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 .
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11150046 and claims 1-7 of U.S. Patent No. 12196238. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the present claims are found in the claims of the subject patents.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 should end in a period.
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 4,6 and 7 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.
In claim 4 there is no antecedent basis for the term “said lip”. It appears that claim 4 is meant to depend from claim 3. For the purposes of examination it was assumed that claim 4 depended from claim 3, as this is what was meant to be claimed per the examiner’s best understanding of the claimed invention.
In claim 6 there is no antecedent basis for the term “said lip”. It appears that claim 6 is meant to depend from claim 3. For the purposes of examination it was assumed that claim 6 depended from claim 3, as this is what was meant to be claimed per the examiner’s best understanding of the claimed invention.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1,2,3,5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng(US20100307046) and further in view of Peterson(US7571563).
[claim 1] Cheng teaches a system for a quick detach stick, the system comprising a body(31) coupled to at least one leg(21) via a flexible joint(22), wherein the body comprises a recess(311), wherein the body comprises a release switch(332) coupled to a stopper(3311) wherein the stopper extends into the center of the recess(as seen in figure 3a).
Cheng teaches a system for a quick detach stick as detailed above, with a generally rectangular recess(311) having a center. Cheng however does not teach that the recess is circular. Peterson teaches a similar system for a quick detach stick which uses a circular recess(110) to receive an adapter from a vertical direction. It would have been obvious to one of ordinary skill in the art as of the effective filing date to use a circular recess with the body of Cheng, in place of the generally rectangular recess, as a matter of obvious design choice, as the two are the obvious functional equivalents of one another, as they perform substantially the same function in substantially the same manner.
[claim 2] wherein the flexible joint comprises a coil spring(24).
[claim 3] wherein the recess is located atop said body, and wherein said recess comprises an open top, side walls, and an open side, and wherein the recess further comprises a lip(around upper side of 311 seen in figure 4) extending from the side wall into the recess.
[claim 5] further comprising an adapter(11,12) which can be coupled to the body via said recess.
[claim 6] further comprising an adapter(11,12) wherein said adapter comprises a groove(above 322) which mates with the lip, and a void(3312) which mates with the stopper.
[claim 7] wherein the void is located on the bottom of the adaptor, and wherein the groove is located along the outer perimeter of the adapter, and wherein the stopper of the body is received by the void of the adapter, as seen in figures 3a,3b.
[claim 8] Cheng teaches a device as detailed above, with an adaptor(11,12) having vertical set screws(14). Cheng however does not teach the use of a horizontal set screw. It would have been obvious to one of ordinary skill in the art as of the effective filing date to use additional set screws, such as horizontally oriented screws, to attach the adapter to the rifle, as this would be the mere duplication of parts essential to the practice of the invention.
[claim 9] further comprising a yoke(11) which can be coupled to the body via the recess.
Allowable Subject Matter
In view of the claim interpretation as detailed above, Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and upon amendment to overcome the above 112 rejections, and upon filing of a Terminal Disclaimer as detailed above.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach a system for a quick detach stick as recited in claims 1 and 3, and wherein the lip is semi-circular as recited in claim 4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY H DUCKWORTH whose telephone number is (571)272-2304. The examiner can normally be reached M-F 9:30-6.
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, Terrell McKinnon can be reached at 5712724979. 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.
/BRADLEY DUCKWORTH/Primary Examiner, Art Unit 3632