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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-10 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-10 of prior U.S. Patent No. 11,846,491. This is a statutory double patenting rejection.
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 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-20 of U.S. Patent No. U.S. Patent No. 11,846,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 11-20 anticipate claims 11-20 of the instant application.
Claims 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-19 of U.S. Patent No. U.S. Patent No. 11,846,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 11-20 anticipate claims 11-20 of the instant application.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rosen et al (US 2021/0293510) [hereinafter Rosen].
Regarding claim 11, Rosen discloses a firearm sight 200, comprising: a housing having a rearward end, a forward end, and bottom side, and a top side (clearly seen in Fig. 4 and 5); and
an optical sighting element comprising a lens supported by the housing (Par. 0040: “An optical element (not shown), such as a lens, may be contained in the front side 210”);
wherein the housing has a portion that extends at least partially around a perimeter of the lens (Fig. 4 and 5); and wherein said portion has a rearward-facing side and a forward-facing side, the rearward- facing having serrations (Par. 0043 and 0044: “while in the embodiment shown the texture 215 is provided only on the front side 210 of the sighting device 200, and more specifically on the entirety of the front side 210, it will be appreciated that in further embodiments, only a portion or multiple portions of the front side 210 may include a texture and/or one or more additional sides (e.g., rear side, left and/or right side 208, and top side 209) may include a texture on all or one or more portions”).
Applicant should note that the texture 215 can be reasonably and broadly construed as serrations and cover the same structure disclosed by the applicant (Par. 0043: “In further embodiments, the texture 215 may have a different geometry or configuration, including, but not limited to, dimples, lines, grooves, circles, squares or any feature or combination of these and other features that would provide a tactile sensation to a user and help keep the sighting device 200 in position.”)
Regarding claim 12, Rosen further discloses wherein the serrations are positioned around at least half of the perimeter of the lens (Par. 0044).
Regarding claim 13, Rosen further discloses wherein the rearward-facing side is positioned rearwardly of the lens (Fig. 4 and 5; Par. 0040).
Regarding claim 14, Rosen further discloses wherein the rearward-facing side is oblique to the bottom side of the housing (Fig. 5).
Regarding claim 15, Rosen further discloses, wherein serrations positioned above the lens are positioned forward of serrations positioned laterally outward of the lens (Fig. 4 and 5, Par. 0044).
Regarding claim 16-19, Rosen further discloses wherein the serrations comprise elongate peaks having lengths, widths, and heights (Par. 0043).
Regarding claim 20, Rosen further discloses wherein the forward-facing side of the portion is free of serrations (Fig. 4-5; Par. 0044: “it will be appreciated that in further embodiments, only a portion or multiple portions of the front side 210 may include a texture and/or one or more additional sides (e.g., rear side, left and/or right side 208, and top side 209) may include a texture on all or one or more portions”; see provisional 62/992,586: Par. 0012: “In one embodiment, the disclosure relates to a sighting device comprising one or more textured surfaces” clearly indicates only one side is needed to be textured; Par. 0017-0018: In one embodiment, the sighting device having one or more textured surfaces will help keep the sighting device in the original position in which it was placed and help to ensure the sighting device does not slip off. In one embodiment, the sighting device has at least a textured front surface (embodiment 1). In still another embodiment, the sighting device has one or more textured side surfaces (embodiment 2; only sides). In still another embodiment, the sighing device has a textured front surface and one or more textured side surface (embodiment 3, front and sides). In still another embodiment, the sighting device has a back surface that is textured (embodiment 4; only back surface is textured).” The applicant clearly disclose an embodiment where only the back surface is textured.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA E FREEMAN whose telephone number is (303)297-4269. The examiner can normally be reached 9AM - 5PM MST M-F.
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/JOSHUA E FREEMAN/Primary Examiner, Art Unit 3641