DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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.
Claim 14 is 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.
Regarding claim 14, the claim recites "further comprising a gas tube directs combustion gas pressure vented through the first gas port to the bolt carrier." The claim lacks antecedent or linking language connecting the recited gas tube with the recited functional language. It is unclear whether the claim intends to recite "a gas tube that directs combustion gas pressure vented through the first gas port to the bolt carrier," "a gas tube configured to direct combustion gas pressure vented through the first gas port to the bolt carrier," or some other relationship. Accordingly, the metes and bounds of the claim are unclear and the claim is indefinite.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,352,518.
Regarding claim 1, Patent No. 12,352,518 teaches a gas operating system for a firearm adapted for use with low energy ammunition, the firearm including a bolt carrier, the system comprising a barrel having a breech, a muzzle, a bore and a first gas port, wherein the first gas port is positioned distal from the maximum pressure location in a region of the barrel that experiences between 90% and 40% of the maximum pressure, a gas block disposed on the barrel, and a tube operatively connecting the gas block to the bolt carrier, wherein the gas block is configured to direct energy from combustion gas pressure vented through the first gas port to the bolt carrier via the tube. The instant claim differs only in reciting that the first gas port is positioned between 1.0 and 2.2 inches away from the breech. The specification teaches that the claimed distance corresponds to the same pressure region recited in Patent No. 12,352,518. Therefore, the claimed distance limitation is merely an obvious variation of the pressure-based location recited in Patent No. 12,352,518.
Regarding claims 2-19, Patent No. 12,352,518 teaches the same subject matter as presently claimed including the recited ammunition types, gas-port distance ranges, piston embodiment, gas tube embodiment, multiple gas-port arrangements, gas-port diameter, and firearm implementation. The claims differ only in minor wording changes, claim reorganization, or obvious variations of the pressure-based gas-port location recited in Patent No. 12,352,518. One of ordinary skill in the art would have found it obvious to express the gas-port location as the corresponding distance from the breech as presently claimed because the specification itself identifies the claimed distances as corresponding to the pressure ranges disclosed and claimed in Patent No. 12,352,518.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL D DAVID whose telephone number is (571)270-3737 and whose email address is michael.david@uspto.gov*. The examiner can normally be reached on M-F 8:30am-5:00pm EST.
*Communications via Internet e-mail are at the discretion of the applicant. Applicant is welcome to file an electronic communication authorization (sb439) form at any time if he/she would like to communicate via e-mail:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdfWithout a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached on 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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/MICHAEL D DAVID/Primary Examiner, Art Unit 3641
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