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 RCE filed on 19 November 2025.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 19 November 2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “…turning on power to the optic from a battery and restoring last used display settings for the optic…”
Claim 13 recites “…activating a full power mode of circuitry of the optic from a battery utilizing the last used settings…”
Claim 15 recites “…and wherein the last used settings are restored to the optic…”
Claim 16 recites “…battery to power the circuitry of the optic utilizing last used settings when removed…”
The limitations regarding restoring and utilizing the “last used display settings” does not appear to be enabled in the Specification. Paragraph 73 of the Specification appears to enable the use of various forms of memory for an optic, but the Examiner can find no disclosure related to “last used settings” or “last used display settings” after powering up the optic. This limitation appears to be new matter. Applicant is required to cancel the new matter in the reply to this Office Action.
Claim 2 recites “…magnet is integrated in a mounting interface.” Is this a separate mounting interface in or on the holster? If so it does not appear to be enabled by the Specification.
Claim 3 recites “…magnet is integrated in a carrying device for the gun.” Claim 1 requires a magnet disposed in a holster. It is not enabled in the Specification to have a holster as well as a second carrying device for both the holster and gun.
Claim 4 recites the limitation “…magnet is connected to a holster after manufacturing.” The limitation “after manufacturing” does not appear to be enabled by the Specification, and appears to be new matter. Applicant is required to cancel the new matter in the reply to this Office Action.
Claim 14 recites “…magnet is integrated in a holster or carrying device for the gun.” Claim 13 specifically locates the magnet in a holster. It does not appear to be enabled to have a secondary carrying device within the holster.
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 1-20 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.
Claim 1 recites “a battery” two times. Are there two separate batteries, one for powering down and one for turning on power?
Claim 1 recites “…magnet aligns with the magnetic sensor of the…” There is insufficient antecedent basis for the magnetic sensor in the claim.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: at the beginning of claim 1 the structures necessary to perform the method steps appear to be missing. These include a magnetic sensor, a control board or circuitry to control operation of the sight capable of detecting the magnetic field and performing functions.
Claim 2 recites “…magnet is integrated in a mounting interface.” Is this a separate mounting interface inside or on the holster? This claim is unclear and need clarification for the meets and bounds to be properly understood.
Claim 3 recites the “a carrying device for the gun”. Is this a separate carrying device from the holster previously claimed? This claim is unclear and needs clarification for the meets and bounds to be properly understood.
Claim 8 recites “…magnetic field is detected utilizing one or more sensors including the magnetic sensor.” This limitation appears to open the possibility for the magnetic field to be detected with sensors other than the magnetic sensor with the word “including”. It is unclear what other sensor could detect a magnetic field. Clarification is required.
Claim 13 recites “…activating a full power mode of circuitry of the optic from a battery… …deactivating the full power mode to the optic from a battery of the optic…” Are these two separate batteries? Clarification is required.
Claim 14 recites “…magnet is integrated in a holster or carrying device for the gun.” Claim 13 specifically locates the magnet in a holster. Is another carrying device required within the holster?
Claim 16 recites “…by a magnet of the holders that receives the gun…” The holders lack antecedent basis in the claim.
Claim 18 recites “the holster” and lacks antecedent basis in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3, 14 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2, 3 appear to try and broaden the scope of claim 1. Claim 1 discloses a magnet is disposed in a holster that receives the gun. Claims 2 and 3 recite a mounting interface and carrying device. These limitations fail to further limit holster, as is already claimed. Claim 14 repeats the limitation of the magnet integrated in a holster already present in claim 13, and further has an “or” limitation of “or carrying device for the gun”. However, holster is already positively claimed structure, carrying device appears to be a broader term, not proper for a dependent claim to broaden the scope of the independent. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 uses both “gun” and “firearm”, it appears gun is the term in the rest of the claims.
Claim 16 recites “…magnetic sensor cause(s) the battery to power…”, the word “cause” is missing the “s” at the end.
Claim 16 recites “holders” instead of “holster”, as in other claims. However, holders could also be used, so clarification is required. For this examination “holders” will be used as it appears to be a fitting term.
Claim 20 should say “…sight is removably attached…”
Appropriate correction is required.
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, 4-20, 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 gun optic with a magnetic sensor and a holster with a magnet for the method steps as claimed (see figures at paragraph 23). For the limitation “restoring last used display settings”, maintaining a zero of the optic, such that when the optic powers on and the dot is displayed in the same zero location, that is considered restoring the last used setting. However, if Applicant disagrees, the following is presented:
Collin teaches a similar gun optic (see fig.1) in which a controller (circuitry) is utilized to adjust brightness display levels and also to remember the previous setting of the optic (at least paragraph 47). 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 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, York 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, York 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 19 November 2025 have been fully considered but they are not persuasive. Applicant argues the prior art does not teach or disclose an optic that restores the last used display settings upon powering on after removing a magnetic field. It is unclear exactly what “display settings” the Applicant is referring to, but the Examiner notes that if the optic powers on and displays a dot, that could be considered a display setting. If the dot is in the same zero location, that could also be considered to be a retained display setting. A teaching reference that clearly teaches retaining display settings in Collin et al. is presented above.
Further, after a careful review of the Specification, it appears the Applicant does not have proper enabling support for retaining display settings upon powering on the optic. For example, the word “restore” or “restoring” is not found within the Specification. Several paragraphs mention memory to store settings (11, 51, 66, 73, 85, 86, 96, 105); however, the Examiner cannot find specifically restoring the previously stored and used settings upon powering on. Saving a setting in memory is not the same limitation as restoring to a specific saved setting upon powering on. This limitation appears to be new matter.
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.
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.
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/JOHN COOPER/Primary Examiner, Art Unit 3641