DETAILED ACTION
This is a first action reissue examination of U.S. Patent No. 11,306,984 B2 (hereafter “the ‘984 patent” and equivalent) addressing the filing 15 April 2024.
The following is the status of the claim under current review:
Claims 1-40 are pending and examined. Of those:
Claims 1, 2, 4-6, 8, 9, 11, 13 and 14 are as patented
Claims 3, 7, 10 and 12 are amended
Claims 15-40 are new
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 .
Original Disclosure - Definition
The present application is a reissue of US Patent No. 11,306,984, which issued from App. No. 16/808,115 (hereafter “the ‘115 application” and equivalent) having a filing date of 03 March 2020. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘115 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the record indicates the window for the 3.5-year maintenance fee for the underlying patent is open. It opened 19 April 2025. The window for the surcharge begins 21 October 2025 and the last day to pay the 3.5-year maintenance fee is 20 April 2026.
Information Disclosure Statement
The Information Disclosure Statement dated 15 April 2024, is entered and considered.
Terminal Disclaimer
Review of the file notes that a Terminal Disclaimer was filed 15 April 2024. The underlying application, 16/808115, also has a Terminal Disclaimer filed and approved 04 December 2021, which addresses the same patent number: U.S. Patent 10,612,870. Please see MPEP 1490(VI)(B) which notes that a terminal disclaimer is not required in this instance with the relevant portion reproduced below:
Reissue applications: Where a terminal disclaimer was filed and approved in an original application, a copy of that terminal disclaimer is not required to be filed by applicant in the reissue application.
Signature Matter - Consent of Assignee and Statement under 37 CFR 3.73(c)
The Consent of Assignee and Statement under 37 CFR 3.73(c), both submitted 15 April 2024, are objected to because the signature does not comply with the requirements under 37 CFR 1.4(d). The signature of Sheehan Hsu, while cursive, appears to be mechanically produced on these documents and not handwritten. Please see 37 CFR 1.4(d) for the requirements for a proper signature. If the signatures are indeed handwritten, please provide a statement on the record in the response to this effect.
35 USC §251
The following is a quotation of 35 USC §251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Claim Rejections – Improper Oath/Declaration
Claims 1-40 are rejected under this heading because the Oath/Declaration submitted 15 April 2024, is improper for the following:
The signature of Sheehan Hsu does not comply with the requirements under 37 CFR 1.4(d). See above as this is the same issue as with the Consent of Assignee and Statement under 3.73(c).
The checkboxes regarding the specification (see page 1 of 2) appear to be improperly completed as the blanks regarding the filing and application number are not complete.
Claim Rejection – 35 USC 251 Recapture:
Claims 15, 17-22 and 24-40 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Step 1:
Independent claims 15, 22 and 31 and thereby dependent claims 17-21, 24-30 and 32-40 are broader than patented independent claims 1, 5, 9, and patented dependent claims 2-4, 6-8 and 10-14. Independent claims 15 and 22 do not require that the claimed integral protrusion extends above the upper plane surface of the body as in claims 1 and 5, and claim 31 does not require the web that divides the upwardly open elongated channel of claim 9.
Therefore step 1 of the three-step test is met for independent claims 15, 22 and 31 and thereby dependent claims 17-22, 24-30 and 32-40.
Step 2:
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘984 patent (being application no. 16/808,115), claims 1-20, with claims 1, 11 and 15 being independent, were originally presented (see claims presented 03 March 2020.) The Examiner rejected Claims 1-3, 9, 11-13 and 15-20 citing art1, and claims 4-8, 10 and 14 were rejected under 35 USC 112(b) but otherwise allowable with respect to art2. Applicant responded 06 July 2021, by cancelling claims 1-20 and presented new claims 21-34, with claims 21, 25 and 29 being independent claims and 22-24, 26-28 and 30-34 being dependent. The independent claims incorporated the language at issue which was not previously presented. On 04 August 2021, a Final Office Action was mailed rejecting claims 21, 23 25 and 27 under non-statutory double patenting; claims 26 and 27 were rejected under 35 USC 112(b); claims 22, 24, 26 and 28 were rejected as being dependent from a rejected claim; and claims 29-34 were indicated as allowable.3 A Terminal Disclaimer was filed and approved 04 December 2021, and a Notice of Allowance was mailed 21 December 2021.
