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 .
DETAILED ACTION
This Office Action is in response to the Applicant’s communication filed on 10 August 2026. In virtue of this communication, claims 1-2 are currently presented in the instant application. Presently, claims 1-2 have been amended.
Response to Arguments
Applicant's arguments filed 10 August 2026 have been fully considered but they are not persuasive.
Applicant argues that the newly amended subject matter “a sum of the first angle range and the second angle range is less than 180 degrees” distinguishes over the double patenting rejection alone or in view of Hasuda at al.. Examiner disagrees.
As presently written, it is impossible for the recess of the patent to be bigger than 180 degrees. As claimed, these are the required important facts to make this determination:
2) Recess is located between the first claw and the second claw
3) the first mount center line is the left-right plane (breaking the circle into the gravity/opposite to gravity directions), the second mount center line is the top-bottom plane (breaking the circle into left/right directions)
4) the recess is only found on the left or right side on the side of the restricting portion (“positioned on a side of the first restricting portion with respect to the second mount center line”)
4a) the recess cannot cross the second mount center line and is fully on the side of the restricting portion
5) the recess is found on both the top and bottom sides (“…and on a side of a gravity direction and an opposite side of the side of the gravity direction with respect to the first mount center line”)
5a) combined with 4a, the maximum size of the recess is 180 degrees, fully encompassing the side with the restricting portion
6) one end of the first claw must also be on the same side as the restricting portion (“one end of the first claw portion in the circumferential direction of the second mount is positioned on the side of the first restricting portion with respect to the second mount center line”)
6a) at least a portion of the restricting portion side must include the end of the first claw
In summary, due to 4a, 5a, and 6a, the recess must be smaller than 180 degrees, as the end of the first claw cannot be on the side of the restricting portion if the recess is 180 degrees, and the recess is restricted exclusively to the half of the circumference with the restricting portion.
In addition, Hasuda et al. teaches the recess between the first and second claws on the side of the restricting portion being a total of 16.5 (first angle) + 56.5 (second angle) = 73 degrees, or after rotation (40.5 degrees) into place, 16 (second angle) + 57 (first angle) for the same 73.
Lastly, both changes in size and being obvious to try by choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success have been held to be obvious modifications to the art, and making the recess smaller than half the size of the circumference would be both an obvious change in size and also obvious to try as taking over half the circumference with a single opening (especially one arranged on a single side of the mount) would be obvious to one of ordinary skill in the art to create potential issues with mounting and securing the accessory onto the camera body.
The rejections will be maintained.
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 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,117,715 B2 alone or in view of Hasuda et al. (Patent No.: US 9,075,287 B2). Although the claims at issue are not identical, they are not patentably distinct from each other.
With respect to claim 1, claim 2 of the Patent is substantially identical to the claim. The only differences are that in claim 1 of the present application, the recess is claimed as being “positioned on a first side with respect to the second mount center line”, while in claim 2 of the patent the recess is claimed as being “positioned on a side of the first restricting portion with respect to the second mount center line”. Further, the claim does not explicitly claim that the first side (of the present application) is the side with the first restricting portion of the claimed patent (see previous response to arguments dated 4/8/2026), or the newly amended subject matter of the first and second angles summing to less than 180 degrees (see above response to arguments.
It would have been obvious to one of ordinary skill in the art that the first side and the side with the first restricting portion could be the same side, otherwise it has been held that a mere rearrangement of parts is an obvious variant over the prior art of record and would be obvious to arrange the restricting portion on the first side as having an identical mirrored attachment mechanism.
Hasuda et al. teaches a similar arrangement for the ends of the claws as taught and described above in the response to arguments, and one of ordinary skill in the art would recognize that this arrangement of claws (one on the top and one on the bottom) could be utilized in the arrangement of the Patent, as there are a limited number of arrangements for the three claws and recesses to try, and there would be a known desire to have a claw on the top and bottom of the overall arrangement to support the interchangeable barrel in the gravity direction without tilting out.
Regarding the sum of the first and second angles, see the above response to arguments on how the claimed language necessitates the sum being less than 180 degrees, or would have been obvious alone or in view of Hasuda et al.
With respect to claim 2, the languages of the center lines have been modified (from the line intersecting the restricting member and orthogonal) to horizontal and vertical center lines (which are the same lines of the patent as the restricting member is arranged on the horizontal axis), and similarly to the above claim 1, claim 2 of this application uses left side of the second mount center line and upper and lower sides of the first mount center line (which is just a rewording of gravity and opposite to gravity sides), as well as the newly amended subject matter, but furthermore all limitations regarding the first restricting portion have been removed. Further, the claim does not explicitly claim that the left side (of the present application) is the side with the first restricting portion of the claimed patent (see previous response to arguments dated 4/8/2026), or the newly amended subject matter of the first and second angles summing to less than 180 degrees (see above response to arguments.
It has been held that a mere removal of parts and their functionality is an obvious variant over the prior art of record, and removing the restricting member would have been obvious if locking was not required.
Hasuda et al. teaches a similar arrangement for the ends of the claws as taught and described above in the response to arguments, and one of ordinary skill in the art would recognize that this arrangement of claws (one on the top and one on the bottom) could be utilized in the arrangement of the Patent, as there are a limited number of arrangements for the three claws and recesses to try, and there would be a known desire to have a claw on the top and bottom of the overall arrangement to support the interchangeable barrel in the gravity direction without tilting out.
Regarding the sum of the first and second angles, see the above response to arguments on how the claimed language necessitates the sum being less than 180 degrees, or would have been obvious alone or in view of Hasuda et al.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANA HANCOCK whose telephone number is (571)270-7547. The examiner can normally be reached on 10AM-6PM EST M-F.
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/D.H/Examiner, Art Unit 2852
9/5/2026
/STEPHANIE E BLOSS/Supervisory Primary Examiner, Art Unit 2852
Prosecution Insights