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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 12,121,021 (hereinafter the ‘021 patent) is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Drawings
The drawings are objected to due to the following informalities:
In Fig. 3, reference number “102” should read --108-- to denote the on/off switch (compare to Figs. 6 and 11-12; see col. 7:31-34).
In Fig. 17, it appears that the lead line for one of the reference numbers “92” is misplaced. (Reference number “92” is used in the specification to denote a pair of connectors; see col. 7:24-26 and Figs. 9-10.)
In Fig. 19, it appears the reference number “94” is incorrect or misplaced. Reference number “94” is used elsewhere to denote complementary mating wires (see col. 7:24-26 and Fig. 18).
Corrected drawing sheets in compliance with 37 CFR 1.173(b)(3) are required in reply to the Office action to avoid abandonment of the application. Amendments in reissue applications are different from standard utility application practice and are governed by 37 CFR 1.173. In particular, 37 CFR 1.173(b)(3) reads, with emphasis:
Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Marked-up Drawings" and must be presented in the amendment or remarks section that explains the change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
The objection to the drawings will not be held in abeyance. See also MPEP 1453.
Specification
The specification is objected to because of the following informalities:
In col. 7, line 62, “plug 12” should read --plug 114--, consistent with col. 7:34 et al. (Reference number “12” is used elsewhere to denote the decoy.)
Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective because it fails to specifically identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. The examiner notes that the new reissue claims are broadened with respect to the patented claims. For a broadening reissue application, the error statement must specifically identify at least one original patent claim that the reissue application seeks to broaden and specify the particular language of the original patent claim wherein lies the error (for example, by explicitly stating that patent claim 1 was unduly narrow and quoting at least one word or phrase from patent claim 1 that Applicant considers to be unduly narrowing).
As explained in MPEP § 1414, subsection II:
A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. The corresponding corrective action which has been taken to correct the original patent need not be identified in the oath/declaration. If the initial reissue oath declaration “states at least one error” in the original patent, and, in addition, recites the specific corrective action taken in the reissue application, the oath/declaration would be considered acceptable, even though the corrective action statement is not required.
In this case, the error statement is defective because it points out only the corrective action being taken relative to the new reissue claims and does not specifically point out an error in the original patent claims.
In addition, the reissue declaration is defective because the inventor’s residence information is not provided as required at the bottom of pg. 2 of Form PTO/AIA /05.
Claim Rejections - 35 USC § 251 - Reissue Declaration
35 U.S.C. 251(a) states:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1-24 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 251 - Recapture
Claims 10-13 and 15-24 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP § 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Recapture Analysis: Step 1
Reissue claims 10-24 are broader in scope than patent claims 1-9. Independent reissue claims 10 and 15 do not require the following limitations which were present in all of the patent claims:
the decoy body being arranged in a predetermined orientation;
a motor mounting assembly; and
the wing panel being constructed and arranged to simulate a wing of a bird.
Independent reissue claims 10 and 15 also do not require the following limitations which were present in patent claims 1-6:
a bay being communicatively connected to the electronic control circuit and capable of receiving a software module; and
the first or second connector comprising a magnet.
Independent reissue claims 10 and 15 also do not require the following limitations which were present in patent claims 7-9:
a USB port capable of receiving a plug-and-play software module that provides a remote control capability.
Therefore, step 1 of the three-step test is met for reissue claims 10-24.
Recapture Analysis: Step 2, first sub-step
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP § 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by the applicant in the original prosecution to make the claims allowable over the art.
During prosecution of the ‘021 patent (U.S. Application No. 18/466,400; hereinafter the ‘400 application), the examiner rejected claims 1 and 3-7 under 35 U.S.C. 103 as unpatentable over Mathews (U.S. Patent No. 6,408,559) in view of Richardson et al. (U.S. Patent No. 6,493,980) and Twohig (U.S. Patent No. 8,188,691). The examiner indicated that dependent claim 2 included allowable subject matter (“wherein the first or second connector comprises a magnet”), and that independent claim 8 was allowable due to the recitation of “a plug-and-play software module” which was first introduced into claims of the great-grandparent Application No. 15/160,075 (hereinafter the ‘075 application) in an amendment filed July 5, 2019, to distinguish over the prior art. See Non-final Office action mailed May 3, 2024, pg. 6, citing the prosecution of the ‘075 application as providing the reasons for allowability of claim 8.1
In response, Applicant amended claim 1 to include the allowable subject matter of claim 2 (“the first or second connector comprising a magnet”) and introduced a new independent claim 9 which recited the same “USB port capable of receiving a plug-and-play software module that provides a remote control capability” recited in claim 8. See Response filed August 5, 2024.
