adapted to receive a tether line (a tether could be attached via the attachment between 201 and 102, and thus satisfies the functional language), the attachment feature being located near the leading edge (the furthest point of attachment would be near the leading edge) of the keel body.
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(s) 1-4, 7-12, 14-16, 18-20, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hohns; William et al. (US 20190038986 A1), in view of Langelaan; Jacob Willem (US 20150104985 A1), in view of Tilby; John (US 20060242883 A1).
Regarding claim 1 Hohns discloses a keel for a bird decoy (the keel could be used for a bird decoy and therefore meets the structural limitations of the claim), the keel comprising: a. a keel body (Fig. 22; 240), the keel body having a leading edge and a trailing edge (Fig. 22), an upper portion and a lower portion (Fig. 22); b. a pair of fins (Fig. 22; 270) extending outwardly from the lower portion of the keel body in generally opposite directions;
Hohns discloses multiple embodiments of a keel having various tapered portions and thicknesses, as well as fins having curved upper and lower surfaces (Fig. 26), but does not explicitly disclose a keel body having a generally tear drop shape; each fin tapers from the leading edge to the trilling edge, the thickest portion of the fins being proximate the leading edge.
Langelaan teaches a keel body having a generally tear drop shape (Fig. 2; 201); each fin tapers from the leading edge to the trilling edge (shown in Fig. 2), the thickest portion of the fins being proximate the leading edge (see annotated figure above).
The modification is merely an obvious engineering design choice derived through routine tests and experimentation to streamline the device for optimal weight distribution. The modification is merely “obvious to try” choosing from a finite number of identified, predictable solutions with a reasonable expectation of success.
Hohns discloses an attachment feature (Fig. 57; 815), but does not disclose the attachment feature being located near the leading edge of the keel body. Tilby teaches the attachment feature being located near the leading edge of the keel body (Fig. 2); [0033].
It would have been obvious to one of ordinary skill within the art before the effective filing date of the claimed invention to have modified the leading edge of the keel body of Hohns in view of Langelaan to include an attachment feature, as taught by Tilby, in order to attach a line for retrieval, preventing loss of the device [0007], and since it has been held that rearranging parts of an invention involves only routine skill in the art.
Regarding claim 2 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns further discloses a bulb (bulb shown in Fig. 23 front portion of 270) at or near a lower end of the lower portion of the keel body, the pair of fins extending outwardly from the bulb (fins seen extending from the bulb in Fig. 22), but does not explicitly disclose the bulb having a substantially circular cross section.
It would have been a matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the bulb of Hohns to be substantially circular in a cross section, in order to achieve a desired buoyancy, and as an obvious change in shape. In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 3 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns further discloses wherein the bulb has a nose extending beyond the leading edge of the keel body in a longitudinal direction (shown in Fig. 23).
Regarding claim 4 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns further discloses wherein the bulb has a tail extending beyond the trailing edge of the keel body in a longitudinal direction (Fig. 22).
Regarding claim 7 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns in view of Tilby further discloses wherein the keel attachment feature is an aperture (Tilby; [0033]).
Regarding claim 8 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns in view of Tilby further discloses wherein the keel attachment feature is located in the lower portion of the keel body (Tilby; shown in Fig. 1); [0033].
Regarding claim 9 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns does not disclose one or more tether storage features. Tilby teaches one or more storage features (Fig. 1; 22); [0039].
It would have been obvious to one having ordinary skill within the art before the effective filing date of the claimed invention to have modified the keel of Hohns to include one or more storage features, as taught by Tilby, in order to allow for easy stowage and release.
Regarding claim 10 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns further discloses a connection feature (Fig. 35; 242, 246, 243, 247) extending upwardly from the upper portion of the keel body (252), the connection feature adapted to connect with a corresponding connection feature of the bird decoy [0444]; (the connection feature would allow for a corresponding connection).
Regarding claim 11 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns further discloses a flange (Fig. 35; 244) at or near the top of the body, and wherein the connection feature extends upwardly from the flange [0444].
