DETAILED ACTION
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 .
Election/Restrictions
Applicant's election with traverse of Group II (claims 11-20) in the reply filed on 12/30/2025 is acknowledged. The traversal is on the ground(s) that the subject matter of all groups is sufficiently related that a thorough search for the subject matter of any one group would encompass a search for the subject matter of the remaining groups. This is not found persuasive for the reasons stated in the restriction requirement mailed on 11/12/2025, specifically page 3.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/30/2025.
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 11, 12, 17, and 20 are rejected under 35 U.S.C. §102(a)(1) as being anticipated by DiChario et al. (US 2019/0226779 A1).
Regarding claim 11, DiChario discloses a modular magazine assembly comprising a magazine shell comprising an internal cavity (magazine adapter body 12 defining channel 24 between first and second panels) and a magazine disposed within the internal cavity of the magazine shell (a magazine slidably received within channel 24), wherein the magazine shell comprises a magazine catch cavity for securing the magazine shell relative to a firearm receiver (recess 32 configured to engage a firearm magazine catch when the adapter body is received in the magazine well), and wherein the magazine shell comprises an internal magazine catch feature for securing the magazine within the magazine shell (adapter magazine catch 44 configured to releasably engage the magazine within the channel).
Regarding claim 12, DiChario discloses that the magazine is a handgun magazine and that the magazine shell is designed to interface with an AR-15 receiver (see DiChario ¶¶ [0002]–[0004], adapter configured to receive a handgun magazine and interface with an AR-style firearm receiver).
Regarding claim 17, DiChario discloses a functional configuration in which an uppermost portion of at least one feed lip of the magazine is approximately at the same height as a top of the magazine shell when the magazine is seated within the adapter (see DiChario Figs. 2–4, handgun magazine feed lips positioned substantially flush with the upper end of adapter body 12 for feeding into the AR-15 upper).
Regarding claim 20, DiChario discloses that the magazine shell is designed to receive multiple different size magazines (see DiChario ¶¶ [0003]–[0004], adapter configured to receive different handgun magazine types and sizes).
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.
Claims 13-16 and 18-19 are rejected under 35 U.S.C. §103 as being unpatentable over DiChario et al. (US 2019/0226779 A1) in view of Tisone et al. (US 2016/0348992 A1)
Regarding claim 13, DiChario discloses a modular magazine assembly with an internal magazine catch and adapter body but does not expressly disclose an ejector. Tisone discloses providing an ejector associated with a magazine shell or magazine housing for interaction with the firearm bolt during cycling (see Tisone ¶¶ [0021]–[0024], ejector structure integrated with magazine assembly). It would have been obvious to one of ordinary skill in the art to provide an ejector in the DiChario adapter to enable reliable ejection of spent cartridges when using a handgun magazine in an AR-pattern firearm, yielding predictable results.
Regarding claim 14, Tisone further discloses that the ejector may be formed as an integral feature of the magazine shell or housing (see Tisone ¶¶ [0023]–[0025]), and it would have been obvious to configure the ejector of claim 13 as an integral feature of the DiChario magazine shell to simplify construction and improve durability.
Regarding claim 15, DiChario discloses a magazine shell adapted for use with different magazines but does not expressly disclose a capacity feature. Tisone discloses providing magazine capacity-related features, including indicators or markings associated with the magazine assembly to convey capacity information to the user (see Tisone ¶¶ [0018]–[0020]). It would have been obvious to incorporate at least one capacity feature into the DiChario magazine shell to inform the user of magazine capacity, yielding predictable results.
Regarding claim 16, Tisone further discloses that such capacity features may include a magazine capacity label or indicator (see Tisone ¶¶ [0019]–[0020]), and it would have been obvious to implement the capacity feature of claim 15 as a label or indicator as recited.
Regarding claim 18, DiChario discloses an internal magazine catch feature (adapter magazine catch 44) but does not expressly disclose a magazine catch lever for actuating the internal magazine catch feature. Tisone discloses actuating levers for selectively engaging and disengaging internal magazine retention features (see Tisone ¶¶ [0022]–[0026]). It would have been obvious to provide a magazine catch lever for actuating the internal magazine catch feature of DiChario to facilitate user-controlled release of the magazine.
Regarding claim 19, Tisone further discloses that actuation of such a lever allows the magazine to be disengaged while the magazine housing remains in the firearm (see Tisone ¶¶ [0024]–[0026]), and it would have been obvious to configure the lever-actuated catch of claim 18 to permit removal of the magazine from the shell while the shell remains seated in the firearm receiver.
In the alternative, claims 11-20 are rejected under 35 U.S.C. §103 as being unpatentable over DiChario et al. (US 2019/0226779 A1).
Regarding claims 11-20, Dichario discloses the claimed invention except he may not explicitly disclose the exact recited arrangement. 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.
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.
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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.
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/MICHAEL D DAVID/Primary Examiner, Art Unit 3641