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 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 2-4 and 5-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In Claims 2 and 5, the feature, “projection” constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
Claims 9-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In Claim 9, the limitation providing a second surface oriented at an angle relative to the first surface constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation providing that the mounting is configured to couple to one of a stock, a barrel, or a frame of the crossbow constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation providing that the length of rope comprises one of a cable, a chain, a strap, a ribbon, or a wire constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
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) 1-4, 9-14, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pestrue, U.S. Patent Application No. 2009/0277435, in view of Chang, U.S. Patent Application No. 2006/0169258. As to Claim 1, Pestrue teaches a bow string positioning system (20) comprising a length of rope (50) connected between two separate points on an axle supported by a housing (24), paragraphs 0047, 0053. An axle is inherently present as indicated by crank handle operating take up spools. A bowstring connector (60) may be joined to the length of rope and connectable to a bowstring, paragraph 0054. A mounting may comprise an opening (hole) including an inner surface (inside of hole) and an outer surface (top of stock), paragraph 0049. Pestrue teaches a crank (48) operable to rotate take up spools to control an extent to which the length of rope is wound onto the spools and a position of the bowstring connector relative to the spools, paragraphs 0061-0064. Pestrue teaches that the crank on the outside of the housing operates the spools on each side of the housing to wind the rope on to the spools, suggesting that a rotating axle is present connecting the handle to the spools, see Figure 1A, suggesting the presence of an axle. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide an axle as suggested. The housing may be assembled with the mounting, paragraph 0049, noting that a projection (27) may be inserted into the hole. A first contact is established between the housing and the mounting at an engagement length (length of contacting surfaces) along at least a portion of the inner surface of the opening and a second contact between the housing and the mounting at an outer surface of the opening, paragraph 0049, noting that the lower surface of the housing contacts an upper surface of the stock. Pestrue, as modified, discloses the claimed invention except for providing an integral mounting instead of a mounting configured to couple to the crossbow. Chang teaches a crossbow bowstring positioning system (10, 20, 30) comprising a housing (20) and a mounting (10), paragraph 0030. The mounting may be configured to couple to a crossbow, paragraph 0031. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the mounting for coupling to a crossbow, as taught by Chang, to provide Pestrue, as modified, with a known substitute component of the bowstring positioning system. The examiner finds that the bowstring positioning system of prior art possesses the structural features of the inventive bowstring positioning system and is capable of performing in the same manner namely that first and second portions of force are applied and resisted as claimed. “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977, MPEP 2112. As to Claim 2, Pestrue teaches that the housing may include a projection and the mounting may include the opening arranged to receive the projection over the engagement length, paragraph 0049. As to Claim 3, Pestrue teaches that the projection may taper toward the distal end, paragraph 0007, suggesting that portions of the projection inside the mounting may not be in contact with the inside surface of the mounting. It is inherent that the opening has a length and it follows that the engagement length may be less than the length of the opening. It would have been obvious to one of ordinary skill in the art before the effective filing date to set the engagement length less than the length of the opening, as suggested. As to Claim 4, Pestrue teaches that the projection may extend from a from a front facing surface of the housing and the opening may extend from a back facing surface of the mounting toward a front facing surface of the mounting (forward end of crossbow stock, see Figure 5. As to Claim 9, Pestrue, as modified by Chang, is applied as in Claim 1, with the same obviousness rationale being found applicable. Further, Pestrue teaches that the housing may comprise a first surface (lower surface of housing having a flat shape) and a second surface (upper surface of projection having shape configured as a cross), paragraphs 0048 and 0049 and see Figure 4E. It follows that the second surface may be oriented at an angle relative to the first surface. As to Claim 10, Chang teaches that the mounting may be configured to couple to the stock (butt), paragraph 0031. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Pestrue, as modified, with the mounting configured to couple to the stock, as taught by Chang, to provide Pestrue, as modified, with a known substitute coupling configuration for the mounting. As to Claim 11, Pestrue, as modified, discloses the claimed invention except for specifying the material of the rope as one of the claimed alternatives. It would have been obvious to one of ordinary skill in the art before the effective filing date to form the rope of a material as claimed 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 (CCPA 1960). As to Claim 12, Pestrue teaches an axle lock (34) configured to permit rotation in a first direction and resist rotation in an opposite second direction, paragraph 0052, noting selective engagement of the lock with ratcheting mechanism. As to Claim 13, Pestrue teaches that the crank mechanism (handle) have be attached to one of the spools (38, 40), paragraph 0053, one of which is on the left and one is one the right, see Figure 1A. Figure 1A illustrates the crank on the right. Figure 1C illustrates the crank on the left. It follows that the crank mechanism is configured to be operated from either of two opposing end portions of the axle to permit left or right hand use. As to Claim 14, Pestrue teaches that a ratcheting mechanism may include a spring biased pawl selectively engaged with teeth of a ratchet wheel, paragraph 0052, suggesting that the pawl may be disengaged so as to rotate an axle to unwind the rope moving the bowstring connector toward and uncocked position. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Pestrue, as modified, with operable capability for unwinding the rope toward an uncocked position, as suggested. As to Claim 19, Pestrue is applied as in Claim 2, with the post considered as a counterpart to the projection. As to Claim 20 Pestrue is applied as in Claims 1 and 3.
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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-8 of U.S. Patent No. 12,078,447. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the patent discloses the limitations of Claim 1. Claim 2 of the patent discloses the limitations of Claim 2, with the post being considered a counterpart to the projection. Claim 3 of the patent discloses the limitations of Claim 3. Claim 4 of the patent discloses the limitations of Claim 4, with the receiving area being considered a counterpart to the opening.
Response to Arguments
Applicant’s arguments with respect to claim(s) submitted 17 July 2026 have been considered but are moot in view of the new ground of rejection.
Conclusion
Applicant's amendment necessitated the new 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.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 31 July 2026
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