The examiner then mailed a Notice of Allowance on August 21, 2024. Independent claims 1, 8, and 9 and their dependent claims were allowed as patent claims 1-9 (of which claims 1, 7, and 8 are independent).
The limitations that were added to the independent claims and argued by Applicant to distinguish the claimed invention from the prior art, as discussed above, are thus surrender-generating limitations (SGL).
Recapture Analysis: Step 2, second sub-step
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitations are directed to limitations relied upon by Applicant in the original application to make the claims allowable over the art.
Reissue claims 10 and 15 are broadened with respect to patent claim 1 to omit “the first or second connector comprising a magnet.” Reissue claims 10 and 15 are broadened with respect to patent claims 7 and 8 to omit “a USB port capable of receiving a plug-and-play software module that provides a remote control capability.” Reissue claims 10 and 15 and dependent claims 11-13 and 16-24 eliminate substantially all of the surrendered subject matter. Dependent claim 14 includes some of the surrendered subject matter (“a magnet”) and omits other of the surrendered subject matter (“a USB port capable of receiving a plug-and-play software module that provides a remote control capability”). Therefore, step 2 of the three-part test is met for reissue claims 10-24.
Recapture Analysis: Step 3
The third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued in order to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule. As set forth in MPEP § 1412.02, subsection II(C), if a surrender-generating limitation (SGL) has not been entirely eliminated from a claim in the reissue application but rather has been made less restrictive in the reissue claim, “[i]t must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture.”
No part of the SGL is retained in claims 10-13 and 15-24. Therefore, claims 10-13 and 15-24 do not avoid impermissible recapture.
Dependent claim 14 recites “wherein the first or second connector further comprises a magnet to facilitate the connection to the motor.” Because claim 14 includes the magnet (the SGL added to patent claim 1), claim 14 avoids impermissible recapture.
Therefore, in summary, reissue claims 10-13 and 15-24 improperly recapture surrendered subject matter. Reissue claim 14 avoids impermissible recapture and thus is not included in this rejection.
Claim Rejections - 35 USC § 251 and 112(a) - New Matter
35 U.S.C. 251(a) states:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 10-14 and 24 are rejected under 35 U.S.C. 251 and 35 U.S.C. 112(a) as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows: “wherein the printed circuit board is structured and configured to provide remote control of the motor” (claim 10, lines 16-17), and “wherein the printed circuit board is configured to receive remote signals to control the motor” (claim 24, lines 2-4). In the Remarks filed October 31, 2025, Applicant points to col. 7, lines 31-48, as providing written description support for this new limitation. Col. 7, lines 31-48, reads as follows:
The base member 80 includes a floor member 100, a controller housing 102 with a cover 104, a printed circuit board (PCB) control circuit (not shown) disposed in the housing 102, a battery cradle slot 106, an on/off switch 108, a recharger connection 110, a bay 112 for a removable USB plug, and a removable software plug 114 that is communicatively connected to the PCB control circuit. The software plug 114 contains additional software for receiving control signals, for example RF signals, from a remote control device, for example a hand held remote control (not shown). If remote control is not present, the plug 114 may configured as a dummy to simply complete a circuit back to the PCB control circuit. Antenna 116 is also connected to the control circuit PCB for remote control purposes in the presence of the remote control plug 114. The PCB control circuit contains hardware and software for controlling on/off, power, motor control and the like. Aperture 116 is for mating with the top end 20 of the decoy set 10 base 14[.]
The original disclosure does not describe a PCB that “is structured and configured to provide remote control of the motor” or “configured to receive remote signals to control the motor.” Rather, the original disclosure states that the remote control function is provided by a remote control plug (114) which is not claimed.
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.
Claims 1-24 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The preamble of independent claims 1, 7, 8, 10, and 15 define the invention as a whole as “powered spinning wing decoy” (preamble), which includes the decoy base, the decoy body, the spinning wings, etc. However, in the body of the claims, the term “powered spinning wing decoy” appears to be used to refer to some subcomponent(s) of the invention as a whole. For example, the independent claims each recite “the decoy base adapted to hold the powered spinning wing decoy” and “the powered spinning wing decoy is connectible and disconnectable” from the decoy base; claims 1, 10, and 15 each further recite “the spinning wing decoy is coupled to the vertical member”; and claims 7 and 8 each further recite “a pair of spinning wings rotatably connected to the powered spinning wing decoy” by “a shaft for connection to the powered spinning wing decoy” and “the spinning wing decoy is coupled to the top of the decoy base.” These limitations are unclear because if the decoy is the invention as a whole, then it is unclear what part(s) of the invention are connectible and disconnectable from the decoy base, and what part(s) of the invention the spinning wings are rotatably connected to. The claims should be amended to clearly correlate the component parts of the powered spinning wing decoy.
