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 § 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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Toner (10024628) in view of Dawson (2021/0270572).
In reference to claim 1, Toner discloses a combination of a mounting plate and a firearm sight (iron sight) for a firearm having a slide with a receiving portion (figures 1-5), the combination comprising:
a tab, i.e., a lip, protruding from a first end of a main body of the mounting plate (figures 1-5: tab 404a or 404b, or the combination thereof), structured to be inserted into a mating slot in the firearm slide adjacent the receiving portion (figures 1-5); and
an aperture formed in the main body underside in a second end of the mounting plate opposite the first end, the aperture structured to receive a fastener for securing the combination to the firearm slide (figure 3A, apertures 315a and 315b; or figures 5 and 6A, aperture 508).
Further, Toner discloses that the firearm slide (304) includes various mounting features (324, 328, 408a, 408b) that are used to mount the combination, wherein said mounting features can also be used to mount a red dot sight (column 3, lines 49-60; column 4, lines 24-30; column 5, lines 51-64; column 6, lines 12-32). In other words, Toner discloses a red dot sight having features that correspond to the mounting features of the firearm slide for mounting said red dot sight to said firearm slide.
Thus, Toner discloses the claimed invention except fails to explicitly disclose (A) the red dot sight as a reflex sight having a light emitter and a reflecting optic, as claimed, wherein the main body of the mounting plate is the reflex sight, wherein the sight is secured to the firearm slide without the use of a mounting plate. Further, Toner fails to disclose (B) a first alignment pin integrated with and projecting from an underside of the reflex sight and structured to be inserted into a first indexing hole in the receiving portion of the firearm slide when the reflex sight is mounted to the firearm slide.
Regarding (A), Toner clearly contemplates a red dot sight having features that mate with the mounting features of the slide in the same manner as the mounting plate (see above-cited portions). Further, Dawson teaches it is known to form the main body of a mounting as a reflex sight, in order to provide enhanced aiming (e.g., figures 20-24B, plate 410, iron sight 440, reflex sight 450; figures 25-29A, plate 510, iron sight 540, reflex sight 550). In other words, Dawson teaches it is known to form a reflex sight such that said sight, per se, includes the various mounting features for mounting the reflex sight to a firearm slide having corresponding mounting features. Thus, the reflex sight taught by Dawson is secured to the firearm slide without the use of a mounting plate, since the reflex sight, per se, is completely merged with the various mounting features normally associated with a mounting plate, but without separately identifiable portions, in order to reduce the number of parts needed (paragraph 123).
Further, Dawson teaches that the reflex sight includes a light emitter and a reflecting optic, as claimed (paragraph 4; figures 20-24B, reflex sight 450 clearly shown with a reflecting lens, as would be at once envisaged by a person of ordinary skill in the art; figures 25-29A, reflex sight 550 clearly shown with a reflecting lens, as would be at once envisaged by a person of ordinary skill in the art; it is within the knowledge-base of a person of ordinary skill in the art that a reflex sight includes a light emitter and a reflecting optic, as claimed).
Regarding (B), Toner discloses that the receiving portion includes apertures configured to receive alignment pins, i.e., indexing pins (figures 3A and 3A’, apertures 324). However, Toner fails to explicitly disclose the indexing pins. Dawson teaches it is known to provide a plurality of indexing pins on an underside of the reflex sight that mate with apertures formed in a receiving portion of a firearm, as claimed, in order to provide enhanced alignment and reduced play between the accessory and the firearm (figure 29C, pin 590; figures 40-44B, pin 890; keep in mind, Dawson discloses that the reflex sight, per se, can include any features the disclosed mounting plate).
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 main body of the mounting plate of Toner as a reflex sight, per se, in lieu of a mounting plate, the reflex sight including all of the mounting features of the mounting plate, the removable iron sight, a light emitter and reflecting optic, and the one main body including a plurality of indexing pins on an underside thereof that mate with apertures (324) formed in a receiving portion of the firearm, as claimed, in order to provide enhanced aiming without the need for a separate mounting plate, and to provide enhanced alignment and reduced play between the reflex sight and the firearm.
