12DETAILED ACTION
This is a final reissue action of U.S. Patent No. 11,604,044 (hereafter “’044”), addressing the response dated 03 April 2025. For reissue applications filed on or after 16 September 2012, all references to 35 USC § 251 and 37 CFR §§ 1.172, 1.175 and 3.373 are to the current provisions.
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Claims under Consideration
The following is a listing of the claims under consideration for this action:
Claims 1-26 and Claims 28-31 are pending
Claims 1-23, 26 and 28-31 are examined
Claims 24 and 25 are withdrawn from consideration
Claim 27 is cancelled
Original Disclosure – Definition
The present application is a reissue of US Patent No. 11,604,044, which issued from App. No. 17/869018 having a filing date of 20 July 2022. Any subject matter added during either the
examination of the present reissue application or the earlier concluded examination of 17/869018 does not constitute part of the “original disclosure”.
Amendments
The amendment to the claims filed on 08 April 2025 is objected to as not complying with the requirements of 37 CFR 1.173(b)(2) and (d)(1)&(2) because each change relative to the ‘044 patent has not been properly marked. 37 CFR 1.173(b)(2) and (d)(1)&(2) state:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “<U>” and end with “</U>” to properly identify the material being added.
The claims presented in the amendment filed 08 April 2025 do not include markings with respect to the original claims of the ‘044 patent. For example, claim 20 as submitted 27 July 2023, indicates an addition by underlining of “(EVA)” (line 9). In the response filed 03 April 2025, however, this language is not underlined. This is inconsistent with amendment practice with reissue, as the language should be underlined as it is made with the originally patented claims. A second example is Claim 21 was presented as new when filed with the present reissue, however claim 21 as provided in the response dated 03 April 2025 shows amendments with respect to the claim as previously presented, as opposed to new.
These corrections should be submitted with the next correspondence.
Response To Arguments
The following addresses applicant’s remarks/arguments dated 03 April 2025. Applicant’s courtesies were appreciated.
Reissue Oath/Declaration (response: page 10):
Applicant’s Replacement Oath satisfies the error matter previously raised (see Office action dated 03 January 2025: beginning page 2), and is considered proper. The Oath is entered and the rejection under 35 USC 251 previously raised resulting from the Oath is withdrawn
Election/Restriction (response: page 10):
Applicant’s response is noted. Claims 24 and 25 remain withdrawn for the same reasons provided in the Office action dated 03 January 2025 (see page 3). As a result, the rationale will not be repeated here for brevity.
Claim Rejections – 35 USC 112(b) (response: pages 10 and 11):
Applicant’s amendments to the claims, including the cancelling of claim 27, remedy the rejections previously raised (see prior Office action, beginning at page 5), and the rejections are withdrawn. See, however, the new rejections under this heading as shown below in light of the amendments made.
Claim Rejections – 35 USC 102 (response: pages 11-16):
Applicant’s arguments are noted but are respectfully not persuasive. Regarding applicant’s position that the Seyfert reference does not teach each element of independent claim 1 (response: page 11), the examiner takes the position that only the firearm holster is claimed, not the combination of the firearm holster with the firearm (see Claim 1: Preamble “A firearm holster…”). The examiner further noted that the claimed conditions would be met “based on the dimensions of the firearm” (See Office Action dated 03 January 2025, hereafter “OA” and equivalent, page 8, lines 8 and 9). While noting the support Applicant provided in the issued patent (‘044 Patent, Col.1 ,lines 47 – Col. 2, lines 37), the examiner takes the position that the language of the claim does not necessarily remedy the claimed issues because, as noted, only the firearm holster is claimed. The disclosure in Seyfert is clear: “[t]he present teachings relate to security holsters and holsters for accommodating handguns, stun guns, and other similar weapons and service items of various shapes and sizes” (Seyfert: paragraph [0003], emphasis added; see also paragraph [0040] which notes a virtual modular feature of the prior art to accommodate various firearms). While noting Applicant’s annotated Fig. 11 (response: page 12) to support the argued position, the examiner takes the position that Fig. 11 is exemplary, not conclusory. In other words, while Fig. 11 teaches what is shown, a firearm of different size or configuration could easily result in meeting the claimed limitation. Seyfert does not require non-contact with respect to element 66 as shown in Fig. 11, nor is non-contact a critical feature of the invention in Seyfert. Further, the examiner takes the position that it is notoriously well-known in the art of firearms that firearms come in numerous shapes and sizes without limitation. As a result, the examiner maintains the interpretation of the prior art is proper based on the claimed language.
