Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 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.
Priority
This application is a continuation in part of application 18/305,659. Thus, claims in the instant application that are supported by an earlier filed application will have a priority date of the earlier filed application, while new matter not disclosed by 18/305,659 will have a priority date of the filing date of the instant application. Claims 2-4, 9-10, and 12 of the instant application are not supported by previously filed applications and are given the priority date of September 16, 2024 (these claims are directed to the firing pin block illustrated in figs. 36-45 which is not taught by the previously filed applications). The rest of the claims are supported by the previously filed applications (including 17/169,695), and are given the priority date of February 18, 2020.
Claim Objections
Claims 5 and 14 are objected to because of an informality: the word “a” should be removed from “a rotate” in lines 4 and 3, respectively. Claim 15 is objected to because of an informality: “adapted” should be changed to “adapter” in line 4. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 11 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 8 of prior U.S. Patent No. 12,130,120 (“the ‘120 patent”). This is a statutory double patenting rejection.
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 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of the ‘120 patent. Claims 5 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of the ‘120 patent. Claims 6 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of the ‘120 patent. Claims 7 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of the ‘120 patent (the examiner notes that the beveled portion of claim 15 of the ‘120 patent has the same structure as the dovetailed portion of claim 7 of the instant application because the beveled portion has to be angled in a direction so that the forward edge of the adapter plate can fit therein). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the instant claims are anticipated by the corresponding claim of the ‘120 patent.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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 1-15 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 applicant regards as the invention.
Claim 1 recites the at least one mounting hole in lines 7-8. It is unclear if this is referring to the first set of mounting holes previously introduced, and if so, is it required to have “at least one” or “a set” in order to infringe the claim?
Claim 1 recites a top surface in each of lines 10 and 12. It is unclear if these are referring to the same top surface.
Claim 7 recites a topmost surface of the slide. It is unclear if this is referring to the top surface of claim 1.
Claim 8 recites the at least one mounting hole in lines 9-10. It is unclear if this is referring to the first set of mounting holes previously introduced, and if so, is it required to have “at least one” or “a set” in order to infringe the claim?
Claim 8 recites a top surface in each of lines 12 and 14. It is unclear if these are referring to the same top surface.
Regarding claim 10, there is insufficient antecedent basis for the flat section, the concave surface, and the midsection. It appears this claim was intended to depend from claim 9. For purposes of examination, this claim will be interpreted as depending from claim 9.
Regarding claim 12, there is insufficient antecedent basis for the substantially flat face and the first end. It appears this claim was intended to depend from claim 9. For purposes of examination, this claim will be interpreted as depending from claim 9.
Claim 15 recites a topmost surface of the slide. It is unclear if this is referring to the top surface of claim 8.
Claims 2-6, 9, 11, and 13-14 are rejected for depending from one of claims 1 and 8.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1-6 and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant’s Admitted Prior Art (“AAPA”) in view of USPGPub No. 2020/0025520 (“Niswander”).
Regarding claim 1, AAPA teaches a firearm slide (100) adapted to receive an optical sight (fig. 1, wherein the dovetail connection is capable of receiving a variety of sights), comprising: a slide (100) having … a firing pin block opening (fig. 1, para. [0054], i.e. opening housing firing pin block 110); and an extractor pin opening (fig. 1, wherein one of skill in the art of handguns, and specifically beretta handguns, appreciates that the opening in front of block 110 is an extractor pin opening); and a firing pin block (110) configured to not extend above the flat rear section of the slide (fig. 1, para. [0054]).
AAPA fails to explicitly teach the slide having a flat rear section recessed into a top portion of the slide and positioned below a topmost surface of the slide, wherein the firing pin block opening and extractor pin opening are in the flat rear section, and the flat rear section comprises a first set of mounting holes; and an adapter plate configured to be mounted within the recessed flat rear section by the at least one mounting hole, wherein the adapter plate comprises: a second set of mounting holes aligned with the first set of mounting holes; at least one mounting bus disposed along a top surface that is configured to align the optical sight with the adapter plate; and at least one receiving port disposed along a top surface that is configured to connect the optical sight to the adapter plate. However, this would have been obvious in view of Niswander.
