FN Herstal S.A. - [2025] APO 11

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
FN Herstal S.A. [2025] APO 11
Patent Application: 2019219078

Title:Trigger mechanism for firearm

Patent Applicant: FN Herstal S.A.

Delegate:Greg Powell

Decision Date: 9 April 2025

Hearing Date: Written submissions filed on 14 March 2025

Catchwords: PATENTS – section 45 – examiner’s objection – firearm trigger mechanism – novelty – inventive step – examiner’s objection is sustained – support – claims 3 and 4 not supported – time provided for further examination

Representation: Patent attorney for the applicant: Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2019219078

Title:Trigger mechanism for firearm

Patent Applicant: FN Herstal S.A.
Date of Decision: 9 April 2025
DECISION

Claims 1, 2, 6 and 7 lack novelty in light of US 5736667. The remaining claims arguably lack an inventive step. Claims 3 and 4 are not supported.
The applicant is invited to file a response in light of this decision.
Pursuant to sub-regulation 13.4(1)(g), the final date to gain acceptance is set at three (3) months from the date of this decision
REASONS FOR DECISION

Background

Patent application 2019219078 (the present application) was filed by FN Herstal S.A. (the applicant) on 7 February 2019 as a PCT application (PCT/EP2019/052995). The present application claims priority from an EP application, with the priority date being 9 February 2018.
The present application was filed after 15 April 2013. It is therefore governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. These amendments included the introduction of new s 49(1). Under this provision, I must accept the present application if satisfied on the balance of probabilities that it complies with the requirements of the Act. If I am not so satisfied, I can refuse the present application.
A first examination report was issued on 28 November 2023 raising objections in relation to s 40, novelty and inventive step. The applicant responded to the first examination report on 23 September 2024 by way of written submissions and proposed amendments to the description and claims. A second examination report issued on 21 October 2024 containing novelty and inventive step objections. A response was filed on 8 November 2024 with further submissions. On 13 November 2024 a third examination report issued containing objections with respect to novelty and inventive step. On 26 November 2024, the applicant requested to be heard. On 14 March 2025 the applicant filed written submissions (the applicant’s written submissions). I also note that the applicant filed a divisional application (2024266903) from the present application on the day after they requested a hearing on the present application.
Four amendments were proposed during examination. No objection was raised by the examiner to the allowability of the amendments. I do not see any immediate issues around allowability either. In this decision I am considering the specification as proposed to be amended by the statements of proposed amendments up to and including proposed amendment four filed on 23 September 2024. Wherever I refer to the specification, it is a reference to the specification as proposed to be amended.
Finally, while the final date for acceptance of the present application was 28 November 2024, the time for gaining acceptance is extended by 3 months from the date of the present decision (see reg 13.4(1)(g)), or longer if appropriate (see reg 13.4(3)).
The invention as described
The specification states that the invention:
“relates to a firing mechanism for a firearm, particularly an open-bolt automatic or semiautomatic firearm.”[1]
[1] Specification at [0001]
Generally, open-bolt weapons operate such that the bolt of the gun is held to the rear of the gun’s frame by a stop until the trigger is pulled which causes the stop to be retracted out of the path of the bolt, at which point the bolt moves forward to chamber and fire a round.
The specification states that:
“the principle of fire control for machine guns has changed very little since the MG42 developed in Germany during the second world war”.[2]
[2] Ibid at [0006]
The specification indicates that a release lever holds the stop out of the path of the forwardly moving part (which I will refer to as the “bolt”) for as long as the trigger is pressed. When the trigger is released the release lever returns into the path of the bolt, keeping the stop in the firing position until the bolt recoils. When the bolt recoils, it pushes the release lever rearward, and this releases the stop, and it moves into the bolt’s path. The bolt is then immobilised by the stop in the rearward position, under the pressure of the weapon’s recoil spring.
The specification notes that not all open-bolt weapons have a release-lever system, but, instead, the trigger controls the stop directly. That means that it is possible that the stop could be released while the bolt is moving forward, with the potential outcome of the stop not necessarily catching on the bolt with optimal contact, and with the bolt potentially moving at high speed. This could result in the wear on the stop being increased compared with that of a mechanism that does have a release lever. Excessive damage to the stop sear may compromise the safety and reliability of the weapon.
