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 .
Response to Amendment
Pursuant to the applicant’s response filed 02 October 2025, the Request for Continued Examination has been accepted. No claims have been added or cancelled, and claims 1, 3-16, and 18-19 are currently pending in the application with claims 6-11 withdrawn from further consideration. The arguments presented by the applicant have been considered, changes to the rejections and responses to particular arguments are presented below.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 04 September 2024 and 14 May 2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
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.
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.
Claim(s) 1, 3-5, 12-16, and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by U.S. Pre-Grant Publication 2005/0183318 by McGivern (McGivern).
Regarding claim 1, McGivern discloses a firearm (See Figures, clearly illustrated), comprising: a barrel (10) with a chamber (12) and a barrel shaft formed as one piece (See at least Figure 3C, clearly illustrated), wherein the entire chamber and the entire barrel shaft are formed as one piece (See at least Paragraph 0062), a barrel length measured from a front end of the chamber at a first end of the barrel shaft to a barrel muzzle at an opposite second end of the barrel shaft (See at least Figures 3C and 7, clearly illustrated, and at least Paragraph 0062, Note: There is no indication in the specification that the threaded portion of the chamber is separate from the remaining unthreaded section of the chamber); and a cartridge having a single, sabot-free projectile with a peripheral surface, wherein the cartridge is accommodated directly in the chamber of the barrel (See at least Figure 2, clearly illustrated, and Paragraph 0054), and wherein the peripheral surface of the projectile and an inside surface along the barrel shaft of the barrel form a gap inside the barrel that is open end-to-end in a direction of the barrel shaft extending along an entirety of the barrel length from the front end of the chamber to the barrel muzzle and over at least 90% of a circumference of the projectile (See at least Paragraphs 0057-0059, clearly disclosed that the firearm can be used with a cartridge having a projectile without inserting a bullet into the muzzle end of the firearm and the gases would pass around the projectile because of differences in diameters, rendering the projectile with little or no kinetic energy), wherein the gap has a minimum width, measured in a radial direction of the barrel, of between 0.2 mm and 1mm (See at least Paragraphs 0057-0059, the combination of a 0.50 caliber barrel bore and a 0.45 caliber chamber would result in the given gap range specified. The formula for determining the gap width is [(Bore Diameter - Chamber Diameter) / 2].
Bore Diameter: Figure 3C, element 30 = 0.50 caliber or 12.7 mm
Chamber Diameter: Figure 3C, element 32 = 0.45 caliber or 11.43 mm
[(12.7 mm – 11.43 mm) / 2] = 0.635 mm
The gap from this particular situation is located squarely within the identified range.
Additionally, paragraph 0057 further states that the bore 16 “can be of any customized, unique diameter” and the breech chamber 12 can be “configured to match and receive the shape and diameter, of standard size caliber cartridges” or “can instead be of a unique, customized shaped, configuration and caliber”. Directly derived from the teachings of Paragraph 0057, the diameter of the chamber can be 0.45 caliber and the diameter of the bore can be 0.46 caliber to 0.48 caliber, which would result in the following:
Bore Diameter: Figure 3C, element 30 = 0.47-0.49 caliber or 11.938-12.446 mm
Chamber Diameter: Figure 3C, element 32 = 0.45 caliber or 11.43 mm
[(11.938 mm – 11.43 mm) / 2] = 0.254 mm
[(12.446 mm – 11.43 mm) / 2] = 0.508 mm
The gaps from these disclosed situations are located squarely within the identified range.)
Regarding claim 3, McGivern further discloses wherein the gap has a minimum width, measured in a radial direction of the barrel, of at most 0.5 mm (See previous rejection, the secondary example clearly meets the specific value for the gap width).
Regarding claim 4, McGivern further discloses wherein the barrel has an inside surface that is essentially smooth (See at least Paragraph 0055).
Regarding claim 5, McGivern further discloses wherein the barrel has an inside surface with an essentially uniform inside diameter over the barrel length (See Figures, clearly illustrated, especially Figure 3C).
Regarding claim 12, McGivern further discloses wherein the cartridge has a sleeve, in which a propelling charge that is used as propellant as well as the projectile are accommodated at least in sections (See at least Figure 2, clearly illustrated, and at least Paragraph 0054).
Regarding claim 13, McGivern further discloses wherein the propelling charge has an offensive powder (See at least Figure 2, clearly illustrated, and at least Paragraph 0054).
Regarding claim 14, McGivern further discloses wherein the projectile has an essentially spherical or oval shape or a cylindrical shape with a conical or ogival tip (See at least Figure 5A, clearly illustrated).