Niswander is directed to firearm sight mounting plates in order to allow several different sights to mount to a firearm slide (paras. [0002]-[0003] & [0026]). Niswander teaches the top of the slide to have a recessed portion having a flat surface 115 that is recessed between front and rear raised portions (fig. 1A, para. [0029]-[0033]). Surface 115 has mounting holes 122 for attachment of mounting plate 100 (figs. 1A & 1B, paras. [0033]-[0034]). Mounting plate 100 has a second set of mounting holes 154 to align with the first mounting holes 122 (figs. 1A-1B, paras. [0039]-[0040]), a pair of mounting buses 144 that are configured to align an optical sight (fig. 1A, para. [0040]), and at least one receiving port 146 disposed along a top surface that is configured to connect the optical sight to the adapter plate (figs. 1A, para. [0040]). In addition, the rib on the firearm slide can be omitted (para. [0033]). Further, the bottom of the mounting plate comprises a notch 150 to avoid contact with ejector projection 120 on the firearm slide.
In this case, each of AAPA and Niswander is directed to a firearm slide. AAPA teaches that the top surface of the slide may not be suitable for many types of optical sights because pin block 110 may extend above the upper surface by a small amount (para. [0034] of Applicant’s originally filed specification). NIswander teaches a known and predictable way of allowing a variety of sights to be attached to a firearm slide. Niswander teaches an adapter/mounting plate as detailed above that is configured to mount on a flat recessed portion of the firearm slide. It would be predictable to provide forward and rear raised portions on the firearm slide of AAPA and to provide a flat recessed surface therebetween because it is well within the skill of one of skill in the art to slightly modify the design of a firearm slide to make a surface flat and to increase the height of at least portions of the slide. Niswander also teaches that it is predictable to design the adapter plate to not interfere with pin block 110 if it does extend slightly above the flat surface, e.g. by providing a notch in the bottom surface of the adapter plate that aligns with the pin block. Thus, in order to mount more types of sights, it would be obvious to flatten a rear section of the firearm slide of AAPA, and to add front and rear raised sections so the flattened surface is recessed from a topmost surface of the slide, so that the adapter/mounting plate of Niswander can be securely attached to the flat recessed surface. In addition, given the length of the adapter plate and recessed portion of Niswander, it is obvious for the flat recessed portion to have the firing pin block opening and extractor pin opening thereon. As detailed above, the adapter place can have notches aligned with these openings to prevent contact.
Regarding claim 2, AAPA et al. fail to explicitly teach the firing pin block comprises a main body comprising: a first end having a substantially flat face; a midsection having a concave surface; and a flat section extending from the concave midsection to a second end of the main body. However, this would have been obvious in view of a separate teaching of AAPA.
AAPA teaches known alternative firing pin blocks (contrast fig. 11 with figs. 36-37, 40, 42 & 44, and paras. [0062] with [0068]-[0069]). The firing pin block of figs. 36-37, 40, 42 & 44 illustrate a main body 110 comprising: a first end having a substantially flat face (i.e. end that post 3604 extends from); a midsection having a concave surface (4104) (fig. 42); and a flat section (4102) extending from the concave midsection to a second end of the main body (fig. 42). This firing pin block is configured to engage with the firing pin 3600 illustrated in fig. 37, wich is substantially similar to the firing pin 1600 used with block 110. The post 3604 can extend to or near the upper surface of the slide (para. [0069]).
In this case, AAPA et al. is directed to a firearm slide having a pin block that engages with a firing pin, wherein a top of the firing pin block is within a recess on a top surface of the slide. One of skill in the art appreciates that there are a variety of different structures for the firing pin and firing pin block. One such known substitute is described by AAPA as detailed above. In addition, AAPA teaches that it is predictable for the post 3604 to extend upward to be within a hole at the top of the slide. Thus, it would be obvious to substitute the firing pin and firing pin block of figs. 36-37, 40, 42 & 44 for the firing pin and firing pin block of figs. 1 & 11, wherein the post of the firing pin block is within an opening on the top of the slide.
Regarding claim 3, AAPA et al. further teach a firing pin having a first cut out region disposed along a rear portion of the firing pin, wherein: the flat section of the pin block is configured to engage the first cut out region; and the concave surface of the midsection is configured to fit around an outer surface of the rear portion of the firing pin (see figs. 36 & 37, wherein the rejection to claim 2 above modified AAPA to include the firing pin of figs. 36 & 37).
Regarding claim 4, AAPA et al. further teach the firing pin block further comprises a detent (3606) in the substantially flat face of the first end (figs. 36 & 40, para. [0068]).
