Ex Parte Marsac

Patent Trial and Appeal BoardAug 22, 2013

10943746 (P.T.A.B. Aug. 22, 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. 10/943,746 09/17/2004 Bertrand Marsac CSOFT.00001 1948 22858 7590 08/22/2013 CARSTENS & CAHOON, LLP P.O. Box 802334 DALLAS, TX 75380-2334 EXAMINER CLEMENT, MICHELLE RENEE ART UNIT PAPER NUMBER 3641 MAIL DATE DELIVERY MODE 08/22/2013 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 BERTRAND MARSAC ____________ Appeal 2011-008273 Application 10/943,746 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, JOHN W. MORRISON, and HYUN J. JUNG, 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 claims 1-3 and 37. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-008273 Application 10/943,746 2 Rejections Claims 1-3 and 37 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1-3 and 37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Morioka1 (JP 03-35997, pub. Jul. 30, 1991) and Foster (US 2,526,018, iss. Oct. 17, 1950). Claimed Subject Matter Claim 1 is the sole independent claim on appeal, is representative of the subject matter on appeal, and recites: 1. A projectile trajectory correction device for a weapon replica, comprising: (a) a tubular cannon having a bore; (b) a tubular elastic insert disposed within said bore along the inner surface of the cannon; (c) a first pin and a second pin inserted into said cannon and symmetrically positioned on either side of a vertical axis passing through a longitudinally extending central axis of the cannon, and wherein the first and second pins are disposed to one side of a horizontal axis passing through the central axis of the cannon; wherein said first and second pins are circumferentially spaced apart and extend radially inward into the bore of the cannon and press into said elastic insert thereby creating first and second bosses inside the bore; and wherein the first and second pins are positioned at the breech of the cannon, wherein the first and second bosses apply pressure to a projectile fired from the weapon replica, thereby modifying the trajectory of the projectile when it exits the cannon. 1 We derive our understanding of this reference from the English language translation prepared by FLS, Inc., dated December 2010. Appeal 2011-008273 Application 10/943,746 3 OPINION Written Description Claim 1 recites “wherein the first and second pins are positioned at the breech of the cannon.” The Examiner finds that the original Specification does not describe that the first and second pins are positioned at a breech of the cannon. See Ans. 4. The Appellant contends that claim 1 is supported by the original Specification, which states “[w]hatever embodiment is chosen, the trajectory correction device is placed just after the location from where the projectile is projected toward the outside, at the entrance of the cannon.” Br. 4-5 (citing Spec. 8, l. 36 – 9, l. 2) (emphasis added). In response, the Examiner finds that the placement of the trajectory correction device may refer to the muzzle end of the cannon (barrel) rather than the breech of the cannon because the muzzle end of the cannon is the place where the projectile is projected toward the outside. See Ans. 6. Although the Examiner’s finding is appreciated, it is notable that if the placement of the trajectory correction device is placed “just after” the muzzle end of the cannon then it would have to be positioned in front of the muzzle end. In that case, the trajectory correction device would not be placed on the weapon rather it would be placed off of the cannon. Since the Specification is clear that “cannon 1 is equipped with a projectile trajectory correction device” (Spec. 4, ll. 27-28), the placement of the trajectory correction device cannot be “just after” the muzzle end of the weapon. Here, it is reasonable that the statement in the Specification that “the trajectory correction device is placed just after the location from where the projectile is projected toward the outside” refers to the breech of the cannon rather than the muzzle end of the cannon. Appeal 2011-008273 Application 10/943,746 4 The Examiner also finds that the Specification’s reference to “‘at the entrance of the cannon’ does not clearly indicate a breech of a cannon.” Ans. 6 (emphasis added). However, whether or not the Specification “clearly indicate[s]” a disclosure is not the correct standard for rejecting a claim under the written description requirement. To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Furthermore, the Appellant contends “that it is well established in the art that the place where the projectile enters a cannon (breech) and exits a cannon (muzzle) are traditionally defined according to the operation of the cannon (shooting), not the method of loading.” Br. 4. The Examiner’s response concerning open-breech and closed-breech cannons is appreciated. Ans. 6-7. The Examiner’s response, however, focuses on loading the cannon of a weapon rather than explaining a flaw in the Appellant’s contention that a skilled artisan refers to the entrance of the cannon at the breech due to its operation while shooting rather than loading. See Ans. 7, Br. 4-5. For the reasons provided above, we find that the Appellant’s contentions are persuasive. Thus, the rejection of claim 1, and its dependent claims, as failing to comply with the written description requirement is not sustained. Obviousness over Morioka and Foster The Examiner finds that Morioka discloses nearly all of the limitations of claim 1, including a trajectory adjustment screw (a first pin) 11, but does not disclose a second pin. See Ans. 4, 8. The Examiner turns to Appeal 2011-008273 Application 10/943,746 5 Foster’s disclosure of a first and a second pin 47 to cure the deficiency of Morioka with respect to claim 1. Id. The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art to apply the technique of utilizing additional pins as taught by Foster . . . to improve the device of Morioka for the predictable result of having better trajectory control.” Ans. 5. The Appellant contends that “[t]here is no motivation to combine Foster with Morioka in the manner suggested by the Examiner.” Br. 6. The Appellant asserts that Morioka’s device “is designed primarily to increase the range and vertical accuracy of pellet/bb guns by imparting back spin on the pellets” and that this design “keep[s] the projectile in as straight a line as possible for as long as possible.” Id. As for Foster’s simulation pitching device, the Appellant asserts that it is designed to alter the path of the ball from a straight line. Id. In response, the Examiner finds that Morioka’s adjustment screw is designed to change the trajectory direction of its projectile. Ans. 8 (quoting Morioka, p. 6, ll. 18-23, “[a]lso, by changing the position of the adjustment screw 11, i.e. by changing the position in the circumferential direction, it becomes possible to select the trajectory direction to be corrected.”). Since Morioka’s device includes in its design the ability to change direction of a projectile, the Appellant’s contention is unpersuasive. Additionally, we agree with the Examiner that both the Morioka and Foster devices alter the trajectory of a projectile by applying pressure/friction to the projectile. See Ans. 8-9. The Appellant also points out that Morioka’s trajectory adjustment screw 11 is positioned at the breech of the gun whereas Foster’s device the Appeal 2011-008273 Application 10/943,746 6 fingers 47 are positioned at the muzzle. Br. 6. The Appellant contends that the placement of the trajectory adjustment mechanisms of Morioka and Foster are placed at opposite ends of the barrel, which evidences the opposing purposes and functions of each device. See id. As such, the combination of Morioka’s and Foster’s teachings results in hindsight. See Br. 7. However, the Examiner indicates that “Foster . . . is relied on for the teaching of utilizing multiple pins for altering the trajectory of a projectile from a launching tube.” Ans. 8. In other words, the Examiner does not rely on Foster for teaching the location its trajectory adjustment mechanism. See Ans. 8-9. As such, the Appellant’s contention is unpersuasive. For the foregoing reasons, we conclude that the Examiner has articulated adequate reasoning with rational underpinning as to why one of ordinary skill in the art would have combined the teachings of the references to result in the claimed subject matter. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Thus, the rejection of claims 1-3 and 37 as unpatentable over Morioka and Foster is sustained. DECISION We REVERSE the rejection of claims 1-3 and 37 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We AFFIRM the rejection of claims 1-3 and 37 under 35 U.S.C. § 103(a) as unpatentable over Morioka and Foster. Appeal 2011-008273 Application 10/943,746 7 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 Klh