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 .
Claim Objections
Claims 1-7 are objected to because of the following informalities:
Claims 1 and 4 recite “wherein the binding engagements” provides resistance. As best understood by the examiner, this appears to be a typographical error that should read “wherein the binding engagement” because the claims and specification only support one engagement between the fastener and barrel.
Appropriate correction is required.
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 4-7 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.
Claim 4 recites the limitation "a gas port" two times in line 4. There is insufficient antecedent basis for this limitation in the claim because, while the Examiner understands the gas port of the gas block to be different than the gas port from which the gas is received, the claim does not delineate if the instances of “a gas port” are intended to be the same or different. As best understood by the examiner, the first gas port is a structure in the gas block and the second instance of “a gas port” is intended to be a bore in the barrel; however, correction is still required.
Any unspecified claim is rejected as being dependent on a rejected base claim.
In view of the indefinite issues the claims will be examined as best understood by the examiner.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,994,357. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application merely omit certain structural limitations which would have been obvious to omit and the structure required by the claims is substantially the same. Additionally, the functional language directed to the binding engagement is not detailed in the specification in a way that would differentiate the instant claims over the patented claim structure.
Claim Rejections - 35 USC § 102/103
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 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.
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) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by Tankersley, US Patent Publication No. 2010/0282066 or, in the alternative, under 35 U.S.C. 103 as obvious over Tankersley in view of Knight, US Patent No. 5,706,599.
Regarding claim 1, Tankersley discloses an apparatus, comprising: a tapered fastener (44) to mount a barrel-mountable device upon a barrel ([0149] discloses the tapered fastener serves to align the gas block onto the barrel and also shown in figures 5-5C), in a rotationally timed position ([0149] discloses the tapered fastener serves to align the gas block on the barrel and figures 5A-5C show how the fasteners act to align the gas block to the barrel in a particular orientation), the tapered fastener including: a length further including a tapered section (conical tip of 44) drivable into binding engagement (broadly, yet reasonably, the conical tip is drivable, capable of being driven, into a binding engagement. The recitation of a “binding engagement” is given the broadest reasonable interpretation and is construed to be an engagement between two parts that provides sufficient friction to prevent unwanted movement when engaged. The structure of Tankersley is such that threading the set screw into and through the gas block aperture and into engagement with the barrel is a binding engagement.) with one or more sloped surfaces defined by part of an exterior of a barrel of a firearm (55 as in figures 5A-5C for example and shown alone in figure 7); and a drive mechanism for rotationally driving the tapered fastener into an opening (44 is disclosed as a set screw and [0149] discloses tightening the set screw and one of ordinary skill in the art would recognize that a set screw necessarily has a driving mechanism in order to engage some sort of tool for tightening the screw); and wherein the binding engagement provides resistance to backing the tapered fastener out of said opening (given the broadest reasonable interpretation of a binding engagement, the structure of Tankersley meets the claim limitation because the fasteners of Tankersley are disclosed as having the tapered ends tightened into a conical opening to secure and align the block. In order for the fasteners to secure the block, a sufficient frictional engagement between the parts is required such that the fasteners resist backing out unless specifically removed by the user). Therefore, it is the examiner’s position that the structure of Tankersley sufficiently meets the structure of the claims and the functional language associated with the structure; however, for the sake of clarity and compact prosecution, Knight is provided as a teaching reference to support the examiner’s position of the interpretation of the engagement structure of Tankersley. Knight specifically teaches set screws 50 which are driven into engagement with recesses 46 and provide a binding engagement between the screws and recesses as taught in 2:24-35. Additionally, Knight shows a drive mechanism/end of the set screws in figure 3.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify or define the engagement of Tankersley to be a binding engagement similar to that as taught by Knight and asserted by the examiner with a reasonable expectation of success since Tankersley and Knight are substantially the same structure and recognizing a set screw driven into a recess as a binding engagement would be obvious to one of ordinary skill in the art in order to prevent loosening of components from one another and to maintain the position of the gas block of Tankersley such that the firearm functions reliably and safely.
Regarding claim 2, Tankersley alone, or as modified by Knight, further discloses a barrel-mounted device (Tankersley 40) comprising the apparatus of claim 1.
Regarding claim 3, Tankersley alone, or as modified by Knight, further discloses a gas block assembly (Tankersley, 40) comprising the apparatus of claim 1.
