DETAILED ACTION
This is a final action reissue examination of U.S. Patent No. 10,393,457 B2 (hereafter the’457 patent and equivalent) addressing the filing 07 August 2024.
The following is the status of the claim under current review:
Claims 1-20 are pending and subject to examination
Claims 1, 3, 4. 7, 9, 10, 13, 14, 17 and 18 are amended
Claims 2, 5, 6, 8, 11, 12, 15, 16 are as patented
Claims 19 and 20 are new
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Original Disclosure - Definition
The present application is a reissue of US Patent No. 10,393,457 B2, which issued from App. No. 16/100460 having a filing date of 10 August 2018. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘460 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the file indicates no maintenance fees are due at this time. The next fee, being the 7.5-year fee, has a window that opens 27 August 2026. The window for the fee with surcharge begins 02 March 2027, and the last day to pay is 27 August 2027.
Response to Arguments
The following addresses applicant’s remarks/arguments dated 31 March 2026. Applicant’s courtesies were appreciated.
Specification (response: page 8) –
Applicant’s amendments to the specification overcome the objections raised and they are withdrawn.
Amendments (response: page 8) –
Applicant’s amendment to the claims overcomes the objection previously raised; however new objections arise in light of new amendments made. See appropriate heading below.
35 USC 251 – broadening after two years (response: beginning page 9) –
Applicant’s response is respectfully not persuasive. While not disagreeing with the priority dates indicated by applicant, the examiner looks to MPEP 1412.03(IV) and reproduces a portion below including case law:
In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing reissue application were properly rejected under 35 U.S.C. 251 because the proposal for broadened claims was not made (in the parent reissue application) within two years from the grant of the original patent and the public was not notified that broadened claims were being sought until after the two-year period elapsed.)
In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The failure by an applicant to include an oath or declaration indicating a desire to seek broadened claims within two years of the patent grant will bar a subsequent attempt to broaden the claims after the two year limit.) (emphasis in original)
In the instant case, applicant did not provide an unequivocal statement of an intent to broaden in the 17/459617 oaths. To the contrary, applicant clearly states that the reissue is a narrowing reissue (see reproduced portion of the error statements from the respective oaths below.) The language provided in the subsequent oath dated 28 February 2024, “without narrowing the scope of any existing patent claims” is not an unequivocal statement of intent to broaden. As a result, the examiner maintains the rejection as proper.
35 USC 251 – new matter (response: beginning page 11) –
Applicant’s arguments are noted but respectfully not persuasive. Regarding the term “flexible” and equivalent language, the disclosure, including the drawings does not clearly show that applicant had this feature in possession at the time of filing. As applicant appears to be deleting this language, the rejection under this heading is moot with respect to the term “flexible” and equivalent language. Applicant is placed on notice, however, that a response including this language could rise to a rejection under this heading.
Regarding the language directed to “protrusion” (claims 3, 7 and 14), the examiner respectfully disagrees. A “protrusion” is generic in nature and encompasses language that is both known and unknown to applicant at the time of filing. Further, “protrusion” is different in scope than the language it replaces: “hinge base”. The disclosure fails to provide the metes and bounds of what constitutes a “protrusion”, and the examiner maintains the position that as this language is different in scope than “hinge base” and does not include support in the written description of drawings, it is new matter.
35 USC 251 – recapture (response: beginning page 11) –
Applicant’s arguments are noted and persuasive. The rejection under this heading with respect to recapture is withdrawn.
35 USC 112(a) – new matter (response: beginning page 14) –
The examiner’s position is the same under this heading as previously addressed, and will not repeat the position here for brevity.
35 USC 112(b) – indefiniteness (response: beginning page 15) –
Regarding the language “fore and aft sides and two longer lateral sides…” and “first or second open ends” (response: page 16), upon further review, the examiner considers this language definite and withdraws the rejection with respect to this language. While noting applicant’s position regarding past review, 37 CFR 1.176 and MPEP 1440 are clear: a reissue application will be fully examined in the same manner and subject to the same rules as being presented for the first time in an original non-reissue, nonprovisional application. As a result, prior consideration and interpretation is not applicable.
Regarding the language “another one” (response: page 16), the examiner respectfully disagrees. As previously stated, “another” is interpreted as “an additional one” and not to a feature previously claimed, as opposed to “the other one of the X or the Y…”, which clearly references a previously cited feature.
Regarding the language “a cover hinge opposite to the latch” (response: page 16), the examiner respectfully disagrees with applicant’s position. The language of the claim does not properly provide an interrelation of parts to denote with respect to how the latch and cover hinge can be opposite to each other. The examiner explained the rationale below and will not repeat the position here for brevity.
Regarding the language “undamaged feed lips” (response: page 17), applicant’s argument is persuasive with respect to the disclosure and the rejection is withdrawn.
Regarding the language of claims 7, 19 and 20 (response: pages 17 and 18), applicant’s amendments overcome the rejections and they is withdrawn.
Specification
The amendment to the specification dated 31 March 2026, is entered.
