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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly” connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a top end of the sleeve nut 3075 is not above a plane defined by a top of a back end of the body of the firearm optic 3070, does not reasonably provide enablement for “a top end of the sleeve nut is not above a plane defined by a top of the back end of the body the body including external threading” as claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The applicant discloses:
Par. 00270: “FIG. 30E illustrates a top view of the slide assembly 3000 of FIG. 30A. FIG. 30F illustrates a section view of the slide assembly 3000 of FIG. 30E taken along section line EE. This view shows that a top end of the sleeve nut 3075 is not above a plane defined by a top of a back end of the body of the firearm optic 3070 (in this embodiment, the top end is 0.02 inches below the plane). Accordingly, the sleeve nut 3075 is not in the user's field of view when the user looks through the firearm optic 3070.” and
Par. 00287:“In other embodiments, a threaded post having dimensions similar to the threaded length of the stud 3464 may be integrally formed on a bracket similar to bracket 3451 or any bracket herein (e.g., integrally formed above a solid section of the bracket, rather than passing through a through opening).”
While be enabling for a top end of the sleeve nut 3075 is not above a plane defined by a top of a back end of the body of the firearm optic 3070, the claims do not provide enablement for a top end of the sleeve nut is not above a plane defined by a top of the back end of the body the body including external threading. As best understood, the body in claim 16 is referring to a bracket as applicant disclosed in Par. 00287. The body where a top end of the sleeve nut is not above a plane defined by a top of the back end of the body is understood as the body of the optic as applicant disclosed in Par. 00270.
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 19-20 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 19 recites the limitation "the kit parts" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 1 does not claim kit parts. Applicant could amend claim 19 to be dependent from claim 11 to overcome the rejection. For this office action claim 19 is seen as being dependent from claim 11.
Claim 20 recites the limitation "the kit parts" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 1 does not claim kit parts. Applicant could amend claim 20 to be dependent from claim 11 to overcome the rejection. For this office action claim 19 is seen as being dependent from claim 11.
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 1-13, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Holly (US 2021/0318099) in view of Soppelsa et al (US 2005/0047857) [hereinafter Soppelsa].
Regarding claim 1, Holly discloses a method of assembling a firearm optic assembly (Title; Abstract), the method comprising:
placing a firearm optic sight 10 onto a surface 404, including placing one or more openings 40 of the firearm optic sight onto one or more lengths 456 associated with the surface (Fig. 20);
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wherein the one or more lengths include one or more exposed externally threaded section, respectively (Fig. 27; Par. 0133; “ In some embodiments, an external surface of shaft 554 may be threaded, and side surface 546 may be provided with complementary threads such that mounting post 550 can be screwed into socket 534 using one or more turns”);
Holly discloses wherein the one or more lengths are the mounting posts 456 with a internally threaded passage 478, mounting the firearm optic 10 to the mounting posts and attaching one or more external threaded parts 42 to the firearm optic assembly, wherein said attaching is performed following said placing the firearm optic sight onto the surface (Fig. 20, 25A; “threaded fastener 42 can be inserted into through-passage 40 and engaged with mounting post 456 via threaded passage 478, thereby securely coupling optical sight 10 to optical sight adapter 400”).
Holly fails to disclose attaching one or more internally threaded rotatably driven parts to the firearm optic assembly, said attaching comprising threading the one or more internally threaded rotatably driven parts onto external threading of the one or more exposed externally threaded sections respectively; and tightening the one or more internally rotatably driven threaded parts to secure the firearm optic sight on the surface; wherein said attaching is performed following said placing the firearm optic sight onto the surface.
Soppelsa teaches that it is known in the art of releasably fastening two components, which is pertinent to the particular problem, to substitute a mounting screw 3 with a threaded stud 12 that is anchored in a fixed base component and a nut 13 (Fig. 2b and 8).
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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 having ordinary skill in the art at the time the invention was filed to have modified Holly such that the one or more lengths was a threaded stud that is anchored in a fix base and the threaded fastener was a nut and attaching comprising threading the nut onto the threaded stud tightening the one or nuts to secure the firearm optic sight on the surface, in view of Soppelsa, because the substitution of one known mounting device for another 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 securing a firearm optic assembly to a firearm.
Regarding claim 2, Holly further discloses wherein the more or more lengths 456 are integrally formed with a body 400 (Fig. 20 and 27; Par. 0133; “ In some embodiments, an external surface of shaft 554 may be threaded, and side surface 546 may be provided with complementary threads such that mounting post 550 can be screwed into socket 534 using one or more turns”), wherein the surface 404 comprises a top surface of the body 400 (Fig. 19).
