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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the blocking element. See further explanation, below, but note that nowhere does Applicant disclose such an element. In fact, no instance of the term “element” appears in the written description whatever.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Re: at least claims 1 and 12, as noted above, there is no disclosure of “element,” expressly, blocking or otherwise. Thus, the claimed recitation, “blocking element,” lacks antecedent basis. Therefore, the term is ambiguous because an interpretation of what is intended to be disclosed is required, which interpretation may be incorrect. As best understood, the blocking element refers to the disclosed, and previously claimed in parent applications, lever 136, e.g., Figs. 6-7. Presumably, this linguistic alteration was made in an attempt to broaden the claims over the claims in the parent applications. Regardless, such is how the term will be further treated on the merits. Should this be in error, kindly indicate where support for this particular limitation can be found in the written description including citation(s) thereto.
Any unspecified claim is rejected as being dependent upon a rejected base claim.
The claims will be further treated on the merits as best understood only.
Claim Rejections - 35 USC § 102
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.
Claims 1, 4, 7-8, 10-13, 16, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2,476,622 to Pelo.
Re: claim 1, Pelo discloses the claimed invention including an auto-loading firearm, Title (see, e.g., Fig. 1), comprising: a receiver 4, e.g., Figs. 2-5; a striker (hammer, clearly shown in Fig. 1 as an operable part of the trigger mechanism) coupled to the receiver (via pins, shown) and movable between a cocked position (not shown but an inherent result of breech block 3 moving rearwardly as shown in, e.g., Fig. 5) and a fire position (clearly shown); a breechblock 3 configured to reciprocate along the receiver between a recoil position, e.g., Fig. 5, and a battery position, e.g., Fig. 1; and a blocking element 5 movable between a blocking position, e.g., Figs. 2-3, and a non-blocking position, e.g., Figs. 4-5, wherein the blocking element is biased (via, inter alia, breech block 3, recoil spring 17, and frame 4) to the blocking position and is configured to move to the non-blocking position when the breechblock is within a predefined distance from the battery position (Fig. 4 captures the moment just before blocking element 5 is free of breech block 3, e.g., col. 2, ll. 30, through col. 3, ll. 19, which is clearly shown in Fig. 5).
Re: claim 4, Pelo further discloses further comprising an actuator 9 between the blocking element and the receiver, wherein the actuator moves the blocking element to the non-blocking position when the breechblock is within the predefined distance from the battery position, col. 2, ll. 45, through col. 3, ll. 19.
Re: claim 7, Pelo further discloses wherein the receiver defines a cam surface 11 arranged to engage the actuator when the breechblock is within the predefined distance from the battery position, thereby causing the blocking element to occupy the non-blocking position (clearly shown/disclosed).
Re: claim 8, Pelo further discloses comprising a spring 17 arranged to bias the blocking element to the blocking position. See above.
Re: claim 10, Pelo fairly discloses wherein the firearm is a semiautomatic handgun, col. 1, ll. 1-2. Pelo discloses “a rifle embodying features of this invention,” col. 2, ll. 16-17, and “While I have shown and described the more or less specific embodiment of my invention, it is to be understood that this has been done for the purpose of illustration only, and the scope of my invention is not to be limited thereby, but is to be determined by the appended claim,” col. 4, ll. 11-16. Notably, the claim fails to require a rifle. Thus, all manner of “automatic fire-arm” of the claim demonstrate that Pelo fully contemplated handguns to be included but chose a rifle merely as an example of the invention.
Re: claim 11, Pelo fairly discloses wherein the semiautomatic handgun is configured for recoil operation, evidenced by the citations above. See also “recoil barrel 1,” col. 2, ll. 32.
Re: claim 12, mutatis mutandis, Pelo discloses a hammer (see claim 1, above).
Re: claim 13, Pelo further discloses comprising: a firing pin movable along the central axis of the breechblock from a rearward position to a forward position, the firing pin (not particularly called out but clearly shown in, e.g., Figs. 1-2; see also col. 4, ll. 5-10, wherein non-essential elements are disclosed as not being described in detail) having a proximal end (rightmost end) that extends through the proximal face of the breechblock when the firing pin is in the forward position (after being struck by the hammer as in well-known in the art); and a firing pin spring (clearly shown surround the firing pin proximate the rightmost end, which is also well-known in the art) between the breechblock and the firing pin (clearly shown, e.g., Fig. 2), the firing pin spring biasing the firing pin towards the rearward position (shown, but also as is well-known in the art, i.e., the firing pin is biased away from the primer of a cartridge until such time as a trigger releases a hammer/striker to impact the firing pin).
Re: claims 16 and 19-20, see relevant claims, above.
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.
Claims 2-3, 9, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Pelo.
Re: claims 2-3 and 14-15, Pelo discloses the claimed invention as applied above except for the predefined distance being 2 mm or less, or 1 mm or less. It has been held that limitations relating to the size of an element were not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Furthermore, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). See MPEP § 2144.04(IV)(A). Here, there is no evidence that different dimensions would alter the performance of the claimed invention. Thus, such are unpatentable over the art.
Re: claim 9, Pelo discloses the claimed invention except for the spring being a torsion spring. It would have been obvious to one having ordinary skill in the art at the time the invention was made to substitute a torsion spring for that disclosed, since the equivalence of springs for their use in the firearm art and the selection of any known equivalents to that spring disclosed would be within the level of ordinary skill in the art.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,313,364 (“the ‘364 patent”) and over claims 1-19 of U.S. Patent No. 11,808,540 (“the ‘540 patent”) or (“the prior patents” when referenced together). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims, while broader in scope, merely reword the patented claims. Note that because the instant claims fail to exclude other structure, inclusion of more structure in the patented claims is immaterial because such fairly set forth and thus cover the instant claims. For example, though neither patent discloses an “auto-loading” firearm, expressly, claim 14 of the ‘364 patent recites such in line 1, and the term was not rejected as ambiguous or not enabled because the disclosure clearly discusses semiautomatic handguns and rifles, col. 1, ll. 21-38, and “a self-loading firearm,” col. 9, ll. 18-19. Because the ‘364 patent is merely a continuation of the ‘540 patent, i.e., nothing new was supposed to be introduced into the specification or the claims, and because the ‘540 patent similarly discloses semiautomatic handguns and rifles and a self-loading firearm, to include claim 9 reciting such a firearm, there can be no patentable distinction regarding “auto-loading” and the prior patents.
Similarly, both sets of patent claims recite a receiver, a striker/hammer, cocked and fire positions, a breechblock, recoil and battery positions, a lever (the recited “blocking element”), blocking and non-blocking positions, a bias (spring) to the blocking position, and a predefined distance of not more than 1.0 mm. The remainder of the instant claim limitations appear to be fairly recited and thus covered by the prior patents. Evidence to the contrary is welcome.
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.
The Central FAX Number is 571-273-8300.
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
21-Mar-26