DETAILED ACTION
Response to Arguments
Applicant's arguments filed 09 JAN 26 have been fully considered but they are not persuasive. The sum of Applicant’s response is not argument, but rather, bald assertions that amendments to the claims overcome the rejections of record. Applicant does define how the amendments avoid the prior art of record, the teachings therein, or the rejections based thereon, but rather, asserts that “The absence of a substantive response to the rejections should not be taken to mean Applicant believes the rejections to be well taken or that Applicant acquiesces therein,” Remarks, both sections regarding art rejections, second paragraph of each. On the contrary and for Applicant’s edification, MPEP § 714.02 requires that replies to a non-final office action be fully responsive. Per 37 C.F.R. 1.111(b), included therein:
The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. (Emphases added.)
And:
A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section. (Emphasis added.)
Thus, when Applicant opines that “Applicant believes that the cited art fails to teach, suggest or disclose the claimed invention,” id., next paragraph, Applicant’s beliefs are unfounded and immaterial, and the rejections as modified to address amendments to the claims must stand.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 7-9, 11-13, 16-18, and 20-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2012/0231407 to Salinas.
Re: claim 1, Salinas discloses the claimed invention including a viewing optic, inter alia, 1205, e.g., Fig. 12, comprising: a base (bottom thereof); a front side (shown), a rear side, e.g., Fig. 14B, a left side, e.g., Fig. 14D (“left” when viewing from the rear of the pistol shown), and a right side (shown), extending upwardly from the base (fairly shown, see also, e.g., Figs. 14A and 14C); a top side (shown) extending from the edges of the front side, rear side, left side and right side (all sides meet at topmost surface shown: see also ¶ [0128]); and, at least one texture on at least a portion of the front side (shown), wherein the at least one texture is a three-dimensional pattern. When discussing frame segments of ¶ [0128], Salinas discloses “A front of at least one frame segment of the frame segments may include indentations/bumps forming another grip location for charging the slide (the indentations/bumps may also be provided on other frame members, such as on a top part of the front of the side frame segments),” ¶ [0129]. It is asserted that any number of indentations/bumps, but particularly those shown in, e.g., Figs. 12-13, would qualify as a pattern. Thus, Salinas fairly meets the claim.
Re: claim 7, Salinas further discloses wherein the texture comprises a feature selected from the group consisting of pyramids, dimples, lines, grooves, circles, squares, and combinations thereof. From the relevant drawing figures of Salinas, it is evident that the texture shown includes some form of repeated scalloped shapes, which, in combination with the non-scalloped portions, suffices as “combinations thereof.”
Re: claims 8-9, Salinas fairly discloses wherein the texture has a height and a depth from 0.001 mm to 10 mm. This is asserted because 10 mm is equivalent to 0.394 inches. From the drawing figures alone, it is evident that height and/or depth of the texture falls within these claimed ranges. See, for example, a user’s hand in Fig. 14D.
Re: claim 11, Salinas discloses wherein the viewing optic is a red dot sight, ¶ [0111].
Re: claim 12, Salinas further discloses a system comprising a firearm (disclosed/shown) and the viewing optic, e.g., Figs. 14C-D.
Anent claims 13, 16-18, 20-22, Salinas fairly discloses the claimed invention, as applied above. Re: claim 20 in particular, Salinas fairly/clearly shows a slide in the relevant drawing figures and discloses such as element 100, e.g., Figs. 1A-G, with the viewing optic secured thereto (as shown: see also ¶ [0086]).
Claim Rejections - 35 USC § 103
Claims 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Salinas in view of US 2009/0000176 to Robitaille, or vice versa.
Re: claim 3, Salinas discloses the claimed invention as applied above except for wherein the entirety of the front side includes the texture.
