DETAILED ACTION
Response to Arguments
Applicant's arguments filed 29 September 2025 have been fully considered but they are not persuasive.
In response to applicant’s arguments that the combination of Hamilton and Otteman does not teach every element of claim 1, 5, 10, and 21, the examiner respectfully disagrees. The applicant is referring to the amendment: “further wherein the guide surface defines a first transition and a second transition when the guide surface overlaps itself for the first time and second time, respectively”. In Col. 5, lines 63-67 of Otteman clearly teaches that the “a cam follower pin 140 of actuator 122 extends into and is guided by a spiral cam groove 142 formed in drive face 136. Rotation of cam hub 134 about its axis of rotation 144 drives actuator 122 along guide slot 128, which in turn moves movable objective lens portion 26 along longitudinal axis 14 to adjust the focus of sight 10. The size of spiral cam groove 142 determines the amount of travel of actuator 122 and objective lens portion 26. The size of spiral cam groove 142 is limited only by the diameter of drive face 136.” While Otteman only shows in Fig. 6B the guide surface overlapping itself only once, it shows space on drive fails to allow for more than 2 overlaps, and as stated “The size of spiral cam groove 142 is limited only by the diameter of drive face 136”.
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).
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, 5, 8, 10, 21, 22, and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21, 21, 5, 8, 15, 21, 22, and 21 (respectively) of U.S. Patent No. U.S. 8,919,026. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims anticipates claims 1, 2, 5, 8, 10, 21, 22, 23 of the instant application.
Claims 1, 2, 4, 5, 8, 9, 10, 14, 16, 17, 18, 19, 20, 21, 22, and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 8, 8, 9, 10, 11, 11, 6, 7, 12, 13, and 13 of U.S. Patent No. U.S. 11,940,243. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims anticipates claims 2, 4, 5, 8, 9, 10, 14, 16, 17, 18, 19, 20, 21, 22, and 23 of the instant application.
Claims 1, 2, and 4, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 3 of U.S. Patent No. U.S. 12,140,404. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims anticipates claims 1, 2, and 4 of the instant application.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-2, 4-5, 8-10, 14, and 16-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hamilton (US 2011/0061285) in view of Otteman (US 6,351,907).
Regarding claim 1, Hamilton discloses a rifle scope 10 comprising: a scope body 38 (see Fig. 1); a movable optical element 128 (see Fig. 8) defining an optical axis 44 (see Fig. 1) connected to the scope body 38 (see Fig. 8); a turret 12 having a screw 36 defining a screw axis 46 and operably connected to the optical element 126 for adjusting the optical axis in response to rotation of the screw (see Fig. 8, Par. 0046 and 0050); a stop element 18 (see Fig. 3) connected to the screw 36 (best seen in Fig. 8); the stop element 18 defining a guide surface 60 wrapping about the screw axis 46 and terminating at first 66; a cam follower element 76 connected to the body and operable to engage the guide surface 60, and to engage the first end 66, the engagement of the first end 66 defining the rotational limits of the turret (Fig. 3, Par. 0034 and 0035).
The difference between Hamilton and the claimed invention is that Hamilton does not disclose wherein the first stop surface and the second stop surface are at different radial distances from the screw axis and a second stop surface defining the rotational limits of the turret. Otteman, in a related field, teaches a guide surface 142 terminating in first and second ends at different radial distances from the screw axis 144 (see Fig. 6B, Col. 6, Lines 45-67). Otteman further teaches wherein the guide surface defines a first transition and a second transition when the guide surface overlaps itself for the first time and second time, respectively (Col. 5, lines 63-67).
It would have been obvious to one of ordinary skill in the art at the time of invention to have modified Hamilton such that the guide surface terminated in first and second ends at different radial distances from the screw axis, in view Otteman, to obtain the desired result of providing a spiral track that allows smooth and accurate adjustments.
Regarding claim 2, Hamilton further discloses wherein guide surface 60 is defined by a channel (Fig. 3, Par. 0035).
Regarding Fig. 4, The difference between Hamilton and the claimed invention is that Hamilton does not disclose wherein the guide surface includes a plurality of concentric arcs each centered on the screw axis and substantially encompassing the axis, the guide surface including a transition segment connecting one end of a first one of the arcs to an end of a second one of the arcs, such that a stepped spiral is effectively formed. Otteman teaches a plurality of concentric arcs each centered on the screw axis 144 and substantially encompassing the axis, the guide surface 142 including a transition segment connecting one end of a first one of the arcs to an end of a second one of the arc, such that a stepped spiral is effectively formed (as shown in Fig. 6B).
It would have been obvious to one of ordinary skill in the art at the time of invention to have modified Hamilton such that the guide surface terminated in first and second ends at different radial distances from the screw axis, in view Otteman, to obtain the desired result of providing a spiral track that allows smooth and accurate adjustments.