Amendments
The amendment to the claims filed on 31 March 2026, is objected to as not complying with the requirements of 37 CFR 1.173(b)(2) and (d)(1)&(2) because each change relative to the ‘457 patent has not been properly marked. 37 CFR 1.173(b)(2) and (d)(1)&(2) state:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “<U>” and end with “</U>” to properly identify the material being added.
Claims 19 and 20 do not properly show amendments. The amendments are to be made with respect to the patented claims. As Claims 19 and 20 are new, they should be written as new claims with the language of the claim underlined. New claims, e.g., Claim 19 “on[an] the aft side…” should not show amendments. The correct way to present the noted language is “on the aft side…”.
These corrections should be submitted with the next correspondence.
35 USC 251
35 USC 251 – Statute:
The following is a quotation of 35 USC §251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
35 USC 251 – broadening after two years:
Claims 1-20 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
The record shows that the present reissue is a continuation of Reissue Application No. 17/459617, filed 27 August 2021, and the ‘617 application is a reissue application of U.S. Application 16/100460, which issued as U.S. Patent 10,393,457 on 27 August 2019. While noting the filing of the ‘617 application is within two years from issuing of the ‘457 patent, it was a narrowing reissue only, as indicated by only having the inclusion of dependent Claims 19 and 20, and the error statements of the oaths indicating a narrowing reissue. The error statements are reproduced below:
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Reproduction of the 27 August 2021 Error Statement
for U.S. Reissue Application 17/459617
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Reproduction of the 28 February 2024 Error Statement
for U.S. Reissue Application 17/459617
Upon review of the file, there is no clear indication that applicant attempted to broaden the ‘617 application, either through the error statement or though amendment. As a result, the ‘617 reissue is considered a narrowing reissue.
Turning now to the present reissue, applicant is broadening claims. This is evidenced by the error statement in the Oath and in the claim amendments. As the ‘617 application included no broadening subject matter, the present application may not include broadening material, even though the ‘617 application was filed within two years from the issue of the underlying patent. See In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing reissue application were properly rejected under 35 U.S.C. 251 because the proposal for broadened claims was not made (in the parent reissue application) within two years from the grant of the original patent and the public was not notified that broadened claims were being sought until after the two-year period elapsed.) As a result, Claims 1-20 are rejected under this heading.
35 USC 251 – new matter:
Claim(s) 3, 7 and 14 is/are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows:
Claims 3, 7 and 14 each have broadened language directed to a “protrusion” which was broadened and different in scope from “hinge base”. Upon review of the disclosure, the word “protrusion” does not appear, and the figures are used only for what is clearly shown. As a result, the examiner considers “protrusion” as encompassing features that are both known and unknown to applicant at the time of filing and results in new matter. “Protrusion” is a broad term and the metes and bounds of “protrusion” are not clearly set forth in the disclosure. As a result, the examiner considers this language new matter.
Further, per claim 7, the claim as amended now claims “a protrusion protruding at least partially from one of the fore, aft, or lateral sides of the casing…”. Review of the disclosure, including the drawings, labels the hinge base, now amended to “protrusion” as 48. See Fig. 4 and Col. 5, lines 66 and following. The disclosure does not clearly indicate that the hinge base, or protrusion protrude from an aft side. As a result, the examiner considers this limitation new matter.
Claim Rejections - 35 USC § 112
35 USC 112(a) – new matter:
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.
Claim(s) 3, 7 and 14 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.
Claims 3, 7 and 14, are rejected under this heading for the same new matter rejections under 35 USC 251, above, which will not be repeated here for brevity.
35 USC 112(b) – indefiniteness:
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 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.
Below is a reproduction of the claims with the examiner’s comments in bold italics.
Claim 1: An ammunition magazine comprising:
a casing with fore and aft sides and two longer lateral sides longer than the fore and aft sides and first or second open ends;
a first notch arranged adjacent to one of the first or second open ends;
a second notch arranged adjacent to
one of the first or second open ends (“another one” as used in this context, is indefinite as “another one” is customarily interpreted as “in addition”); and
a protective cover with a latch configured to couple into the first notch and the second notch, though not at the same time, thereby removably securing the protective cover to either of the first or second open ends of the casing.
Claim 2: The ammunition magazine of claim 1, wherein the protective cover further comprises a cover hinge opposite to the latch (indefinite as with respect to what the cover hinge is opposite the latch - e.g., opposite end, opposite side, etc.).
Claim 13: The ammunition magazine of claim 7, further comprising:
a first notch arranged adjacent to the one of the first or second open ends; and
a second notch arranged adjacent to another one (“another one” is indefinite for reasons previously provided) of the first or second open ends.
Claim 17: The ammunition magazine of claim 14, further comprising a second notch arranged adjacent to another one (“another one” is indefinite for reasons previously provided) of the first or second open ends such that the protective cover is removably secured to the another one of the first or second open ends of the casing.
Allowable Subject Matter
The examiner reserves comment on the allowability of Claims 1-20 pending resolution of the rejections above, including the rejections under 35 USC 112(a) and (b). The claims will be subject to further consideration upon remedying the issues above.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,393,457 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
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 or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
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, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/CATHERINE S WILLIAMS/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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