DETAILED ACTION
Information Disclosure Statement
The information disclosure statement filed 27 AUG 25 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. This is with particular respect to the non-patent literature documents: no copies appear in the instant application nor in any parent application.
Claim Objections
Applicant is advised that should claim 10 be found allowable, claim 11 will be objected to under 37 CFR 1.75 as being a duplicate thereof. When two claims in an application are duplicates, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1-14 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites the limitation "the trigger mechanism" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim as only "a trigger and a striker mechanism" is recited in line 1-2, which provides adequate support for "the trigger" and "a striker mechanism" but not a trigger mechanism. Clarification is required.
Claim 1 further recites the limitation "a rear stabilizing attachment facility" in line 10. MPEP § 2173.03 sets forth:
The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification.
Applicant discloses a "[r]ear stabilizing connector 112, in some embodiments, [which] is configured to accommodate an arm brace, buttstock, or cheek rest attachment" (emphases added) at ¶ [00020], and identically as element 412 at, e.g., ¶ [00030], but fails to disclose the connector being an attachment facility (no instances of facility appear in the disclosure). While, arguably, a connector can be construed as an attachment facility, the disclosure should provide the basis for the terms used in the claims.
Claims 2-5 similarly recite "rear stabilizing attachment facility" in lines 1 of each.
Any unspecified claim is rejected as being dependent upon a rejected base claim.
The claims will be further treated on the merits as best understood only.
Claim Rejections - 35 USC § 102
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.
Claims 1-2, 4-9, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2,324,125 to Van Horn et al. (“Van Horn”).
Re: claim 1, Van Horn discloses a grip module for a firearm having a slide 23, e.g., Fig. 8, a barrel 25, e.g., Fig. 10, and a firing control unit having a trigger 28 and a striker mechanism, inter alia, 31, 56, and removably operable (the elements are removably operable, since such can be used in other like firearms, but see below, also) with a pistol (shown), the grip module comprising: a grip module body 20 configured to removably receive the firing control unit, slide and barrel (shown), and having a forward end (rightmost end in Fig. 8) and a rear end (leftmost therein); the grip module including a trigger guard 26 configured to encompass a portion of the trigger mechanism (shown); the grip module body having a handgrip 21 rearward of the trigger guard (shown); the handgrip defining a magazine well (“hollow handle 21,” page 2, col. 1, ll. 54-62); and the grip module body having a rear stabilizing connector, inter alia, 89, Fig. 12.
With respect to removable, operable, etc., it has been held that the recitation that an element is “capable of” performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchinson, 69 USPQ 138. Regardless, Thomele fairly discloses these features.
Re: claim 2, Van Horn further discloses wherein the rear stabilizing connector comprises a stock 87, id.
Re: claim 4, Van Horn further discloses wherein the rear stabilizing connector comprises a mount 88 configured to receive a stock 87.
Re: claim 5, Van Horn further discloses wherein the rear stabilizing connector comprises a connector 88 operable for coupling to a rear attachment 87 for enhancing stability (inherent in the butt stock disclosed, i.e., the concave portion at the leftmost end thereof is for securing against a user’s shoulder to steady the firearm during use).
Re: claim 6, Van Horn further discloses wherein the grip module body has a shape resembling a portion of a carbine. This is asserted because ‘a shape resembling a portion of a carbine’ can include, e.g., the lowermost portion of the body 20 below the barrel, which suffices. In fact, any curved or planar portion meets the recitation, since a carbine would likely have curved contours and flat portions, any of which suffice as a shape resembling a portion.
Re: claim 7, Van Horn further discloses wherein the grip module body has a shape resembling a portion of a bullpup rifle. See explanation, above.
Re: claim 8, Van Horn further discloses wherein the handgrip is immediately rearward of the trigger guard (shown) such that a user's hand gripping the grip is positioned for a finger of the user's hand to operate the trigger (inherent in that shown).
Re: claim 9, Van Horn further discloses including an upper module portion (upper portion of slide 23) connected to the grip module body (shown) and having a facility configured to support a sight (groove or channel atop the slide and shown including a rear sight, e.g., Fig. 1).
Re: claim 12, Van Horn further discloses defining a second magazine receptacle 85, 86.
Re: claim 13, Van Horn further discloses wherein the second magazine receptacle is forward of the trigger guard (shown).
Re: claim 14, Van Horn further discloses including the slide, barrel, and firing control unit (all shown as claimed).
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Van Horn in view of US 2016/0265872 to Tarazi.
