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 .
DETAILED ACTION
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: OPTICAL ASSEMBLY FOR MOUNTING TO A FIREARM HAVING FLEXURE SHAFTS THAT ENABLE ADJUSTMENT OF THE OPTICAL ASSEMBLY.
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 1-4, 6-, 11-14 and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8 and 14 of U.S. Patent No. 11,629,935. Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant Application 19/276,147
Claim
US Patent No. 11,629,935
Corresponding Claim
Reasons or Explanation of Double Patenting
1
1
Pending Claim is broadly claiming the same invention with the exception of an optical source with VCSEL which is seen to be an obvious substitution in aiming modules.
2
2
Reciting the equivalent function
3
2
Reciting generally the equivalent function and structure
4
7
Pending claim is slightly broader in an obvious sense with respect to compound threaded adjustment means
6
3,4
Windage and elevation adjustment using flexure shafts are claimed
7
7
Identically recited compound threaded adjustment systems
11
1,8
VCSEL is claimed
12
5
Identical recitation
13
14
Identical recitation
14
1
VCSEL Claim 14 is obvious choice for radiation source of pending claim.
16
1
Pending Claim is broadly claiming the same invention with the exception of an optical source with VCSEL which is seen to be an obvious substitution in aiming modules.
17
3
Pending claim recites adjusting property as being azimuth and or windage that is in patent Claim 3
18
2
Both claims fix or secure the optics position axially
19
1
Pending Claim is broadly claiming the same invention with the exception of an optical source with VCSEL which is seen to be an obvious substitution in aiming modules.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The applicant is respectfully advised that in examining a pending application, the claims are interpreted as broadly as their terms reasonably convey. In re American Academy of Science Tech Center, 70 USPQ2d. 1827, 1834 (Fed. Cir. May 13, 2004). MPEP § 2111.01.
Claims 1, 4-7, 15-17 and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Collin (U.S. PG Publication No. 2016/0313089).
Regarding Claims 1 and 19, Collins discloses in Figures 1-2, an optical assembly or system 10, comprising: flexure shafts (windage adjustment mechanism 46 with shaft 68); an optical source 18 (HOE) configured to emit multiple radiation types ; and optics configured to allow the transmission of radiation from the optical source, wherein the flexure shafts 46 are configured to mount the optics 18 and the optical source under tension and enable zero-play adjustment of an orientation of the optical assembly, and wherein the optical assembly is configured to be mounted to a firearm.
Regarding Claims 4 and 16, Collins discloses in Figures 1-2, the optical assembly of claim 1, wherein the flexure shafts comprise a threaded flexure shaft 66 that is adjustable to facilitate alignment of the optical assembly.
Regarding Claim 5, Collins discloses in Figures 1-2, the optical assembly of claim 4, wherein the orientation of the optical assembly is a first orientation, and wherein the threaded flexure shaft facilitates adjustment of a second orientation of the optical source, resulting in the optical source emitting the radiation in a direction parallel to a bore axis of the firearm (Para 0042).
Regarding Claim 6, Collins discloses in Figures 1-2, The optical assembly of claim 4, wherein the threaded flexure shaft is adjustable to facilitate alignment of a property of the optics and the optical source, the property being selected from a group of properties comprising a windage of the optics and the optical source and an elevation of the optics and the optical source (Para’s 0040-0042).
Regarding Claim 7, Collins discloses in Figures 1-2, the optical assembly of claim 1, wherein the flexure shafts comprise respective compound threaded adjustment systems (Para’s 0040-0042).
Regarding Claim 15, Collin inherently discloses the flexure shafts prevent movement of the optics relative to the optical assembly due to recoil created by the firearm (the HOI device is secured to a firearm that inherently prevents movement Para 0002).
Regarding Claim 17, Collin inherently discloses in Figures 1-2, the method of claim 16, wherein the one or more elements of the optical assembly comprise an optical source configured to emit light and optics that facilitate transmission of the light from the optical source, and wherein the facilitating of the zero-play adjustment comprises facilitating modifying a property of the optics and the optical source via the adjustment of the threaded flexure shaft, the property being selected from a group of properties comprising an azimuth of the optics and the optical source and an elevation of the optics and the optical source (Para 0040).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The applicant is respectfully advised that in examining a pending application, the claims are interpreted as broadly as their terms reasonably convey. In re American Academy of Science Tech Center, 70 USPQ2d. 1827, 1834 (Fed. Cir. May 13, 2004). MPEP § 2111.01.
Claim 11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Collin (U.S. PG Publication No. 2016/0313089).
Collins does not disclose the optical assembly of claim 1, wherein the optical source comprises a radiation source selected from a group of radiation sources comprising an array of vertical cavity surface emission lasers, a light emitting diode, a solid-state laser source, and an arc lamp and wherein the radiation is of a type selected from a group of types comprising an illumination radiation type and an aiming radiation type and wherein the optical source comprises a radiation source selected from a group of radiation sources comprising a light emitting diode, a solid-state laser source, and an arc lamp.
It would have been obvious to one of ordinary skill in the art to use a light source as claimed for illuminating in low levels of ambient light because the known technique of using LEDs, lasers, arc lamps or VCSEL was recognized as part of the ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
. Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Collin (U.S. PG Publication No. 2016/0313089) in view of Sauter (U.S. PG Publication No. 2008/0043322).
Collins does not explicitly disclose the optics further comprise Risley prisms wherein the Risley prisms are configured to steer the radiation from the optical source.
Sauter discloses the optics of a gun aiming and vision system as having a Riley prism to adjust the mission direction of the light (Para 0031, 0047).
It would have been obvious to one of ordinary skill in the art to incorporate a Risley prism into the optical assembly of the system. All the claimed elements in Collins and Collins were known in the prior art and one skilled in the art could have combined the Risley prisms with the night vision system 200 as claimed with no change in their respective functions, and the combination would have yielded the predictable result adjust the light beam to one of ordinary skill in the art at the time of filing. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Allowable Subject Matter
Claims 19-20 are allowable subject to a terminal disclaimer be filed to obviate the double patent rejection asserted in this office action.
Claims 2-3, 8-10 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims along with filing a terminal disclaimer to obviate the double patenting rejection asserted in this action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claims 2-3 and 18-19, the prior art does not teach or suggest alone or in combination a main flexure shaft securing the optics in an axial direction relative to the firearm in combination with a light source and a second threaded flexure shaft element that facilitates adjustment of an elevation of the optics system relative to the firearm.
Regarding Claim 8, The prior art does not teach or suggest alone or in combination, each respective compound threaded adjustment system of the respective compound threaded adjustment systems comprises a respective first threaded flexure shaft element having a first thread pitch and a respective second threaded flexure shaft element having a second thread pitch that is different from the first thread pitch, resulting in an increase of an effective thread pitch of the respective compound threaded adjustment system based on a differential between the first thread pitch and the second thread pitch.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J MAY whose telephone number is (571)272-5919. The examiner can normally be reached M-F 10AM-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached at 571-272-7044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J MAY/Primary Examiner, Art Unit 2875