DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 1-20 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.
Regarding claims 1-15, claim 1 recites, “In a sighting device, an adjustment knob...” and then recites that “the adjustment knob” comprises the claimed structure. However, dependent claims 2-15 recite “The sighting device of claim 1.” Therefore, it is unclear whether claim 1 is directed to a sighting device or to an adjustment knob in a sighting device.
Regarding claim 4, the phrase “for rotation herewith” is indefinite because it is unclear what structure the term “herewith” refers to. It appears that “therewith” may have been intended.
Regarding claim 12, the limitation “wherein the first and second surfaces are selectively non-alignable...” lacks proper antecedent basis because claim 11 does not clearly recite “first and second surfaces.”
Regarding claim 13, the limitation “the grip surface” lacks proper antecedent basis because claim 1 recites “the gripping surface,” not “the grip surface.”
Regarding claims 16-18, claim 16 recites, “In an optical device, an adjustment knob...” and then recites that “the adjustment knob” comprises the claimed structure. However, dependent claims 17-18 recite “The optical device of claim 16.” Therefore, it is unclear whether claim 16 is directed to an optical device or to an adjustment knob in an optical device.
Regarding claim 16, the limitation “to drive movement of one or more optical elements of the sighting device” lacks proper antecedent basis because claim 16 recites an “optical device,” not a “sighting device.”
Regarding claim 16, the limitation “allow the rotating member and the dial or dial assembly co-rotate” is indefinite because the claim is grammatically unclear. It appears that “to co-rotate” may have been intended.
Regarding claim 17, the limitation “the one or more engagement features” lacks proper antecedent basis because claim 16 recites an “engagement structure,” not “one or more engagement features.”
Any unspecified claim is rejected as being dependent upon a rejected base claim. In light of the above, the claims will be further treated on the merits as best understood only.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 19-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-2 of prior U.S. Patent No. 12,429,306. This is a statutory double patenting rejection.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,429,306.
Although the claims at issue are not identical, they are not patentably distinct from the claims of the patent. The patent claims are directed to a turret assembly/adjustment knob for changing an optic device setting, including first and second rotatable parts selectively operable in engaged and non-engaged modes, a user interface for selecting the mode of operation, and an engagement lock having a button or other lock release for selecting between locked and unlocked states. The instant claims are directed to an obvious variation of the same turret/adjustment knob assembly, including a rotating member and dial or dial assembly selectively operable in engaged and non-engaged/user-zeroing modes, and a locking mechanism/lock release for permitting or restricting rotation or actuation.
Claims 1-18 of the instant application are broader than or an obvious variation of the patented turret/adjustment knob assembly because the claims merely recite the same basic arrangement using different terminology, including a rotating member, a dial or dial assembly around the rotating member, engagement/non-engagement between the dial/dial assembly and rotating member for tool-less zeroing, and a locking mechanism including a lock release.
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 MICHAEL D DAVID whose telephone number is (571)270-3737 and whose email address is michael.david@uspto.gov*. The examiner can normally be reached on M-F 8:30am-5:00pm EST.
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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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/MICHAEL D DAVID/Primary Examiner, Art Unit 3641
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