Robitaille teaches a viewing optic 10, e.g., Fig. 1, including a texture 12, e.g., Figs. 2-4, applied to an exterior of a housing, ¶ [0008], in the same field of endeavor for the purpose of minimizing reflection, ¶ [0004]. Robitaille discloses:
For certain applications, especially military applications, there is often a need to minimize reflection from the rifle including any `scope` that may be mounted thereon. Indeed, in military circles, it is well known that a single reflection may reveal a soldier's position and put the soldier and his unit in jeopardy. Id.
Thus, Robitaille fairly teaches eliminating reflection as much as possible, which means that when Robitaille discloses, e.g., a riflescope “with a housing having an exterior surface and a texture applied to the surface of the housing,” ¶ [0008], such reasonably conveys covering any and all potentially reflective portions of the exterior surface of the housing.
Robitaille further discloses:
While the present invention is described herein with reference to illustrative embodiments for particular applications, it should be understood that the invention is not limited thereto. Those having ordinary skill in the art and access to the teachings provided herein will recognize additional modifications, applications, and embodiments within the scope thereof and additional fields in which the present invention would be of significant utility. At ¶ [0015].
This reasonably conveys that the texture can be applied to any type of viewing optic, particularly in view of ¶ [0004], above.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Salinas as taught by Robitaille to include the entirety of the front side including the texture with a reasonable expectation of success because Robitaille demonstrates and discloses its effectiveness in minimizing reflections. That is, because Robitaille discloses covering the entire exterior surface, at least portions of all visible sides are or at least can be included/construed as exterior surfaces having the disclosed texture.
Further rationale: 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.
Alternatively, it is asserted that the combination is valid regardless of order to references because Robitaille fairly discloses minimizing reflection from all kinds of viewing optics, i.e., “any `scope` that may be mounted [on a rifle],” ¶ [0004], but particularly those of military applications, id. Salinas further teaches retrofitting pistols with red dot sights, such as those shown/disclosed therein, e.g., ¶ [0111]. Thus, it would have been obvious to one of ordinary skill in the art to modify the viewing optic of Robitaille as taught by Salinas in order to outfit a military force with pistols including a red dot viewing optic.
Re: claim 10, Salinas discloses the claimed invention as applied above except for wherein the texture comprises a plurality of pyramids.
Figure 4 of Robitaille shows pyramid-like shapes, while Robitaille further discloses that “each feature 12 is a three-dimensional polygon designed to scatter light and thereby minimize reflection therefrom,” ¶ [0018], which likely suffices to meet pyramids, based upon the non-limiting language in the disclosure and not limiting Robitaille to only that clearly shown. That is, a plurality of shapes is abundantly clear, while the term pyramid can likely be construed as being included in any definition of “a three-dimensional polygon designed to scatter light and thereby minimize reflection,” id. Robitaille further discloses “The texture may be geometric or irregular without departing from the scope of the present teachings,” ¶ [0019], and, perhaps more importantly, that “Those skilled in the art will appreciate that other textures may be used,” id. This is evidence that Robitaille has considered any and all relevant textures but has disclosed and shown a preferred embodiment as an example only.
Regardless, and relying on Robitaille in view of Salinas, it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Alternatively, it has been held that the configuration of the claimed element was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed element was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Here, as long as the feature is ‘a three-dimensional polygon designed to scatter light and minimize reflection’, any manipulation of such polygonal features would fail to patentably distinguish over the prior art or would be obvious, absent persuasive evidence to the contrary.
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 should be directed to Bret Hayes at telephone number (571) 272 – 6902, fax number (571) 273-6902, or email address bret.hayes@uspto.gov, which is preferred, especially for requesting interviews, general questions, etc. Note, however, that return correspondence cannot be made in the event that information subject to the confidentiality requirement as set forth in 35 U.S.C. § 122 has been included. See MPEP §§ 502.03 and 713.01, I, regarding email communications. The examiner can normally be reached Mondays through Fridays from 5:30 AM to 1:30 PM, Eastern.
The Central FAX Number is 571-273-8300.
If attempts to contact the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers, can be reached at (571) 272 – 6874.
/Bret Hayes/
Primary Examiner, Art Unit 3641
14-Mar-26