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 .
Election/Restrictions
Claims 5-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/20/26.
In addition to claims 5 and 6, claims 10 and 20 are directed to non-elected species and are withdrawn. Species 6 is elected without traverse and is directed to a mounting apparatus with an integral slot in the firearm. Claims 10 and 20 are directed to a mounting apparatus with an adapter plate and slot formed between the adapter plate and firearm.
Claim Objections
Claim 9 is objected to because of the following informalities:
Line 1 of claim 9 reads “wherein slot” which appears to be a typographical error which should read “the slot.”
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 14-19 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.
Regarding claims 14 and 15, the limitations are directed to an optic sight; however, the claims from which 14 and 15 depend are directed to a mounting apparatus which is intended for use with an optic sight. The claims are indefinite because it is not sufficiently clear if the optic sight is a required part of the mounting apparatus or if the mounting apparatus merely has to be capable of mounting an optic sight. Because is not clear if the combination of the mounting apparatus and optic sight or the sub-combination of the mounting apparatus alone is being claimed, it is not clear what is required by claims 14 and 15. For the purposes of examination, the claims will be treated as requiring a mounting apparatus, like that in claim 1, which is intended for mounting an optic sight. If the intent is to claim the specifics of the optic sight, the claims should be amended to specifically require the assembly of an optic sight and mounting apparatus.
Claim 16 recites the limitation "the adapter" in the last two lines. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 is indefinite because the majority of the claim is written in an alternative manner; however, the pocket and slot are separate alternative structural features but are currently both required in the claim. For example, the pocket is part of the optic sight and the slot is part of the adapter or firearm. The claim recites the pocket or slot in the second paragraph, but the third and fourth paragraphs are not written in alternative form to be parallel to the previous limitations. Correction to the claim could be including “or” between the third and fourth paragraphs.
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.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4, 9 and 11-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Winfield, US Patent No. 10,876,815.
Regarding claim 1, Wingfield discloses an apparatus for mounting an optic sight on a firearm assembly using a retaining assembly (120, 157 inter alia), the retaining assembly including at least two retaining parts, at least one of which includes terminal ends and a length in which the length defines a rotatable drive interface (157 as shown in figures 11-13 for example), the apparatus comprising: a slot (115) defined by the firearm assembly; and the slot capable of receiving a portion of the retaining assembly in a partially assembled state (as shown in figures 7-11, portion 120 of the retaining assembly is received in slot 115), and preventing rotation of the received portion of the retaining assembly (120 is prevented from rotation in 115 by the shape and fasteners 140); wherein, while the received portion of the retaining assembly is within the slot, the rotatable drive interface is usable for securing the optic sight on the firearm assembly or the adapter (shown in figures 11-13).
Regarding claim 2, Wingfield further discloses the at least two retaining parts comprises: a retaining part including external threads (157); and a retaining part including internal threads (threaded aperture 132 of 120) to mate with the external threads.
Regarding claim 3, Wingfield further discloses the retaining part including the internal threads comprises a nut (broadly, yet reasonably, 120 is a nut)
Regarding claim 4, Wingfield further discloses the retaining part including the external threads comprises a bolt, a screw, a threaded stud, or a threaded post (157 is shown as a bolt or screw)
Regarding claim 9, Wingfield further discloses slot is defined by a slide (100) of the firearm assembly (figures 5-13).
Regarding claim 11, Wingfield further discloses the rotatable drive interface is defined by a first retaining part (157) of the at least two retaining parts (figures 11-13 show the drive interface of 157); and wherein the portion of the retaining assembly comprises at least a portion of a second different retaining part (120) of the at least two retaining parts.
Regarding claim 12, Wingfield further discloses the first retaining part is rotatable around an axis of rotation, using the rotatable drive interface, and wherein the rotatable drive interface is drivable using a tool oriented perpendicular to the axis of rotation (157 is a threaded fastener which engages the threaded aperture 132 and is therefore intended to be rotated about an axis to engage the threads. Additionally, the drive interface shown in a hex head which is known to be drivable by an allen wrench/key which is oriented perpendicular to the axis to drive rotation of the threaded member).
Regarding claim 13, Wingfield further discloses the second retaining part comprises a bottom-up fastener (broadly, yet reasonably, 120 is a bottom up fastener with the threaded bosses 132) having a head (figures 7 and 8, for example, show the head end in the slot of the firearm slide) and an end opposite the head (130), wherein the head is located further from the optic sight than the end when the received portion of the retaining assembly is within the slot (figure 11)
Regarding claim 14, Wingfield further discloses the optic sight includes a pocket to receive the first retaining part (figure 11 shows a pocket which receives the head of 157).
