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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the integral camera disposed within the housing (claim 7), the forward facing surface of the housing and the aperture therein (claim 8), and, the housing having an integral illuminator and an integral camera system disposed within the housing (claim 9) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 7-9 are unclear as that which is claimed is not shown. While Fig. 45 shows an illuminator element 110 and a camera assembly 120 schematically, the camera being, e.g., "integral" and "disposed within the housing," the disposition of such re the aperture and the also integral illuminator, etc., require such be shown.
Claim 1 recites "a riser circuit assembly disposed with the interior compartment" in line 6 (herein, line numbers refer to the actual line count of the claim, not those to the left thereof). Applicant discloses, "interior compartment 48 housing a riser circuit assembly 50," ¶ [0070]. Thus, the riser circuit assembly 50 is disposed within the interior compartment 48, and not with it. Such is how the limitation will be further treated on the merits.
Claim 1 further recites "a fire control system" in lines 3-4 (1X) and 10. The issue is whether the second recitation is intended to be a separate and distinct fire control system from the first or the same. Presumably, replacing "a" with --the-- would resolve.
Claim 1 further recites the limitations "the first surface" in line 9 and "the second surface" in line 11. There is insufficient antecedent basis for these limitations in the claim. Only "a lower surface" and "an upper surface" are previously recited.
Claim 2 recites the limitation "The riser mount system of claim 1, in combination with the weapon accessory interface" in lines 1-2. The issue is whether this implies that recitations of "a lower surface configured to engage a weapon accessory interface" in claim 1, lines 2-3, and "a second electrical connector … structured and operable to electrically couple the one or more batteries to one or more devices on the weapon accessory interface," id., lines 11-13, do not require the weapon accessory interface therein. If so, what, if any, meaning can be attributed to "configured to engage" and "structured and operable to electrically couple" therein?
Claim 3 recites the limitation "wherein handguard assembly" in line 1, which requires an article, preferably definite, e.g., the, therein: --wherein the handguard assembly--”.
Claims 10 and 14 similarly recites "in combination with" in line 1. Akin to claim 2, above, the issue is whether this implies that recitations of the fire control claims 1 and/or 4 do not require such and, if so, what, if any, meaning need be attributed to the previous recitations?
Claim 11 recites the limitation "the keypad assembly" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the handguard assembly is disposed on an upper surface of the handguard assembly" in lines 1-2, which in unintelligible. As best understood, the first recitation should be --the handguard circuit assembly--.
Any unspecified claim is rejected as being dependent upon a rejected base claim.
The claims will be further treated on the merits as best understood only.
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 1-4 and 10-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17
Claims 1-4 and 10-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 19/009,241 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because, while some linguistic differences exist, the metes and bounds of the claims are sufficiently similar such that non-statutory double patenting applies. See below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant claim 1 (IC 1)
Patent application claim 1 (PC 1)
A riser mount system comprising:
A weapon attachment riser system for a weapon, comprising:
a housing…defining an interior compartment
a riser assembly including a base housing defining an interior compartment
a riser circuit assembly disposed with[in] the interior compartment
a circuit assembly…disposed within the interior compartment
a first electrical connector … structured and operable to electrically couple […batteries] to a fire control system
a second electrical connector configured to detachably engage a complementary accessory interface port on the accessory device
a second electrical connector … structured and operable to electrically couple […batteries] to one or more devices on the weapon accessory interface
a first electrical connector configured to detachably engage a complementary weapon rail interface port on the powered weapon accessory interface
IC 2 is fairly met by PCs 13-15. IC 1 recites a weapon accessory interface, thus, its inclusion in IC 2 is obviated, if not expressly required of IC 1. IC 2 further recites a handguard assembly having a handguard circuit assembly in electrical communication with the riser circuit assembly, while PC 13 recites a handguard having an opening, a keypad switch subassembly disposed over the opening, and PC 15 requires the keypad switch subassembly include a flexible interconnect having an electrical connector configured to engage a complementary connector disposed on the handguard.
IC 3 is met whether the patent claims recite a plurality of elongated slots in the handguard because such slots, while not necessarily inherent, are ubiquitous in the art and would be advantageous to include in order to mount accessories and cool the barrel. Both applications disclose M-LOK compatible slots, which are well-known in the art as similar to Keymod and other type slots in handguards, the purpose of which is to attach accessories thereto.
IC 4 is fairly met by "a plurality of user depressible switches" in PC 13.
IC 10 is met. See initial claim 2 analysis, above.
IC 11 is met because it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). MPEP § 2144.04(VI)(B). Here, the duplicated part is a location for attaching an accessory. Because handguards are well-known in the art to include a plurality of slots therein (see claim 3, above) for the purpose of allowing multiple mounting locations for accessories, such would lack patentable significance absent a new and unexpected result were to be produced thereby.
IC 12 unpatentable over art (handguard cover piece)
IC 13 is met whether the patent recites the handguard circuit assembly being disposed on an upper surface of the handguard assembly (as best understood), because such is the only disclosed location of either element in the patent disclosure, the only location shown, and, while not inherent, certainly a ubiquitous location for accessories on firearms having handguards, i.e., atop the handguard in order to allow aiming, easier visual checking, etc., of the accessory.