Additionally, claims 1, 7, 8, 10, and 15 each recite the limitation “the decoy body cavity” (claim 1, line 23; claim 7, line 30; claim 8, line 28; claim 10, lines 19 and 20; and claim 15, line 16). There is insufficient antecedent basis for this limitation in the claims. It is unclear whether “the decoy body cavity” refers to the interior cavity or to the access cavity port.
In addition, claim 1 recites the limitation “the motor assembly” in lines 15, 18, 25-26, and 29. There is insufficient antecedent basis for this limitation in the claims. It is unclear whether “the motor assembly” refers in this context to the motor, the motor mount assembly, or a combination of the motor and the motor mount assembly (e.g., analogous to claims 7 and 8 which define a motor assembly comprising a motor and a motor mount assembly).
Additionally, claims 7 and 8 each recite the limitation “the decoy base” in line 2 and in many other instances. There is insufficient antecedent basis for this limitation in the claims. Claims 7 and 8 each describe “a decoy base post.” It is unclear whether “the decoy base” refers specifically to the decoy base post. In addition, it is unclear whether the subsequent reference to “a vertical member of the decoy base” in line 5 of claims 7 and 8 refers to the decoy base post (i.e., the vertical member being the post).
Regarding claim 22, the limitation “the series of fasteners to for the mating seal” is unclear. Appropriate correction is required.
Claims not specifically addressed 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 15 and 19-23 rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Richardson et al. (U.S. Patent No. 6,493,980, hereinafter Richardson).
Regarding claim 15, Richardson discloses a powered spinning wing decoy (decoy 20 with support pole system 50, Figs. 1-4; col. 5:20-30) comprising:
a decoy base (support pole system 50, Fig. 2; col. 5:43-52) adapted to be placed on an environmental surface (e.g., ground 60, Fig. 2), the decoy base (50) adapted to hold a decoy body of the powered spinning wing decoy (20) in a predetermined position (Fig. 2), the decoy base (50) comprising a vertical member (shaft 56) that the decoy body of the powered spinning wing decoy (20) is connectible and disconnectable therefrom (via coupling 52, Fig. 2);
a decoy body (shell 22) constructed with exterior ornamentation to simulate a bird (“painted or decorated in a variety of colorful fashions to emulate the target bird,” col. 5:30-35), the decoy body (22) having a top (visible in Fig. 1; at top in Fig. 2), a bottom (visible in Fig. 3; at bottom in Fig. 2), and an interior cavity (24, Fig. 3), the interior cavity (24) being open at the bottom to form an access cavity port (see Fig. 3; “access is easily permitted by the folding body of the decoy that can be quickly pivoted to expose the inner workings,” col. 3:38-45);
an electronic control module (plate 80 with switch 148; col. 7:11-14) being disposed in the interior cavity (24) of the decoy body (22) via the access cavity port (when plate 80 is closed against the shell 22) and is connectible and disconnectable from the decoy body (via fasteners 30 through bosses 88, 94, 96, Fig. 4, col. 6:30-35),
the electronic control module (80, 148) being communicatively coupled to a motor (136) and a battery (144, Fig. 4; col. 7:5-6);
a pair of spinning wings (40, 42, Fig. 1; col. 5:60-6:7) communicatively coupled to the motor (via output drive shaft 45) and extending laterally from the decoy body (22), each wing (40, 42) of the pair of spinning wings includes a shaft and a wing panel (clearly shown in Fig. 1; col. 5:35-37);
the electronic control module (80, 148) further comprising a bottom base member (plate 80) having a series of fasteners (30, Fig. 3, which are received in apertures 97, Fig. 4; and a conventional fastener received in aperture 90, Fig. 4; see col. 6:31-35) for sealingly mating2 with and enclosing the interior cavity of the decoy body from water (when boss 88 is fastened at notch 99 and bosses 94, 96 are fastened at notches 28; col. 5:25-30, 6:30-35; see Fig. 2);
whereby in use, the decoy base (50) is placed in a selected position (col. 5:43-54), and the decoy body (22) which is assembled together with the motor, the battery, and the electronic control module is coupled to the vertical member (via coupling 52; col. 5:44-45), and the electronic control module (80, 148) is actuated to power and spin the pair of spinning wings (col. 7:10-13); and
wherein the shafts of the pair of spinning wings (40, 42) include a first connector (companion fitting 180) that is removably connectible to a second connector (coupling 170) on the motor (i.e., on the drive shaft 45; see Fig. 4).
