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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 2-5, 6-8, and 9-14 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4, 8-10, and 11-16 of prior U.S. Patent No. 12,209,842. This is a statutory double patenting rejection.
Claim 9 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 17 of prior U.S. Patent No. 11,320,241. This is a statutory double patenting rejection.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 5-7 of U.S. Patent No. 12,209,842. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 5-7 anticipate claims 1, 15-17 of the instant application.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,320,241. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 anticipate claims 1-17 of the instant application.
Claim Rejections - 35 USC § 112
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 1-17 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.
Claim 1 recites the limitation "the optical element" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim. Applicant should note that claims 2-17 are held as indefinite because of their dependency from claim 1. Applicant could amend claim 1 to replace “the optical element” with --the movable optical element-- to overcome the rejection.
Claim 3 recites the limitation "the upper surface" in line 7. There is insufficient antecedent basis for this limitation in the claim. Applicant should note that claims 4-5 are held as indefinite because of their dependency from claim 3.
Claim 7 recites the limitation "the upper surface" in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant should note that claim 8 is held as indefinite because of their dependency from claim 7.
Claim 12 recites the limitation "the upper surface" in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant should note that claims 13-14 are held as indefinite because of their dependency from claim 12.
All claims should be revised carefully to correct all other deficiencies similar to the ones noted above. In light of the above, the claims will be further treated on the merits as best understood only.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 15-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamilton (US 8,919,026).
Regarding claim 1, Hamilton discloses a rifle scope comprising: a scope body 12; a movable optical element 248 defining an optical axis connected to the scope body; a turret 22 comprising (A) a turret screw defining a screw axis and operably connected to the optical element for adjusting the optical axis in response to rotation of the screw (Fig. 9b), (B) a turret chassis subassembly 88 (Fig. 3), and (C) a turret cap 308 at least partially overlapping the turret chassis subassembly (Fig. 9a and 9b); and a zero point adjustment subassembly comprising (a) a zero cap 266 connected to the turret screw (Fig. 9a and 9b), and (b) a locking mechanism releasably securing the zero cap and the turret (Not labeled but shown in Fig. 12; portion engage the v groove; “A flat blade screwdriver is inserted into the slot 444 on the top 442 of the turret screw 446 to make the adjustment nee the outer knob is disengaged from the V-groove 592 in the micro adjuster.”).
Regarding claim 15, Hamilton discloses wherein the turret chassis subassembly comprises: a spiral cam mechanism 160 having a cam pin 126 engaged thereto, the spiral cam mechanism defining a first stop surface and a second stop surface, each positioned for engagement by the stop element, wherein the first stop surface and send stop surface are connected by a channel which at least partially overlaps itself (very clearly seen in Fig. 5b and 9b).
Regarding claim 16, Hamilton discloses a rotation indicator 138 connected to the stop element (Fig. 9b).
Regarding claim 17, Hamilton discloses wherein the turret is an elevation turret (Abstract: “turret may be an elevation turret or a windage turret”)
Claim(s) 1, 15, 16, 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamilton (US 2017/0268851).
Regarding claim 1, Hamilton discloses a rifle scope (Fig. 1, 15, 24, 28, 27 - see scope with first and second top knob 600 and 700 ; Fig. 1 and 13) a movable optical element defining an optical axis connected for the scope body (248, Fig. 4, 13; para[0056], ‘a scope body, that encloses a movable optical element 248 shown in FIG. 13); a turret (22, Fig. 1, 13, 24, 26, 27) comprising a turret screw defining a screw axis and operably connected to the optical element for adjusting the optical axis In response to rotation of the screw (38, Fig. 1, 13, 24, 25, 27 - see turret screw 38) defining a screw axis and operably connected to the optical element 246 for adjusting the optical axis; a turret chassis subassembly (230, Fig. 1, 7A, 7B, 13, 24), and a turret cap at least partially overlapping the turret chassis subassembly (268, Fig. 24, 26, 27) and a Zero point adjustment subassembly (600, 700, Fig. 24, 28, 27) comprising (a) zero cap connected to the turret screw (702, Fig, 24, 26, 27), and a locking mechanism releasably securing the zero cap and the turret (602, 706, Fig. 24, 26, 27 - see locking mechanism comprising dial 602 and top locking gear 706).
Regarding claim 15, Hamilton discloses wherein the turret chassis subassembly comprises: a spiral cam mechanism 160 having a cam pin 126 engaged thereto, the spiral cam mechanism defining a first stop surface and a second stop surface, each positioned for engagement by the stop element, wherein the first stop surface and send stop surface are connected by a channel which at least partially overlaps itself (very clearly seen in Fig. 27).
Regarding claim 16, Hamilton discloses a rotation indicator 138 connected to the stop element (Fig. 27).
Regarding claim 17, Hamilton discloses wherein the turret is an elevation turret (Abstract: “turret may be an elevation turret or a windage turret”)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA E FREEMAN whose telephone number is (303)297-4269. The examiner can normally be reached 9AM - 5PM MST M-F.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA E FREEMAN/Primary Examiner, Art Unit 3641