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 .
Applicant’s election without traverse of Group II and Species 1 (identifying claims 6-20) in the reply filed on 3/30/26 is acknowledged.
DETAILED ACTION
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 6-20 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.
Claims 6 and 13 recite the limitation "the handgun" in lines 2 and 3, respectively. There is insufficient antecedent basis for this limitation in the claim.
Any unspecified claim is rejected as being dependent upon a rejected base claim. In light of the above, the claims will be further treated on the merits as best understood only.
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.
Claims 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bowers (US 10,066,900 B2).
Regarding claim 13, Bowers discloses a thumbrest (paddle 208) for a handgun, the thumbrest comprising: a support base (204 – fig. 3E) configured for mounting to the handgun; a thumb support (paddle 208) pivotable relative to the support base between a collapsed position wherein the thumb support is folded up adjacent to the support base and an extended position wherein the thumb support is pivoted away from the support base (col. 2, lines 53–63); a spring (spring 216) configured to bias the thumb support toward the extended position (col. 2, lines 53–63); and a stop structure (fig. 4B) configured to limit pivotal movement of the thumb support to define the extended position.
Regarding claim 14, Bowers discloses the thumbrest of claim 13, wherein in the collapsed position the thumb support is in a range of 0 degrees to 10 degrees measured with respect to the support base (0 degrees as shown in fig. 4B), and in the extended position the thumb support is in a range of 70 degrees to 100 degrees measured with respect to the support base (in-use position shown in fig. 4B).
Regarding claim 15, Bowers discloses the thumbrest of claim 13, further comprising a hinge (224) configured to allow pivotable movement of the thumb support relative to the support base.
Regarding claim 16, Bowers discloses the thumbrest of claim 15, wherein the support base includes a sideplate portion (fig. 3E), and the hinge is oriented such that the pivot axis forms an angle relative to the support base as shown in figs. 3E and 4B.
Regarding claim 17, Bowers discloses the thumbrest of claim 13, wherein the thumb support is pivotable relative to the support base about a pivot axis (col. 2, lines 53–63), and the thumb support and support base have respective dimensions as shown in figs. 3E and 4B, such that the support base is smaller than the thumb support.
Regarding claim 18, Bowers discloses the thumbrest of claim 17, wherein the thumb support and support base have respective widths perpendicular to the pivot axis, as shown in figs. 3E and 4B.
Regarding claim 19, Bowers discloses the thumbrest of claim 13, wherein the thumb support is pivotable relative to the support base about a pivot axis, and the thumb support and support base have respective widths perpendicular to the pivot axis as shown in figs. 3E and 4B.
Regarding claim 20, Bowers discloses the thumbrest of claim 13, wherein the thumb support includes a far edge and a near edge, and the support base includes a corresponding edge, as shown in figs. 3E and 4B, such that the components align when in the collapsed position.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived 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.
In the alternative, claims 6-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Bowers (US 10,066,900 B2).
Regarding claims 6-20, Bowers discloses the claimed invention except he does not explicitly disclose the exact recited arrangement or shapes. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the same arrangement, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japiske, 86 USPQ 70, or to have the same shapes, since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
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 6-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 11 of U.S. Patent No. 12117262.
Claims 5 and 11 of the prior patent are representative independent claims directed to a thumbrest for a handgun including a support base and a thumb support pivotable between a collapsed position and an extended position, with optional spring biasing and stop structure, and configured for mounting to a handgun and/or replacing a removable component of the handgun. The claimed subject matter of the instant application differs only in minor variations of structure, geometry, or scope, which would have been obvious to one of ordinary skill in the art at the time the invention was made.
Claim 6 is unpatentable over claim 5 of the prior patent. The prior patent discloses a thumbrest for a handgun including a thumb support and support base, wherein the thumb support is pivotable between collapsed and extended positions, and wherein the thumbrest is configured to replace a removable component of the handgun. The recited elongated support member represents an obvious variation of the mounting structure disclosed in the prior patent.
Claim 7 is unpatentable over claim 6 of the prior patent, which depends from claim 5 and recites a spring and stop structure configured to bias and limit pivotal movement of the thumb support.
Claim 8 is unpatentable over claim 7 of the prior patent, which recites the angular positioning of the thumb support in collapsed and extended positions.
Claim 9 is unpatentable over claim 8 of the prior patent, which recites a hinge configured to allow pivotable movement of the thumb support.
Claim 10 is unpatentable over claim 10 of the prior patent, which recites that the thumbrest is configured to replace a removable component such as a slide lock, disassembly lever, or takedown lever.
Claim 11 is unpatentable over claim 11 of the prior patent, which discloses a thumbrest including a support base, pivotable thumb support, spring, and stop structure configured for mounting to a handgun and/or replacing a removable component.
Claim 12 is unpatentable over claim 12 of the prior patent, which recites the angular positioning of the thumb support.
Claim 13 is unpatentable over claim 11 of the prior patent. The prior patent discloses a thumbrest for a handgun including a support base configured for mounting to the handgun, a thumb support pivotable relative to the support base between collapsed and extended positions, a spring configured to bias the thumb support toward the extended position, and a stop structure configured to limit pivotal movement of the thumb support to define the extended position. Although claim 13 does not explicitly recite that the thumbrest is configured to replace a removable component of the handgun, the prior patent teaches such configuration, and the omission of this limitation merely renders the claim broader and does not patentably distinguish over the prior patent. Accordingly, claim 13 is an obvious variation of claim 11 of the prior patent.
Claim 14 is unpatentable over claim 12 of the prior patent, which recites the angular positioning of the thumb support in collapsed and extended positions.
Claim 15 is unpatentable over claim 13 of the prior patent, which recites a hinge configured to allow pivotable movement of the thumb support.
Claim 16 is unpatentable over claim 14 of the prior patent, which recites relative orientation of hinge and support base components, and any specific angular relationship represents an obvious variation in design geometry.
Claim 17 is unpatentable over claim 15 of the prior patent, which recites dimensional relationships between the thumb support and support base.
Claim 18 is unpatentable over claim 16 of the prior patent, which recites width relationships between the thumb support and support base.
Claim 19 is unpatentable over claim 17 of the prior patent, which recites width relationships between the thumb support and support base.
Claim 20 is unpatentable over claim 18 of the prior patent, which recites structural relationships between edges of the thumb support and support base.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL D DAVID whose telephone number is (571)270-3737 and whose email address is michael.david@uspto.gov*. The examiner can normally be reached on M-F 8:30am-5:00pm EST.
*Communications via Internet e-mail are at the discretion of the applicant. Applicant is welcome to file an electronic communication authorization (sb439) form at any time if he/she would like to communicate via e-mail:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdfWithout a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached on 571-272-6874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL D DAVID/Primary Examiner, Art Unit 3641