Claims 3-6, 10-19 and 28 (response: pages 13 and 14), either stand or fall with the argument of claim 1, or provide arguments that result in the same rebuttal as provided by the examiner. As a result, the examiner’s position will not be repeated here for brevity, but for maintaining the position that only the firearm holster is claimed, not the firearm. The interrelationship and forces applied by a firearm would be dependent upon the size and shape of the firearm used with the respective holster. The examiner takes the position that the structural limitations that are present in Seyfert have full capability of achieving the claimed result dependent upon a firearm inserted therein, and the rejection is proper.
Regarding Claims 28-30 (response: pages 14 16), which were rejected citing Moultrie, applicant’s arguments are noted but respectfully not persuasive. In similar manner to Claim 1, Claim 28 claims only “a firearm holster” (Claim 28, preamble), not the combination of a firearm holster with firearm. The claim also provides for “a plurality of surfaces”; however no structural language is provided to determine specific metes and bounds of what would constitute a plurality of surfaces other than the plurality of surfaces (i.e., more than one but with no definite number ceiling) selectively retain a firearm ”along the sides of the firearm barrel…”. As shown in Fig. 1 of Moultrie, area proximate 102 would be where a barrel of a firearm would be located. The examiner takes the position that, as claimed, some degree of tension would exist between the firearm barrel (see rejection under 35 USC 112(b), below, regarding “barrel”) and the corresponding surfaces in which the barrel contacts under the rules governing mechanics of materials. Regarding this limitation, the claim states only “the plurality of surfaces create constant tension…”. The claim does not specify which surfaces, how many surface, nor the degree of tension. As a result, based on the material of the holster disclosed in Moultrie and based on the size of the firearm, this would be a necessary result. Regardless of the teaching that Moultrie discusses retention by the trigger guard, Moultrie notes that it is not the only location of retention. See paragraph [0019] which states, ”…the handgun thereby releasably retained within the holster, principally through an interference fit achieved through a trigger guard retention…” The “principal” language alludes that it is not the only way the firearm is retained, but is open to other forms and locations of retention as well. Further, as claimed, “tension” does necessarily require retention, but rather only that a force be acted in a manner that could cause a stretch, which can clearly be achieved based on the size and shape of the firearm inserted. As a result, the examiner maintains the interpretation of the prior art is proper.
Claim Rejections – 35 USC 103 (response: pages 16-18):
Applicant’s remarks note that the respective claims rejected under this heading stand or fall with respect to the independent claims from which they depend. As a result, the examiner reserves comment at this time.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 26 and 28 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.
Claims 26 and 28: the amended language directed to the “firearm barrel” (claim 26, line 8 and claim 28, line 11) is indefinite based on the disclosure provided. As shown and described, the holster appears to be directed to containing a slide-action, or semi-automatic, firearm, where a barrel would be within a slide. As a result, the barrel would not be exposed. This would be contrary to a firearm where the barrel would be exposed in, for example, a revolver. As a result, the language as to how the tension would be applied to the sides of a firearm barrel is indefinite, as it is unclear how this force could be applied to a barrel that is contained within a slide.
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, 3-6, 10-19 and 28-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seyfert (U.S. Publication 2007/0181619).
Below is a reproduction of applicant’s claims with the examiner’s comments in bold italics.
