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 .
Claim Rejections - 35 USC § 112
Claims 1 and 3-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “the cap” in line 5. There is insufficient antecedent basis for this limitation. Claim 1 also recites the limitation “a drill bit” in line 19. The use of the article “a” makes it unclear whether the claimed drill bit is the same or different from the drill bit previously claimed in line 6 of claim 1. Appropriate correction is required.
Claims 8, 10, and 12-13 recite the limitation “the cap.” It is unclear in light of the specification whether the claimed cap in each of the claims refers to “a first cap”, “a second cap”, or “the cap” as claimed in claim 1. Appropriate correction is required.
Claim 11 recites the limitation “the first drill bushing” in line 1. There is insufficient antecedent basis for this limitation. Appropriate correction is required. Further examination will be made under the interpretation that the amendment changing “first drill bushing” to “at least one drill bushing” in claim 1 has been applied to the following dependent claims.
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 and 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson (US 20200217606 A1), and further in view of Miele et al. (US 10119779 B1, hereinafter ‘Miele’), Curran (US 3224021 A), and Miller (US 2424485 A).
Regarding claim 1, Wilson teaches a system for modifying a solvent trap comprising: a solvent trap (including tube 1 and baffles 4 and 5, as best understood in light of the description of the solvent trap in paragraph [0006] of the specification of the present application); a base 3 having an exterior (outer circumference of 3) and a first central opening (inner circumference of 3) that forms an interior; a first cap 6 connected to a second end of the solvent trap (1,4,5), the cap 6 having a second central opening ([0011] describes the alternate embodiment in which the cap 6 has a central hole), wherein the second central opening is configured to align a drill bit along a centerline of the solvent trap (for the bullet to be able to pass through the cap as described in paragraph [0016], the central opening must align the drill bit for machining the centerline of the baffles).
Wilson does not explicitly disclose a first end of the solvent trap being positioned within the central opening, a first drill bushing having an outer diameter that is configured to be positioned within the second central opening, at least one drill bushing having a third central opening configured to permit the passage of a particular caliber round for a firearm and wherein the at least one drill bushing is configured to align a drill bit along the centerline of the solvent trap, or a second cap having an offset opening, wherein the offset opening is configured to align a drill bit offset of the centerline of the solvent trap.
However, Miele teaches a first end 20 of the solvent trap (22, 20, 18, 16) being positioned within the central opening (threaded portion of end cap 14).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the thread structure of Wilson by making the simple substitutions of Wilson’s internally threaded solvent trap tube for Miele’s externally threaded solvent trap baffle cup 20 and Wilson’s externally threaded base for Miele’s internally threaded base to obtain the predictable results of threading together the solvent trap and the base, in order to ensure alignment of the centerline of the baffles with the centerline of the base for greater drilling accuracy. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting the rationale of simple substitution of one known element to another to obtain predictable results to support a finding of obviousness).
In addition, Curran teaches a first drill bushing 36 having an outer diameter that is configured to be positioned within the second central opening 38 (Fig 2), the first drill bushing 36 having a third central opening 40 configured to permit the passage of a particular first caliber round for a firearm (while not explicitly stated, a round of a firearm whose size corresponds with the third central opening would be able to pass through said opening) and wherein the first drill bushing 36 is configured to align a drill bit 44 along the centerline (Col 2, lines 55-59).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson as modified to utilize the guide bushing of Curran to function as a drill bit guide (Curran, Col 2, lines 60-63) and provide better axial alignment with the smaller diameter utilized than what is possible from the cap (Wilson, end cap 6).
In addition, Miller teaches a second cap 1 having an offset opening 8, wherein the offset opening 8 is configured to align a drill bit offset the centerline (Col 1 lines 5-15).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson as modified to include a second cap as taught by Miller in order to accurately align the holes to the position for drilling (Miller, Col 1 lines 5-15).
Regarding claim 3, Wilson in view of Miele, Curran, and Miller teaches the system of claim 1. Wilson also teaches wherein the exterior of the base 3 is circular.
