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 .
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).
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 determine a distance to an object and provide the distance information to the scope; 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 (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.
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 that it is well-known to form a rangefinder 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.
In reference to claim 5, Bell in view of Gordon makes obvious the claimed invention, as set forth above.
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 06 April 2026 have been fully considered but they are not persuasive.
Specifically, Applicant argues that Bell does not disclose a recording device. The examiner agrees that Bell does not disclose a recording device. However, the examiner does not rely upon Bell to teach or disclose a recording device. The examiner relies upon Bell to disclose a scope having a rangefinder and distance-based autozoom and autofocus.
Further, the examiner relies upon Gordon to teach that it is known to form a scope, similar to that of Bell, as a recording device, i.e., a fully integrated scope and camera (see Gordon, element 1), in order to allow a user to record images and/or video of a target scene. Thus, the examiner concludes that is would be obvious to form the scope of Bell as a recording device, by fully integrating the scope with a camera, in order to allow a user to record images and/or video of a target scene.
Thus, each and every limitation of claim 1 is taught by the prior art, albeit not in a single reference. However, the examiner has clearly addressed each and every limitation, and pointed to the relevant portions of Bell and Gordon. Fully integrating the scope of Bell with a camera, as taught by Gordon, would not somehow remove the distance-based autozoom and autofocus of Bell, as seemingly argued by Applicant. The distance-based autozoom and autofocus provide desired image characteristics for a target scene, whereas integrating a camera into the scope of Bell forms said scope as a recording device capable of recording images and/or video of said target scene.
Once the scope of Bell is fully integrated with a camera, as proposed, the resultant combination reasonably meets the term “recording device.” In fact, Gordon specifically labels the fully integrated scope/camera combination as a “photographic firearm apparatus,” which certainly constitutes a “recording device.” Thus, the examiner asserts that the proposed modification of Bell in view of Gordon makes obvious the claimed invention, wherein the motivation to modify lies in the increased functionality (e.g., video capture) provided by a camera fully integrated into the scope to form said scope as a recording device.
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 and 5 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
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 GABRIEL J KLEIN whose telephone number is (571)272-8229. The examiner can normally be reached 11:30am-8pm.
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.
GABRIEL J. KLEIN
Examiner
Art Unit 3641
/Gabriel J. Klein/Primary Examiner, Art Unit 3641
Prosecution Insights