With respect to the safety of the system, the specification states that this consists of a movable pin that limits the movement of the stop when the weapon is in the “safe” position. As a consequence, the weapon cannot be re-cocked if the safety is on, because the stop is unable to retract out of the path of the bolt as it recoils. In addition, the safety cannot be engaged if the bolt is in a forward position because the release lever keeps the stop out of the way as long as the bolt has not been recoiled by hand.
In regard to semi-automatic operation of an open-bolt weapon, the specification notes that this can be achieved with a disconnector between the trigger and the stop. After the trigger is pressed the disconnector releases the stop after a single shot is fired to hold the bolt rearwardly. However, it is possible for the trigger to be pressed just enough to release the bolt, but not hard enough for the travel of the bolt to be fully completed, with the result that the bolt is not caught and the weapon fires a burst rather than a single shot.
The specification states that the present invention seeks to address at least one of the following problems:
·“allowing semiautomatic firing with an open-bolt machine gun design, while at the same time maintaining the release-lever function between the movement of the trigger and the engaging of the moving parts by the stop.
·Allowing the fire safety to be engaged whatever the condition of the weapon (and notably the position of the moving parts) and, once the safety is on, allowing the weapon to be re-cocked (allowing the moving parts to be moved rearward by means of the arming handle).
·Preserving the cease-firing mechanism with release lever whether this is in automatic-fire or semiautomatic-fire mode in order to limit wear on the stop sear and maintain the same level of reliability and safety throughout the service life of the product.
·And in addition, all of these operations need to be accomplished by means of a rotary fire selector, namely a fire selector similar to that of a conventional gun”,[3]
and then notes:
“The objective of these requirements is to allow a machine gun to have control ergonomics comparable with those of a gun without compromising its supporting capabilities.”[4]
[3] Ibid at [0022]
[4] See ibid
The trigger device of the invention is shown in figure 2e:
In this mechanism rotation of selector 24 between safe (as shown in the figure), semi-automatic and automatic modes moves slider 20 along the side of the mechanism to positions which allow various lugs to move (or not) as the trigger 13 is pressed. As a general statement on operation, the bolt is initially held in a non-firing position by the raised buffer 9 of the stop 5. When the trigger is pressed, the stop 5 rotates and the buffer 9 moves below the bolt’s path of travel, allowing the bolt to move forward to chamber and fire an ammunition round. Firing ceases when the buffer 9 is moved back up into the bolt’s path of travel to engage and immobilise the bolt.
It is noted that, in the safe mode shown in figure 2e, safety element 1 is lifted, thereby immobilising the buffer 9 of the stop 5 in the raised position.
Figures 4 and 5 highlight operation of the invention when the selector 24 is in the semi-automatic mode:
Figure 4 depicts a cross section of the mechanism just when the trigger is pressed, and the bolt 2 has been released and has moved forward. In the mechanism trigger 13 is coupled to a rocker 12 via a disconnector 11 which engages a lug 30 of the trigger 13 and is rotatable about a pin 18 fixed to the rocker 12. In operation, the trigger 13 is pressed, rotating about a pin 17 to drive the rocker 12 such that rocker control lug 19 pushes on the stop 5. This rotates the stop 5, lowering the buffer 9 out of contact with the bolt, leading to the release of the bolt 2.
As the stop 5 rotates it drives the release lever 10 upward such that the lever’s pawl 15 catches on the release-lever lug 31 on the rocker 12, thereby allowing the stop 5 to be kept out of the path of the bolt as it moves forward.
In semi-automatic mode, a lever 35 of the disconnector sear 14 is positioned between the rocker 12 and the disconnector 11 so that when the bolt 2 presses on the cam 36 of the disconnector sear 14, the lever 35 rotates the disconnector 11 so that it disengages from the lug 30 of the trigger blade 13. Disengagement of the disconnector causes the rocker 12 to return to its rest position, placing the release lever 10 in the path of the moving parts 2, since the pawl 15 remains engaged with the lug 31 on the rocker 12. At the same time, even though the release lever is raised, the fact that the stop is located in a slot within the release lever 10 prevents the stop 5 from returning to its initial, blocking position. This situation is shown in figure 5.