In reference to claim 2, Toner in view of Dawson makes obvious the claimed invention, except for wherein the aperture is a threaded hole for receiving a screw. Toner discloses that the iron sight is connected via a screw that threads into a hole 328, passes through the aperture 508, and threadedly engages a hole in the bottom of the iron sight (figure 5). Further, Toner contemplates other possible configurations for the holes and threading (column 6, lines 51-56). Further, looking at figure 5, it is clear that the head of the screw clamps to the underside of the slide when installed. Thus, the components would clearly connect to one another as intended if aperture 508 is either also threaded (providing greater threaded engagement), or if aperture 508 is threaded in lieu of hole 328, since the clamping action would still occur without threading in hole 328.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to either thread aperture 508 in addition to hole 328, with a reasonable expectation of success, in order to provide greater threaded engagement (enhanced securement), or to thread aperture 508 in lieu of hole 328, with a reasonable expectation of success, as a mere substitution of one threaded hole for another to provide predictable connection of the relevant components.
In reference to claims 3-5, Toner in view of Dawson makes obvious the claimed invention (Toner: figure 5, aperture 508 is a through hole, screw 512, the iron sight 320 is the removable element having a threaded receiver).
In reference to claim 6, Toner in view of Dawson (the modified Toner) makes obvious the claimed invention, since the slide is NOT a positively claimed structure, nor is the fastener. The examiner asserts that the reflex sight of the modified Toner is capable of being combined with a fastener and a slide having a non-threaded through hole, since the head of the screw would provide a clamping force regardless (e.g., see figure 5, threaded hole 328 could be a non-threaded hole in a different slide, and the head of the screw would still provide a clamping force on the bottom of the slide to connect the iron sight 320).
In reference to claims 7-10, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claim 1. The modified Toner adds indexing pins to the underside of the main body to mate with indexing holes 324 (shown in figure 3A of Toner). This modification clearly locates the indexing pins as claimed. Further, the indexing pins are considered integrated with the main body via assembly.
In reference to claim 11, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claim 1 (also see Toner, figures 3A and 5: the rear landing is the portion that is overlaid by element 320; figure 3A’: the rear landing is the portion with holes 315a and 315b formed therethrough).
In reference to claim 12, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claim 2.
In reference to claim 13, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claims 2-4 (also see Toner: figure 5, the head of the screw secures, in a clamping action, the iron sight and the rear landing to the firearm slide).
In reference to claim 14, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claim 4.
In reference to claim 15, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claim 5.
In reference to claim 16, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claim 6.
In reference to claim 17, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claim 7.
In reference to claim 18, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claim 8.
In reference to claim 19, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claim 9.
In reference to claim 20, Toner in view of Dawson makes obvious the claimed invention, as set forth above in the reference to claim 10.
Response to Arguments
Applicant's arguments filed 04 March 2026 have been fully considered but they are not persuasive. Specifically, Applicant argues that neither Toner nor Dawson teaches or disclose a reflex sight that is secured to a firearm slide without the use of a mounting plate. The examiner respectfully disagrees. Dawson clearly discloses an embodiment in which the reflex sight is mounted directly to the firearm slide (paragraph 123), and Applicant admits such (remarks, page 13, second paragraph). Applicant argues that said embodiment of Dawson is missing various features of the claim. However, the examiner does not rely upon said embodiment of Dawson to teach the said various features.
The examiner relies upon said embodiment of Dawson to provide the teaching that it is known to form a reflex sight, per se, with mounting features that are known to be associated with a mounting plate(s). Some of these mounting features are taught by Toner (the tab, i.e., the lip; and the aperture), whereas some are taught by Dawson in various embodiments thereof, e.g., the first alignment pin is taught by Dawson in at least one embodiment to be a desirable mounting feature for the mounting of a structure to a firearm slide. Thus, Applicant’s argument that no single embodiment of Dawson teaches all of the claimed features is moot, since the examiner relies upon teachings from multiple embodiments of Dawson in the proposed modification of Toner. Taking all of the teachings together, the examiner asserts that the prior art clearly renders obvious the claimed invention, as set forth above.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-13, 15-23, and 31-38 of copending Application No. 19/352,342 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims are very similar to the application claims, but more broadly recited. All of the features of the application claims are known in the prior art, as evidenced above. Thus, it would have been obvious to one of ordinary skill in the art to modify the invention of the reference application claims to include all of the features of the instant application claims, in order to realize the benefits and advantages associated therewith.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 571-272-6874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
GABRIEL J. KLEIN
Examiner
Art Unit 3641
/Gabriel J. Klein/Primary Examiner, Art Unit 3641
Prosecution Insights