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 .
Election/Restrictions
Applicant’s election without traverse of Group II (claims 12-17 and 19-22) in the reply filed on 5-18-26 is acknowledged.
Claims 1-8, 10, and 11 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected apparatus invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5-18-26.
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 12-17 and 19-22 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,455,126 in view of Wolf et al. (US 10,119,777), hereinafter (“Wolf”), and provided by applicant. U.S. Patent No. 12,455,126 (claims 1-20) discloses a modular firearm system, comprising: a frame having a grip configured to be held by hand of a user and a receiving chamber formed within the grip; a chassis having a receiving channel structured to fit within and be received by the receiving chamber of the frame; and a barrel locking block structured to fit within and be received by the receiving channel of the chassis.
U.S. Patent No. 12,455,126 does not disclose the frame further having an alignment notch that extends through a side of the frame, the alignment notch being open at a top side of the alignment notch, parallel sidewalls extending from a bottom portion of the chassis; the chassis further including an alignment projection that extends laterally from an outer side of the chassis, the alignment projection configured to be received within the alignment notch of the frame to align the chassis to the frame. Wolf (Fig 7) teaches a modular firearm system having a frame (200) with an alignment notch (203) that extends through a side of the frame, the alignment notch being open at a top side of the alignment notch, parallel sidewalls extending from a bottom portion of the chassis (Fig 7); the chassis further including an alignment projection (Fig 1, 105) that extends laterally from an outer side of the chassis, the alignment projection configured to be received within the alignment notch of the frame to align the chassis to the frame. The purpose the notch and projection in Wolf is to properly align the chassis with the frame. Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the modular system in U.S. Patent No. 12,455,126 to have the notch and projection of Wolf. The motivation (as taught by Wolf) would to properly align the chassis with the frame. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REGINALD S TILLMAN, JR whose telephone number is (571)270-7010. The examiner can normally be reached M-F 830-530.
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/REGINALD S TILLMAN, JR/Primary Examiner, Art Unit 3641
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