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 .
Information Disclosure Statement
The IDS documents submitted 4/16/2025 and 12/9/2025 are acknowledged and have been considered.
Drawings
The drawings submitted 3/31/2025 are acknowledged and acceptable.
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 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,287,178. Although the claims at issue are not identical, they are not patentably distinct from each other because the entirety of claims 1 and 2 of the instant application include equivalent subject matter and terminology to the conflicting claim 4.
Claims 3-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,287,178 in view of Li et al. (U.S. Patent 8,769,859). The conflicting US Patent teaches all limitations of claims 3 and 4 except a spring-loaded ball detent to releasably retain the sight support member in the first position or that the spring-loaded ball detent releasably retains the support member in the second position. However, Li et al (henceforth referred to as Li) teaches a sight support device that moves from a first to a second position and includes a spring-loaded ball detent to releasably retain the support in each of the positions. It would have been obvious to one of ordinary skill in the art at the time of Applicant’s invention to provide a ball detent device in/on the instant invention as taught by Li, to allow for repeated movement from one position to the other. Additionally, the conflicting claims do not teach that the base comprises a pair of spaced pivot bosses that project upwardly therefrom and the pivot portion of the sight support member is configured to fit between the pair of spaced pivot bosses and the pivot portion of the sight support member is rotatably coupled to the pivot bosses of the base by a pivot pin or that the ball detent is carried in the pivot portion and received by a recess in a “detent plate” of the interior side of the bosses.
However, Li also shows a similar structure with two bosses and a pivot pin allowing a sight support member to pivot between the bosses and it would have been obvious to one of ordinary skill in the art at the time of Applicant’s invention to facilitate the claimed structure as taught by Li in/on the instant invention to allow for pivoting in and out of use position.
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.
Claim(s) 9, 10, 13 and 17 is/are rejected under 35 U.S.C. 102a1 as being anticipated by LaRue et al. (U.S. Patent 7,908,782).
In regards to claim 9, LaRue et al (henceforth referred to as LaRue) disclose pivot mount for an optical sighting device, the pivot mount comprising:
a base configured to releasably engage a mounting interface of a firearm. Figures 1 and 2 of LaRue illustrates a base that releasably engages a mounting portion of a weapon; and
a sight support member rotatably coupled to the base. Item 96 of LaRue is a sight supporting member and is coupled to the attachment base (see figure 2);
wherein:
the sight support member includes a pivot portion rotatably connected to the
base. As shown in figure 2, an attachment portion of the support functions as a pivot;
the pivot portion is configured to rotate about a horizontal axis. The pivot axis runs through the pivot bosses (items 64 and 66) and is horizontal relative to the firearm; and
the sight support member is configured to move an attached optical sighting
device between a first position, in which the attached optical sighting device is in a use
position, and a second position, in which the attached optical sighting device is vertically offset from the first position, both the first and the second positions being laterally offset to one side of the horizontal axis about which the pivot portion rotates. The figures of LaRue show that the sight support member is designed to hold a sighting device and move it from a use position (figures 1 and 2), to a second position shown in figure 4 and also noting that both positions have the sighting device laterally offset from the horizontal axis.
In regards to claim 10, LaRue discloses that the sight support member further comprises a sight attachment device configured to secure the attached optical sighting device to the sight support member. The device of LaRue includes a ring section (item 112) to hold the sight device.
In regards to claim 13, LaRue discloses that the base comprises a pair of spaced pivot bosses that project upwardly therefrom (items 64 and 66), and the pivot portion of the sight support member is configured to fit between the pair of spaced pivot bosses (see figures 1-4), wherein the pivot portion of the sight support member is rotatably coupled to the pivot bosses of the base by a pivot pin. Note the pivot shaft (item 76).
