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 .
Response to Arguments
Applicant's arguments filed 4/12/26 have been fully considered but they are not persuasive. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. Applicant fails to clearly point out how the amendments structurally differentiate the applicant’s claimed product from the prior art product. Applicant contends that “Nasef is structurally and conceptually limited to a single operational paradigm. We claim now claim [sic] at least two (or more) potential distinct modes of operation.” Applicant’s arguments that “the prior art does not teach how to transition between these fundamentally different operation methods” are essentially directed to the intended use of the product. The [a)statements of intended use or field of use, b)"adapted to" or "adapted for" clauses, c) "wherein" clauses, or d) "whereby"] clauses are essentially method limitations or statements of intended or desired use. Thus, these claims as well as other statements of intended use do not serve to patentably distinguish the claimed structure over that of the reference. See In re Pearson, 181 USPQ 641; In re Yanush, 177 USPQ 705; In re Finsterwalder, 168 USPQ 530; In re Casey, 512 USPQ 235; In re Otto, 136 USPQ 458; Ex parte Masham, 2 USPQ 2nd 1647.
See MPEP § 2114 which states:
A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2nd 1647
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than functions. In re Danly, 120 USPQ 528, 531.
Apparatus claims cover what a device is not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525, 1528.
As set forth in MPEP § 2115, a recitation in a claim to the material or article worked upon does not serve to limit an apparatus claim.
Furthermore, the amended claims recite “means for” (apparently attempting to invoke 112(f), yet the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function. There is nothing in the specification that discloses “modes of operation” or “means for achieving” visual alignment in such modes of operation. It is noted that IF the recited structure inherently allows the claimed “means for” and “distinct modes” then the structure of Nasef would also inherently allow for the claimed “means for” and “distinct modes” since there is nothing structurally different between the claims and the product disclosed by Nasef.
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 1-11 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. The device comprising means for achieving visual alignment in at least two distinct modes of operation was not described in the specification at the time the application was filed. The specification as filed does not disclose any “modes of operation” or what would constitute “means for” achieving visual alignment in such modes.
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.
Claim limitation “means for” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is nothing in the specification that describes “modes of operation” or what corresponding structure, material, or acts would perform the means for “achieving visual alignment” in those modes of operation. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 8 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Nasef (US 6,711,846). Nasef discloses an aiming device for a firearm, comprising: a front sight (30); and a rear sight (20), wherein: at least one point or surface of alignment on the front sight is visually aligned with a corresponding point or surface of alignment on rear sight; the rear sight is designed in such a way as to complete the partial shape of front sight, so that when viewed together in alignment, the front sight and the rear sight form a recognizable shape; and the front sight visually protrudes above the rear sight when sights are directly aligned with aimer’s eye (Fig. 4c) and the device comprises means for achieving visual alignment in at least two distinct modes of operation, wherein each mode is defined by utilizing a unique, non-overlapping subset of corresponding alignment reference points or surfaces (i.e. the left side and/or the right side of the front sight meeting with the left side and/or the right side contrasting marking of the rear sight) on the front sight and the rear sight. (Applicant has stated that the amended claims recite “different operational methods”): the [a)statements of intended use or field of use, b)"adapted to" or "adapted for" clauses, c) "wherein" clauses, or d) "whereby"] clauses are essentially method limitations or statements of intended or desired use. Thus, these claims as well as other statements of intended use do not serve to patentably distinguish the claimed structure over that of the reference. See In re Pearson, 181 USPQ 641; In re Yanush, 177 USPQ 705; In re Finsterwalder, 168 USPQ 530; In re Casey, 512 USPQ 235; In re Otto, 136 USPQ 458; Ex parte Masham, 2 USPQ 2nd 1647.
See MPEP § 2114 which states:
A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2nd 1647
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than functions. In re Danly, 120 USPQ 528, 531.
Apparatus claims cover what a device is not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525, 1528.
As set forth in MPEP § 2115, a recitation in a claim to the material or article worked upon does not serve to limit an apparatus claim.