The specification then states that:
“[w]hen the trigger blade is released, the stop 5 is held in position out of the path of the moving parts by the release lever 10, until the rearward movement of the moving parts 2 which, in passing, disengage the release lever 10 from the rocker 12.”[5]
[5] Specification at [0100]
This disengagement causes the release lever 10 to drop thereby allowing the stop 5 to return to the position in which the buffer 9 immobilises the bolt.
The mechanism in automatic mode is shown in figure 7a:
It can be seen that, unlike the semi-automatic mode, the lever 35 of the disconnector sear 14 moves in behind the disconnector lever 11 and keeps the disconnector in the coupled position, thereby holding the rocker 12 and, as a consequence, the stop 5 in a firing position until the trigger 13 is released.
Invention as claimed
The specification ends with 13 claims. The entire claim set is set out in the Annex to this decision. Independent claim 1 in full is:
An open-bolt firearm comprising moving parts which, in use, move from a rearward position to a forward position when a round is fired and from the forward position to the rearward position during reload, said firearm comprising
a trigger device comprising a stop for halting the forward movement of moving parts,
a release lever for allowing lifting of the stop during a recoil movement of the moving parts,
a rocker for actuating the stop and the release lever at a start of firing and at an end of firing, and
a trigger blade connected to the rocker by a disconnector able to pivot from a position of mechanical coupling between the trigger blade and the rocker to a position of mechanical uncoupling between the trigger blade and the rocker,
the rocker pivoting from a firing position to a rest position when the disconnector pivots from the position of mechanical coupling to the position of mechanical uncoupling, so as to prevent a next round from being fired when the trigger blade is kept in the firing position.
As is clear, the claim is defining the operation of firing mechanism in a semi-automatic mode.
US 5736667 (D1)
The outstanding objection singularly focuses on D1. As such, I will set out my understanding of its disclosure.
D1 disclose a weapon having three modes of operation – safe, semi-automatic and automatic. Figure 2 shows an exploded view of the parts which comprise the weapon:
As a high-level description, the weapon discharges a round when the trigger 37 is pressed which results in the hammer 61 holding the firing pin 62, which is supported by the bolt 60, moving forward to strike a chambered round. Prior to firing, the hammer 61 is held in a recoil position by sear 26 which is raised into the path of the bolt 60. When the trigger is pressed balance 27 is pivoted, retracting sear 26 from the path of travel of the hammer 61, allowing the firing pin to strike the round. In semi-automatic mode, after a single shot the balance 27, under the influence of a reset spring 28, pivots back and sear 26 moves up to retain the hammer 61, even if the trigger 37 remains pressed. In automatic mode, the balance 27 remains pivoted and the sear 26 retracted for as long as the trigger 37 is pressed.
Figures 10A–10C show the trigger action for safe, semi-automatic and automatics modes, respectively:
Focussing on figure 10B, trigger 37 is temporarily connected to balance 27 via actuator tooth 34. In semi-automatic mode, when trigger 37 is pressed, balance 27 is pivoted via actuator tooth 34, retracting the sear 26 and allowing the hammer 61 to move and strike the round. The actuator tooth 34 contacts the mode selector 19 which causes the tooth 34 to disconnect from the balance 27. This results in the balance 27 being returned to its original position via the action of the reset spring 28, thereby raising the sear 26 to retain the hammer 61.
Figures 12A–12C show the relative positions of the trigger 37, balance 27 and sear 26 at various stages of the firing cycle in semi-automatic mode:
Examination
In the first report of 28 November 2023, the examiner raised lack of clarity, as well as lack of novelty and inventive step in light of D1 and US 4697495 (D2).
The applicant responded with arguments and amendments to the description and claims. The applicant argued that D1 was primarily concerned by a closed-breech firearm and, although it did mention open-breech weapons, did not sufficiently disclose an open-breech firearm like the present invention. The applicant also argued that D2 did not disclose several features of the claims.
In the second report of 21 October 2024, the examiner maintained the lack of novelty and inventive step in light of D1. The examiner argued that D1 provided an enabling disclosure, providing enough information to allow the person skilled in the art to put the invention into practice, without the need for further experiments.
The applicant responded arguing that D1 did not disclose “a release lever for allowing lifting of the stop during a recoil movement of the moving parts” as required by the claim. The applicant argued that, in particular, D1 disclosed a spring which raised the stop at all times, while the release lever of the invention allowed the stop to be raised when the moving parts moved backwards. Moreover, in the applicant’s opinion, the spring of D1 did not “release” interlocked parts and, therefore, could not be a “release lever”.