Claim 5 recites a safety lever configured to: be installed below the adapter plate; and a rotate without impacting the adapter plate. AAPA teaches a safety lever 106 (fig. 1, para. [0054]). Further, since the adapter plate is on a top surface of the slide, the safety lever is able to rotate without impacting the adapter plate (fig. 1, wherein safety lever does not extend above top surface of slide).
Regarding claim 6, AAPA et al. fail to explicitly teach the adapter plate further comprises a raised sighting element positioned along a rearmost edge of the adapter plate that extends upwardly away from the flat rear section of the slide. However, this is obvious in view of a separate teaching of NIswander.
Niswander teaches the mounting plate having a dovetail groove 138 that can receive an iron sight (fig. 1A, para. [0040]). The groove can be at the rear of the mounting place (figs. 4-5 & 7, para. [0047]).
In this case, AAPA et al. is directed to replacing the iron sight (illustrated in fig. 1A of AAPA), with a mounting plate that it capable of securing a variety of sights thereto, including iron sights. Niswander teaches the dovetail groove for an iron sight can be at the rear of the mounting plate. Thus, it would be obvious and predictable to provide the dovetail groove at the rear of the mounting plate and to secure the iron sight in fig. 1A of AAPA therein.
Given the above modification, since the iron sight illustrated in fig. 1A of AAPA extends rearwardly from the dovetail groove, the iron sight will be positioned along a rearmost edge of the main body of the mounting plate and extend upward therefrom.
Claim 8 recites most of the limitations found in claim 1. These limitations are rejected over AAPA in view of Niswander for the same reasons detailed in the rejection to claim 1, above. Claim 8 also recites a first opening extending downwardly into the slide for holding a firing pin block, and [the flat recessed portion] is positioned below a topmost surface of a forward portion of the slide. Figure 1 of AAPA illustrates the firing pin block is in a recess extending downwardly into the slide. Further, as detailed in the rejection to claim 1 above, the slide of AAPA is modified to have a forward raised portion having a topmost surface above the flat recessed portion.
Claims 9, 10, and 12 recite the same limitations found in claims 2-4, respectively. Thus, claims 9, 10, and 12 are rejected in view of the separate teaching of AAPA for the same reasons detailed in the rejections to claims 2-4, above.
Regarding claim 11, AAPA further teaches the flat rear section of the slide further comprises a second opening extending downwardly into the slide for holding an extractor pin (fig. 1, wherein one of skill in the art of handguns, and specifically beretta handguns, appreciates that the opening in front of block 110 is an extractor pin opening), wherein the extractor pin is configured not to extend beyond the second opening and above the top surface of the flat rear section (fig. 1, wherein the extractor is not above the top surface).
Claim 13 recites the same limitations found in claim 6. Thus, claim 13 is obvious for the same reasons detailed in the rejection to claim 6, above.
Claim 14 recites a safety lever configured to: be installed below the adapter plate; and a rotate without impacting the adapter plate. AAPA teaches a safety lever 106 (fig. 1, para. [0054]). Further, since the adapter plate is on a top surface of the slide, the safety lever is able to rotate without impacting the adapter plate (fig. 1, wherein safety lever does not extend above top surface of slide).
Claims 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over AAPA et al. as applied to claims 1 and 8, respectively, and further in view of USPGPub No. 2018/0087871 (“Toner”).
Claim 7 recites a lip positioned above the forward edge and configured to abut a topmost surface of the slide above the recessed flat rear section. AAPA et al. teach the adapter plate comprising a forward lip (element 136 of Niswander) that is configured to rest in catch 118 of the slide so that the edge of the lip 136 abuts the edge of the topmost surface of the slide (figs. 1A-1B, para. [0039]).
AAPA et al. fail to explicitly teach a forward edge of the flat rear portion of the slide comprises a dovetailed portion; and the adapter plate comprises: a forward edge configured to fit into the dovetailed portion.
NIswander teaches that wall 112a may be angled from the base surface from any angle between 1 and 179 degrees (para. [0035]). One of skill in the art also appreciates that dovetail connections are well-known in the art. Both AAPA and Niswander teach a dovetail connection (see fig. 1A of AAPA wherein the iron sight is connected via a dovetail connection; see also dovetail groove 138 illustrated in fig. 3C and described in para. [0040] of Niswander).
