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 .
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,809,037. Although the claims at issue are not identical, they are not patentably distinct from each other because the structure required by the claims is substantially the same with some minor differences including rearrangement of claim language among independent and dependent claims or omission of elements.
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 (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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sheets Jr., hereafter Sheets, US Patent Publication No. 2017/0205196.
Regarding claim 1, Sheets discloses a weapon-mounted laser aiming device (100) comprising: a frame (16); a laser element (10 is disclosed as the laser module which includes 40, 50, 20, 60 and 30) movably connected to the frame ([0022]); a mechanical coupler (in as much as the applicant discloses a “mechanical coupler” for adjusting the laser, so does Sheets as 130, 140. The specification describes a screw as adjusting the position of the laser diode and therefore a screw, like that of Sheets, meets the limitation of a mechanical coupler) connected to the frame and operably connected to the laser element to establish an aiming direction of the laser element based on a position of the mechanical coupler ([0022-0025]); a front cradle (30 of the laser module/element is held in front cradle 32) and rear cradle (broadly, yet reasonably, 80 is considered a rear cradle which contacts the laser element 10 at the housing 20 and acts to hold the laser element in place at the rear end) contacting the laser element ([0027-0028]); and an elastomeric restraint element (210 is a spring which, as disclosed in [0020], is made of polymer) being positioned on a cover element (150 as disclosed in [0024]) removably attached to the frame (via screw as shown in figure 3) in a position diagonally opposed to the adjustor (shown in figures 4 and 5 for example, the adjustor 140 is diagonally across from the spring 210).
Regarding claim 2, Sheets further discloses the cover element is lateral to the laser element (shown in figures 4 and 5)
Regarding claim 3, Sheets further discloses the cover element is opposed to the adjustor (diagonally opposed as shown in figures 4 and 5)
Response to Arguments
Applicant's arguments filed 3/2/26 have been fully considered but they are not persuasive.
In response to the applicant’s argument that Sheets does not disclose a mechanical coupler, the examiner is not persuaded. As best understood by the examiner, the mechanical coupler is intended to establish an aiming direction of the laser. The specification clearly discloses adjustment screws being used as the structure to obtain this function. Therefore, the screws of Sheets broadly, yet reasonably meet the limitations of a mechanical coupler. Furthermore, the limitation of a mechanical coupler is a very broad limitation which does not require very specific structure at all.
In response to the applicant’s argument that element 80 of Sheets is not a cradle, the examiner is not persuaded. the arguments state that element 80 is not a rigid, non-movable structure; however, the claims merely require a rear cradle contacting the laser. Element 80 of Sheets meets the structural and functional limitations of a cradle as claimed. Figures 2-4 show element 80 contacting the rear of the laser. Furthermore, at a minimum, paragraphs [0023-0025] and [0027-0028] disclose the laser being contacted by 80.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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