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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,196,520. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are directed to substantially the same structure as the patented claims with rearrangement of claim order and dependencies being the primary differences. Other minor differences may be present in the claims of the application but are not sufficient to differentiate over the patented claims.
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.
Claims 1-20 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.
Regarding claims 1 and 17, the recitation of “inclined to a horizontal” renders the claim indefinite because it is not sufficiently defined to what the spring segments are being compared to with respect to horizontal. For example, is the segment inclined with respect to a horizontal plane? If so, the horizontal plane needs defined in some manner. Is the segment inclined with respect to a horizontal segment? If so, the horizontal segment would need defined. As currently written the claim does not sufficiently define a horizontal structure, plane, axis, etc. to which the segment is inclined in order to adequately define the inline of the segment.
Claims 3 recites the limitation "the plurality of lower coils" in the last line. There is insufficient antecedent basis for this limitation in the claim.
Any unspecified claim is rejected as being dependent on a rejected base claim.
In view of the indefinite issues the claims will be examined as best understood by the examiner.
Claim Rejections - 35 USC § 102
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 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(s) 1, 5-6, 8-9, 13-15 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davidson, US Patent No. 2012/0066950.
Regarding claim 1, Davidson discloses a spring (20) for a firearm magazine (12), comprising: a top attachment leg; a bottom attachment leg; and a plurality of intermediate coils between the top attachment leg and the bottom attachment leg (figure 3 shows the spring with a top and bottom loose end which are broadly, yet reasonably considered attachment legs and a plurality of coils between the legs); wherein the spring extends along a central spring axis and at least some of the individual coils of the plurality of intermediate coils have a rectangular coil shape (figure 3) that includes straight side segments connected between straight end segments, wherein each of the straight side segments and each of the straight end segments is inclined to a horizontal when the spring is at free length with the central spring axis oriented vertically leg (figures 3-5 show the segments being inclined with respect to a horizontal aspect when the spring is vertical).
Regarding claims 5 and 6, Davidson further discloses a plurality of upper coils between the plurality of intermediate coils and the top attachment leg, wherein the upper coils have a rectangular coil shape and lower coils between the plurality of intermediate coils and the bottom attachment leg, wherein the lower coils have a rectangular coil shape (as shown in figure 3, the spring comprises a plurality of coils. The bottom and top attachment legs are the loose ends of the spring as stated above, the upper and lower coils are the at least two coils associated with the top and bottom attachment legs and the intermediate coils are the middle coils between the upper and lower sections. All of the coils shown have rectangular shapes)
Regarding claim 8, Davidson further discloses a plurality of upper coils between the top attachment leg and the plurality of intermediate coils; and a plurality of lower coils between the plurality of intermediate coils and the bottom attachment leg (as stated above, the upper and lower coils are the at least two coils associated with the top and bottom attachment legs respectively, the intermediate coils are the middle coils between the upper and lower sections)
Regarding claim 9, Davidson further discloses the spring has from 9 to 11 coils (figure 3 shows the spring has approximately 10 or 11 coils depending on how the coils are counted).
Regarding claim 13, Davidson further discloses a magazine parts kit comprising: the spring of claim 1 (stated above); a magazine base plate (24); a follower (18) having a lower rear margin that is inclined with respect to the horizontal (figure 8); and a spring plate (22) configured to nest with the magazine base plate, wherein the magazine base plate has a base plate body with a top surface that defines a recess sized and shaped to receive the spring plate such that the spring plate is recessed into the base plate body (figure 3 shows a base of 24 recessed by sidewalls that is configured to receive 22).
Regarding claim 14, Davidson further discloses the follower configured such that a front portion and a rear portion of the follower overlap the intermediate coils when the spring is fully compressed (figure 5 shows the front and rear of the follower extending downward to where at least some of the intermediate coils can be housed within the follower when the spring is compressed)
Regarding claim 15, Davidson further discloses one or both sides of the follower are cut away to accommodate the intermediate coils when the spring is fully compressed (shown in figures 3 and 5, the sides of the magazine are cut away and therefore capable of receiving the intermediate coils when the spring is compressed)
Regarding claim 17, Davidson discloses a magazine (10) comprising: a magazine tube (12) extending along a central axis from a bottom end to a top end having feed lips (16); a follower (18) retained in the magazine tube; a base plate (24) on the bottom end of the magazine tube; a spring plate (22) with a plate body; and a spring (20) retained within the magazine tube between the spring plate and the follower, the spring including a top attachment leg, a bottom attachment leg, a plurality of upper coils, and a plurality of intermediate coils between the plurality of upper coils and the bottom attachment leg; wherein the spring extends along a central spring axis and individual coils of the plurality of intermediate coils have a rectangular coil shape that includes straight side segments connected between straight end segments, wherein each of the straight side segments and each of the straight end segments is inclined to a horizontal when the spring is at free length with the central spring axis oriented vertically (figures 3-5 show the segments being inclined with respect to a horizontal aspect when the spring is vertical).
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.
