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 . This action is in response to Application #19/025,797 filed on 16 January 2025.
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) 2-5, 7, 12, 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication 2009/0071053 to Thomele et al (Thomele ‘053).
Regarding Claims 2-3, 16, Thomele ’053 discloses a modular handgun system comprising:
an elongated universal trigger frame (fig.7, B) having a pair of slide rails (64/68) said trigger frame adapted to have a trigger assembly mounted thereto (fig.4);
a grip frame having an elongated channel (fig.5), a hand grip extending downwardly from said elongated channel (228), and a trigger guard extending between said elongated channel and said hand grip (232), said trigger frame removably mounted in said elongated channel of said grip frame (see Abstract and at least fig.7);
said trigger frame adapted to be used with a plurality of grip frames and with a plurality of slide and barrel assemblies, the plurality of grip frames comprising the grip frame (at least the Abstract, fig.7); and
a slide and barrel assembly slidably mounted on said slide rails of said trigger frame, the plurality of slide and barrel assemblies comprising the slide and barrel assembly (at least paragraph 20, see fig.7).
Regarding Claims 4-5, 17-18, see at least Abstract, fig.7, paragraphs 3, 33, 40, 43-45.
Regarding Claims 7, 19, Thomele ‘053 discloses a rearward portion of said trigger frame has a first rearward extension (see fig.4, 252), said grip frame has a first recess for receiving said extension (see fig.9), and trigger frame and grip frame have alignable openings including a pin removably inserted into said openings (260/264).
Regarding Claim 12, Thomele ‘053 discloses the trigger frame is adapted to (260, 96).
Regarding Claim 15, see fig.4 sidewalls 52 and rails above 64/68.
Regarding Claim 20, Thomele ’053 discloses a modular handgun system comprising:
an elongated universal trigger frame (fig.7, B) having a pair of slide rails (64/68) said trigger frame adapted to have a trigger assembly mounted thereto (fig.4), a rearward portion of said trigger frame has a first rearward extension (see fig.4, 252);
a grip frame having an elongated channel (fig.5), a hand grip extending downwardly from said elongated channel (228), said trigger frame removably mounted in said elongated channel of said grip frame (see Abstract and at least fig.7), said grip frame having a first recess for receiving said extension (see fig.9), and said trigger frame and grip frame have alignable openings;
a pin removably inserted into said openings (260/264); and
a slide and barrel assembly slidably mounted on said slide rails of said trigger frame (at least paragraph 20, see fig.7).
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) 6, 13-14 rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2009/0071053 to Thomele et al (Thomele ‘053).
Regarding Claim 6, Thomele ‘053 discloses a plurality of grip frames and slide assemblies, and paragraph 43 discloses three sets of grip frames. Thomele ‘053 does not specifically disclose a fourth grip frame. However, Thomele ‘053 clearly teaches a modular handgun assembly with a plurality of grip frames to accommodate a wide variety of users and preferences, as well as a plurality of barrel and slide assemblies. It would have been obvious to one having ordinary skill to have as many grip frames as desired with varying sizes, lengths, circumferences all as taught by Thomele ‘053 at least paragraphs 42-44. Thomele ‘053 does not put an upper limit on the number of interchangeable and modular parts of the system.
Regarding Claim 13, Thomele ‘053 does not specifically disclose the materials the trigger frame and grip frame are fabricated from. However, it is old and well-known in the art to utilize a polymer for a grip frame of a handgun, and a metallic unitary structure for the trigger frame, (see fig.2, B) for unitary structure.
Regarding Claim 14, Thomele ‘053 discloses the structure as claimed, and since the structure is disclosed, the patentability of a product does not depend on its method of production. See MPEP 2113-I, The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim(s) 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2009/0071053 to Thomele et al (Thomele ‘053) in view of US Patent Application Publication 2008/0060247 to Thomele et al (Thomele ‘247).
Regarding Claims 8-9, Thomele ‘053 discloses the modular system but fails to specifically disclose the rearward portion of the trigger frame has: a second rearward extension, comprising a pair of transversely spaced apart rearward hooks, and said grip frame has a second recess which receives said second rearward extension.
However, Thomele ‘247 teaches a similar modular handgun system with a grip frame and a trigger frame, wherein the trigger frame has a pair of hooks and the second recess (see at least paragraph 16, figure 2 and hooks element 13).
It would have been a matter of obvious engineering design choice to modify the locking mechanism of Thomele ‘053 element 252 and create two hooks as taught by Thomele ‘247, as Thomele ‘053 and element 252 have hook-like features at their lateral edges, it would have amounted to a small engineering design choice as a known solution in the art and adapting one solution for another to achieve predictable results.
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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over all claims of U.S. Patent Nos. 10,119,777; 10,955,209; 11,525,645; 12,287,164. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued patents contain all of the claimed structural limitations. It is noted that the claims for “a universal trigger frame”, while a different preamble than the currently claimed “modular handgun system”, the same structural limitations and functionality limitations exist in both claim sets and they are not patentably distinct.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached PTO-892 for pertinent art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D COOPER whose telephone number is (571)270-3998. The examiner can normally be reached M-F: 7:30 - 4:30 MST.
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.
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/JOHN COOPER/Primary Examiner, Art Unit 3641
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