DETAILED ACTION
This is a first action reissue examination of U.S. Patent No. 10,072,903 B2 (hereafter the’903 patent and equivalent) addressing the filing 23 January 2025.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
The following is a status of the claims at present:
Claims 1-20 are pending. Of those:
Claims 1-13 were patented and now, each amended
Claims 14-20 are new
Original Disclosure - Definition
The present application is a reissue of US Patent No. 10,072,903 B2, which issued from App. No. 15/661,620 having a filing date of 27 July 2017. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘620 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the record indicates no maintenance fees are due at this time. The next fee, being for the 11.5-year window opens 11 September 2029.
Information Disclosure Statement
The Information Disclosure Statements dated 09 June 2025 (two IDSs) and 23 April 2026 (one IDS) have been considered
Consent of Assignee
The Consent of Assignee is entered.
Amendments Made
Manner of Making Amendments/Support for Amendments Made
The amendment to the claims filed on 23 January 2025, is objected to as not complying with the requirements of 37 CFR 1.173(b)(2), (c) and (d)(1)&(2) because each change relative to the ‘903 patent has not been properly marked. 37 CFR 1.173(b)(1) and (b)(2), 1.173(c) and 1.173(d)(1)&(d)(2) state:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(1) Specification other than the claims, "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), or a "Sequence Listing XML" (§ 1.831(a) ).
(i) Changes to the specification, other than to the claims, "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), or a "Sequence Listing XML" (§ 1.831(a) ), must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (d) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification where any added or rewritten paragraph is located must be identified.
(ii) Changes to "Large Tables," a "Computer Program Listing Appendix," a "Sequence Listing," or a "Sequence Listing XML" must be made in accordance with § 1.58(g) for "Large Tables," § 1.96(c)(5) for a "Computer Program Listing Appendix," § 1.825 for a "Sequence Listing," and § 1.835 for a "Sequence Listing XML."
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression "amended," "twice amended," etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
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(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
The claims presented in the amendment filed 23 January 2025, are improper as numerous instances arise where additions to not appear to be underlined. For example, Claim 6 adds “a second tine”, which did not appear in the patented claim, but appears to be added language and should be underlined. The same issue appears in at least claim 10. Applicant is encouraged to review the amendments made to ensure proper indication of changes is provided.
These corrections should be submitted with the next correspondence.
Claim Rejections – 35 USC §251
Original Patent
The following is a quotation of 35 USC §251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
MPEP § 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP § 1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) The claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 USC §112, first paragraph is satisfied; and
(B) Nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
Further, the Federal Circuit addressed the “original patent” requirement of 35 USC §251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). In Antares the reissue claims covered embodiments of injection devices (not restricted to jet-injection devices) which the Applicant admitted was a different invention from what was originally claimed. Id. At 1356 The Federal Circuit adopted the Supreme Court’s explanation of the “same invention” requirement as “if the original patent specification fully describes the claimed invention, but not if the broader claims ‘are [] merely suggested or indicated in the original specification’”. Id. At 1359. The Federal Circuit further stated that although wording in 35 USC §251 was changed from “same invention” to “original patent” no change in substance was intended. Id. At 1360.
In the instant application, based on Antares, a review of the specification is necessary to determine whether the original specification adequately discloses the invention of the reissue claims. Like in Antares, the specification has language directed to “the one or more tines 33, 37” (Col. 5, lines 21, 11); however, this is the only reference in the written description that states “one or more tines” and/or equivalent language. “[T]he one or more” can encompass more than two tines. Further, the entirety of the paragraph (Col. 5, lines 3-22), is the only section that discussed the tines, and each reference to the tines references only two tines (e.g., line 5, “two tines, a forward tine 33 and a hind tine 37”) and each reference to a tine only includes reference characters 33 or 37, including the language directed to “the one or more tines”, which refers only to 33 and 37. Further, the figures do not provide an embodiment that shows more than two tines, and it is unclear how more than two tines can be on the follower (see e.g., Figs. 8, 9a and 9e).