Toner is also directed to connecting a mounting plate to a slide. Toner teaches the front wall of the recessed portion has pockets 408 therein to accommodate front protrusions 404 of the plate (figs. 4-5, paras. [0044]-[0045]). These mounting features help to better connect the plate to the slide (para. [0044]). When installing the plate the plate is angled downward at an angle to allow protrusion 404 to be inserted into pockets 408 (figs. 3A & 4).
In this case, each of AAPA et al. and Toner are directed to mounting a plate to a firearm slide. One of skill in the art appreciates there are numerous ways to secure plates to slides, including dovetail connections as taught by AAPA and Niswander. Toner also teaches that it is known to insert a front protruding part of a plate into a recessed portion in a front wall of the slide, wherein the mounting plate can be tilted downward in order to insert the protruding part into the recessed part. Thus, it would be obvious to provide a dovetail connection between a front of the adapter plate and front wall of the recess. This will help better secure the plate to the slide both before and after installation (for example by helping to resist upward forces caused by recoil).
Claim 15 recites the same limitations of claim 7 except that “dovetailed” is replaced with “beveled”. Since the dovetailed portions of Toner are beveled, the rejection of AAPA et al. in view of Toner, as detailed in the rejection to claim 7 above, also teaches the limitations of claim 15.
Claims 2-4, 9-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2021/0254933 (“Langdon”) in view of AAPA.
Regarding claim 2, claim 2 depends from claim 1. As detailed in the priority section above, Langdon supports and teaches all the limitations of claim 1 (Langdon is the publication of application 17/169,695). Langdon fails to explicitly teach the firing pin block comprises a main body comprising: a first end having a substantially flat face; a midsection having a concave surface; and a flat section extending from the concave midsection to a second end of the main body.
AAPA teaches a known substitute firing pin block engageable with the firing pin of Langdon (see figs. 36-37, 40, 42 & 44, paras. [0068]-[0069] of Applicant’s originally filed specification, wherein AAPA teaches the firing pin of figs. figs. 36-37, 40, 42 & 44 is configured to be used with a firing pin substantially similar to that fig. 16 of AAPA, which is also the firing pin used by Langdon). As illustrated in figures 36-37, 40, and 42, the firing pin block 3602 has a main body with a first end having a substantially flat face with detent 3606 therein; a midsection having a concave surface 4104; and a flat section 4102 extending from the concave midsection to a second end of the main body. The post 3604 can extend to or near the upper surface of the slide (para. [0069]).
In this case, each of Langdon and AAPA are directed to substantially similar handguns having substantially similar firing pins. Langdon is directed to modifying a handgun by removing a portion of the top of the slide, and modifying the firing pin block so that it does not extend above the flat recessed portion. As detailed above, AAPA teaches a known substitute firing pin block for the firing pin taught by Langdon. In addition, based on the teachings of Langdon, it would be predictably to reduce the height of post 3604 so that it does not extend above the flat upper surface. Thus, it would be obvious to substitute the firing pin/block assembly of Langdon with the firing pin/block assembly of AAPA, wherein the post of the firing pin block is reduced in height so that it is within a recess on the top of the slide without extending above the recess.
Regarding claim 3, Langdon et al. further teach a firing pin having a first cut out region disposed along a rear portion of the firing pin, wherein: the flat section of the pin block is configured to engage the first cut out region; and the concave surface of the midsection is configured to fit around an outer surface of the rear portion of the firing pin (see figs. 36 & 37 of AAPA, wherein the rejection to claim 2 above modified AAPA to include the firing pin of figs. 36 & 37).
Regarding claim 4, Langdon et al. further teach the firing pin block further comprises a detent (3606) in the substantially flat face of the first end (AAPA, figs. 36 & 40, para. [0068]).
Regarding claim 9, claim 9 depends from claim 8. As detailed in the priority section above, Langdon supports and teaches all the limitations of claim 8 (Langdon is the publication of application 17/169,695). The limitation of claim 9 is the same limitation found in claim 2. Thus, claim 9 is obvious in view of AAPA for the same reasons detailed in the rejection to claim 2, above.
Claims 10 and 12 recite the same limitations found in claims 3-4, respectively. Thus, claims 10 and 12 are rejected Langdon et al. for the same reasons detailed in the rejections to claims 3-4, above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Sunil Singh (571-272-3460). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”