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 12/22/25 have been fully considered but they are not persuasive. Applicant contends that the claims are definite citing MPEP 2173.02 and Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986). This is not persuasive in that this situation is not identical to Orthokinetics because the dimensions in this case could NOT be easily obtained. In Orthokinetics the claim was limited to a space between the doorframe of an “automobile”. While yes, there are many/various automobiles in many/various sizes, which made the phrase “as accurate as the subject matter permits”, in the present application the claims recite “a firearm accessory” and the specification does not limit this to any specific group. The specification discloses firearm accessories, such as scopes or sights, including holographic sights, red dot sights, and reflex sights (par. 0001); telescopic sight and laser sight (par. 0025); and accessory, sight or scope (par. 0041). If a person of ordinary skill in the art made or used a protector assembly that was longer than a front iron sight and then also used that same protector assembly with a flashlight and the protector assembly was not longer than the flashlight would the protector assembly infringe on the current claims? In the instant case the public would not be apprised of the metes and bounds of the claims. What “accessory”, as recited in the specification, does applicant considered covered by the claims? (grips, lasers, cameras, armor, rest, secondary firearm, flashlight, battery, iron sights, magazines, slings, etc. ad nauseum). While absolute precision may be unattainable in patented claims, the definiteness requirement “mandates clarity”. Nautilus, Inc. v. Biosig Instruments, Inc. 572 U.S. 898, 110 USPQ USPQ2d 1688 (2014). Furthermore, applicant has stated, on the record in the remarks dated 12/22/25, that the claimed protector assembly is “for the intended use” for mounting a firearm accessory and does not claim the firearm accessory, yet the claims appear to positively recite “the firearm accessory” (i.e. claim 1, line 9 “said shield being longer than the firearm accessory”). This, along with the statements above, render the claims indefinite in that the public would not be apprised of the metes and bounds of the claims. If a firearm accessory was never mounted on the firearm would the instant claims ever be infringed. Apparatus claims cover what a device is not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525, 1528.
With regards to applicant’s contention that the device of Pisani et al. fails to disclose each and every claimed element, this is not persuasive. Applicant contends because the guard of Pisani et al. is separate pieces that it is not longer than the firearm accessory. However, 1) applicant’s claims do not require that the shield comprises a single piece; 2) applicant does not intend the claims to encompass the firearm accessory and therefore the shield of Pisani et al., even a single shield piece, would be longer than at least some kind of firearm accessory, such as iron sight; and 3) with regards to the specific firearm accessory shown in Pisani et al. the three separate pieces (102a, 102b, 126/130) are shown as entirely covering the length and longer than the specific firearm accessory (104) (see Fig. 11), the length of the covering is extendable to fit various length firearm accessories.
With regards to claim 7, applicant’s remarks are narrower than the breadth of the claims. Applicant argues that the claim requires the frames attach from the “ends of the arms in extension slots” and points to Fig. 9 of the application. However, the claim does not require the extension to be an arm of the base or to be a part of the base at all. The claims merely require “an extension extending laterally from the base” and (claim 8) “a second extension extending laterally from the base opposite said first extension” and “the shield is attached to an end of the second extension opposite the base and extends from said first extension to said second extension”. Pisani et al. clearly shows such at Fig. 8; an extension 119a (left and right sides) extend laterally from the base (106a) is attached to an end of the extension (via 112 and 114) and extends from the first extension (right side 119a) to the second extension opposite the base (left side extension 119a) (i.e. the base 106a is in the middle, the left and right sides are opposite).
Similarly, with regards to claim 10, Pisani et al. teaches multiple elements combined together as a single whole element, (106b) would similarly have a left and right side extension giving a total of four extensions. (see Fig. 11)
Applicant contends that Kargias fails to disclose each and every claimed element because Karagias fails to disclose a shield that is longer than the firearm accessory. As applicant has pointed out, in the remarks, applicant does not intend the claims to encompass a firearm accessory or a specific firearm accessory, the fact that the shield is not longer than the specific accessory shown in the patent of Karagias is irrelevant because the shield is longer than a generic firearm accessory, such as an iron sight.
With regards to the combination of Karagias in view of McCain, applicant contends that the combination fail to disclose the elements in claim 13, in particular the shield including a sighting element. 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). In the instant case, Karagias discloses a shield with a rail on top of the shield (Fig. 5). McCain teaches sighting elements on a rail, the combination of the two would not result in the sighting elements being “completely obstructed by the scope mount and the scope” as alleged by applicant, since the rail of Karagias is on top of the shield and hence above the scope. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Election/Restrictions
Newly submitted claims 21 and 22 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: originally presented claims are drawn to the protector assembly as embodied in Fig. 5 whereas the newly submitted claims are drawn to the protector assembly as embodied in Fig. 11. The species are independent or distinct because applicant has disclosed the species as being distinct (par. 0027 and par. 0036). In addition, these species are not obvious variants of each other based on the current record.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; (c) the inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries); (d) the prior art applicable to one invention would not likely be applicable to another invention; and/or, (e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. §§ 101 and/or 112.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21 and 22 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
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.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Applicant has stated that the claims do not encompass “the firearm accessory” yet structure of the shield (i.e. the length being longer than the firearm accessory) is essential for the claims, as argued by applicant. Therefore, one of ordinary skill in the art would not be apprised of the metes and bounds of the claims
Claim 22 recites “the additional piece of equipment”. There is insufficient antecedent basis for this limitation in the claim. Claim 21, from which claim 22 depends, recites “a piece of equipment”, it is not clear if this is the same piece of equipment as recited in claim 21 or if this is a different additional piece of equipment. Appropriate correction is required.
