DETAILED CORRESPONDENCE
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 .
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,113,826. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent are nearly identical to the claims of the instant application. For example, claim 1 of the patent is nearly identical to claim 8, which depends from claim 1, of the instant application. Any differences between the claims of the patent and the application are omissions of elements or details from the claims of the applications, rendering the application claims more broad in scope. Mere omission of an element or detail is a matter of obviousness, especially considering how similar the two claim sets are.
Response filed 8/16/19 states a terminal disclaimer has been filed; however, there is no terminal disclaimer filed with the response.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Claim(s) 1, 8-9, 11, 12 and 14-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bethlenfalvy, US Patent Publication No. 2014/0353076.
Regarding claim 1, Bethlenfalvy discloses a firearm suppressor (10) comprising: an elongated core (assembly of 22 and 28) comprising at least one series of ports (24) extending radially from a bore to an exterior surface of the core, where the at least one series of ports is disposed linearly along a longitudinal axis of the core (shown in figure 4), and where the elongated core comprises at least one trough (29) formed in the exterior surface of the core; a baffle sleeve (assembly of 32 and 26 as shown in figure 5) disposed around the core, the baffle sleeve having at least one uninterrupted fluid pathway extending along the exterior surface of the baffle sleeve (shown in figure 4, baffles 26 and 32 are open to one another and at least one uninterrupted fluid pathway exists along the exterior of the baffles between the baffle sleeve and outer tube 14) and formed by interdigitated baffle ridges (32 and 26 with openings in 26 (not numbered but shown in figure 5) forming the fluid pathway); and an outer tube (14) disposed around the baffle sleeve.
Regarding claim 8, Bethlenfalvy further discloses the baffle sleeve further the baffle sleeve further comprises a plurality of port openings (ports in 26 as in figures 5 and 2) that fluidly couple an interior surface of the baffle sleeve with an exterior surface of the baffle sleeve (ports 26 and openings in bottom of 26 couple interior of baffle sleeve to the exterior surface of the baffle sleeve), and where at least one of the plurality of port openings is positioned such that the at least one of the plurality of port openings is aligned with at least one port of the at least one series of ports (chamber of 32 with opening of 26 and open bottom of 26 is aligned with the series of ports 24 in order to define a particular fluid path).
Regarding claim 9, Bethlenfalvy further discloses at least one of the interdigitated baffle ridges terminates adjacent one of the plurality of port openings (as shown in figure 5 the baffles and baffle structure are adjacent the plurality of ports)
Regarding claim 11, in view of the 112 issues presented above, Bethlenfalvy broadly, yet reasonably further discloses a baffle sleeve retainer (attachment between 16 and 22 as disclosed in [0023]) and a spacer tube (rearward extending tube portion of 16), where the spacer tube couples to and extends longitudinally from a muzzle end of the elongated core (figure 5), and where the baffle sleeve retainer is disposed between the - 24 -Kunzler Law Group Docket No.: 3630.2.1elongated core and the spacer tube and is configured to couple the baffle sleeve to the elongated core (disclosed in [0023] retainer is the attachment mechanism disclosed between 16 and 22).
Regarding claim 12, Bethlenfalvy further discloses at least one disk-shaped forward baffle (forward most baffle 26 as in figure 5) coupled to the spacer tube (figure 5), where the at least one disk-shaped forward baffle comprises an irregular surface (figure 2 shows irregular shape of 26) having a plurality of radially extending openings (openings (not numbered ) shown in figure 5 in 26 are openings which are radially extended from the central axis).
Regarding claims 14 and 15, Bethlenfalvy further discloses the elongated core further comprises a base (18) having a diameter greater than the elongated core (shown in figure 5), where the base forms a platform (shown figure 5) for receiving the baffle sleeve and the outer tube (figure 5) and the outer tube couples to the base (also shown in figure 5)
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 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bethlenfalvy in view of Hormann, US Patent No. D694,355.
Regarding claim 2, Bethlenfalvy discloses the at least one series of ports extending radially from the bore comprises two series of ports (figure 4) extending radially from the bore; however, Bethlenfalvy does not specifically disclose the trough between two series of ports. Nonetheless, Hormann teaches a plurality of rows of ports which have a trough in between the series of ports (shown in figures 1-3).
Thus it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify Bethlenfalvy to have a trough between the series of ports similar to that as taught by Hormann since Hormann shows the structure was known in the art and a structure similar to that of Hormann would provide any number of benefits including, but not limited to, increased gas flow from core, reduction in weight, reduction in noise or recoil, etc.