Claim(s) 1-2, 4-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seecamp, US Patent No. 4,397,453 in view of Racheli, US Patent No. 5,386,657.
Regarding claim 1, Seecamp discloses a spring for a firearm magazine(figures 1-7 and abstract for example), comprising: a top attachment leg (A and B); a bottom attachment leg (L); and a plurality of intermediate coils (F, G, H, I) between the top attachment leg and the bottom attachment leg; wherein the spring extends along a central spring axis and wherein each of the side segments and each of the straight end segments is inclined to a horizontal when the spring is at free length with the central spring axis oriented vertically (figure 2); however, Seecamp does not specifically disclose at least some of the individual coils of the plurality of intermediate coils have a rectangular coil shape that includes straight side segments connected between straight end segments. Nonetheless, Racheli teaches a magazine spring and specifically teaches the spring can normally be oval or rectangular in shape as shown in figures 5C-5F and discussed in 3:46-62.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Seecamp to have at least some coils with a rectangular shape similar to that as taught by Racheli since Racheli teaches the coils being oval or rectangular are equivalents known in the art at the time the invention was effectively filed and substituting one shape for another would have been a matter of obviousness to one of ordinary skill in the art with a reasonable expectation of success and expected results such as, more reliable feeding of ammunition, reduced spring fatigue, ease of manufacture of the spring, reduced cost to manufacture, etc. Furthermore, it would have been obvious to modify the shape of the coils of Seecamp to be rectangular like that taught by Racheli in order to best fit the internal structure of particular magazines.
Regarding claim 2, Seecamp as modified by Racheli discloses each of the straight end segments is inclined when the spring is at free length but does not specifically disclose the angle is at least 10°. Nonetheless, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to define the angle of inclination to be at least 10°, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Adjusting the angle of inclination would have been obvious for any number of reasons including, but not limited to, adjusting the spring force exerted on the follower, increasing the useable life of the spring, etc.
Regarding claim 4, Seecamp as modified by Racheli further discloses a plurality of upper coils between the plurality of intermediate coils and the top attachment leg, wherein the upper coils have an oval coil shape (Seecamp, figures 3 and 4 show the upper coils are oval shaped)
Regarding claim 5, Seecamp as modified by Racheli further discloses a plurality of upper coils between the plurality of intermediate coils and the top attachment leg, wherein the upper coils have a rectangular coil shape. While Seecamp does not specifically disclose the upper coils are rectangular in shape, Racheli teaches the equivalence of rectangular or oval shaped coils as articulated in the rejection of claim 1 above. As such, the same teaching is applicable to the upper coils for at least the same reasons articulated in the rejection above.
Regarding claim 6, Seecamp as modified by Racheli further discloses lower coils (Seecamp J and K) between the plurality of intermediate coils and the bottom attachment leg, wherein the lower coils have a rectangular coil shape. While Seecamp does not specifically disclose the lower coils are rectangular in shape, Racheli teaches the equivalence of rectangular or oval shaped coils as articulated in the rejection of claim 1 above. As such, the same teaching is applicable to the lower coils for at least the same reasons articulated in the rejection above.
Regarding claim 7, Seecamp as modified by Racheli further discloses the lower coils are sized and shaped to nest at least partially within the plurality of intermediate coils when the spring is fully compressed (Seecamp, figure 7)., and wherein each of the straight end segments is inclined at an angle of at least 10° when the spring is at free length (see rejection and rationale of claim 2 above).
Regarding claim 8, Seecamp as modified by Racheli further discloses a plurality of upper coils between the top attachment leg and the plurality of intermediate coils; and a plurality of lower coils between the plurality of intermediate coils and the bottom attachment leg (Seecamp, figures 1, 2 and 8 for example).
Regarding claim 9, Seecamp as modified by Racheli further discloses the spring has from 9 to 11 coils. Seecamp discloses 6 full coils; however, Racheli teaches a magazine spring with 11 coils as shown in figure 5B.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Seecamp to have more coils, specifically 9 to 11, similar to that as taught by Racheli with a reasonable expectation of success in order depending on the overall length of the magazine in which the spring is to be used and in order to increase the output force of the spring to ensure reliable feeding of the ammunition through the feed lips therefore preventing jamming of ammunition. Additionally, it would be an obvious matter of design choice to have a spring with 9-11 coils in depending on any number of factors such as magazine size, caliber of the ammunition, etc. with a reasonable expectation of success.
Regarding claim 10, Seecamp as modified by Racheli further discloses the spring has a maximum solid height of not more than 6 wire diameters (Seecamp, figure 7 shows a solid height of not more than 3 wire diameters. Additionally, increasing the total number of coils, as taught by Racheli, to 11 from 6 of Seecamp would still result in a height of less than 6 wire diameters because the total number of spring coils has not been increased by more than double)
Regarding claim 11, Seecamp as modified by Racheli further discloses a front portion of the spring has a solid height of not more than 4 wire diameters (Seecamp, figure 7 shows a solid height of not more than 3 wire diameters. Additionally, increasing the total number of coils, as taught by Racheli, to 11 from 6 of Seecamp does not necessarily result in a front height of more than 4 because of how the top and bottom coils are started. In as much as the applicant discloses a configuration where the front is lower in height than the rear, the combination of Seecamp and Racheli would have a similar configuration due to the odd number of coils).
