Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claim 1 is objected to because “the hood release” in lines 8-9 and again line 10 should be “the hood release button” in order to maintain proper antecedent basis. Appropriate correction is required.
3. Claim 9 is objected to because line 1 should read “wherein the tension mechanism”. Appropriate correction is required.
4. Claim 11 is objected to because “the hood release” in lines 8-9 and again in line 10 should be “the hood release button” in order to maintain proper antecedent basis. Appropriate correction is required.
5. Claim 20 is objected to because “the hood release” in lines 10-11 and again in line 12 should be “the hood release button” in order to maintain proper antecedent basis. Appropriate correction is required.
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.
6. Claim 5 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. Claim 5 recites “a spring-loaded release lever configured to disengage the ejection port locking device. Claim 5 depends from claim 1. Claim 1 has been amended to recite “an ejection port lock release button”. The originally filed Specification never discloses these two elements coexisting as currently claimed. It seems both of the claimed elements are the same element (122) in the originally filed disclosure.
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.
7. Claims 1-20 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.
8. Claims 1, 11, and 20 have all been amended to recite “wherein the hood release is positioned proximally relative to the firearm slide” and “wherein the ejection port lock release button is positioned distally relative to the hood release and the firearm slide”. The scope of these limitations is unclear. The terms “proximally” and “distally” are relative terms and even though the claim language itself establishes frames of reference, it is not totally clear just what button positions fall within and outside of the claim scope. These terms are also never mentioned in the originally filed specification to perhaps shed more light on the scope of these limitations. For the purpose of examination, the former is taken to mean “the closest button to the firearm slide” and the latter is taken to mean “the button further away from the firearm slide”. This seems in line with the button positioning shown in Applicant’s Figure 4 where button 120 is closer to the slide than button 122, which is shown beneath and behind the button 120.
9. Claim 5 now recites what is essentially a second ejection port locking device release mechanism. As set forth above, this is never disclosed in Applicant’s Specification. As such, it is unclear if this claim limitation is intended as written or if the release lever of claim 5 is the same element as the ejection portion lock release button of claim 1. For the purpose of examination, the latter is assumed to be true. This seems in line with the originally filed disclosure.
Claim Rejections - 35 USC § 102
10. 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.
11. 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.
12. Claims 1, 2, 4-7, 11-13, and 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Treto et al. (US 11,209,240 B2).
Regarding claim 1, Treto discloses a holster comprising: a molded body (110) configured to secure a firearm (firearm not currently being claimed in combination due to the functional language “configured to secure”); a hood (108/1702, see Figure 17A) movably engaged to an upper portion of the molded body and configured to protect the firearm slide and an optic device attached to the firearm; a hood release button (204) positioned on the molded body and configured to releasably engage the hood; an ejection port locking device (902) configured to engage a slide of the firearm, wherein the ejection port locking device is actuated via an ejection port lock release button (304), wherein the hood release is positioned proximally relative to the firearm slide, and wherein the ejection port lock release button is positioned distally relative to the hood release and the firearm slide (see Figures 7 and 8); and a tension mechanism (1502) configured to friction lock a firearm in the molded body.
Regarding claim 2, Treto discloses the holster of claim 1, wherein the molded body is further configured to secure a firearm having a mounted optic or a mounted illumination device (see Figures 17A and 17B, neither the firearm nor the optic or illumination device currently being claimed in combination).
Regarding claim 4, Treto discloses the holster of claim 1, wherein ejection port locking device (902) is configured to engage a slide ejection port (see Figure 14A, slide ejection port not currently being claimed in combination).
Regarding claim 5, to the degree the claim is understood, Treto discloses the holster of claim 4, wherein the ejection port locking device further comprises a spring-loaded release lever (302, see “spring-loaded” in col. 11 lines 46-48) configured to disengage the ejection port locking device from the slide ejection port when depressed.
Regarding claim 6, Treto discloses the holster of claim 1, wherein the hood release button is spring tensioned (see “spring-loaded” in col. 5 lines 60-65).
Regarding claim 7, Treto discloses the holster of claim 6, wherein the hood release button (204) is configured to release the hood from a closed position to an open position (see Figure 7C).
Regarding claim 11, Treto discloses a holster comprising: a molded body (110) configured to engage a firearm and an illumination device positioned below a barrel of the firearm (see Figures 1-3, neither the firearm nor the illumination device currently being claimed in combination due to the functional language “configured to engage”); a hood (108/1702, see Figure 17A) movably engaged to a hood release button (204), wherein the hood release button is positioned on an upper portion of the molded body (see Figure 8), wherein the hood is configured to move from an open position to a closed position (see Figures 7C and 18B); an ejection port locking device (902) configured to engage a slide of the firearm, wherein the ejection port locking device is actuated via an ejection port lock release button (304), wherein the hood release is positioned proximally relative to the firearm slide, and wherein the ejection port lock release button is positioned distally relative to the hood release and the firearm slide (see Figure 8); and a tension mechanism (1502) configured to friction tighten the firearm in the molded body.
Regarding claim 12, Treto discloses the holster of claim 11, wherein the hood is configured to cover the firearm slide or an optic device (neither the firearm slide nor the optic device currently being claimed in combination) attached to the firearm when in the open position (see Figures 17 and 18).
Regarding claim 13, Treto discloses the holster of claim 12, wherein the hood release button (204) is configured to release the hood from a closed position to an open position (see Figure 7C).
