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 .
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) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nierenberg, US Patent No. 9,194,649.
Regarding claim 1, Nierenberg discloses a modular thumb rest (200) for coupling to a firearm, the modular thumb rest comprising: a thumb-pad surface (230); a mounting body (210) extending away from a rear surface of the modular thumb rest in a first direction (figure 7), the rear surface being opposite the thumb-pad surface (figures 6 and 7); and a tongue extending away from the mounting body in a second direction that is substantially perpendicular to the first direction (210 is a dovetail shape and is interpreted the laterally protruding sides as a tongue which extends perpendicular to the mounting body as annotated below for example).
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ANNOTATED FIGURE
Regarding claim 2, Nierenberg further discloses the thumb-pad surface curves from a thinnest portion at a rear edge of the modular thumb rest to a thickest portion at a front edge of the modular thumb rest that is opposite the rear edge of the modular thumb rest (shown in figure 6 for example).
Claim(s) 1 and 3is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alson, US Patent No. 12,085,357.
Regarding claim 1, Alson discloses a modular thumb rest (100) for coupling to a firearm, the modular thumb rest comprising: a thumb-pad surface (102); a mounting body (106 and 108) extending away from a rear surface of the modular thumb rest in a first direction, the rear surface being opposite the thumb-pad surface (figure 1); and a tongue (104) extending away from the mounting body in a second direction that is substantially perpendicular to the first direction (broadly, yet reasonably, 104 extends away from 106 and 108 and is perpendicular to 106 and 108).
Regarding claim 3, Alson further discloses the mounting body further includes a first surface that is substantially parallel to the first direction, and a second surface that is substantially parallel to the first direction, in which the tongue extends away from the mounting body between the first surface and the second surface and substantially perpendicular to each of the first surface and the second surface (mount body 106 and 108 extend in a direction shown in figure 1 and extends perpendicular to the first and second surfaces as annotated below)
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Claim(s) 1, 3, 6, 8-9, 11 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Werner, US Patent No. 7,313,996.
Regarding claim 1, Werner discloses a modular thumb rest for coupling to a firearm (figure 8 for example), the modular thumb rest comprising: a thumb-pad surface (10); a mounting body (9) extending away from a rear surface of the modular thumb rest in a first direction, the rear surface being opposite the thumb-pad surface; and a tongue (annotated below) extending away from the mounting body in a second direction that is substantially perpendicular to the first direction (shown in figures 6, 7 and 10 for example and annotated below).
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ANNOTATED FIGURE
Regarding claim 3, Werner further discloses the mounting body further includes a first surface that is substantially parallel to the first direction, and a second surface that is substantially parallel to the first direction, in which the tongue extends away from the mounting body between the first surface and the second surface and substantially perpendicular to each of the first surface and the second surface (annotated above).
Regarding claim 6, Werner discloses a frame assembly (3) for a firearm, the frame assembly comprising: a modular frame comprising a longitudinal sidewall (4/5), the sidewall having an upper edge, the upper edge having a substantially vertical slot (13/14) through the upper edge; and a modular thumb rest (6/7 broadly, yet reasonably) removably positioned within the vertical slot (figure 8 for example).
Regarding claim 8, Werner further discloses the modular thumb rest comprising: a thumb-pad surface (10); a mounting body (9) extending away from a rear surface of the modular thumb rest in a first direction, the rear surface being opposite the thumb-pad surface; and a tongue (annotated above) extending away from the mounting body in a second direction that is substantially perpendicular to the first direction (shown in figures 6, 7 and 10 for example and annotated above).
Regarding claim 9, Werner further discloses the sidewall having an inner surface and an outer surface (shown in figure 6 for example), the vertical slot comprising a substantially vertical groove (13/14) between the inner surface and the outer surface, the tongue of the modular thumb rest being within the vertical groove of the vertical slot when the modular thumb rest is removably positioned within the vertical slot (figure 8 for example).
Regarding claim 11, Werner further discloses the mounting body further includes a first surface that is substantially parallel to the first direction, and a second surface that is substantially parallel to the first direction, in which the tongue extends away from the mounting body between the first surface and the second surface and substantially perpendicular to each of the first surface and the second surface (annotated above).
