DETAILED ACTION
Response to Amendment
Claims 1, 3-9, and 12-20 are pending. Claims 2 and 10-11 have been canceled. The following is a detailed analysis of the amendments to the claims.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 12 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 12 depends on canceled claim 10. Claim 12 further recites the limitation "the backplate" in line 3. There is insufficient antecedent basis for this limitation in the claim.
The claim will be further treated on the merits as best understood only.
Claim Rejections - 35 USC § 102
Claims 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0314635 to Koscielniak.
Re: claim 18, Koscielniak discloses the claimed invention including a firearm, ¶ [0018], comprising: a frame (see 300, e.g., Fig. 5); a bolt assembly 304, e.g., Fig. 4, operable* (*see below) to reciprocate with respect to the frame between a forward battery position and a rearward recoil position (each demonstrated by arrow 318: see also ¶ [0040]); and the bolt assembly including a hydraulic damper assembly, inter alia, 100, e.g., Fig. 1, defining a damper axis 110 and having a movable protrusion, inter alia, 124, e.g., Fig. 2, coaxial with the damper axis (shown/reasonably inferred).
*With respect to being operable, it has been held that the recitation that an element is “capable of” performing a function, here, capable of operating, for example, is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchinson, 69 USPQ 138.
Re: claim 19, Koscielniak further discloses wherein the moveable protrusion is a piston, ¶ [0029].
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.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Koscielniak.
Re: claim 20, Koscielniak discloses the claimed invention as applied above including wherein the hydraulic damper defines a cylindrical passage, ¶¶ [0028], [0033], receiving the moveable protrusion (shown), and the bolt assembly defining a passage (that receiving the moveable protrusion when such includes pivoting assembly 316), except for the bolt assembly defining a cylindrical passage receiving such.
It has been held that the configuration of the claimed element was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP § 2144.04(IV)(B). Here, Koscielniak fairly discloses the bolt assembly receiving the moveable protrusion. Thus, the shape/configuration of either cannot be deemed significant, provided such meet the claimed subject matter.
Allowable Subject Matter
Claims 1, 3-9, and 13-17 have been allowed.
Claim 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Reasons for allowance to be included in a future action if necessary.
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.
Any inquiry concerning this communication should be directed to Bret Hayes at telephone number (571) 272 – 6902, fax number (571) 273-6902, or email address bret.hayes@uspto.gov, which is preferred, especially for requesting interviews, general questions, etc. Note, however, that return correspondence cannot be made in the event that information subject to the confidentiality requirement as set forth in 35 U.S.C. § 122 has been included. See MPEP §§ 502.03 and 713.01, I, regarding email communications. The examiner can normally be reached Mondays through Fridays from 5:30 AM to 1:30 PM, Eastern.
The Central FAX Number is 571-273-8300.
If attempts to contact the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers, can be reached at (571) 272 – 6874.
/Bret Hayes/
Primary Examiner, Art Unit 3641
1-Mar-25