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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,516,899 and claims 1-20 of U.S Patent No. 11,959,718. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to substantially the same structure and merely rearrange particular elements, dependencies or omit structural elements all of which would be matters of obviousness.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being
anticipated by Boersching et al., hereafter Boersching, US Patent Publication No.
2006/0236853.
Regarding claim 1, the recitation of “for a handgun” has not been given patentable
weight because it has been held that a preamble is denied the effect of a limitation where the
claim is drawn to a structure and the portion of the claim following the preamble is a self-
contained description of the structure not depending for completeness upon the introductory
clause. Kropa v. Robie, 88 USPQ 487 (CCPA 1951).
Furthermore, if the body of a claim fully and intrinsically sets forth all of the limitations
of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LEC,
862 F.3d 1362, 2020 USPQ2d TO701 (Fed. Cir. 2020)
In the instant application, the body of the claims fully and intrinsically sets forth all the
limitations of the claimed invention.
Regarding claim 1, Boersching discloses a hydraulic recoil device (20) capable of use with
a handgun, comprising: a cylinder (24) defining an interior hollow compartment, wherein the
cylinder has first and second ends (first end at end numbered as 46 and second end at end
numbered at 27); a first resilient member (60) arranged completely within the cylinder; a piston
assembly (30) arranged adjacent to the first resilient member and at least partially within the
cylinder (figures 3 and 4), the piston assembly comprising a piston head (42), a piston rod (38)
extending from the piston head through the second end of the cylinder (figures 3 and 4), and a
piston cap (34) opposite the piston head; an accumulator (94) arranged within the cylinder; and
a second resilient member (246) arranged outside of the cylinder, wherein the second resilient
member extends between the first and second ends of the cylinder (figures 5-7 show the
second spring/resilient member extending from the first end to the second end and); wherein
the piston assembly is configured to remove an initial jolt in a firing cycle with a hydraulic
resistance and the second resilient member is configured to provide recoil reduction after the initial jolt in the firing cycle ([0036] and compression of 246 acts on 27 and therefor additional
resistance is generated in a second stage by the second resilient member)
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 1 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Boersching in view of Mantas, US Patent No. 7,493,845 in further view of Taylor, US Patent Publication No. 2019/0293379.
Regarding claim 1, as stated above, the intended use in a handgun in the preamble
does not impart any structural requirement to the body of the claim as currently written;
however, for the sake of thoroughness, the alternative rejection is made below in which the
recoil device of Boersching is taught to be obvious for use in a handgun platform. The following
rejection in no way is an admission that Boersching alone fails to meet the structural limitations but instead is an effort by the Examiner to provide the most thorough presentation of the prior art in an effort to expedite prosecution.
Regarding claim 1, Boersching discloses a hydraulic recoil device (20) capable of use with
a handgun, comprising: a cylinder (24) defining an interior hollow compartment, wherein the
cylinder has first and second ends (first end at end numbered as 46 and second end at end
numbered at 27); a first resilient member (60) arranged completely within the cylinder; a piston
assembly (30) arranged adjacent to the first resilient member and at least partially within the
cylinder (figures 3 and 4), the piston assembly comprising a piston head (42), a piston rod (38)
extending from the piston head through the second end of the cylinder (figures 3 and 4), and a
piston cap (34) opposite the piston head; an accumulator (94) arranged within the cylinder; and
a second resilient member (246) arranged outside of the cylinder, wherein the second resilient member extends between the first and second ends of the cylinder (figures 5-7 show the
second spring/resilient member extending from the first end to the second end and); wherein
the piston assembly is configured to remove an initial jolt in a firing cycle with a hydraulic
resistance and the second resilient member is configured to provide recoil reduction after the
initial jolt in the firing cycle ([0036] and compression of 246 acts on 27 and therefor additional
resistance is generated in a second stage by the second resilient member); however, Boersching
does not specifically state the recoil device being used in a handgun. Nonetheless, Mantas
teaches a recoil mechanism (shown in figure 2) with a cylinder (1), piston assembly (8, 7, 4 for
example) and spring (3) which is contained in the cylinder and a second spring (5) surrounding
the cylinder and the overall structure of the cylinder and piston assembly closely resembles the
buffer assembly of Boersching. Additionally, Taylor teaches an AR-15 pistol which utilizes a
buffer assembly to control the rearward movement of the bolt group much like Boersching and
specifically teaches modifying conventional buffer assemblies and sizes for use in a pistol [0006].
Thus it would have been obvious to one ordinary skill in the art at the time the invention
was effectively filed to modify Mantas to have a buffer cylinder and piston assembly similar to
that as taught by Boersching with a reasonable expectation of success given the similarities of
Mantas and the evidence from Taylor that AR-15 style recoil devices are used in pistols with
specific consideration for modifying the size of the structure for the recoil device assembly.
Utilizing the Boersching buffer in a pistol setting like that of Mantas would provide benefits like
increasing the recoil period such that a more controlled pattern of shots can be produced
(benefits taught of hydraulic recoil device in [0002-0003] of Boersching) while providing the added benefits of a reduced risk of leaking of hydraulic fluid [0010] and an assembly with a fail-
safe that would still function in the event the hydraulic fluid should leak [0014].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is provided on form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DERRICK R MORGAN whose telephone number is (571)272-6352. The examiner can normally be reached M-F 9:00-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 5712726874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DERRICK R MORGAN/Primary Examiner, Art Unit 3641
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