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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12329128. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite the same fishing system in various combinations of the same claim limitations.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because Claim 14 recites “a method comprising” signifying an active method step. However, the claim is directed to an apparatus. The claim is non-statutory as it mixes apparatus and method within the claim, such a mix not being of a patentable statutory class.
Claim Rejections - 35 USC § 103
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vosester US 334,096.
Regarding claim 1, Voester teaches a fishing tackle system, comprising:
a first clip member (C);
a second clip member coupled with the first clip member (C’) about a first pivot axis (B);
a post coupled with at least one of the first clip member or the second clip member, the post configured to be disposed between the first clip member and the second clip member (D),
wherein the post is configured to move when contacted (page 1 lines 75-79), and
wherein the system is free of any hooks, barbs, and points configured to penetrate (page 1 lines 50-51 describe teeth meant to prevent slipping with no mention of penetration);
but does not specify use with fish.
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to use the system with fish, in order to avoid unwanted damage to a fish while catching it; since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art, because if the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 2, Voester teaches the fishing tackle system of claim 1, wherein the post is configured to move when contacted by the fish to cause the first clip member and the second clip member to close upon each other with a pressure sufficient to hold a portion of the fish between the first clip member and the second clip member (see previous rejection).
Regarding claim 3, Voester teaches the fishing tackle system of claim 1, wherein: the first clip member includes a first clipping segment, the second clip member includes a second clipping segment, and the post is configured to dislodge from between the first clipping segment and the second clipping segment while remaining coupled with the first clipping segment (via the chain shown in figure 1).
Regarding claim 4, Voester teaches the fishing tackle system of claim 1, wherein: a length of the post is less than a length of the first clip member, and the length of the post is less than a length of the second clip member (shown in figure 1 when each clip member includes portions A/A’/b/etc.).
Regarding claim 5, Voester teaches the fishing tackle system of claim 1, wherein: the first clip member includes a first clipping segment, the second clip member includes a second clipping segment, and the post is configured to hold apart the first clipping segment and the second clipping segment (see previous rejections).
Regarding claim 6, Voester teaches the fishing tackle system of claim 1, wherein the post is disposed between a first end of the first clip member and a first end of the second clip member (shown in figure 1 where the term “end” may be relative).
Regarding claim 7, Voester teaches the fishing tackle system of claim 1, wherein the second clip member comprises a recess (where the described teeth provide some degree of a recess); but does not specify the recess configured to receive a bait element.
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide bait on the recess, in order to enhance a luring effect of the trap; since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art, because if the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 8, Voester teaches the fishing tackle system of claim 1, further comprising a ring coupled with at least one of the first clip member or the second clip member (G’); but does not specify the ring configured to couple with fishing line.
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to connect to fishing line, in order to place the trap as desired; since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art, because if the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 9, Voester teaches the fishing tackle system of claim 1, but do not teach wherein the first clip member and the second clip member comprise a plurality of holes.
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide holes, in order to meet design preferences for a lighter system for handling.
Furthermore, applicant describes this species as merely optional; therefore, is not critical towards the novelty of the system.
Regarding claim 10, Voester teaches the fishing tackle system of claim 1, wherein the post is coupled with the first clip member by a chain (G’); but does not specify the chain to be string.
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to substitute string for chain, in order to meet design preferences; since string would be an art recognized equivalence for the same purpose.
Regarding claim 11, Voester teaches the fishing tackle system of claim 1, wherein the post comprises a pivoting member (such as the pointed end shown in figure 2) pivotally coupled with the first clip member about a pivot axis (axis countersink H provides some degree of pivoting action).
Regarding claim 12, Voester teaches the fishing tackle system of claim 1, further comprising a lure coupled with the second clip member (see claim 7 rejection).
Regarding claim 13, Voester teaches the fishing tackle system of claim 1, but does not specify wherein: the first clip member includes a first clipping segment comprising silicone, and the second clip member includes a second clipping segment comprising silicone.
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide such silicone, in order to enhance the non-slipping effect already taught. Furthermore, applicant describes this species as merely optional; therefore, is not critical towards the novelty of the system.
Regarding claim 14, Voester teaches a method, comprising: providing a first clip member; coupling a second clip member with the first clip member about a first pivot axis; coupling a post with at least one of the first clip member or the second clip member, the post configured to be disposed between the first clip member and the second clip member, wherein the post is configured to move when contacted by a fish, and wherein the method is free from use of any hooks, barbs, and points configured to penetrate the fish (see previous rejections).
Regarding claim 15, Voester teaches the method of claim 14, wherein the post is configured to move when contacted by the fish to cause the first clip member and the second clip member to close upon each other with a pressure sufficient to hold a portion of the fish between the first clip member and the second clip member (see previous rejections).
Regarding claim 16, Voester teaches the method of claim 14, comprising: holding apart, by the post, a first clipping segment of the first clip member and a second clipping segment of the second clip member (see previous rejections).
Regarding claim 17, Voester teaches the method of claim 14, comprising: disposing a post between a first end of the first clip member and a first end of the second clip member (see previous rejections).
Regarding claim 18, Voester teaches the method of claim 14, wherein: a length of the post is less than a length of the first clip member, and the length of the post is less than a length of the second clip member (see previous rejections).
Regarding claim 19, Voester teaches the method of claim 14, wherein the second clip member comprises a recess configured to receive a bait element (see previous rejections).
Regarding claim 20, Voester teaches the method of claim 14, comprising: coupling a ring with at least one of the first clip member or the second clip member, and coupling the ring with fishing line (see previous rejections).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WONG whose telephone number is (571)272-7889. The examiner can normally be reached Monday through Friday from 8:00am to 4:30pm 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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/JESSICA B WONG/Primary Examiner, Art Unit 3644