The novelty and inventive step objection raised by the examiner in their third report of 13 November 2024 was as follows (bolding, underlining and italics in original):
“Objection 5 is maintained. The invention defined by independent claim 1 is not novel and lacks an inventive step in light of D1.
In the letter of 08 November 2024, the applicant primarily argues that D1 does not disclose “a release lever for allowing lifting of the stop during a recoil movement of the moving parts”.
It is subsequently suggested that “the spring 28 of D1 raises the stopper 26 in all circumstances, whether the moving parts are moving forwards or backwards, whereas the claimed release lever allows the stop to be raised when the moving parts move backwards. In other words and in the context of the present specification, whilst the phrasing of current claim 1 does not explicitly exclude the release from allowing the stop to be raised during forward movement of the moving parts, the very fact that it is specified that the stop is allowed to be raised during the recoil movement clearly means that it is only during the rearward movement that this raising is allowed.”.
This argument is unpersuasive. As per the applicants understanding above, if the balance reset spring (28) raises the stopper in all circumstances, it therefore does encompass the scope of allowing the lifting of the stop during the recoil movement, as required by claim 1. As per the applicants further understanding, the phrasing of claim 1 does not explicitly exclude the release from allowing the stop to be raised during a forward movement.
For the purpose of accuracy, D1 at column 11, lines 26 to 33 explicitly discloses the following:
“The readied weapon can be seen in cross-section in FIG. 12-1. On pressing trigger 37. toe actuator tooth 34, produces the pivoting of balance 27. which depresses sear 26, freeing toe hammer 61. and producing a discharge as is seen in FIG. 12-A. Simultaneously tooth 34, contacts selector 19 retracting and freeing balance 27. Balance 27 then returns to its initial position and again lifts toe sear 26 by means of its spring 28.”
That is, the balance reset spring (28) explicitly allows for lifting of the stop (26) during a recoil movement of the moving parts.
The applicant further suggests that the term “release lever” is incompatible with the spring 28 of D1.
In response, it is submitted that the term “release lever” is construed as a rigid piece acted upon at different points by forces in order to perform the intended releasing function. The balance reset spring (28) of D1 does this.
Objection 6 is maintained. The applicant has not provided any further discussion regarding the appended claims.”
Principles of construction
The principles underpinning construction are well-established. As noted by Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[6]
[6] [2013] FCA 214; 100 IPR 451 at [139].
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd[7]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. … While the claims define the monopoly claimed in the words of the patentee’s choosing, the specification should be read as a whole … It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”
[7] [2009] FCAFC 70; 81 IPR 228 at 254, [118]-[120].
“release lever”
In their submissions the applicant stated that the Macquarie Dictionary relevantly defines “lever” as:
“a bar or rigid piece acted upon at different points by two forces, as a voluntarily applied force (the power) and a resisting force (the weight), which generally tend to rotate it in opposite directions about a fixed axis or support (the fulcrum).”[8] (italics in original)
[8] type="1">
In my opinion, this is an appropriate definition to proceed with. While in their submission, having provided the definition for “lever’, the applicant then stated that:
“[r]ead in the context of the specification as filed, the term “release lever” defines a rigid piece acted upon at different points by forces from the moving parts and the rocker, causing the lever to rotate about a fixed axis to allow for lifting of the stop during a recoil movement of the moving parts”[9] (my emphasis),
[9] Applicant’s written submissions at [22]
I note that the release lever of the claims is not defined as performing the releasing function. As such, in the context in which the term appears, “release lever” in the claims can be construed as a bar acted upon at different points by forces that is, in some way, associated with the action of releasing the stop during a recoil movement of the moving parts.
It is observed that the definition for “lever” above also describes rotation in opposite directions about a fixed axis, and this can be said to be the case for the described embodiment of the application. However, I note that this condition is qualified by the term “generally”. As such, I do not take the definition of “lever” to exclude levers that do not behave in the manner set out in the definition when forces are applied to it.