Regarding claim 19, Richardson further discloses the motor (136, Fig. 4; col. 6:54-65) is disposed in the interior cavity (24) of the decoy body (when plate 80 is pivoted to close the shell 22, Fig. 2).
Regarding claim 20, Richardson further discloses the motor (136) is fixable to a motor mounting assembly (motor mount 114, Fig. 4).
Regarding claim 21, Richardson further discloses a battery cradle (batter clamp 116, Fig. 4; col. 6:47-48) that accepts the battery (144), wherein the battery cradle (116) mates with the electronic control module (via bolt 107).
Regarding claim 22, Richardson further discloses a series of mounting areas (bosses 94, 96, 98, Fig. 4) for the series of fasteners for the mating seal of the bottom base member (80) enclosing the interior cavity of the decoy body from water and dirt (col. 6:31-35).
Regarding claim 23, Richardson further discloses the series of mounting areas (94, 96, 98) are inset into the decoy body (at notches 28, 99, Fig. 3; col. 5:25-29, 6:30-35).
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 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Richardson in view of Summers et al. (U.S. Patent No. 6,708,440, hereinafter Summers) and Couvillion, III (U.S. Patent Pub. 2005/0252066, hereinafter Couvillion).
Regarding claim 1, Richardson discloses a powered spinning wing decoy (decoy 20 with support pole system 50, Figs. 1-4; col. 5:20-30) comprising:
a decoy base (support pole system 50, Fig. 2; col. 5:43-52) adapted to be placed on an environmental surface (e.g., ground 60, Fig. 2), the decoy base (50) adapted to hold a decoy body of the powered spinning wing decoy (20) in a predetermined position (Fig. 2), the decoy base (50) comprising a vertical member (shaft 56) that the decoy body of the powered spinning wing decoy (20) is connectible and disconnectable therefrom (via coupling 52, Fig. 2);
a decoy body (shell 22) constructed with exterior ornamentation to simulate a bird (“painted or decorated in a variety of colorful fashions to emulate the target bird,” col. 5:30-35), the decoy body (22) being arranged in a predetermined orientation (Figs. 1-2), the decoy body (22) having a top (visible in Fig. 1; at top in Fig. 2), a bottom (visible in Fig. 3; at bottom in Fig. 2), and an interior cavity (24, Fig. 3), the interior cavity (24) being open at the bottom to form an access cavity port (see Fig. 3; “access is easily permitted by the folding body of the decoy that can be quickly pivoted to expose the inner workings,” col. 3:38-45);
a motor (136, Fig. 4; col. 6:54-65) disposed in the interior cavity (24) of the decoy body (when plate 80 is pivoted to close the shell 22, Fig. 2), wherein the motor (136) is fixable to a motor mounting assembly (motor mount 114), and further wherein the motor (136) is communicatively connected to an electronic control module (plate 80 with switch 148; col. 7:11-14);
the electronic control module (80, 148) being disposed in the interior cavity (24) of the decoy body (when plate 80 is closed against the shell 22) and is connectible and disconnectable (via fasteners 30 through bosses 88, 94, 96, Fig. 4) from the bottom of the decoy body (22) via the access cavity port (col. 6:30-35);
a pair of spinning wings (40, 42, Fig. 1; col. 5:60-6:7) communicatively coupled to the motor (via output drive shaft 45) and extending laterally from the decoy body (22), each wing (40, 42) of the pair of spinning wings includes a shaft and a wing panel (clearly shown in Fig. 1) constructed and arranged to simulate a wing of a bird (Fig. 1; col. 5:35-37);
a battery (144, Fig. 4; col. 7:5-6);
the electronic control module (80, 148) further comprising a bottom base member (plate 80) for sealingly mating with and enclosing the interior cavity of the decoy body (when boss 88 is fastened at notch 99 and bosses 94, 96 are fastened at notches 28; col. 5:25-30, 6:30-35);
whereby in use, the decoy base (50) is placed in a selected position by a user (col. 5:43-54), and the decoy body (22) which is assembled together with the motor, the battery, and the electronic control module is coupled to the vertical member (via coupling 52; col. 5:44-45), the pair of spinning wings (40, 42) are coupled to the motor (via drive shaft 45), and the electronic control module (80, 148) is actuated to power and spin the pair of spinning wings (col. 7:10-13); and
wherein the shafts of the pair of spinning wings (40, 42) include a first connector (companion fitting 180) that is removably connectible to a second connector (coupling 170) on the motor (i.e., on the drive shaft 45; see Fig. 4).