Regarding claim 15, Treto discloses the holster of claim 11, wherein the illumination device is a light. The illumination device is still not being claimed in combination and nothing in Treto would prevent a user from choosing to provide an illumination device in the form of a light within the holster body clearly shown to accommodate such an illumination device (see Figures 1-3).
Regarding claim 16, Treto discloses the holster of claim 11, wherein the illumination device is an IR pointer. The illumination device is still not being claimed in combination and nothing in Treto would prevent a user from choosing to provide an illumination device in the form of an IR pointer within the holster body clearly shown to accommodate such an illumination device (see Figures 1-3).
Regarding claim 17, Treto discloses the holster of claim 11, wherein the illumination device is a laser. The illumination device is still not being claimed in combination and nothing in Treto would prevent a user from choosing to provide an illumination device in the form of a laser within the holster body clearly shown to accommodate such an illumination device (see Figures 1-3).
Regarding claim 19, Treto discloses the holster of claim 11, wherein the slide comprises an ejection port (neither the slide nor the ejection portion currently being claimed in combination), and wherein the ejection port locking device (902) is configured to engage a slide ejection port (see Figure 14A).
Regarding claim 20, Treto discloses a system comprising: a firearm (see Figures); and a holster (100) configured to secure the firearm comprising: a molded body (110) configured to secure a firearm; a hood (108/1702, see Figure 17A) movably engaged to an upper portion of the molded body and configured to protect the firearm slide and an optic device attached to the firearm (see Figures 17A and 17B); a hood release button (204) positioned on the molded body and configured to release the hood from a closed position to an open position (see Figure 7C); an ejection port locking device (902) configured to engage a slide of the firearm (see Figure 14A), wherein the ejection port locking device is actuated via an ejection port lock release button (304), wherein the hood release is positioned proximally relative to the firearm slide, and wherein the ejection port lock release button positioned distally relative to the hood release and the firearm slide (see Figure 8); and a tension screw (1506) configured to friction lock the firearm in the molded body.
Claim Rejections - 35 USC § 103
13. 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.
14. Claims 3, 8, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Treto et al. (US 11,209,240 B2) as applied above in view of Seyfert et al. (US 2007/0181619 A1).
Regarding claim 3, Treto discloses the holster of claim 1, but is silent as to the material of the molded body (110) and thus fails to disclose wherein the molded body comprises a fiber reinforced polymer, a composite, a metal, an alloy, or combinations thereof. Seyfert teaches that it was already known in the art for a molded holster body like that of Treto to be made of a PVC composite or metal (see “Kydex” and “metals” in [0031]). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have made the molded body (110) of Treto out of Kydex or metal, where Kydex and metal were already known to be suitable for such use, as taught by Seyfert. 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.
Regarding claim 8, Treto discloses the holster of claim 1, but fails to disclose a barrel plug positioned within an interior of the holster and configured to engage a barrel of the firearm inserted into the holster.
Regarding claim 18, Treto discloses the holster of claim 11, but fails to disclose a barrel plug configured to engage an end of the barrel of the firearm.
Seyfert teaches that it was already known in the art to provide a holster with a barrel plug (112) configured to engage an end of the barrel of the firearm to reduce lateral movement of the firearm within the holster (see [0044]). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided the Treto holster with a barrel plug, the motivation being to reduce lateral movement of the firearm within the holster, as taught by Seyfert.
15. Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Treto et al. (US 11,209,240 B2) as applied above in view of Sereday et al. (US 2016/0273878 A1).
Regarding claim 9, Treto discloses the holster of claim 1, but fails to disclose wherein the tension mechanism is positioned on an underside of the holster, and wherein the tension mechanism is configured to engage a trigger guard of the firearm.
Regarding claim 10, fails to disclose the holster of claim 9, but does disclose wherein the tension mechanism comprises a tension screw (1506) configured to increase or decrease an amount force applied to the firearm, but fails to disclose the force specifically being applied to the trigger guard.
Treto discloses the tension mechanism (1502/1506) being located to contact a top of the slide of the firearm (see Figures 16A and 16B) but fails to disclose any criticality to such positioning and seems clear the shown design is just one example of such a tension mechanism (see col. 12 line 11 - col. 13 line 29). Sereday teaches that it was also known for a tension mechanism (115) to be positioned on an underside of a holster so as to apply force to the trigger guard (see Figures and [0038]). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have moved the tension mechanism of Treto to the underside of the holster to contact the trigger guard, where such position and functional use was already known to be suitable, as shown by Sereday. Furthermore, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
16. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Treto et al. (US 11,209,240 B2) as applied above in view of Scott (US 11,435,160 B2).
Regarding claim 16, Treto discloses the holster of claim 11, but is silent as to the material of the molded body (110) and thus fails to disclose wherein the molded body comprises a fiber reinforced polymer. Scott teaches that it was already known in the art for a holster body (20) to be made of fiber reinforced polymer (see col. 3 line 13). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have made the body of Treto holster from fiber reinforced polymer, where fiber reinforced polymer was already known to be suitable for such use, as shown by Scott. 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.
Response to Arguments
17. Applicant’s arguments filed 2/24/26 with respect to the previously applied 103 rejections have been fully considered and are persuasive but are also moot in view of the new grounds of rejection necessitated by the most recent claim amendments.
Conclusion
18. 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.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN MATTHEW LARSON whose telephone number is (571)272-8649. The examiner can normally be reached Monday-Friday, 7am-3pm. 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, Nathan Newhouse can be reached at (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN M LARSON/Primary Examiner, Art Unit 3734 5/26/26
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