DETAILED ACTION
Claim Objections
Claims 14-18 are objected to because of the following informalities: the claims improperly depend from claim 1 and, thus, are duplicates of claims 2-6, which is impermissible. Such will be further treated on the merits as though dependent claim 13. Appropriate correction is required.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,276,471 (“the ‘471 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims amount to mere rewording of the patented claims. For example, as pertains to instant claim 1, patent claim 1 includes all relevant limitations except for the joint of the last two lines, which can be found recited in patent claims 4-5. Instant claims 2-3 is met by patent claims 2-3. Instant claim 4 is met by patent claim 5. Though the patent fails to recite the arm being telescopic, such is sufficiently well-known in the art as to be an obvious variant of any arm used for training (aiming) and firing a weapon.
Regarding method claims 7-12, in view of the structural features covered by the ‘471 patent, the method of using the device would be inherent, since it is the normal and logical manner in which the device is used. Alternatively, in view of the structural features covered by the ‘471 patent, the method of using the device would have been obvious, since it is the normal and logical manner in which the device would be used.
The remaining claims do not appear to include any other structural features not addressed above. Should this be in error, kindly indicate which such features have been overlooked.
Claims 6, 11, and 18 are alternatively rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of the ‘471 patent in view of US 4,296,566 to Campos (cited by Applicant) or US 2016/0282084 to Hollis.
As noted above, the patent fails to claim the arm being telescopic.
Campos teaches a training and firing aid, e.g., Fig. 2, including an elongate arm, inter alia, 40, 60, that is telescopic (see, e.g., Fig. 3, col. 1, ll. 30-55) in the same field of endeavor for the purpose of accommodating differing builds of users, col. 3, ll. 42-46.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ‘471 patent as taught by Campos in order to accommodate differing builds of users with a reasonable expectation of success because Campos further discloses various alternative ways for using the device, col. 3, ll. 46, through col. 4, ll. 7. Further rationale: All 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 predictable results to a skilled artisan at the time the invention was made.
Hollis similarly teaches a training and firing aid 10, e.g., Fig. 1, including an arm 16 that is telescopic, ¶ [0023], for the purpose of providing an adjustable length.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ‘471 patent as taught by Hollis in order to provide an adjustable length with a reasonable expectation of success because Hollis further discloses adjustment bores 40 and means for locking in a particular length, id. and ¶ [0027]. The same further rationale provided above would apply equally well here.
Conclusion
Any inquiry concerning this communication should be directed to Bret Hayes at telephone number (571) 272 – 6902, fax number (571) 273-6902, or email address bret.hayes@uspto.gov, which is preferred, especially for requesting interviews, general questions, etc. Note, however, that return correspondence cannot be made in the event that information subject to the confidentiality requirement as set forth in 35 U.S.C. § 122 has been included. See MPEP §§ 502.03 and 713.01, I, regarding email communications. The examiner can normally be reached Mondays through Fridays from 5:30 AM to 1:30 PM, Eastern.
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If attempts to contact the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers, can be reached at (571) 272 – 6874.
/Bret Hayes/
Primary Examiner, Art Unit 3641
10-Mar-26