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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 09 JAN 26 is acknowledged. The traversal is on the ground(s) that claim 39 has been amended to incorporate all limitations of claim 21, which, Applicant contends, removes the serious search burden. For the sake of compact prosecution, whether the examiner agrees with Applicant’s contention, the restriction requirement has been withdrawn. Claims 21-40 will be examined.
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.
Claims 21, 28-30, and 34-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 3,786,589 to Kaltmann (cited by Applicant).
Re: claim 21, Kaltmann discloses the claimed invention including a firearm barrel, Title, defining a center axis, center of barrel shown in, e.g., Fig. 1, and configured to receive a bullet having a caliber (“diameter of the projectile,” col. 3, ll. 7-8, e.g., “3:7-8”), the firearm barrel comprising: a body (shown) defining an outer surface (inherent, since the body cannot extend away from the center axis indefinitely) and a bore (shown, surrounded by cross-hatching), wherein: the bore defines a rifling profile (“grooves Z and lands F,” 2:64) along at least a portion of a length of the firearm barrel (inherent in that shown/disclosed), the rifling profile defines a cross-sectional profile perpendicular to the length of the firearm barrel at a location along the length of the firearm barrel (shown/inherent), and the cross-sectional profile comprises a plurality of arcuate portions (“grooves Z are sections of this circle [with radius RZ],” 2:65-3:2-3) and a plurality of linear portions (“the lands F are disposed symmetrically, which comprise chords in this circle [similarly, with radius RZ],” 2:67-3:2).
Re: claim 28, Kaltmann further discloses wherein the plurality of arcuate portions and the plurality of linear portions comprise alternating arcuate portions and linear portions (shown).
Re: claim 29, Kaltmann further discloses wherein a diameter of the bore spanning two opposite arcuate portions of the plurality of arcuate portions is approximately equal to the caliber of the bullet that the firearm barrel is configured to receive. This is asserted because the term “approximately” is not defined in the claim(s), the specification does not provide a definitional limit therefor (see instant ¶¶ [0029] - [0030], for example), and the plain definitions include, e.g.: ‘nearing correctness; nearly exact; not perfectly accurate; approaching; proximate; nearly resembling,’ per OneLook.com, and it is asserted that the diameter of the bore shown in Fig. 1 fairly meets being approximately equal to the caliber of the bullet.
Re: claim 30, Kaltmann further discloses wherein the rifling profile comprises an even number of the plurality of linear portions and an even number of the plurality of arcuate portions, (“four” of each, 2:63).
Re: claim 34, Kaltmann further discloses wherein the cross-sectional profile comprises at least three and up to five arcuate portions and at least three and up to five linear portions, id.
Re: claim 35, Kaltmann fairly discloses wherein the bullet that the firearm barrel is configured to receive is a bullet from a high pressure cartridge. This is asserted because the specification offers only examples of higher pressure cartridges, and that “higher pressure may be defined as any cartridge configured to generate a higher pressure than the SAAMI maximum pressure” (internal quotation marks omitted), ¶ [0049]. That such pressure “may be defined” a certain way is not a definition, since such can be defined any other way as well. Thus, Kaltmann fairly meets the claim. Alternatively, the claim merely requires the barrel be configured to receive a bullet from a high pressure cartridge and nothing more, i.e., the bullet only, which Kaltmann fairly anticipates, since such is configured to receive a bullet from any type of cartridge.
Re: claim 36, Kaltmann further discloses a firearm (rifles and pistols, Abstract) comprising: a receiver (both rifles and pistols include a frame, which suffices); a trigger assembly (inherent in rifles and pistols); a buttstock (at least rifles, but pistols are known to include buttstocks at least as additions to the firearm).
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.
Claims 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kaltmann.
Re: claim 22, Kaltmann discloses the claimed invention as applied above including wherein the plurality of linear portions each define a first radius, e.g., one-half KF, at their closest point to the center axis at the location (shown) and the plurality of arcuate portions each define a second radius, e.g., RZ, to the center axis at the location (shown), except for wherein: the firearm barrel is configured to receive a 6.5 mm bullet having a caliber that is equal to 0.264 inch, expressly, and the second radius is at least 0.1315 inch and up to 0.132 inch, expressly. However, because Kaltmann discloses “While I have disclosed several embodiments of the present invention, it is to be understood, that these embodiments are given by example only and not in a limiting sense,” 4:2-5, and because one of ordinary skill in the art would have been able to use the disclosure of Kaltmann to make a barrel for any particular firearm caliber, presumably, Kaltmann fairly obviates the claimed invention. Note that it has been held that limitations relating to the size of an element were not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Furthermore, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). See MPEP § 2144.04(IV)(A). Here, there is no evidence that altering dimensions to accommodate specific calibers of ammunition would result in different performance than Kaltmann.