Claims 1 and 11-15: Seyfert discloses A firearm holster comprising:
a body (20) having an inner cavity (30) and a slide cap (66, which is considered as sliding as it slides over a portion of the firearm) that partially encloses the inner cavity (as shown generally), the inner cavity configured to receive a firearm (as per its function) and having a first end (proximate the handle of the firearm when installed) and a second end (proximate the distal end of the barrel of the firearm when installed) opposite of the first end with the slide cap being adjacent to the first end (as shown generally);
a first opening into the inner cavity adjacent to the first end of the body (the first opening would be where the firearm is inserted into the holster);
an internal shoulder (see 5: proximate 24 as it would be applicable in Figs. 11) positioned within the inner cavity (as exemplified in Fig. 11);
the body selectively retains a firearm positioned within the inner cavity (as per its purpose), wherein a force is applied to the firearm by the internal shoulder to push the firearm against the slide cap to selectively retain the firearm (the examiner takes the position that, although it is not shown in the figures, the holster has full capability of achieving the claimed function based on the dimensions of the firearm);
a sleeve (90, 100, as shown in Fig. 1 and 11 which shows 90 and 100 would wrap around a portion of the firearm, which meets the limitation of “sleeve”), wherein the body is positioned within the sleeve (as shown); and
wherein the sleeve has a first end (proximate handle portion of the firearm), a second end (proximate the distal end of the barrel as shown in Fig. 11), and an end plate (containing 112), the end plate is connected to the second end of the sleeve to selectively retain the body positioned within the sleeve (as shown, the end plate has full capability of achieving the claimed limitation) (per claim 12).
Per claims 11 and 14, Seyfert further provides wherein the internal shoulder applies the force to a trigger guard of the firearm (see Fig. 11 which shows that the shoulder has full capability of applying a force on the trigger guard based on the configuration, size and overall shape of the firearm).
Per claim 13, Seyfert further provides wherein a firearm may be selectively removed from the inner cavity by an application of a force on the firearm toward the internal shoulder and by a rotation of the firearm away from the holster while the force is being applied (functional language fully capable of being met by the prior art based on the configuration, size and overall shape of the firearm).
Per claim 15, Seyfert further provides a second opening (28) into the inner cavity adjacent to the second end of the body (as shown); one or more compression pads (portion of 100 that contacts slide) positioned within to the inner cavity (as shown); wherein the body selectively retains a firearm positioned within the inner cavity wherein a force is applied to a trigger guard of the firearm by the internal shoulder (as shown) and a force is applied against a slide of the firearm by the one or more compression pads to selectively retain the firearm (as shown).
Claims 3 and 19: Seyfert discloses the firearm holster of claim 1, further comprising a second opening (28) adjacent to the second end of the body, a first projection (“A” from attached Fig. 11 from Seyfert below, extending from the rear of the shoulder) that extends from the internal shoulder, and a second projection (“B” below) that extends from the first end of the inner cavity.
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Figure 11 from Seyfert
Claim 4: Seyfert discloses The firearm holster of claim 3, the sleeve comprising a first opening (proximate the handle end of the firearm as shown) that is adjacent to the first opening in the inner cavity and the sleeve comprising a second opening (“C” above) that is adjacent to the second opening in the inner cavity.
Claim 5: Seyfert discloses The firearm holster of claim 1, wherein the first end of the cavity is configured to engage a portion of a slide of the firearm (via 132 which extends from the first end of the cavity).
Claim 6: Seyfert discloses The firearm holster of claim 1, wherein the body comprises a compressible material (paragraph [0031], the examiner takes the position that under the rules governing mechanics of materials the materials listed have compressible properties; further, “semi-rigid or flexible materials, such as leather” may be used, which are compressible).
Claim 10: Seyfert discloses The firearm holster of claim 1, further comprising one or more compression pads (120) positioned adjacent to the inner cavity, wherein the one or more compression pads is configured to apply a force against a slide of a firearm positioned within the inner cavity (as shown).
Claim 16: Seyfert discloses The firearm holster of claim 15, further comprising a fulcrum cushion (“D” above) positioned adjacent to the inner cavity (as shown), wherein the fulcrum cushion is configured to apply a force against the slide of the firearm positioned within the inner cavity and provide a pivot point for rotation of the firearm within the inner cavity (as shown, the prior art has full capability to achieve the claimed function based on the size, configuration and overall shape of the firearm).
