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 2-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,188,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are substantially the same as the patented claims with minor differences like the patented claim defining the exterior surface of the grip component is opaque or the sensor is a proximity sensor, both of which are merely omitted from the instant claims and omitting particulars of the claim would have been obvious.
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.
Claim(s) 2-13 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bango et al., hereafter Bango, US Patent No. 11,326,847 in view of Sapio et al., hereafter Sapio, US Patent No. 10,731,936 in further view of Houck et al., hereafter Houck, US Patent Publication No. 2019/0370447.
Regarding claims 2 and 3, Bango discloses a backstrap (12) that is along a rear surface of a grip of a gun (10), the backstrap comprising: a curved portion configured to maintain a hand grasping the gun below a slide of the gun (grip/backstrap portion 12 has a curved portion near a top of the grip which is intended for positioning a hand below the slide as shown in figures 1 or 2 for example. Additionally, the limitation can be broadly, yet reasonably, read to require a curved portion configured to maintain a hand that is grasping the gun and the hand being positioned below the slide. Figure 1 reasonably shows a curve of the rear grip portion that would meet this alternative interpretation.); an outer surface (figure 1) with an acrylic window portion (20) defined therein, wherein the acrylic window portion is transmissible to electromagnetic radiation within at least an infrared portion of the electromagnetic spectrum (20 is disclosed allow infrared transmission as in 10:43-11:8); wherein the acrylic window portion is located at least partially within the curved portion (shown in figure 1, 20 is located in the rear backstrap/portion of the grip which is curved. Additionally, the term “portion” is broad to the point that a “curved portion” of the backstrap can be interpreted to be the entire backstrap or any sub-divided part/portion of the backstrap); and the acrylic window portion of the outer surface is adjacent to a sensor located in the grip of the gun, such that the sensor is able to transmit a signal through the acrylic window portion of the outer surface to establish whether a hand is grasping the grip of the gun (7:45-67 for example); however, Bango does not specifically disclose the backstrap is an attachable component or that the attachment is a dovetail joint that is attachable to a corresponding dovetail joint of the gun, wherein when the dovetail joint is attached to the corresponding dovetail joint of the gun. Nonetheless, Sapio teaches a grip structure (10) which attaches to a firearm frame (14) and specifically teaches a joint (70, 60 and 56) of the gun, wherein the coupling of the grip component with the rear grip portion of the gun is based on the dovetail joint mating with the corresponding dovetail joint of the gun (shown in figure 6 for example). Sapio also provides a teaching of the backstrap portion being curved to match the contour of the frame and position a hand below the slide and the backstrap being curved around a back of the grip like that shown figure 6 at surface 34.
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 grip structure of Bango to have a removable grip cover and attachment structure similar to that as taught by Sapio in order to allow for customization of the grip of the firearm such that the firearm can be adjusted to be comfortable and safe for a variety of users without modification of the firearm frame or requiring a new firearm or firearm frame.
Bango as modified by Sapio further supports the position of the curved profile(s) of the rear grip surface meeting the limitation of the window being placed at least partially in the curved portion.
Further regarding claims 2 and 3, Bango does not specifically disclose the window material is visually opaque and allows transmission of electromagnetic radiation. Nonetheless, Houck teaches a biometric sensor which utilizes an opaque sensor window that is also transmissive in a sensing spectral range (i.e. infrared or the like) in [0016]
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify the window material of Bango to be visually opaque similar to that as taught by Houck with a reasonable expectation of success in order to conceal the sensor device as taught by Houck which would add a level of security to the firearm to be enhanced by concealing the biometric requirement such that a non-authorized user would be unaware of the locked firearm or how to unlock the firearm.
Regarding claims 4-10, 21 and 23, the recitations specifically directed to the sensor are not specifically required in order for the claim limitations directed to the window to be met. For example, in claim 4, the sensor having a transmitter and receiver is not specifically required as the claims are currently constructed. Claim 4 depends from claim 3 which is directed to a component attachable to a gun which positions an acrylic window next a sensor. The sensor is part of the grip of the gun which is not specifically required by the claim because the claim is not directed to the grip of the gun and the attachable component. Therefore, claim 3 and claims which depend from claim 3 merely have to be useable with a sensor as claimed. Returning to claim 4, the claim, as written, requires a window portion that is configured to allow a sensor to function and the function of the sensor being transmitting and receiving More simply, the window needs to allow transmitting and receiving therethrough. If the intent is to claim the specifics of the transmitter and receiver of the sensor, the attachable component needs to be claimed in combination with the grip of the gun which houses the sensor and positively requires the sensor. For the sake of thoroughness, the claims are addressed briefly as best possible.
