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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 1-17 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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the plurality of mounting interfaces and the plurality of mounting interfaces used with a plurality of firearms must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 103
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 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) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Crispin, US Patent Publication No. 2018/0195835.
Regarding claim 12, Crispin discloses an assembly, comprising: an enclosed reflex sight (100); and a mounting interface (300); wherein the mounting interface is configured to secure the enclosed reflex sight to a firearm comprising an upper mounting surface footprint (figures 1-4 for example); wherein when the assembly is secured to an upper mounting surface of a firearm then the assembly is located on top of the firearm forward of a rear end surface of the firearm (figures 1-4); and wherein the selected mounting interface includes a first bottom surface (310) and the enclosed reflex sight includes a second bottom surface (502) forming a planar surface with the first bottom surface (figures 1 and 4); however, Crispin does not specifically disclose the mounting interface being selected from a plurality of mounting interfaces. Nonetheless, in as much as the applicant shows a plurality of interfaces, the invention of Crispin includes a mounting interface which has been chosen from the plurality of mounting interfaces that are known in the art to fit the firearm selected.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Crispin to have a plurality of interchangeable interfaces or a different interface with a reasonable expectation of success depending on the firearm and firearm mounting surface selected. Additionally, firearm sizes and calibers vary greatly and changing the size of a mounting feature to allow the sight to be used on a different firearm would be obvious to one of skill in the art in order to allow for use of the sight with a variety of firearms without the need to provide an entirely different sight structure.
Claim(s) 12-13 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bindon, US Patent No. 5,653,034.
Regarding claim 12, Bindon discloses an assembly, comprising: an enclosed reflex sight (10); and a mounting interface (16); wherein the mounting interface is configured to secure the enclosed reflex sight to a firearm comprising an upper mounting surface footprint (figure 1 for example); wherein when the assembly is secured to an upper mounting surface of a firearm then the assembly is located on top of the firearm forward of a rear end surface of the firearm (figure 1); and wherein the selected mounting interface includes a first bottom surface (bottom surface of 16)) and the enclosed reflex sight includes a second bottom surface (best shown in figure 4) forming a planar surface with the first bottom surface (figure 4 shows the two surfaces being in the same plane); however, Bindon does not specifically disclose the mounting interface being selected from a plurality of mounting interfaces. Nonetheless, in as much as the applicant shows a plurality of interfaces, the invention of Bindon includes a mounting interface which has been chosen from the plurality of mounting interfaces that are known in the art to fit the firearm selected.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Bindon to have a plurality of interchangeable interfaces or a different interface with a reasonable expectation of success depending on the firearm and firearm mounting surface selected. Additionally, firearm sizes and calibers vary greatly and changing the size of a mounting feature to allow the sight to be used on a different firearm would be obvious to one of skill in the art in order to allow for use of the sight with a variety of firearms without the need to provide an entirely different sight structure.
Regarding claim 13, Bindon further discloses the second bottom surface of the enclosed reflex sight is located behind the selected mounting interface (figure 4 shows at least a portion of the bottom surface of the reflex sight being behind the interface).
Regarding claim 15, Bindon further discloses a system, comprising: an enclosed reflex sight (10); and a mounting interface (16); wherein the mounting interface is configured to secure the enclosed reflex sight to a firearm comprising an upper mounting surface footprint (figure 1); wherein when an assembly of the enclosed reflex sight and the mounting interface is secured to an upper mounting surface of a first firearm of the plurality of firearms then the assembly is located on top of the first firearm forward of a rear end surface of the first firearm (figure 1); wherein the enclosed reflex sight includes a rearward bottom portion located behind the selected mounting interface (shown in figure 4); and wherein the assembly includes a first maximum height (H) and the enclosed reflex sight includes a second maximum height (H) the same as the first maximum height (figure 4 shows the entire assembly having a maximum height that is the same as the reflex sight housing max height); however, Bindon does not specifically disclose the mounting interface being selected from a plurality of mounting interfaces. Nonetheless, in as much as the applicant shows a plurality of interfaces, the invention of Bindon includes a mounting interface which has been chosen from the plurality of mounting interfaces that are known in the art to fit the firearm selected.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Bindon to have a plurality of interchangeable interfaces or a different interface with a reasonable expectation of success depending on the firearm and firearm mounting surface selected. Additionally, firearm sizes and calibers vary greatly and changing the size of a mounting feature to allow the sight to be used on a different firearm would be obvious to one of skill in the art in order to allow for use of the sight with a variety of firearms without the need to provide an entirely different sight structure.
Regarding claim 16, Bindon further discloses the selected mounting interface includes a first bottom surface and the rearward bottom portion includes a second bottom surface forming a planar surface with the first bottom surface (figure 4 shows the bottom surfaces of the mounting interface and the reflex sight being in the same plane).
Regarding claim 17, Bindon further discloses the second maximum height is the same or substantially similar as the first maximum height within +5% of the first maximum height (H is the same for the maximum height of the assembly and the reflex sight as shown in figure 4).
Allowable Subject Matter
Claims 1-11 and 14 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