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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,345,490. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to substantially the same structure. The previously patented claims are directed to a chamber formed to a final dimension and the instant application merely defines some additional parts of the chamber which are clearly known in the art as articulated below.
Claim Objections
Claim 23 is objected to because of the following informalities:
Claim 23 states “the dissimilar material incompatible” which appears to be a typographical error which should read “the dissimilar material is incompatible.”
Appropriate correction is required.
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) 21-29, 31-36 and 38-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hartley et al., hereafter Hartley, US Patent No. 2,847,786 in view of Leitner-Wise, US Patent Publication No. 2005/0016414 in further view of Dittrich et al, hereafter Dittrich, H82, in further view of May, US Patent No. 4,685,236.
Regarding claim 21, Hartley discloses a firearm barrel (24), comprising: a barrel (30) extending longitudinally between a proximal end portion and a distal end portion, wherein the barrel defines a chamber (shown in figures 2 and 3 for example) extending through the proximal end portion and configured to receive an ammunition cartridge, the chamber defining a freebore (40) section and a bore section (42); and a dissimilar material (32) surrounding an outer circumference of the barrel over a length of the barrel, wherein the dissimilar material is formed from a material that is different from the material forming the barrel (3:65-4:2 discloses fibers of filaments forming 32 whereas 3:44-64 disclose the liner made of metal. Therefore the materials are dissimilar); however, Hartley does not specifically disclose the barrel chamber having a leade section. Nonetheless, Leitner-Wise teaches a barrel with a specific chamber configuration with a freebore 26, barrel lead 28, and bore 29 as shown in figure 2 for example.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify or define the internal structure of Hartley to have a lead structure similar to that as taught by Leitner-Wise with a reasonable expectation of success since Leitner-Wise specifically teaches that the freebore to leade configuration is well known in the art and it is further known in the art that leade sections are useable to control the rate at which combustion gasses can escape the chamber and into the barrel. Utilizing a leade section would be obvious to provide a barrel configuration which allows for tailoring of combustion gas flow to the barrel and operating mechanisms.
Further regarding claim 21, Hartley does not specifically detail a material modification process after machining and the dimensions of the chamber being formed to a final depth because a material modification process is not discussed. Nonetheless, Dittrich teaches a barrel structure 10 which undergoes heat treatment after the final dimensions of the barrel are achieved in 2:19-22 and 3:14-17.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify or define Hartley to have a heat treat step following the chamber structure being formed to a final dimension or shape similar to that as taught by Dittrich with a reasonable expectation of success since Dittrich provides a clear teaching of heat treating once final dimensions of a barrel are achieved and one of ordinary skill in the art would have seen it as obvious to try with a reasonable expectation of providing predictable results such as affecting the stress concentrations in the barrel (stress relief as taught by Dittrich), changing the machinability of the barrel, more reliable and accurate barrels, etc.
Further regarding claim 1, Hartley clearly discloses the barrel is overwrapped with a composite wrap 32 and one of ordinary skill in the art would recognize that a composite wrap should not be subject to temperatures of a heat treatment step and it would have been obvious to perform the heat treatment after machining, as taught above, and before wrapping in order to prevent damage to the composite; however, Hartley does not specifically disclose the order of wrapping after machining and heat treating. Nonetheless, May provides a teaching of a composite wrapped barrel and clearly teaches that heat treatment of a barrel is performed prior to winding in 3:44-50.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify or define when the composite of Hartley is wrapped around the barrel to be after heat treatment (taught by Dittrich) similar to that taught by May with a reasonable expectation of success in order to prevent damage or fracture between the bond of the fibers or the fibers themselves and that heat-treatment of the composite barrel after forming the composite jacket is not contemplated. Therefore, May provides a known benefit, preventing damage to the composite, and a clear teaching that heat treatment is well known to be performed prior to wrapping of any composite around a barrel.
Regarding claim 22, Hartley as modified by Leitner-Wise, Dittrich and May further discloses a portion of an outer surface of the barrel defines a reduced profile over a length of the barrel having an outer dimension that is less than an outer dimension of the remaining portion of the barrel, wherein the reduced profile is formed prior to performing the material modification process on the barrel (shown in figures 2 and 3, of Hartley, the barrel has a reduced diameter portion and, as modified by Dittrich, the final dimensions are of the barrel are best achieved prior to heat treatment).