Regarding claim 4, Tankersley discloses a gas block assembly, comprising: a gas block (40) including a gas port (28) to receive gas provided by a gas port of a barrel (81); a tapered fastener (44), the tapered fastener including: a length further including a tapered section (conical tip of 44) drivable into binding engagement (broadly, yet reasonably, the conical tip is drivable, capable of being driven, into a binding engagement. The recitation of a “binding engagement” is given the broadest reasonable interpretation and is construed to be an engagement between two parts that provides sufficient friction to prevent unwanted movement when engaged. The structure of Tankersley is such that threading the set screw into and through the gas block aperture and into engagement with the barrel is a binding engagement.) with one or more sloped surfaces defined by part of an exterior of a barrel of a firearm (55 as in figures 5A-5C for example and shown alone in figure 7); and a drive mechanism for rotationally driving the tapered fastener into an opening (44 is disclosed as a set screw and [0149] discloses tightening the set screw and one of ordinary skill in the art would recognize that a set screw necessarily has a driving mechanism in order to engage some sort of tool for tightening the screw); and wherein the binding engagement provides resistance to backing the tapered fastener out of said opening (given the broadest reasonable interpretation of a binding engagement, the structure of Tankersley meets the claim limitation because the fasteners of Tankersley are disclosed as having the tapered ends tightened into a conical opening to secure and align the block. In order for the fasteners to secure the block, a sufficient frictional engagement between the parts is required such that the fasteners resist backing out unless specifically removed by the user). Therefore, it is the examiner’s position that the structure of Tankersley sufficiently meets the structure of the claims and the functional language associated with the structure; however, for the sake of clarity and compact prosecution, Knight is provided as a teaching reference to support the examiner’s position of the interpretation of the engagement structure of Tankersley. Knight specifically teaches set screws 50 which are driven into engagement with recesses 46 and provide a binding engagement between the screws and recesses as taught in 2:24-35. Additionally, Knight shows a drive mechanism/end of the set screws in figure 3.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify or define the engagement of Tankersley to be a binding engagement similar to that as taught by Knight and asserted by the examiner with a reasonable expectation of success since Tankersley and Knight are substantially the same structure and recognizing a set screw driven into a recess as a binding engagement would be obvious to one of ordinary skill in the art in order to prevent loosening of components from one another and to maintain the position of the gas block of Tankersley such that the firearm functions reliably and safely.
Regarding claim 5, Tankersley alone, or as modified by Knight, further discloses the driving mechanism is located on an end (Knight figure 3) of the tapered fastener, and wherein an opposite end of the tapered fastener includes an additional section arranged to mate with a groove defined by the barrel (Knight figure 3 shows an end of the screw that is opposite of an end which engages a recess of the barrel and, as taught to Tankersley, opposite the conical tip of 44).
Regarding claim 6, Tankersley alone, or as modified by Knight, further discloses the groove comprise a V-slot (Tankersley, 55 is a conical shape and thus V-shaped).
Response to Arguments
Applicant's arguments filed 7/21/25 have been fully considered but they are not persuasive.
The specifics of the arguments provided are moot because they are directed to references which are no longer used in the rejection above; however, for the sake of clarity on the record, the general direction of the arguments will be addressed.
In response to the applicant’s argument that the amendment to the claim which includes a binding engagement such that backing out of the tapered fastener is resisted overcomes the prior art, the examiner is not persuaded. The arguments are generally directed to the prior art references not providing a binding engagement that provides resistance to backing out of the fastener. As stated above, it is the examiner’s position that Tankersley, alone, provides sufficient structure to meet the claimed structure and the functional language. The set screw engagement with the barrel of Tankersley is intended to secure the gas block to the barrel. Therefore, the screws are sufficiently tightened such that the gas block is secured and the friction between the screw and barrel surfaces is sufficient to prevent backing out. Additionally, the level to which the screws are tightened will affect the level to which backing out is prevented which makes the functional recitation a very broad limitation that can be met in a variety of ways. Knight is provided as a teaching reference to provide evidence to the examiner’s position and show that it is clearly known in the art that set screws bind with a barrel recess when used in the configuration shown in Knight, which closely mirrors Tankersley. The functional recitation in the claims is not sufficient to require any additional structure other than what is provided by the prior art.
Conclusion
Applicant's amendment necessitated the any ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DERRICK R MORGAN whose telephone number is (571)272-6352. The examiner can normally be reached M-F 9:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 5712726874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DERRICK R MORGAN/Primary Examiner, Art Unit 3641