Therefore, the Patent Owner added independent claim 21, 25 and 29 (renumbered to claims 1, 5 and 9, respectively), and included language directed to the integral protrusion that extends above the upper surface of the body (claims 1 and 5) and language directed to the web that divides the upwardly open elongated channel (claim 9). Therefore, the newly presented claims must include the limitations of claims 1, 5 and/or 9. New claims 15, 22 and 31 fail to respectfully disclose these features.
Therefore, the language addressed above is directed to limitations which are considered surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Claim 21, 25 and 29 are being broadened to omit the surrendered subject matter.
Therefore step 2 of the three-part test is met.
Step 3:
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
Therefore, the third step of the analysis does not need to be performed for claim 21, 25 and 29 as language is not provided to narrow features relative to the subject matter.
Therefore, independent claims 15, 22 and 31 and thereby dependent claims 17-21, 24-30 and 32-40 improperly recapture surrendered subject matter.
Claims 16 and 23 are NOT rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. The claims incorporate the language removed from Claims 15 and 22, respectively, which were removed from the respective independent claims and resulted in the recapture.
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) 1-9, 11-34 and 36-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bruhns (U.S. Patent 9,453,702 B2). Below is a reproduction of the presented claims with the examiner’s comments in bolds italics.
Claim 1: Bruhns discloses A pistol frame workpiece for modification to become a pistol frame configured to receive a slide, the workpiece comprising:
a body (Fig. 3: 200) having a grip (202), a trigger guard (216), and a forward frame portion (see annotated Fig. 3 from Bruhns below) extending forward of the grip;
the body defining an upper plane surface (220) facing away from the grip and configured to be proximate to a lower surface of the slide (as would be the result when the slide is incorporated);
a receptacle defined by the body and configured to receive a rail component (as written, the rail component is not positively claimed; as a result, the examiner interprets the language as met using the broadest reasonable interpretation in light of applicant’s specification) having upper rail elements configured to engage the slide; and
the body including an integral protrusion (see First Annotated Fig. 3, below) protruding above the upper plane surface of the body adjacent the receptacle (as shown) and configured to prevent insertion of the rail component into the receptacle (functional language fully capable of being met by the prior art).
[AltContent: arrow][AltContent: arrow][AltContent: textbox (Portion of web above sidewalls)][AltContent: arrow][AltContent: textbox (Rear frame portion)][AltContent: arrow][AltContent: textbox (Web)][AltContent: arrow][AltContent: textbox (Elongated channel)][AltContent: textbox (Elongated upper edges)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Aperture)][AltContent: textbox (Protrusion)][AltContent: textbox (Receptacle)][AltContent: arrow][AltContent: textbox (Forward frame portion)][AltContent: arrow]
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First Annotated Fig. 3 from Bruhns
Claim 2: Bruhns discloses The pistol frame workpiece of claim 1, wherein an aperture (224 and as identified in First Annotated Fig. 3, above) is defined by the body at the receptacle, the aperture configured to receive a pin engaging the rail component (functional language fully capable of being met by the prior art).
Claim 3: Bruhns discloses The pistol frame workpiece of claim 1, wherein the protrusion is configured to contact the rail component (functional language fully capable of being met by the prior art as the rail component is not positively claimed) to deny full insertion of the rail component into the receptacle (functional language fully capable of being met by the prior art as written; a second interpretation of this is that it can prevent full insertion based on how the rail component is being installed).
Claim 4: Bruhns discloses The pistol frame workpiece of claim 1, wherein the forward frame portion has opposed elongated upper edges (see First Annotated Fig. 3, above) in part defining the upper plane surface (as shown) and spaced apart to define an elongated channel (see above) having a length and configured to receive an elongated pistol operating component (functional language fully capable of meeting the limitation as written, as the pistol operating component is not positively claimed); and further including a web (see above) positioned at an intermediate position along the length of the channel (as shown), the web spanning between the opposed elongated upper edges to divide the channel into a forward portion and a rear portion (as shown), and the web configured to prevent insertion of the elongated pistol operating component (functional language fully capable of being met by the prior art as written).
Claim 5: Bruhns discloses A pistol frame workpiece for modification to become a pistol frame configured to receive a slide, the workpiece comprising:
a body (Fig. 3: 200) having a grip (202), a trigger guard (216), and a forward frame portion (see First Annotated Fig. 3 from Bruhns, above) extending forward of the grip;
an upper plane surface (220) defined by the body to face a lower surface of the slide (as would be the result when the slide is incorporated); and
a protrusion (see First Annotated Fig. 3, above) integral with and protruding above the upper plane surface of the body (as shown) and configured to limit proximity of the lower surface of the slide to the upper plane surface when present, and to enable proximity of the lower surface of the slide to the upper plane surface when removed (the language following “configured to” is considered functional language as the slide is not positively claimed; the examiner takes the position that the prior art is fully capable of meeting the claim language as provided).
