Detailed Action
The following is a non-final rejection made in response to claims received on May 21st 2025. 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
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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.
Claims 4-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, and 15 of U.S. Patent No. 12,332,020 (Application No. 18/511,599). Although the claims at issue are not identical, they are not patentably distinct from each other given the fact that the differences between the two claims are semantic in nature. Both claims set forth the same structure that function in the same manner. As stated earlier in this section, this issue may be resolved by either cancelling the claim or filing a terminal disclaimer.
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.
(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.
The claims cited in this section are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 5,521,757 (hereinafter referred to as “OLSON” or “the reference”).
Regarding claim 1, Olson teaches a system, comprising:
at least a first optical sight (12) comprising a magnification ring (via adjustment ring 26); and
at least a first device (10) including:
a base member (28); and
a lever member (50) pivotally attached to the base member (via bolt 40);
wherein the magnification ring includes a mount surface; and wherein the base member includes a mounting surface releasably attachable to the mount surface of the magnification ring (as shown in Fig. 1).
Regarding claim 3, Olson teaches that the mounting surface of the base member includes a non-planar mounting surface and the mount surface of the magnification ring includes one or more conformal contacts for the mounting surface of the base member (the non-planar mounting surface is taught via the circular inner surface of the base member, Fig. 1 shows that the inner surface of the base member conforms to the outer surface of the magnification ring).
Regarding claims 8, 14 and 18, Olson teaches a system, comprising:
at least a first optical sight (12) comprising a magnification ring (26);
at least a first device including:
a base member (via bolt 40); and
a lever member (50) pivotally attached to the base member (lever 50 pivots about the vertical axis of bolt 40 through aperture 60); and
at least a first mounting interface (via ring member 28);
wherein the magnification ring includes a mount surface (via the outer surface of the adjustment ring 26); and
wherein the at least a first mounting interface is releasably attachable to the mount surface of the magnification ring (the two components may be releasably engaged and are not permanently affixed to each other) and wherein the base member is releasably attachable to the at least a first mounting interface (bolt member 40 is attachable / detachable to ring 28, as shown in Fig. 2).
Allowable Subject Matter
Claims 2, 7, 9-13, and 15-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
While the Examiner is available via telephone to help resolve administrative issues regarding a patent application, Applicants are encouraged to consider utilizing the USPTO’s Inventor Assistance Center for general administrative and/or procedural matters at 800-786-9199. Issues relating to patentability and/or prospective amendments may be more efficiently discussed via email correspondence subsequent to the filing of form PTO/SB/439 (“Authorization for Internet Communications in a Patent Application”) authorizing permission for internet communication. The form is available online may be submitted for the record along with any other response to this action. In accordance with current USPTO policy, this form must be submitted on the record prior to internet communications being authorized. A written statement by the Applicant authorizing internet communications on the record is not sufficient. Once authorization is submitted, the Applicant may contact the Examiner at samir.abdosh@uspto.gov. In the event that a telephone conversation would be the easiest means of resolving issues related to the subject matter of a pending patent application, the Examiner may be reached by telephone at 303-297-4454. Interviews will not be granted after issuance of a final rejection unless it is to discuss an amendment that either places the application in condition for allowance or simplifies issues for appeal.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Samir Abdosh/
Primary Examiner, Art Unit 3641
Prosecution Insights