2. The aiming device for a firearm of claim 1, wherein the recognizable shape is substantially a triangle. (Fig. 4c)
3. The aiming device for a firearm of claim 1, wherein the front sight has five clearly defined external visual boundaries. (Fig. 4b)
4. The aiming device for a firearm of claim 1, wherein the rear sight has five or more clearly defined external visual boundaries. (Fig. 4a)
5. The aiming device for a firearm of claim 1, further comprising a visual surface on the rear sight. (Figs. 4a, 9, 10)
8. The aiming device for a firearm of claim 5, wherein the visual surface is painted or otherwise colored. (col. 3, lines 25-61)
Claim(s) 1-5 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Stein (US 6,360,471). Stein discloses an aiming device for a firearm, comprising: a front sight (18, 20, 24); and a rear sight (22), wherein: at least one point or surface of alignment on the front sight is visually aligned with a corresponding point or surface of alignment on rear sight; the rear sight is designed in such a way as to complete the partial shape of front sight, so that when viewed together in alignment, the front sight and the rear sight form a recognizable shape; and the front sight visually protrudes above the rear sight when sights are directly aligned with aimer’s eye (Fig. 3-9) and the device comprises means for achieving visual alignment in at least two distinct modes of operation, wherein each mode is defined by utilizing a unique, non-overlapping subset of corresponding alignment reference points or surfaces (i.e. color and/or shape; also see col. 5, lines 33-63) on the front sight and the rear sight. (Applicant has stated that the amended claims recite “different operational methods”): the [a)statements of intended use or field of use, b)"adapted to" or "adapted for" clauses, c) "wherein" clauses, or d) "whereby"] clauses are essentially method limitations or statements of intended or desired use. Thus, these claims as well as other statements of intended use do not serve to patentably distinguish the claimed structure over that of the reference. See In re Pearson, 181 USPQ 641; In re Yanush, 177 USPQ 705; In re Finsterwalder, 168 USPQ 530; In re Casey, 512 USPQ 235; In re Otto, 136 USPQ 458; Ex parte Masham, 2 USPQ 2nd 1647.
See MPEP § 2114 which states:
A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2nd 1647
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than functions. In re Danly, 120 USPQ 528, 531.
Apparatus claims cover what a device is not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525, 1528.
As set forth in MPEP § 2115, a recitation in a claim to the material or article worked upon does not serve to limit an apparatus claim.
2. The aiming device for a firearm of claim 1, wherein the recognizable shape is substantially a triangle. (col. 4, lines 45-50)
3. The aiming device for a firearm of claim 1, wherein the front sight has five clearly defined external visual boundaries. (Fig. 10)
4. The aiming device for a firearm of claim 1, wherein the rear sight has five or more clearly defined external visual boundaries. (Fig. 10)
5. The aiming device for a firearm of claim 1, further comprising a visual surface on the rear sight. (Fig. 10)
8. The aiming device for a firearm of claim 5, wherein the visual surface is painted or otherwise colored. (col. 6, lines 39)
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) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nasef as applied to claims 1 and 5 above and further in view of Fisher et al. (US 5,359,800). Nasef discloses the claimed invention but doesn’t expressly disclose the visual surface includes a brightly colored replaceable insert wherein the insert is glued into place, however Fisher et al. does. Fisher et al. teaches an aiming device for a firearm comprising a visual surface on a rear sight wherein the visual surface includes a brightly colored replaceable insert (26, 28) that is glued into place (col. 24, lines 24-65). All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded the predictable results of allowing the sights to be easily seen in both daylight and night time and there would have been a reasonable expectation of success.
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stein as applied to claims 1 and 5 above and further in view of Fisher et al. (US 5,359,800). Stein discloses the claimed invention including the sights being fabricated from light-transmitting or translucent material or colored in any manner to improve visibility (col. 6, lines 40-50) but doesn’t expressly disclose the visual surface includes a replaceable insert wherein the insert is glued into place, however Fisher et al. does. Fisher et al. teaches an aiming device for a firearm comprising a visual surface on a rear sight wherein the visual surface includes a brightly colored replaceable insert (26, 28) that is glued into place (col. 24, lines 24-65). All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded the predictable results of allowing the colored inserts to be changed for differing uses such as daylight or dusk preferences and there would have been a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 MICHELLE CLEMENT whose telephone number is (571)272-6884. The examiner can normally be reached M-F 10-6.
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.
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/MICHELLE CLEMENT/Primary Examiner, Art Unit 3641