“allow”
The applicant also provided submissions on the construction of “allow”, noting that the Macquarie Dictionary defined “allow” as:
“to grant permission to or for; permit”.[10]
They then state that:
“[r]ead in the context of the specification as filed, the phrase “allowing lifting of the stop during a recoil movement of the moving parts” specifies that the stop is permitted to be raised only during the recoil movement of the moving parts.”[11]
[10] Applicant’s written submissions at [24]
I believe that such a meaning is too restrictive. While it can be said that the claim is seeking to define that the action of permitting the lifting of the stop happens under certain conditions that exist at a certain time, I fail to see how the words introduce some sort of temporal element such that the permitting is done only under those conditions.
Novelty
Novelty Legal Principles
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”[12]
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed.[13]
[12] [1977] HCA 19 at [20]; 137 CLR 228 at 235
[13] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] 91 ALR 513 at 517; 16 IPR 545
Australian courts have often identified the principles of the UK Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited[14] as the criteria for determining anticipation by a prior publication. Most relevantly, to anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented.
[14] [1972] RPC 457 at 485 – 486
Consideration
I do not think it can be disputed that D1 discloses a firearm in which moving parts (60, 61) move from a rearward position (figure 12A) to a forward position (figure 12B) when a round is fired and from the forward position to the rearward position (figure 12C) during reload. In D1 the trigger device has a stop (26) which holds the moving parts in a reward position (Figure 12A) prior to firing. Referring to figure 10B, a rocker (27) rotates and moves the stop downwardly when the trigger blade (37) is pressed as it is mechanically coupled to the trigger blade by a disconnector (34). At the point where the rocker has rotated enough to lower the stop (initiating firing), the disconnector contacts the mode selector (19). This action rotates the disconnector out of contact with the rocker, freeing the rocker to rotate back to its pre-firing position. As a result, the stop is raised to hold the moving parts in their rearward positions. This prevents another round from being fired, even when the trigger blade is kept in the firing position.
The applicant disputed that the firearm of D1 was an open-breech type. They noted that figure 13D of D1 showed the ammunition loaded before firing, with pressure on the trigger releasing only the firing pin. They submitted that this corresponded to a “closed breech” operation.
Figure 13D of D1 is as follows:
Even accepting that this is a closed breech arrangement, D1 clearly talks of slight variations that are made when applying the trigger mechanism of D1 to an open-breech firearm. It states:
“Accordingly sear 26 holds or releases the hammer 61 in this example, or a complete bolt in the open bolt version (open bolt blowback)”[15] (emphasis added),
and
“Two springs 32, 33, lift the intervening member 30 to project over the barrel holder in order to retain the hammer. A pin 31, limits the movement of the intervening member, preventing it from leaving. It is noted that this intervening member is not required in weapons of simple backward motion provided with open bolt”.[16] (emphasis added)
[15] D1 at column 10 lines 16–19
[16] Ibid at column 10 lines 36–38
The applicant submitted that these passages did not have the requisite level of disclosure required by the case law. They stated that:
“the transformation of the firearm disclosed in D1 into a firearm operating with an ‘open breech’ is not sufficiently disclosed in D1. Indeed, such transformation is made even more complex by the absence of any information in D1 concerning the management of the trigger-pull increase (the effort required by the operator to trigger the shot), as well as the arrangements required on the breech and the percussion system as a whole to enable the breech to be stopped at the rear of the magazine well, while the stop of D1 is located at the front of the system.”[17]
[17] Applicant’s written submissions at [38]
I do not agree with the applicant. I do not see anything in the claim that goes to any management of the trigger-pull increase. Moreover, I cannot see why the PSA would not know what arrangement was required. The cited passage indicates the end goal; enabling the breech to be stopped at the rear of the magazine well, and notes that the sear is required to release the complete bolt and does not need the intervening member shown in D1.
As is seen from the examiner’s last report, the next issue in dispute is whether the reset spring (28) of D1 could be said to be equivalent to the release lever of the claim. According to the applicant, the reset spring of D1 was not:
“a rigid piece which is caused to rotate by forces from engaged parts to allow for lifting of the stop during a recoil movement of the moving parts”.[18]
[18] Ibid at [41]
Noting that Macquarie Dictionary defined “spring” as “an elastic contrivance or body, as a strip or wire of steel coiled spirally, which recovers its shape after being compressed, bent, etc.”[19], the applicant submitted that the reset spring was structurally distinct from the release lever.