Regarding claim 15, Wingfield further discloses the optic sight comprises a closed emitter optic sight including an environmentally-isolated cavity and a beam emitter located therein (in view of the 112 issues, specific optic sight is not required by the claims but the mounting assembly is required to be useable with an optic sight like that claimed. 7:14-31 of Wingfield clearly discloses a variety of sights including a reflex sight which is known to be a closed cavity with beam emitter therein)
Regarding claim 16, Wingfield discloses an optic sight (150) installable on a firearm assembly using a retaining assembly, the retaining assembly including at least two retaining parts (157 and 120), at least one of which includes terminal ends and a length in which the length defines a rotatable drive interface (157), the optic sight comprising: a pocket (figure 11 shows pocket receiving head of 157) defined by a body of the optic sight; and the pocket capable of receiving a portion of the retaining assembly in a partially assembled state, and allowing rotation of the received portion of the retaining assembly; wherein, while the received portion of the retaining assembly is within the pocket, the rotatable drive interface is usable for securing the optic sight on the firearm assembly (the pocket associated with aperture 155 of the optic 150 allows for the rotation of 157 to secure the optic sight to the firearm assembly)
Regarding claim 17, Wingfield further discloses an environmentally- isolated cavity and a beam emitter located therein (7:14-31 of Wingfield clearly discloses a variety of sights including a reflex sight which is known to be a closed cavity with beam emitter therein)
Regarding claim 18, Wingfield further discloses a beam emitter to transmit a beam, through air of the environment, to a light transmissive element located forwardly of the beam emitter (150 is shown as a red dot sight and 7:14-31 also discloses a red dot sight and a red dot sight is known to have an open environment between the light transmissive element and beam emitter)
Regarding claim 19, Wingfield discloses an article a part of the firearm assembly on which an optic sight is mountable (figures 5-13), the article usable with a retaining assembly including at least two retaining parts (157 and 120), at least one of which includes terminal ends and a length in which the length defines a rotatable drive interface (157), the article comprising: a slot (115) in the case that the article comprises said part; and the slot capable of receiving a second different portion (120) of the retaining assembly in a partially assembled state, and preventing rotation of the received second portion of the retaining assembly (120 is prevented from rotation by both the shape and mating slot and fasteners 140); wherein, while the received first portion of the retaining assembly is within the pocket or the received second portion of the retaining assembly is within the slot, the rotatable drive interface is usable for securing the optic sight on the firearm assembly or the adapter (the pocket associated with aperture 155 of the optic 150 allows for the rotation of 157 to secure the optic sight to the firearm assembly)
Claim(s) 1-4, 11, 13-16 and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holly, US Patent No. 11,002,517.
Regarding claim 1, Holly discloses an apparatus for mounting an optic sight on a firearm assembly (figure 11 for example) using a retaining assembly (42 and 332), the retaining assembly including at least two retaining parts, at least one of includes terminal ends and a length in which the length defines a rotatable drive interface (42), the apparatus comprising: a slot (334) defined by an adapter (300) thereon; and the slot capable of receiving a portion of the retaining assembly in a partially assembled state (figure 16b), and preventing rotation of the received portion of the retaining assembly (figures 14-17 and [0103]); wherein, while the received portion of the retaining assembly is within the slot, the rotatable drive interface is usable for securing the optic sight the adapter (figures 11 and 19-20 show the drive end of the fastener 42 being engageable to secure the optic sight to the adapter).
Regarding claim 2, Holly further discloses the at least two retaining parts comprises: a retaining part including external threads (42); and a retaining part including internal threads (354) to mate with the external threads.
Regarding claim 3, Holly further discloses the retaining part including the internal threads comprises a nut (332 is broadly, yet reasonably a nut)
Regarding claim 4, Holly further discloses the retaining part including the external threads comprises a bolt, a screw, a threaded stud, or a threaded post (42 is disclosed as a threaded fastener and is clearly a screw or bolt in the figures)
Regarding claim 11, Holly further discloses the rotatable drive interface is defined by a first retaining part (42) of the at least two retaining parts; and wherein the portion of the retaining assembly comprises at least a portion of a second different retaining part (332) of the at least two retaining parts.
Regarding claim 13, Holly further discloses the second retaining part comprises a bottom-up fastener (332 is broadly, yet reasonably a bottom-up fastener) having a head (348) and an end opposite the head (350), wherein the head is located further from the optic sight than the end when the received portion of the retaining assembly is within the slot (figure 11).
