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
The After Final Amendment filed 04/09/2026 has been entered. Claims 2-9, 11-17, and 19-23 are pending in the application.
Terminal Disclaimer
The terminal disclaimer filed on 03/18/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Us patents- 11623313, 10875135, 12138727 B2, 11607765 B2, 11000930 B1, AND 10099329 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “101” has been used to designate both rotary power tool and guide plate (presumably should be 110) in fig. 7. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Presumably guide plate “101” in fig. 7 should be - - 110 - -.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the hammer pin, trigger pivot, and selector must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 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 2-9, 11-17, and 19-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. - US 10718578 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are substantially co-extensive in scope, at least in regard to the novel subject matter, and differ merely in equivalent terminology used as to function. Both claim a rotary tool having an adaptor, lower receiver with a top guide plate and two carriage plates and two supports for the carriage plates (current claim 1 & patented claims 1-3 and 7). Generally, all of the dependent claims of the patent set forth the equivalent subject matter of the dependent claims of the current application. Therefore, it would have been obvious to one skilled in the art to substitute the terminology recited in the current claims with the equivalent components of the patented claims, since to do so provides nothing new or unexpected.
See claim match below-
18163657 (claims)
US 10718578 B2 (claims)
1, 5-6, 15, and 20
1-4 and 6-8
3-4, 8, 12, and 16
13
7, 13, 19
16
Claims 2-9, 11-17, and 19-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. - US 9982958 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because they are substantially co-extensive in scope, at least in regard to the novel subject matter, and differ merely in equivalent terminology used as to function. Both claim a rotary tool having an adaptor, lower receiver with a top guide plate and two carriage plates and two supports for the carriage plates (current claim 1 & patented claims 1-13). Generally, all of the dependent claims of the patent set forth the equivalent subject matter of the dependent claims of the current application. Therefore, it would have been obvious to one skilled in the art to substitute the terminology recited in the current claims with the equivalent components of the patented claims, since to do so provides nothing new or unexpected.
See claim match below-
18163657 (claims)
US 10718578 B2 (claims)
2-9, 11-17, and 19-23
1-11
Claim Objections
Claim 2 is objected to because of the following informalities: In claim 2, the phrase “each of the first and second carriage plates is coupled” does not agree in singular/plural and should be recited - - each of the first and second carriage plates are coupled - -. Appropriate correction is required.
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.
(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.
Claim(s) 2, 9, 11, 13-15, and 19-23 is/are provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. 16/206878/ Partington (US 20190331442 A1) which has a common inventor with the instant application.
Based upon the earlier effective filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(a)(2), if published under 35 U.S.C. 122(b) or patented under 35 U.S.C. 151. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application. Since Application No. 16/206878/Partington (US 20190331442 A1) anticipates the invention and there is a different inventive entity (assignee) the rejection should be overcome.
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C.102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Regarding claims 2, 11, and 22, Partington discloses a jig (100) for finishing a lower receiver (116) having a buffer tube alignment hole (figs. 4, 21-22 and 27) and a takedown pin hole (any of 132, 134, 136), comprising:
a top guide plate (108) configured to be supported by a front support (118) and a buffer support (110);
a rotary tool adaptor (122/8, figs. 1-8 and 21) configured to be supported by the top guide plate; a rotary power tool (102) coupled to a rotary tool (104) configured to be supported by the top guide plate and the rotary tool adaptor ([0035-0040], figs. 1-10);
a first carriage plate (114) and a second carriage plate (302) configured to be positioned on respective first and second sides of the lower receiver (figs. 1-8, 20-22 and 26-27),
wherein a proximal end of each of the first and second carriage plates (114/302) is coupled with the top guide plate (108) and a distal end of each of the first and second carriage plates extends therefrom (figs. 1-8, 21-22 and 26-27) wherein the distal ends of the first and second carriage plates extend below a lowermost point of the lower receiver (screw 304 shown below lower receiver, [0040], figs. 4 and 7-8); and
a locating pin (704) configured to extend through the front support ([0039], figs. 1-8) to secure the front support (118) to the lower receiver (116 [0035-0051], figs. 1-27) and the top guide plate (108) is oriented perpendicular relative to the front support and/or the buffer support (116 [0035-0051], figs. 1-27).
Regarding claims 15 and 23, Partington discloses a jig (100) for finishing a lower receiver (116) having a buffer tube alignment hole (figs. 4, 21-22 and 27) and a takedown pin hole (any of 132, 134, 136), comprising:
a top guide plate (108) configured to be supported by a front support (118) and a buffer support (110); the front support coupled to the top guide plate by one or more fasteners,
the buffer support (110/buffer adapter 7) comprising:
one or more buffer attachment holes configured to receive fasteners (112, [0035, 0045], figs. 21); a buffer locator hole (center hole, figs. 21 and 27) configured to engage a buffer locator (capable of engaging a buffer locator); and a boss (ridges shown on buffer adapter 7 fig. 21) configured to engage with the buffer tube alignment hole (capable of “engaging” the alignment hole) on the lower receiver (116);
wherein the fasteners (112) extending through the one or more buffer attachment holes are configured to couple to the top guide plate (figs. 3-4);
a rotary power tool (102) coupled to a rotary tool (104) configured to be supported by the top guide plate ([0035-0040], figs. 1-10); and
a first carriage plate (114) and a second carriage plate (302) configured to be positioned on respective first and second sides of the lower receiver (figs. 1-8, 20-22 and 26-27),
wherein a proximal end of each of the first and second carriage plates (114/302) is coupled with the top guide plate (108) and a distal end of each of the first and second carriage plates extends therefrom (figs. 1-8, 21-22 and 26-27), wherein the top guide plate (108) is oriented perpendicular relative to the front support and/or the buffer support (116 [0035-0051], figs. 1-27).