Regarding claim 15, McGivern further discloses wherein the firearm is a small arm (See at least Figure 7, clearly illustrated and at least Paragraph 0055).
Regarding claims 16 and 18-19, McGivern discloses [Claim 16] a method for firing a single, sabot-free projectile of a cartridge from a firearm, comprising: providing the firearm, which comprises a barrel with a chamber and a barrel shaft formed as one piece, wherein the entire chamber and the entire barrel shaft are formed as one piece, a barrel length measured from a front end of the chamber at a first end of the barrel shaft to a barrel muzzle at an opposite second end of the barrel shaft; arranging the cartridge in the chamber; and firing the firearm, wherein the cartridge is accommodated directly in the chamber, and wherein the projectile has a peripheral surface and a maximum circumference, so that as the projectile moves along an entirety of the barrel length from a front end of the chamber to the muzzle, a gap that is open end-to-end in the direction of the barrel shaft is present between the peripheral surface of the projectile and an inside surface along the barrel shaft of the barrel over at least 90% of a maximum circumference of the projectile, through which gap the propellant accelerating the projectile flows past the projectile, wherein the gap has a minimum width, measured in a radial direction of the barrel, of between 0.2 mm and 1 mm; [Claim 18] wherein the gap has a minimum width, measured in a radial direction of the barrel, of between 0.3 mm and 1 mm; and [Claim 19] wherein the gap has a minimum width, measured in a radial direction of the barrel, of between 0.5 mm and 1 mm (See previous rejections, all aspects were addressed above).
Response to Arguments
In response to the applicant’s argument that McGivern does not disclose each element “arranged as in the claim”, the examiner offers the following:
The independent claims require “a cartridge having a single, sabot-free projectile with a peripheral surface, wherein the cartridge is accommodated directly in the chamber of the barrel”, and McGivern clearly states that a user can insert a traditional projectile system (i.e., projectile and charge together) in the breech and discharge the firearm, which satisfies the current claim limitations (McGivern Paragraph 0058).
The independent claims also require a claimed end-to-end gap between the barrel and the projectile with a minimum width of the gap being 0.2 mm to 1 mm. In order to address this situation, the examiner relies upon the specific situations described by McGivern in at least paragraphs 0058 and 0070, where McGivern gives the specific example of a chamber for a 0.45 caliber cartridge and a 0.50 caliber barrel, and the earlier paragraphs indicates that a traditional projectile cartridge can be inserted into the chamber and discharged, which meets the applicant’s claimed invention characteristics clearly shown in the rejections provided above.
McGivern clearly teaches the requirements of the claim, and an argument by the applicant that the resulting device is non-functional would mean that the applicant’s own invention is non-operative.
The examiner maintains that McGivern meets the claimed limitations.
In response to the applicant’s arguments that the section 103 rejection using optimization of a known range should not apply, the examiner offers the following: The rejections have been revised to rely solely upon the section 102 rejection, therefore, the separate arguments presented by the applicant are moot.
In response to the applicant’s arguments with respect to unexcepted results, the examiner offers the following: The rejections have been revised to rely solely upon the section 102 rejection, therefore, the arguments regarding the affidavit are moot. Even if the 103 is maintained, the affidavit is insufficient per MPEP Sections 716.02(a)-(e).
The affidavit is insufficient because it failed to show test data and analysis in direct comparison of the claimed invention and the closest prior art of McGivern which commensurate in scope with the claims. The affidavit did not include actual steps carried out, the materials employed, and the results data for both the claimed invention and McGivern. In addition, there is/are no explanation or statement of how McGivern's invention did not perform well in comparison to that of the applicant's invention, especially the argued limitation for the "gap".
For example, there should be an explanation in the affidavit as to why applicant's gap of 0.2-1mm out performed McGivern's gap of (include the actual number 0.635 mm), which is in the range as claimed. It would even be questionable for the unexpected result because applicant's invention technically can be 0.635 mm because it is in the range of 0.2-1mm so how would the same gap value be better than McGivern?
Furthermore, the specification appears to disclose a broad range with no unexpected result for the narrower range as claimed (See Spec. Page 4, Lines 1-8). It appears that 0.2 to1 mm is "preferably" as stated in the specification and nothing of unexpected result from that range has been provided.
No other arguments were provided by the applicant in the response filed 02 October 2025.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN C WEBER whose telephone number is (571)270-5377. The examiner can normally be reached M-F 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 571-272-6874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jonathan C Weber/Primary Examiner,
Art Unit 3641
JONATHAN C. WEBER
Primary Examiner
Art Unit 3641