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.
Claim 1 is 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.
Regarding claim 1, the limitation of “a linkage interconnecting the motor to the actuator” is indefinite because, as best understood by the examiner, the linkage alone does not or cannot interconnect the motor to generate reciprocation of the actuator. Instead, the link is required in order to connect the linkage to the actuator and motor because the link connects from the rotor to the actuator to generate reciprocation. Furthermore, the claim appears to claim the link as a separate component which connects and generates reciprocation of the actuator; however, the specification appears to include the link as part of the linkage which connects from the rotor to the actuator. If the intent is to claim the linkage alone interconnects the motor to the actuator, the linkage must include the link as part of the linkage as detailed in the specification and in the last part of claim 1. As currently written, the linkage is intended to interconnect between the motor and actuator; however, in the claim, the linkage stops at the rotor and the link connects from the rotor to the actuator. A possible correction to the claim would be in recite “the linkage includes a link” and then correct antecedent basis in the last clause.
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.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,241,707 and claims 1-19 of U.S. Patent No. 11,656,054. Although the claims at issue are not identical, they are not patentably distinct from each other because omission of an element like the spring element in the patented claims would have been a matter of obviousness. As currently presented, the claims are directed to substantially the same structure as the patented claims, especially when considered in view of the indefinite issues above.
Response to Arguments
Applicant's arguments filed 5/11/26 have been fully considered but they are not persuasive.
In response to the applicant’s traversal of the rejection of claim 1 under 112(b), the examiner is not persuaded. The examiner has added some clarifying language to the 112(b) rejection. The applicant argues there is not sufficient bases made for why the linkage alone cannot interconnect the motor to the actuator. When read in view of the specification, the linkage appears to be defined as interconnecting the motor to the actuator but in order to interconnect to the actuator, a link is required to connect between the rotor and actuator and is connected to reciprocate in response to rotation of the rotor to generate reciprocation of the actuator. Therefore, the specification puts forth the definition of a linkage comprising a plurality of parts which includes the link to connect between the rotor and actuator. As currently claimed, the linkage includes the rotor connected to the rotating shaft of the motor and the link connects the rotor to the actuator. In order to align with the disclosure and clarify the claim language, the link should be incorporated as part of the linkage. Alternatively, the claim could be amended to define the linkage interconnecting the motor to the rotor and leave the link as the component which connects the rotor to the actuator for reciprocation.
Allowable Subject Matter
Claim 1 appears to be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and approval of a proper Terminal Disclaimer to overcome the double patenting rejection.
The prior art of record, taken alone or in combination, neither discloses nor fairly teaches or suggests the recited limitations of the claimed invention including, but not limited to a training magazine for a firearm having a reciprocating action element, the magazine having a body configured to be removably received in a magazine well of the firearm, a motor connected to the body and a rotating shaft, an actuator engaged with the action element and operable to reciprocate the action element, a linkage connecting the motor to the actuator, the linkage including a rotor operably connected to the rotating shaft and to rotate, and the linkage including a link connected to the body which is operably connected to reciprocate in response to rotation of the rotor to generate reciprocation of the actuator.
This statement is not intended to necessarily state all the reasons for allowance or all the details why the claims are allowed and has not been written to specifically or impliedly state that all the reasons for allowance are set forth (MPEP 1302.14).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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 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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