Detailed Action
The following is a non-final rejection made in response to claims received on February 28th 2025. 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 § 102
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.
The claims cited in this section are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pub. No. 2016/0102943 (hereinafter referred to as “WILCOX INDUSTRIES”, “WILCOX” or simply as “the reference”).
Regarding claims 1 and 9, Wilcox teaches a firearm (see para. [0081]) comprising a viewing optic (see Fig. 1) comprising: a housing (110) having a base containing a front side, a rear side, a left side, and a right side and defining an upper surface (480); a first control positioned on the left side of the base (276; see Fig. 17); and a second control (508, 512) positioned on the right side of the base (see Fig. 3).
Regarding claims 7, 8, 10, and 11, Wilcox teaches the viewing optic is an open mini red dot sight (the optic may be a dot sight; see para. [0031]).
Regarding claims 5 and 15, Wilcox teaches that the left side and right side of the base each includes a recess and the first control and second control are contained within a respective recess (both the left and right sides of the housing include openings in which the adjustment controls are nested).
Claim Rejections - 35 USC § 103
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.
The claims cited in this section are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2016/0102943 (hereinafter referred to as “WILCOX INDUSTRIES”, “WILCOX” or simply as “the reference”).
Regarding claims 2, 3, 4, 13 and 14, Wilcox teaches first and second controls, but only teaches that the second is a brightness control. The reference also teaches that the second control has two adjustment means (508, 512), but only teaches a single adjustment means for the first control. The reference therefore fails to anticipate the claims by failing to teach that the first control has two adjustment means and that the first control also affects brightness. Lastly, the Wilcox reference fails to teach that both the first and second control comprise at least two depressible buttons.
The differences between these claims and the teachings of the prior art are considered to be obvious to a person of ordinary skill. The second control includes two buttons for adjusting the brightness intensity of the laser light. To meet the claims requiring that both controls have at least two buttons and/or that both controls affect brightness, a person of ordinary skill would only need to duplicate the controls so that they exist on both sides of the housing, thereby making brightness adjustment possible on either side of the body.
MPEP 2144.04 cites both “Duplication of Parts” as an exemplary common practice “which the court has held normally require[s] only ordinary skill in the art and hence are considered routine expedients”. The Examiner, in congruence with proper examination procedure, therefore considers the differences between the claimed subject matter and the teachings of Wilcox to be within the scope of what is obvious to a person of ordinary skill in the art.
The claims cited in this section are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2016/0102943 (hereinafter referred to as “WILCOX”) further in view of US Pub. No. 2020/0278177 (hereinafter referred to as “GRACE”).
Regarding claims 6 and 16, Wilcox teaches a viewing optic having a first and second control, but fails to teach that each control comprises a portion of an elastomeric material.
While Wilcox fails to teach this feature, the use of elastomeric material for optic controls is an already well-known practice.
An example of this can be found in the Grace reference. Grace teaches a firearm optic that includes at least one button (26) made of “an elastomeric or flexible plastic material” (see para. [0036]).
It would have been obvious to a person of ordinary skill in the art to modify the controls of Wilcox such that they were constructed of elastomeric material, similar to the controls applied in Grace, with the motivation of using a reliable and flexible material that can be easily depressed by an operator during use.
The claims cited in this section are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2016/0102943 (hereinafter referred to as “WILCOX”) further in view of US Pub. No. 2013/0219767 (hereinafter referred to as “PETERSON”).
Regarding claim 12, Wilcox teaches a viewing optic applicable to firearms, but does not explicitly teach that such firearms necessarily include handguns. For this reason, the Wilcox reference fails to anticipate the full claim.
However, Wilcox does teach that the viewing optic is mountable to a dovetail accessory rail mount (see Fig. 6).
The prior art establishes that handguns are commonly equipped with dovetail accessory rails and that optic devices may be mounted thereon. Peterson, for example, illustrates this in Fig. 9.
It would have been obvious to a person of ordinary skill in the art to simply apply the viewing optic of Wilcox onto a handgun, in a manner similar to that demonstrated by Peterson, under the motivation of coupling a viewing accessory to a handgun (as stated in para. [0022] of Peterson).
Conclusion
While the Examiner is available via telephone to help resolve administrative issues regarding a patent application, Applicants are encouraged to consider utilizing the USPTO’s Inventor Assistance Center for general administrative and/or procedural matters at 800-786-9199. Issues relating to patentability and/or prospective amendments may be more efficiently discussed via email correspondence subsequent to the filing of form PTO/SB/439 (“Authorization for Internet Communications in a Patent Application”) authorizing permission for internet communication. The form is available online may be submitted for the record along with any other response to this action. In accordance with current USPTO policy, this form must be submitted on the record prior to internet communications being authorized. A written statement by the Applicant authorizing internet communications on the record is not sufficient. Once authorization is submitted, the Applicant may contact the Examiner at samir.abdosh@uspto.gov. In the event that a telephone conversation would be the easiest means of resolving issues related to the subject matter of a pending patent application, the Examiner may be reached by telephone at 303-297-4454. Interviews will not be granted after issuance of a final rejection unless it is to discuss an amendment that either places the application in condition for allowance or simplifies issues for appeal.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Samir Abdosh/
Primary Examiner, Art Unit 3641