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 Objections
Claim 14-20 objected to because of the following informalities: Claim 14 recites the limitation “rotating a portion of the lock assembly relative to the movable component of the firearm”. The limitation “he” should be replaces with --the--. Appropriate correction is required. Applicant should note that claims 15-20 are objected to because of their dependency from claim 14.
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 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 19 and 20 of U.S. Patent No. 12,228,357. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 12 and 20 anticipated claim 14 of the instant application.
Claim 12 recites “A method of handling a firearm with a safety system, the firearm including a movable component and a frame, the safety system being fixedly coupled to the frame and including a lock mechanism operably coupled to an engagement member the method comprising: moving the movable component of the firearm in a proximal direction relative to the frame of the firearm; movement of the engagement member from the lock position being restricted by the lock mechanism when the lock mechanism is in an engaged state, a separation distance between a distal end of a primer actuator of the firearm and a primer activation plane of the firearm the separation distance precluding contact between the primer actuator and a cartridge primer in response to an actuation of a firing mechanism of the firearm.” and claim 20 adds that the movement is rotating a portion of the lock assembly “actuating, after rotating the engagement member from the unlock position to the lock position”. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 12 and 20 anticipated claim 14 of the instant application.
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 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.
Claims 1-8, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Florez (US 6,253,480).
Regarding claim 1, Florez discloses a safety system for a firearm (Title; abstract), the safety system comprising:
a housing 15 fixedly coupled to a frame of the firearm (Fig. 1 and 2; “the top of the housing may have a pair of mounting holes 23 for permitting extension of fasteners therethrough and into the weapon to couple the top of the housing to the weapon”);
a lock assembly positioned at least partially within the housing (“the guard plates are rearwardly extended from the back of the housing to substantially cover sides of the trigger guard when the guard plates are positioned in the extended position to prevent a user's finger from is extendable through the trigger guard” the guard plates can be reasonably and broadly construed as part of a lock assembly. In operation the lock out a user from accessing the trigger), the lock assembly having an engaged state in which the lock assembly maintains a separation distance between a distal end of a primer actuator of the firearm and a primer activation plane of the firearm (Fig. 2; the trigger is preventing the firearm from being used maintain a distance between a distal end of a primer actuator of the firearm and a primer activation plane of the firearm), a portion of the lock assembly 32 being rotatable upon a transition the lock assembly to a disengaged state (Fig. 3; Each of the guard plates has a toothed lower edge 31. A motor 31 is disposed in the housing and has a pair of rotatable toothed wheels 32, 33); and
a user interface 38, 47 coupled to the housing and operably coupled to the lock assembly, the user interface being configured to receive a user input to transition the lock assembly to the disengaged state (“A computer 38 (i.e., central processing unit) is provided in the housing and is in electrical communication with the motor and the solenoid. The computer has computer circuitry 39 for selectively controlling rotation of the toothed wheels in the first and second directions and controlling retraction and extension of the actuator rod in and out of the solenoid”…“at least one scanner 47 is mounted to the handgrip of the weapon (preferably, a scanner is mounted to each side of the handgrip). The scanner is in electrical communication with the computer.”).
PNG
media_image1.png
449
1426
media_image1.png
Greyscale
.
Regarding claim 2, Florez further discloses wherein: the housing remains fixedly coupled to the frame of the firearm on a condition that the lock assembly is in the engaged state and on a condition that the lock assembly is in the disengaged state (Fig. 2).
Regarding claim 3, Florez further discloses wherein: the firearm is in a nonoperable state on a condition that the lock assembly is in the engaged state; and the firearm is in an operable state on a condition that the lock assembly is in the disengaged state (“the guard plates are rearwardly extended from the back of the housing to substantially cover sides of the trigger guard when the guard plates are positioned in the extended position to prevent a user's finger from is extendable through the trigger guard”).
Regarding claim 4, Florez further discloses wherein: the lock assembly includes a motor 36 operably coupled to an energy storage device 40; and the motor is rotatable via 32 in response to the user input to transition the lock assembly to the disengaged state (Fig. 4).
