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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “blocking member” in claims 1-7 and 9-16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 and 5-15 are rejected under 35 U.S.C. 103 as being unpatentable over McCulloch (9354010) in view of Mayhak (4970819).
In reference to claim 1, McCulloch discloses a firearm lower (figures 1 and 2A, frame 14) to which other components are mounted (e.g. a slide 28, a barrel 16, etc.), comprising:
a trigger as claimed (figures 1 and 2A: trigger 24, which a person of ordinary skill in the art would at once envisage includes a non-exposed portion that is not visible in the drawings, said non-exposed portion extending from the exposed portion of the trigger 24 that is visible, wherein said non-exposed portion is located inside the frame 14 to interact with other components of the firing mechanism in the same manner as trigger 334 of figure 3, and the exposed portion is inside the trigger guard and surrounded thereby, in a manner identical to Applicant’s; column 6, lines 16-19: discloses that the firearm 300 of figure 3 and the firearm 10 of figures 1 and 2 can include much of the same componentry, e.g., firearm 300 can include the system 12, which is disclosed as including lock system 200; figures 1-3: firearm 300 clearly has a pivoting trigger 334 with exposed and non-exposed portions analogous to those of trigger 24; figures 1 and 2A: a person of ordinary skill in the art would at once envisage that trigger 24 can be a pivoting trigger, in the same manner as trigger 334; column 2, lines 52-60: discloses that the invention is applicable to many types of firearm, and a person of ordinary skill in the art would at once envisage that some of these of types of firearms are known to include pivoting triggers);
a blocking member that is in an operable relationship with the actuator, disposed adjacent to the trigger guard of the firearm lower, and cooperatively arranged in relation to the trigger to extend, in response to the actuator, to retain the trigger in the first position by extending or rotating in front of a rear surface of the trigger and by way of connection to the trigger, disable the trigger from firing the firearm (figure 2A: blocking member 204+206, trigger guard 26);
wherein the aperture is positioned on a trigger guard surface configured to be adjacent, i.e., close to, a barrel mounted to the firearm lower (column 6, lines 16-19: discloses that the firearm 300 of figure 3 and the firearm 10 of figures 1 and 2 can be similar and include much of the same componentry, e.g., firearm 300 can include the system 12, which is disclosed as including lock system 200; thus, looking at figures 1-3, it is clear that the aperture in the trigger guard 26, through which the blocking member 204+206 extends, is configured to be close to the breech end of the barrel);
an electromechanical actuator configured to actuate the blocking member (figure 2A: element 202; column 4, lines 58-63);
Thus, McCulloch discloses the claimed invention, except for a trigger member, as claimed, wherein the blocking member interacts with a blocking side of the trigger member to selectively disable the trigger. McCulloch shows trigger (24) in both figures 1 and 2A. In figure 1, it appears that trigger (24) has a member integrally protruding from the rear side, i.e., right-hand side (see black/dark structure on the rear side of trigger 24), but said member is unlabeled and not described in the spec. However, in figure 2A, which is a more schematic drawing, this integrally protruding member is not shown at all. This raises a question as to how the trigger can be formed, e.g., the trigger features or geometries that can be used in carrying out the invention (e.g., trigger bow geometry, width, protruding features, etc.).
Mayhak teaches it is known to provide a trigger with an integrally protruding trigger member, protruding from a rear surface of the trigger, such that the trigger member interacts with a blocking member of a firearm for selective disablement of the trigger, in order to provide a defined, positively engaging, and dedicated member for interaction with the blocking member, so as to ensure reliable function no matter the geometry of the trigger bow (figure 1: trigger 14, trigger member 19, blocking member 18). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the trigger of Mayhak with an integrally protruding trigger member, protruding from a rear surface of the trigger, such that the trigger member interacts with the blocking member to disable the trigger, with a reasonable expectation of success, in order to provide a defined, positively engaging, and dedicated member for interaction with the blocking member, so as to ensure reliable function no matter the geometry of the trigger bow.
In reference to claim 2, McCulloch in view of Mayhak makes obvious the claimed invention, including a power source configured to power the actuator (McCullouch: column 4, lines 58-63: a solenoid requires a power source to operate; column 6, lines 16-19, discloses that the firearm 300 of FIG. 3 and the firearm 10 of FIGS. 1 and 2 can include much of the same componentry, e.g., firearm 300 can include the system 12, which is disclosed as including lock system 200; firearm 300 includes a battery 314 that is internal to the firearm; thus, a person of ordinary skill in the art would at once envisage that the solenoid of firearm 10 or 300 can be powered by a battery internal to the frame 14).
