DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 is rejected under 35 U.S.C. § 112(b) as being indefinite. The phrase “a length greater than a preselected threshold” fails to provide clear scope, as the “preselected threshold” is undefined. While dependent claims 4 and 5 clarify that the threshold is 16 inches, claim 3 alone leaves the threshold open-ended and ambiguous.
Any unspecified claim is rejected as being dependent upon a rejected base claim. In light of the above, the claims will be further treated on the merits as best understood only.
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 Voigt (US 2014/0352190 A1).
Voigt ’190 discloses: a firearm comprising a frame (Fig. 1, element 12 — receiver/frame); a barrel having a rear barrel portion and a forward barrel portion removably connected to each other (¶¶ [0043]–[0047]; Figs. 3–4 — barrel extension portion 34 and forward barrel portion 32, threaded/mating engagement); and an elongated barrel nut configured to connect to the forward portion of the barrel and to the frame (¶ [0048]; Figs. 1, 3–4 — elongated barrel nut/handguard 40 threaded into the receiver 12 and bearing against forward barrel portion 32). Thus, Voigt ’190 discloses all elements of claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over Voigt ’190 in view of Parra (US 2021/0114174 A1).
Voigt ’190 discloses the firearm of claim 1. However, in Voigt ’190 the nut bears against structures associated with both portions. Parra ’174 (¶¶ [0035]–[0040], Figs. 2–3 — collar 50 clamping only the forward barrel portion, isolated from the rear barrel portion) teaches a barrel nut that is free of contact with the rear barrel portion. It would have been obvious to modify the arrangement of ’190 to adopt the practice of isolating the nut to engage only the forward barrel portion, as taught by Parra ’174, to reduce stress and improve modular interchangeability.
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Voigt ’190 in view of Parra (US 2017/0131052 A1).
Voigt ’190 discloses the firearm of claim 1 but does not expressly recite a preselected threshold length. Parra ’052 teaches that regulatory requirements impose a threshold barrel assembly length of greater than 16 inches (¶ [0022]; Figs. 5–6 — assembly length >16 inches). It would have been obvious to specify in ’190 that the combined length of the forward and rear barrel portions is greater than a threshold length, in order to comply with firearm regulations.
Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Voigt ’190 in view of Parra ’052.
Parra ’052 further discloses that each of the forward barrel portion and the rear barrel portion is less than the threshold individually (¶ [0024] — each portion being <16 inches, but together >16 inches). It would have been obvious to configure the barrel portions of ’190 accordingly, providing compact storage while meeting the required threshold when assembled.
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over Voigt ’190 in view of Parra ’052.
Parra ’052 specifies that the threshold length is 16 inches (¶ [0022]). Therefore, it would have been obvious to adopt the recognized regulatory limit of 16 inches as the threshold length in ’190.
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Voigt ’190 in view of Voigt (US 2017/0321981 A1).
Voigt ’190 discloses the firearm of claim 1. Voigt ’981 teaches that at least one of the barrel portions can be rifled (¶ [0038]; Figs. 2–3 — rifled forward barrel portion, optional smooth rear). It would have been obvious to provide rifling in at least one portion to enhance ballistic performance.
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 1–6 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1–5 of U.S. Patent No. 12,188,735.
Claim 1 of the instant application recites a frame, a barrel with rear and forward portions removably connected to each other, and an elongated barrel nut configured to connect to the forward portion of the barrel and to the frame. Claim 1 of the ’735 patent recites a firearm with a frame, a rear barrel portion having a chamber, a forward barrel portion connected to the rear barrel portion, and an elongated barrel nut connecting the barrel assembly to the frame. The scope of claim 1 of the instant application is not patentably distinct from claim 1 of the ’735 patent, as both require the same core structure of a multi-piece barrel assembly secured to the frame by an elongated barrel nut. The difference in phrasing that the nut connects to the forward portion, rather than engaging the barrel assembly generally, does not render the claim patentably distinct, because the nut in the ’735 patent necessarily engages the forward portion in order to secure the assembly.
Claim 2 of the instant application further recites that the nut is free of contact with the rear barrel portion. The ’735 patent (claims 1 and 3) disclose a nut primarily engaging the forward portion of the barrel assembly. The absence of direct contact with the rear portion is an obvious design alternative that does not render the subject matter patentably distinct.
Claims 3–5 of the instant application recite a preselected threshold length (>16 inches overall, with each piece <16 inches). Claim 4 of the ’735 patent specifies that the overall assembly achieves a 16-inch or greater barrel length while each portion is less than 16 inches. These limitations are identical in scope, and the minor difference in claim wording does not patentably distinguish the subject matter.
Claim 6 of the instant application recites rifling in at least one of the barrel portions. Claim 5 of the ’735 patent recites that either portion may be rifled, both may be rifled, or one may be smooth. The instant claim is fully encompassed by, and thus not patentably distinct from, claim 5 of the ’735 patent.
Accordingly, claims 1–6 of the instant application are not patentably distinct from the claims of the ’735 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL D DAVID whose telephone number is (571)270-3737 and whose email address is michael.david@uspto.gov*. The examiner can normally be reached on M-F 8:30am-5:00pm EST.
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/MICHAEL D DAVID/Primary Examiner, Art Unit 3641