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
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,339,098. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to substantially the same structure and the claims of the instant application contain substantially the same language but the dependencies are rearranged. Additionally, some limitations in the instant application are not encompassed by the patented claims; however, the limitations would have been obvious to one of ordinary skill in the art at the time of the invention as shown by the prior art below for example.
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 Gaber et al., hereafter Gaber, US Patent Publication No. 2010/0077646.
Regarding claim 1, Gaber discloses an assembly, comprising: an enclosed reflex sight (20 is broadly, yet reasonably, enclosed by 30); and a mounting interface (38); wherein the enclosed reflex sight includes a rearward bottom portion located behind the mounting interface that houses an adjustment assembly (shown in figure 2 and annotated below, the reflex sight has a rearward bottom portion which extends behind 38 and houses an adjustment assembly 45) of the enclosed reflex sight and wherein the rearward bottom portion defines a lowermost surface of the enclosed reflex sight (annotated below); wherein the enclosed reflex sight includes an upper bottom surface (annotated below) forward of the rearward bottom portion of the enclosed reflex sight, the upper bottom surface comprising an abutment surface (annotated below) for the mounting interface; and wherein when the assembly is secured to an upper mounting surface of a firearm then the lowermost surface of the rearward bottom portion of the enclosed reflex sight is closer to the upper mounting surface of the firearm than the upper bottom surface of the enclosed reflex sight (the assembly is secured to an upper mounting surface of a firearm via the scope 24 as detailed in [0024]. Therefore, the assembly is broadly, yet reasonably mounted to the upper surface of the firearm and when the assembly is mounted, the lowermost surface is closer to the firearm/firearm mounting surface than the upper bottom surface. As annotated below the upper bottom surface sits above the lowermost surface and therefore the lowermost surface is closer to the firearm when mounted).
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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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gaber.
Regarding claim 6, Gaber further discloses the assembly includes a first maximum height and wherein the enclosed reflex sight includes a second maximum height substantially similar as the first maximum height (as shown in figure 2 and in the annotated figure below, the maximum height of the entire assembly is “substantially similar” to the maximum height of the enclosed reflex sight, which includes the adjustment mechanism); however, Gaber does not disclose the height being within 5% of the first maximum height. Nonetheless, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to adjust or define the two maximum heights to be within 5% of one another, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
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Allowable Subject Matter
Claims 2-5 and 7-12 are only rejected under the Double Patenting Rejection and appear to be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and approval of a Terminal Disclaimer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is provided on form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DERRICK R MORGAN whose telephone number is (571)272-6352. The examiner can normally be reached M-F 9:00-6:00.
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 on 5712726874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DERRICK R MORGAN/Primary Examiner, Art Unit 3641