In reference to claim 3, McCullouch in view of Mayhak makes obvious the claimed invention, including an electronic trigger lock housing integrally formed with the frame (firearm lower), as claimed (McCullouch: figure 2A: frame 14 has a housing formed therein, wherein the housing includes the space that houses elements 202 and 204; element 202 is an electromechanical actuator, which is illustrated as housed in a portion of frame 14; the housing formed in the frame 14 is the space in the frame designed to house components including a power source and circuitry; column 4, lines 58-63: a solenoid requires a power source to operate; column 6, lines 16-19, discloses that the firearm 300 of FIG. 3 and the firearm 10 of FIGS. 1 and 2 can include much of the same componentry, e.g., firearm 300 can include the system 12, which is disclosed as including lock system 200; firearm 300 includes a battery 314 that is internal to the firearm; thus, a person of ordinary skill in the art would at once envisage that the solenoid of firearm 10 or 300 can be powered by a battery internal to the frame 14).
In reference to claim 5, McCullouch in view of Mayhak makes obvious the claimed invention, as set forth above in the reference to claim 2 (McCullouch: see figure 2A, and column 4, lines 43-61).
In reference to claim 6, McCullouch in view of Mayhak makes obvious the claimed invention, as set forth above in the reference to claim 1 (the trigger is a pivoting trigger, and, thus, the blocking member block rotation of the trigger to disable the trigger).
In reference to claim 7, McCullouch in view of Mayhak makes obvious the claimed invention, as set forth above in the reference to claim 1 (McCullouch: figures 1 and 2A, if the firearm is aimed upwardly, then the back of the trigger pivots downwardly).
In reference to claim 8, McCullouch in view of Mayhak makes obvious the claimed invention, as set forth above in the reference to claim 1.
In reference to claim 9, McCullouch in view of Mayhak makes obvious the claimed invention, including electronic circuitry comprising a wireless receiver configured to receive remote signals and control the actuator (McCullouch: column 4, lines 21-42 and 58-63).
In reference to claim 10, McCullouch in view of Mayhak makes obvious the claimed invention, as set forth above in the reference to claim 1 (Mayhak teaches the trigger member being formed with the trigger as a single piece).
In reference to claim 11, McCulloch in view of Mayhak makes obvious the claimed invention (McCulloch: column 4, lines 21-42).
In reference 12, McCullouch in view of Mayhak makes obvious the claimed invention, as set forth above in the reference to claim 1.
In reference 13, McCullouch in view of Mayhak makes obvious the claimed invention, as set forth above in the reference to claims 1 and 10.
In reference to claim 14, McCullouch in view of Mayhak makes obvious the claimed invention, as set forth above in the reference to claims 1 and 2.
In reference to claim 15, McCullouch in view of Mayhak makes obvious the claimed invention, as set forth above in the reference to claims 1-3.
Claims 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over McCulloch in view of Mayhak and further in view of Byer et al. (2007/0115955).
McCulloch in view of Mayhak makes obvious the claimed invention, except for wherein the power source is a rechargeable battery and wherein the firearm frame further comprises contacts disposed on an outer surface of the frame, each contact being electrically connected to a terminal of the battery and the contacts being configured to receive power from an external battery charger to charge the battery. However, Byer teaches that it is known to form a power source for a firearm as a rechargeable battery housed in a frame of the firearm, wherein the frame further comprises contacts disposed on an outer surface thereof, each contact being electrically connected to a terminal of the battery and the contacts being configured to receive power from an external battery charger to charge the battery, in order to provide charging without battery removable (paragraph 23 and figure 2, battery 8 and charging contacts 9).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the power source of McCulloch as a rechargeable battery housed in the firearm frame, wherein the frame further comprises contacts disposed on an outer surface thereof, each contact being electrically connected to a terminal of the battery and the contacts being configured to receive power from an external battery charger to charge the battery, with a reasonable expectation of success, in order to provide charging without battery removal (quick and easy charging).
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12152847. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims recite each and every limitation of the application claims. The difference being that the patent claims are more specific than the application claims, and, thus, “anticipate” the invention of the application claims. Thus, the application claims are patentably indistinct from the patent claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: see attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL J KLEIN whose telephone number is (571)272-8229. The examiner can normally be reached 11:30am-8pm.
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GABRIEL J. KLEIN
Examiner
Art Unit 3641
/Gabriel J. Klein/Primary Examiner, Art Unit 3641