Regarding claim 14, Holly further discloses the optic sight includes a pocket to receive the first retaining part (figure 11 shows a pocket receiving the head end of 42)
Regarding claim 15, Holly further discloses the optic sight comprises a closed emitter optic sight including an environmentally-isolated cavity and a beam emitter located therein (in view of the 112 issues, specific optic sight is not required by the claims but the mounting assembly is required to be useable with an optic sight like that claimed. 1:11-25 discloses a reflex sight is known and a reflex sight is known as a closed sight like that claimed)
Regarding claim 16, Holly discloses an optic sight (10) installable on a firearm assembly using a retaining assembly, the retaining assembly including at least two retaining parts (42 332), at least one of which includes terminal ends and a length in which the length defines a rotatable drive interface (42), the optic sight comprising: a pocket defined by a body of the optic sight (shown in figure 11 receiving head end of 42); and the pocket capable of receiving a portion of the retaining assembly in a partially assembled state, and allowing rotation of the received portion of the retaining assembly; wherein, while the received portion of the retaining assembly is within the pocket, the rotatable drive interface is usable for securing the optic sight on the adapter (shown in figure 11 and 19-20, for example, 16:4-39 discloses 42 is rotatable to secure the optic sight on the adapter)
Regarding claim 18, Holly further discloses a beam emitter to transmit a beam, through air of the environment, to a light transmissive element located forwardly of the beam emitter (red dot sight shown and known to have beam emitter rear of the lens)
Regarding claim 19, Holly discloses an article comprising an adapter (300) for mounting the optic sight on a firearm assembly, the article usable with a retaining assembly including at least two retaining parts (42, 342), at least one of which includes terminal ends and a length in which the length defines a rotatable drive interface (42), the article comprising: a slot (336) in the case that the article comprises the adapter; and the pocket capable of receiving a first portion of the retaining assembly in a partially assembled state, and allowing rotation of the received first portion of the retaining assembly; the slot capable of receiving a second different portion of the retaining assembly in a partially assembled state, and preventing rotation of the received second portion of the retaining assembly; wherein, while the received first portion of the retaining assembly is within the pocket or the received second portion of the retaining assembly is within the slot, the rotatable drive interface is usable for securing the optic sight on the firearm assembly or the adapter (shown in figure 11 and 19-20, for example, 16:4-39 discloses 42 is rotatable to secure the optic sight on the adapter)
Claim(s) 1-4, 9, 11-14, 16 and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Planck et al., hereafter Planck, US Patent No. 12,235,078.
Regarding claim 1, Planck discloses an apparatus for mounting an optic sight on a firearm assembly using a retaining assembly (20, 30 and 38), the retaining assembly including at least two retaining parts (30 and 38), at least one of which includes terminal ends and a length in which the length defines a rotatable drive interface (38), the apparatus comprising: a slot (S) defined by the firearm assembly (F); and the slot capable of receiving a portion of the retaining assembly in a partially assembled state (figure 7 for example), and preventing rotation of the received portion of the retaining assembly (3:59-4:10 discloses preventing rotation in the partially assembled state); wherein, while the received portion of the retaining assembly is within the slot, the rotatable drive interface is usable for securing the optic sight on the firearm assembly (figures 11-14 and 4:19-45).
Regarding claim 2, Planck further discloses the at least two retaining parts comprises: a retaining part including external threads (38); and a retaining part including internal threads (internally threaded post 34 of 30) to mate with the external threads.
Regarding claim 3, Planck further discloses the retaining part including the internal threads comprises a nut (broadly, yet reasonably, 30 is a nut).
Regarding claim 4, Planck further discloses the retaining part including the external threads comprises a bolt, a screw, a threaded stud, or a threaded post (38 is disclosed a screws)
Regarding claim 9, Planck further discloses the slot is defined by a slide of the firearm assembly (figure 1).
Regarding claim 11, Planck further discloses the rotatable drive interface is defined by a first retaining part of the at least two retaining parts (38); and wherein the portion of the retaining assembly comprises at least a portion of a second different retaining part of the at least two retaining parts (30).
Regarding claim 12, Planck further discloses the first retaining part is rotatable around an axis of rotation, using the rotatable drive interface, and wherein the rotatable drive interface is drivable using a tool oriented perpendicular to the axis of rotation (38 is a threaded fastener which engages the threaded aperture 34 and is therefore intended to be rotated about an axis to engage the threads. Additionally, the drive interface shown in a torx head which is known to be drivable by an L-shaped torx wrench/key which is oriented perpendicular to the axis to drive rotation of the threaded member).