Regarding claim 12 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 11. Hohns further discloses wherein the connection feature is or comprises a clip having a body (Fig. 35; 242, 246) and a locking mechanism (243, 247) ; [0457].
Regarding claim 14 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 12. Hohns further discloses wherein the body of the clip extends upwardly from the flange and is configured to fit through an aperture of the decoy (the body of the clip of Hohns fits through aperture (Fig. 32; 215, 216) and thus meets the functional limitation of the claim).
Regarding claim 15 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 12. Hohns does not explicitly disclose wherein the body has a pair of opposing flexible arms, each arm having outwardly projecting barbs. However, it would have been an obvious substitution of functional equivalent to have substituted the clips of Hohns to include a pair of opposing flexible arms, each arm having outwardly projecting barbs, in order to allow for a firmer attachment mechanism, and since Hohns discloses a plurality of fastening mechanisms (including an arm with one outwardly projecting barb, shown in Fig. 54).
Regarding claim 16 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 13. Hohns further discloses wherein the clips are integral with the flange (Fig. 35).
Regarding claim 19 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns in view of Tilby further discloses a tether (Tilby; Fig. 1; 24) attached to the keel via the attachment feature.
Regarding claim 20 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns does not disclose a bird decoy. Tilby teaches a bird decoy (Fig. 1).
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It would have been obvious to one of ordinary skill within the art before the effective filing date of the claimed invention to have modified the device of Hohns to include a bird decoy, as taught by Tilby, in for enhanced aesthetics, and since Hohns discloses the keel could be used with any type of object or animal, including birds [0479].
Regarding claim 22 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns in view of Langelaan and Tilby further discloses wherein the fins extend from the lower portion of the keel body along the entire length of the fins (shown in the annotated figure 7 of Hohns above).
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hohns; William et al. (US 20190038986 A1) , in view of Langelaan; Jacob Willem (US 20150104985 A1), in view of Tilby; John (US 20060242883 A1), further in view of Heath; Desmond (US 3871127 A).
Regarding claim 5 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns in view of Tilby does not explicitly disclose wherein the keel body has a length, each fin has a length that is generally the same as the length of the keel body.
Heath teaches wherein the keel body has a length, each fin has a length that is generally the same as the length of the keel body (Figs. 1-2; 14, 17).
It would have been obvious to one of ordinary skill within the art before the effective filing date of the claimed invention to have modified the fins of Hohns in view of Langelaan and Tilby to be generally the same length as the length of the keel body, as taught by Heath, in order to affect the stability of the device when deployed in water, as desired by a user. The modification is merely an obvious engineering design choice derived through routine tests and experimentation to control the stability of the device, choosing from a finite number of identified, predictable solutions with a reasonable expectation of success.
Regarding claim 6 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns in view of Tilby does not explicitly disclose wherein the keel fins extend perpendicularly outwardly from the lower portion of the keel body.
Heath teaches wherein the keel fins (Fig. 2; 14) extend perpendicularly outwardly from the lower portion of the keel body.
It would have been obvious to one of ordinary skill within the art before the effective filing date of the claimed invention to have modified the fins of Hohns in view of Langelaan and Tilby to extend perpendicularly outwardly from the lower portion of the keel body, as taught by Heath, in order to affect the stability of the device when deployed in water, as desired by a user. The modification is merely an obvious engineering design choice derived through routine tests and experimentation to control the stability of the device, choosing from a finite number of identified, predictable solutions with a reasonable expectation of success.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hohns; William et al. (US 20190038986 A1) , in view of Langelaan; Jacob Willem (US 20150104985 A1), in view of Tilby; John (US 20060242883 A1)., further in view of Wood; Michael Tate et al. (US 20090126253 A1).
Regarding claim 18 Hohns, in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 10. Hohns does not disclose wherein the keel is or comprises a polymeric material. Wood teaches wherein the keel is or comprises a polymeric material [0035].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the keel of Hohns in view of Langelaan and Tilby to comprise a polymeric material, as taught by Wood, in order enhance the durability of the device, and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hohns; William et al. (US 20190038986 A1) , in view of Langelaan; Jacob Willem (US 20150104985 A1), in view of Tilby; John (US 20060242883 A1)., further in view of Haley; Patrick (US 20060283071 A1).