Turning to the originally filed 15/661,620 application, Claims 1 and 11, respectively, include the language “more than one tines” (e.g., Claim 1, line 6) and “one or more tines” (Claim 11, lines 7). This language was deleted in the preliminary amendment 27 September 2017, as these claims were cancelled, and new Independent Claims 16 and 26 were directed to “one to four tines” (e.g., Claim 16, line 6). As noted previously, the original disclosure does not appear to support more than two tines, as each instance in the written description is directed to only two tines, and in the only instance where “one or more” is mentioned, only two tines are referenced. In other words, the “one or more” language in the written description is considered boilerplate and not indicating possession of more than two tines. In addition, as disclosed, it is unclear how more than two tines can be provided in the disclosed invention and meet the remaining requirements of a “tine” as described. As a result, the examiner takes the position that the claims as amended, to include the language directed to “at least one tine” (Claim 1, line 7) and “more than one tine” (Claim 8, line 9) do not pass the test for original patent.
As a result, claims 1-20 are rejected under 35 USC §251 for not claiming subject matter directed to the invention disclosure in the original patent.
Claim Rejections - 35 USC § 112
35 USC 112(b) - Indefiniteness:
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3. 6. 7. 13. 15. 16. 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Below is a reproduction of the claims with the examiner’s comments in bold italics.
Claim 3: (Amended) The ammunition magazine of Claim 2, wherein a second tine (“a second tine” as written is indefinite as “at least one tine” is previously claimed at the fore position; in other words, more than one tine could be initially claimed at the fore position which could include a second tine”; the examiner suggests language clarifying the tine at the aft position to differentiate it from the tines in the fore position) arranged at an aft position of the follower platform.
Claim 6: The ammunition magazine of Claim 1, wherein a second tine is arranged at an aft position of the follower platform. This claim has the same issue addressed in Claim 3, above.
Claim 7: The ammunition magazine of Claim 1, wherein the at least one tine is split into two regions via a vertical gap arranged at a center of the one tine. The language of this claim is indefinite as written, as it is unclear if ALL of the at least one tines are split or if only one is split.
Claim 13: The ammunition magazine of Claim 9, wherein one or more of the one or more tines is split into two regions via a vertical gap arranged at a center of the one or more tines. This claim has the same issue addressed in Claim 8, above.
Claim 15: The ammunition magazine of Claim 14, further comprising a groove situated in the follower platform to interface with the stop tab (indefinite as claimed as to the metes and bounds of what constitutes “interface”).
Claim 16: The ammunition magazine of Claim 9, further comprising a groove situated in the follower platform to interface with a stop tab (indefinite as claimed as to the metes and bounds of what constitutes “interface”).
Claim 19: The ammunition magazine of Claim 1, wherein the at least one tine comprises two lateral arms fitting the guide rails (indefinite as claimed as to the metes and bounds of what constitutes “fitting”).
Those claims listed under this heading but not directly addressed are rejected as being dependent from a rejected claim, either directly or indirectly.
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1-3, 6-8, 10 and 13-20 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Howard (U.S. Patent 4,139,959).
Below is a reproduction of the claims with the examiner’s comments in bold italics.
Claim 1: Howard discloses An ammunition magazine comprising:
a casing (10) with fore and aft sides (11, 12, respectively) and two longer lateral sides (13, 14) longer than the fore and aft sides (as shown) and first and second open ends (proximate 19 and 30 prior to baseplate installation), the casing further comprising guide rails (15, 16) running along insides of the longer lateral sides (as shown), the casing further comprising a (no language is provided here as amended); and
a follower (20) residing within the casing, said follower further comprising a follower platform (proximate 25 as shown in Fig. 5) with at least one tine (annotated Fig. 5 from Howard, below) at a fore position that extends generally perpendicularly from the follower platform (as shown), the guide rails contacting the at least one tine (the examiner takes the position that this would occur during pivotal motion of the follower within the casing; the tines and guide rails interact to prevent over rotation of the follower in the casing) to act as a guide for the follower (as per the purpose).
[AltContent: textbox (Groove)][AltContent: ][AltContent: textbox (Vertical gap)][AltContent: ][AltContent: arrow][AltContent: arrow][AltContent: textbox (At least one tine)][AltContent: textbox (Second tine (aft))][AltContent: arrow]
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Annotated Fig. 5 from Howard
Claim 2: Howard discloses The ammunition magazine of Claim 1, wherein the casing further comprises a constant internal curve initiating at the second open end (this is exemplified in Fig. 3 at the fore and aft walls).
Claim 3: Howard discloses The ammunition magazine of Claim 2, wherein a second tine (see above) is arranged at an aft position of the follower platform (as shown).
Claim 6: Howard discloses The ammunition magazine of Claim 1, wherein a second tine (see above) is arranged at an aft position of the follower platform (as shown).
