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
Election/Restrictions
Applicant's election with traverse of Invention I, claims 1-7 in the reply filed on 16 October 2025 is acknowledged. The traversal is on the ground(s) that there would be no search and/or examination burden to examine the withdrawn claims. This is not found persuasive because the withdrawn method claims would at least require additional searching in B23B 35/00, which is not required for the apparatus claims.
Therefore, the inventions have separate classifications, status in the art, and/or different fields of search including different text search strategies and text search queries. Examination burden comes from developing and analyzing synonyms from each different class. Examination burden would also increase exponentially in subsequent actions as the subject matter further diverges due to increasing specificity of the separately classed claimed elements.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 16 October 2025.
Drawings
Replacement drawings were received on 9 October 2024. These drawings are acceptable.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Griffin (US 2,466,023) in view of Keough (US 8,112,928).
Regarding claim 1, Griffin discloses a drill jig comprising: a. a body member 3 having a first side (bottom in figure 1) and a second side (top in figure 1) opposing the first side, b. a first plug 4 protruding from a first side of the body member, c. a second plug 16 protruding from the first side of the body member in a position beneath the safety selector bore plug, and d. a pair of alignment bore holes 5/6 extending from the first side of the body member to the second side of the body member. Additionally, Griffin teaches that the pins and bores may be repositioned based on the requirements of the workpiece to be drilled by a particular jig (see column 3, lines 41-69)
Griffin does not disclose the jig is “for converting semi-automatic style firearms to automatic style firearms”, “a safety selector bore plug”, or “a takedown bore plug”, being silent as to type of plugs (pins) used. Keough teaches the use of a drilling tool to drill openings 203 in a semi-automatic firearm for the purpose of converting the firearm to a fully automatic style firearm. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have combined the jig of Griffin with the firearm conversion drilling technique of Keough in order to be able to use the jig to convert a semi-automatic firearm to an automatic firearm, with appropriately placed plugs and boreholes such that there is a safety selector bore plug and a takedown bore plug, as one of ordinary skill in the art would have seen the need to place the plugs and boreholes in the required locations, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
Regarding the intended use limitation “for converting semi-automatic style firearms to automatic style firearms” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function with the proper placement of plugs and bore holes. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Regarding claims 2-3, the modified invention of Griffin discloses the invention substantially as claimed, except Griffin does not disclose wherein the jig is made from 303 stainless steel, 304F stainless steel, 416 stainless steel, 304 stainless steel, 316 stainless steel, 12L14 carbon steel, or combinations thereof, or wherein the jig is made from aluminum alloys. However, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have made the jig from whatever material desired for the purpose of lowering costs while providing desired wear and strength to the jig, because 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. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)
Regarding claim 4, the modified invention of Griffin discloses further comprising a press bushing fitting 7/8 within each alignment bore hole 5/6 of the pair of alignment bore holes. Griffin does not disclose that the press bushing fittings are made from stainless-steel. However, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have made the press bushing fittings from whatever material desired for the purpose of lowering costs while providing desired wear and strength to the press bushing fittings, because 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. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)
Regarding claims 5-7, the modified invention of Griffin discloses the invention substantially as claimed, except Griffin does not disclose wherein each alignment bore hole of the pair of alignment bore holes are between 0.190 and 0.210 inches from an outer edge the body member, wherein each alignment bore hole of the pair of alignment bore holes are between 0.760 and 0.770 inches from a bottom edge of the body member, or wherein the takedown bore plug has a diameter between 0.260 and 0.270 inches. However, it would have been an obvious matter of design choice to make the different portions of the device of whatever relative sizes were desired for the purpose of making the jig to be of an appropriate size for the firearm conversion required, since such a modification would have involved a mere change in the proportions of components. A change in proportion is generally recognized as being within the level of ordinary skill in the art. In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
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 ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 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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/ERIC A. GATES/Primary Examiner, Art Unit 3722 4 March 2026