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 .
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 4-6 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.
Claim 4 recites the limitation "its" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Any unspecified claim is rejected as being dependent on a rejected base claim.
In view of the indefinite issues the claims will be examined as best understood by the examiner.
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) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roberson, US Patent No. 11,385,026 in view of Roberson, Patent Publication No. 20210055078, hereafter Roberson ‘078 in further view of Zimmer, US Patent Publication No. 9,441,915.
Regarding claim 1, Roberson discloses a firearm (title), comprising: a barrel (shown in figure 1); and an adjustable offset mount (100), the adjustable offset optic mount comprising: a mounting base (130) with attaching structure (136 and 2:50-3:28 discloses a rail interface); a main arm (132) extending from the base at an offset angle relative to vertical (shown in figures 1, 5 and 6 for example); and a mounting plate (112) adjustably coupled to the main arm, wherein the mounting plate is adjustable along a tangent line relative to a shoulder pivot point of the firearm while maintaining the offset angle (as shown in figures 2-3, 5 and 7-9 and disclosed in 3:38-4:5, the mounting position is moveable laterally using overlapping holes 140/142); however, while Roberson clearly considers a rail interface as an alternative, Roberson does not specifically disclose the structure of the firearm and receiver and attachment of other optics, the specific structure of the rail capture or the accessory attached to the offset mount being an optic.
Nonetheless, Roberson ‘078 shows an offset optic mount which details the specifics of a firearm onto which the offset mount is to be mounted and specifically shows the firearm has a receiver, stock, barrel and primary optic (108) (all shown in figure 1) and further teaches the specifics of a rail capture used with an offset mount (shown in figures 2 and 5 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 implied firearm structure and explicit consideration of a rail interface in Roberson to have a configuration similar to that as taught by Roberson ‘078 with a reasonable expectation of success since one of ordinary skill in the art would recognize the partial firearm of Roberson to include a receiver and stock like that of Roberson ‘078 especially in view of Roberson’s disclosure of mounting to a rail interface. Additionally, Roberson ‘078 provides a clear teaching that it would have been obvious to use the offset mount with a primary optic in order to equip the firearm with an alternate or back up sighting system in [0003-0008].
Further regarding claim 1, Roberson discloses the offset mount and one of ordinary skill in the art would recognize the mount arm to be useable with any number of accessories; however, Roberson does not explicitly consider a second optic like that in Roberson ‘078. Nonetheless, Zimmer provides a clear teaching of an optic mounting structure (scope rings 125 with mounting screws 135 through structure 115 and into threaded portions of 125 as shown and taught in 4:66-5:41). The structure of Roberson uses threaded fasteners positioned in the lateral mounting holes through the arm extension in order to position an accessory and Zimmer provides a clear teaching of a structure which would be useable to mount an optic using the holes 140/142 of Roberson.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Roberson to mount an optic on the offset arm using a structure similar to that as taught by Zimmer with a reasonable expectation of success in order to allow for mounting of an optic sight which offers several advantages such as a back-up sighting system in the event the primary optic is damaged or an alternative optic which has a different magnification or eye relief than the primary optic while also allowing the user to adjust the position of the offset sight accessory using the adjustable structure of Roberson. Roberson ‘078 provides additional support that consideration of a second offset sight is well known in the art and would have been obvious for at least the reasons above.
Regarding claims 2 and 3, Roberson as modified by Roberson ‘078 and Zimmer further discloses the claimed invention has an offset angle of 45° and considers an angle other than 45° Roberson 1:55-2:4); however, Roberson does not specifically disclose the angle is between 30 and 40 degrees, or approximately 35 degrees, from vertical. Nonetheless, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to modify or define the angle to be between 30-40° or approximately 35°, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Using a different angle than 45° like one in the range of 30-40° would have been obvious because there are a wide variety of accessories in the firearm art and the different shapes and sizes could dictate an ideal or desired mounting angle.
Regarding claim 4, Roberson as modified by Roberson ‘078 and Zimmer further discloses the main arm comprises a plurality of locating holes arranged along its length (Roberson 140/142).
Regarding claim 5, Roberson as modified by Roberson ‘078 and Zimmer further discloses the mounting plate is adjustably coupled to the main arm using plate screws (Roberson 150) that engage with selected locating holes (Roberson clearly discloses the mounting structure 112 of the accessory is adjustably coupled by the holes 140/142 with screws 150 and Zimmer provides a teaching of an optic mounting plate with similar structure configured to receive threaded fasteners 135. The combination meets the claimed limitation).
