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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 22 July 2025 has been entered.
Claim Objections
Claim 15 is objected to because of the following informalities: In line 8, the feature, “adapter element central” lacks an antecedent basis. Appropriate correction is required.
Claims 16-23 are objected to because of the following informalities: Claims 16-23 depend from canceled claims. Appropriate correction is required.
Claim 21 is objected to because of the following informalities: The feature, “adapter” lacks and antecedent basis. Appropriate correction is required.
Claim 22 is objected to because of the following informalities: The feature, “plug” lacks and antecedent basis. Appropriate correction is required.
Claim 23 is objected to because of the following informalities: The feature, “plug” lacks and antecedent basis. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation providing that the first plug portion has a thickness less than the external diameter constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
Claim 19 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation providing that the plug portion is a solid disc constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
Claim Rejections - 35 USC § 103
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 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(s) 15-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ho et al., U.S. Patent Application No. 2007/0193569, in view of Schacht, U.S. Patent No. 2,696995. As to Claim 15, Ho teaches a muzzle device (100) for an air soft rifle ( non-lethal propellant drive gun), paragraphs 0014 and 0058. Ho teaches an adapter element (154) being an elongated cylindrical body having a forward end (upper end in Figure 1A) and a rear end (lower end in Figure 1A), paragraph 0059 and see Figure 1A. The adapter element may define a central bore registered with a barrel axis of barrel (122), paragraph 0058 and see Figure 1A. A plug element (152) may have a first plug portion (lower part of plug element 152), see Figure 1A. Ho suggests that the plug element may be configured to interface internally with the forward end of the adapter element and be removably retained, see Figure 1A, but Ho does not specifically so indicate and Ho does not teach internal threads at the rear end of the adapter, an internally threaded forward portion, and external threads on the plug element first plug portion. Schacht teaches a muzzle device (9) comprising an adapter element (10) having a rear end defining internal threads configured to interface with an externally threaded muzzle (12), and a plug element (11), Col. 1, ln. 69-74. The adapter element may have an internally threaded forward portion proximate a forward end, and the plug element may have a first plug portion defining external threads configured to interface with internally threaded forward portion of the adapter element, see Figures 3 and 6, noting lower part of plug element including external threads for engaging a forward threaded portion of the adapter element. It is inherent that the plug element may be removably retained within the internally threaded forward portion of the adapter element. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Ho with internal threads on the rear end of the adapter element configured to interface with external threads on a muzzle, internal threads on a forward portion of the adapter element configured to interface with external threads on a first plug portion to removably retain the plug element on the adapter element, as taught by Schacht, to provide Ho with a known substitute connecting system for a muzzle device. As to Claim 16, Schacht depicts the plug element having a first plug portion with an external diameter (distance across threads) and a thickness (distance from top to bottom of first plug portion) less than the external diameter, see Figure 3, suggesting that the thickness may be less than the first plug portion external diameter. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Ho, as modified, with a thickness less than a first plug portion external diameter, as suggested. As to Claim 17, Schacht teaches that the plug element may have a shoulder portion forward of the first plug portion and having a larger diameter than the first plug portion, see Figure 3. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the plug element with a shoulder portion having a larger diameter than the first plug portion, as taught by Schacht, to provide Ho, as modified, with a plug element shape configured to seat on the adapter element to yield the predictable result of facilitating a secure connection between the adapter element and the plug element. As to Claim 18, Schacht teaches that the shoulder portion may have a rear surface configured to abut the forward end of the adapter element, see Figures 3 and 6. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Ho, as modified, with a shoulder portion configured to abut the forward end of the adapter element, to provide Ho, as modified, with a known substitute configuration of a plug element and adapter element. As to Claim 19, Ho, as modified, discloses the claimed invention except for indicating that the first plug portion may be configured as a solid disc. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the first plug portion as a solid disc, since it has been held that configuration of parts of an invention is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, In re Dailey, 149 USPQ 47 (CCPA 1966). As to Claim 20, Schacht teaches that the first plug portion may have a flat rear surface, see Figure 3. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Ho, as modified, with a first plug portion having a flat rear surface, as taught by Schacht, to provide Ho, as modified, with a known substitute first plug portion shape. As to Claim 21, Schacht teaches that the adapter (adapter element) may define lateral apertures (14) at intermediate portion between forward and rear ends, Col. 2, ln. 6-8 and see Figure 3. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Ho, as modified, with apertures in an intermediate portion of the adapter, as taught by Schacht, to provide Ho, as modified, with apertures for escaping gas, to yield the predictable result of relieving pressure in the barrel. As to Claim 22, Schacht teaches that the apertures may be rearward of the rearmost portion of the plug, see Figure 6, noting aperture in the area beyond the rearmost portion of the plug (plug element). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Ho, as modified, with apertures rearward of a rearmost portion of the plug element, to provide Ho, as modified, with a known substitute muzzle device configuration.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ho, as modified by Schacht, as applied to claim 15 above, and further in view of Kennedy et al., U.S. Patent Application No. 2011/0056364. Ho, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 23, Ho, as modified, does not teach that the plug (plug element) may be free of apertures. Kennedy teaches a muzzle device (1) comprising an adapter element (15, 21) configured to receive a plug element (13), paragraph 0029 and see Figure 1. The plug element may be free of apertures, paragraphs 0026 and 0032, noting a chamber receiving projectiles wherein gas exits by a vent not part of the plug element. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the plug element without apertures, as taught by Kennedy, to provide Ho, as modified, with a known substitute configuration for a muzzle device.
Response to Arguments
Applicant’s arguments fled 22 July 2025 have been considered but are moot in view of the new grounds of rejection applied to newly filed claims.
Conclusion
.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 11 September 2025