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 Arguments
Applicant's arguments filed 1/2/26 have been fully considered but they are not persuasive. Applicant’s remarks are directed to the installation methods of which the device of both Roth and Dawson utilize. This is not persuasive in that the present claims are directed to an apparatus. Statements of intended use do not serve to patentably distinguish the claimed structure over that of the reference. See In re Pearson, 181 USPQ 641; In re Yanush, 177 USPQ 705; In re Finsterwalder, 168 USPQ 530; In re Casey, 512 USPQ 235; In re Otto, 136 USPQ 458; Ex parte Masham, 2 USPQ 2nd 1647.
See MPEP § 2114 which states:
A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2nd 1647
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than functions. In re Danly, 120 USPQ 528, 531.
Apparatus claims cover what a device is not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525, 1528.
As set forth in MPEP § 2115, a recitation in a claim to the material or article worked upon does not serve to limit an apparatus claim.
Furthermore, it is the “screw” of Roth and Dawson that is equivalent to applicant’s claimed “rotatably-driven part” not whether the adapter itself is rotatably installed. None of the current claims are directed to a method at all. It is further noted that the “respective functions” of the device of both Roth and Dawson is to visually align a firearm with an intended target to facilitate a more accurate aiming of the firearm; the “respective functions” of the device is not the “installation method” as argued by applicant.
Finally, in response to applicant's argument that the installation method of Roth could not be modified to the installation method of Dawson, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
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) 13-15, 17, 21-28, 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roth (US Patent 11,788,818) in view of Dawson (US Patent recoil environment in which the assembly is coupled to a device that produces or transmits recoil; wherein at least one part of the assembly is coupled to a mating part using a rotatably-driven part (522, 524), characterized in that: the mating part comprises another part of the assembly (10), a reciprocating part of said device (200), or another part of said device; the rotatably-driven part including terminal ends and a length, the length including 1) a threaded section and 2) a non-threaded section including a tapered portion (Fig. 16); the apparatus further comprising a threaded opening to receive threading of the threaded section, and a non-threaded opening over the threaded opening, the non-threaded opening comprising an offset counter opening to receive the tapered portion. Although Roth does not expressly disclose the at least one part includes one of 1) an undercut and a 2) projection to mate with the undercut, and the mating part includes the other of the 1) undercut and 2) the projection; wherein the openings are have structure allowing it to: 1) interlock the undercut and the projection, by urging the at least one part relative to the mating part, as the rotatably-driven part is driven into the openings, and 2) generate resistance to recoil-loosening for the rotatably-driven part, by biasing the rotatably-driven part with side force, causing the rotatably-driven part to be put into continuous tension, however, Dawson does. Dawson teaches an assembly to operate in a recoil environment wherein at least one part includes one of 1) an undercut (136) and a 2) projection (330) to mate with the undercut, and the mating part includes the other of the 1) undercut and 2) the projection; wherein the openings have structure allowing it to: 1) interlock the undercut and the projection, by urging the at least one part relative to the mating part, as the rotatably-driven part is driven into the openings, and 2) generate resistance to recoil-loosening for the rotatably-driven part, by biasing the rotatably-driven part with side force, causing the rotatably-driven part to be put into continuous tension. All the claimed elements were known in the prior art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded the predictable results of stabilizing the base on the device as taught by Dawson and there would have been a reasonable expectation of success.
14. The apparatus of claim 13, further comprising a counter bore located between the offset counter opening and a threaded portion of the threaded opening;
wherein the length includes an additional section between the tapered portion and the threaded section;
the counter bore dimensioned to slip-fittingly receive the additional portion of the length, to align a center axis of the rotatably-driven part with a center axis of the threaded opening. (Fig. 16)
15. The apparatus of claim 13, wherein a body of the at least one part defines at least a portion of the offset counter opening, and the threaded opening is not defined by said body. (Fig. 16)
17. The apparatus of claim 13, wherein the non-threaded section of the rotatably-driven part includes a head, the head including at least some of the tapered portion of the length,
wherein the threaded section includes threading. (Fig. 16)
21. An apparatus including at least one part to operate with a recoil-producing device, the at least one part including a body to couple to a mating body, in which the mating
body is another body of the at least one part, a reciprocating body of the device, or another body of the device, the apparatus comprising:
a rotatably-driven part including terminal ends and a length, the length including 1) a threaded section and 2) a non-threaded section including a tapered portion, the threaded section to mate with a threaded section associated with the mating body;
the body including a non-threaded opening locatable over the threaded section associated with the mating body when the bodies are coupled;
the non-threaded opening comprising an offset counter opening, the offset counter opening to receive the tapered portion as the rotatably-driven part is tightened, in which:
1) the body is urged relative to the mating body, as the rotatably-driven part is tightened based on contact of the tapered portion with the offset counter opening, and
2) the rotatably-driven part is biased with side force produced by the contact, causing the rotatably-driven part to be put into continuous tension, for resisting recoil- loosening. (see above with regards to claim 13)
22. The apparatus of claim 21, wherein the body includes one of 1) an undercut and 2) a projection to mate with the undercut;
the one of the undercut and the projection to interlock with the other of the undercut and the projection in response to said urge. (inherent that the tightening would urge the two together)
23. The apparatus of claim 22, wherein the undercut comprises a dovetail. (Fig. 39A)
