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 .
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 1-11 of U.S. Patent No. 11,733,004 and claims 1-18 of US 12,410,991. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are generic to all that is recited in the patent claims. In other words, the patent claims fully encompass the subject matter the application claims and therefore anticipate the application claims. Since the applications claims are anticipated by the patent claims, they are not patentably distinct from the patent claims. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated (fully encompassed) by the patent claims, the application claims are not patentably distinct from the patent claims, regardless of any additional subject matter present in the patent claims.
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 5, 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 5, 10 and 11 recites the limitation "the firearm". There is insufficient antecedent basis for this limitation in the claim in that a firearm has not been previously recited.
Claims 14-19 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. The claims recite an accessory mount and then later recited the mount in relationship with the firearm (i.e. a distal portion extending from the base toward a muzzle end of the firearm and a gap formed), it is therefore unclear whether applicant intends the claims to encompass the mount only (i.e. the mount intended to be used with a firearm and rail) or if applicant intends the claims to encompass the mount in combination with the firearm. Appropriate clarification is required.
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) 1-3, 5-16, 18, 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams et al. (US 9,453,707).
The [a)statements of intended use or field of use, b)"adapted to" or "adapted for" clauses, c) "wherein" clauses, or d) "whereby"] clauses are essentially method limitations or statements of intended or desired use. Thus, these claims as well as other statements of intended use do not serve to patentably distinguish the claimed structure over that of the reference. See In re Pearson, 181 USPQ 641; In re Yanush, 177 USPQ 705; In re Finsterwalder, 168 USPQ 530; In re Casey, 512 USPQ 235; In re Otto, 136 USPQ 458; Ex parte Masham, 2 USPQ 2nd 1647.
See MPEP § 2114 which states:
A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2nd 1647
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than functions. In re Danly, 120 USPQ 528, 531.
Apparatus claims cover what a device is not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525, 1528.
As set forth in MPEP § 2115, a recitation in a claim to the material or article worked upon does not serve to limit an apparatus claim.
Williams et al. discloses a multi-accessory mount assembly, the multi-accessory mount assembly comprising: a proximal portion having (i) a base configured to be removably coupled to a firearm rail and (ii) a sub mount, wherein the base includes a bottom surface configured to engage the firearm rail, and the sub mount having a substantially planar first upper surface configured to receive a first firearm accessory; and a distal portion coupled to the base, wherein the distal portion having a substantially planar second upper surface configured to receive a second firearm accessory; wherein a distal end of the first upper surface and a proximal end of the second upper surface define a horizontal space there between along a longitudinal axis of the base. (Figs. 8-10)
2. The multi-accessory mount assembly of claim 1, wherein one of the sub mount or the distal portion are removably attached to the base. (see, at least, Fig. 8)
3. The multi-accessory mount assembly of claim 1, wherein the sub mount is configured to be removably coupled to the base. (see, at least, Fig. 8)
5. The multi-accessory mount assembly of claim 1, wherein, when the base is coupled to the firearm, a lower surface of the distal portion and an upper surface of the firearm opposite the lower surface define a gap therebetween. (see, at least, Fig. 8)
6. The multi-accessory mount assembly of claim 5, wherein the distal portion includes a neck portion extending between the base and the second upper surface. (see, at least, Fig. 8)
7. The multi-accessory mount assembly of claim 6, wherein the neck portion is disposed at an angle grater that 0 degrees and less than 90 degrees relative to the base. (see, at least, Fig. 10)
8. The multi-accessory mount assembly of claim 1, wherein the first upper surface is has structure allowing it to receive an optic.
9. The multi-accessory mount assembly of claim 1, wherein the second upper surface comprises a rail system.
10. The multi-accessory mount assembly of claim 1, wherein the base and the second upper surface are configured to be coaxially aligned along a length of the firearm when the multi-accessory mount assembly is mounted to the firearm. (the rails can be positioned in any of a number of positions)
11. The multi-accessory mount assembly of claim 1, wherein the sub mount extends in a substantially perpendicular direction from the proximal portion, and wherein the distal portion is spaced apart from the firearm when the base is coupled to the firearm. (see Figs. 8 and 9)
12. The multi-accessory mount assembly of claim 1, wherein the first upper surface has a first longitudinal axis and the first upper surface has a second longitudinal axis, and wherein a first longitudinal axis and the second longitudinal axis are parallel. (the first upper surface has multiple longitudinal axis that could be considered parallel to eachother such as the axis that run to the farthest right edge and the farthest left edge)
13. The multi-accessory mount assembly of claim 1, wherein the first upper surface and the second upper surface are approximately the same height above the base. (the upper rails can be placed at any desired position)
14. A multi-accessory mount assembly, comprising: a base configured to be removably coupled to a firearm, wherein the base includes a lower portion that defines a channel configured to engage the firearm; a sub mount coupled the base, the sub mount having a first upper surface configured to receive a first firearm accessory, the first upper surface being a first height above the channel; and a distal portion couple to the base and extending from the base toward a muzzle end of the firearm when mounted to the firearm, and wherein the distal portion is spaced apart from the firearm to form a gap therebetween when mounted to the firearm, the distal portion having a second upper surface configured to receive a second firearm accessory, the second upper surface being a second height above the channel, wherein the second upper surface comprises a mounting surface that is substantially planar; wherein the first height is less than the second height. (see, at least Figs 8-10)
15. The multi-accessory mount assembly of claim 13, wherein the sub mount includes a first opening in a longitudinal direction of the base. (Fig. 10)
16. The multi-accessory mount assembly of claim 15, wherein the distal portion includes a second opening longitudinally aligned with the first opening. (Fig. 10)
18. The multi-accessory mount assembly of claim 13, wherein the distal portion includes a neck portion extending between the base and the second upper surface. (Fig. 10)
19. The multi-accessory mount assembly of claim 18, wherein the neck portion is disposed at an angle grater that 0 degrees and less than 90 degrees relative to the base. (Fig. 10)
Allowable Subject Matter
Claims 4 and 17 are 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.
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 MICHELLE CLEMENT whose telephone number is (571)272-6884. The examiner can normally be reached M-F 10-6.
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 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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/MICHELLE CLEMENT/Primary Examiner, Art Unit 3641
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