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 information disclosure statement filed 8/5/25 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. (Also See 37 C.F.R. 1.98(d)(1)(2)).
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 1-20 of U.S. Patent No. 12,326,313. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are generic to all that is recited in the patent claims. In other words, the claims of the patent fully encompass the subject matter of the current application and therefore anticipates the claims of the current application. Since the current claims are anticipated by the patent claims, it is not patentably distinct from the patent claims. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the current application claims are anticipated (fully encompassed) by the patent claims, the current application claims are not patentably distinct from the patent claims, regardless of any additional subject matter present in the patent claims.
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) 21, 23, 26, 28, 31-34, 36 and 39 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith (US 3,287,842). Smith discloses a lever action firearm, comprising: a magazine release (34), comprising: an arm configured to engage with a magazine (@35) on a first side of the magazine; and an actuator (end at 34) operatively coupled to the arm and configured to transition the arm from a first position to a second position when actuated, wherein: in the first position the arm is engaged with the magazine to hold the magazine, and in the second position the arm is biased away from the magazine to release the magazine; and a magazine receiver sized to accept a detachable magazine. (col. 3, lines 5-15)
23. The lever action firearm of claim 22, wherein the detachable magazine comprises a swept-back configuration such that, when loaded in the magazine receiver, a surface of a rear-facing side of the detachable magazine comprises an angle greater than 90 degrees with respect to a plane extending through an axis of a bore of the lever action firearm. (Fig. 3)
26. The lever action firearm of claim 21, wherein the actuator is configured to be actuated by pivoting about a first axis. (Fig. 3)
28. The lever action firearm of claim 21, further comprising an actuator spring configured to bias the actuator towards an unactuated position such that the arm is in the first position when the actuator is in the unactuated position. (col. 3, lines 5-15)
31. A magazine release for a firearm, comprising: an arm (34) configured to engage with a magazine (@35) on a first side of the magazine; and an actuator (bottom of arm 34) operatively coupled to the arm and configured to transition the arm from a first position to a second position when actuated, wherein: in the first position the arm is engaged with the magazine to hold the magazine, and in the second position the arm is biased away from the magazine to release the magazine. (col. 3, lines 5-15)
32. The magazine release of claim 31, wherein the first side is: a left side of the firearm, or a right side of the firearm. (Fig. 3)
33. The magazine release of claim 31, wherein the actuator is configured to be actuated by a force applied: in a direction from a butt of the firearm to a muzzle of the firearm; or in a direction from the muzzle of the firearm to the butt of the firearm. (Fig. 3)
34. The magazine release of claim 31, wherein the actuator is configured to be actuated by pivoting about a first axis. (Fig. 3)
36. The magazine release of claim 31, further comprising an actuator spring configured to bias the actuator towards an unactuated position such that the arm is in the first position when the actuator is in the unactuated position. (col. 3, lines 5-15)
39. Smith inherently discloses a method of manufacturing a firearm, comprising: assembling a magazine release (34) for the firearm, the magazine release comprising: an arm configured to engage with a magazine on a first side of the magazine (@35); and an actuator operatively coupled to the arm (the bottom of arm 34) and configured to transition the arm from a first position to a second position when actuated, wherein: in the first position the arm is engaged with the magazine to hold the magazine, and in the second position the arm is biased away from the magazine to release the magazine. (col. 3, lines 5-15)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE CLEMENT whose telephone number is (571)272-6884. The examiner can normally be reached M-F 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 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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/MICHELLE CLEMENT/Primary Examiner, Art Unit 3641