Regarding claim 13, Planck further discloses the second retaining part comprises a bottom-up fastener (figure 6 for example) having a head (32) and an end (34) opposite the head, wherein the head is located further from the optic sight than the end when the received portion of the retaining assembly is within the slot (figures 1 and 6).
Regarding claim 14, Planck further discloses the optic sight includes a pocket to receive the first retaining part (shown in figure 8m, the optic sight has a pocket for receiving the head end of 38)
Regarding claim 16, Planck discloses an optic sight (12) installable on a firearm assembly using a retaining assembly (20, 30, 38), the retaining assembly including at least two retaining parts (20, 30, 38), at least one of which includes terminal ends and a length in which the length defines a rotatable drive interface (38), the optic sight comprising: a pocket defined by a body of the optic sight; and the pocket capable of receiving a portion of the retaining assembly in a partially assembled state, and allowing rotation of the received portion of the retaining assembly; wherein, while the received portion of the retaining assembly is within the pocket, the rotatable drive interface is usable for securing the optic sight on the firearm assembly or the adapter (figure 8 shows a pocket which receives the head end of 38 and 4:19-45 discloses mounting using the fasteners to secure the sight).
Regarding claim 18, Planck further discloses a beam emitter to transmit a beam, through air of the environment, to a light transmissive element located forwardly of the beam emitter (red dot sight shown and known to have beam emitter rear of the lens)
Regarding claim 19, Planck discloses an article comprising a part of the firearm assembly on which the optic sight is mountable (figure 1), the article usable with a retaining assembly including at least two retaining parts (20, 30, 38), at least one of which includes terminal ends and a length in which the length defines a rotatable drive interface (38), the article comprising: a slot (S) in the case that the article comprises said part; and the slot capable of receiving a second different portion of the retaining assembly in a partially assembled state (figure 7 for example), and preventing rotation of the received second portion of the retaining assembly (3:59-4:10 discloses preventing rotation in the partially assembled state); wherein, while the received first portion of the retaining assembly is within the pocket or the received second portion of the retaining assembly is within the slot, the rotatable drive interface is usable for securing the optic sight on the firearm assembly or the adapter (figure 8 shows a pocket which receives the head end of 38 and 4:19-45 discloses mounting using the fasteners to secure the sight).
Claim Rejections - 35 USC § 103
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wingfield in view of Renaud et al., hereafter Renaud, US Patent No. 12,281,877.
Regarding claim 7, Wingfield discloses the claimed invention except for the retaining part with the internal threads having the drive interface. Nonetheless, Renaud teaches a similar mounting structure and the retaining part 36 which is prevented from rotating having external threads and the retaining part 38 with internal threads having a drive interface.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Wingfield to reverse the configuration of the threaded components such that the internally threaded component has a drive interface similar to that as taught by Renaud since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167. Renaud clearly shows the reversed configuration of the threaded components as well known in the art and doing so would have been an obvious matter of design choice to try with reasonable expectation of success.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holly in view of Renaud.
Regarding claim 7, Holly discloses the claimed invention except for the retaining part with the internal threads having the drive interface. Nonetheless, Renaud teaches a similar mounting structure and the retaining part 36 which is prevented from rotating having external threads and the retaining part 38 with internal threads having a drive interface.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Holly to reverse the configuration of the threaded components such that the internally threaded component has a drive interface similar to that as taught by Renaud since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167. Renaud clearly shows the reversed configuration of the threaded components as well known in the art and doing so would have been an obvious matter of design choice to try with reasonable expectation of success.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Planck in view of Renaud.
Regarding claim 7, Planck discloses the claimed invention except for the retaining part with the internal threads having the drive interface. Nonetheless, Renaud teaches a similar mounting structure and the retaining part 36 which is prevented from rotating having external threads and the retaining part 38 with internal threads having a drive interface.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Planck to reverse the configuration of the threaded components such that the internally threaded component has a drive interface similar to that as taught by Renaud since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167. Renaud clearly shows the reversed configuration of the threaded components as well known in the art and doing so would have been an obvious matter of design choice to try with reasonable expectation of success.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but may be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is provided on form PTO-892.
The applicant is invited to call the examiner for additional information on how particular cited references would be interpreted or applied to the claimed invention or potential amendments.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DERRICK R MORGAN/Primary Examiner, Art Unit 3641
Prosecution Insights