Richardson does not teach an electronic control circuit and a bay communicatively connected to the electronic control circuit and capable of receiving a software module; and a magnet associated with the first or second connector.
However, with respect to the electronic control circuit, bay, and software module, Summers teaches a powered bird decoy (10, Figs. 1-5) comprising an electronic control circuit (“a central processing unit,” col. 4:51-55 and 14:61-65) communicatively coupled to a motor (col. 14:61-63), and a bay communicatively connected to the electronic control circuit and capable of receiving a software module (“a removable readable memory device,” col. 6:64-65, having preprogrammed movement routines as described at col. 4:46-55). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Richardson to include an electronic control circuit with a bay capable of receiving a software module, as taught by Summers, so that the decoy can be configured to execute movement routines to more realistically simulate a live bird.
With respect to the magnet, Couvillion teaches a powered spinning wing decoy (Fig. 1) comprising a pair of spinning wings (1, Fig. 2) each having a shaft (mount rod 6) that includes a first connector (mount collar 8) that is removably connectible to a second connector (drive shaft 14) on a motor, wherein the first connector (8) comprises a magnet (11, Figs. 3-5; ¶ 12). Couvillion teaches that the magnet advantageously permits independent movement of the wing relative to the drive shaft if the wing hits an obstacle, which prevents damage to the wing, while also facilitating quick and easy attachment and removal of the wings. See ¶¶ 2 and 12. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Richardson by including a magnet as taught by Couvillion at the first connector, in order to simplify attachment and removal of the wings and to prevent damage to the wing from impact with obstacles.
Regarding claim 2, the modified Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 1. Couvillion further teaches the first connector (8, Figs. 4-5) is a sleeve (see Figs. 4-5) and the second connector (14) is a shaft (¶ 10).
Regarding claim 5, the modified Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 1. Richardson further teaches the electronic control module (8, 148) having a lower side (at bottom of decoy 20 in Fig. 2) including a connector (52, Fig. 2) that mates with the vertical member (56).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Richardson in view of Summers and Couvillion, in further view of Byerly (U.S. Patent Pub. 2016/0015023, hereinafter Byerly).
Regarding claim 3, the modified Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 1. Summers further teaches the bay is configured to receive “a removable readable memory device.” Col. 6:64-65. Summers does not explicitly disclose that the removable readable memory device includes a USB plug. However, Byerly is cited as evidence that a USB plug was a known format for connecting a removable readable memory device (for connecting “an external memory device through the USB port 112,” ¶ 16). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, when modifying Richardson in view of Summers as discussed above, to select a USB plug as taught by Byerly as the format of the removable readable memory device, since this involves only the simple selection of a known and commonly available removable readable memory, to yield predictable results.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Richardson in view of Summers and Couvillion, in further view of Twohig (U.S. Patent No. 8,188,691, hereinafter Twohig).
Regarding claim 6, the modified Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 1. Richardson further teaches the electronic control module (80, 148) comprises an on/off switch (148, Fig. 4; col. 7:10-13). Richardson does not disclose a battery recharge port. However, Twohig teaches a powered spinning wing decoy (Figs. 1-4) comprising a battery recharge port (410, Fig. 4) communicatively coupled to a battery (col. 3:54-60). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Richardson by adding a battery recharge port as taught by Twohig, so that the battery can be easily recharged to extend the useful life of the device.
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Richardson in view of Orris et al. (U.S. Patent Pub. 2009/0188148, hereinafter Orris).
