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 without traverse of Group II and species B, claims 9-13, 15-19 and 21 in the reply filed on 12/29/25 is acknowledged.
Double Patenting
Claims 9-15 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) 9-11, 15, 18, 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) 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)
10. The firearm of claim 14, wherein the firearm handguard is only coupled to the upper receiver through the firearm lower receiver. (Fig. 11)
11. The firearm of claim 14, wherein the firearm handguard abuts the upper receiver. (Fig. 4, 20)
15. The firearm of claim 9, wherein the firearm handguard is monolithic with the extension mount. (Fig. 31)
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)
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 17 and 21 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/MICHELLE CLEMENT/Primary Examiner, Art Unit 3641