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 III (claims 13-20) in the reply filed on 5-20-26 is acknowledged.
Claims 1-12 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected apparatus inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5-20-26.
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 13-15 and 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-15 of U.S. Patent No. 12,163,747. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the current application are broader in scope and therefore fully encompass the subject matter claims in U.S. Patent No. 12,163,747.
Re claim 13, U.S. Patent No. 12,163,747 discloses a firearm comprising: a cocking piece (see claim 10) of moveable between a cocked position and a discharged position and configured to place at least one of a striker assembly or a trigger in a ready-to-fire position when the cocking piece is in a cocked position; a sear configured to engage the cocking piece when the cocking piece is in the cocked position for holding the striker assembly or the trigger in the ready-to-fire position (see claim 10); and a sear support including a sear support body having a sear support reset channel defined therealong (see claim 10); and wherein the sear comprises a sear body including at least one sear support reset cam (see claim 11) configured to contact at least one sear support reset surface of the sear support reset channel as the at least one sear support reset cam moves along the sear support reset channel as the sear is moved between a cocked position, discharged position, and a sear reset position (see claim 15).
Re claim 14, U.S. Patent No. 12,163,747 discloses the firearm of claim 13, further comprising a sear reset spring configured to provide a selected sear reset force (claim 14) directed against the sear so as to urge at least the sear toward the sear reset position.
Re claim 15, U.S. Patent No. 12,163,747 discloses the firearm of claim 13, wherein the sear support body further includes at least one sear engagement surface configured to engage at least one engagement surface of the sear (see claim 10); and wherein the at least one sear engagement surface is configured to move away from engagement with at least one engagement surface of the sear to allow the sear to disengage from the cocking piece and allow the cocking piece to move from the cocked position to the discharged position (see claim 13).
Re claim 17, U.S. Patent No. 12,163,747 discloses the firearm of claim 13, wherein the sear support reset channel comprises a sear support over travel limiting surface; and wherein the at least one sear support reset cam comprises an over travel limiting surface configured to move into contact with the sear support over travel limiting surface to substantially stop movement of at least one of a striker assembly or a trigger (see claim 11).
Allowable Subject Matter
Claims 16 and 18-20 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REGINALD S TILLMAN, JR whose telephone number is (571)270-7010. The examiner can normally be reached M-F 830-530.
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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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/REGINALD S TILLMAN, JR/Primary Examiner, Art Unit 3641
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