DETAILED ACTION
Response to Arguments
Applicant's arguments filed 13 APR 26 have been fully considered but they are not persuasive.
Applicant goes to great lengths to persuade the examiner that US 9,354,010 to McCulloch is directed toward a breathalyzer system only but apparently overlooked the citation in the rejection. While McCulloch is primarily so directed, when rejecting claims 4 and 13, the examiner relied upon col. 4, ll. 17-20. Preceding lines 15-16 are included below, for clarity:
In some embodiments, the breathalyzer system 12 can be modified to sense BAC in other bodily fluids, such as perspiration. In such embodiments, the system 12 can be positioned in contact with a hand of the user (such as on the grip 18) and can sense secretions from the user's hand for enabling and disabling the firearm 10. (Emphases added.)
From this, it is evident that McCulloch does indeed fairly anticipate the claims. While not expressly articulating “a sensing pad,” something is “in contact with a hand of a user (such as on the grip 18).” It is asserted that any such perspiration/secretions-sensing device is a pad of some sort. Note that the elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). See MPEP § 2131. Thus, McCulloch need not disclose the particular term used by Applicant.
In the alternative, even were the sensor implemented in no way capable of being construed broadly yet reasonably as a pad, at least some of the sensors available for sensing perspiration and/or secretions are called pads and the substitution of whatever sensor McCulloch reasonably describes could swapped out for such a pad, since it has been held that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield predictable results. KSR Int’l Co. v. Teleflex Inc., 82 USPQ2d 1385, 1395 (citing U.S. v. Adams, 383 US 36, 50-51 (1966)). Thus, the claims would have been obvious to one of ordinary skill in the art.
Thus, although McCulloch is primarily directed toward a breathalyzer, such clearly anticipates or obviates the claimed invention. Thus, the rejection(s) must stand.
Election/Restrictions
Newly submitted claims 21 and 23-24 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: no claim previously required or suggested a search of the prior art for the lock assembly being biased toward any state, pivot or plunger axes, such being parallel when transitioning between first and second position, or a through-bore defined in the trigger, wherein in the second position the plunger extends into the through-bore such that the trigger may not be actuated.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21 and 23-24 have been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the sensing pad extending around left and right sides of the grip (claim 22) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-12, 14-18, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCulloch.
Re: claim 1, McCulloch discloses the claimed invention including a firearm 10, e.g., Fig. 1, configured to be selectively discharged by a user (a via, inter alia, firing mechanism 22), comprising: a frame 14 including a body portion (shown/inherent), a grip 18, and a trigger guard 26 extending from the body portion to the grip and defining a trigger space therebetween (shown); a firing mechanism 22 including a trigger 24, the firing mechanism being disposed at least partially within the frame so that the trigger extends downwardly into the trigger space (shown); and a locking mechanism comprising: a blood alcohol sensor 12 configured to determine or approximate a blood alcohol content of the user based on alcohol within perspiration of the user (as set forth at col. 4, lines 15-16, e.g., “4:15-16”); and a lock assembly 200, e.g., Fig. 2A, configured to receive a control signal that is based on the determined or approximated blood alcohol content of the user, 4:33-42, wherein the lock assembly is configured to enable and disable the firing mechanism based upon the received control signal, id., wherein the blood alcohol sensor further comprises a sensing pad configured to contact perspiration on the user's skin and a processing module configured to analyze the user's perspiration to determine or approximate the blood alcohol content, col. 4, ll. 15-20. See also the explanation above.
Re: claim 2, McCulloch further discloses where in the lock assembly is selectively movable between a first state in which the firing mechanism is enabled and a second state in which the firing mechanism is disabled, 4:43-63. Any of the combination of actuator 202, mechanism 204, and engagement member 206 fairly meets the claim.
Re: claim 3, McCulloch further discloses wherein the locking mechanism further comprises a battery 241, e.g., Fig. 2B, operably connected to both the blood alcohol sensor and to the lock assembly. See 5:49-58.
Re: claim 5, McCulloch fairly discloses wherein the sensing pad of the blood alcohol sensor is disposed on an outer surface of the grip, when disclosing “the system 12 can be positioned in contact with a hand of the user (such as on the grip 18),” id., at 17-18.
Re: claims 6-7, McCulloch further discloses comprising a processing module in communication with the blood alcohol sensor, wherein the processing module is configured to: receive a measurement signal corresponding the blood alcohol content of the user; and send the control signal to the lock assembly when the measurement signal indicates that the blood alcohol content of the user exceeds a threshold value, thereby disabling or enabling the firing mechanism. See written description of, inter alia, processing module 220, electronics subsystem 240, and conditioning module 243, 5:3-6:13.