Regarding claim 4, Wilson in view of Miele, Curran, and Miller teaches the system of claim 3. Wilson does not explicitly disclose wherein the exterior of the base includes a first flat portion and a second flat portion opposite of the first flat portion.
However, Miele teaches the exterior of the base 14 includes a first flat portion 310 and a second flat portion 310 opposite of the first flat portion (Fig 2, wrench flats spaced apart across the diameter of 14, shown by SD3; Col 16, lines 52-55).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson as previously modified to include the wrench flats of Miele on the base for easier tightening via the wrench (Miele, 1004, Figs 2 and 4, Col 16, lines 52-55).
Regarding claim 5, Wilson in view of Miele, Curran, and Miller teaches the system of claim 4. Wilson does not explicitly disclose first threads on the interior of the base.
However, Miele teaches first threads (shown in Figs 3, 4, and 37) on the interior of the base 14.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the thread structure of Wilson by making the simple substitutions of Wilson’s internally threaded solvent trap tube for Miele’s externally threaded solvent trap baffle cup 20 and Wilson’s externally threaded base for Miele’s internally threaded base to obtain the predictable results of threading together the solvent trap and the base, in order to ensure alignment of the centerline of the baffles with the centerline of the base for greater drilling accuracy. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting the rationale of simple substitution of one known element to another to obtain predictable results to support a finding of obviousness).
Regarding claim 6, Wilson in view of Miele, Curran, and Miller teaches the system of claim 5. Wilson does not explicitly disclose wherein the first end of the solvent trap is threaded into the base.
However, Miele teaches the first end 20 of the solvent trap (22,20,18,16) is threaded into the base 14 (Figs 3, 4, and 37).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the thread structure of Wilson by making the simple substitutions of Wilson’s internally threaded solvent trap tube for Miele’s externally threaded solvent trap baffle cup 20 and Wilson’s externally threaded base for Miele’s internally threaded base to obtain the predictable results of threading together the solvent trap and the base, in order to ensure alignment of the centerline of the baffles with the centerline of the base for greater drilling accuracy. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting the rationale of simple substitution of one known element to another to obtain predictable results to support a finding of obviousness).
Regarding claim 7, Wilson in view of Miele, Curran, and Miller teaches the system of claim 5. Wilson also teaches a plurality of baffles (4 and 5, Figs 1-2) connected together ([0019], the baffles can be constructed with multiple baffles as a single piece), wherein the first end of the solvent trap (1,4,5) comprises a baffle 5 (Figs 1-2). Wilson does not explicitly teach wherein the first end of the solvent trap is threaded into the base.
However, Miele teaches the first end 20 of the solvent trap (22,20,18,16) is threaded into the base 14 (Figs 3, 4, and 37).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the thread structure of Wilson by making the simple substitutions of Wilson’s internally threaded solvent trap tube for Miele’s externally threaded solvent trap baffle cup 20 and Wilson’s externally threaded base for Miele’s internally threaded base to obtain the predictable results of threading together the solvent trap and the base, in order to ensure alignment of the centerline of the baffles with the centerline of the base for greater drilling accuracy. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting the rationale of simple substitution of one known element to another to obtain predictable results to support a finding of obviousness).
Regarding claim 8, Wilson in view of Miele, Curran, and Miller teaches the system of claim 2. Wilson also teaches wherein the cap 6 comprises a first upper portion (larger diameter portion, Fig 1) and a second lower portion (smaller diameter portion, Fig 1), the first upper portion having a first perimeter and the second lower portion having a second perimeter that is smaller than the first perimeter (Fig 1 shows the cap with the larger circumference that sits outside the solvent trap when fully assembled and the smaller circumference portion that is connected inside the solvent trap when fully assembled).
Regarding claim 9, Wilson in view of Miele, Curran, and Miller teaches the system of claim 8. Wilson also teaches wherein the second perimeter (smaller diameter portion, Fig 1) is circular (Figs 1-2) and comprises second threads on the second perimeter ([0011] describes an embodiment with a threaded connection between the cap and the solvent trap). Wilson does not explicitly disclose wherein the first perimeter includes a plurality of flat sections.
