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
Claims 9-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/6/26.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 8,943,947, claims 1-5 of U.S. Patent No. 9,291,414, claims 1-6 of U.S. Patent No. 9,625,232, claims 1-19 of U.S. Patent No. 10,591,245, claims 1-15 of U.S. Patent No. 12,241,717 and claims 1-7 of U.S. Patent No. 11,460,265.
Although the claims at issue are not identical to the patented claims in some instances, the claims are not patentably distinct from each other because the claims of the instant application are directed to the same patentable material regarding the structure of the bolt carrier and buffer weight. The instant application is a rearrangement of some claims of the US Patents and also omits some structural elements or elements of a combination which would be a matter of obviousness. If any differences exist in the pending claims, there are no patentable distinctions over the previously issued patents and approval of a Terminal Disclaimer is required in order to place the claims into condition for allowance.
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) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuczynko et al., hereafter Kuczynko, US Patent Publication No. 2012/0030983.
Regarding claim 1, Kuczynko discloses a bolt carrier assembly (22) for a gas-operated firearm (10) comprising a bolt carrier (24) having a forward end and a rearward end (figure 7) as said bolt carrier is positioned in said gas-operated rifle, said rearward end defining an enclosed longitudinally extending opening (22C), said enclosed longitudinally extending opening receiving at least a portion of a weighted buffer therein (40 with weight 52), said weighted buffer having a back end (50R as in figure 6 for example) which is larger in diameter than said enclosed longitudinally extending opening ([0048] discloses 50F is received in 22C and 40 seats on 50S)
Claim(s) 1 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Bauer, US Registration No. H107.
Regarding claim 1, Bauer discloses a bolt carrier assembly for a gas-operated firearm (10) comprising a bolt carrier having a forward end and a rearward end (as shown in figure 7 for example) as said bolt carrier is positioned in said gas-operated rifle, said rearward end defining an enclosed longitudinally extending opening (figure 7 and disclosed in 3:5-10), said enclosed longitudinally extending opening receiving at least a portion of a weighted buffer therein (3:14- 23), said weighted buffer having a back end which is larger in diameter than said enclosed longitudinally extending opening (shown in figure 7).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Neitzling, US Patent Publication No. 2014/0041518.
Regarding claim 1, Neitzling discloses a bolt carrier assembly for a gas-operated firearm (9) comprising a bolt carrier (13) having a forward end and a rearward end (as shown in figure 2A/2B for example) as said bolt carrier is positioned in said gas-operated rifle, said rearward end defining an enclosed longitudinally extending opening (39), said enclosed longitudinally extending opening receiving at least a portion of a weighted buffer therein (19), said weighted buffer having a back end which is larger in diameter than said enclosed longitudinally extending opening (shown in figure 2A/2B).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cassels, US Patent No. 8,689,672.
Regarding claim 1, Cassels discloses a bolt carrier assembly for a gas-operated firearm (figure 15) comprising a bolt carrier (8) having a forward end and a rearward end (figure 1-12) as said bolt carrier is positioned in said gas-operated rifle, said rearward end defining an enclosed longitudinally extending opening (7:56-8:17 discloses 110 fits in the rear of the bolt carrier), said enclosed longitudinally extending opening receiving at least a portion of a weighted buffer therein (109 for example), said weighted buffer having a back end which is larger in diameter than said enclosed longitudinally extending opening (112).
Allowable Subject Matter
Claims 2-8 are rejected above under Double Patenting; however, the claims appear to be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and approval of a Terminal Disclaimer.
Conclusion
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.
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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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