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 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.
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.
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 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 KB32 Tactical (see attached Notice of References Cited, Reference U; hereinafter “KB32”), further in view of Parra (2021/0114174).
In reference to claim 1, Burke discloses a modular reaction rod (firearm mount) 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 to secure the firearm in a stable position (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. However, the drawings show that rod 62, head portion 22, head portion 50, and the threaded fastener are discrete structures, collectively assembled. Further, it appears 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 (figures 5, 12, and 13). Yet, Burke does not explicitly disclose such. Nevertheless, the examiner asserts that a person of ordinary skill in the art would at least find the drawings to suggest such a configuration. Further, the lack of explicit disclosure by Burke would require a person of ordinary skill in the art to make certain design choices 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 be either removable or not. Burke discloses 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, such disclosure does not preclude removability of the head during a disassembly process, so long as element 22 is fixed in position when the reaction rod is assembled, e.g., element 22 could be keyed to shaft 20 and held in place via head portion 50 and the threaded fastener (see figure 13). 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.
Further, Burke teaches that the illustrated reaction rod (firearm mount) is configured for use with an AR-15 rifle, but other configurations for other types of firearms can be used (paragraph 19). Further, KB32 and Parra both teach that an AR-10 is another type of firearm, very similar to an AR-15, since both firearms are AR pattern firearms. The difference between them lies in the fact that an AR-10 is larger than an AR-15 (the AR-10 is typically chambered in .308 Winchester, whereas the AR-15 is typically chambered in .223 Remington or 5.56 NATO).
KB32 specifically teaches that the bolt head of an AR-10 is larger than that of an AR-15 (see provided Reference U; also see video from 2:35-3:00). Further, it is within the knowledge base of a person having ordinary skill in the art that the bolt head of an AR pattern firearm is sized to lockingly engage with barrel lugs of a barrel extension during operation (also see Burke, paragraph 20). Thus, the barrel extension of an AR-10 clearly has a larger internal geometry relative to that of an AR-15 to accommodate the larger bolt head.
Further, Burke teaches that the head (22+50) of the reaction rod is sized to lockingly engage with the barrel lugs of a barrel extension to secure a firearm in a stable position (paragraphs 22, 31, and 32). Thus, the reaction rod of Burke, configured for use with an AR-10, would need to have a larger head than the reaction rod configured for use with an AR-15. It is noted that the head is the portion of the reaction rod that engages the firearm and secures it in a stable position.
Parra teaches it is known to removably and interchangeably install parts of a reaction rod, in order to adjust the reaction rod for use with either an AR-15 or an AR-10 (paragraph 32: blocks 37/38 engage a bolt carrier well, one pair is sized for an AR-15, another pair is sized for an AR-10; an AR-10 has a larger carrier well relative to an AR-15). It is noted that the reaction rod of Parra is engaged with a firearm in a different manner than that of Burke. However, the teaching of Parra is applicable to Burke, since Burke contemplates configuring the reaction rod for different firearms and Parra teaches that differently sized, interchangeable, firearm engaging parts of a reaction rod can allow for such configuration. Looking back at the previous two paragraphs, it is clear that the reaction rod of Burke could be configured for use with an AR-10 by providing it with a larger head, e.g., by swapping out the smaller, AR-15 head for a larger AR-10 head.
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 KB32 and further in view of Parra (the modified Burke) makes obvious the claimed invention (Burke: paragraph 22; figures 12 and 13).
In reference to claim 6, the modified Burke makes obvious the claimed invention, as set forth above in the reference to claim 1.
In reference to claim 7, the modified Burke 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, the modified Burke makes obvious the claimed invention, as set forth above in the references to claims 1 and 2 (also see figure 2, mounting portion 21).
In reference to claim 12, the modified Burke makes obvious the claimed invention, as set forth above in the reference to claim 1.
In reference to claim 13, the modified Burke 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, the modified Burke 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, the modified Burke makes obvious the claimed invention, as set forth above in the reference to claim 1.
In reference to claim 16, the modified Burke 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, the modified Burke 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, the modified Burke makes obvious the claimed invention (see figures 10-12; paragraphs 22-24 and 31).
Allowable Subject Matter
Claims 3, 5, 9-11, and 19 are objected to as being dependent upon a rejected base claim, but they would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 4 and 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Regarding the specification, the examiner acknowledges that Applicant has sufficiently addressed the trade names and/or marks found therein.
Regarding the rejections of claims 4 and 17, the examiner notes that the amendments to the claims do not overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph. 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). Applicant’s attention is directed above, where it is suggested that the term Magpul M-lok be replaced with the term “substantially rectangular slot.
Regarding the examiner’s interpretation of the term “holding device” as invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, Applicant’s arguments are unpersuasive. The term “holding” is a functional term and the term “device” is a structural (generic) placeholder. Thus, 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. The examiner maintains that the term “holding device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Regarding the Dextraze reference, Applicant’s arguments are found persuasive (see remarks, pages 5-14, Claim Rejections – 35 U.S.C § 102). The rejections relying upon Dextraze are withdrawn.
Regarding Burke in view of Parra, Applicant’s arguments are moot in view of the newly relied upon prior art, KB32. Additionally, it is noted that Applicant’s assertion that the head of Burke does not secure the firearm in a stable position is found unpersuasive. Applicant notes that torque transmitter 14 is the structure that secures the firearm in a stable position. However, the examiner directs Applicant’s attention to Burke, paragraph 23, which clearly discloses that the torque transmitter 14 is optional and can be completely omitted. Further, at least paragraphs 31 and 32 make clear that lugs 22A can be relied upon, solely, to receive forces applied to the firearm assembly F, and, thus, to the vise. Further, locking lugs 50A lock the reaction rod to the firearm, such that the reaction rod cannot be removed from the firearm.
The examiner asserts that the newly applied rejection relying upon Burke, KB32, and Parra clearly renders obvious the claimed invention. Applicant’s attention is directed to said rejection, above, which relies upon Parra to provide a broader teaching than previously presented, while also adding a teaching by KB32 to support differently sized heads.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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.
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GABRIEL J. KLEIN
Examiner
Art Unit 3641
/Gabriel J. Klein/Primary Examiner, Art Unit 3641
Prosecution Insights