Claim 17: Seyfert discloses The firearm holster of claim 16, further comprising a trigger guard wall (sides of sleeve 90 as shown in Fig. 1, that would contact the trigger guard of an installed firearm) positioned adjacent to the inner cavity and positioned adjacent to the internal shoulder (as shown), wherein the trigger guard wall is configured to apply a force against a trigger guard of the firearm positioned within the inner cavity (functional language fully capable of begin met by the prior art based on the size, shape and overall configuration of the firearm in the holster).
Claim 18: Seyfert discloses The firearm holster of claim 17, further comprising a frame pad (portion of sleeve proximate 54 as shown in Fig. 1) positioned adjacent to the inner cavity, wherein the frame pad is configured to apply a force against a frame of the firearm positioned within the inner cavity (functional language fully capable of begin met by the prior art based on the size, shape and overall configuration of the firearm in the holster).
Claim(s) 28-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moultrie (U.S. Publication 2017/0115095).
Claim 28: Moultrie discloses A firearm holster comprising:
a body (100) having an inner cavity configured to receive a firearm (cavity is exemplified in Fig. 4 receiving the firearm), the inner cavity having a first end and a second end opposite
of the first end (as shown), wherein the body comprises a compressible material:
a first opening (proximate the handle of the firearm) into the inner cavity adjacent to the first end of the body:
a second opening (proximate the distal end of the barrel of the firearm) in the inner cavity adjacent to the second end of the body;
wherein inner cavity of the body includes a plurality of surfaces (see Fig. 3 generally, which shows the inside of the cavity which provides a plurality of surfaces) and the plurality surfaces apply forces to selectively retain a firearm positioned within the inner cavity (as disclosed; see paragraph [0017]); and
wherein the forces applied by the plurality of surfaces create constant tension along the sides of the firearm barrel when positioned within the inner cavity (as would be the results based on the laws and rules of physics, the overall size and shape of the firearm and how the barrel contacts the holster).
Claim 29: Moultrie discloses The firearm holster of claim 28, wherein the
body is an elastomer, a thermoplastic elastomer, ethylene vinyl acetate, rubber, silicon, or a combination thereof (paragraph [0024]).
Claim 30: Moultrie discloses The firearm holster of claim 28, wherein the body is
comprised of ethylene vinyl acetate (EVA) (paragraph [0024]).
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.
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.
Below is a substantial reproduction of applicant’s claims addressing all limitations with the examiner’s comments in bold italics.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seyfert in view of Vor Keller (U.S. Publication 2001/0019071).
Claim 2: Seyfert discloses The firearm holster of claim 1, except wherein the sleeve is comprised of a glass-filled polymer. Seyfert is clear however that the device is rigid and can be made from numerous material that are virtually non-limiting (paragraph [0031]). Vor Keller teaches a similar firearm holster that can be made of glass-filled polymers (paragraph [0032], “glass fiber composites” and “glass fiber laminates”). It would have been obvious at the time of filing to a person having ordinary skill in the art to incorporate the materials disclosed in Vor Keller for the holster in Seyfert, as the materials would function equally as well and ensure a properly functioning device. Further, it would have been obvious at the time of filing to a person having ordinary skill in the art to have the claimed material because a simple substitution of one known element for another to obtain predictable results is not a patentable advance. See MPEP 2143 citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seyfert in view of Moultrie.
Claims 7 and 8: Seyfert discloses The firearm holster of claim 6, except wherein the body is an elastomer, a thermoplastic elastomer, ethylene vinyl acetate, rubber, silicon, or a combination thereof (claim 7), or wherein the body is comprised of ethylene vinyl acetate (EVA) (claim 8), though as disclosed, rubber is used in parts of the system (paragraph [0041], the inserts), and Seyfert is virtually unlimiting as to the materials that may be used (paragraph [0031]). Moultrie discloses a similar holster that can be made of numerous materials including ethylene vinyl acetate (EVA) (see paragraph [0024]). It would have been obvious at the time of filing to a person having ordinary skill in the art to make the holster in Seyfert from the material as claimed a material equivalent that would function equally as well as the material in Seyfert. See also MPEP 2143 citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), where the Court states that a rejection under this heading is permitted for the simple substitution of one known element for another to obtain predictable results and for known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
Claim(s) 9 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seyfert in view of Moultrie as evidenced by Favis (U.S. Publication 2015/0031837) and further in view of Lettow (U.S. Publication 2017/0038795).
