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 . This action is in response to Application #18/424,163 and response filed on 15 May 2026.
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(s) 1-20, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2020/0232759 to York et al (York) in view of US Patent Application Publication 2016/0327365 to Collin et al (Collin).
Regarding Claims 1, 13, 15-16, York discloses a method and optical sight for a gun comprising:
Providing a housing including a base, first and second supports, top support, optical element (see fig.2);
a battery configured to power circuitry associated with the optical element (see fig.1);
a magnetic sensor integrated with the housing, wherein the magnetic sensor is configured to detect a magnetic field generated by a magnet of a holster that receives the gun, wherein the magnetic sensor causes the battery to power the circuitry of the optic when the optic is removed from proximity to the magnetic field (see at least paragraph 23).
York does not specifically disclose: a memory storing display settings, and the magnetic sensor causes the battery to power the circuitry of the optic utilizing: display stored in the memory.
However, Collin teaches a similar gun optic (see fig.1) in which a controller (circuitry) is utilized to adjust brightness display levels (at least paragraphs 44, 47) and also to remember the previous setting of the optic (at least paragraph 47) when powered off/on. York discloses the magnetic switch to power the sight on or off, and Collin teaches a memory storing display settings so as to keep a user settings when powering the device on or off. It would have been obvious to one having ordinary skill to utilize this teaching and remember the display settings as taught by Collin such that a user can use the gun and sight combination without having to adjust a display every time the optic is powered on.
Regarding Claims 2-3, please see York paragraph 23.
Regarding Claim 4, see York paragraph 23. Further, it has been held the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding Claims 5-9, 11-12, 14, 17-19, see York at least paragraph 23 and figures.
Regarding Claim 10, the combination of York and Collin does not specifically disclose the magnet attached to a lanyard and the gun is a handgun. However, locating the magnet in any location that will activate and deactivate the sight as disclosed would have been obvious to one having ordinary skill. York teaches locating the magnets in a holster, which typically refers to how one carries a handgun, so utilizing the sight on a handgun would have been obvious to one having ordinary skill.
Regarding Claim 20, the combination of York and Collin does not specifically disclose the gun is a handgun, and the sight is removably attached. However, removable sights are notoriously old and well-known in the art, and York teaches locating the magnets in a holster, which typically refers to how one carries a handgun, so utilizing a removable sight on a handgun would have been obvious to one having ordinary skill.
Response to Arguments
Applicant's arguments filed 16 May 2026 have been fully considered but they are not persuasive. Applicant argues the prior art combination of York and Collin does not teach or disclose an optic that restores the last used display settings from a memory of the particular triggering condition of removal from a magnetic field. Applicant argues the combination is impermissible hindsight. The Examiner respectfully disagrees.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's arguments, 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).
In this case, York teaches powering the optic on/off utilizing a magnetic switch and magnetic field in order to save battery life if the optic is left powered on. This way, when the firearm is holstered or put away, the presence of the magnetic field powers the optic down to conserve battery. York is silent as to the specific memory or display components of the invention. However, Collin teaches a similar sight and specifically teaches utilizing a memory function to retain display settings for a user such that a user does not have to manually adjust display settings every time the optic is to be used. The fact that Collin uses a known switch to power the device on or off does not preclude one having ordinary skill from utilizing the teaching of a memory to retain settings to apply to similar optics in the art. Utilizing art within the same field to disclose certain features is considered reasonable to one having ordinary skill. One having ordinary skill would naturally recognize the benefit of memory maintaining settings of a user, and apply this teaching to any display adjustable optic regardless of the method of powering the optic on/off.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached PTO-892 for pertinent art.
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 JOHN D COOPER whose telephone number is (571)270-3998. The examiner can normally be reached M-F: 7:30 - 4:30 MST.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN COOPER/Primary Examiner, Art Unit 3641
Prosecution Insights