Re: claim 8, McCulloch further discloses wherein the lock assembly includes a plunger 206, wherein the plunger is selectively movable between a first position in which the plunger is withdrawn from the trigger space (not particularly shown, but see 4:48-63, discussing such) to a second position in which the plunger extends into the trigger space so that the trigger may not be actuated (that shown and as disclosed).
Re: claim 9, McCulloch fairly discloses wherein the lock assembly further includes a housing 202, wherein the plunger is at least partially disposed within the housing (as shown), wherein the housing of the lock assembly is mounted to the trigger guard adjacent the grip (also as shown).
Re: claim 10, McCulloch further discloses wherein the firearm is one of a handgun or a long gun, 2:54-60.
Anent: claims 11-12 and 14-18, McCulloch discloses the claimed invention as applied above. Specifically, there does not appear to be any significant differences in this set of claims except for not claiming the firearm expressly. Thus, McCulloch fairly meets these claims as well.
Re: claim 22, because McCulloch discloses “the system 12 … be[ing] positioned in contact with a hand of the user (such as on the grip 18),” col. 4, ll. 17-18, such fairly covers the sensor extending around left and right sides of the grip, particularly in light of the breadth of the disclosure. That is, McCulloch does not limit the sensor to only one hand or the other and has fully contemplated either hand by excluding any particular handedness.
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.
Claims 1-3, 5-12, 14-18, and 22 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over McCulloch.
Re: claims 1-3, 5-12, 14-18, as explained above, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield predictable results.” KSR. Here, the substitute combination would yield only predictable results. Thus, substituting a sensing “pad” for whatever sensor McCulloch adequately discloses is unpatentable.
Re: claim 22, it has been held that limitations relating to the size of an element were not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Furthermore, "mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
PNG
media_image1.png
18
19
media_image1.png
Greyscale
Even further, 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. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). See MPEP § 2144.04(IV)(A). Thus, the sensing pad extending around left and right sides of the grip is unpatentable because such merely requires a change is size of the sensor.
Claim 22 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over McCulloch in view of US 2005/0230175 to Brown et al. (“Brown,” previously cited).
Should the rejection(s) above be held invalid, McCulloch discloses the claimed invention as applied above, except for wherein the sensing pad extends around left and right sides of the grip.
Brown teaches an ignition interlock system, Title, comprising a control unit 106, e.g., Fig. 2, having control logic 304, e.g., Fig. 3, for enabling or disabling ignition system 308 and starter 310, and a blood alcohol content (BAC) sensor 202 extending around left and right sides of grip 104 (either front to back or left to right) in the analogous art of locking devices “to prevent an alcohol-impaired individual from either starting the vehicle or from continuing to operate the vehicle once the system has detected a BAC greater than a preset threshold level,” at ¶ [0030], i.e., to prevent use of a device capable of causing severe bodily injury and/or death by an alcohol-impaired individual.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed subject matter to modify McCulloch to have the sensor extend about left and right sides of the grip as taught by Brown in order to prevent an alcohol-impaired individual from using the firearm with a reasonable expectation of success because Brown further discloses “Transdermal alcohol concentration testing interlock devices are not limited to vehicles. Every year workers are severely disabled or killed by operating machines while alcohol impaired,” at ¶ [0042], which clearly conveys Brown contemplated uses beyond those disclosed. Note also that “workers” is sufficiently broad to cover law enforcement and military personnel carrying firearms as a requirement of the job.
Evidence to the contrary of any of the above is welcome.
Conclusion
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 should be directed to Bret Hayes at telephone number (571) 272 – 6902, fax number (571) 273-6902, or email address bret.hayes@uspto.gov, which is preferred, especially for requesting interviews, general questions, etc. Note, however, that return correspondence cannot be made in the event that information subject to the confidentiality requirement as set forth in 35 U.S.C. § 122 has been included. See MPEP §§ 502.03 and 713.01, I, regarding email communications. The examiner can normally be reached Mondays through Fridays from 5:30 AM to 1:30 PM, Eastern.
The Central FAX Number is 571-273-8300.
If attempts to contact the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers, can be reached at (571) 272 – 6874.
/Bret Hayes/
Primary Examiner, Art Unit 3641
3-Jun-26
Prosecution Insights