Ex Parte Boyer

Patent Trial and Appeal Board

Jan 31, 2013

10800403 (P.T.A.B. Jan. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/800,403 03/12/2004 Frank Boyer BOYER-PA-1 7143
7590 01/31/2013
OBERIKALER
C/O ROYAL W CRAIG
120 EAST BALTIMORE STREET
BALTIMORE, MD 21202
EXAMINER
JOHNSON, STEPHEN
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
01/31/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK BOYER
____________

Appeal 2010-010929
Application 10/800,403
Technology Center 3600
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claim 3. Claims 1, 2, and 4-10 have been
cancelled. Br. 2. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
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Claimed Subject Matter
Claim 3, reproduced below, is the sole claim on appeal.
3. A choke with integral wad stopper for use with
an existing shotgun, comprising:
a hollow tubular member having a coupling
at one end for concentrically securing said tubular
member to a shotgun, said tubular member being
defined by an internal channel having a stepwise
taper running away from the coupling end to
constrict shotgun pellets passing there through;
said stepwise taper being further defined by
a plurality of raised annular step-projections
spaced evenly along at least two-thirds a length of
said channel to retard and separate wadding from
behind said shotgun pellets while passing through
said tubular member, wherein each of said
plurality of raised annular step-projections
comprises a sharp edge disposed toward said
coupling end of said tubular member.
Rejections
Claim 3 is rejected under: (I) 35 U.S.C. § 112, second paragraph, as
indefinite; 35 U.S.C. § 112, first paragraph, as failing to comply with (II) the
written description requirement and (III) the enablement requirement; (IV)
35 U.S.C. § 102(b) as anticipated by Dow1; (V) 35 U.S.C. § 103(a) as
unpatentable over Janecek2 and Catron3; (VI) under 35 U.S.C. § 103(a) as
unpatentable over Briley4 and Janecek; and (VII) under 35 U.S.C. § 102(b)
as anticipated by Linde5.