Regarding claim 6, Roberson as modified by Roberson ‘078 and Zimmer further discloses the plurality of locating holes comprises at least three sets of holes corresponding to inner, middle, and outer mounting positions (Roberson discloses at least three sets of holes as best shown in figure 9 with inner, middle and outer positions)
Regarding claim 7, Roberson as modified by Roberson ‘078 and Zimmer further discloses the rail capture is configured to attach to a Picatinny rail on the receiver (Roberson discloses MIL-STD-1913 which is to a Picatinny rail and Roberson ‘078 further teaches a Picatinny rail mount)
Claim(s) 8-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roberson, US Patent No. 11,385,026 in view of Zimmer.
Regarding claim 8, Roberson discloses an adjustable offset optic mount (100) for a firearm, comprising: a mounting base (130) with attaching structure (136 and 2:50-3:28 discloses a rail interface); a main arm (132) extending from the base at an offset angle relative to vertical (shown in figures 1, 5 and 6 for example); and a mounting plate (112) adjustably coupled to the main arm; and a plurality of locating holes (140/142 as in figures 3, 5 and 9 for example) on the main arm, wherein the mounting plate is selectably attachable to the main arm at different positions using the plurality of locating holes allowing adjustment of the accessory along a tangent line relative to a shoulder pivot point of the firearm while maintaining the offset angle (as shown in figures 2-3, 5 and 7-9 and disclosed in 3:38-4:5, the mounting position is moveable laterally between 3 lateral positions using overlapping holes 140/142); however, while Roberson clearly considers a rail interface as an alternative, Roberson does not specifically disclose a structure of the rail capture or the accessory attached to the offset mount being an optic.
Nonetheless, Zimmer provides a clear teaching an offset optic mounting structure (100) which has a rail capture (2:54-3:8) and teaches an optic mounting structure (scope rings 125 with mounting screws 135 through structure 115 and into threaded portions of 125 as shown and taught in 4:66-5:41). The structure of Roberson uses threaded fasteners positioned in the lateral mounting holes through the arm extension in order to position an accessory and Zimmer provides a clear teaching of a structure which would be useable to mount an optic using the holes 140/142 of Roberson.
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 interface of Roberson to be a rail capture like that considered and the mounted accessory to be an optic on the offset arm using a structure similar to that as taught by Zimmer with a reasonable expectation of success since Roberson considers a rail interface and Zimmer provides a clear teaching of a structure known in the art and in order to allow for mounting of an optic sight which offers several advantages such as a back-up sighting system in the event the primary optic is damaged or an alternative optic which has a different magnification or eye relief than the primary optic while also allowing the user to adjust the position of the offset sight accessory using the adjustable structure of Roberson. Roberson ‘078 provides additional support that consideration of a second offset sight is well known in the art and would have been obvious for at least the reasons above.
Regarding claims 9 and 10, Roberson as modified by Zimmer further discloses the claimed invention has an offset angle of 45° and considers an angle other than 45° Roberson 1:55-2:4); however, Roberson does not specifically disclose the angle is between 30 and 40 degrees, or approximately 35 degrees, from vertical. Nonetheless, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to modify or define the angle to be between 30-40° or approximately 35°, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Using a different angle than 45° like one in the range of 30-40° would have been obvious because there are a wide variety of accessories in the firearm art and the different shapes and sizes could dictate an ideal or desired mounting angle.
Regarding claim 11, Roberson as modified by Zimmer further discloses the plurality of locating holes comprises at least three sets of holes corresponding to inner, middle, and outer mounting positions (Roberson discloses at least three sets of holes as best shown in figure 9 with inner, middle and outer positions)
Regarding claim 12, Roberson as modified by Zimmer further discloses the mounting plate is adjustably coupled to the main arm using plate screws (Roberson 150) that engage with selected locating holes (Roberson clearly discloses the mounting structure 112 of the accessory is adjustably coupled by the holes 140/142 with screws 150 and Zimmer provides a teaching of an optic mounting plate with similar structure configured to receive threaded fasteners 135. The combination meets the claimed limitation).
Regarding claim 13, Roberson as modified by Zimmer further discloses the rail capture is configured to attach to a Picatinny rail on the receiver (Roberson discloses MIL-STD-1913 which is to a Picatinny rail and Zimmer further teaches a Picatinny rail mount)
Regarding claim 14, Roberson as modified by Zimmer further discloses a quick adjust mechanism with arm tightening for rapid adjustments to the position of the mounting plate without tools (Zimmer 3:4-8 clearly teaches a quick adjust throw lever assembly to allow for securing the base to the rail instead of the clamps 111 and fasteners 112. If the applicant feels this teaching is not sufficient, an additional reference teaching the structure is known in the art is available if requested)
Regarding claims 15-20, the method steps are rendered obvious since such would have been an obvious manner of using the apparatus of Roberson as modified by Zimmer as disclosed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is provided on form PTO-892.
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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