Claims 3 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bethlenfalvy in view of Dupont, US Patent Publication No. 2012/0103424.
Regarding claim 3, Bethlenfalvy disclose the series of ports but does not specifically disclose the ports formed with helical grooves. Nonetheless, Dupont teaches ports (102) having helical grooves (106) which direct fluids to form a vortex.
Thus it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify Bethlenfalvy to have helical grooves in the ports similar to that as taught by Dupont in order to control the release of gas through the ports as taught by Dupont in [0014-0015].
Regarding claim 10, Bethlenfalvy as modified by Dupont further discloses the baffle sleeve further comprises a plurality of trough openings (trough openings of Bethlenfalvy as modified by Dupont above) (chamber of 32 and opening of 26 fluidly coupled to the core) that fluidly couple an interior surface of the baffle sleeve with an exterior surface of the baffle sleeve (fluid path though core and baffles is shown in figure 5 for example of Bethlenfalvy), and where at least one of the plurality of trough openings is positioned such that the at least one of the plurality of trough openings is aligned with the trough (Bethlenfalvy as modified by Dupont discloses trough and trough openings as articulated above and shown in Dupont and Bethlenfalvy baffle sleeve openings are aligned with the trough and ports as articulated in the rejection of claim 8 with a core as modified by Dupont)
Claims 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bethlenfalvy in view of Perrine, US Patent No. 3,786,895.
Regarding claims 4-5, Bethlenfalvy discloses the claimed invention except for the ports being oriented at a non-orthogonal angle. Nonetheless, Perrine teaches ports which are oriented at an angle which is non-orthogonal.
Thus it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify Bethlenfalvy to have the ports oriented at a non-orthogonal angle similar to that as taught by Perrine since Perrine clearly teaches ports which are at an angle which is less than 60° as shown in figure 12 are known in the art and angling the ports would provide reduced recoil or muzzle rise for example.
Regarding claim 6, Bethlenfalvy as modified by Perrine further discloses the non-orthogonal angle is in the range between 5 and 80 degrees (Perrine shown in figure 12)
Regarding claim 7, Bethlenfalvy as modified by Perrine discloses the non-orthogonal angle of the ports; however, the combination does not specifically disclose the angel being 65 degrees. Nonetheless, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the angle of the ports 65 degrees, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Adjusting the angle to be 65 degrees would yield any number of benefits including, but not limited to, reduced recoil, reduced muzzle rise, etc.
Claims 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bethlenfalvy in view of Dueck, US Patent Publication No. 2012/0272818.
Regarding claim 17, Bethlenfalvy discloses the claimed invention except for the outer tube having a plurality of teeth. Nonetheless, Dueck teaches a plurality of teeth (1205) at the end of the outer tube (figure 12).
Thus it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify Bethlenfalvy to have teeth similar to that as taught by Dueck in order to provide additional gas control surfaces or provide a striking surface for close quarters for example.
Allowable Subject Matter
Claims 13 and 16 are objected to as being dependent upon a rejected base claim and rejected under double patenting, but appear to be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and an approved Terminal Disclaimer.
Response to Arguments
Applicant's arguments filed 8/16/19 have been fully considered but they are not persuasive.
In response to the applicant’s argument that Bethlenfalvy does not disclose a trough, the examiner is not persuaded. The claim limitation of a trough is given the broadest, reasonable interpretation and as such, the structure of Bethlenfalvy is still held to meet the limitation. The assertion that an opening cannot meet the definition of a trough is not sufficient to overcome the rejection because the assertion does not provide evidence that a trough is defined as such in the specification. Additionally, the specification clearly considers a trough as an opening in [0008] and therefore the limitation encompasses this possible structure. The position that Bethlenfalvy meets the claim limitation is maintained by the examiner.
In response to the applicant’s argument that Maeda does not interdigitated baffles, the examiner is persuaded. The drawings and specification of the application and the argued definition of interdigitated as “the word interdigitate refers to two adjacent structures that connect with each other by alternating tongue-like prolongations and corresponding recesses, after the manner of the fingers of two hands” are sufficient to define the fact that the interdigitated structure is formed specifically by interdigitated baffle ridge structures in an interlocking type pattern and not just a serpentine fluid path.
The arguments state a terminal disclaimer has been filed; however, no terminal disclaimer has been filed and therefore the Double Patenting Rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 DERRICK R MORGAN whose telephone number is (571)272-6352. The examiner can normally be reached M-F 9:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 5712726874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DERRICK R MORGAN/Primary Examiner, Art Unit 3641
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