Regarding claim 10, Richardson discloses a powered spinning wing decoy (decoy 20 with support pole system 50, Figs. 1-4; col. 5:20-30) comprising:
a decoy base (support pole system 50, Fig. 2; col. 5:43-52) adapted to be placed on an environmental surface (e.g., ground 60, Fig. 2), the decoy base (50) adapted to hold a decoy body of the powered spinning wing decoy (20) in a predetermined position (Fig. 2), the decoy base (50) comprising a vertical member (shaft 56) that the decoy body of the powered spinning wing decoy (20) is connectible and disconnectable therefrom (via coupling 52, Fig. 2);
a decoy body (shell 22) constructed with exterior ornamentation to simulate a bird (“painted or decorated in a variety of colorful fashions to emulate the target bird,” col. 5:30-35), the decoy body (22) having a top (visible in Fig. 1; at top in Fig. 2), a bottom (visible in Fig. 3; at bottom in Fig. 2), and an interior cavity (24, Fig. 3), the interior cavity (24) being open at the bottom to form an access cavity port (see Fig. 3; “access is easily permitted by the folding body of the decoy that can be quickly pivoted to expose the inner workings,” col. 3:38-45);
an electronic control module (plate 80 with switch 148; col. 7:11-14) being disposed in the interior cavity (24) of the decoy body (22) via the access cavity port (when plate 80 is closed against the shell 22) and is connectible and disconnectable from the decoy body (via fasteners 30 through bosses 88, 94, 96, Fig. 4, col. 6:30-35),
the electronic control module (80, 148) being communicatively coupled to a motor (136) and a battery (144, Fig. 4; col. 7:5-6);
a pair of spinning wings (40, 42, Fig. 1; col. 5:60-6:7) communicatively coupled to the motor (via output drive shaft 45) and extending laterally from the decoy body (22), each wing (40, 42) of the pair of spinning wings includes a shaft and a wing panel (clearly shown in Fig. 1; col. 5:35-37);
the electronic control module (80, 148) further comprising a bottom base member (plate 80) for sealingly mating with and enclosing the interior cavity of the decoy body from water and dirt (when boss 88 is fastened at notch 99 and bosses 94, 96 are fastened at notches 28; col. 5:25-30, 6:30-35; see Fig. 2);
whereby in use, the decoy base (50) is placed in a selected position by a user (col. 5:43-54), and the decoy body (22) which is assembled together with the motor, the battery, and the electronic control module is coupled to the vertical member (via coupling 52; col. 5:44-45), and the electronic control module (80, 148) is actuated to power and spin the pair of spinning wings (col. 7:10-13); and
wherein the shafts of the pair of spinning wings (40, 42) include a first connector (companion fitting 180) that is removably connectible to a second connector (coupling 170) on the motor (i.e., on the drive shaft 45; see Fig. 4).
Richardson does not teach a printed circuit board communicating with the electronic control module and structured and configured to provide remote control of the motor. However, Orris teaches a powered decoy comprising a printed circuit board (PCB assembly 50, ¶¶ 34-35) communicating with an electronic control module (Fig. 2, ¶ 41), wherein the printed circuit board (50) is structured and configured to provide remote control of a motor (via wireless transceiver 53 and antenna 51, in communication with beacon 100, Fig. 2; ¶ 41). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Richardson to include a PCB communicating with the electronic control module and structured and configured to provide remote control of the motor, as taught by Orris, in order to facilitate remote operation and/or to coordinate operation of multiple decoys.
Regarding claim 11, the modified Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 10. Richardson further teaches the motor (136, Fig. 4; col. 6:54-65) is disposed in the interior cavity (24) of the decoy body (when plate 80 is pivoted to close the shell 22, Fig. 2).
Regarding claim 12, the modified Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 11. Richardson further teaches the motor (136) is fixable to a motor mounting assembly (motor mount 114, Fig. 4).
Regarding claim 13, the modified Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 10. Orris further teaches a software module (stored in memory 37, Fig. 2; ¶¶ 41-42) which configures the printed circuit board (50) to receive control signals from a remote control (via a routine as shown in Fig. 7, including steps of measuring link qualities values of wireless reference signal 125; ¶ 58).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Richardson in view of Orris, in further view of Couvillion.
Regarding claim 14, the modified Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 10. Richardson does not teach a magnet as part of the first or second connector. However, Couvillion teaches a powered spinning wing decoy (Fig. 1) comprising a pair of spinning wings (1, Fig. 2) each having a shaft (mount rod 6) that includes a first connector (mount collar 8) that is removably connectible to a second connector (drive shaft 14) on a motor, wherein the first connector (8) comprises a magnet (11, Figs. 3-5; ¶ 12). Couvillion teaches that the magnet advantageously permits independent movement of the wing relative to the drive shaft if the wing hits an obstacle, which prevents damage to the wing, while also facilitating quick and easy attachment and removal of the wings. See ¶¶ 2 and 12. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Richardson by including a magnet as taught by Couvillion at the first connector, in order to simplify attachment and removal of the wings and to prevent damage to the wing from impact with obstacles.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Richardson in view of Cicoff et al. (U.S. Patent No. 6,601,333, hereinafter Cicoff).
Regarding claim 16, the modified Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 15. Richardson does not explicitly teach that the fasteners are screws. However, Cicoff teaches that screws (28, Fig. 2A) were known to be suitable fasteners for providing a watertight seal for assembling a decoy (col. 4:38-46). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Richardson by selecting screws as taught by Cicoff as the fasteners, in order to facilitate a watertight seal.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Richardson in view of Priest et al. (U.S. Patent Pub. 2009/0165353, hereinafter Priest).