Regarding claim 23, Hartley as modified by Leitner-Wise, Dittrich and May further discloses the dissimilar material is incompatible with the material modification process performed on the barrel (May provides a known benefit, preventing damage to the composite, and a clear teaching that heat treatment is well known to be performed prior to wrapping of any composite around a barrel. One of ordinary skill in the art would recognize that the temperatures required to heat treat a barrel would be too damaging to a composite and therefore incompatible)
Regarding claim 24, Hartley as modified by Leitner-Wise, Dittrich and May further discloses the dissimilar material is a composite matrix wrapping (Hartley discloses fiber and filament wrapping and May further teaches a composite)
Regarding claim 25, Hartley as modified by Leitner-Wise, Dittrich and May further discloses the composite matrix wrapping is bonded to an outer surface of the barrel (3:65-40 of Hartley for example)
Regarding claim 26, Hartley as modified by Leitner-Wise, Dittrich and May further discloses the barrel includes a receiver interface adjacent the proximal end portion, wherein the receiver interface is formed on the barrel after the composite matrix wrapping is applied to the barrel (Hartley, 38 is a receiver interface. The recitation of the receiver interface being formed after the composite wrap is applied is a matter of design choice as the method step of forming the receiver interface before or after the composite wrapping does not structurally change the apparatus being claimed.)
Regarding claim 27, Hartley as modified by Leitner-Wise, Dittrich and May further discloses an entire geometry of the chamber is formed to a final depth prior to performing the material modification process on the barrel, the entire geometry of the chamber including a chamber body section, a shoulder section, a neck section, the freebore section, the leade section, the bore section, and a muzzle section (Hartley as modified by Leitner-Wise and Dittrich above discloses and/or teaches forming the final dimensions, shown in Hartley and with a lead as modified by Leitner-Wise, prior to heat treatment)
Regarding claim 28, Hartley as modified by Leitner-Wise, Dittrich and May further discloses the chamber includes a muzzle, wherein at least a portion of the muzzle adjacent to the distal end portion of the barrel is formed to a final dimension before performing the material modification process on the barrel (Hartley, figure 2 shows the muzzle end of the barrel which is the bore part of the chamber, as best understood by the examiner, and Leitner-Wise and Dittrich teach forming the final dimensions prior to heat treat as articulated above)
Regarding claim 29, the term “over-deep” is not commonly known in the art. When read in view of the specification, the term is intended to mean the chamber is formed to allow headspace without additional post-processing of the chamber if material of the exterior profile is to be removed. For the purposes of examination, the term “over-deep” is given the broadest reasonable interpretation and will be interpreted as a chamber which is formed to a final depth and does not require additional processing following the machining of the exterior of the barrel/receiver interface. Additionally, as best understood by the examiner, the bore section refers to the barrel and it is not clear how an “over-deep” barrel or bore is to be formed.
Hartley as modified by Leitner-Wise, Dittrich and May further discloses the final depth of each of the freebore section, the leade section, and the bore section of the chamber is over-deep to enable external machining operations to be performed, after the material modification process is performed, without removing further material from each of the freebore section, the leade section, and the bore section (Dittrich clearly teaches obtaining final dimensions of the barrel before heat treatment or stress relief and the final dimensions of the barrel are obtained prior to heat treatment and Hartley clearly shows a chamber of the barrel. Therefore, the chamber has been formed to a final depth and no additional machining occurs to the chamber after material modification, heat treatment, or wrapping of composite)
Regarding claims 31-36 and 38-40, the method steps are rendered obvious since such would have been an obvious manner of making the barrel disclosed/taught by Hartley as modified by Leitner-Wise, Dittrich and May.
Claim(s) 30 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hartley as modified by Leitner-Wise, Dittrich and May in view of Mittnedorf et al., hereafter Mittendorf, US Patent Publication No. 2010/0221448.
Regarding claims 30 and 37, Hartley as modified above discloses the claimed invention but the combination does not specifically disclose the material modification process includes performing a material modification process selected from the group consisting of a hot isostatic pressing process, a gas nitriding process, and applying an oxide coating to the barrel. Nonetheless, Mittendorf [0032] teaches exemplary thermal treatments such as heat treatment, hot isostatic pressing or sintering as known thermal treatments.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Hartley to utilize a process like hot isostatic pressing similar to that as taught by Mittendorf with a reasonable expectation of success in order to form the desired alloy with a substantially uniform microstructure and composition like that taught in [0032] which would yield predictable results such as more predictable deformation of the barrel under thermal load and thus increase reliability and/or accuracy.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is provided on form PTO-892.
The applicant is invited to call the examiner for additional information on how particular cited references would be interpreted or applied to the claimed invention or potential amendments.
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/DERRICK R MORGAN/Primary Examiner, Art Unit 3641
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