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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10 September 2026 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “recording device” in claims 4, 5, and 21.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 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.
Claims 4, 5, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Bell (2016/0069644) in view of Gordon (7194204), further in view of Lacorte (2017/0175081).
In reference to claim 4, Bell discloses a system comprising:
a rangefinder (paragraph 285, “rangefinder”);
a scope operatively coupled to the rangefinder (figures, e.g. figure 14C-2; paragraph 285, “scope”)
wherein the rangefinder is configured to automatically, continuously determine a distance to an object and provide the distance information to the scope, wherein the distance information changes as the distance to a target changes (paragraphs 251 and 285: a user aims at a target and the system automatically determines distance to the target, and updates to the determined distance can be made continuously); and
wherein the scope is configured to automatically adjust focus based on the determined distance to the object provided by the rangefinder and automatically adjust focus and zoom based on the distance information, i.e., changing distance information (paragraph 285).
Thus, Bell discloses the claimed invention, except for wherein the scope constitutes a recording device, wherein the recording device is capable of increasing a field of view as claimed, and wherein the rangefinder is an infrared positioning device. Further, Bell fails to disclose a button or a trigger, wherein the button or the trigger is configured to be held down, thereby causing the rangefinder to effect continuous determinations of the changes to the distance to the object and to send the changing distance information to the recording device.
Regarding the scope being a recording device, Gordon teaches that it is known to form a scope as a recording device (i.e., a fully integrated scope/camera), in order to allow a user to capture still images and video of the field of view of the scope (abstract; column 6, second paragraph, element 1). Thus, it would have been obvious to a person of ordinary skill in the art to form the scope of Bell as a recording device, in order to allow a user to capture still images and video of the field of view of the scope.
Regarding the functionality to increase a field of view, Bell fails to explicitly disclose automatically increasing and decreasing a field of view angle, as claimed. However, it is noted that a field of view can be changed via zooming, and Bell discloses a programmable auto-zoom function (paragraph 285). Further, the examiner takes Official Notice that it is well-known to configure auto-zoom functions such that they automatically increase and decrease field of view angles (i.e., field of view) as claimed, in order to keep an object in full view no matter the zoom (in or out) that the auto-zoom has assumed. Thus, it would have been obvious to a person of ordinary skill in the art to provide the system made obvious by Bell in view of Gordon with the functionality to automatically increase and decrease a field of view angle as claimed, in order to keep an object in full view no matter the zoom (in or out) that the auto-zoom has assumed.
Regarding the infrared positioning device, Bell discloses that the rangefinder transmits a beam of energy but doesn’t specify infrared energy (paragraph 196). However, the examiner takes Official Notice it is well-known to form a rangefinder as an infrared range finder, in order to render the beam of energy invisible to the naked eye. Thus, it would have been obvious to a person of ordinary skill in the art to form the rangefinder of Bell in view of Gordon as an infrared rangefinder, in order to render the beam of energy invisible to the naked eye.
Regarding the button or trigger of the rangefinder, Lacorte teaches that it is known to provide a rangefinder with a trigger that causes the rangefinder to continuously determine a distance to a target when pressed, in order to allow for dynamic ranging of a target that provides up-to-the-moment range data for the target, e.g., if the target is moving, the range will be changing (paragraph 19). In other words, Lacorte teaches it is known to provide a rangefinder with a trigger, wherein the trigger is configured to be held down, thereby causing the rangefinder to continuously determine changes to the distance to the object.
Thus, it would have been obvious to a person of ordinary skill in the art to provide the rangefinder of Bell with a trigger that causes the rangefinder to continuously determine the distance to a target when pressed, in order to allow for dynamic ranging of a target that provides up-to-the-moment range data for the target, e.g., if the target is moving, the range will be changing (or if the target is large, portions of said target may be disposed at different ranges). Further, as set forth above, Bell discloses that the rangefinder sends the distance information to the scope, and the proposed modification relative to Gordon renders the scope as a recording device, wherein the recording device can adjust the focus and an angle of field of view in view of changing distance information.
In reference to claim 5, Bell in view of Gordon makes obvious the claimed invention, as set forth above (also see Bell, paragraph 196).
In reference to claim 21, Bell in view of Gordon makes obvious the claimed invention (Bell, paragraphs 172 and 203, “wired-based link or a wireless link,” “wireless links”).
Response to Arguments
Applicant's arguments filed 10 September 2026 have been fully considered, but they are not persuasive. Applicant’s arguments with respect to claim(s) 4, 5, and 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 4, 5, and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18 and 20 of copending Application No. 19/022,547 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims set forth each and every feature of the instant application claims, albeit more specifically. Thus, the invention of the reference application claims is a species of the more generic invention of the instant application claims. As such, the invention of the reference application claims “anticipates” the invention instant application claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL J KLEIN whose telephone number is (571)272-8229. The examiner can normally be reached 11:30am-8pm.
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GABRIEL J. KLEIN
Examiner
Art Unit 3641
/Gabriel J. Klein/Primary Examiner, Art Unit 3641