Regarding claim 12, Seecamp as modified by Racheli discloses the invention but does not specifically disclose the wire diameter is from 1.2 mm to 1.4 mm. Nonetheless, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to define or modify the wire diameter to be between 1.2 mm and 1.4 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. /n re Aller, 105 USPQ 233. Selecting a particular wire diameter would have a reasonable expectation of success and yield predictable results such as desired spring usable life, desired spring force output, etc.
Claim(s) 13 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seecamp as modified by Racheli in view of Nakayama et al., hereafter Nakayama, US Patent No. 9,383,152.
Regarding claim 13, Seecamp as modified by Racheli discloses the spring of claim 1; however, the combination does not specifically disclose the specifics of a magazine kit. Nonetheless, Nakayama teaches a magazine parts kit (100) comprising: the spring of claim 1 (articulated above); a magazine base plate (112); a follower (108); and a spring plate (110) configured to nest with the magazine base plate (figure 5b for example) and the magazine base plate has a base plate body with a top surface that defines a recess sized and shaped to receive the spring plate such that the spring plate is recessed into the base plate body (Nakayama figure 5B shows a recess which sits below the lower edges of the base plate 112 and including 1121).
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify or define the magazine structure in which the spring of Seecamp is used to be similar to that of Nakayama with a reasonable expectation of success since Seecamp is silent as to the magazine structure and Nakayama teaches a known magazine configuration and the overcompression stop of Nakayama would serve to prevent binding or damage to the spring due to overcompression.
Regarding claim 16, Seecamp as modified by Racheli and Nakayama further discloses an underside of the follower defines a protrusion configured to engage the top end portion of the spring, wherein the protrusion is laterally offset from a center of the follower (Broadly, yet reasonably, Nakayama shows two protrusions which lie in the middle of each lateral side and the protrusions are offset laterally from the center of the follower as shown in figure 2B for example.
Regarding claim 17, Seecamp as modified by Racheli and Nakayama further discloses a handgun magazine (Nakayama 100) comprising: a magazine tube (Nakayama 102) extending along a central axis from a bottom end to a top end having feed lips (Nakayama 1021); a follower retained in the magazine tube; a base plate on the bottom end of the magazine tube; a spring plate with a plate body; and a spring retained within the magazine tube between the spring plate and the follower, the spring including a top attachment leg, a bottom attachment leg, a plurality of upper coils, and a plurality of intermediate coils below the plurality of upper coils, wherein when the spring is fully compressed, at least two upper coils nest within the plurality of intermediate coils (Spring and base plate structure are addressed in the rejections of previous claims and are omitted here for the sake of brevity).
Regarding claim 19, Seecamp as modified by Racheli and Nakayama further discloses each of the straight end segments is inclined when the spring is at free length but does not specifically disclose the angle is at least 10°. Nonetheless, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to define the angle of inclination to be at least 10°, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Adjusting the angle of inclination would have been obvious for any number of reasons including, but not limited to, adjusting the spring force exerted on the follower, increasing the useable life of the spring, etc.
Regarding claim 20, Seecamp as modified by Racheli and Nakayama further discloses the lower coils are sized and shaped to nest at least partially within the plurality of intermediate coils when the spring is fully compressed (Seecamp, figure 7).
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seecamp as modified by Racheli and Nakayama in view of Rendulic, US Patent Publication No. 2013/0227870.
Regarding claims 14-15, Seecamp as modified by Racheli and Nakayama discloses the claimed invention and Nakayama specifically shows the sides of the follower are cut away and front and rear portions protruding downward; however, the combination does not specifically show the follower front and rear portions overlapping the intermediate coils. Nonetheless, Rendulic teaches a follower 2 which receives the spring and specifically has a side section removed to accommodate spring coils while the front and rear portions overlap the fully compressed spring as in figures 8 and 9A-9B for example.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify or define the relationship between the follower of Seecamp as modified by Racheli and Nakayama to accommodate the spring similar to that as taught by Rendulic with a reasonable expectation of success since, as stated above, Nakayama has a follower which has a similar shape claimed, but does not specifically show the relationship of the follower to the spring and Rendulic provides a clear teaching of a follower accommodating a fully compressed spring which has a shape like Nakayama.
Conclusion
While the Examiner is available via telephone to resolve administrative issues regarding a patent application, issues relating to patentability and/or prospective amendments may be more efficiently discussed via email correspondence subsequent to the filing of form PTO/SB/439 (“Authorization for Internet Communications in a Patent Application”) authorizing permission for internet communication. The form is available online at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf and may be submitted for the record along with any other response to this action. The Examiner may be reached by telephone at 571-272-6352.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached on 571-272-6874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DERRICK R MORGAN/ Primary Examiner, Art Unit 3641