However, Miele teaches the first perimeter 12 includes a plurality of flat sections 41.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson as previously modified to include the wrench flats of Miele on the cap for easier tightening via the wrench (Miele, 1002, Figs 2 and 4, Col 5, lines 48-54).
Regarding claim 10, Wilson in view of Miele, Curran, and Miller teaches the system of claim 9. Wilson also teaches wherein the cap 6 is threaded into the second end of the solvent trap (1,4,5) ([0011]).
Regarding claim 11, Wilson in view of Miele, Curran, and Miller teaches the system of claim 10. Wilson does not explicitly disclose wherein the drill bushing comprises a head and a projection that extends from the head, the head having a larger perimeter than the projection and the third central opening extends through the head and the projection.
However, Curran teaches the drill bushing 36 comprises a head (Fig 2, larger portion abutting outside of 24) and a projection (Fig 2, threaded portion inside 24) that extends from the head, the head having a larger perimeter than the projection (as seen in Fig 2) and the third central opening 40 extends through the head and the projection (Fig 2).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson as modified to utilize the guide bushing of Curran to function as a drill bit guide (Curran, Col 2, lines 60-63) and provide better axial alignment with the smaller diameter utilized than what is possible from the cap (Wilson, end cap 6).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson in view of Miele, Curran, and Miller as applied to claim 1 above, and further in view of Tsui et al. (US 5746552 A, hereinafter ‘Tsui’).
Regarding claim 12, Wilson in view of Miele, Curran, and Miller teaches the system of claim 2. Wilson does not explicitly disclose a set screw, wherein the cap includes a bore configured to receive the set screw and wherein the set screw retains the drill bushing within the second central opening within the cap.
However, Tsui teaches a set screw 44 (Figs 4-6), wherein the cap 30 includes a bore 62 configured to receive the set screw 44 and wherein the set screw retains the drill bushing 12 within the second central opening 32 within the cap 30.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson as previously modified to utilize the set screw structure of Tsui in order to releasably engage the drill bushing with the cap and prevent rotation when the set screw is engaged (Tsui; Col 2, lines 59-67; Col 3, lines 1-7).
Regarding claim 13, Wilson in view of Miele, Curran, Miller, and Tsui teaches the system of claim 12. Wilson does not explicitly disclose wherein the set screw may be rotated to enable the drill bushing to be removed from the second central opening within the cap.
Curran teaches that the drill bushing 14 may be removed from the second central opening 38 within the cap 24.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson as modified to utilize the guide bushing of Curran to function as a drill bit guide (Curran, Col 2, lines 60-63) and provide better axial alignment with the smaller diameter utilized than what is possible from the cap (Wilson, end cap 6).
Tsui teaches the set screw 44 may be rotated (inherent function of a screw).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson as previously modified to utilize the set screw structure of Tsui in order to releasably engage the drill bushing with the cap and prevent rotation when the set screw is engaged (Tsui; Col 2, lines 59-67; Col 3, lines 1-7).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11059108. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the anticipating patent discloses: A system for modifying a solvent trap comprising: a solvent trap ;a base having an exterior and a first central opening that forms an interior, a first end of the solvent trap being positioned within the central opening; a first cap connected to a second end of the solvent trap, the cap having a second central opening, wherein the second central opening is configured to align a drill bit along a centerline of the solvent trap; and a second cap having an offset opening, wherein the offset opening is configured to align a drill bit offset of the centerline of the solvent trap, and claim 2 of the anticipating patent, which is dependent from claim 1, discloses a first at least one drill bushing having an outer diameter that is configured to be positioned within the second central opening, the first at least one drill bushing having a third central opening configured to permit the passage of a particular first caliber round for a firearm and wherein the first at least one drill bushing is configured to align the drill bit along the centerline of the solvent trap.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection relies on a new combination of references that has not been applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ERIC DANIEL WHITMIRE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722