Claim 6: Bruhns discloses The pistol frame workpiece of claim 5, wherein an aperture (see First Annotated Fig. 3, above) is defined by the body at the receptacle, the aperture configured to receive a pin engaging a rail component (functional language fully capable of being met by the prior art).
Claim 7: Bruhns discloses The pistol frame workpiece of claim 5, wherein the protrusion is configured to contact a rail component to deny full insertion of the rail component into the receptacle (functional language fully capable of being met by the prior art as written; a second interpretation of this is that it can prevent full insertion based on how the rail component is being installed).
Claim 8: Bruhns discloses The pistol frame workpiece of claim 5, wherein the forward frame portion has opposed elongated upper edges (see above) in part defining the upper plane surface and spaced apart to define an elongated channel (see above) having a length and configured to receive an elongated pistol operating component (functional language fully capable of being met by the prior art); and further including a web (see above) positioned at an intermediate position along the length of the channel, the web spanning between the opposed elongated upper edges to divide the channel into a forward portion and a rear portion (as shown), and the web configured to prevent insertion of the elongated pistol operating component (functional language fully capable of being met by the prior art as written).
Claim 9: Bruhns discloses A pistol frame workpiece for modification to become a pistol frame configured to receive a slide, the workpiece comprising:
a body (Fig. 3: 200) having a grip (202), a trigger guard (216), and a forward frame portion (see First Annotated Fig. 3, above) extending forward of the grip (as shown);
the forward frame portion defining an upwardly open elongated channel (see First Annotated Fig. 3, above) configured to receive an elongated barrel (functional language fully capable of being met by the prior art); and
a web (see First Annotated Fig. 3, above) transverse to the channel, dividing the channel into a forward portion and a rear portion (as shown), and when the web is present to prevent the insertion of the barrel in the channel and when the web is absent to enable insertion of the barrel in the channel (functional language fully capable of being met by the prior art).
Claim 11: Bruhns discloses The pistol frame workpiece of claim 9 wherein the forward frame portion has opposed sides each terminating at an upper edge (as shown above), and wherein the web spans between said sidewalls (as shown).
Claim 12: Bruhns discloses The pistol frame workpiece of claim 9 wherein the forward frame portion has opposed sides each terminating at an upper edge (as shown above), and wherein the web is perpendicular to the sidewalls (as shown, generally).
Claim 13: Bruhns discloses The pistol frame workpiece of claim 9 wherein the forward frame portion has opposed sides each terminating at an upper edge (as shown above), and wherein the web has an upper edge at a level above the upper edges of said sidewalls (as shown).
Claim 15: Bruhns discloses The pistol frame workpiece of claim 9 wherein the web is a panel (it is a panel using the broadest reasonable interpretation in light of the disclosure provided) having peripheral portions having a first thickness and a central portion having a lesser second thickness (see Second Annotated Portion of Fig. 3 from Bruhns, below). Note that the thickness is taken in a direction from the channel toward a center of the channel.
[AltContent: arrow][AltContent: arrow][AltContent: textbox (Second thickness)][AltContent: textbox (First thickness)][AltContent: arrow]
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Second Annotated Portion of Fig. 3 from Bruhns
Claim 15: Bruhns discloses A pistol frame workpiece for modification to become a pistol frame configured to receive a slide, the workpiece comprising:
a body (Fig. 3: 200) having a grip (202), a trigger guard (216), and a forward frame portion (see First Annotated Fig. 3, above) extending forward of the grip;
an upper plane surface (see above) defined by the body facing away from the grip (as shown) and configured to be proximate to a lower surface of the slide (as would be the result if the slide were incorporated);
a receptacle (see First Annotated Fig. 3, above) defined by the body and configured to receive at least one rail component having upper rail elements configured to engage the slide (functional language fully capable of being met by the prior art as these components are not positively claimed); and
a first integral protrusion (see above) of the body positioned adjacent the receptacle and configured to prevent insertion of the rail component into the receptacle (functional language fully capable of being met by the prior art as claimed).
Claim 16: Bruhns discloses The pistol frame workpiece of claim 15,wherein the first protrusion protrudes above the upper plane surface of the body adjacent the receptacle (as shown).