Regarding claim 4, Bango as modified by Sapio and Houck further discloses the window portion is configured to allow the sensor to function and wherein the sensor comprises: a transmitter configured to transmit the signal; and a receiver configured to receive a reflection of the signal (9:37-10:28 of Bango discloses transmitting and receiving through the window)
Regarding claim 5, Bango as modified by Sapio and Houck further discloses the window portion is configured to allow the sensor to function and wherein the sensor is configured to determine whether the hand is grasping the grip of the gun based on an amount of time between transmitting the signal and receiving a reflection of the signal (Bango 13:30-64).
Regarding claim 6, Bango as modified by Sapio and Houck further discloses the window portion is configured to allow the sensor to function and wherein the sensor is configured to determine whether the hand is grasping the grip of the gun based on a transmitted signal and a received reflection of the signal (Bango 13:30-64)
Regarding claim 7, Bango as modified by Sapio and Houck further discloses the window portion is permeable to infrared electromagnetic radiation, and wherein the sensor comprises: a transmitter configured to transmit the signal, wherein the signal is made up of a beam of infrared electromagnetic radiation; and a receiver configured to receive a reflection of the beam of infrared electromagnetic radiation (Bango 13:30-64 at least).
Regarding claim 8, Bango as modified by Sapio and Houck further discloses the window portion is configured to allow the sensor to function and wherein the sensor is configured to determine whether the hand is grasping the grip of the gun based on an amount reflected infrared electromagnetic radiation that returns to the receiver (Bango 13:30-64 at least).
Regarding claims 9 and 10, Bango as modified by Sapio and Houck further discloses a window capable of allowing transmission of ultrasonic waves and a sensor. One of ordinary skill in the art would have seen it as an obvious matter of design choice to utilize ultrasonic waves for the sensor depending on the desired biometric features to be sensed.
Regarding claim 11, Bango as modified by Sapio and Houck further discloses the claimed invention except for the material of the window. Nonetheless, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to utilize acrylic for the window since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Utilizing acrylic for the window would have been obvious for any number of benefits including, but not limited to, ease of manufacture, safety of use, reduced weight or cost to use, etc.
Regarding claim 12, Bango as modified by Sapio and Houck further discloses the claimed invention except for the material of the window. Nonetheless, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to utilize glass for the window since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Utilizing acrylic for the window would have been obvious for any number of benefits including, but not limited to, ease of manufacture, safety of use, reduced weight or cost to use, etc.
Regarding claim 13, Bango as modified by Sapio and Houck further discloses the claimed invention except for the material of the window. Nonetheless, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to utilize polystyrene for the window since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Utilizing acrylic for the window would have been obvious for any number of benefits including, but not limited to, ease of manufacture, safety of use, reduced weight or cost to use, etc.
Regarding claim 14, Bango as modified by Sapio and Houck further discloses a curved portion configured to keep the hand grasping the gun below a slide of the gun (Bango figure 1)
Regarding claims 18 and 19, Bango as modified by Houcke discloses the claimed invention as articulated in the rejection of claims 2 and 3 above and 15 below for example; however, the combination does not specifically disclose the attachment structure being a dovetail mounting means. Nonetheless, Sapio teaches a grip structure (10) which attaches to a firearm frame (14) and specifically teaches an attachment mechanism which comprises a dovetail joint (72, 74 and 62, 64 of the side panels and 38 of the rear strap) that is configured to mate with a corresponding dovetail joint (70, 60 and 56) of the gun, wherein the coupling of the grip component with the rear grip portion of the gun is based on the dovetail joint mating with the corresponding dovetail joint of the gun (shown in figure 6 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 grip structure of Bango to have a removable grip cover and attachment structure similar to that as taught by Sapio in order to allow for customization of the grip of the firearm such that the firearm can be adjusted to be comfortable and safe for a variety of users without modification of the firearm frame or requiring a new firearm or firearm frame.
Claim(s) 15 and 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bango et al., hereafter Bango, US Patent No. 11,326,847 in view of Westwood et al., hereafter Westwood, US Patent Publication No. 2013/0125441 in further view of Houck et al., hereafter Houck, US Patent Publication No. 2019/0370447
Regarding claim 15, Bango discloses a component (12) that is attachable along a surface of a grip of a gun (10), the component comprising: a curved portion configured to maintain a hand grasping the gun below a slide of the gun (grip/backstrap portion 12 has a curved portion near a top of the grip which is intended for positioning a hand below the slide as shown in figures 1 or 2 for example. Additionally, the limitation can be broadly, yet reasonably, read to require a curved portion configured to maintain a hand that is grasping the gun and the hand being positioned below the slide. Figure 1 reasonably shows a curve of the rear grip portion that would meet this alternative interpretation.); an outer surface that comprises a first visually opaque material (grip is necessarily opaque or the transparent window 20 would be unnecessary. Furthermore, the grip is known as opaque and internal components are not visible in drawings) and that has a window portion (20) defined therein, wherein the window portion comprises a second material that has greater transmissibility of electromagnetic radiation within at least a portion of the electromagnetic spectrum (20 is disclosed as transparent); wherein the acrylic window portion is located at least partially within the curved portion (shown in figure 1, 20 is located in the rear backstrap/portion of the grip which is curved. Additionally, the term “portion” is broad to the point that a “curved portion” of the backstrap can be interpreted to be the entire backstrap or any sub-divided part/portion of the backstrap); however, Bango does not specifically disclose how the grip portion is attached to the firearm frame.
