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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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.
Claim 4 is 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. In line 5, the limitation providing that the first and second flanges simultaneously engage the stop engagement surface is inconsistent with the limitation of Claim 3, from which Claim 4 depends, in that Claim 3 provides that the second stop, which includes the second flange is distal from the first stop. The scope of the claim is indefinite.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 17, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shaffer et al., U.S. Patent Application No. 2022/021133, in view of Chang, U.S. Patent No. 11,359,882. As to Claim 17, Shaffer teaches a method of using a crossbow comprising pulling on a bowstring (18) that is in a drawn mode with a sled (32), paragraph 0072. A stop (106) may be engaged with a limiter (part of bowstring (18)) to cease movement of the sled relative to a frame of the crossbow in a de-cocking mode, leaving a first distance between the bowstring and a safety (130) paragraphs 0075, 0076, 0052, and see Figures 7 and 8, noting that the sled draws the bowstring back beyond the held position on catch (62) to a stopping point at a distance from the safety. The safety may be moved, paragraph 0075, noting movement of safety activator which releases the safety to an off state. Shaffer teaches disengaging a catch (62) from the bowstring and transitioning the bowstring to an undrawn mode while the sled engages the bowstring to de-cock the crossbow, paragraphs 0077 and 0078. Shaffer is silent as to moving the safety toward the bowstring. Chang teaches that a crossbow safety may be configured as a forward moving bar, Col. 3, ln. 20-24 and see Figure 4. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the safety as a forward moving feature, as taught by Chang, to provide Shaffer with a safety moved to an off mode by sliding toward the bowstring, to yield the predictable result of providing a step of moving the safety toward the bowstring in a de-cocking mode. As to Claim 18, Chang teaches that the safety may include a safety bar (20) slidably disposed in a slot (121), wherein the safety may be manually engaged to slide the bar in the slot so that a forward surface of the safety moves toward the bowstring without engaging the bowstring during a moving step, Col. 3, ln. 20-24 and see Figure 4. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the safety as a safety bar configured as claimed and as taught by Chang, to provide Shaffer, as modified, with a known substitute safety configuration. As to Claim 20, Chang teaches that the safety may slide along a linear path without rotating toward the bowstring in a de-cocking mode without part of a sled engaging the safety, see Figure 4, noting a generally parallelepiped shape of the safety bar not conducive to rotation and the safety located at a rear portion of a trigger assembly away from the path of a sled engaged with the bowstring. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the safety as claimed and as taught by Chang to provide Shaffer, as modified, with a known substitute configuration for the safety.
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 1-3, 5-8, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4-7 of U.S. Patent No. 12,566,044. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the patent discloses the limitations of Claims 1 and 2. Claim 3 of the patent discloses the limitations of Claim 3, except for placing the second stop of the sled instead of on the frame. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the second stop on the sled, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 86 USPQ 70 (CCPA 1950). Claims 4-7 of the patent discloses the limitations of Claims 5-8 respectively. Claim 7 of the patent discloses the limitations of Claim 11.
Allowable Subject Matter
Claims 4, 9, 10, 12-16 and 19 are 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 JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 2 October 2026
