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 .
Response to Arguments
The Remarks section errs in asserting any previous rejection by the Office as only a restriction/election requirement has been made. For Applicant’s edification with respect to reserving a right to dispute in the future positions taken by the Office, MPEP § 714.02 requires all replies to non-final office actions be fully responsive.
Election/Restrictions
Applicant’s election without traverse of species “a” in the reply filed on 20 NOV 25 is acknowledged. Claims 4-20 have been withdrawn.
Claim Rejections - 35 USC § 112
The following are quotations of the relevant paragraphs of 35 U.S.C. § 112:
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
(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 1-4 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Though Applicant discloses an aiming component for sighting and collecting data, see, e.g., ¶¶ [0005], [0007]-[0008], [0037], nowhere does Applicant disclose what data is collected or any type of component to that end. Applicant discloses, “in FIG. 21, the aiming component includes an eyepiece assembly 3100 and an objective lens assembly 4000,” ¶ [0077], and, “in FIG. 22, the aiming component includes an objective lens assembly 4000, and the objective lens assembly 4000 includes an objective lens assembly 4000 [sic],” ¶ [0078]. Neither of these clarifies the data collected nor the mechanism to accomplish the feat.
Alternatively, claims 1-4 are rejected under 35 U.S.C. 112(a) because the specification, while arguably being enabling for including data collecting as a function of the aiming component, does not reasonably provide enablement for any particular data or component suitable for that purpose. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. As noted above, there is no disclosure of the type of data or any collection mechanism.
Claims 1-4 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.
In view of the enablement issue(s) noted above and the lack of disclosure regarding such, the aiming component being for collecting data in claim 1 is ambiguous.
Claim 3 recites the limitation “a second mounting portion of the gun” in lines 3-4, which is indefinite because the same limitation is recited in line 3 of claim 2 on which claim 3 depends. Is the second mounting portion of claim 3 the same as that of claim 2 or separate and distinct therefrom? The claim will be further treated on the merits as though reciting --the second mounting portion--, i.e., the same as that of claim 2.
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 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 10,323,904 to Batten.
Re: claim 1, Batten discloses the claimed invention including a gun sighting device 1, e.g., Figs. 1A-1B, comprising: a main body 10, the main body being provided with an aiming component 50 for sighting and collecting data (“50 lens, camera,” col. 5, ll. 11); a mounting base (top portion of main body 10), the mounting base being connected to the main body (integral as shown), and the mounting base being configured for detachably installing the main body on a gun 300, e.g., Figs. 13A-13B.
Re: claim 2, Batten further discloses wherein a first mounting portion (fixed mounting rail 20: col. 5, ll. 8) is provided on the mounting base (shown), and the first mounting portion is detachably connected to a second mounting portion (rail 310) of the gun.
Re: claim 3, Batten further discloses wherein a first fixing member (movable/removable rail 20) is further provided on the mounting base (shown), and the first fixing member is configured for detachably connecting the first mounting portion to the second mounting portion of the gun (shown).
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 4 and alternatively claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Batten in view of US 2021/0025673 to Niswander et al. (“Niswander”).
Re: claim 1, should it be held that Batten discloses the claimed invention as applied above except for a separate and distinct mounting base, Niswander teaches an aiming component 170, e.g., Fig. 1A, and a mounting base 102 being connected to the main body, e.g., Fig. 1B, and the mounting base being configured for detachably installing the main body on a gun (fairly represented by firearm slide 144: see, e.g., Figs. 2A-3E and the relevant disclosures regarding detachable installation) in the same field of endeavor for the purpose of mounting a sighting device atop a firearm side, ¶ [0021].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Batten as taught by Niswander in order to mount the sighting device atop the firearm with a reasonable expectation of success because Niswander further discloses a male dovetail on the mounting base configured to receive a corresponding female dovetail of the sighting device, ¶ [0025], akin to the mounting configuration of Batten. 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.
Re: claim 2, Niswander further discloses wherein a first mounting portion 114 is provided on the mounting base (shown), and the first mounting portion is detachably connected to a second mounting portion 152 of the gun.
Re: claim 3, Niswander further discloses wherein a first fixing member (the fastener in “the anchor 114 includes an aperture through which a fastener secures the anchor 114 into the firearm slide 144 by engaging the socket 166 in the catch 152,” ¶ [0024]) is further provided on the mounting base, and the first fixing member is configured for detachably connecting the first mounting portion to the second mounting portion of the gun (as disclosed).
Re: claim 4, Niswander further discloses wherein the first mounting portion comprises at least one first connection hole (the aperture disclosed above) the first fixing member inserts through the first connection hole, id., the first fixing member is configured for being detachably connected to a second connection hole 166 of the second mounting portion of the gun, so that the main body is detachably mounted on the gun via the mounting base.
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
11-Dec-25