[19] >
Clearly helical springs, which operate by providing a resisting force when they are lengthened, could be not considered a lever as I have construed that term. However, I think it can be said that certain forms of springs can be considered to have levers. Torsion springs are one example. These springs are commonly found in clothes pegs and mousetraps, and the reset spring of D1 is of the same form. Clearly, the arms of the reset spring are bars that have forces applied to them such that the end(s) can rotate. This rotation operates the rocker to raise the stop during the recoil movement of the moving parts. As such, the feature of a release lever (as I have construed that term) is disclosed in D1.
Finally, the applicant submitted that D1 was not relevant because:
“the balance reset spring 28 of D1 raises the sear 26 irrespective of whether the moving parts are moving forwards or backwards. In contrast, the release lever of the invention performs a selective function to allow raising of the stop only during the recoil movement of the moving parts.”[20]
[20] Applicant’s written submissions at [44]
I disagree with the applicant.
It is true that, as described in the application, the lever rotates to raise the stop only during the recoil movement of the moving parts. However, the language of the claim does not restrict the raising of the stop to occurring only during rearward movement. If that were to be the case, I would have expected to see the word “only”, or something similar, in the claims. At present, this limitation would only be part of the claim if glosses from other parts of the specification are imported. This is not a legitimate approach (see Pfizer Overseas Pharmaceuticals v Eli Lilly and Company[21]).
[21] [2005] FCAFC 224 at [247] and [249]
For completeness, I note that the applicant’s position of limiting lifting of the stop as occurring only during recoil was predicated on their construction of “allow”. As I have found at [43], that construction is not correct. Any limitation of when the lifting is permitted or made possible is not in the claim.
In my opinion, claim 1 lacks novelty in light of D1.
Dependant claims
With respect to claims 2-13, the examiner stated in their first report that these claims were not considered to provide a patentable contribution over the teachings of the cited prior art because the features were either disclosed by D1, represented common general knowledge in the art, or were mere design choices which could not contribute to providing novelty and/or an inventive step. The examiner gave the example that claim 2 was disclosed in D1 at figure 12B, which shows the disconnector contacting the mode selector, being equivalent to the buffer of this claim. This objection was maintained in the second report. In the third report the examiner maintained the objected and noted:
“[t]he applicant has not provided any further discussion regarding the appended claims.”
The applicant’s written submissions also have no discussion of the dependent claims.
Nevertheless, assessing the novelty of the dependent claims, I find the following claims are disclosed in D1:
Claim 2 – as noted above, the mode selector of D1 comes into contact with the disconnector, releasing the trigger and the rocker.
Claim 6 – as noted at [25]–[27] above, the mode selector can select either semiautomatic-fire function or an automatic-fire function.
Claim 7 – as seen in figures 10B and 10C at [28] above, the position the mode selector is put in for the semiautomatic-fire or automatic-fire mode alters whether the disconnector bears against the rocker. As seen in figure 10C, when the automatic-fire mode is selected the disconnector does not touch the mode selector and, as such, cannot disconnect the trigger from the rocker.
As such, claims 2, 6 and 7 lack novelty in light of D1.
I cannot see any disclosure of all of the features of claims 3–5 and 8–13 in D1. As such, they are novel.
When it comes to inventive step, however, the lack of submissions from the applicant on the dependent claims is somewhat unfortunate. I question whether I have a basis to set aside the objection against the dependent claims. Prima facie, I believe it is appropriate to proceed with further examination following the examiner’s observations.
That being said, if the claim was justifiable, I do not think the examiner’s objection against claim 3 could be sustained. However, as set out below, in my opinion claim 3 is not supported.
Nevertheless, just to explain my reasoning, I note that claim 3 defines the disconnector unlinking the trigger and rocker upon movement of the moving parts. This is not seen in D1. As noted in my discussion of D1 above, the uncoupling of the trigger 37 and the rocker 27 occurs when the disconnector 34 contacts the selector 19. The disconnection process in D1 does not happen upon movement of the hammer/bolt pieces 60, 61, but operates quite differently. If claim 3 were supported, it could have formed the basis of an acceptable claim.
Further observations on support
Claims 3 and 4
Further to my observations above, in my opinion claims 3 and 4 lack support because I consider that they are inconsistent with the described invention.