Regarding claim 5, Florez further discloses wherein: the user interface includes at least one of a fingerprint reader 47, a radio frequency identification reader, a numerical input apparatus, a microphone, a magnetic key, or a mechanical key (Fig. 2).
Regarding claim 6, Florez further discloses wherein: the housing is fixedly coupled to the frame at a location that is distal to a trigger guard of the firearm (Fig. 1 and 2).
Regarding claim 7, Florez further discloses wherein: a portion of the frame to which the housing is fixedly coupled is between a barrel of the firearm and the housing (Fig. 1 and 2).
Regarding claim 8, Florez further discloses wherein: the firearm is a handgun; the handgun includes a slide; the slide is movable along a first side of the frame; and the housing is fixedly coupled to a second side of the frame opposite the slide such that at least a portion of the frame is between the housing and the slide (Fig. 1 and 2).
Regarding claim 12, Florez further discloses wherein: the housing includes: a coupling portion configured to receive a mounting structure of the frame of the firearm (Fig. 1-3), and a lock cavity defined by an inner face of the housing, the lock cavity supporting at least a portion of the lock assembly (Fig. 4).
Regarding claim 13, Florez further discloses: at least one fastener to secure the mounting structure of the firearm within the coupling portion, the at least one fastener being at least partially occluded on a condition that the lock assembly is in the engaged state (“ In one preferred embodiment, the top of the housing may have a pair of mounting holes 23 for permitting extension of fasteners therethrough and into the weapon to couple the top of the housing to the weapon. “; fasteners are always occluded).
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.
Claims 1-8, 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 6,574,011) in view of Brooksby et al (US 2021/0381789) [hereinafter Brooksby].
Regarding claim 1, Sato discloses a safety system for a firearm (Fig. 5a-5b), the safety system comprising:
a housing 16 fixedly coupled to a frame of the firearm (Fig. 5a, 5b);
a lock assembly 1 positioned at least partially within the housing (Fig. 6b), the lock assembly having an engaged state in which the lock assembly maintains a separation distance between a distal end of a primer actuator of the firearm and a primer activation plane of the firearm (“a locking bar 7 is held at the upper position, and it restricts the movement of a slide 5. If the slide 5 cannot slide back, the pistol 6 cannot load a bullet and get disabled”), a portion of the lock assembly being movable upon a transition the lock assembly to a disengaged state (Fig.6b; “FIG. 7B shows the inside components of the locking device 1. If a signal receptor 19 receives key code signal, a chip 20 activates solenoids 21, 22 with DC power from a battery 23 and actuates a locking bar 7. All these elements are installed in a lock housing 16. The lock housing 16 is fixed to the frame 2 firmly by the coupling of attachment rails 24, 25 and equipment rails 17, 18 respectively.”) and
a user interface 20, 26 (Fig. 6a-7b) coupled to the housing and operably coupled to the lock assembly 1, the user interface being configured to receive a user input to transition the lock assembly to the disengaged state (“a chip 20 activates solenoids 21, 22 with DC power from a battery 23 and actuates a locking bar 7”; “A biometric CMOS sensor 26 for fingerprint authentication is installed in a locking device 1”).
PNG
media_image2.png
496
1430
media_image2.png
Greyscale
Sato fails to disclose wherein a portion of the lock assembly being rotatable upon a transition the lock assembly to a disengaged state.
Brooksby teaches that it is known in the art of firearm locking devices to use motors in place of solenoids with a portion 421 of the lock assembly being rotatable upon a transition the lock assembly to a disengaged state (Fig. 11, 15, 16, Par. 0046: “The blocking tab 408 is moveable in a linear direction via an actuator 414 (a motor or solenoid). The actuator 414 may comprise a first protrusion 415A with a first aperture 417A and a second protrusion 415B with a second aperture 417B. Additionally, the actuator 414 may comprise a drive shaft 419, which may receive a gear 421 having teeth 423 that interact with the plurality of teeth 413 on the shaft 409 (rotates). The first protrusion 415A and second protrusion 415B may couple to the first arm 403A and second arm 403B of the housing 402. For example, once the first and second protrusion apertures 417A, 417B are aligned with the apertures 405A, 405B of the first and second arms 403A, 403B, then a fastener (e.g., a screw) may be inserted therethrough, coupling the actuator 414 to the housing 402.”).
