Detailed Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
2. 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,684,053. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4 of the ‘053 patent are substantially similar to claims 1-20 of the present application.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,336,518. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the ‘518 patent are substantially similar to claims 1-20 of the present application.
Claim Rejections - 35 USC § 102
3. 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.
(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.
Claim(s) 1-3, 6-8, 10-12 and 15-20 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by U.S. Patent No. 945,091 to Hanel.
Referring to claims 1 and 17, Hanel discloses a fishing lure comprising, a decorative hollow body – at A, comprising an aperture/at least one aperture – at rear of A – see hook movable through the opening in figures 1-2, a housing – at D and C at and rearward of D, disposed inside and aligned longitudinally with the decorative hollow body – at A – see figures 1-3, a hook – at G,I,J,K,F, extending at least partially from the housing – at C,D – see figure 1 with G extending downward from the housing in first position and extending from the housing in the dashed position and items F,I,J,K extending from the housing in the dashed position, the hook – at G,J,K,F, comprising a plate – at I, disposed inside the housing – at C,D – see figure 1, a longitudinal body – at F and/or J, coupled to the plate – at I, and extending from the plate longitudinally – see figure 1 with items F and J extending from I in a length direction, a curved portion – at G, extending from the longitudinal body – at F and/or J, and comprising a barb disposed at a distal end of the curved portion – see ends of G in figure 1, wherein the hook – at G,J, is configured to be movable between a retracted position wherein the barb of the hook is disposed within the decorative hollow body – at A – see figure 1, and an extended position wherein the barb of the hook – at G,J, extends through the aperture in the decorative hollow body – at A – see dashed line position in figure 1, and is disposed entirely outside of the decorative hollow body – at A – see dashed line position in figure 1, a spring – at h,H, disposed inside the housing – at C,D, between and in contact with a forward end of the housing – at D, and the plate – at I – see figure 1, the spring – at h,H, configured to selectively move the hook – at G,I,J,K,F, from the retracted position to the extended position in a longitudinal direction – see positions in figure 1, a guard – at L,M,N, having a first end and a second end – first end at end of N connected on C, and second end at L, wherein the first end of the guard is fixedly coupled to the housing – at C – see connection of N and C in figure 1, wherein the second end of the guard – at L, is releasably coupled to the hook – at G,J,I,K,F, – see at F and K in figure 1 and see page 1 lines 50-84, and wherein the guard – at L,M,N, is configured to selectively decouple from the hook – at G,J,K,F,I and allow the spring – at h,H, to expand to move the hook – at G,J,K,F,I from the retracted position to the extended position upon application of pressure to the guard – at L,M,N – see figures 1-3 and page 1 lines 50-84. Specific to claim 17, Hanel further discloses the hook – at G,J,K,F,I comprises a second curved portion – at G, extending from the longitudinal body – at F and/or J – see figure 1, and comprising a second barb disposed at a distal end of the second curved portion – at G – see figure 1, and the hook assembly – at G,J,K,F,I, is configured to be movable between a retracted position wherein the first barb – at end of one of G, and the second barb – at the end of the other of G, of the hook assembly are disposed within the decorative hollow body – at A – see figure 1, and an extended position wherein the first barb – at the end of one of G, and the second barb – at the end of the other of G, of the hook assembly extend through the at least one aperture – at the rear of A, in the decorative hollow body – at A - see dashed line position in figure 1, and are disposed entirely outside of the decorative hollow body – at A – see dashed line position in figure 1.
Referring to claim 2, Hanel further discloses the housing comprises a substantially cylindrical body – at C – see figures 1 and 3.
Referring to claim 3, Hanel further discloses the plate – at I, consists of a single plate – see figure 1, and wherein the housing – at C,D, comprises an annular lip – inner surface of C, extending inwardly from the substantially cylindrical body – at C – see figure 1 where inner wall of C extends inwardly from rear of C toward the front of C, to retain the single plate – at I, within the housing – at C – see figure 1 with inner wall of C engaging item K which facilitates retaining F,I in the retracted position.
Referring to claim 6, Hanel further discloses the hook – at G,J,K,F,I comprises a second curved portion – at G, extending from the longitudinal body – at F and/or J – see figure 1, and comprising a second barb disposed at a distal end of the second curved portion – at G – see figure 1.
Referring to claim 7, Hanel further discloses a brace – at J, disposed between the curved portion – at one of G, and the second curved portion – other of G – see figure 1.
Referring to claim 8, Hanel further discloses the second end of the guard – at L, is releasably coupled to the brace – at J – see via items F and K in figure 1, and wherein the guard – at L, is configured to selectively decouple from the brace – at J – see via F and K in figure 1, and allow the spring – at h,H, to expand to move the hook – at G,J,K,F,I from the retracted position to the extended position upon application of pressure to the guard – at L – see figures 1-3 and page 1 lines 50-84.
