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 .
Specification
The use of the terms “Magpul” and “M-LOK,” each which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “holding device” in claims 3, 4, 8-15, and 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4, 5, 12, and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “mounting groove” in claim 4 is used by the claim to mean “mounting grooves” (plural) while the accepted meaning is “mounting groove” (singular) The term is indefinite because the specification does not clearly redefine the term.
It should be appreciated that a single mounting groove cannot form any one of a picatinny rail, an arca rail, a dovetail rail, Warsaw Pact rail, weaver rail, SOPMOD, Magpul M-LOK, UIT rails, freeland rail, since every one of these rails comprises at least two grooves. For example, it is impossible to form a picatinny rail with a single mounting groove. Thus, Applicant seems to be using the term “groove” to means “grooves,” which renders the claim indefinite. Does Applicant intend for other singular terms to cover plurals, as well? For purposes of examination, the examiner will consider the term “mounting groove” to read “mounting grooves,” and it is strongly suggested that Applicant adopt this language. Applicant would need to either set this up in claim 3 or add some language to claim 4. Correction and/or clarification is required.
Claim 5 recites the limitation "the series of lugs on the shaft" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the examiner will consider the limitation “a series of lugs” (claim 5, lines 1-2) as reading “a series of lugs on the shaft.” Correction and/or clarification are required.
Claim 5 recites the limitation "the series of receptacles on the interchangeable head" in line 3. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the examiner will consider the limitation “a series of receptacles” (claim 5, line 2) as reading “a series of receptacles on the interchangeable head.” Correction and/or clarification are required.
Claims 4 and 17 contain the trademark/trade names “Magpul” and “M-LOK.” Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name (Magpul M-LOK) is used to identify/describe a substantially rectangular slot and, accordingly, the identification/description is indefinite.
In reference to claim 12, the limitation reading “an AR-15 style firearm, an AR-10 style firearm, a similar style firearm” is considered indefinite. It is unclear how the terms “style” and “similar” limit the claim. Is any semi-automatic rifle covered by said limitation? If AR pistols are covered, then does limitation “similar style firearm” mean any semi-automatic pistol is covered? For purposes of examination, the examiner suggests that Applicant replace the limitation with “an AR pattern firearm.” Correction and/or clarification are required. The specification should also be amended to include the term “AR pattern firearm,” for the purpose of proper antecedent basis.
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.
Claims 1-4, 8, 11, 16, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dextraze (2020/0158460).
In reference to claim 1, Dextraze discloses a modular reaction rod for gunsmithing, comprising:
a shaft having a distal end and a proximal end (figure 3: shaft 36+40, left end is distal end, right end is proximal end);
a lug protruding from the proximal end of the shaft (figure 3: the lug is shown at the proximal end of the shaft as a tapered/narrow portion); and
an interchangeable head removably mounted on the shaft at the proximal end, the interchangeable head having a tool end configured to engage with a firearm component, a connection end, and a receptacle at the connection end (figure 3: head 34 with receptacle facing element 38; figure 4: head 34 shown with tool end facing to the right and including elements 35),
wherein the receptacle corresponds with the lug on the shaft and configured to accept the lug when the interchangeable head is mounted to the shaft (figures 3 and 4);
wherein the interchangeable head is removably secured to the shaft by an attachment mechanism (paragraph 26 discloses that head 34 can be removable from the shaft portion 36; figures 3 and 4 make clear that some kind of attachment mechanism removably secures head 34 to the shaft portion 36, e.g., a threaded engagement, a frictional engagement, a keyed engagement, a fastener, or some other attachment mechanism is clearly employed, esp. looking at figures 4 and 5).
In reference to claim 3, Dextraze discloses the claimed invention (mounting grooves 51).
In reference to claim 4, Dextraze discloses the claimed invention (figure 9 shows that the grooves 51 in which fingers 60 are disposed collectively form a dovetail rail therebetween; also see figures 8, 12, and 13, which show a dovetail defined between grooves 51).
In reference to claim 8, Dextraze discloses the claimed invention, as set forth above in the reference to claim 1 (the portion of element 40 having grooves 51 is the mounting portion at the distal end of the shaft 36+40).
