DETAILED ACTION
Response to Arguments
Applicant's arguments filed 17 SEP 26 have been fully considered but they are not completely persuasive.
Regarding the amendments to the claims, there is no showing of visually distinguishable textures. The examiner agrees that sufficient enablement exists in the specification for varied texture and different patterns, see, e.g., ¶ [0029], but Applicant is obligated to show every feature of the claimed invention. See further below.
Regarding the typographical error citing Salinas, the examiner appreciates the edification and apologizes for such and any other mistakes that will likely occur.
Regarding Applicant’s previous response, the examiner clearly stated, under the Response to Arguments section, that such were in response to Applicant’s arguments. That a narrower claim mapping was required had nothing to do with the arguments and everything to do with the amendments to the claims. However, the examiner apologizes if this was unclear.
Regarding Salinas’ disclosure, whether such expressly articulates a top side as Applicant intends, a visually distinguishable texture is shown on the top side in, e.g., Figs. 14A, C, and D. As with other features of the firearm shown, e.g., the barrel in Figs. 12-13, Figs. 14A, C, and D show “WAR” with a star-shaped interior of the letter A, which is normally triangular. A presumption must be that Salinas etches, stamps, imprints, or otherwise manufactures the parts to include this. This is asserted because at least for the barrel because a decal would not last and some degree of permanence must also be presumed. As shown, the barrel indicates the caliber 9MM, which is also known to be machined into the barrel to readily identify such.
Regardless, even were Applicant able to prove that top side of Salinas shows only a decal, a decal on the top side would meet at least one texture (see previous explanation) on a portion thereof, which is visually distinguishable from that of the front side. Thus, Salinas still fairly anticipates the claimed invention.
The rejections as modified to address amendments to the claims must stand.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the top side being visually distinguishable from the front side in a top plan view of the viewing optic (claims 1, 13, and 18) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 2021/0231407 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, and wherein the top side is visually distinguishable from the front side in a top plan view of the viewing optic. See above and previous discussion(s).
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
22-Sep-26
Prosecution Insights