IC 14 is fairly met. IC 1 recites a fire control system, thus, its inclusion in IC 14 is obviated, if not expressly required of IC 1. See claim 2, above.
IC 15 is met because PC 13 recites "the keypad switch subassembly comprising a plurality of user depressible switches," while such switches are disclosed as being "configured to actuate or otherwise control operation of a selected laser emitter 254a, 254b, 254c," ¶ [0045]. Thus, whether such are also disclosed as including other functionalities, a laser sight would be included in the group of obvious equivalents for such switches in the art.
IC 16 is met because of the doctrine of art-recognized equivalents, above, particularly in view of the patent disclosing "the switches … are configured to actuate or otherwise control operation of a second accessory device (not shown), such as an attached flashlight," ¶ [0046]. Similarly to that above, a flashlight is a well-known accessory to implement on a firearm and would be in the group of obvious equivalents among such accessories in the art.
IC 17 is met because, whether disclosed or recited in the claims, flashlight constructions include both integral body and multi-piece body. Thus, even were a single-body flashlight disclosed or recited in the claims, a flashlight with a head and body coupled thereto would be in the group of obvious equivalents among flashlights in the art. Similarly, light emitting diodes are well-known equivalents to any other bulbs used in flashlights and, because such are heartier, use less energy, and last longer than regular light bulbs, LEDs are favored in many such applications.
Claims 18-19, and, alternatively, claim 17, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 19/009,241 in view of US 2016/0327371 to Teetzel et al. (“Teetzel”). See below.
This is a provisional nonstatutory double patenting rejection.
Were it held that the patent fails to adequately require such and/or the doctrine of art-recognized equivalents was invalid, Teetzel teaches a powered accessory platform for a weapon, Title, comprising a flashlight assembly D, e.g., Fig. 1, wherein the flashlight assembly comprises: a flashlight head 350, e.g., Fig. 7, having one or more light emitting diodes, ¶ [0041]; and a flashlight body 360 coupled to the flashlight head (shown) in the same field of endeavor for the purpose of electrically coupling devices to a weapon via the platform, ¶¶ [0002]-[0003]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent in order to incorporate a flashlight among other devices onto the riser mount system. Further rationale: All claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to a skilled artisan at the time the invention was made.
IC 18 is met in view of Teetzel, above. Teetzel further teaches the flashlight assembly not containing batteries to power the flashlight. Rather, Teetzel discloses “vertical handgrip B includes a housing 270 which defines a battery compartment receiving one or more batteries or battery packs 272,” ¶ [0035]. Such is the sole paragraph discussing battery usage.
IC 19 is met in view of Teetzel, above. Teetzel further teaches the assembly further comprising a flashlight connector assembly 364, e.g., Fig. 12, wherein the flashlight connector assembly is configured to detachably couple to the weapon accessory interface at a plurality of positions on the weapon accessory interface. As disclosed and/or shown, assembly 364 includes a means of mounting such “on the distal end of the lower surface 294 of the shell 122,” ¶ [0042]. As such, the assembly meets the claim requirement to be configured to detachably couple to the interface at a plurality of positions thereon, whether Teetzel discloses such positions on the interface because the recited configuration is limited to the assembly, not the interface.
Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 19/009,241 in view of US 2013/0104438 to Hines. See below.
This is a provisional nonstatutory double patenting rejection.
While the patent fails to recite or disclosed such, Hines teaches a powered mounting rail 101, e.g., Fig. 1, comprising a housing 201, e.g., Fig. 2, having an interior compartment (“battery compartment,” ¶ [0024]), comprising a first battery tube (either left or right tube, e.g., Fig. 3) disposed within the interior compartment (inherent) and configured to receive a first battery 301 (the corresponding left or right as the first tube); a second battery tube (the other) within the interior compartment and configured to receive a second battery (the other); and a switch 204 disposed on the housing (shown) and configured to selectively electrically couple the first battery and the second battery to an electrical circuit to power an accessory (here, flashlight 102), id., in the same field of endeavor for the purpose of improving over previous technologies, ¶¶ [0002]-[0008]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent in order to incorporate first and second battery tubes and a switch in order to increase interchangeability of accessories among weapons. See also further rationale, above.
Allowable Subject Matter
Claims 5-9 and 21 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Reasons for allowance to be included in a future action, if necessary.
Conclusion
Any inquiry concerning this communication should be directed to Bret Hayes at telephone number (571) 272 – 6902, fax number (571) 273-6902, or email address bret.hayes@uspto.gov, which is preferred, especially for requesting interviews, general questions, etc. Note, however, that return correspondence cannot be made in the event that information subject to the confidentiality requirement as set forth in 35 U.S.C. § 122 has been included. See MPEP §§ 502.03 and 713.01, I, regarding email communications. The examiner can normally be reached Mondays through Fridays from 5:30 AM to 1:30 PM, Eastern.
The Central FAX Number is 571-273-8300.
If attempts to contact the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers, can be reached at (571) 272 – 6874.
/Bret Hayes/
Primary Examiner, Art Unit 3641
9-Feb-26
Prosecution Insights