Claims 9 and 20: The obvious modification of the prior art provides The firearm holster, except wherein the EVA is cross-linked EVA and has 50% to 60% proportion of vinal acetate. Favis is used as evidence that vinyl acetate (as assumed to be the intended claim language
– see rejection under 35 USC 112(b) above) is part of ethylene-vinyl acetate. Regarding the percentage of vinyl acetate, It would have been obvious at the time of filing to a person having ordinary skill in the art to have this limitation because differences in concentration will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such a limitation is critical. See M.P.E.P. §2144.05 "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454 (CCPA 1955) (Claimed process which was performed at a temperature between 40C and 80C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100C and an acid concentration 10%.) One having ordinary skill in the art would have the desired percentage of vinyl acetate based on the desired mechanical and material properties of the holster. Regarding the cross-linked EVA, the examiner takes the position that it would have been obvious at the time of filing to a person having ordinary skill in the art would use a cross-linked EVA, as it is notoriously well-known in the art that cross-linked polymers are stronger and more durable than their non-cross-linked counterparts, and a cross-linked holster would offer better protection for the firearm it holds, and would also prevent deformation of the holster that could otherwise affect how the firearm is retained in the holster. See also MPEP 2143 citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), where the Court states that a rejection under this heading is permitted for the simple substitution of one known element for another to obtain predictable results and for known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
Per claim 20, Seyfert discloses all the other features of the claim as addressed in claim 1, above.
Claim(s) 21-23, 26 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moultrie as evidenced by Favis and in view of Lettow.
Claim 21: Moultrie discloses A firearm holster comprising:
a body (102) having an inner cavity configured to receive a firearm (exemplified in Fig. 4 as portion receiving firearm) the inner cavity having a first end (portion proximate the trigger of the firearm) and a second end (portion proximate the distal end of the barrel of the firearm) opposite the first end;
a first opening (receiving firearm proximate the first end) into the inner cavity
adjacent to the first end of the body (as shown);
a compression pad (inner surface of 102 functions as a compression pad and Fig. 3: portion of 202 between 101 and a holstered firearm as shown) positioned within the inner cavity
the body includes a trigger guard wall (proximate 201 and 202 as shown in Fig. 4) positioned adjacent the inner cavity (as shown); and
the body selectively retains a firearm positioned within the inner cavity (as shown), wherein
when the firearm is positioned within the inner cavity a force is applied against a trigger guard of the firearm by the trigger guard wall and a force is applied against a slide of the firearm by the compression pad to selectively retain the firearm (as would occur under the rules governing physics and mechanics of materials and depending on the size and shape of the firearm) and wherein the holster is comprised of ethylene vinyl acetate (EVA) (paragraph [0024]).
Moultrie does not disclose wherein the EVA is cross-linked EVA and has 50% to 60% proportion of vinal acetate. Favis is used as evidence that vinyl acetate
(as assumed to be the intended claim language – see rejection under 35 USC 112(b) above) is part of ethylene-vinyl acetate. Regarding the percentage of vinyl acetate, it would have been obvious at the time of filing to a person having ordinary skill in the art to have this limitation because differences in concentration will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such a limitation is critical. See M.P.E.P. §2144.05 "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454 (CCPA 1955) (Claimed process which was performed at a temperature between 40C and 80C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100C and an acid concentration 10%.) One having ordinary skill in the art would have the desired percentage of vinyl acetate based on the desired mechanical and material properties of the holster. Regarding the cross-linked EVA, the examiner takes the position that it would have been obvious at the time of filing to a person having ordinary skill in the art would use a cross-linked EVA, as it is notoriously well-known in the art that cross-linked polymers are stronger and more durable than their non-cross-linked counterparts, and a cross-linked holster would offer better protection for the firearm it holds, and would also prevent deformation of the holster that could otherwise affect how the firearm is retained in the holster. See also MPEP 2143 citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), where the Court states that a rejection under this heading is permitted for the simple substitution of one known element for another to obtain predictable results and for known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
Claim 22: The obvious modification of Moultrie discloses The firearm holster of claim 21, further comprising a second opening (as shown generally) into the inner cavity adjacent
to the second end of the body (see Fig. 3, generally, which shows the cavity passing through from the first end to second end).
