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 .
The following is a Final Office action in response to communications received on 12/4/2025. Claims 1 and 12 have been amended. Therefore claims 1-20 are pending and addressed below.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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.
Claims 1-4, 6, 8-9 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bowers (US 10,066,900 B2).
Regarding claim 1, Bowers discloses a handgun (fig. 2C), the handgun comprising: a handgun frame (fig. 2C); a handgun grip (fig. 2C) attached to the handgun frame and configured to be gripped by a trigger hand (fig. 5A) of a shooter; a thumb support (paddle 208) supported from the handgun frame adjacent to a lateral side (fig. 5B) of the handgun frame opposite from the trigger hand of the shooter; the thumb support pivotable (col. 2 lines 53 to 63) relative to the handgun frame between a collapsed position wherein the thumb support is folded up adjacent to the lateral side of the handgun frame and an extended position wherein the thumb support is pivoted away from the lateral side of the handgun frame (col. 2 lines 53 to 63); and the thumb support configured in the extended position to be engaged by a thumb of a non-trigger hand of the shooter in a two-handed grip of the handgun (fig. 5A-5C) wherein the thumbrest is operable to replace a component of the handgun.
Regarding claims 6 and 13, Bowers discloses a thumbrest (paddle 208) for a handgun, the thumbrest comprising:
a support base (204 – fig. 3E) configured for mounting to the handgun;
a thumb support (paddle 208) pivotable relative to the support base between a collapsed position wherein the thumb support is folded up adjacent to the support base and an extended position wherein the thumb support is pivoted away from the support base (col. 2 lines 53 to 63);
a spring (spring 216) configured to bias the thumb support toward the extended position (col. 2 lines 53 to 63); and
a stop structure (fig. 4B) configured to limit pivotal movement of the thumb support to define the extended position.
Regarding claim 2, Bowers discloses the handgun of claim 1, wherein: in the collapsed position the thumb support is in a range of 0 degrees to 10 degrees measured with respect to the lateral side of the handgun frame (0 degrees as shown in fig. 4B); and in the extended position the thumb support is in a range of 70 degrees to 100 degrees measured with respect to the lateral side of the handgun frame (in use position shown in fig. 4B).
Regarding claim 3, Bowers discloses the handgun of claim 1, further comprising: a spring (216) configured to bias the thumb support toward the extended position; and a stop structure configured to limit pivotal movement of the thumb support to define the extended position (col. 2 lines 53 to 63).
Regarding claim 4, Bowers discloses the handgun of claim 1, further comprising: a hinge (224) configured to allow pivotable movement of the thumb support relative to the handgun frame.
Regarding claims 8 and 14, see the rejection of claim 2 above.
Regarding claims 9 and 15, see the rejection of claim 4 above.
Claim Rejections - 35 USC § 103
The following is a quotation of 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
In the alternative, claims 1-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Bowers (US 10,066,900 B2).
Regarding claims 1-20, and particularly claims 5, 7, 10-12, and 16-20 Bowers discloses the claimed invention except he does not explicitly disclose the exact recited arrangement or shapes. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the same arrangement, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japiske, 86 USPQ 70, or to have the same shapes, since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12117262. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims (at least claim 1) appear to be broader than the prior patent claims.
Response to Amendments and Arguments
Applicant amended independent claims 1 and 12 to recite that the thumbrest is “operable to replace a component of the handgun” or “operable to replace a traditional handgun component without the thumb support.” Applicant asserts that this feature distinguishes the claims over the applied prior art.
The arguments are not persuasive.
Bowers discloses a thumbrest apparatus that is mounted to the handgun in place of, or instead of, existing handgun components located at the same mounting interface (see, e.g., Bowers figs. 3A–3E, 4A–4C, 6A–6C). In particular, Bowers discloses an elongated support member and associated structures that functionally replace conventional handgun hardware at the frame/slide interface while providing a pivotable thumb support.
The newly added limitation that the thumbrest is “operable to replace a component of the handgun” is functional in nature and does not impose any positive structural limitation distinguishing the claimed apparatus from Bowers. Functional language that merely states an intended use or result does not render the claim patentably distinct where the prior art structure is capable of performing the recited function. See In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997).
Further, the newly added limitation that the thumbrest is “operable to replace a component of the handgun” does not impose a structural distinction over Bowers. Dependent claims further define the alleged replacement as involving a slide-lock-type structure, which Bowers already discloses. Therefore, the amendment merely states an intended capability of the disclosed structure and does not exclude the applied reference.
Applicant argues that the amended claims recite structural differences sufficient to overcome obviousness. This argument is not persuasive.
As discussed above, the added “replace a component” limitation is functional and does not require any structure not already disclosed or suggested by Bowers. To the extent applicant contends that Bowers does not expressly disclose every claimed shape, contour, or arrangement, it would have been obvious to one of ordinary skill in the art to modify the disclosed structures, since rearranging parts or altering shapes without changing their function involves only routine skill in the art. See In re Japikse, 181 F.2d 1019 (CCPA 1950); Eskimo Pie Corp. v. Levous, 261 F.2d 804 (CCPA 1958).
Applicant has not identified any critical structural feature or unexpected result that would overcome the prima facie case of obviousness.
Accordingly, the § 103 rejection is maintained.
Applicant has not filed a terminal disclaimer, nor have the amended claims been shown to be patentably distinct from the reference claims. The amendments do not narrow the claims in a manner that avoids overlap with the reference patent. At least independent claim 1 remains coextensive with or broader than the claims of the reference patent.
Accordingly, the nonstatutory double patenting rejection is maintained.
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 MICHAEL D DAVID whose telephone number is (571)270-3737 and whose email address is michael.david@uspto.gov*. The examiner can normally be reached on M-F 8:30am-5:00pm EST.
*Communications via Internet e-mail are at the discretion of the applicant. Applicant is welcome to file an electronic communication authorization (sb439) form at any time if he/she would like to communicate via e-mail:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdfWithout a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached on 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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/MICHAEL D DAVID/Primary Examiner, Art Unit 3641