Simonds, Jon et al.

Patent Trials and Appeals Board

Sep 26, 2019

14701132 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/701,132 04/30/2015 Jon Simonds M55.2-15277-US02 4254
134862 7590 09/26/2019
MCP IP, LLC
919 River Road
Sparta, WI 54656
EXAMINER
KLAYMAN, AMIR ARIE
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
09/26/2019 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 JON SIMONDS and GARY L. SIMONDS
____________

Appeal 2019-001992
Application 14/701,132
Technology Center 3700
_______________

Before DANIEL S. SONG, EDWARD A. BROWN, and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–4 and 7–21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as MCP IP,
LLC. Appeal Br. 3.
Appeal 2019-001992
Application 14/701,132

2
CLAIMED SUBJECT MATTER
Claims 1, 19, and 21 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. An archery bow stabilizer comprising:
a body member configured for attachment to an archery
bow riser, the body member comprising a first groove and a
second groove;
a first resilient member supported by said body member, a
portion of the first resilient member oriented in the first groove;
a second resilient member supported by said body
member, a portion of the second resilient member oriented in the
second groove; and
a suspended mass supported by said first resilient member
and said second resilient member, said suspended mass
surrounding said body member, said suspended mass comprising
a different material than said first resilient member.

THE REJECTIONS2
I. Claim 8 stands rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement. Final Act. 2.
II. Claims 1–4, 7, 9, and 18–20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Leven ’439 (US 2011/0120439 A1; published
May 26, 2011) and Leven ’430 (US 7,318,430 B2; issued Jan. 15, 2008).
Ans. 3.
III. Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable
over Leven ’439, Leven ’430, Hess (US 4,779,602; issued Oct. 25, 1988),
and Khoshnood (US 2012/0125310 A1; published May 24, 2012). Final
Act. 8.

2 The Examiner’s rejection of claims Claims 1–4, 7, 9, and 18–20 under
35 U.S.C. § 103 as unpatentable over Leven ’439, Leven ’430, and Hess has
been withdrawn. Ans. 2.
Appeal 2019-001992
Application 14/701,132

3
IV. Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable
over Leven ’439, Leven ’430, Hess, and Leven ’022 (US 5,273,022; issued
Dec. 28, 1993). Final Act. 8.
V. Claims 12–16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Leven ’439, Leven ’430, Hess, and Kozlik (US
2013/0118468 A1; published May 16, 2013). Final Act. 9.
VI. Claim 17 stands rejected under 35 U.S.C. § 103 as unpatentable
over Leven ’439, Leven ’430, and Hess. Final Act. 3, 7.
VII. Claim 21 stands rejected under 35 U.S.C. § 103 as unpatentable
over Leven ’439 and Kozlik. Final Act. 11.

ANALYSIS
Rejection I
Claim 8, which depends from claim 7, which depends from
independent claim 1, recites, in relevant part,
said stabilizer reconfigurable between first and second
orientations, said first resilient member positioned in said first
groove and said second resilient member positioned in said
second groove in said first orientation, said first resilient member
positioned in said second groove and said second resilient
member positioned in said third groove in said second
orientation, said suspended mass having a first position with
respect to the body member in the first orientation and a second
position with respect to the body member in the second
orientation.
Appeal Br. 24–25 (Claims App.)
The Examiner’s annotated Figure 4 of the Specification is reproduced
below. Final Act. 16; see also Ans. 10.
Appeal 2019-001992
Application 14/701,132

4

The Examiner’s annotated Figure 4 of the Specification depicts “a cross-
sectional view of an embodiment of a stabilizer” (Spec. 3:11), wherein the
Examiner has identified first and second detents 18 and a resilient member
30 having a protrusion engaging the first detent. The Examiner appears to
determine that moving a resilient member 30 from one groove to another is
“impossible.” Final Act. 16.
Appellant’s annotated figures, similar to Figure 4 of the Specification,
are reproduced below. Appeal Br. 8.

Appeal 2019-001992
Application 14/701,132

5
Appellant’s annotated figures depict two cross-sectional views of a stabilizer
similar to the stabilizer depicted in Figure 4 of the Specification, including
respectively adjacent first, second, and third annular grooves along the
longitudinal body of the stabilizer, wherein, in the top view, first and second
resilient members are positioned in the first two adjacent grooves nearest to
the right end of the stabilizer, such that the suspended mass is to closest to
the right end of the stabilizer (i.e., indicated by Appellant as a “first
orientation”), and in the bottom view, the same first and second resilient
members are positioned in the second and third adjacent grooves nearest to
the left end of the stabilizer, such that the suspended mass is closest to the
left end of the stabilizer. Appellant argues that “[c]laim 8 is enabled
because the skilled person could certainly make and use a device according
to claim 8, for example a device similar to the illustration provided . . .
[supra], without undue experimentation after considering the teachings in
the . . . [S]pecification.” Appeal Br. 9.
In further support, Appellant submits that (i) Figure 3 of the
Specification, as originally filed, shows that “the components . . . are capable
of being assembled to form a device,” as recited in claim 8 (Appeal Br. 9);
(ii) claim 8 as originally filed3 “teaches both repositioning of a suspended
mass along a length of the body and the provision of detent locations for
such repositioning” (Reply Br. 2); and (iii) the Specification, as originally
filed, discloses that “mass member 20 is attachable to the body member 12