24. The apparatus of claim 22, wherein the projection includes one or more projections to drop into one or more recesses defined by the undercut. (Dawson Fig. 17B)
25. The apparatus of claim 22, wherein the body comprises an adapter body of an optic adapter for an optic sight. (Fig. 19)
26. The apparatus of claim 22, wherein the fastener comprises a tapered head, the tapered head including at least some of the tapered portion of the length. (Fig. 16)
27. The apparatus of claim 21, wherein when the body is securely coupled to the mating body, the bodies can be separated by removing a single threaded fastener therefrom, wherein the single threaded fastener comprises the rotatably-driven part. (Fig. 16)
28. The apparatus of claim 21, wherein the at least one part comprises an optic adapter for an optic sight. (Fig. 19)
34. A slide assembly including the apparatus of claim 21, wherein the mating body comprises a slide of the slide assembly. (Fig. 19)
35. The slide assembly of claim 34, further comprising an optic system mountable on the slide, wherein the body comprises at least one body of the optic system. (Fig. 19)
36. An apparatus including at least one part to operate with a recoil-producing device, the at least one part including a body to couple to a mating body, in which the mating body is another body of the at least one part, a reciprocating body of the device, or another body of the device, the apparatus comprising: a rotatably-driven part including terminal ends and a length, the length including 1) a threaded section and 2) a non-threaded section including a tapered portion, the threaded section to mate with a threaded section associated with the mating body; the body including a non-threaded opening locatable over the threaded section associated with the mating body when the bodies are coupled; the non-threaded opening comprising an offset counter opening, the offset counter opening to receive the tapered portion as the rotatably-driven part is tightened, in which the body is urged relative to the mating body, as the rotatably-driven part is tightened based on contact of the tapered portion with the offset counter opening. (see remarks with regards to claim 21 above)
Claim(s) 16 and 30-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roth and Dawson as applied to claim 21 above, and further in view of Holly (US Patent 11,002,517). Roth and Dawson disclose the claimed apparatus including at least one part to operate with a recoil-producing device but does not expressly disclose the nut, however Holly does. Holly teaches the rotatably- driven part comprises a nut (456), wherein the nut comprises a sleeve nut, wherein the sleeve nut is drivable onto a threaded length of the threaded section associated with the mating part, further comprising a bolt (42) or other externally threaded part to mate with the rotatably-driven part, wherein the bolt or other externally threaded part comprises the threaded section associated with the mating part, further comprising an externally threaded fastener, wherein the threaded section of the rotatably-driven part comprises threading to mate with threading of the externally threaded fastener. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded the predictable results of providing a mounting surface that won’t strip and are corrosion-resistant as taught by Holly and there would have been a reasonable expectation of success.
Claim(s) 36 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yedor et al. (US 11,959,727) in view of Roth (US 11,788,818). Yedor et al. discloses an apparatus (1100) including at least one part to operate with a recoil-producing device, the at least one part including a body (i.e. mounting plate Figs. 14-16) to couple to a mating body (1202), in which the mating body is another body of the at least one part, a reciprocating body of the device, or another body of the device, the apparatus comprising: a rotatably-driven part (i.e. threaded fastener col. 3, lines 24-35 and lines 48-60; col. 4, lines 30-45 all describing the interaction between “sockets” and “fasteners”). Wherein the body includes one of 1) an undercut (1106) and 2) a projection (1206) to mate with the undercut; wherein in an installed state the one of the undercut and the projection is located rearwardly, or not forwardly, of the rotatably-driven part, not closer to a muzzle of the recoil- producing device than the rotatably-driven part; the one of the undercut and the projection to interlock with the other of the undercut and the projection in response to said urge (Fig. 14). Yedor discloses the claimed invention but does not expressly disclose the details of the fastener including terminal ends and a length, the length including 1) a threaded section and 2) a non-threaded section including a tapered portion, the threaded section to mate with a threaded section associated with the mating body; the body including a non-threaded opening locatable over the threaded section associated with the mating body when the bodies are coupled; the non-threaded opening comprising an offset counter opening, the offset counter opening to receive the tapered portion as the rotatably-driven part is tightened, in which the body is urged relative to the mating body, as the rotatably-driven part is tightened based on contact of the tapered portion with the offset counter opening, however Roth does. Roth teaches a fastener (522, 524) for a mounting part for a sighting device wherein the fasteners include terminal ends and a length, the length including 1) a threaded section and 2) a non-threaded section including a tapered portion, the threaded section to mate with a threaded section associated with the mating body; the body including a non-threaded opening locatable over the threaded section associated with the mating body when the bodies are coupled; the non-threaded opening comprising an offset counter opening, the offset counter opening to receive the tapered portion as the rotatably-driven part is tightened, in which the body is urged relative to the mating body, as the rotatably-driven part is tightened based on contact of the tapered portion with the offset counter opening (see, at least Fig. 16). The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within his or her technical grasp such as utilizing well-known fasteners to fasten a mounting adapter to a firearm. If this leads to the anticipated success, it is likely the product not of innovation but or ordinary skill and common sense.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE CLEMENT whose telephone number is (571)272-6884. The examiner can normally be reached M-F 10-6.
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.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 571.272.6874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE CLEMENT/Primary Examiner, Art Unit 3641
