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 .
Response to Arguments
Applicant's arguments filed 3/2/26 have been fully considered but they are not persuasive. Initially it is noted that applicant contends that “the claim, as amended, contains elements not present in Marsh”, however no amendment to the claim was presented. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant argument that “The action’s citation of numerous parts does not provide suitable direct guidance. It further does not suitably recite where line numbers, element numbers disclose claimed elements of relevance” is not persuasive. The rejections include clear notice of the grounds and art being applied and literally map out each claimed element to the corresponding element of the applied prior art. Further, additional explanation of case law, motivation and rationale is given above and beyond the minimum requirements. Furthermore, note the following:
• See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) which states “There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement… Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence." Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon…” (emphasis added).
• Just as applicant’s claims are not so complex as to require applicant to provide reference characters in the claim that map each claimed element to applicant's figures, nor are they so complex as to require such mapping to the art. Even though --claim mapping-- can be helpful when making overly complex rejections, with overly complex art, there is no actual requirement for --claim mapping-- in such cases, nor is the current case so overly complex to warrant such --claim mapping-- if there were such a requirement. Even when using overly complex art that sets forth multiple inventions other than that claimed by applicant (not the case here), all that would be required is designating the particular part(s) relied on as nearly as practicable. See 37 CFR 1.104 (c)(2).
• The rejections include clear notice of the grounds of rejection (i.e., the statutory basis and art being applied), thereby meeting the minimum requirements for a prima facie rejection and thereby transferring burden to applicant to produce conflicting evidence, convincing argument and/or amendment to overcome the rejections.
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marsh (US 2,865,256). Marsh discloses a gas-operated firearm comprising: a frame; a barrel (6) defining a bore having a forward muzzle end and an opposed rear end defining a chamber; a bolt assembly (col. 8, line 53) received in the frame and operable to reciprocate between a battery position and a recoil position; the barrel defining a gas aperture (13) communicating with the bore; a gas operating system (15) connected to the frame, having a gas inlet (23), and operably connected (26) to the bolt assembly to move the bolt assembly from the battery position toward the recoil position; the gas inlet being forward of the gas aperture (Figs. 4 and 5); including a gas conduit (16) extending forward from the gas aperture to the gas inlet, the gas conduit intervening in a non-parallel manner between the gas aperture and the gas inlet (Figs. 4 and 5).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHELLE CLEMENT/Primary Examiner, Art Unit 3641
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