DETAILED ACTION
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 1-16 of U.S. Patent No. 11,067,347. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims merely reword limitations of the patent claims, which recite or otherwise cover all the instant limitations. For example, although patent claim 1 recites a bolt body, instant claim 21 recite a cylindrical main body, the patent discloses that the bolt body can include and can be a cylindrical main body, Abstract and col. 3, ll. 49-51, respectively, yet the patent offers no other possible shapes of bolt bodies, neither by disclosure nor drawing figure. Thus, one reading the patent to understand the meaning of claim terms would conclude that the bolt body can include and be a cylindrical main body. Even were this not the case, it has been held that the configuration of the claimed element was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed element was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). MPEP § 2144.04(IV)(B). Here, because the patent fails to offer any other possibilities as to its shape, the bolt body being any other shape would require persuasive evidence that such a shape is significant. Furthermore, patent claim 16 recites a bolt mechanism comprising a cylindrical main body.
While all independent patent claims recite a handle, patent claims 9, 13, and 16 cover such being pivotally coupled, which also obviates couplable, and claims 4-5, 7, 9-13, and 16 recite a firing pin assembly, which is adequately disclosed and shown as meeting the claimed configuration in the instant claims. While perhaps omitting certain functionalities of the firing pin assembly and its interaction(s) with the handle assembly, no other configurations or functions are disclosed. Thus, the patent claims fairly cover the instant claims, absent evidence to the contrary.
Claims 21-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,525,643 and claims 1-22 of U.S. Patent No. 12,215,947. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims merely reword limitations of the patent claims, which recite or otherwise cover all the instant limitations. See detailed explanation, above. Absent evidence to the contrary, the patented claims fairly recite and/or obviate the instant claim limitations for the same or sufficiently similar reason as applied above. See also the Non-Final Office Actions in applications 17/348,672 and 17/946,988, mailed 18 FEB 22 and 30 NOV 23, respectively, for further explanation and detailed analyses of patented claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Regarding claim 21: US 2,123,111 to King, believed to be the closest art of record, discloses a bolt mechanism for a firearm, Title, comprising: a cylindrical main body 15, e.g., Fig. 1; a handle assembly, inter alia, 34, e.g., Fig. 3, pivotally couplable to the cylindrical main body, page 1, col. 2, ll. 34-41; and a firing pin assembly, inter alia, 50, e.g., Fig. 2, configured to extend through a portion of the handle assembly to captively couple the handle assembly to the cylindrical main body (shown), wherein the portion is positioned along a passageway of the cylindrical main body (shown), except for wherein the handle assembly is released from the cylindrical main body by removing the firing pin assembly from the portion of the handle assembly, because such is also attached via pin 36. Thus, King fails to anticipate the claim and no art of record fairly obviates this feature.
Regarding claim 30: such rewords the last clause of claim 21 above as: wherein the handle is released from the cylindrical main body by removal of the firing pin assembly from the portion of the handle, which King similarly fails to anticipate and which feature no art of record fairly obviates.
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.
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/Bret Hayes/
Primary Examiner, Art Unit 3641
12-Dec-25