Regarding claims 9, 13-14 and 19-21, Partington discloses the first carriage plate and second carriage plate (114/302) includes a plurality of drill guide holes (132, 134, 136, 632, 634, 636) aligned with a location for a hammer pin, a trigger pivot, and a selector (any of 132, 134, 136 632, 634, 636 can be “aligned with a hammer/trigger pivot hole or “selector”), wherein the buffer support (110/buffer adapter 7) includes one or more buffer attachment holes (holes for 112), a buffer locator hole (center hole, figs. 21 and 27), and a boss (ridges shown on buffer adapter 7 fig. 21), wherein a locating pin/bolt (704) is configured to couple the front support (118, [0039], figs. 1-8) to the lower receiver (116 [0035-0051], figs. 1-27).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 15 and 19-23 is/are rejected under 35 U.S.C. 103 as obvious over Partington (US 20190331442 A1) in view of Smith (US 20190210170 A1).
Regarding claims 15 and 19-23, In the alternative, if it can be argued that Partington fails to disclose the buffer support with having a boss configured to engage with the buffer tube alignment hole -
Smith teaches the first carriage plate includes a drill guide hole (guide holes 42 is used to guide a drill bit [0044, 0065], figs. 1-2 and 11), the first carriage plate is coupled to the top plate by a first set of fasteners extending through the top plate (via apertures 56 [0046]), wherein the second carriage plate is coupled to the top plate by a second set of fasteners extending through the top plate [0046], wherein a first row of the first set of fasteners is coupled along a first side of the first carriage plate and a second row of the first set of fasteners is coupled along a second side of the first carriage plate, wherein the first carriage plate includes a drill guide hole (40) aligned with a location for a hammer pin, ([0044-0065], fig. 2) and;
a buffer support (314) having a boss (332) configured to engage with a buffer tube alignment hole (330 [0068-0069], fig. 15).
Given the teachings of Partington to have first and second carriage plates with a template for guiding a drill, it 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 to modify the buffer support with having a boss configured to engage with the buffer tube alignment hole for more secure holding the rotary tool, protect from dust/debris and more precise alignment of the buffer support installation and/or for having a template correct depth for the desired hole/feature in a blank purposes as taught by Smith.
Claim(s) 3-8, 12, and 16-17, is/are rejected under 35 U.S.C. 103 as obvious over Partington (US 20190331442 A1) in view of Smith (US 20190210170 A1) in view of Witt (US 6742558 B1).
Regarding claims 3-8, 12, and 16-17, Partington fails to disclose the first and second carriage plate have a thickness of at least 1.0 inches, wherein the thickness is in a direction between the first row and the second row of the first set of fasteners, wherein the thickness is configured to allow the rotary tool to resist skewing and the drill guide hole having a depth of at least 1 inch.
Witt teaches having a first and second carriage plate (14/16 and/or block 30) have a thickness of at least 1.0 inches (col. 1, lines 1-16, “as much as two inches” - block 30 with four laminate layers 32, 34, 36, 38), wherein the thickness is in a direction between the first row and the second row of the first set of fasteners (pins 56/slugs 62), wherein the thickness is configured to allow the rotary tool to resist skewing (“configured” to resist some skewing with added thickness guides drill bit further thus resisting skewing), wherein the first carriage plate (36) includes a drill guide hole (60, horizontal bores 78/ slots 82 and/or 91) aligned with a location for a hammer pin (pins 56, bolts 94 and/or adjustment bolt 93), the drill guide hole having a depth of at least 1 inch (Witt also teaches increasing or decreasing the number of laminates, col. 3, lines 60-67, col. 4, lines 1-67, col. 5, lines 1-16, figs. 1-9).
Witt states: “the number of laminates is shown to be four, this number may be increased or decreased” (col. 4, lines 5-8).
Given the teachings of Partington to have first and second carriage plates with a template for guiding a drill, it 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 to modify the first and second carriage plate have a thickness of at least 1.0 inches, wherein the thickness is in a direction between the first row and the second row of the first set of fasteners, wherein the thickness is configured to allow the rotary tool to resist skewing and the drill guide hole having a depth of at least 1 inch for more precise operation of the rotary tool and more precise action on a workpiece (avoid overshoot/damage to the workpiece), improved guiding of the rotary tool and/or for having a template depth for the desired hole/feature in a blank purposes as taught by Witt.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Allemann et al. (US 20040126197 A1) – JIG with template having differing depth of holes, size and shape of holes/features ([0035-0041, 0051], figs. 1-5)
PUGSLEY (US 2997900 A)- Multipurpose Fixture/JIG for drilling holes in a rod (R) with two carriage plates (20/58/78), template for drill bit to be held at right angles to avoid skewing (col. 2, lines 44-67- col. 4, line 67, figs. 1-10) and see references cited, form 892.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
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, SHELLEY SELF can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT F LONG/Primary Examiner, Art Unit 3731
Prosecution Insights