Van Horn discloses the claimed invention as applied above except for wherein the rear stabilizing attachment facility comprises an arm brace.
Tarazi teaches a similar grip module for a firearm having a slide, a barrel and a firing control unit (though perhaps not shown in detail, the type of firearm shown, e.g., 111, Fig. 5, is clearly a semiautomatic, relying on a magazine 110, and would include the recited elements: regardless, that shown fairly meets a grip module for the same reasoning Van Horn does, above), and further having a rear stabilizing connector, inter alia, 101, wherein the rear stabilizing connector comprises an arm brace 100. See also, e.g., Fig. 6, which is described as “depict[ing] the arm brace,” ¶ [0024], in the same field of endeavor for the purpose of steadying a handgun, e.g., ¶ [0017].
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify Van Horn as taught by Tarazi in order to steady the handgun with a reasonable expectation of success because Tarazi further discloses mitigating recoil, id. Further rationale: All claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to a skilled artisan at the time the invention was made. Further rationale: “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 82 USPQ2d 1385, 1395.
Claims 10-11 and alternatively claim 9 are rejected under 35 U.S.C. 103 as being unpatentable over Van Horn in view of US 10,161,709 to Wright.
Re: claim 9, should it be held that Van Horn discloses the claimed invention as applied above except for including an upper module portion connected to the grip module body and having a facility configured to support a sight, Wright teaches a similar grip module 200, e.g., Fig. 8, including an upper module portion 100 connected to the grip module body, e.g., Fig. 1, and having a facility 117 configured to support a sight (Wright discloses Picatinny rails, which are well-known in the art as being configured to support a sight) in the same field of endeavor for the purpose of integrating small arms, Title, and/or inserting a pistol into a rifle, Abstract.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Van Horn as taught by Wright in order to integrate small arms and/or insert a pistol into a rifle with a reasonable expectation of success because Wright further discloses such “providing an extra fully loaded weapon…after a rifle’s magazine is empty,” col. 2, ll. 12-15, and, “allowing quick transition from a rifle to a handgun,” id., ll. 18-19. The further rationale(s) provided above would apply equally well here.
Re: claims 10-11, Wright further discloses wherein the upper module portion defines a passage configured to receive the slide. Compare Figs. 1 and 8, in view of the slide 250, i.e., the upper module portion must have some form of passage capable of receiving the slide, since such is clearly absent from view in Fig. 1.
Claims 1-2, 4-9, and 12-14 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Van Horn in view of US 2009/0071053 to Thomele et al. (“Thomele”).
Anent the claims, should it be held that Van Horn does not disclose a firing control unit having a trigger and a striker mechanism and removably operable with a pistol, Thomele teaches a similar grip module as Van Horn, e.g., Figs. 1-7, including a slide 12, a barrel 20, and a firing control unit B having a trigger 148 and a striker mechanism, inter alia, 150, in the same field of endeavor for the purpose of ”allow[ing] multiple modular firearm configurations,” ¶[0003].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Van Horn as taught by Thomele in order to allow multiple modular firearm configurations with a reasonable expectation of success because Thomele further discloses such “providing significant customizability of the firearm by the user,” id. The further rationale(s) provided above would apply equally well here.
Claim 3 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Van Horn in view of Thomele, further in view of Tarazi.
Given that the modification based on Tarazi only applies to the base reference, Van Horn, the same reasoning and rationale(s) provided above would apply here also.
Claims 10-11 and alternatively claim 9 are rejected under 35 U.S.C. 103 as being unpatentable over Van Horn in view of Thomele, further in view of Wright.
Given that the modification based on Wright only applies to the base reference, Van Horn, the same reasoning and rationale(s) provided above would apply here also.
Conclusion
Any inquiry concerning this communication should be directed to Bret Hayes at telephone number (571) 272 – 6902, fax number (571) 273-6902, or email address bret.hayes@uspto.gov, which is preferred, especially for requesting interviews, general questions, etc. Note, however, that return correspondence cannot be made in the event that information subject to the confidentiality requirement as set forth in 35 U.S.C. § 122 has been included. See MPEP §§ 502.03 and 713.01, I, regarding email communications. The examiner can normally be reached Mondays through Fridays from 5:30 AM to 1:30 PM, Eastern.
The Central FAX Number is 571-273-8300.
If attempts to contact the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers, can be reached at (571) 272 – 6874.
/Bret Hayes/
Primary Examiner, Art Unit 3641
10-Dec-25
Prosecution Insights