Regarding claim 21 Hohns in view of Langelaan and Tilby, as shown above, discloses all of the limitations of claim 1. Hohns in view of Langelaan and Tilby does not disclose wherein the fins have a substantially rectangular shape when viewed in plan view. Haley teaches wherein the fins (Fig. 1; 16) have a substantially rectangular shape when viewed in plan view (Fig. 1).
It would have been a matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the fins of Hohns in view of Langelaan and Tilby to have a substantially rectangular shape when viewed in plan view, as taught by Haley, in order to stabilize the device (abstract).
Response to Arguments
Applicant's arguments filed 01/08/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument “Hohns also does not disclose that each fin each has "curved upper and lower surfaces which taper outwardly and then inwardly towards each other from the leading edge to the trailing edge, the thickest portion of the fins being proximate the leading edge" as now recited in claim 1.”
Firstly, the claim language of “taper outwardly and then inwardly towards each other” is vague and indefinite (see 112b above). Secondly, Hohns discloses a plethora of embodiments, some of which have curved upper and lower surfaces (Fig. 24). Langelaan further discloses curved upper and lower surfaces which is shown in the curved lines of Fig. 2.
Applicant’s arguments with respect to claim(s) 1, specifically applicant’s argument, “the wings are 'generally flat' (see paragraph [0418] and [0419]). In the second embodiment, the wings have a curved bottom surface, but the top surface does not taper from the leading edge to the trailing edge, and as seen in Figure 36 for example the thickest portion of the wings is at the trailing edge rather than proximate the leading edge as claimed.” 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. The claimed subject matter is disclosed by Langelaan.
In response to applicant’s argument, “Even further, a person skilled in the art would have no basis to modify Hohns to arrive the currently claimed subject matter because Hohns is aimed at achieving a completely different type of movement in the water - i.e., surfing waves towards a shore while remaining upright. The keel and wing shapes of Hohns are specifically designed for this purpose and would not be arbitrarily modified towards the claimed keel.” This is not found persuasive in view of the 78 figures and various embodiments of Hohns which discloses multiple keel and fin configurations, all of which have various thicknesses and tapers in order to achieve a desired effect. Applicant appears to be more narrowly interpreting the prior art, when in fact, the instant claims do not positively require a bird decoy or any of the features associated with a bird decoy.
In response to applicant’s argument, “Moreover, Hohns is aimed at rear-weighting to tilt the nose of the toy upward (see e.g. paragraph [0471]). Hence, in Hohns, the thickest part of the wings in the second embodiment is at the rear, and it therefore teaches against the fins being thickest proximate the leading edge.” a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit or otherwise discourage investigation into the invention claimed. UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 692, 2023 USPQ2d 448 (Fed. Cir. 2023).
While the intention of the device of Hohns is intended to keep the nose above the water as it acquires a wave, it does not explicitly discourage modifying the keel of the device in order to achieve a desired flotation effect. One of ordinary skill would recognize that rear weighting could still be achieved as desired even with the above modifications to the keel.
In fact, [0470] references adding weights into the wings in order to achieve a desired weight affect on the nose. Thus, one of ordinary skill would still recognize the advantages of the modifications shown in the rejections above, and still be able to achieve a desired weight through the insertion of weights into the wings/fins.
In response to applicant’s argument, “Hohns teaches an enlarged lower section of the skeg, but this is not the same as a bulb having a substantially circular cross section from which the pair of fins extend outwardly.” The interpretation has been amended to clarify the portion which the examiner is relying upon. However, it appears as though applicant is narrowly construing the term bulb to denote a particular shape. As amended, the claim now denotes a particular shape, which has been modified accordingly and the argument is now moot.
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 BRITTANY LOWERY whose telephone number is (571)270-3228. The examiner can normally be reached M-F 7 am-4 pm 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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/BRITTANY A LOWERY/Examiner, Art Unit 3644
/TIMOTHY D COLLINS/Supervisory Patent Examiner, Art Unit 3644