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 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.
Claim 5 is 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 5 recites the limitation "the first lock" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the second lock" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the respective second position" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim.
As best understood by the examiner, claim 5 is intended to depend from claim 5 and not claim 1; however, for the purposes of examination, the claims are treated as currently written and claim 5 is addressed as depending from claim 1.
Any unspecified claim is rejected as being dependent on a rejected base claim.
In view of the indefinite issues the claims will be examined as best understood by the examiner.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,292,256. 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 with a rearrangement of the claims. For example, the allowed claim 13 is the equivalent of claims 1 and 4 in the current application with minor differences.
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) 1, 3 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fisher, US Patent No. 1,437,797.
Regarding claim 1, Fisher discloses an adjustable firearm balance weight system comprising: a balance weight (16) configured to secure to a part of a firearm in at least two alternative positions relative to the part of the firearm (1:86-2:13); and a lock system (17) configured to hold the balance weight in each of the at least two alternative positions relative to the part of the firearm, wherein the lock system is configured to allow the balance weight to move between the at least two alternative positions (1:86-2:13).
Regarding claim 3, Fisher further discloses the part of the firearm comprises a rifle forend (figure 1 and 4), a rifle chassis or a rifle handguard.
Regarding claim 6, Fisher further discloses the balance weight is configured to secure externally to the part of the firearm (figures 4 and 5).
Claim(s) 1, 3 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Geissele, US Patent Publication No. 2016/0209162.
Regarding claim 1, Geissele discloses an adjustable firearm balance weight system comprising: a balance weight (114, 116) configured to secure to a part of a firearm in at least two alternative positions relative to the part of the firearm ([0054] discloses the weights may be shortened and the screw connections to the handguard permit fastening the weight in a variety of longitudinal locations); and a lock system (fasteners disclosed in [0052] with apertures 248) configured to hold the balance weight in each of the at least two alternative positions relative to the part of the firearm, wherein the lock system is configured to allow the balance weight to move between the at least two alternative positions (the fasteners and apertures are placed uniformly along the longitudinal axis and allow the weight to be moved between at least two positions and probably more depending on the length of the weight).
Regarding claim 3, Geisselle further discloses the part of the firearm comprises a rifle forend, a rifle chassis or a rifle handguard (shown in figures 3 and 4 for example).
Regarding claim 7, Geisselle further discloses the part of the firearm comprises an accessory mount (handguard) secured to a remainder of the firearm (figure 1).
Claim(s) 1-3 and 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roberts et al., hereafter Roberts, US Patent Publication No. 2017/0138693.
Regarding claim 1, Roberts discloses an adjustable firearm balance weight system comprising: a balance weight (110 is broadly, yet reasonably, construed as a weight because of the inherent weight of the device) configured to secure to a part of a firearm in at least two alternative positions relative to the part of the firearm ([0036-0038]); and a lock system (lock as in figure 13 for example including 106, 126, 128, 130, 132, 138 inter alia) configured to hold the balance weight in each of the at least two alternative positions relative to the part of the firearm, wherein the lock system is configured to allow the balance weight to move between the at least two alternative positions ([0036-0038]).
Regarding claims 2 and 8, Roberts further discloses the lock system is configured to be operated by hand and without tools ([0031]).
Regarding claim 3, Roberts further discloses the part of the firearm comprises a rifle forend, a rifle chassis or a rifle handguard (200 as in figures 16-19).
Regarding claim 6, Roberts further discloses the balance weight is configured to secure externally to the part of the firearm (figures 16-19).
Regarding claim 7, Roberts further discloses the part of the firearm comprises an accessory mount (handguard 200) secured to a remainder of the firearm.
Claim(s) 1-3 and 5-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheng, US Patent No. 9,772,161.
Regarding claim 1, Cheng discloses an adjustable firearm balance weight system comprising: a balance weight (1 is broadly, yet reasonably, construed as a weight because of the inherent weight of the device) configured to secure to a part of a firearm in at least two alternative positions relative to the part of the firearm (2:47-4:18); and a lock system (3, 4, 5, 6, 7, 8 inter alia) configured to hold the balance weight in each of the at least two alternative positions relative to the part of the firearm, wherein the lock system is configured to allow the balance weight to move between the at least two alternative positions (2:47-4:18).
Regarding claims 2 and 8) Cheng further discloses the lock system is configured to be operated by hand and without tools (4:22-25).
Regarding claim 3, Cheng further discloses the part of the firearm comprises a rifle forend, a rifle chassis or a rifle handguard (shown in figure 12 for example).
Regarding claim 5, Cheng further discloses a first lock and second lock are movable towards each other (2:47-3:14 discloses squeezing the two elements 3 toward each other to operate the locking mechanism) to move the first lock to the respective second position and the second lock to the respective second position (2:47-3:14 discloses moving the locking mechanism between a first and second position based on actuating elements 3).
Regarding claim 6, Cheng further discloses the balance weight is configured to secure externally to the part of the firearm (handguard 9).
Regarding claim 7, Cheng further discloses the part of the firearm comprises an accessory mount (handguard 9) secured to a remainder of the firearm (rifle in abstract).
8 An adjustable firearm balance weight system comprising: a balance weight configured to secure to a part of a firearm in at least one position relative to the part of the firearm by hand and without tools; and a lock system configured to hold the balance weight in each of the at least one positions relative to the part of the firearm, wherein the lock system is configured to allow the balance weight to move removably from the at least one position.
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.
Claim(s) 2 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fisher in view of Roberts.
Regarding claims 2 and 8, Fisher discloses the claimed invention except for the device being attachable or moveable by hand or without the use of tools. Nonetheless, Roberts teaches a device which uses a threaded component for locking a device in place and specifically teaches the device is actuatable with knob 106 on the threaded member by hand and/or without the use of tools.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Fisher to utilize a threaded member with a knob/thumb screw similar to that as taught by Roberts with a reasonable expectation of success in order to facilitate moving the weight of Fisher in a quicker and more efficient manner and allow for changing the balance of the firearm in the field without the need to carry tools.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is provided on form PTO-892.
While the Examiner is available via telephone to resolve administrative issues regarding a patent application, 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 at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf and may be submitted for the record along with any other response to this action. The Examiner may be reached by telephone at 571-272-6352.
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.
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/DERRICK R MORGAN/ Primary Examiner, Art Unit 3641