Applicant should note that it has been held that the term “integral” is sufficiently broad to embrace constructions united by such means as fastening and welding. In re Hotte, 177 USPQ 326, 328 (CCPA 1973).
Regarding claim 3, Holly further discloses wherein the body comprises a reciprocating part (Fig. 19).
Applicant should note that a reciprocating part is generally understood as a mechanical component that moves repeatedly back-and-forth or up-and-down (reciprocating motion) in a linear path. The body 400 is integral with the slide 104 of the firearm and reciprocates when the weapon is fired.
Regarding claim 4, Holly further discloses wherein the body comprises a non-removably attaching one or more externally threaded parts to an adapter, wherein the one or more externally threaded parts comprise the one or more lengths, respectively (Par. 0104: “mounting post 332 can be removably engaged with socket 334, wherein mounting post 332 provides a friction fit with socket 334”).
Regarding claim 5, Holly further discloses wherein non-removably attaching comprises press fitting(Par. 0104: “mounting post 332 can be removably engaged with socket 334, wherein mounting post 332 provides a friction fit with socket 334”).
Applicant should know that friction fit is also known as press fit, or interference fit.
Regarding claim 6, Holly, further discloses coupling one or more externally threaded parts 456 to an adapter 400 or another firearm part, wherein the one or more externally threaded parts comprise the one or more lengths, respectively (Fig. 19-20).
Regarding claim 7, Holly discloses wherein the coupling includes inserting one or more portions of the one or more externally threaded parts, respectively, in one or more pockets, one or more slots, or one or more other openings 458 (Fig. 19-20), respectively; wherein the adapter or the other firearm part includes the one or more pockets, the one or more slots, or the one or more other opening 458 (Fig. 19 and 20).
Regarding claim 8, Holly further discloses wherein an opening of the one or more other openings comprises a threaded opening, and the method further comprises: threading an externally threaded part of the one or more externally threaded parts into the threaded opening prior to said threading (Fig.20; 27; Par. 0133; “ In some embodiments, an external surface of shaft 554 may be threaded, and side surface 546 may be provided with complementary threads such that mounting post 550 can be screwed into socket 534 using one or more turns”; see also Soppelsa Fig. 8);.
Regarding claim 9, the combination of Holly and Soppelsa, as applied to claim 1, further teaches wherein the surface 402 (Holly; Fig. 20) comprises a top surface of an adapter 400 (Holly: Fig. 20), and wherein a thickness from a bottom surface of the adapter to the top surface of the adapter is less than a thread length of internal threading of an internally threaded rotatably driven part of the one or more internally threaded rotatably driven parts (Soppelsa: Fig. 8; to allow threaded stud 12 to be above mounting surface 5 to attach optic sight (as disclosed by Holly) with nut 13).
Regarding claim 10, Holly discloses a method, comprising: providing one or more lengths 456 associated with a surface 404, wherein the surface is configured for placing a firearm optic sight 10 thereon, in which one or more openings of the firearm optic sight are placeable onto the one or more lengths (Fig. 16a, 16b, 19, and 20), respectively;
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wherein providing the one or more lengths includes: forming an adapter 400 or an adapter assembly, a top surface 404 of the adapter or the adapter assembly comprising the surface, wherein the adapter includes the one or more lengths 456 integrally formed therewith or the adapter assembly includes the one or more lengths removably attached to the adapter 400 (Fig. 16a, 16b, 19, and 20),
forming one or more pockets, one or more slots, or one or more other openings 458 in a body 400, the one or more pockets, the one or more slots, or the one or more other openings 458 (Fig. 19-20) configured to receive one or more portions of one or more externally threaded parts 456 comprising the one or more lengths (Fig. 20, 27; Par. 0133; “ In some embodiments, an external surface of shaft 554 may be threaded, and side surface 546 may be provided with complementary threads such that mounting post 550 can be screwed into socket 534 using one or more turns”) respectively; and
Holly fails to disclose attaching one or more internally threaded rotatably driven parts to the firearm optic assembly, said attaching comprising threading the one or more internally threaded rotatably driven parts onto external threading of the one or more exposed externally threaded sections respectively; and tightening the one or more internally rotatably driven threaded parts to secure the firearm optic sight on the surface; wherein said attaching is performed following said placing the firearm optic sight onto the surface.