Nonetheless, Westwood teaches analogous art and specifically teaches a grip component (48, 50, 52) with an attachment mechanism (54, screws as in [0057] and 56) and the attachment mechanism is able to removably attach the grip component to a rear grip portion of the gun (figure 3 for example) through a coupling of a fastening hole (56 as best understood by the examiner in view of the indefinite issues above) with a fastener (screws as in [0057]) of the gun, such that the fastener contacts an interior edge of the fastening hole and an interior edge of a fastening cavity (54) of the gun (0057]), wherein the grip component is configured such that the coupling causes the window portion of the exterior surface to be positioned over a sensor such that infrared light emitted from the proximity sensor is able to pass through the window portion of the exterior surface (Westwood specifically teaches positioning a window 60 over a sensor and also teaches a backstrap portion of the grip 52 and considers suitable configurations other than positioning the sensor on the side of the firearm in [0064]).
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 grip structure of Bango to have a removable grip cover and attachment structure similar to that as taught by Westwood in order to allow for customization of the grip of the firearm such that the firearm can be adjusted to be comfortable and safe for a variety of users without modification of the firearm frame or requiring a new firearm of firearm frame.
Further regarding claim 15, Bango does not specifically disclose the window material is visually opaque and allows transmission of electromagnetic radiation. Nonetheless, Houck teaches a biometric sensor which utilizes an opaque sensor window that is also transmissive in a sensing spectral range (i.e. infrared or the like) in [0016]
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify the window material of Bango to be visually opaque similar to that as taught by Houck with a reasonable expectation of success in order to conceal the sensor device as taught by Houck which would add a level of security to the firearm to be enhanced by concealing the biometric requirement such that a non-authorized user would be unaware of the locked firearm or how to unlock the firearm.
Regarding claim 20, Bango as modified by Westwood and Houck further discloses the window portion is permeable to infrared electromagnetic radiation, and wherein the sensor comprises: a transmitter configured to transmit the signal, wherein the signal is made up of a beam of infrared electromagnetic radiation; and a receiver configured to receive a reflection of the beam of infrared electromagnetic radiation (Bango 13:30-64 at least).
Regarding claim 21, Bango as modified by Westwood and Houck further discloses the window portion is configured to allow the sensor to function and wherein the sensor is configured to determine whether the hand is grasping the grip of the gun based on an amount reflected infrared electromagnetic radiation that returns to the receiver (Bango 13:30-64).
Regarding claims 22 and 23, Bango as modified by Sapio and Houck further discloses a window capable of allowing transmission of ultrasonic waves and a sensor. One of ordinary skill in the art would have seen it as an obvious matter of design choice to utilize ultrasonic waves for the sensor depending on the desired biometric features to be sensed.
Response to Arguments
Applicant's arguments filed 3/10/26 have been fully considered but they are not persuasive.
In response to the applicant’s argument that the amendment to claims 4-6, 8, 10, 21 and 23 overcomes the 112 4th rejection, the examiner is persuaded; however, as articulated above, the specifics of the sensor are merely read as functional recitations that serve to define how the window must be configured. Until the combination of a gun grip housing a sensor with an attachable component is claimed, the claims merely require the window be configured to allow a sensor to function. For example, the window configured to allow transmitting and receiving therethrough.
In response to the applicant’s traversal of the double patenting rejection, the examiner is not persuaded. There are no arguments provided to support the traversal. The position of the examiner stands that a terminal disclaimer would be required to overcome the double patenting rejection.
In response to the applicant’s argument that the prior art references used in the Non-Final Rejection do not disclose the newly amended portions of the claims, the examiner is not persuaded. The amendments are addressed in the rejections and corresponding rationales above.
Conclusion
Applicant's amendment necessitated any 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 DERRICK R MORGAN whose telephone number is (571)272-6352. The examiner can normally be reached M-F 9:00-6:00.
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 5712726874. 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
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