In reference to claim 11, Dextraze discloses the claimed invention (figures 7-10, mounting grooves 51).
In reference to claim 16, Dextraze discloses the claimed invention, as set forth above in the references to claims 1 and 8 (shaft = rod portion; mounting portion = vise engagement section; first tool head 34 is interchangeable with another; the claim only positively requires the first too head).
In reference to claim 17, Dextraze discloses the claimed invention, as set forth above in the references to claims 3 and 4.
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.
Claims 5, 9, 10, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Dextraze in view of Gyllsdorff (1472798).
In reference to claims 5 and 9, Dextraze discloses the claimed invention, except for wherein the interchangeable head is coupled to the proximal end of the elongated shaft by a connection mechanism having: a plurality of lugs protruding from the proximal end of the elongated shaft; and a plurality of corresponding receptacles on the interchangeable head configured to engage with the plurality of lugs, wherein the plurality of lugs and the plurality of receptacles are arranged in a circular pattern (i.e., a circle can be drawn that connects them). Dextraze fails to provide much detail concerning the removable coupling of the head to the shaft.
Gyllsdorff teaches it is known to removably couple an interchangeable tool head (3+7) to the end of an elongated shaft (1) by a connection mechanism having: a plurality of lugs protruding from the proximal end of the elongated shaft (figures 1 and 3, lugs 2 and 5); a plurality of corresponding receptacles on the interchangeable head configured to engage with the plurality of lugs (the central bore of the head is a receptacle that receives lug 2; elements 4 are receptacle that receive lugs 5), wherein the plurality of lugs and the plurality of receptacles are arranged in a circular pattern (i.e., a circle can be drawn that connects them); and a threaded fastener (10+11), to provide removable securement and evenly distributed torque transmission between the head and shaft.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Dextraze to removably couple the interchangeable head to the proximal end of the elongated shaft by a connection mechanism having: a plurality of lugs protruding from the proximal end of the elongated shaft; a plurality of corresponding receptacles on the interchangeable head configured to engage with the plurality of lugs, wherein the plurality of lugs and the plurality of receptacles are arranged in a circular pattern; and a threaded fastener, with a reasonable expectation of success, to provide removable securement and evenly distributed torque transmission between the head and shaft.
In reference to claims 10 and 19, Dextraze in view of Gyllsdorff makes obvious the claimed invention, as set forth above.
Claims 1, 2, 6-8, 12-16, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Burke (2021/0041195) in view of Parra (2021/0114174).
In reference to claim 1, Burke discloses a modular reaction rod for gunsmithing, comprising:
a shaft (20) having a distal end and a proximal end (figure 5: distal end is left-hand end, proximal is right-hand end);
a lug protruding from the proximal end of the shaft (figure 5: element 62 includes a portion that protrudes from proximal end, and this portion maps to the lug); and
a head (22+50) mounted on the shaft at the proximal end, the head having a tool end configured to engage with a firearm component (the portion of the head external to the shaft), a connection end (the portion of the head internal to the shaft), and a receptacle at the connection end (figure 5, receptacle of element 22 that receives the proximal end of the shaft),
wherein the receptacle corresponds with the lug on the shaft and configured to accept the lug when the head is mounted to the shaft (figure 5);
wherein the head is secured to the shaft by an attachment mechanism (figures 5 and 6, there is shown a threaded fastener extending through element 50 into a proximal bore of element 62).
Thus, Burke discloses the claimed invention, except for wherein the head is interchangeable and removably mounted on the shaft. Based on the drawings, it is clear that rod 62, head portion 22, head portion 50, and the threaded fastener are discrete structures that are assembled together. It appears that the head 22+50 is secured to rod 62 and shaft 20 via the threaded fastener extending through element 50 and into the proximal end of element 62. However, Burke does not explicitly disclose such. That being said, the examiner asserts that a person of ordinary skill in the art would at least find the drawings to suggest such a configuration. The lack of explicit disclosure by Burke would require a person of ordinary skill in the art to make certain design choices in order to carry out the invention.