Soppelsa teaches that it is known in the art of releasably fastening two components, which is pertinent to the particular problem, to substitute a mounting screw 3 with a threaded stud 12 that is anchored in a fixed base component and a nut 13 (Fig. 2b and 8).
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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 having ordinary skill in the art at the time the invention was filed to have modified Holly such that the one or more lengths was a threaded stud that is anchored in a fix base and the threaded fastener was a nut and attaching comprising threading the nut onto the threaded stud tightening the one or nuts to secure the firearm optic sight on the surface, in view of Soppelsa, because the substitution of one known mounting device for another 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 securing a firearm optic assembly to a firearm.
Regarding claim 11, Holly discloses parts usable with an optic sight 10, the kit of parts comprising: a body 400 or an externally threaded part 456, the body or the externally threaded part including external threading (Fig. 20, 27; Par. 0133; “ In some embodiments, an external surface of shaft 554 may be threaded, and side surface 546 may be provided with complementary threads such that mounting post 550 can be screwed into socket 534 using one or more turns”);
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and the external threading is: 1) separate from the body, and the parts further includes the externally threaded part 456, and the externally threaded part includes a portion having the external threading (Fig. 20 and 27; Par. 0133) and an additional portion 472 retainable, in a fixed rotational position, in a pocket, a slot, or another opening 458 of the body (Fig. 25a, 25b; , Par. 0122: “ shape of flange 472 can be complementary to the shape of recess 460. That is, flange 472 can have the same geometric shape as recess 460 and be sized to provide a friction fit within recess 460”)
2) part of the body 534 (Par. 0133).
Holly fails to disclose an internally threaded part to mount on the external threading to secure the optic sight to a surface, the internally threaded part including internal threading to mate with the external threading; wherein the internally threaded part comprises a rotatably driven part,
Soppelsa teaches that it is known in the art of releasably fastening two components, which is pertinent to the particular problem, to substitute a mounting screw 3 with a threaded stud 12 that is anchored in a fixed base component and a nut 13 (Fig. 2b and 8).
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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 having ordinary skill in the art at the time the invention was filed to have modified Holly such that the one or more lengths was a threaded stud that is anchored in a fix base and the threaded fastener was a nut and attaching comprising threading the nut onto the threaded stud tightening the one or nuts to secure the firearm optic sight on the surface, in view of Soppelsa, because the substitution of one known mounting system for another 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 securing a firearm optic assembly to a firearm.
Regarding the “kit of parts” limitation, in view of the combination of Holly and Soppelsa above, it would have been obvious to one having ordinary skill in the art at the time the invention was made to break the components down and assemble them into kit form.
Regarding claim 12, Holly further discloses wherein the body comprises an adapter 400, and the externally threading is integrally formed with the adapter (Fig. 20, 27; Par. 0133; “ In some embodiments, an external surface of shaft 554 may be threaded, and side surface 546 may be provided with complementary threads such that mounting post 550 can be screwed into socket 534 using one or more turns”).
Applicant should note that it has been held that the term “integral” is sufficiently broad to embrace constructions united by such means as fastening and welding. In re Hotte, 177 USPQ 326, 328 (CCPA 1973).
Regarding claim 13, the combination of Holly and Soppelsa, as applied to claim 11, further teaches wherein the externally threaded part comprises a threaded stud 12 (Soppelsa Fig. 8).
Regarding claim 18, Holly further discloses wherein the body comprises a reciprocating part (Fig. 19).
Applicant should note that a reciprocating part is generally understood as a mechanical component that moves repeatedly back-and-forth or up-and-down (reciprocating motion) in a linear path. The body 400 is integral with the slide 104 of the firearm and reciprocates when the weapon is fired.
Regarding claim 19, Holly further discloses wherein the optic assembly includes the optic sight and the kit of parts (Fig. 19 and 20; see above rejection of claim 11).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Holly and Soppelsa as applied to claims 1-13, 18 and 19 above, and further in view of Simon (US 11,313,646).
Regarding claim 14, the combination of Holly and Soppelsa fails to teach wherein the externally threaded part comprises a bolt.
Simon teaches it is known in the art to attach components with a bolt 62a, 62b (Fig. 2; “A rear sight 56 is included having a bottom side 58 having a pair of threaded mounting holes 60A, 60B thereon. Finally, a pair of threaded mounting fasteners 62A, 62B is included, each having a head 64A, 64B”).
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 having ordinary skill in the art at the time the invention was filed to have modified the combination of Holly and Soppelsa such that the externally threaded part comprises a bolt, in view of Simon, because the substitution of one fastener for another 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 securing a firearm optic assembly to a firearm.