In this regard I note what was said in Calix Limited v Grenof Pty Ltd:
“Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed. See, for example, the invention described in the relevant priority document and the invention claimed in AstraZeneca at [254]-[255] which were characterised by the Full Court of the Federal Court as ‘fundamentally different’ inventions. It is difficult to see how a claim to an invention that is fundamentally different from that which is disclosed in the specification could be ‘supported by matter disclosed’ in accordance with s 40(3) of the Act.”[22]
[22] [2023] FCA 378 at [128]
Clearly, notwithstanding technical contributions, a claim may lack support when, by including a feature not disclosed in the specification, or omitting a feature that is disclosed, it defines an invention that is materially different to what is described in the body of the specification.
Claim 3 defines that:
“the disconnector is configured such that the movement of the moving parts disconnects the mechanical coupling between the rocker and the trigger blade.”
That is, there is an interaction that occurs when the moving parts move that cause the disconnector to uncouple the trigger and the rocker.
In the present case, as described, the disconnector is not configured such that the movement of the moving parts disconnects the mechanical coupling between the rocker and the trigger blade. The disconnector simply links. That linkage is not broken because of any characteristic of the disconnector. It is broken because the movement of the moving parts causes the movement of a lever to contact the disconnector causing it to unlink the trigger and rocker. The words of the claim point to a more-direct interaction that is not described. Claim 3 is not supported.
Another, possibly more contentious, support argument can be made with respect to claim 3 given that the claim requires the disconnector to be configured to disconnect “the mechanical coupling between the rocker and the trigger blade”. This can be construed to be defining that all mechanical coupling is disconnected when the moving parts move. However, as is clear from my discussion of the invention previously, the trigger and the rocker share a common pivot pin 17 and are, thus, mechanically coupled at this pin. This pin coupling is never disconnected. Consequently, claim 3 can be said to be defining something that does not occur
Claim 4 defines that:
“the moving parts comprise a cam on their lower surface, the cam being configured to disconnect the mechanical coupling between the rocker and the trigger blade during the forward movement of the moving parts.”
In a similar way to claim 3, claim 4 is inconsistent with the description because, as described, the cam on the lower surface of the moving parts is not configured to disconnect the mechanical coupling between the rocker and the trigger blade during the forward movement of the moving parts. The cam does not interact with the mechanical coupling to create disconnection. Disconnection does not occur because of any configuration of the cam. As with claim 3, the words of claim 4 point to a more-direct interaction that is not described. Claim 4 is not supported.
As an overall observation that arises from these findings, it can be said that the claims should include the feature of the disconnector sear as it is an essential element to the disconnection operation. It is the disconnector sear that has components that are contacted by the cam of the moving parts, and components that contact the disconnector to disconnect the mechanical coupling between the rocker and the trigger blade.
Other potential s40 issues
Support
While not yet an issue, I also draw attention to a support issue that may arise should the claim be amended in an attempt to limit the construction of “allowing” in the claims to align with that set out by the applicant in their submissions. Specifically, the claims define that it is the release lever that “allows” the lifting of the stop. However, in the specification the only mechanism disclosed[23] that results in the release lever allowing lifting of the stop only during recoil requires that the release lever pawl be engaged with the release lever lug on the rocker until the moving parts cause disengagement of the release lever pawl from the release lever lug. As such, these would seem to be essential features. However, they are not claimed. As such, the claims may be found to lack support.
[23] Specification at [0100]
Full description
Moreover, the description does not appear fully describe what causes the release-lever pawl to disengage. The total description of this procedure is what I quoted at [20] above. Nothing further is said. It may well be that some cam or projection from the moving parts strikes the top of the release lever 10, but it is not quite clear which part of the moving part is involved, exactly when this contact (if that is what happens) occurs during recoil, or what results from this contact. It may well be that such questions would be readily answered by the PSA, but I have nothing before me that drives me to that conclusion. As such, there may well be a lack of description.
Conclusion
Claims 1, 2, 6 and 7 lack novelty in light of US 5736667. Given any lack of submissions on the point, the remaining claims arguably lack an inventive step. Moreover, claims 3 and 4 are not supported.
These issues can be resolved. As such it is appropriate to continue examination in light of my decision, and I invite the applicant to file a further response. In line with reg 13.4(1)(g), the time for gaining acceptance is extended by 3 months from the date of this decision.
