DETAILED ACTION
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because such suggests that the claimed element, a shim, is optional and fails to define the shim. At minimum, such should clarify that the shim is not optional and includes a body, an upper flange/engagement feature, and a lower flange/engagement feature. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 8-14 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 8 recites the limitation “a mounting assembly” in line 7. The issue is that a mounting assembly is previously recited in lines 1-2 and it is unclear whether the second refers to the first or is a separate and distinct mounting assembly.
Claims 11-13 recite “the mounting assembly” therein. It is unclear which of the two noted above the claims intend to reference.
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.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,422,204. Although the claims at issue are not identical, they are not patentably distinct from each other because the metes and bounds of the instant claims are fully recited in, and thus cover by, the patented claims or would be obvious in view of art and/or case law.
For example, instant claim 1 (IC 1) is met by at least patent claim 1 (PC 1) thusly: a shim, col. 12, ll. 34 (12:34), a body, 12:35, a first thickness (all solids have thickness) defining a shim body surface (mere rewording of an inherent quality), an upper flange, id., comprising an upper protrusion, 12:36-37, configured to engage with a top socket, 12:38-39, of a mounting assembly, 12:26-33, a lower flange, 12:35, extending outward from the body (as flanges, tend to do, i.e., inherent/obvious) comprising a lower protrusion, 12:37-38, configured to engage with a bottom socket of the mounting assembly, 12:26-33.
IC 2 is met by PC 9; ICs 3-4 is met by PC 16; ICs 5-6 are met by the disclosure “the lower protrusion 576 may take the form of a ridge, tab, nub, pin, latch, spring-loaded ball bearing, or any other suitable engagement feature,” 9:46-48: thus, one reading the specification as to the meaning of terms in the claim would recognize such as one of many possibilities; and, IC 7 is met by PC 11.
IC 8 is fairly met as noted above. With respect to the upper and lower protrusions being “configured to selectably attach the shim to corresponding sockets of a mounting assembly to modify an internal dimension of the mounting assembly,” the protrusions noted above fairly meet the configuration. It is noted that none of the elements following “shim,” i.e., corresponding sockets, mounting assembly, internal dimension, are required. Rather, the configured language is a limitation on the protrusions, which is the point of the invention—to make a firearm shell casing catching system configurable. See, e.g., Title.
Mutatis mutandis, ICs 9-20 appear to be fairly met as noted above.
Evidence to the contrary of any of the above is welcome.
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
2-Jun-26
Prosecution Insights