PNG
media_image3.png
548
962
media_image3.png
Greyscale
Applicant should note that "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield predictable results." KSR at 1395 (citing United States v. Adams 383 US 39, 50-51 (1966)).
It would have been obvious to one of ordinary skill in the art at the time of invention to have modified Sato such that a portion of the lock assembly being rotatable upon a transition the lock assembly to a disengaged state, in view of Brooksby, because the substitution of one known element (known actuator: a solenoid) for another (known actuator motor: a motor and rotating gear) would have yielded predictable results to one of ordinary skill in the art at the time of invention. The replacement would be expected to yield a locking assembly that actuates a locking bar/shaft.
Regarding claim 2, Sato further discloses wherein: the housing remains fixedly coupled to the frame of the firearm on a condition that the lock assembly is in the engaged state and on a condition that the lock assembly is in the disengaged state (Fig. 5b; “The lock housing 16 is mounted on equipment rails 17, 18”).
Regarding claim 3, Sato further discloses wherein: the firearm is in a nonoperable state on a condition that the lock assembly is in the engaged state (Abstract: “The locking device 1 locks a locking bar 7 which restricts the movement of a slide 5 or a cylinder 30, thereby disabling the secured firearm”).; and the firearm is in an operable state on a condition that the lock assembly is in the disengaged state (when unlocked; the slide is allowed to move back allowing ammunition to be load and the firearm to be used).
Regarding claim 4, Brooksby further teaches wherein: the lock assembly includes a motor 414 operably coupled to an energy storage device; and the motor is rotatable in response to the user input to transition the lock assembly to the disengaged state (Fig. 11, 15, 16, Par. 0046: “The blocking tab 408 is moveable in a linear direction via an actuator 414 (a motor or solenoid). The actuator 414 may comprise a first protrusion 415A with a first aperture 417A and a second protrusion 415B with a second aperture 417B. Additionally, the actuator 414 may comprise a drive shaft 419, which may receive a gear 421 having teeth 423 that interact with the plurality of teeth 413 on the shaft 409 (rotates). The first protrusion 415A and second protrusion 415B may couple to the first arm 403A and second arm 403B of the housing 402. For example, once the first and second protrusion apertures 417A, 417B are aligned with the apertures 405A, 405B of the first and second arms 403A, 403B, then a fastener (e.g., a screw) may be inserted therethrough, coupling the actuator 414 to the housing 402.”).
Regarding claim 5, Sato further discloses wherein: the user interface includes at least one of a fingerprint reader 26, a radio frequency identification reader, a numerical input apparatus 15, a microphone, a magnetic key, or a mechanical key (Fig. 5b; 7a).
Regarding claim 6, Sato further discloses wherein: the housing is fixedly coupled to the frame at a location that is distal to a trigger guard of the firearm (Fig. 5b, 6a, 7a).
Regarding claim 7, Sato further discloses wherein: a portion of the frame to which the housing is fixedly coupled is between a barrel of the firearm and the housing (Fig. 5b, 6a, 7a).
Regarding claim 8, Sato further discloses wherein: the firearm is a handgun 6; the handgun includes a slide 5; the slide is movable along a first side of the frame; and the housing is fixedly coupled to a second side of the frame opposite the slide such that at least a portion of the frame is between the housing and the slide (Fig. 5b, 6a, 7a).
Regarding claim 12, Sato further discloses wherein :the housing includes: a coupling portion configured to receive a mounting structure of the frame of the firearm, and a lock cavity defined by an inner face of the housing, the lock cavity supporting at least a portion of the lock assembly (clearly seen in Fig. 3; lock cavity housing elements shown in Fig. 2).
Regarding claim 13, Sato further discloses at least one fastener 10, 11 (Fig. 3; or 13 and 14 Fig. 4) to secure the mounting structure of the firearm within the coupling portion, the at least one fastener being at least partially occluded on a condition that the lock assembly is in the engaged state (Fig. 3, fasteners occluded on a condition that the lock assembly is in a lock and unlocked state).
Allowable Subject Matter
Claims 9-11 and 15-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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
Prosecution Insights