1 US 2,348,114, iss. May 2, 1944.
2 US 2,315,207, iss. Mar. 30, 1943.
3 US 2,372,315, iss. Mar. 27, 1945.
4 US 4,386,477, iss. Jun. 7, 1983.
5 US 4,058,925, iss. Nov. 22, 1977.
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ANALYSIS
Rejections under 35 U.S.C. § 112, first and second paragraphs
Rejection I - Indefiniteness
The Examiner rejects claim 3 because the “use of the phrase 'a
shotgun' [in line 3] makes the claim indefinite as to whether the previously
claimed 'shotgun' [in the preamble of the claim] . . . or some other shotgun is
intended.” Ans. 3. The Appellant correctly contends that the preamble
“connotes that the present invention may be used with any existing shotgun”
and “it is inapposite whether 'the shotgun' of the preamble is the same
shotgun of line 3.” Br. 9-10.
A claim is not indefinite because it is not clear what the claim is
intended to recite. A claim is indefinite when those skilled in the art would
not understand what is claimed when the claim is read in light of the
specification. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). In this case, as pointed out
by the Appellant, the term “a shotgun” in line 3 of the claim may or may not
be the same shotgun referred to in the preamble of the claim. This is a
matter of breadth, not indefiniteness. See In re Gardner, 427 F.2d 786, 788
(CCPA 1970). Thus, the Examiner’s rejection of claim 3 under 35 U.S.C.
§ 112, second paragraph, is not sustained.
Rejection II – Written Description
The Examiner finds that “said stepwise taper being further defined by
a plurality of raised annular step-projections spaced evenly along at least
two-thirds a length of said channel,” as recited in claim 3, fails to comply
with the written description requirement because the “subject matter . . . was
not described in the specification in such a way as to reasonably convey to
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one skilled in the relevant art that the inventor(s), at the time the application
was filed, had possession of the claimed invention.” Ans. 3-4. See Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). See also
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007) (“When no such
description can be found in the specification, the only thing the PTO can
reasonably be expected to do is to point out its nonexistence.”). In this case,
the Examiner finds that “'at least 2/3 a length' includes 2/3[rds] and longer
lengths up to a full length of the channel,” which is “unsupported by the
application as originally filed.” Ans. 7 (citing Spec. 7, ll. 1-3).
The Appellant contends that “a plurality of raised annular step-
projections spaced evenly along at least two-thirds a length of said channel,”
as recited in claim 3, is amply supported since the figures clearly show and
Specification describes “a plurality of raised annular step-projections spaced
evenly along 'approximately' two-thirds a length of said channel.” See Br.
10. However, the claimed subject matter is broader than the Appellant’s
proffered support. Although the Specification discloses “a fifth step 30e is
located approximately 1 and 7/10 inches inside the input end” and choke 2 is
approximately 3 inches in length (Spec. 6, 7), which is indeed approximately
two-thirds a length of said channel, the claimed subject matter includes a
plurality of raised annular step-projections spaced evenly along a range that
extends from two-thirds the length of the channel to the entire length of the
channel. See Ans. 7. The Appellant’s proffered support does not account
for the scenario where a plurality of raised annular step-projections are
spaced evenly along the entire length of the channel. See Id. The
Specification as originally filed does not indicate possession of a range of
lengths along which the plurality of raised annular step-projections are
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evenly spaced as opposed to possession of a single length coincident with
the lower bound of the range added to claim 3 by amendment.
Accordingly, the originally filed written description does not
reasonably convey to one skilled in the relevant art that the Appellant’s had
possession of the claimed invention. Thus, we sustain the Examiner’s
rejection of claim 3 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Rejection III - Enablement
The Examiner determines that “said stepwise taper being further
defined by a plurality of raised annular step-projections spaced evenly along
at least two-thirds a length of said channel,” as recited in claim 3, fails to
comply with the enablement requirement because the originally filed written
description “only has an enabling support for 'through approximately 2/3[rds]
the length of the choke [, i.e., channel.]'” See Ans. 4; In re Marzocchi, 439
F.2d 220, 224 (CCPA 1971) (“it is incumbent upon the Patent Office . . . to
explain why it doubts the truth or accuracy of any statement in a supporting
disclosure and to back up assertions of its own with acceptable evidence or
reasoning which is inconsistent with the contested statement”).
In this case, whether or not the plurality of raised annular step-
projections are spaced evenly along approximately two-thirds the length of
the channel or at least two-thirds the length of the channel would not affect
whether or not one of ordinary skill in the relevant art would be able to make
and/or use the invention. In making the evenly spaced plurality of raised
annular step-projections there is little difference between making a shotgun
choke with raised annular step-projections for approximately two-thirds the
length of a channel or the entire length of a channel. In using the evenly
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spaced plurality of raised annular step-projections the choke would function
