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 .
Response to Arguments
Applicant's arguments filed 7/17/26 have been fully considered but they are not persuasive.
With regards to claim 9, applicant contends that Klein does not anticipate the claim because elements 453 and 454 of Klein are separate components that connect to the lower receiver, not parts of the lower receiver itself. This is not persuasive because there is nothing in the claims that prohibits the “lower receiver” from being in multiple pieces. Klein discloses the lower receiver defining a magazine well and comprising an attachment feature (454, 453) positioned forward of the magazine well. It is irrelevant that the attachment features were formerly separate components.
With regards to claim 11, applicant’s arguments are persuasive.
With regards to claims 12 and 13, applicant contends that Klein does not suggest the general conditions of the claimed gap between the barrel nut and the handguard. This is not persuasive in that Klein does suggest a such a gap. Klein discloses that the handguard is entirely supported on the lower receiver via the mount piece and does not engage or contact the other components of the rifle, such as the barrel or upper receiver or its components. It is spaced apart (i.e. a gap) from the barrel and does not make contact with it (par. 0101) Applicant’s specification, as filed, does not state a specific technical purpose for the gap specifically being 0.01 inches.
With regards to claim 15, applicant contends that Fig. 31 is incompatible with Fig. 11, this is not persuasive in that Fig. 31 discloses all that is recited in claim 9 and dependent claim 15, hence the claim mapping to Fig. 31.
With regards to claim 16, applicant contends that the claimed mapped elements 473 and 474 cannot be the claimed lug because it is mapped to the claimed extension mount. Clearly this is a mistype since 454 and 453 were the mapped “attachment feature” in claim 9 and clear show the attachment feature having a “lug” (i.e. a projection on an object).
With regards to claim 18, applicant contends that Fig. 31 is inconsistent with the embodiment of Fig. 11. This is not persuasive in that Fig. 31 discloses all that is recited in claim 9 and dependent claim 18, hence the claim mapping to Fig. 31.
With regards to claim 19, applicant contends that Klein does not disclose “the attachment feature of the firearm lower receiver is configured to engage with a corresponding attachment feature of the extension mount, the attachment feature of the firearm lower receiver defines a hole, the corresponding attachment feature of the extension mount defines a hole, and the firearm comprises a fastener that extends through the hole of the attachment feature of the firearm lower receiver and the corresponding attachment feature of the extension mount”. Klein clearly shows the assembled device including the attachment features, holes and fasteners (even if the specific holes and fasteners do not have specific element numbers). (see Figures 6-19)
With regards to the new claims, applicant is directed to the office action below.
Double Patenting
Claims 9-13, 15 and 19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-19, 21, 24, and 29 of copending Application No. 18/810898 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims are either anticipated by, or would have been obvious over, the reference claims. Although the claims are not identical, they are not patentably distinct from each other because the present claims are generic to all that is recited in the claims of the co-pending application. In other words, the claims of the copending application fully encompasses the subject matter of the present claims and therefore anticipates the present claims. Since the present claims are anticipated by the claims of the co-pending application, it is not patentably distinct. Thus the invention of the claims of the co-pending application is in effect a "species" of the “generic" invention of the present claims. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed Cir. 1993).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 9-13, 15, and 19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-19 of copending Application No. 18/502,798 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims are either anticipated by, or would have been obvious over, the reference claims. Although the claims are not identical, they are not patentably distinct from each other because the present claims are generic to all that is recited in the claims of the co-pending application. In other words, the claims of the copending application fully encompasses the subject matter of the present claims and therefore anticipates the present claims. Since the present claims are anticipated by the claims of the co-pending application, it is not patentably distinct. Thus the invention of the claims of the co-pending application is in effect a "species" of the “generic" invention of the present claims. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed Cir. 1993).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 9-10, 15-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klein (US 2022/0107154). Klein discloses a firearm comprising: an upper receiver (412); a barrel (453) coupled to the upper receiver; an assembly coupled to the upper receiver, the assembly comprising: a firearm lower receiver (413, 713) defining a magazine well and comprising an attachment feature (454, 453) positioned forward of the magazine well; and an extension mount (474) that is engaged with the attachment feature of the firearm lower receiver; and a firearm handguard connected to the extension mount of the assembly, wherein the extension mount rigidly connects the firearm handguard and the firearm lower receiver. (Fig. 11 and 31)
10. The firearm of claim 14, wherein the firearm handguard is only coupled to the upper receiver through the firearm lower receiver. (Fig. 11)
15. The firearm of claim 9, wherein the firearm handguard is monolithic with the extension mount. (Fig. 31)
16. The firearm of claim 9, wherein the attachment feature of the firearm lower receiver is a lug (453, 454).
17. The firearm of claim 16, wherein the lug has a cuboid shape (Figs. 7 and 8).
18. The firearm of claim 9, wherein the extension mount defines a channel that is configured to engage with the attachment feature of the firearm lower receiver. (Fig. 31)
19. The firearm of claim 9, wherein: the attachment feature of the firearm lower receiver is configured to engage with a corresponding attachment feature of the extension mount, the attachment feature of the firearm lower receiver defines a hole, the corresponding attachment feature of the extension mount defines a hole, and the firearm comprises a fastener that extends through the hole of the attachment feature of the firearm lower receiver and the corresponding attachment feature of the extension mount. (Fig.11)
25. The firearm of claim 9, wherein the attachment feature is monolithic with a portion of the firearm lower receiver that defines the magazine well. (Fig. 31)
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, 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.
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klein as applied to claim 9 above. Klein discloses the claimed invention (the figures clearly show a barrel nut (see Figs 18 and 19) but does not expressly disclose the barrel nut configured to couple the barrel to the upper receiver with the specific gap distances. It would have been obvious to one having ordinary skill in the art to have a first gap is defined between portions of the barrel nut that longitudinally align with the firearm handguard, wherein the first gap is at least 0.01 inch and a second gap is defined between portions of the firearm handguard that circumferentially surround the barrel nut, wherein the second gap is at least 0.01 inch, since it has been held that where the general conditions of a claim are disclosed in the prior art discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 102 USPQ 233. Further, the applicant has not stated that the gap measurement solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with a wide variety of gap dimensions.
Allowable Subject Matter
Claims 11, 23 and 24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and the filing of a terminal disclaimer (claims 11 and 24).
Claim 21 is allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE CLEMENT whose telephone number is (571)272-6884. The examiner can normally be reached M-F 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 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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/MICHELLE CLEMENT/Primary Examiner, Art Unit 3641