Regarding claims 17 and 18, Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 15. Richardson does not teach a bungee type cord adapted to mate with the decoy base. However, Priest teaches a bird decoy (Figs. 1-2 or 11-12) comprising a bungee type cord (legs 24 with bias members 34, ¶¶ 38, 48) adapted to mate with a decoy base (30), to stabilize and hold the decoy to the base (¶ 38), wherein the cord (34) simulates the appearance of two legs of the bird (as extensions of legs 24, see Figs. 1-2 and 11-12) (claim 17), wherein the cord is orange to simulate a pair of waterfowl legs (¶ 22) (claim 18). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Richardson to include an orange bungee type cord as taught by Priest, in order to enhance the simulated appearance of a waterfowl.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Richardson in view of Orris.
Regarding claim 24, the modified Richardson teaches the claimed invention substantially as claimed, as set forth above for claim 15. Richardson does not teach a printed circuit board communicating with the electronic control module, connected to an antenna, and configured to provide remote control of the motor. However, Orris teaches a powered decoy comprising a printed circuit board (PCB assembly 50, ¶¶ 34-35) communicating with an electronic control module (Fig. 2, ¶ 41), wherein the printed circuit board (50) is connected to an antenna (51) and configured to provide remote control of a motor (via wireless transceiver 53, in communication with beacon 100, Fig. 2; ¶ 41). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Richardson to include a PCB communicating with the electronic control module, connected to an antenna, and configured to provide remote control of the motor, as taught by Orris, in order to facilitate remote operation and/or to coordinate operation of multiple decoys.
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,638,747 (hereinafter the ‘747 patent) and over claims 1-4 of U.S. Patent No. 10,638,544 (hereinafter the ‘544 patent).
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding instant claim 1, ‘747 patent claim 1 and ‘544 patent claim 1 each include all of claimed features, except for an explicit recitation of “a bay, being communicatively connected to the electronic control circuit and capable of receiving a software module.” However, ‘747 patent claim 1 and ‘544 patent claim 1 do recite “a plug and play, USB connectable and disconnectible software module.” A USB connection would be understood to include a bay (i.e., a port) that receives the connectable and disconnectible software module. Additionally, ‘747 patent claim 1 and ‘544 patent claim 1 each recite “each wing being connectable to the decoy body via a magnetic connection between the shaft and the decoy body,” where “a magnetic connection” is understood to require a magnet.
The limitations of claims 2-5 are included in ‘747 patent claim 1 and ‘544 patent claim 1.
Regarding claim 6, while ‘747 patent claim 1 and ‘544 patent claim 1 do not explicitly recite an on/off switch and a battery recharge port, the examiner takes Official Notice that these features are old and well known in the art of battery powered devices. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of ‘747 patent claim 1 and ‘544 patent claim 1 by adding a conventional on/off switch so that the device can be turned off when not in use, and by adding a conventional battery recharge port so that the battery in the device can be recharged in order to extend the useful life of the device.
Claims 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of the ‘747 patent and claims 1-4 of the ‘544 patent, in view of Twohig.
Regarding claims 7 and 8, the ‘747 and ‘544 patent claims recite all of the claimed features, except for “a remote control capability”, an on/off switch, and a battery recharge port. However, Twohig teaches a powered spinning-wing bird decoy (Fig. 1) comprising a remote control capability (provided by interface 140, for interaction with remote control 170, Fig. 1) and a battery recharge port (410) communicatively coupled with a battery (col. 3:54-60). As noted above, an on/off switch is old and well known. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of ‘747 patent claim 1 to include a remote control capability as taught by Twohig, in order to facilitate user control from a distance; a battery recharge port as taught by Twohig, in order to charge the battery to extend the useful life of the device; and a conventional on/off switch so that the device can be turned off when not in use.
The limitations of claim 9 are encompassed by ‘747 patent claim 1, col. 7:23-24 (“a magnetic connection”), and ‘544 patent claim 1, col. 7:25 (“a magnetic connection”).
Claims 10-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of the ‘747 patent and claims 1-4 of the ‘544 patent, in view of Orris.
Regarding claim 10, the ‘747 and ‘544 patent claims recite all of the claimed features, except for a printed circuit board. However, this feature is taught by Orris, as set forth above in the rejection under 35 U.S.C. 103. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of the ‘747 and ‘544 patent claims to include a printed circuit board as taught by Orris, in order to facilitate remote operation and/or to coordinate operation of multiple decoys.