Regarding claim 5 and 10, Hamilton further discloses the turret 12 having an indexing portion 20 frictionally engaged (via element 78 as shown in Fig 8, see Par. 0044) with the stop surfaces. The difference between Hamilton and the claimed invention is that Hamilton does not disclose a spiral cam mechanism.
Otteman teaches a spiral cam mechanism 134 comprising a stop element 142 engaged thereto; the spiral cam mechanism defining a first stop surface positioned for engagement by the turret stop element 140 to limit rotation of the turret, such that the position at which the stop element engages the first stop surface defines a zero position of the screw and the movable optical element; a second stop surface positioned for engagement by the turret stop element 140 to limit rotation of the turret, such that the position at which the stop element engages the second stop surface defines a maximum point of displacement of the screw and the moveable optical element; wherein the first stop surface and second stop surface are connected by a channel 142; wherein the channel overlaps itself at least partially (stepped spiral; See Fig. 5 and 6B). Applicant should note that both ends of channel 142 define the first and second stop surfaces.
It would have been obvious to one of ordinary skill in the art at the time of invention to have modified Hamilton such that the guide surface terminated in first and second ends at different radial distances from the screw axis, in view Otteman, to obtain the desired result of providing a spiral track that allows smooth and accurate adjustments.
Regarding claim 8 and 17, Hamilton further discloses wherein the stop element is a cam pin 76 (fig. 5, Par. 0041).
Regarding claim 9 and 18, Hamilton further discloses an elevation indicator 106 connected to the cam pin 76, wherein the elevation indicator moves outwards from the turret each time the turret undergoes a full revolution between the first stop surface and the second stop surface. Applicant should note that the cap 106 moves upward and downward which can be reasonably be construed as moving outwards from the turret.
Regarding claim 14, Hamilton further discloses indicia 20 on the outer knob, wherein each indicium corresponds to a click stop position (Par. 0030 and 0044).
Regarding claim 16, see above rejection of claims 5 and 4 respectively.
Regarding claims 19 and 20, Hamilton disclose wherein the turret 12 is an elevation turret (Par. 0030). Hamilton does not explicitly disclose wherein the turret is a windage turret. However, Hamilton teaches that it is well known to provide a windage turret 48 (Fig. 1 and Par. 0030). Applicant should note that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case the adjustable turrets are interchangeable.
It would have been obvious to one of ordinary skill in the art at the time of invention to have modified Hamilton, such that the windage turret had similar structure to the elevation turret, in view Hamilton, to obtain a variable adjustable turret.
Claims 21 and 22 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the combination of Hamilton and Otteman, as applied to claims 1-20 above, and further in view of Windauer (US 8,516,736)
Regarding claims 21 and 22, the difference between the combination of Hamilton and Otteman and the claimed invention is that the combination of Hamilton and Otteman does not teach wherein the outer knob is operably connected to a first set of teeth and to the turret such that the outer knob is movable between a locked position wherein the turret cannot be rotated and an unlocked position wherein the turret can be rotated and where the spiral cam mechanism has a stop element engaged thereto that is operably connected to a second set of teeth; and wherein the outer knob is in a locked position when the first set of teeth are engaged with the second set of teeth and the outer knob is in an unlocked position when the first set of teeth are disengaged from the second set of teeth.
Windauer teaches outer knob is operably connected to a first set of teeth (claim 4) and to the turret such that the outer knob 107 is movable between a locked position (see Fig. 1) wherein the turret cannot be rotated and an unlocked position (see Fig. 2) wherein the turret can be rotated and where the spiral cam mechanism 102 that is operably connected (via spur ring 104) to a second set of teeth 106 (splines; Fig. 2); and wherein the outer knob is in a locked position when the first set of teeth are engaged with the second set of teeth and the outer knob is in an unlocked position when the first set of teeth are disengaged from the second set of teeth (claim 4, Fig. 1 and 2; Col. 4, lines 18-43).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have modified the combination of Hamilton and Otteman such that the outer knob is operably connected to a first set of teeth and to the turret such that the outer knob is movable between a locked position wherein the turret cannot be rotated and an unlocked position wherein the turret can be rotated and where the spiral cam mechanism has a stop element engaged thereto that is operably connected to a second set of teeth; and wherein the outer knob is in a locked position when the first set of teeth are engaged with the second set of teeth and the outer knob is in an unlocked position when the first set of teeth are disengaged from the second set of teeth, in view of Windauer, to obtain the desired result of preventing an adjustment knob from rotating until a change in adjustment is desired by an operator.
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 JOSHUA E FREEMAN whose telephone number is (303)297-4269. The examiner can normally be reached 9AM - 5PM MST M-F.
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/JOSHUA E FREEMAN/Primary Examiner, Art Unit 3641