Regarding the potential support and full description issues that I have indicated may arise, I make no final decision, and I leave the issues as an exercise for the applicant and examiner in any further examination that may occur.
I also observe that my decision may have some impact on the examination of the divisional application filed by the applicant.
Greg Powell
Delegate of the Commissioner of Patents
Annex
1.An open-bolt firearm comprising moving parts which, in use, move from a rearward position to a forward position when a round is fired and from the forward position to the rearward position during reload, said firearm comprising a trigger device comprising a stop for halting the forward movement of moving parts, a release lever for allowing lifting of the stop during a recoil movement of the moving parts, a rocker for actuating the stop and the release lever at a start of firing and at an end of firing, and a trigger blade connected to the rocker by a disconnector able to pivot from a position of mechanical coupling between the trigger blade and the rocker to a position of mechanical uncoupling between the trigger blade and the rocker, the rocker pivoting from a firing position to a rest position when the disconnector pivots from the position of mechanical coupling to the position of mechanical uncoupling, so as to prevent a next round from being fired when the trigger blade is kept in the firing position.
2.The firearm as claimed in claim 1, wherein a disconnection between the trigger blade and the rocker is obtained by a buffer in the firearm, which buffer is positioned in the path of the disconnector.
3.The firearm as claimed in claim 1, wherein the disconnector is configured such that the movement of the moving parts disconnects the mechanical coupling between the rocker and the trigger blade.
4.The firearm as claimed in claim 3, wherein the moving parts comprise a cam on their lower surface, the cam being configured to disconnect the mechanical coupling between the rocker and the trigger blade during the forward movement of the moving parts.
5.The firearm as claimed in claim 3, comprising a disconnector sear able to occupy a rest position or a disconnection position, said disconnector sear comprising a disconnection lever arranged, when in the disconnection position, between the rocker and the disconnector and a disconnection cam controlled by the movement of the moving parts, the disconnector disconnecting the mechanical connection between the rocker and the trigger blade when a cam under the moving parts moves the disconnection cam.
6.The firearm as claimed in claim 1, comprising a fire selector enabling selection between a semiautomatic-fire function and an automatic-fire function.
7.The firearm as claimed in claim 6, wherein a selection of the semiautomatic-fire or automatic-fire mode is performed by altering a point at which the disconnector bears against the trigger blade or the rocker so that the disconnector cannot disconnect the trigger blade from the rocker when the automatic-fire mode is selected.
8.The firearm as claimed in claim 6, wherein a selection of the semiautomatic-fire or automatic-fire mode is performed by moving a disconnector sear out of the path of the moving parts and out of the path of the disconnector so that the disconnector cannot disconnect the trigger blade from the rocker when the automatic-fire mode is selected.
9.The firearm as claimed in claim 6 further including a safety function allowing a re-cocking function when a safety is engaged, said safety function being performed by a safety element comprising an immobilizing surface allowing the stop to be immobilized in the position in which it halts the moving parts, said safety element bearing against a fixed part of the firearm and being able to be moved aside by the moving parts when the moving parts pass from a forward position to a rearward position.
10.The firearm as claimed in claim 9, wherein the function of selecting the semiautomatic-fire function and the function of selecting the safety function are performed by a same control mechanism.
11.The firearm as claimed in claim 10, wherein the control mechanism includes a rotary lever actuating a slider operating in translation and allowing activation or deactivation of the functions associated with semiautomatic-fire, automatic-fire and safety, so that three positions of the lever correspond to a safety position, to a semiautomatic-fire position, and to an automatic-fire position.
12.The firearm as claimed in claim 11, wherein the slider comprises a safety control slot in which there moves a safety control lug arranged on the safety element, a shape of said safety control slot configured so that when the selector lever is in the safety position, the safety element is able to move between a position of immobilizing the stop and a position of not immobilizing the stop, and when the lever is in another position, the safety element is in the position of not immobilizing the stop.
13.The firearm as claimed in claim 11, wherein the slider comprises a disconnector-sear control slot in which there moves a disconnector sear control lug arranged on a disconnector sear, a shape of said disconnector-sear control slot configured so that when the selector lever is in the semiautomatic position, the disconnector sear is able to move between a disconnection position and a rest position, and when the lever is in an automatic position, the disconnector sear is immobilized in the rest position, out of a path of the moving parts.