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
Applicant’s election without traverse of the fly cutter species, the single cutting edge species, and the cutting insert illustrated in Figure 9 in the reply filed on July 9, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 6-7 and 10-12 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
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 1-5, 8-9 and 13-20 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.
Claim 1 recites “configuring an off-center cutting tool with a number of off-center cutting edges” in Line 3. The scope of the “configuring” step is unclear as to what is required to meet the step. That is, it is unclear whether the limitation is met by merely providing the claimed features or if something more is required. Appropriate correction required.
Claim 1 recites “a surface” in Line 5. Yet, antecedent basis has already been set forth for this limitation. As such, it is unclear whether this recitation refers back to the previous recitation or a different/additional feature. Appropriate correction required.
Claim 1 recites “a material” in Line 5. Yet, antecedent basis has already been set forth for this limitation. As such, it is unclear whether this recitation refers back to the previous recitation or a different/additional feature. Appropriate correction required.
Claim 1 recites “a texture” in Line 9. Yet, antecedent basis has already been set forth for this limitation. As such, it is unclear whether this recitation refers back to the previous recitation or a different/additional feature. Appropriate correction required.
Claim 1 recites “the texture includes interleaved milled areas and unmilled areas in the surface.” The term “interleaved” is not properly used in this instance. The term means “to arrange in or as if in alternate layers.” See https://www.merrium-webster.com/dictionary/interleave (last visited Sept. 15, 2025). Therefore, the scope of the claim of interleaved milled and unmilled areas, being in alternating layers, is unclear. Appropriate correction required.
Claim 13 recites “using a computer numerical (CNC) machine.” The scope of the limitation of “using” the machine is unclear as to how it is used. Appropriate correction required.
Claim 14 recites “the material comprises a firearm accessory.” It is unclear whether the material includes a firearm accessory as recited or it is a firearm accessory as disclosed. Appropriate correction required.
Claim 15 recites “the firearm accessory comprises a handguard.” It is unclear whether the accessory includes a handguard as recited or it is a handguard as disclosed. Appropriate correction required.
Claim 17 recites “configuring an insert mill with a number of replaceable carbide inserts” in Line 3. The scope of the “configuring” step is unclear as to what is required to meet the step. That is, it is unclear whether the limitation is met by merely providing the claimed features or if something more is required. Appropriate correction required.
Claim 17 recites “using a computer numerical (CNC) machine” in Lines 4-5. The scope of the limitation of “using” the machine is unclear as to how it is used. Appropriate correction required.
Claim 17 recites “a surface” in Line 6. Yet, antecedent basis has already been set forth for this limitation. As such, it is unclear whether this recitation refers back to the previous recitation or a different/additional feature. Appropriate correction required.
Claim 17 recites “a firearm accessory” in Line 6. Yet, antecedent basis has already been set forth for this limitation. As such, it is unclear whether this recitation refers back to the previous recitation or a different/additional feature. Appropriate correction required.
Claim 17 recites “a texture” in Line 10. Yet, antecedent basis has already been set forth for this limitation. As such, it is unclear whether this recitation refers back to the previous recitation or a different/additional feature. Appropriate correction required.
Claim 17 recites “the texture includes interleaved milled areas and unmilled areas in the surface.” The term “interleaved” is not properly used in this instance. The term means “to arrange in or as if in alternate layers.” See https://www.merrium-webster.com/dictionary/interleave (last visited Sept. 15, 2025). Therefore, the scope of the claim of interleaved milled and unmilled areas, being in alternating layers, is unclear. Appropriate correction required.
Claim 15 recites “the firearm accessory comprises a handguard.” It is unclear whether the accessory includes a handguard as recited or it is a handguard as disclosed. Appropriate correction required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9 and 18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 5 and 17, respectively, already set forth that there must be at least one insert included. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1-4 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Runyon (US Patent No. 4,640,651).
(Claim 1) Runyon discloses a method for manufacturing a texture on a surface of a material (Figs. 5-12). The method includes configuring an off-center cutting tool (26) with a number of off-center cutting edges (28, 30); rotating the off-center cutting tool at a selected rotation speed (Col. 3, Lines 14-21, 61-62); and feeding the off-center cutting tool across a surface of a material at a selected feed rate to mill the surface with the off-center cutting tool (Col. 3, Lines 14-21). The off-center cutting tool is configured with the number of off-center cutting edges, the rotation speed of the off-center cutting tool is selected, and the feed rate of the off-center cutting tool across the surface is selected to produce a texture in the surface in a single pass of the off-center cutting tool across the surface and wherein the texture includes interleaved milled areas and unmilled areas in the surface (Figs. 1-12; Col. 3, Lines 14-21, 61-62).
(Claim 2) The number of off-center cutting edges includes one (28, 30; Col. 3, Lines 62-66).
(Claim 3) The number of off-center cutting edges includes two or more (28, 30; Col. 3, Lines 62-66).
(Claim 4) The off-center cutting tool (26) includes a solid material (Col. 3, Lines 62-66).
(Claim 16) The material includes aluminum (Col. 4, Lines 21-36).
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.
Claims 5, 8, 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Runyon (US Patent No. 4,640,651) in view of LaMarca, Sr. (US Patent No. 9,486,862 B1).
(Claims 5, 8 and 9) Runyon discloses a fly cutter (26), but the reference does not explicitly disclose the off-center cutting tool as including an insert mill with one or more replaceable carbide inserts that are located off-center of the insert mill.