Claim 7: Howard discloses The ammunition magazine of Claim 1, wherein the at least one tine is split into two regions (as indicated above) via a vertical gap (as identified above) arranged at a center of the at least one tine.
Claim 8: Howard discloses An ammunition magazine comprising:
a casing (10) with fore and aft sides (10, 11) and two longer lateral sides (13, 14) longer than the fore and aft sides (as shown generally in the drawings) and first and second open ends (proximate 19 and 30 prior to baseplate installation), the casing further comprising guide rails (15, 16) running along insides of the longer lateral sides (as shown); and
a follower (20) residing within the casing (as shown), said follower further comprising a follower platform (proximate 25) with one or more tines (see above), a first of the one or more tines being at a fore position (as shown in annotated Figure 5 from Howard, above) that extends generally perpendicularly from the follower platform, the guide rails contacting the first of the one or more tines (the examiner takes the position that this would occur during pivotal motion of the follower within the casing; the tines and guide rails interact to prevent over rotation of the follower in the casing) to act as a guide for the follower (as per the purpose).
Claim 10: Howard discloses The ammunition magazine of claim 9, wherein the follower platform comprises a second of the one or more tines (see annotated Figure 5 above) at an aft position of the follower that extends generally perpendicularly therefrom (as shown).
Claim 13: Howard discloses The ammunition magazine of Claim 9, wherein one or more of the one or more tines is split into two regions via a vertical gap arranged at a center of the one or more tines (see annotated Figure 5 above which provides the claimed limitations of tines and gap).
Claim 14: Howard discloses The ammunition magazine of Claim 1, further comprising a stop tab (see Annotated Portion of Fig. 3 from Howard, below) projecting internally from a front of the casing (as shown).
[AltContent: textbox (Stop tab)][AltContent: arrow]
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Annotated Portion of Fig. 3 from Howard
Claim 15: Howard discloses The ammunition magazine of Claim 14, further comprising a groove (see Annotated Figure 5 from Howard, above) situated in the follower platform to interface with the stop tab (as best understood using the broadest reasonable interpretation in light of the disclosure).
Claim 16: Howard discloses The ammunition magazine of Claim 9, further comprising a groove (see Annotated Figure 5 from Howard, above) situated in the follower platform to interface with a stop tab (as best understood using the broadest reasonable interpretation in light of the disclosure).
Claim 17: Howard discloses The ammunition magazine of Claim 9, wherein the casing further comprises a constant internal curve (this is exemplified in Fig. 3 at the fore and aft walls.
Claim 18: Howard discloses The ammunition magazine of Claim 9, wherein the casing further comprises a stop tab (see Annotated Portion of Fig. 3 from Howard, below) projecting internally from a front of the casing (as shown).
Claim 19: Howard discloses The ammunition magazine of Claim 1, wherein the at least one tine comprises two lateral arms fitting the guide rails (as shown above; the examiner takes the position that this would occur during pivotal motion of the follower within the casing; the tines and guide rails interact to prevent over rotation of the follower in the casing).
Claim 20: Howard discloses the ammunition magazine of Claim 9, wherein the first of the one or more tines comprises two lateral arms interacting with the guide rails (as shown above; the examiner takes the position that this would occur during pivotal motion of the follower within the casing; the tines and guide rails interact to prevent over rotation of the follower in the casing).
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4, 5, 7, 11 and 12 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Howard in view of Howard in view of Payne (U.S. Patent 1,350,619)
Claims 4, 5, 7, 11 and 12: Howard discloses The ammunition magazine, wherein the casing further comprises a ridge (proximate 12), centrally located (as shown), wherein a face of a tine presses against the ridge (as would occur based on the shape of the tine and ridge (this is exemplified in Fig. 13).
The ridge and contacting tine as shown in Howard are provided on the aft side of the casing, and not on an interior side of the fore side. Payne teaches a similar magazine system that has a ridge (proximate 5 as shown in Figs. 2 and 6) on the fore side of the magazine, and a tine of the follower (26) interrelates with the ridge (as shown). It would have been obvious at the time of filing to a person having ordinary skill in the art to arrange the parts as necessary because rearrangement of parts is considered an obvious matter of design choice. (See In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)(the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice.) One having ordinary skill in the art would recognize the location of the ridge and relationship and contacting tine would not depart from the scope of operability of the prior art if located on the fore or aft side of the respective magazine casing and follower.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,072,903 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
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, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/MATTHEW J KASZTEJNA/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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