The limitations of claims 11-12 and 14 are included in ‘747 patent claim 1 and ‘544 patent claim 1.
The limitations of claim 13 are further taught by Orris, as set forth above in the rejection under 35 U.S.C. 103.
Claims 15-20 and 22-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of the ‘747 patent and claims 1-4 of the ‘544 patent, in view of Cicoff.
Regarding claim 15, the ‘747 and ‘544 patent claims recite all of the claimed features, except for a series of fasteners. However, Cicoff teaches that a series of fasteners (screws 28, Fig. 2A) were known to be suitable for providing a watertight seal for assembling a decoy (col. 4:38-46). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of the ‘747 and ‘544 patent claims to include a series of fasteners as taught by Cicoff, in order to facilitate a watertight seal.
The limitations of claim 16 are further taught by Cicoff, as set forth above in the rejection under 35 U.S.C. 103.
The limitations of claims 17 and 18 are further recited in ‘747 patent claim 1.
The limitations of claims 19-20 are included in ‘747 patent claim 1 and ‘544 patent claim 1.
Regarding claims 22 and 23, Cicoff further teaches a series of mounting areas (“selected locations” along flange 24 for attaching screws 28, col. 4:38-46) for the series of fasteners (28) for providing the mating seal of the base member enclosing the body cavity from dirt and water (col. 4:38-46) (claim 22); wherein the series of mounting areas are inset into the decoy body (on interior flange 24, Fig. 2A) (claim 23).
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of the ‘747 patent and claims 1-4 of the ‘544 patent, in view of Cicoff and Richardson.
Regarding claim 21, the ‘747 and ‘544 patent claims do not recite a battery cradle. However, this feature is taught by Richardson, as set forth above in the rejection under 35 U.S.C. 102. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of the ‘747 and ‘544 patent claims to include a battery cradle as taught by Richardson, in order to secure the battery in place within the decoy.
Claim 24 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of the ‘747 patent and claims 1-4 of the ‘544 patent, in view of Circoff and Orris.
Regarding claim 24, the ‘747 and ‘544 patent claims do not recite a printed circuit board and antenna. However, these features are taught by Orris, as set forth above in the rejection under 35 U.S.C. 103. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of the ‘747 and ‘544 patent claims to include a printed circuit board and an antenna as taught by Orris, in order to facilitate remote operation and/or to coordinate operation of multiple decoys.
Allowable Subject Matter
Pending correction of the Reissue Declaration to overcome the rejection under 35 U.S.C. 251 and filing of a terminal disclaimer to overcome the double patenting rejections set forth above:
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 7-9 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not disclose a powered spinning wing decoy comprising a bay configured to receive a software module/USB plug comprising software for receiving control signals from a remote control device (claims 1, 3, and 4), or a USB port capable of receiving a plug-and-play software that provides a remote control capability (claims 7 and 8), in combination with the features of the claims considered as a whole. As discussed above for claim 3, Summers does disclose a decoy configured to receive a removable readable memory device, and a USB device is an obvious example of a removable readable memory device. However, Summers does not teach that this device provides a remote control capability to the decoy. (Rather, Summers teaches that the memory device stores movement routines.) While remote control capabilities were known in the decoy art (for example, see Twohig and Orris, discussed above), the prior art does not teach a decoy configured with remote control capabilities provided by a USB plug/plug-and-play software module. In view of the foregoing, it is the examiner’s opinion that it would not have been obvious to one of ordinary skill in the art at the time the application was filed to modify the prior art to achieve the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rogers et al. (U.S. Design Patent D581,997) discloses a decoy comprising a bottom base member having a series of fasteners mounted at mounting areas inset into the decoy body.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
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/Laura Davison/
Reexamination Specialist, Art Unit 3993
Conferees:
/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 As explained in MPEP § 1412.02, subsection I, “the ‘original application’ includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1316-18, 94 USPQ 2d 1598 (Fed. Cir. 2010). See also In re McDonald, 43 F.4th 1340, 1347, 2022 USPQ 2d 745 (Fed. Cir. 2022). For example, surrender may occur because of the prosecution history of related applications.”
2 The term “sealingly” is interpreted according to its plain and ordinary dictionary definition to mean in a manner “to cover, secure, or fill up (an opening).” American Heritage® Dictionary of the English Language, definition 1.c. The plate (80) of Richardson is considered to sealingly mate with the decoy body because the pivotal plate (80) closes the decoy body when the bosses (88, 94, and 96) of the plate (80) are fastened in respective notches (99, 28) of the decoy body. See col. 5:25-30, 6:30-35.
Prosecution Insights