Claim 23: The obvious modification of the prior art provides The firearm holster
of claim 21, wherein the body is of unitary construction (as shown 102 is one piece).
Claim 26: Lettow discloses A firearm holster comprising:
a body (100) having an inner cavity (exemplified in Fig. 4 as portion receiving firearm) configured to receive a firearm, the inner cavity having a first end (portion proximate trigger of firearm) and a second end (portion proximate distal end of the barrel) opposite
of the first end;
a first opening (receiving pistol proximate the first end) into the inner cavity
adjacent to the first end of the body:
wherein the inner cavity of the body includes a plurality of surfaces (see Fig. 3 generally, which shows the inside of the cavity which provides a plurality of surfaces) and the plurality surfaces apply forces to selectively retain a firearm when the firearm is positioned within the inner cavity (as is the purpose of the system), wherein the forces applied by the plurality of surfaces create a constant tension along the sides of the firearm barrel when position within the cavity (as would be the result based on the shape of the firearm and its contact with the respective surfaces); and
wherein the holster is comprised of ethylene vinyl acetate (EVA) (paragraph [0024]).
Lettow does not disclose wherein the EVA is cross-linked EVA and has 50% to 60%
proportion of vinyl acetate. Favis is used as evidence that vinyl acetate (as assumed to be
the intended claim language – see rejection under 35 USC 112(b) above) is part of ethylene-vinyl acetate. Regarding the percentage of vinyl acetate, It would have been obvious at the time of filing to a person having ordinary skill in the art to have this limitation because differences in concentration will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such a limitation is critical. See M.P.E.P. §2144.05 "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454 (CCPA 1955) (Claimed process which was performed at a temperature between 40C and 80C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100C and an acid concentration 10%.) One having ordinary skill in the art would have the desired percentage of vinyl acetate based on the desired mechanical and material properties of the holster. Regarding the cross-linked EVA, the examiner takes the position that it would have been obvious at the time of filing to a person having ordinary skill in the art would use a cross-linked EVA, as it is notoriously well-known in the art that cross-linked polymers are stronger and more durable than their non-cross-linked counterparts, and a cross-linked holster would offer better protection for the firearm it holds, and would also prevent deformation of the holster that could otherwise affect how the firearm is retained in the holster. See also MPEP 2143 citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), where the Court states that a rejection under this heading is permitted for the simple substitution of one known element for another to obtain predictable results and for known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
Claim 31: While Moultrie discloses The firearm holster of claim 30, including that the holster is made of EVA, and that cross-linked materials may be used with other polymers (paragraph [0024]), it does not disclose the EVA is cross-linked, nor wherein the EVA is cross-linked EVA and has 50% to 60% proportion of vinal acetate. Favis is used as evidence that
vinyl acetate (as assumed to be the intended claim language – see rejection under 35 USC 112(b) above) is part of ethylene-vinyl acetate. Regarding the percentage of vinyl acetate, It would have been obvious at the time of filing to a person having ordinary skill in the art to have this limitation because differences in concentration will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such a limitation is critical. See M.P.E.P. §2144.05 "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454 (CCPA 1955) (Claimed process which was performed at a temperature between 40C and 80C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100C and an acid concentration 10%.) One having ordinary skill in the art would have the desired percentage of vinyl acetate based on the desired mechanical and material properties of the holster. Regarding the cross-linked EVA, the examiner takes the position that it would have been obvious at the time of filing to a person having ordinary skill in the art would use a cross-linked EVA, as it is notoriously well-known in the art that cross-linked polymers are stronger and more durable than their non-cross-linked counterparts, and a cross-linked holster would offer better protection for the firearm it holds, and would also prevent deformation of the holster that could otherwise affect how the firearm is retained in the holster. See also MPEP 2143 citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), where the Court states that a rejection under this heading is permitted for the simple substitution of one known element for another to obtain predictable results and for known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,604,044 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
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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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
Conferees:
/JOSHUA KADING/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993