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 .
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 79, 86 and 94 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 6, 9, 16 and 18 of U.S. Patent No. 11,268,791. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 79, 86 and 94 are generic to all that is recited in claims 4, 6, 9, 16 and 18 of US. Patent No. 8,333,137. In other words, claims 4, 6, 9, 16 and 18 of the patent fully encompasses the subject matter of the current application and therefore anticipates claims 79, 86 and 94 of the current application. Since the current claims are anticipated by the patent claims, it is not patentably distinct from the patent claims. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the current claims are anticipated (fully encompassed) by the patent claims, the current claims are not patentably distinct from the patent claims, regardless of any additional subject matter present in the patent claims.
Claims 79, 86 and 94 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,259,225. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are generic to all that is recited in the patent claims. In other words, the patent claims fully encompass the subject matter the application claims and therefore anticipate the application claims. Since the applications claims are anticipated by the patent claims, they are not patentably distinct from the patent claims. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated (fully encompassed) by the patent claims, the application claims are not patentably distinct from the patent claims, regardless of any additional subject matter present in the patent claims.
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.
Claim(s) 79, 80, 86, 93, 94, is/are rejected under 35 U.S.C. 103 as being unpatentable over Burns et al. (US 3,165,809) in view of Emary (US 9,121,677). Burns et al. discloses a bullet intended to be inserted into a bullet opening of a cartridge case, the bullet comprising a core (20) and a jacket (1) at least partially enveloping the core, the bullet having a rearward cylindrical body portion and a forward tapered portion (Fig. 1), wherein the bullet includes a circumferential groove positioned between a rearward bearing surface of the rearward cylindrical body portion and a forward circumferential indentation formed in the forward tapered portion (Fig. 3). Burns does not expressly disclose the rimless cartridge comprising a case, propellant and the circumferential groove having structure to release expansion petals upon over-expansion of the bullet after impact with a hard surface, however Emary does. Emary discloses a rimless cartridge for firing in a handgun, comprising: a case having a forward cylindrical wall connecting to a rearward head, the forward cylindrical wall defining an interior cavity and terminating at a leading edge defining a bullet opening (Fig. 10); propellant in the interior cavity (the examiner takes Official Notice that it would be obvious, if not inherent, for the case to contain a propellant in the interior cavity, in that the bullet would not fire from the auto-loading pistol without a propellant); and a circumferential groove (52) wherein the circumferential groove is configured to release expansion petals upon over-expansion of the bullet after impact with a hard surface (col. 4, lines 59-67 and col. 5, lines 1-15). All the 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 the predictable results of allowing the material to break off cleanly to provide sufficient penetration of the bullet.
80. The rimless cartridge of claim 79, wherein the forward tapered portion includes a plurality of axially oriented skives (8) defining the expansion petals in the jacket.
86. A bullet for a rimless cartridge, comprising: a core; a jacket at least partially enveloping the core, the jacket having a rearward cylindrical body portion and a forward tapered portion; a plurality of longitudinally extending paths of weakness formed in the forward tapered portion, defining expansion petals; a forward circumferential indentation formed in the forward tapered portion; and a circumferential groove positioned between a rearward bearing surface of the rearward cylindrical body portion and the forward circumferential indentation, wherein the circumferential groove is configured to allow controlled separation of the expansion petals upon impact with a hard surface. (see remarks above with regards to claim 79)
93. Burns et al. in view of Emary inherently disclose the method of making a bullet for a rimless cartridge, comprising: forming a malleable core with a jacket; providing a plurality of axially oriented paths of weakness in a forward portion of the jacket; forming a cavity in a forward end of the malleable core; deforming the forward portion of the jacket to form a tapered portion; imparting a forward circumferential indentation into the tapered portion of the jacket blank; and imparting a circumferential groove between a rearward bearing of a rearward cylindrical body portion of the jacket and the forward circumferential indentation, wherein the circumferential groove is configured to allow controlled separation of expansion petals formed by the plurality of axially oriented paths of weakness upon impact with a hard surface. (see remarks above with regards to claim 79)
94. The method of claim 93, wherein the method further comprises at least one of: forming a cup-shaped jacket and forming the malleable core within the cup-shaped jacket (see Burns et al. Fig. 5), and plating the jacket onto the malleable core.
Allowable Subject Matter
Claims 81-85, 87-92, 95-98 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 MICHELLE CLEMENT whose telephone number is (571)272-6884. The examiner can normally be reached M-F 10-6.
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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.
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/MICHELLE CLEMENT/Primary Examiner, Art Unit 3641