Regarding the removability of the head, and, thus the interchangeability thereof, there exists a finite number of possibilities—the head can either be removable or not. Burke dislcoses that element 22 is fixed in position relative to the remainder of the shaft (paragraph 22), while element 50 is rotatable relative to said shaft 20. However, element 22 could be fixed as disclosed when the reaction rod is assembled, while still being removable during a disassembly process, e.g., element 22 could be keyed to shaft 20 and held in place via head portion 50 and the threaded fastener (see figure 5). Once again, Burke does not explicitly disclose how the head 22+50 is assembled with the shaft 20, but the drawings provide a reasonable suggestion that the head could be removably assembled with the shaft.
Parra teaches it is known to removably and interchangeably install a head to a reaction rod, in order to adjust the reaction rod for use with either an AR-15 or an AR-10 (paragraph 32: a pair of blocks 37 collectively form the head, one pair is for an AR-15, another pair is for an AR-10; an AR-10 requires a larger head than an AR-15, since the chamber of an AR-10 is larger than that of an AR-15). Thus, considering all of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the reaction rod of Burke such that the head is interchangeable and removably mounted on the shaft, with a reasonable expectation of success, in order to allow the reaction rod to be used with either an AR-15 or an AR-10. It is noted that Burke discloses that the torque transmitter 14 can be omitted (paragraph 23).
In reference to claim 2, Burke in view of Parra makes obvious the claimed invention (Burke: paragraph 22; figures 12 and 13).
In reference to claim 6, Burke in view of Parra makes obvious the claimed invention, as set forth above in the reference to claim 1.
In reference to claim 7, Burke in view of Parra makes obvious the claimed invention, except for wherein the lug is formed from a high strength material, e.g., steel. However, suitable materials for a reaction rod are within the knowledge-base of a person of ordinary skill in the art. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the lug from a high strength material, e.g., steel, with a reasonable expectation of success, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
In reference to claim 8, Burke in view of Parra makes obvious the claimed invention, as set forth above in the reference to claims 1 and 2 (also see figure 2, mounting portion 21).
In reference to claim 12, Burke in view of Parra makes obvious the claimed invention, as set forth above in the reference to claims 1.
In reference to claim 13, Burke in view of Parra makes obvious the claimed invention, except for wherein the shaft is composed of a lightweight material, e.g., aluminum. However, suitable materials for a reaction rod are within the knowledge-base of a person of ordinary skill in the art. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the shaft from a lightweight material, e.g., aluminum, with a reasonable expectation of success, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
In reference to claim 14, Burke in view of Parra makes obvious the claimed invention, except for wherein the head is formed from a high strength material, e.g., steel. However, suitable materials for a reaction rod are within the knowledge-base of a person of ordinary skill in the art. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the head from a high strength material, e.g., steel, with a reasonable expectation of success, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
In reference to claim 15, Burke in view of Parra makes obvious the claimed invention, as set forth above in the reference to claims 1.
In reference to claim 16, Burke in view of Parra makes obvious the claimed invention, as set forth above in the reference to claims 1 and 8 (the mounting portion corresponds to the vise engagement section).
In reference to claim 18, Burke in view of Parra makes obvious the claimed invention, except for wherein the head is made of a material, e.g., aluminum, that will deform before deformation of the rod, e.g., made of steel. However, suitable materials for a reaction rod are within the knowledge-base of a person of ordinary skill in the art. In fact, Parra teaches that the elongated member (shaft) of a reaction rod can be formed from steel or aluminum, whereas the head (blocks) of a reaction rod can be formed from another material (metallic or polymeric; paragraph 59).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the head is made of a material, e.g., aluminum, that will deform before deformation of the rod, e.g., made of steel, with a reasonable expectation of success, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
In reference to claim 20, Burke in view of Parra makes obvious the claimed invention (see figures 10-12; paragraphs 22-24 and 31).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: see attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL J KLEIN whose telephone number is (571)272-8229. The examiner can normally be reached 11:30am-8pm.
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.
GABRIEL J. KLEIN
Examiner
Art Unit 3641
/Gabriel J. Klein/Primary Examiner, Art Unit 3641