DETAILED ACTION
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 11-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,078,450 in view of Rogers et al. (US 5,944,239). The prior patented claims 1-10 of US 12,078,450 recite the same essential device as the presently claimed device, including: a holster, holster body, tensioner body and spring, but the prior claims do not disclose the tensioner being a plastic member as now claimed. However, Rogers discloses a similar tensioner body 12/14 that is controlled by a spring 15 and wherein the tensioner body is a plastic member (nylon or Teflon as in col. 4 lines 56-60). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to make the tensioner body as a plastic member in order to provide a known material used in the art.
Claims 25-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,078,450. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same essential device but in broader language, i.e. only the tensioner itself is claimed, including a tensioner body engaged and deformed by an item and a spring for resisting and controlling deformation of the tensioner body. The claimed structure of the tensioner is disclosed throughout claims 1-10 in similar language to claims 25-29 of the present application.
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.
Claim(s) 11-12, 14, 17-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rogers et al. (US 5,944,239).
Regarding claim 11, Rogers discloses a holster (Figure 1) for a handgun assembly, the holster including: a holster body 10 having a chamber for receiving the handgun assembly; a tensioner body 12/14 on the holster body that is engaged and deformed by the handgun assembly; and a spring 15 connected with the tensioner body; wherein the tensioner body is a plastic member (col. 4 lines 56-58) that flexed and kept under tension when a handgun assembly is in the holster, and the spring inhibits relaxation of the tensioner under a continuous load.
Regarding claims 12 and 14, Rogers discloses the spring is a metal compression spring 15.
Regarding claim 17, Rogers discloses the tensioner 12 is operative to apply biasing force to the handgun assembly in a direction toward a top wall of the holster (see directional arrow 27 as in Figure 1).
Regarding claim 18, Rogers discloses several different tensioner body shapes, including Figure 10 which has a central portion (see body portion to the left of lead line 106, below spring 108, and above pivot 105) in an arcuate configuration that is concave in a direction away from the holster chamber and an outer side surface 106 that is presented toward the holster chamber.
Regarding claim 19, Rogers discloses a one-piece tensioner body 14. Regarding the body being formed by molding, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight.
Regarding claim 20, Rogers discloses wherein a central portion 14/16 of the tensioner body projects into the chamber of the holster through an opening in a wall of the holster body (e.g. opening defined by wall 13/21, such that an outer side surface of the tensioner body central portion is engageable by the handgun assembly when the handgun assembly is in the chamber (see Figure 1).
Regarding claim 21, Rogers discloses a holster 10 comprising: a holster body 10 having a chamber for receiving a handgun assembly (Figure 1); a plastic element 12/14 (col. 4 lines 56-58) on the holster body, having a central portion 14/16 that is engageable by the handgun assembly in the chamber and that is operable to apply a resilient biasing force to the handgun assembly in the chamber; and a spring 15 connected in a force-transmitting relationship with the plastic element and operable to control deformation of the plastic element.
Regarding claim 22, see Figure 1 wherein the tensioner engages the start of the trigger guard.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COREY NELSON SKURDAL whose telephone number is (571)272-9588. The examiner can normally be reached Mon-Fri 9am-4pm EST.
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/COREY N SKURDAL/Primary Examiner, Art Unit 3734