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 Rejections - 35 USC § 102
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0000176 to Goertzen.
Goertzen discloses the claimed invention including a base 102, e.g., Figs. 4- 6, for a securing a scope mounting system (e.g., ¶ [0001]) to a firearm rail 10, e.g., Figs. 1-3, the base comprising: a first dovetail slot (underside, e.g., Fig. 6) extending from a first end of the base to a first ring abutment (e.g., from around callout 200 therein toward the center with abutment being stud or bolt 200); a second dovetail slot extending from a second end of the base to a second ring abutment (opposite and extending similarly toward the center up to opposite 200, not particularly called out on that side but clearly shown); and a wedge mechanism 121 (see also, e.g., Figs. 18-21) coupled to the base and configured to engage side surfaces of a groove formed in the firearm rail, e.g., ¶ [0068].
Note that, whether Goertzen specifically references the abutments as “first ring” and/or “second ring” abutments, it has been held 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, absent some structural requirement, nomenclature, alone, does not and cannot patentably distinguish over the prior art.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,152,853. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim omits “where the first dovetail is disposed on a top surface of the base” from the patented claim. Despite this, the claim fairly covers the patented subject matter, in part because Applicant does not disclose any other disposition of the first dovetail rail but the top surface of the base. Note that both claims require “a wedge mechanism coupled to a bottom surface of the base,” which wedge mechanism 310 is clearly shown disposed opposite front and rear ring abutments 210, 214, e.g., Fig. 3, which are also required of both claims. Thus, there can be no reasonable argument for any other disposition of the first dovetail rail but the top surface of the base. Thus, this disposition is fairly covered by the patented claim.
Alternatively, it has been held that rearrangement of elements without modifying a device’s operation is unpatentable. In re Japiske, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). MPEP § 2144.04(VI)(C). See also, In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
Conclusion
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
14-Oct-25