Claim 17: Bruhns discloses The pistol frame workpiece of claim 15,wherein an aperture (see First Annotated Fig. 3, above) is defined by the body at the receptacle (as shown), the aperture configured to receive a pin engaging the rail component (functional language fully capable of being met by the prior art).
Claim 18: Bruhns discloses The pistol frame workpiece of claim 15,wherein the first protrusion is configured to contact the rail component to prevent full insertion of the rail component into the receptacle (functional language fully capable of being met by the prior art).
Claim 19: Bruhns discloses The pistol frame workpiece of claim 15,wherein the forward frame portion has opposed elongated upper edges (see First Annotated Fig. 3, above) in part defining the upper plane surface and spaced apart to define an elongated channel having a length and configured to receive an elongated pistol operating component (functional language fully capable of being met by the prior art as written); and further including a second protrusion (web, as shown above) extending into the channel and configured to prevent insertion of the elongated pistol operating component (functional language fully capable of being met by the prior art).
Claim 20: Bruhns discloses The pistol frame workpiece of claim 19,wherein the second protrusion is a web (as indicated with First Annotated Fig. 3, above) spanning between the opposed sides of the channel (as shown).
Claim 21: Bruhns discloses The pistol frame workpiece of claim 20,wherein the web divides the channel into a forward portion and a rear portion (as shown).
Claim 22: Bruhns discloses A pistol frame workpiece for modification to become a pistol frame configured to receive a slide, the workpiece comprising:
a body (Fig. 3: 200) having a grip (202), a trigger guard (216), and a forward frame portion (see First Annotated Fig. 3, above) extending forward of the grip;
an upper plane surface defined by the body (as shown above), facing toward and proximate to a lower surface of the slide (as would be the result if the slide were incorporated); and
a first integral protrusion (see First Annotated Fig. 3, above) of the body configured to prevent proximity of the lower surface of the slide to the upper plane surface when present (functional language fully capable of being met by the prior art), and to enable proximity of the lower surface of the slide to the upper plane surface when removed (functional language fully capable of being met by the prior art).
Claim 23: Bruhns discloses The pistol frame workpiece of claim 22,wherein the first protrusion protrudes above the upper plane surface of the body (as shown generally in Fig. 3).
Claim 24: Bruhns discloses The pistol frame workpiece of claim 22,wherein a receptacle (see above) is defined by the body and configured to receive at least one rail component having upper rail elements configured to engage the slide (functional language fully capable of being met by the prior art, as the rail component has not been positively claimed), and an aperture (see First Annotated Fig. 3, above) is defined by the body at the receptacle (as shown), the aperture configured to receive a pin engaging a rail component (functional language fully capable of being met by the prior art).
Claim 25: Bruhns discloses The pistol frame workpiece of claim 22,wherein the first protrusion is configured to contact a rail component to prevent full insertion of the rail component into the receptacle (functional language fully capable of being met by the prior art as written, as the rail is not positively claimed).
Claim 26: Bruhns discloses The pistol frame workpiece of claim 22,wherein the forward frame portion has opposed elongated upper edges (see above) in part defining the upper plane surface and spaced apart to define an elongated channel (see above) having a length and configured to receive an elongated pistol operating component (functional language fully capable of being met by the prior art); and further including a second protrusion (web) projecting into the channel and configured to prevent insertion of the elongated pistol operating component (functional language fully capable of being met by the prior art as claimed).
Claim 27: Bruhns discloses The pistol frame workpiece of claim 26,wherein the forward frame portion has opposed sides each terminating at an upper edge (as shown), and wherein the second protrusion spans between said sidewalls (as shown).
Claim 28: Bruhns discloses The pistol frame workpiece of claim 27,wherein the second protrusion divides the channel into a forward portion and a rear portion (as shown in First Annotated Fig. 3, above).
Claim 29: Bruhns discloses The pistol frame workpiece of claim 26,wherein the second protrusion includes a web (as defined above) spanning between opposed sides of the channel and the web configured to prevent insertion of the elongated pistol operating component (functional language fully capable of being met by the prior art).
Claim 30: Bruhns discloses The pistol frame workpiece of claim 29,wherein the web divides the channel into a forward portion and a rear portion (as indicated in First Annotated Fig. 3, above).