In regards to claim 17, LaRue disclose pivot mount for an optical sighting device, the pivot mount comprising:
a base configured to releasably engage a mounting interface of a firearm. Figures 1 and 2 of LaRue illustrates a base that releasably engages a mounting portion of a weapon; and
a sight support member rotatably coupled to the base. LaRue teaches a pivoting ring section to hold a sighting device;
wherein:
the sight support member is configured to move an attached optical sighting
device between a first position, in which the attached optical sighting device is in a use
position that is aligned with a sighting axis of the firearm, and a second position, in
which the attached optical sighting device is vertically offset from the sighting axis of the firearm and is positioned over the mounting interface. LaRue teaches that the sight supporting ring structure pivots from a use position aligned with the sighting axis of a firearm and to another position where the sighting device would still be at least partially over the mounting interface and vertically offset from the sighting axis. Note that when the ring mount begins to pivot from the use position as shown in figure 3, it immediately reaches a position vertically above the sighting axis, but still over the mounting interface.
Claim(s) 17-19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by First Gear TACOMHQ TARAC Double Zeros.
In regards to claim 17, First Gear TACOMHQ TARAC Double Zeros (henceforth referred to as TARAC) disclose pivot mount for an optical sighting device. As shown in TARAC pg. 1 photograph, an optical device is pivot mounted in front of a scope, the pivot mount comprising:
a base configured to releasably engage a mounting interface of a firearm. Note the base that holds the TARAC optical device; and
a sight support member rotatably coupled to the base. The TARAC is supported in a metal frame;
wherein:
the sight support member is configured to move an attached optical sighting
device between a first position, in which the attached optical sighting device is in a use
position that is aligned with a sighting axis of the firearm, and a second position, in
which the attached optical sighting device is vertically offset from the sighting axis of the firearm and is positioned over the mounting interface. TARAC teaches flipping the TARAC to a use position aligned with the sighting axis (in front of the scope) and to a second non-use position rotated vertically down as shown in the 2nd photographs from pg. 1 of TARAC.
In regards to claim 18, TARAC discloses that both the first and second positions are located substantially on a vertical plane that is substantially co-aligned with the
sighting axis of the firearm. The two positions remain along the same sighting axis plane.
In regards to claim 19, TARAC discloses that the sight support member further comprises a sight attachment device configured to secure the attached optical sighting device to the sight support member. As shown in the photograph of TARAC, the optical sighting sighting component is attached to the sight support member.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over LaRue et al. (U.S. Patent 7,908,782) in view of Li et al. (U.S. Patent 8,769,859).
In regards to claims 11-16, LaRue fails to disclose a spring-loaded ball detent configured to releasably retain the sight support member in the first position, or that the spring-loaded ball detent is configured to releasably retain the sight support member in the second position. Additionally, LaRue also does not disclose that the spring-loaded ball detent is carried in the pivot portion of the sight support member and is releasably received by a recess located on an interior side of one of the pair of spaced pivot bosses and the recess configured to releasably receive the spring-loaded ball detent is formed in a detent plate. However, Li teaches a sight support device that moves from a first to a second position and includes a spring-loaded ball detent to releasably retain the support in each of the positions and includes a ball detent and recess as claimed. It would have been obvious to one of ordinary skill in the art at the time of Applicant’s invention to provide a ball detent device in/on the instant invention as taught by Li, to allow for repeated movement from one position to the other.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over First Gear TACOMHQ TARAC Double Zeros in view of Li et al. (U.S. Patent 8,769,859).
In regards to claim 20, TARAC fails to disclose a spring-loaded ball detent
configured to releasably retain the sight support member in the first position. However, Li teaches a sight support device that moves from a first to a second position and includes a spring-loaded ball detent to releasably retain the support in each of the positions. It would have been obvious to one of ordinary skill in the art at the time of Applicant’s invention to provide a ball detent device in/on the TARAC invention as taught by Li, to allow for repeated movement from one position to the other.
Allowable Subject Matter
Claims 1-8 would be allowed pending an approved Terminal Disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: With respect to claim 1, the closest prior art fails to teach or make obvious, including all the limitations of claim 1, that the second position is laterally offset to one side of the horizontal axis and vertically offset below the first position.
Summary/Conclusion
Claims 1-20 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN P LEE whose telephone number is (571)272-8968. The examiner can normally be reached between the hours of 8:30am and 5:00pm on Monday through Friday.
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).
/BENJAMIN P LEE/Primary Examiner, Art Unit 3641