Regarding claim 15, the combination of Holly and Soppelsa fails wherein the externally threaded part comprises a head, and the kit of parts further comprises a seal to contact the head when at least a portion of the head is located in the pocket, the slot, or the other opening.
Simon further teaches wherein the combination of Holly and Soppelsa fails (as seen above; see rejection of claim 14) and a seal 76 to contact the head when at least a portion of the head is located in the pocket, the slot, or the other opening (Fig. 2 and 7; “Star washers 76, as shown, may be used to aid in fastening”).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the combination of Holly and Soppelsa such that there was a seal 76 to contact the head when at least a portion of the head is located in the pocket, the slot, or the other opening, in view of Simon, to obtain the desired result of aiding in fastening.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Holly and Soppelsa as applied to claims 1-13, 18 and 19 above, and further in view of Simon Curry (US 2020/0326157)
Regarding claim 17, the combination of Holly and Soppelsa further fails to teach wherein a length of the externally threaded part includes a non-threaded sheer resistant section between a threaded section defining the external threading and a head of the externally threaded part, wherein a width of the non-threaded sheer resistant section is not less than an outside diameter of the external threading.
Curry teaches that it is known in the art to provide a fastener 76 to include a non-threaded sheer resistant section between a threaded section defining the external threading and a head of the externally threaded part, wherein a width of the non-threaded sheer resistant section is not less than an outside diameter of the external threading (Fig. 5).
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 having ordinary skill in the art at the time the invention was filed to have modified the combination of Holly and Soppelsa such that the externally threaded part comprises a bolt include a non-threaded sheer resistant section between a threaded section defining the external threading and a head of the externally threaded part, wherein a width of the non-threaded sheer resistant section is not less than an outside diameter of the external threading, in view of Curry, because the substitution of one fastener for another 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 securing a firearm optic assembly to a firearm.
Alternatively; It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the combination of Holly and Soppelsa such that the externally threaded part comprises a bolt include a non-threaded sheer resistant section between a threaded section defining the external threading and a head of the externally threaded part, wherein a width of the non-threaded sheer resistant section is not less than an outside diameter of the external threading, in view of Curry, to enhance resistance to shear forces and fatigue, and provide to a more durable and reliable structural connection.
Claims 11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Paige (US 6,327,806) in view of Soppelsa et al (US 2005/0047857) [hereinafter Soppelsa].
Regarding claim 11, Paige discloses parts usable with an optic sight 31, the kit of parts comprising: a body 11 or an externally threaded part 7, or the externally threaded part including external threading (Fig. 5 and 9; screw 7 has external threading); and the external threading is:
1) separate from the body, and the kit of parts further includes the externally threaded part 7, and the externally threaded part includes a portion having the external threading (Fig. 5 and 9; screw 7 has external threading); and an additional portion retainable, in a fixed rotational position, in a pocket, a slot, or another opening of the body (head of screw; Fig. 7 and 9), or
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Paige fails to discloses an internally threaded part to mount on the external threading to secure the optic sight to a surface, the internally threaded part including internal threading to mate with the external threading; wherein the internally threaded part comprises a rotatably driven part.
Soppelsa teaches that it is known in the art of releasably fastening two components, which is pertinent to the particular problem, to substitute a mounting screw 3 with a threaded stud 12 that is anchored in a fixed base component and a nut 13 (Fig. 2b and 8).
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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 having ordinary skill in the art at the time the invention was filed to have modified Paige such that screw was a threaded stud that is anchored in a fix base and the threaded fastener was a nut and attaching comprising threading the nut onto the threaded stud tightening the one or nuts to secure the firearm optic sight on the surface, in view of Soppelsa, because the substitution of one known mounting device for another 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 securing a firearm optic assembly to a firearm.
Regarding the “kit of parts” limitation, in view of the combination of Paige and Soppelsa above, it would have been obvious to one having ordinary skill in the art at the time the invention was made to break the components down and assemble them into kit form.
Regarding claim 20, the combination of Paige and Soppelsa, as applied to claim 11, further teaches a firearm or firearm assembly (Paige; Fig. 1) including, the kit of parts of claim 11, (see above rejection of claim 11) the optic sight mounted directly on the firearm or firearm assembly (as shown in Fig. 1), without an intervening adapter, using the externally threaded part and the internally threaded rotatably driven part (as taught by Soppelsa; see rejection of claim 11 above).
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.
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/JOSHUA E FREEMAN/Primary Examiner, Art Unit 3641