Ex Parte HAMMER et al

Patent Trial and Appeal BoardApr 19, 2016

12976434 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/976,434 12/22/2010 24131 7590 04/21/2016 LERNER GREENBERG STEMER LLP PO BOX 2480 HOLLYWOOD, FL 33022-2480 FIRST NAMED INVENTOR HELMUT HAMMER 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 ATTORNEY DOCKET NO. CONFIRMATION NO. DSC-BP-0274 7457 EXAMINER CLEMENT, MICHELLE RENEE ART UNIT PAPER NUMBER 3641 NOTIFICATION DATE DELIVERY MODE 04/21/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): boxoa@patentusa.com docket@patentusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HELMUT HAMMER and AXEL PFERSMANN Appeal 2014-004601 Application 12/976,434 1 Technology Center 3600 Before STEFAN STAICOVICI, LEE L. STEPINA, and AMANDA F. WIEKER, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Helmut Hammer and Axel Pfersmann (Appellants) appeal under 3 5 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-7, 9- 11, and 15. 2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). According to Appellants, the real party in interest is Diehl BGT Defence GmbH & Co. KG. Br. 1 (filed Feb. 27, 2013). 2 Claim 16-18 are allowed by the Examiner and claims 8 and 12-14 are objected to by the Examiner as being dependent upon a rejected base claim and otherwise indicated as being allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claim. Final Act. 4 (mailed Sept. 17, 2012). Claims 8, 12-14, and 16-18 are not part of the instant appeal. Appeal2014-004601 Application 12/976,434 SUMMARY OF DECISION We AFFIRM. INVENTION Appellants' invention relates to "a grenade that can be fired from a barrel." Spec. i-f 2. Claims 1 and 15 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A grenade for recoilless firing from a barrel that is open at both ends and does not have any flow cross-section constrictions, the grenade comprising: a grenade base body containing therein at least one explosive charge; a flow cross-section reduction device for reducing a flow cross-section of the barrel, said device being disposed rearward of said grenade base body relative to a firing direction; a connecting device connecting said flow cross-section reduction device to said grenade base body at a spacing distance therefrom and connecting said flow cross-section reduction device to said grenade base body rigidly stable during firing; and a propellant charge material disposed between said grenade base body and said flow cross-section reduction device, said flow cross-section reduction device preventing a gas pressure created by a burning of said propellant charge material from flowing away too quickly. 2 Appeal2014-004601 Application 12/976,434 REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1---6, 9, and 15 under 35 U.S.C. Â§ 102(e) as being anticipated by Smith (US 3,915,091, iss. Oct. 28, 1975). II. The Examiner rejected claims 1-7, 9-11, and 15 under 35 U.S.C. Â§ 103(a) as being unpatentable over Asikainen (US 5,080,017, iss. Jan. 14, 1992) and Goward (US 5,503,080, iss. Apr. 2, 1996). ANALYSIS Rejection I Appellants have not presented arguments for the patentability of claims 2-6, 9, and 15 apart from claim 1. See Br. 3-5. Therefore, in accordance with 37 C.F.R. Â§ 41.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 2-6, 9, and 15 standing or falling with claim 1. The Examiner finds that Smith teaches a grenade including a grenade base body having an explosive charge, a flow cross-section reduction device 94, 98, a connecting device 26, and a propellant charge material 28 located between the grenade base body and the flow cross-section reduction device 94, 98. See Final Act. 2; see also Adv. Act 2 (mailed Nov. 30, 2012); and Smith, Fig. IA. Appellants argue that although Smith's rocket powered round may include the claimed structures of a flow cross-section reduction device, a 3 Appeal2014-004601 Application 12/976,434 connecting device, and a propellant charge material, nonetheless, Smith "lacks the required presence of the functional limitations." Br. 4. In response, the Examiner takes the position that Smith's grenade construction is so similar to the claimed grenade, that Smith's construction would inherently have the claimed functional limitations. See Ans. 3 (mailed July 5, 2013). It is well settled that "where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on." In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). However, before an Applicant can be put to this burdensome task, the examiner must provide sufficient evidence or scientific reasoning to establish the reasonableness of the Examiner's belief that the functional limitation is an inherent characteristic of the prior art. In this case, we agree with the Examiner that because Smith's device 94, 98 decreases the barrel cross-section "it will inherently reduce 'a flow cross-section."' See Ans. 3 (emphasis omitted). We further agree with the Examiner that connecting device 26 is "rigidly stable during firing (as part of the motor casing it would be rigid and therefore connect the two parts rigidly)." Id. Finally, the Examiner is correct in finding that Smith's device 94, 98 "prevent[s] a gas pressure created by a burning of the propellant charge material [28] from flowing away too quickly" because "the gas pressure would inherently flow away slower than it would if the flow cross- section was larger (or not reduced)." Id. We thus agree that the Examiner is 4 Appeal2014-004601 Application 12/976,434 on solid ground in finding sufficient structural similarity that the recited functional limitations would also be present inherently in Smith. As such, Appellants have the burden of establishing that those features would not be present. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990) ("[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."). Here, Appellants have not pointed to any evidence or provided any persuasive reasoning to establish that the Examiner erred in the findings and conclusions presented that Smith's construction inherently has the claimed functional limitations. Accordingly, for the foregoing reasons, we sustain the rejection under 35 U.S.C. Â§ 102(e) ofclaim 1, and claims 2-6, 9, and 15 falling with claim 1, as being anticipated by Smith. Rejection II Appellants have not presented arguments for the patentability of claims 2-7, 9-11, and 15 apart from claim 1. Br. 5-7. We thus select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 2-7, 9-11, and 15 standing or falling with claim 1. The Examiner finds that Asikainen discloses most of the limitations of claim 1, but fails to disclose a "flow cross-section reduction device disposed on the rear end" of its projectile. Final Act. 3 (citing Asikainen, Fig. 1 ). Nonetheless, the Examiner finds that Goward discloses a flow cross-section reduction device, as called for by claim 1, and thus concludes that it would have been obvious for a person of ordinary skill in the art "to mount the 5 Appeal2014-004601 Application 12/976,434 device taught by Goward et al. onto the standard projectile as shown in Asikainen," because "such a device could be used in combination with a standard projectile to achieve the predictable results of preventing the projectile from sliding forwards or backwards in the barrel prior to firing." Id. Appellants note that "[a ]ccording to the claimed invention, the flow cross-section reduction device (12) is connected to the grenade base body (10) rigidly stable during firing" such that "[t]he improved propulsion effect on the grenade body (10) ... is maintained throughout the entire launching process." Br. 5. Accordingly, Appellants contend that because Goward's clip device 12 "is only loosely clipped to the tail portion of the ammunition round," it "is separated from the ammunition" and "retained in the barrel on firing and ... removed from the barrel after firing." Id. at 5---6. (citing Goward, col. 3, 11. 5-8, 39-43, and Figs. 7, 8). As such, in the Examiner's modification, Appellants assert that the flow cross-section device of Go ward is not connected to Asikainen's grenade base body "rigidly stable during firing," as called for by claim 1. See id. at 6-7. We are not persuaded by Appellants' arguments because claim 1 does not require the flow cross-section device be connected to the grenade base body "throughout the entire launching process," as Appellants argue, but rather only "during firing." As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the game is the claim." It is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCP A 1982). In this case, the Examiner is correct in that "Appellants' 6 Appeal2014-004601 Application 12/976,434 arguments are narrower than the breadth of the current claims." Ans. 4. More specifically, the Examiner is correct in that the limitation "' [ d]uring firing' is a broad term and includes various stages of firing," for example, "at the initiation of firing, when the projectile is moving down the barrel and at the point of exit." Id. We thus agree with the Examiner that, because claim 1 requires "during firing" and not "during the entire launching process," as Appellants argue, "the fact that the clip device (i.e. flow cross- section reduction device) taught by Goward et al. is connected to the grenade [of Asikainen] during ANY part of firing meets the claimed limitation of 'during firing."' Id. Accordingly, in the Examiner's rejection, because clip device 12 of Goward is attached or retained to the body of Asikainen's projectile on initiation of firing, the flow cross-section device, i.e., clip 12, of Goward is connected to Asikainen's projectile base body "rigidly stable during firing," as called for by claim 1. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. Â§ 103(a) of claim 1, and claims 2-7, 9-11, and 15 falling with claim 1, as being unpatentable over Asikainen and Goward. SUMMARY The Examiner's decision to reject claims 1---6, 9, and 15 under 35 U.S.C. Â§ 102(e) as being anticipated by Smith is affirmed. The Examiner's decision to reject claims 1-7, 9-11, and 15 under 35 U.S.C. Â§ 103(a) as being unpatentable over Asikainen and Goward is affirmed. 7 Appeal2014-004601 Application 12/976,434 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8