Re: claim 23, whether Kaltmann’s statement of non-limiting examples above suffices to obviate six arcuate and six linear portions, or whether Kaltmann fairly discloses such, it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). MPEP § 2144.04(VI)(B).
Re: claim 24, Kaltmann discloses the claimed invention as applied above, except for wherein the cross-sectional profile defines a cross-sectional area that is compliant with a Sporting Arms and Ammunition Manufacturers' Institute (SAAMI) standard rifling profile for the 6.5 mm bullet such that the cross-sectional area is at least 0.0536 square inches. See above regarding dimensions.
Re: claim 25, Kaltmann further discloses wherein the first radius is 96% of the second radius, 2:6-12, except for such being 96.7% to 97.5% thereof. The disclosure of Kaltmann of “about 96%,” id., plainly means approximately or nearly, and, thus, reasonably conveys contemplation of the claimed range 96.7%-97.5%, particularly in view of MPEP § 2144.04(I):
a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").
Given the difference in nickel content (0.75% v. 0.8%) being 0.0625 (0.05/0.8) and the difference in molybdenum content being as great as 0.1667 (0.05/0.30) (each calculated to show greatest differences), the claimed difference in this case is well within the disclosed range, i.e., 1.5/96.7 or 1.8/97.5 equaling 0.0155 or 0.0185, respectively, each is much less than 0.0625 found to obviate in Titanium. Thus, Kaltmann fairly meets the claimed invention.
Re: claim 26, Kaltmann discloses the claimed invention as applied above. Note that the differences in radial dimensions being between 96% as disclosed and 97.5% to 97.8% as claimed, is still well within that determined by the court in Titanium, albeit marginally greater differences, i.e., 0.015 and 0.018, respectively.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Kaltmann in view of US 3,643,364 to Koch (cited by Applicant).
Kaltmann discloses the claimed invention as applied above except for wherein at least a portion of the bore, including a first portion of the bore at the location, is coated with a coating, wherein the coating comprises chrome.
Koch teaches a barrel 1 comprising a coating comprising chrome in the same field of endeavor for the purpose of protecting the barrel, 2:54-58.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kaltmann as taught by Koch with a reasonable expectation of success because Koch further discloses, "[a]s the barrel according to the invention in its interior has no edges extending along its longitudinal axis it is much better suited for the application of a protective coating such as chrome than the known barrels with conventional profiles," id. Further rationale: All claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to a skilled artisan at the time the invention was made.
Claims 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Kaltmann in view of US 2,319,451 to Groene et al. (“Groene”).
Kaltmann discloses the claimed invention as applied above except for removing material from a piece of metal to define the cross-sectional profile perpendicular to the length of the piece of metal at the location along the length of the piece of metal.
Groene teaches a rifling machine, Title, in the same field of endeavor, which uses a disc cutter 12 “for cutting the rifling in the bores of guns,” page 1, col. 1, ll. 1-2.
It would have been obvious to one of ordinary skill in the art before the effective filing to modify Kaltmann as taught by Groene in order to form the rifling with a reasonable expectation of success because Groene further discloses that by “provid[ing] means for preventing the bending of the broaching bar,” id., ll. 41-43, “results in very accurate machining of the grooves of the rifling in the gun and completely eliminates the initial chattered or distorted portions which have heretofore occurred,” id., ll. 48-52. The further rationale provided above would apply equally well here.
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 21-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,203,716. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims amount to mere rewording of the patent claims and/or recite unpatentable limitations, such as to do with dimensions, percentages, etc., noted above.
Claims 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,203,716 in view of Groene. As noted above, Groene teaches a rifling machine for rifling bores of barrels by cutting, i.e., removing material. The reasoning/rationale provided above would apply equally well in view of the patent claims.
Evidence to the contrary of any of the above is welcome.
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
25-Mar-26
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