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 with respect to the claim(s) have been considered but are not persuasive. With regards to the 35 U.S.C. ss 112(a) or 35 U.S.C. ss 112(pre-AIA ), first paragraph, which requires that 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. (See MPEP 2164.01) Claim 4 requires that the silicone air cushion “prevents the rifle from muzzle climb by the air in the interior volume of said silicone air cushion”. Merely making a statement in the specification that the silicone air cushion does this, does not, in and of itself, enable one of ordinary skill in the art how to make the silicone air cushion so that it performs in such a manner. It is not inherent, or ordinary, for a recoil pad located at the buttstock of a rifle to prevent the climb of the muzzle of that rifle and it is not clear how the physics would even allow that to occur. It is not clear that it is the recoil pad, at all, that prevents the climb of the muzzle. The specification, as filed, does not fulfill the enablement requirement because one of ordinary skill in the art would not know how to make the silicone air cushion so that the silicone air cushion (and not something else) prevents muzzle climb of the rifle. With regards to the 35 U.S.C. ss 103(a) rejections of the claims applicant contends that the combination of references does not disclose the claimed invention. Applicant’s arguments misrepresent the rejections of the claims and misrepresent the combination of the references. Applicant contends that the reference of Krueger does not disclose separate, distinct structural elements. This is not persuasive in that Krueger clearly does disclose separate, distinct structural elements wherein an air cushion (21), as a separate, distinct structural element is positioned as a unit onto a side of a recoil pad (13, 14, 15) that faces the stock of the rifle. In response to Applicant’s argument that Krueger includes additional structure (i.e. casing 6) not required by Applicant’s invention, it must be noted that Krueger discloses the invention as claimed. The fact that it discloses additional structure not claimed is irrelevant. The reference of Butler is utilized for the specific teaching of the type of material for the air cushion and not for the “positioning” of the gas chamber or the structural approach of the gas chamber as applicant contends.
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 4-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a recoil pad comprising a silicone air cushion the air cushion having the ability to reduce a load on the shoulder of a user by reducing an impact during firing, does not reasonably provide enablement for how the air in the interior volume of the air cushion has the ability to prevent a rifle from muzzle climb. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. There is nothing in the specification that disclose HOW the air in the interior volume of the air cushion can possibly prevent a rifle from muzzle climb. Claim 4 requires that the silicone air cushion “prevents the rifle from muzzle climb by the air in the interior volume of said silicone air cushion”. Merely making a statement in the specification that the silicone air cushion does this, does not, in and of itself, enable one of ordinary skill in the art how to make the silicone air cushion so that it performs in such a manner. It is not inherent, or ordinary, for a recoil pad located at the buttstock of a rifle to prevent the climb of the muzzle of that rifle and it is not clear how the physics would even allow that to occur. It is not clear that it is the recoil pad, at all, that prevents the climb of the muzzle. The specification, as filed, does not fulfill the enablement requirement because one of ordinary skill in the art would not know how to make the silicone air cushion so that the silicone air cushion (and not something else) prevents muzzle climb of the rifle. (See MPEP 2164.01)
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.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krueger (US Patent 1,246,117) in view of Butler (US Patent 9,021,727). Krueger discloses a recoil pad assembly for a stock of a rifle, the recoil assembly comprising: a recoil pad (13, 14, 15) having the ability to be attached to and detached from a rear end of the stock of the rifle so as to allow said recoil pad and the stock to bear against a shoulder of a user; and an air cushion (21) having the ability to be attached to and detached from the stock of the rifle, said air cushion positioned as a unit onto a side of said recoil pad that faces the stock of the rifle (Fig. 5), said air cushion having air in a single interior volume thereof, said air cushion having the ability to reduce a load on the shoulder of the user by reducing an impact thereon during firing of the rifle and prevents the rifle from muzzle climb by the air in the interior volume of said air cushion (in as much as Krueger discloses an air cushion and applicant contends that it is the air cushion itself that performs this function). Krueger discloses the claimed recoil pad but does not expressly disclose the air cushion comprised of silicone, Butler does. Butler teaches a recoil pad for a firearm, the recoil pad comprising a silicone air cushion (col. 4, lines29-35). It would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize silicone as the material for the air cushion since silicone is a well-known material that can hold air and is not affected by temperatures allowing the device to be used in both warm and cold temperatures without becoming brittle, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Furthermore, it would have been an obvious matter of design choice to make the air cushion from silicone, since applicant has not disclosed that specifically utilizing silicone solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with any material that would hold air. In re Kuhle 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
5. The recoil pad assembly of claim 4, further comprising: a valve (22) connected to said air cushion so as to allow the air to be introduced into the single interior volume of said silicone air cushion.
6. The recoil pad assembly of claim 5, further comprising: a valve cap (22; page 2, line 24) affixed to said valve so as to prevent the air from escaping outwardly of said valve.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
This is a RCE of applicant's earlier application. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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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/MICHELLE CLEMENT/Primary Examiner, Art Unit 3641