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 .
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 10/10/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “15” has been used to designate both "magazine assembly” and appears to be referencing the rear part of the integrated optics of the firearm. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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.
Claim 10 is 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.
The term “similar” in claim 10 is a relative term which renders the claim indefinite. The term “similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1,3-9,11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Steck (US 3834052) in view of “The Italian Workhorse: Carcano M91 Rifle”, retrieved Jun. 2, 2026, https://www.youtube.com/watch?v=KCvIEioG9Y0, video publication date May 5, 2020, hereinafter, “Carcano”.
Regarding claim 1 Steck teaches an optics mounting device comprising a positioning portion (Fig. 1, 32), a constraining portion (24), a body to connect the positioning and constraining portions (30), where the constraint portion is designed to be mounted using screws that are threaded through preexisting holes in the firearm (Fig.1 14,16,26,28,48,50; Col. 1, lines 18-26). Steck teaches using preexisting holes in the firearm is preferable so as to reduce the cost and the requirement for a skilled gunsmith (Col. 1, lines 9-17).
Steck does not teach the magazine being attached to the rifle by fastening members located upstream and downstream of the trigger.
Carcano teaches a rifle with a butt, a barrel, a magazine assembly, and a trigger, with the magazine assembly constrained to the rifle at two or more constraint points, through one or more fastening members located upstream and downstream of the trigger with respect to the direction of the barrel (Carcano, timestamp 17:47-18:00).
Carcano, timestamp 17:47, the magazine is held in place by screws located upstream and downstream of the trigger:
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It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Carcano to incorporate the optical mounting device of Steck using the preexisting screws and holes. Doing so would allow for optics to be mounted to the rifle without the need for new holes to be drilled as recognized by Steck.
Regarding claim 3, Steck does not teach the device being attached to the firearm using existing screws that hold the magazine to the main body of the rifle. Steck teaches the device being concave in shape and not connecting to any other part of the rifle (Figure 2).
Regarding claim 4, Steck does not teach the device being attached to the firearm using existing screws that hold the magazine to the main body of the rifle. Steck teaches the device being removable to the body (Figure 1).
Regarding claim 5, Steck does not teach the device being attached to the firearm using existing screws that hold the magazine to the main body of the rifle. Steck teaches the positioning portion of the device being made as one piece with the body of the device (Figure 1).
Regarding claim 6, Steck does not teach the device being attached to the firearm using existing screws that hold the magazine to the main body of the rifle. Steck teaches the constraint portion is connected to the main body (Figure 1, 30) by a first arm (24).
Regarding claim 7, Steck does not teach the device being attached to the firearm using existing screws that hold the magazine to the main body of the rifle. Steck teaches the positioning portion is connected to the main body (Figure 1, 30) by a second arm (32).
Regarding claim 8, Steck does not teach the device being attached to the firearm using existing screws that hold the magazine to the main body of the rifle. Steck teaches the device has a stiffening portion (Figure 1, 22) the body is made of a single piece.
Regarding claim 9, Steck does not teach the device being attached to the firearm using existing screws that hold the magazine to the main body of the rifle. Steck teaches the device being constrained by two fastening members (Figure 1, 48, 50).
Regarding claim 11, Steck does not teach the device being attached to the firearm using existing screws that hold the magazine to the main body of the rifle. Steck teaches the device being a “C” shape where the positioning portion lies over a sliding breech and doesn’t connect to any other portion of the firearm (Figure 2).
Regarding claim 12, Steck does not teach the device being attached to the firearm using existing screws that hold the magazine to the main body of the rifle. Steck teaches the device being constrained by one or more screws (Col. 2, lines 51-54).
Regarding claim 13, Steck does not teach the device being attached to the firearm using existing screws that hold the magazine to the main body of the rifle. Steck teaches the device being constrained by two or more screws (Col. 2, lines 51-54).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Steck in view of Carcano and in further view of Makarov et al. (US 20220282945) hereinafter “Makarov”.
Regarding claim 2, Steck and Carcano teach all requirements except where the constraint elements are bushings. Makarov teaches using bushings to attach components of a firearm together with screws and threaded bushings (Paragraph 37).
The only difference between the claimed invention and the prior art is that the prior art
does not incorporate the use of bushings for the constraining device with the screws to hold the device in place. A person of ordinary skill in the art would have had the technological capabilities to incorporate both the bushings and screws to hold the device in place into a combined apparatus before the effective filing date of the claimed invention. No inventive effort would have been required. Furthermore, the resulting combined apparatus would yield predictable results. Even in the context of a combined apparatus, the features of the bushings of Makarov and the screws of Steck and Carcano would be expected to work as intended, with each element in the combined apparatus performing the same function as it did separately. No new functionality would arise from the combination. The functionality of the
combined apparatus would be the same as if one had used only the screws with the built in threads of Carcano to hold the device in place. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Steck and Carcano to incorporate the teachings of Makarov to yield the predictable result of a device with threaded bushings to hold it in place with screws.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Strahan (US 4418487), Sessions et al. (US 102883838).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOGAN W CAUDLE whose telephone number is (571)270-0481. The examiner can normally be reached Monday - Thursday 8 a.m. - 5 p.m. ET. Friday 8 a.m. - 12 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at (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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/Troy Chambers/Supervisory Patent Examiner, Art Unit 3641
/L.W.C./Examiner, Art Unit 3641
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