Regarding claim 14, Werner further discloses the sidewall is a first sidewall (4), the modular frame further comprising a longitudinal second sidewall (5), the first sidewall and the second sidewall being substantially parallel (figure 6), the second sidewall having a substantially vertical slot (14) through an upper edge of the second sidewall, in which the vertical slot of the second sidewall is configured to accept another modular thumb rest (figures 6 and 8).
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) 7, 15-17 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Werner in view of Nierenberg.
Regarding claims 7 and 15, Werner discloses the claimed invention and may show a rail on the underside of frame 3; however, Werner is not specific as to the pistol having a picatinny rail at a first end of the modular frame and the vertical slot being separate from the picatinny rail. Nonetheless, Nierenberg teaches a pistol frame which has a picatinny rail separate from a thumb rest (shown in figures 8 and 9 of Nierenberg).
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify or define Werner to have a picatinny rail on the frame similar to that as taught by Nierenberg with a reasonable expectation of success in order to allow for attachment of accessories such as flashlights or laser aiming devices.
Regarding claim 16, Werner as modified by Nierenberg further discloses a thumb-pad surface (Werner 10); a mounting body (Werner 9) extending away from a rear surface of the modular thumb rest in a first direction, the rear surface being opposite the thumb-pad surface; and a tongue (annotated Werner figure above) extending away from the mounting body in a second direction that is substantially perpendicular to the first direction (Werner, shown in figures 6, 7 and 10 for example and annotated above).
Regarding claim 17, Werner as modified by Nierenberg further discloses the first sidewall (4/5) having an inner surface and an outer surface (Werner, shown in figure 6 for example), the vertical slot comprising a substantially vertical groove (Werner, 13/14) between the inner surface and the outer surface, the tongue of the modular thumb rest being within the vertical groove of the vertical slot when the modular thumb rest is removably positioned within the vertical slot (Werner, figure 8 for example).
Regarding claim 19, Werner as modified by Nierenberg further discloses the mounting body further includes a first surface that is substantially parallel to the first direction, and a second surface that is substantially parallel to the first direction, in which the tongue extends away from the mounting body between the first surface and the second surface and substantially perpendicular to each of the first surface and the second surface (annotated Werner figure above).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Werner as modified by Nierenberg in view of Alexander, et al., hereafter Alexander, US Patent No. 11,604,041.
Regarding claim 18, Werner as modified by Nierenberg discloses the claimed invention but does not disclose the shape of the thumb surface. Nonetheless, Alexander teaches similar art and shows the thumb surface being contoured.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Werner to have a contoured surface on the thumb surface similar to that as taught by Alexander with a reasonable expectation of success and it would have further been obvious to one having ordinary skill in the art at the time the invention was effectively filed modify the contour of Werner to taper from a thinner section to a thicker forward section, since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23. Modifying the shape of the thumb-pad surface to have a contoured surface with a thinner rear section would have been obvious for any number of reasons including, but not limited to, enhancing the friction force between the thumb and thumb surface, desired comfort by the user, etc.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Werner in view of Alexander, et al., hereafter Alexander, US Patent No. 11,604,041.
Regarding claim 18, Werner discloses the claimed invention but does not disclose the shape of the thumb surface. Nonetheless, Alexander teaches similar art and shows the thumb surface being contoured.
Thus it would have been obvious to one ordinary skill in the art at the time the invention was effectively filed to modify Werner to have a contoured surface on the thumb surface similar to that as taught by Alexander with a reasonable expectation of success and it would have further been obvious to one having ordinary skill in the art at the time the invention was effectively filed modify the contour of Werner to taper from a thinner section to a thicker forward section, since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23. Modifying the shape of the thumb-pad surface to have a contoured surface with a thinner rear section would have been obvious for any number of reasons including, but not limited to, enhancing the friction force between the thumb and thumb surface, desired comfort by the user, etc.
Allowable Subject Matter
Claims 4-5, 12-13 and 20 are objected to as being dependent upon a rejected base claim, but appear to be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
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/DERRICK R MORGAN/Primary Examiner, Art Unit 3641