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) 1-12 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pisani et al. (US Patent 9,470,470). Pisani et al. discloses a protector assembly comprising:
a base (106a-b) having a rail opening and an accessory opening; and
a shield (102a-b, 126/130) attached to the base.
It is noted that 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. A protector assembly as set forth in claim 1, wherein the shield extends farther forward than the firearm accessory when the firearm accessory is attached to the base. (the scope guard frame is extendable to accommodate various length scope assemblies; col. 13, lines 55-60)
3. A protector assembly as set forth in claim 2, wherein the shield extends farther rearward than the firearm accessory when the firearm accessory is attached to the base. (the scope guard frame is extendable to accommodate various length scope assemblies; col. 13, lines 55-60)
4. A protector assembly as set forth in claim 1, wherein the shield extends farther rearward than the firearm accessory when the firearm accessory is attached to the base. (the scope guard frame is extendable to accommodate various length scope assemblies; col. 13, lines 55-60)
5. A protector assembly as set forth in claim 1, wherein the accessory opening is has the ability to attach a sight to the base. (see Fig. 1)
6. A protector assembly as set forth in claim 5, wherein the accessory opening comprises a semicylindrical holder (118a-b) and a retainer (105a-b) selectively connectable to the holder.
7. A protector assembly as set forth in claim 1, further comprising an extension (119a left side) extending laterally from the base, and wherein the shield is attached to an end of the extension opposite the base.
8. A protector assembly as set forth in claim 7, wherein: said extension is a first extension; the protector assembly further comprises a second extension (119 right side) extending laterally from the base opposite said first extension; and the shield is attached to an end (via a screw through 112 and 114) of the second extension opposite the base and extends from said first extension to said second extension. (see, at least, Fig. 8)
9. A protector assembly as set forth in claim 1, wherein: said base extends longitudinally and has a front and a rear; said accessory opening is a rear accessory opening located adjacent to the rear of the base; and the protector assembly further comprises a front accessory opening adjacent to the front of the base sized and shaped for receiving and attaching the firearm accessory to the base. (see, at least, Fig. 1)
10. A protector assembly as set forth in claim 9, further comprising a plurality of extensions extending from the base, wherein:
a first extension (119a right side) of said plurality of extensions extends laterally from the rear of the base;
a second extension (119a left side) of said plurality of extensions extends laterally from the rear of the base opposite said first extension;
a third extension (119b right side) of said plurality of extensions extends laterally from the front of the base;
a fourth extension (119b left side) of said plurality of extensions extends laterally from the front of the base opposite said third extension; and
the shield is attached to each of the first extension opposite the rear of the base, the second extension opposite the rear of the base, the third extension opposite the front of the base, and the fourth extension opposite the front of the base (see, at least Fig. 1 and Fig. 8).
11. A protector assembly as set forth in claim 1, wherein said shield comprises a semicylindrical shell. (see, at least, Fig. 5)
12. A protector assembly as set forth in claim 11, wherein said semicylindrical shell has a plurality of apertures. (see, at least, Fig. 5)
15. A protector assembly as set forth in claim 1, wherein:
the rail opening in the base includes a slot;
the base includes a threaded member (113) bridging the slot;
a width of the slot is selectively adjustable by turning the threaded member; and
the rail opening size and shape changes as the slot width is selectively adjusted to selectively clamp the base to the elongated rail. (see, at least, Fig. 2)
Claim(s) 1 and 15-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karagias (US Patent Application Publication 2024/0093967). Karagias discloses a protector assembly comprising:
a base (124) having a rail opening and an accessory opening (shown best at Fig. 16); and
a shield (136) attached to the base. (it is noted that any random accessory can be any length)
It is noted that 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.
15. A protector assembly as set forth in claim 1, wherein:
the rail opening in the base includes a slot;
the base includes a threaded member (1612 (also shown and described at 2340)) bridging the slot;
a width of the slot is selectively adjustable by turning the threaded member; and
the rail opening size and shape changes as the slot width is selectively adjusted to selectively clamp the base to the elongated rail.
16. A protector assembly as set forth in claim 1, wherein the base includes an indexing element selectively insertable into the base to engage the rail and repeatably locate the base relative to the rail. (1612 (also shown and described at 2340)) (see, at least, Fig. 16 and 26)
17. A protector assembly as set forth in claim 16, wherein the indexing element comprises a pin selectively insertable through a hole in the base to enter the rail opening. (par. 0070)
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) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karagias as applied to claim 1 above, and further in view of McCann (US Patent 8,104,218). Karagias discloses the claimed invention but does not expressly disclose the shield including a rearward and forward sighting element, however McCann does. McCann teaches a mounting rail (similar to the mounting rail 502 located on the shield of Karagias) which includes a rearward sighting element (30) and a forward sighting element (28) that can be used in combination. 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 providing pre-aligned backup iron sights in case of a scope system failure (McCann col. 1, lines30-37) 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.
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 MICHELLE CLEMENT whose telephone number is (571)272-6884. The examiner can normally be reached M-F 10-6.
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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