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 Rejections - 35 USC § 102
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) 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Southern Gun Co, 9mm Lever Action Rifle, submitted by 3rd party, hereinafter (“Southern Gun”). Southern Gun discloses a lever action firearm (0:25 sec mark) comprising: an upper frame defining a bolt passage; a bolt carrier assembly (inherent for AR rifles) received in the upper frame and operable to reciprocate between an open position and a closed position; a lower frame defining a magazine well configured to removably receive a box magazine; the lower frame removably connected to the upper frame by way of a retained takedown pin (see video); an action lever movable between a retracted position and an extended position and having a first pivot, and pivotally connected to the lower frame at the first pivot; the upper frame including a rear lug received by a recess in the lower frame; the rear lug and lower frame defining registered pin bores receiving the retained takedown pin; and wherein the action lever engages with the bolt carrier assembly forward of the rear lug.
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) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giannelli et al. (US 9,328,990), hereinafter (“Giannelli”), in view of Luth (US 6,293,040). Gianelli (Fig 1) discloses a lever action firearm comprising: an upper frame (12) defining a bolt passage; a bolt carrier assembly (Fig 11) received in the upper frame and operable to reciprocate between an open position and a closed position; a lower frame (16) defining a magazine well configured to removably receive a box magazine; the lower frame removably connected to the upper frame by way of a retained takedown pin (Fig 19, 19); and an action lever movable between a retracted position and an extended position and having a first pivot (72), and pivotally connected to the lower frame at the first pivot (Fig 15).
Gianelli does not disclose, however, the upper frame including a rear lug received by a recess in the lower frame; the rear lug and lower frame defining registered pin bores receiving the retained takedown pin; and wherein the action lever engages with the bolt carrier assembly forward of the rear lug. However, this a commonly known and used structure used for connecting upper and lower receivers together. For example, Luth (Fig 6) teaches an upper frame (24) and a lower frame (22), wherein the upper frame includes a rear lug (86) received by a recess in the lower frame; the rear lug and lower frame defining registered pin bores (92) receiving a retained takedown pin (94a). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify/substitute the retained takedown pin in Gianelli with the connection taught by Luth. The motivation would simply be to replace/substitute one known upper and lower receiver connection with another commonly known and used upper and lower receiver connection. All 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 predictable results to a skilled artisan at the time the invention was made.
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 1-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,988,480. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the current application are broader in scope and therefore fully encompass the subject matter claimed in U.S. Patent No. 11,988,480.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 18 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 18 of prior U.S. Patent No. 11,988,480. This is a statutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 5-4-26 have been fully considered but they are not persuasive. Applicant’s argument that Southern Gun does not anticipate at least claim 17 because Southern does not disclose “the action lever engaging with the bolt carrier assembly forward of the rear lug is not persuasive because claim 17 does not recite this limitation. All remaining limitations of claim 17 are either clearly shown in the video or are inherent.
Applicant does not provide any arguments regarding the obviousness rejection of claim 17 of Giannelli in view of Luth (US 6,293,040).
Conclusion
THIS ACTION IS MADE FINAL. 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 REGINALD S TILLMAN, JR whose telephone number is (571)270-7010. The examiner can normally be reached M-F 830-530.
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/REGINALD S TILLMAN, JR/Primary Examiner, Art Unit 3641
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