LaMarca, Sr. discloses an off-center cutting tool being an insert mill with one replaceable carbide insert that is located off-center of the insert mill (Figs. 1-20; Col. 2, Lines 39-67; Col. 4, Lines 1-20). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method disclosed in Runyon with a cutting tool with carbide inserts as suggested in LaMarca, Sr. as a simple substitution of one known element for another to bring about the predictable result of machining in accordance with the process of Runyon. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
(Claim 13) Runyon does not explicitly disclose the use of a CNC machine.
LaMarca, Sr. discloses that the fly cutter may be used in a CNC machine (Col. 3, Lines 43-47). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method disclosed in Runyon with a CNC machine as suggested in LaMarca, Sr. in order to take advantage of the computer control of the machine to perform the method automatically. See KSR, 550 U.S. at 418 (reciting several exemplary rationales that may support a finding of obviousness); In re Venner, 262 F.2d 91, 95 (CCPA 1958) (holding that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Runyon (US Patent No. 4,640,651) in view of Kimmel et al. (US Patent No. 8,739,448 B2).
Runyon does not explicitly disclose a handguard firearm accessory.
Kimmel et al. (“Kimmel”) discloses a texture (24) on a surface of a firearm accessory, which is a handguard (Col. 6, Lines 64-67; Col. 7, Lines 1-4). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the method disclosed in Runyon with a work material including a handguard as suggested by Kimmel in order to provide a roughened surface to the handguard for the purpose of increasing the grip thereof (Col. 6, Lines 64-67; Col. 7, Lines 1-4).
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Runyon (US Patent No. 4,640,651) in view of LaMarca, Sr. (US Patent No. 9,486,862 B1).
Runyon discloses a method for manufacturing a texture on a surface of a material (Figs. 5-12). The method includes configuring an off-center cutting tool (26) with a number of off-center cutting edges (28, 30); rotating the off-center cutting tool at a selected rotation speed (Col. 3, Lines 14-21, 61-62); and feeding the off-center cutting tool across a surface of a material at a selected feed rate to mill the surface with the off-center cutting tool (Col. 3, Lines 14-21). The off-center cutting tool is configured with the number of off-center cutting edges, the rotation speed of the off-center cutting tool is selected, and the feed rate of the off-center cutting tool across the surface is selected to produce a texture in the surface in a single pass of the off-center cutting tool across the surface and wherein the texture includes interleaved milled areas and unmilled areas in the surface (Figs. 1-12; Col. 3, Lines 14-21, 61-62).
Runyon discloses a fly cutter (26), but the reference does not explicitly disclose the off-center cutting tool as including an insert mill with one or more replaceable carbide inserts that are located off-center of the insert mill.
LaMarca, Sr. discloses an off-center cutting tool being an insert mill with one replaceable carbide insert that is located off-center of the insert mill (Figs. 1-20; Col. 2, Lines 39-67; Col. 4, Lines 1-20). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method disclosed in Runyon with a cutting tool with carbide inserts as suggested in LaMarca, Sr. as a simple substitution of one known element for another to bring about the predictable result of machining in accordance with the process of Runyon. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
Runyon does not explicitly disclose the use of a CNC machine.
LaMarca, Sr. discloses that the fly cutter may be used in a CNC machine (Col. 3, Lines 43-47). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the method disclosed in Runyon with a CNC machine as suggested in LaMarca, Sr. in order to take advantage of the computer control of the machine to perform the method automatically. See KSR, 550 U.S. at 418 (reciting several exemplary rationales that may support a finding of obviousness); In re Venner, 262 F.2d 91, 95 (CCPA 1958) (holding that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art).
Runyon does not explicitly disclose a handguard firearm accessory.
Kimmel et al. (“Kimmel”) discloses a texture (24) on a surface of a firearm accessory, which is a handguard (Col. 6, Lines 64-67; Col. 7, Lines 1-4). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the method disclosed in Runyon with a work material including a handguard as suggested by Kimmel in order to provide a roughened surface to the handguard for the purpose of increasing the grip thereof (Col. 6, Lines 64-67; Col. 7, Lines 1-4).
Claims 1, 14, 15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kimmel et al. (US Patent No. 8,739,448 B2) in view of Burke et al. (US Patent No. 8,443,704 B2).
Kimmel et al. (“Kimmel”) discloses a texture (24) on a surface of a firearm accessory, which is a handguard (Col. 6, Lines 64-67; Col. 7, Lines 1-4). The handguard includes aluminum (Col. 7, Lines 31-33). Kimmel does not explicitly disclose the method of manufacturing the texture.
Burke et al. (“Burke”) discloses a method for manufacturing a texture on a surface that includes configuring an insert mill (100) with a number of off-center replaceable carbide inserts (102; Col. 5, Lines 32-34); rotating the insert mill at a selected rotation speed using a computer numerical control (CNC) machine (Col. 6, Lines 38-56; Col. 7, Lines 1-15); and feeding the insert mill across a surface of a firearm accessory at a selected feed rate to mill the surface with the insert mill using the CNC machine (Figs. 2, 4). The insert mill is configured with the number of off-center replaceable carbide inserts, the rotation speed of the insert mill is selected, and the feed rate of the insert mill across the surface is selected to produce a texture in the surface in a single pass of the insert mill across the surface and wherein the texture includes interleaved milled areas and unmilled areas in the surface (e.g., Fig. 3). At a time prior to filing it would have been obvious to provide the handguard disclosed in Kimmel with the method of providing a texture as disclosed in Burke in order to provide the textured surface to the workpiece.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
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