Referring to claim 10, Hanel further discloses the hook – at G,J,K,F,I, comprises a second longitudinal body – at F or J, coupled to the plate – at I, and extending from the plate – at I, longitudinally – see figure 1, and a second curved portion – at G, extending from the second longitudinal body – at F or J, and comprising a second barb – at the end of G, disposed at a distal end of the second curved portion – at G – see figure 1.
Referring to claim 11, Hanel further discloses a brace – at J, disposed between the curved portion – at one of G, and the second curved portion – the other of G – see figure 1.
Referring to claim 12, Hanel further discloses the second end of the guard – at L, is releasably coupled to the brace – at J – see via items K and F in figure 1, and wherein the guard – at L, is configured to selectively decouple from the brace – at J – see via items K and F in figure 1, and allow the spring – at h,H, to expand to move the hook – at G,K,J,F,I, from the retracted position to the extended position upon application of pressure to the guard – at L – see figures 1-3 and page 1 lines 50-84.
Referring to claim 15, Hanel further discloses the guard – at L,M,N, does not engage with the barb of the hook – at G, to retain the hook in the retracted position – see figure 1.
Referring to claims 16 and 20, Hanel further discloses the decorative hollow body – at A, is shaped like a frog, a fish, a worm, or an insect – see fish in figures 1-2.
Referring to claim 18, Hanel further discloses a brace – at J, disposed between the curved portion – at one of G, and the second curved portion – other of G – see figure 1, and the second end of the guard – at L, is releasably coupled to the brace – at J – see via items F and K in figure 1, and wherein the guard – at L, is configured to selectively decouple from the brace – at J – see via F and K in figure 1, and allow the spring – at h,H, to expand to move the hook – at G,J,K,F,I from the retracted position to the extended position upon application of pressure to the guard – at L – see figures 1-3 and page 1 lines 50-84.
Referring to claim 19, Hanel further discloses at least one of the guard and the brace comprises a barb or a hook configured to releasably couple the guard and the brace – via items F and K – see hook at L and J in figure 1.
Claim Rejections - 35 USC § 103
4. 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 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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hanel as applied to claim 3 above, and further in view of U.S. Patent No. 2,722,764 to Juhrend.
Referring to claim 4, Hanel does not disclose a sealing ring disposed around the plate. Juhrend does disclose a sealing ring – at 15, disposed around the plate – at 14 – see figure 3. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Hanel and add the sealing ring disposed around the plate as disclosed by Juhrend, so as to yield the predictable result of protecting the plate during use.
Claim(s) 5 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hanel as applied to claims 1 or 3 above.
Referring to claim 5, Hanel does disclose the hook having plates – at I and K, and the plate – at K, provides for sealing against the cylindrical body – at C of the housing – see retracted position in figure 1, but Hanel does not disclose the plate connected to the spring seals the cylindrical body. However, it would have been obvious to one of ordinary skill in the art to take the device of Hanel and have the plates – at I and K incorporated so that the hook connects to the plates while sealing the cylindrical body of the housing, so as to yield the predictable result of protecting the internal components of the device when in the retracted position.
Referring to claim 14, Hanel does not disclose the guard engages with the curved portion of the hook to retain the hook in the retracted position. However, it would have been obvious to one of ordinary skill in the art to take the device of Hanel have the guard engage with the curved portion of the hook so that item N of Hanel engages with the hook – at G, so as to yield the predictable result of ensuring the hook only moves to the extended position when a fish strikes the device during use as desired.
Claim(s) 9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hanel as applied to claims 6 or 10 above, and further in view of U.S. Patent No. 2,544,782 to Fawcett.
Referring to claims 9 and 13, Hanel further discloses the decorative hollow body – at A, and the aperture – at the rear of A, through which the second barb – at the end of G, and at least a portion of the second curved portion of the hook – at G, pass when the hook is moved from the retracted position to the extended position – see figure 1. Hanel does not disclose the decorative hollow body comprises a second aperture through which the second barb and at least a portion of the second curved portion pass when the hook is moved from the retracted position to the extended position. Fawcett does disclose the decorative hollow body – at 11, comprises a second aperture – see two apertures – at 12, through which the second barb – at the end of 23, and at least a portion of the second curved portion – at 23, pass when the hook – at 23, is moved from the retracted position to the extended position – see figures 2-3. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Hanel and add the second aperture in the decorative hollow body as disclosed by Fawcett, so as to yield the predictable result of having the hooks on multiple sides of the device to increase the likelihood of catching a fish.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following patents are cited to further show the state of the art with respect to spring operated fishing devices in general:
U.S. Pat. No. 3,786,587 to Niileksela – shows spring operate fishing lure
U.S. Pat. No. 3,816,953 to Hameen-Anttila – shows spring operated fishing lure
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PARSLEY whose telephone number is (571)272-6890. The examiner can normally be reached Monday-Friday, 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached at (571) 272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J PARSLEY/Primary Examiner, Art Unit 3643