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 .
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 1-21 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.
Claim 1 includes several unclear or grammatically incorrect phrases, including “said third side wall and and said foruth side all,” “capable of lateral movement,” “with said respect to said one another,” “an Arca-Swiss compatible said plate,” and “a substantially compressible member that exerts an outwardly directed pressure on said first sidewall and a lever.” These phrases render the claim indefinite because the metes and bounds of the claimed apparatus are unclear.
Claim 15 recites “operably engaged with a slidably movement of said arm,” which is grammatically unclear.
Claim 20 recites “where a second one of said pair of flanges as at a lower side of said side thereof” and “in such said manner,” which are grammatically unclear.
Claim 21 recites “where a second one of said pair of flanges as at a lower side thereof” and “said lever is said maintained in said engagement with said arm,” which are grammatically unclear.
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
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 and 35 of U.S. Patent No. 12,540,796. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims and the instant claims are commonly directed to a lever based clamping apparatus including an upper channel suitable for engaging a plate for imaging equipment, a lower channel suitable for engaging a Picatinny rail, laterally movable side walls, an adjustable arm, an elongate stud, a lever, and a substantially compressible member/resilient structure for selectively securing the clamping apparatus.
Regarding claim 1, claim 1 of U.S. Patent No. 12,540,796 recites an apparatus suitable for selectively engaging a plate for imaging equipment and suitable for selectively engaging a Picatinny rail for a firearm, the apparatus defining an upper channel having first and second side walls, a lower channel having third and fourth side walls, wherein the upper channel is at a higher elevation than the lower channel, a lever capable of causing lateral movement of the side walls to selectively secure either the Picatinny rail or the plate, wherein the third and fourth side walls are approximately 21 mm apart, and a substantially compressible member that exerts outwardly directed pressure on the lever.
The instant claim 1 recites substantially the same apparatus, but further recites lever/stud details including lever openings, a lever pin extending through the lever openings, the lever pin engaged with an elongate stud, and the lever having a substantially straight elongate handle portion and a wider body portion. These additional limitations are not patentably distinct from claim 35 of U.S. Patent No. 12,540,796, which recites an elongate stud engaged with a lever, the lever defining a pair of lever openings, a lever pin extending through the lever and lever openings, the lever pin engaged with the elongate stud, and the lever arm having a side profile including an elongate handle portion that is substantially straight and a body portion defining the pair of lever openings.
Claims 2-19 are unpatentable over claims 2-19 of U.S. Patent No. 12,540,796, respectively.
Claim 20 is unpatentable over claims 1 and 35 of U.S. Patent No. 12,540,796. Claim 20 depends from claim 1 and further recites flange/U-shaped portion limitations for maintaining the lever. The additional flange/U-shaped portion limitations are not patentably distinct from the lever/stud/arm structure of claim 35, because providing adjacent flanges or a generally U-shaped receiving portion to maintain the lever relative to the body/arm assembly would have been an obvious structural arrangement for positioning and supporting the lever in the same lever-based clamping apparatus.
Claim 21 is unpatentable over claim 35 of U.S. Patent No. 12,540,796. Claim 21 recites substantially the same body, arm, spring, stud, washer, lever, lever opening, and lever pin arrangement as patented claim 35. The additional flange/U-shaped portion limitations are not patentably distinct from the lever/stud/arm structure of claim 35, because providing adjacent flanges or a generally U-shaped receiving portion to maintain the lever relative to the body/arm assembly would have been an obvious structural arrangement for positioning and supporting the lever in the same lever-based clamping apparatus.
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.
*Communications via Internet e-mail are at the discretion of the applicant. Applicant is welcome to file an electronic communication authorization (sb439) form at any time if he/she would like to communicate via e-mail:
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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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