as a wad stopper and constrict shotgun pellets passing through the internal
chamber regardless of whether the plurality of raised annular projections is
evenly spaced between two-thirds the length or the entire length of the
internal channel.
Thus, we cannot sustain the Examiner’s rejection of claim 3 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
Rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a)
Rejection VI -Obviousness over Briley and Janecek
The Appellant acknowledges that Briley’s device is a shotgun choke.
Br. 8. In fact, Briley’s patent is entitled “shotgun choke modifier and
method.” The Examiner finds that Briley discloses a choke including a
hollow tubular member with an internal taper 10 and a coupling having an
external series of screw threads 12. Ans. 5. Indeed, Briley’s choke tube 10
is threaded 12, 34 into the counter bore 30 of shotgun barrel 18; the internal
surface of the choke tube 10 tapers inwardly from its inner end 38 to its
outer end as evidenced by angle B which forms a constriction for changing
the pattern of pellets leaving the barrel. Briley, col. 1, ll. 14-17, col. 5, ll.
14-18, 47-51, fig. 6.
The Examiner also finds that Briley does not disclose, but that
Janecek does disclose, “a plurality of evenly spaced steps.” Ans. 5. The
Examiner concludes that “[i]t would have been obvious to a person of
ordinary skill in this art at the time of the invention to apply the teachings of
Janecek . . . to the Briley choke and have a choke whose taper includes
evenly spaced steps.” Ans. 6. The Examiner explains that Janecek’s Figures
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2, 4, 7, and 9 depict various alternative firearm attachments encouraging the
substitution one internal surface arrangement for another and that result this
modification is predictable. See Ans. 5-6, 12.
The Appellant contends that Briley lacks a wad stopping feature and
further, that the combined teachings of Briley and Janecek would not have
resulted in “a choke with an integral wad stopper” as recited in claim 3. Br.
8. The Examiner responds that “the tapered section of Briley would
certainly act to constrict the wad as it passed through. Whether or not it
acted to stop the wad would depend upon the material and veloctity [sic] of
the wad as it passed through the tapered section of Briley.” Ans. 12. The
Examiner also explains that Janecek’s step like knife edges 5 combined with
Briley’s tapered section would further function as an internal wad stopper.
See id.
The Appellant contends the Janecek is non-analogous art because it is
not reasonably pertinent to the particular problem with which the inventor is
involved. Br. 7, 8. The Appellant asserts that “[t]he particular problem
pursued in the present inventor [sic] is the separation of wad from shot (wad
stopper), plus the constriction of the shot pattern of shotgun pellets (choke),
in a combined format.” Br. 7. Additionally, the Appellant asserts that
Janecek discloses a single bullet size reducer which one would not look to as
a wad stopper, a choke, or a combination thereof. Id. In response the
Examiner reasons that “Janecek[’s device] is intended to separate a carrier
portion from a projectile portion in this analogous art setting (see page 2,
col. 1, lines 50-55 of Janecek)” and “[a]s such the Janecek device would
separate the wad or carrier portion of the Briley shotgun shell from the
projectile or shot portion of the Briley shotgun shell.” Ans. 12.
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“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay, 966
F.2d 656, 658-659 (Fed. Cir. 1992). First, for the reasons provided by the
Examiner, Janecek’s device is in the same field of endeavor, i.e., it includes
slowing down a wad so that it will not follow behind a shot (see Spec. 1, ll.
15-17). Second, Janecek’s device is reasonably pertinent to the particular
problem addressed by the inventor because, as discussed above, Janecek’s
device may function as a wad stopper and logically it would have
commended itself to an inventor’s attention in considering his problem. See
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
The Appellant contends that “there is no motivation, suggestion or
teaching of the desirability of making the combination for Appellant’s
purpose, and one skilled in the art simply would not make the combination.”
Br. 8. However, the Appellant does not explain how the Examiner’s
conclusion of obviousness, as discussed above, lacks rational underpinning.
The Appellant contends that the combined teachings of Briley and
Janecek would not have resulted in “raised annular step-projections” because
Janecek only has knife edged rings but no stepwise taper. Br. 8-9.
However, the Appellant does not offer an explanation why, nor can we
ascertain why, Janecek’s knife edged rings 5 do not correspond to the
“raised annular step-projections” as called for by claim 3.
Thus, the rejection of claim 3 as unpatentable over Briley and Janecek
is sustained.
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Rejections IV, V, and VII
Our affirmance of the rejection of claim 3 on one prior art ground
specified by the Examiner, namely, under § 103(a) as unpatentable over
Briley and Janecek constitutes a general affirmance of the decision of the
Examiner on this claim. 37 C.F.R. § 41.50(a). We do not separately address
the rejections of claim 3 under (Rejection IV) 35 U.S.C. § 102(b) as
anticipated by Dow, (Rejection V) 35 U.S.C. § 103(a) as unpatentable over
Janecek and Catron, and (Rejection VII) under 35 U.S.C. § 102(b) as
anticipated by Linde.

DECISION
The decision of the Examiner to reject claim 3 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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