Claim 31: Bruhns discloses A pistol frame workpiece for modification to become a pistol frame configured to receive a slide, the workpiece comprising:
a body (Fig. 3: 200) having a grip (202), a trigger guard (216), and a forward frame portion (see First Annotated Fig. 3, above) extending forward of the grip;
an upwardly open elongated channel (see above) defined in the forward frame portion and configured to receive an elongated pistol operating component (functional language fully capable of being met by the prior art as written); and
a protrusion (web, as shown above) positioned adjacent to the channel and configured to prevent assembly of the elongated pistol operating component when the protrusion is present (functional language fully capable of being met by the prior art) and to enable insertion of the elongated pistol operating component in the channel when the protrusion is absent (functional language fully capable of being met by the prior art as the elongated pistol operating component is not positively claimed).
Claim 32: Bruhns discloses The pistol frame workpiece of claim 31,wherein the protrusion extends into the channel and divides the channel into a forward portion and a rear portion (as shown in First Annotated Fig. 3, above).
Claim 33: Bruhns discloses The pistol frame workpiece of claim 31,wherein the protrusion is a web (as defined above) extending between opposite sides of the channel (as shown).
Claim 34: Bruhns discloses The pistol frame workpiece of claim 33,wherein the web divides the channel into a forward portion and a rear portion (as shown in First Annotated Fig. 3, above).
Claim 36: Bruhns discloses The pistol frame workpiece of claim 35, wherein the forward frame portion has opposed sides each terminating at an upper edge (as shown in First Annotated Fig. 3 above), and wherein the protrusion spans between said sidewalls (as shown).
Claim 37: Bruhns discloses The pistol frame workpiece of claim 36,wherein the protrusion is a web (as defined).
Claim 38: Bruhns discloses The pistol frame workpiece of claim 37,wherein the forward frame portion has opposed sides each terminating at an upper edge (as shown in First Annotated Fig. 3, above), and wherein the web is perpendicular to the sidewalls (as shown).
Claim 39: Bruhns discloses The pistol frame workpiece of claim 36,wherein the forward frame portion has opposed sides each terminating at an upper edge (as shown generally), and wherein the web has an upper edge at a level above the upper edges of said sidewalls (see First Annotated Fig. 3, above).
Claim 40: Bruhns discloses The pistol frame workpiece of claim 36,wherein the web is a panel (it is a panel using the broadest reasonable interpretation in light of the specification) having peripheral portions having a first thickness and a central portion having a lesser second thickness (as shown in Second Annotated Fig. 3 from Bruhns, above).
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 (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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 10 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bruhns in view of Chang et al. (U.S. Patent 9,009,986). Below is a substantial reproduction of the presented claims addressing all limitations with the examiner’s comments in bold italics.
Claim 10: Bruhns discloses The pistol frame workpiece of claim 9, except that the workpiece further including a jig. Chang teaches a jig for a receiver, said jig having a right side and a left side (22, 24) to receive and clamp the body (as shown in Fig. 4), said jig including three pin hole guides (see Annotated Fig. 4 from Chang, below), and said jig including a recoil assembly cutout (see Annotated Fig. 4 from Chang, below) to allow a tool to interact with web. It would have been obvious at the time of filing to a person having ordinary skill in the art to incorporate a jig with the claimed guide and cutouts. Jigs are well known in the art of firearm assembly for stabilizing the piece and to ensure uniformity in creation of the firearm piece (e.g., location of holes, grooves, etc.), and to have a cutout for tool access would be obvious to permit proper assembly of the firearm as needed.
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Figure 4 from Chang
Claim 35: Bruhns discloses The pistol frame workpiece of claim 31, except further including a jig. Chang teaches a jig for a receiver, said jig having a right side and a left side (22, 24) to receive and clamp the body, said jig including a plurality of pin hole guides, and said jig allowing access to modify the channel protrusion (see annotated Fig. 4 from Chang, above). It would have been obvious at the time of filing to a person having ordinary skill in the art to incorporate a jig with the claimed guide and cutouts. Jigs are well known in the art of firearm assembly for stabilizing the piece and to ensure uniformity in production of the firearm piece (e.g., location of pin holes, grooves, etc.), and to have a cutout for tool access would be obvious to permit proper assembly of the firearm as needed.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,306,984 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/JOSHUA KADING/Reexamination Specialist, Art Unit 3993
/Patricia L Engle/SPRS, Art Unit 3993
1 See Non-final Office Action dated 08 February 2021 of the ‘115 application: pages 4-7.
2 Id. at page 7.
3 See Final Office Action dated 04 August 2021: pages 2-4