3 Claim 8 as originally filed recites, in relevant part, “said body member
comprising a plurality of detents, said suspended mass moveable between a
first detent position and a second detent position with respect to the body
member.” Spec. 11:24–26 (as originally filed).
Appeal 2019-001992
Application 14/701,132

6
in multiple configurations that will provide for different performance
specifics” and that “body member 12 comprises a plurality of detents [(such
as grooves 18)], and the mass member 20 is moveable between detents”
(Reply Br. 3 (citing Spec. 7:31–8:3).
Enablement of prior art requires that the reference teach a skilled
artisan—at the time of filing—to make or carry out what it discloses in
relation to the claimed invention without undue experimentation. In re
Antor Media Corp., 689 F.3d 1282, 1289–90 (Fed. Cir. 2012).
We agree with Appellant that the Specification, and particularly, the
citations provided by Appellant supra, teach a skilled artisan how to carry
out the first and second orientations required by claim 8. We also agree with
Appellant that to the extent the Examiner interprets claim 8 to require a first
resilient member to be within two different grooves simultaneously, such
positioning is not required by claim 8; rather, as supported by the
Specification discussed supra, the first resilient member is moved from one
groove to another to achieve repositioning of the suspended mass along
central axis 46 of body member 12 to attain the recited first and second
orientations. See, e.g., Fig. 2.
Accordingly, we do not sustain the Examiner’s rejection of claim 8 as
failing to comply with the enablement requirement of 35 U.S.C. § 112(a).
Rejection II
Regarding independent claim 1, the Examiner finds, inter alia, that
Leven ’439 discloses the archery bow stabilizer, as claimed, including a
body member (i.e., threaded fastener B), resilient members (i.e., elastomeric
washers D) supported by the body member, and a suspended mass (i.e.,
housing A) supported by the resilient member, as claimed. Final Act. 3–4
Appeal 2019-001992
Application 14/701,132

7
(citing Leven ’439 ¶¶ 14–18, Figs. 1, 4). The Examiner determines, inter
alia, that Leven ’439 fails disclose first and second grooves in which the
resilient members (i.e., elastomeric washers D) are oriented and relies on
Leven ’430 for disclosing grooves 50 in which O-rings 46 are oriented. Id.
(citing Leven ’430 4:38, Figs. 7–10). The Examiner reasons that it would
have been obvious to modify Leven ’439’s body member (i.e., threaded
fastener B) to have grooves to receive resilient members (i.e., elastomeric
washers D): (i) “to simplify the construction of the multirod stabilizer”; (ii)
“to provide a multirod stabilizer which does not come apart with extended
use”; and/or (iii) “to provide an archery bow stabilizer wherein even if some
parts become loose, the parts do not shift in their location.” Id. (citing Leven
’430 1:42–49).
Appellant argues, inter alia, that the Examiner’s reasoning lacks
rational underpinning. Appeal Br. 14–15; Reply Br. 7–8. In particular,
Appellant submits that “Leven ‘430 teaches a multirod stabilizer, which is
different from the single-rod stabilizer taught by Leven ’439,” and therefore,
“[t]he reasoning provided by the [E]xaminer is a recitation of benefits that
the Leven ’430 multirod stabilizer presents over prior multi-rod stabilizers,”
and “[a]s such, the skilled person would have no reason to expect that
modifying Leven ’439 to add grooves would provide any of the benefits
recited by the [E]xaminer.” Id. at 8.
Appellant further argues that
Leven ’430 teaches that the O-rings 46 are “compression O-rings
46” that are sized to tightly engage rods 4, and the housings are
“assembled by tightening down the screws 16 until the O-rings
46 are completely compressed and engaged with the rods 4.” . . .
Based upon this teaching, the skilled person would not have been
Appeal 2019-001992
Application 14/701,132

8
prompted to modify the housing and resilient members of Leven
’439 because Leven ’439 device is not tightened in the same way.
Appeal Br. 14 (citing Leven ’439 4:63–5:15).
We are persuaded by Appellant’s argument. Although Leven ’439
discloses the desirability of maintaining elastomeric washers D in place via
detent or stop E, Leven ’439 also discloses that “fastener B is allowed
movement relative to the washers D,” which is contrary to the Examiner’s
reasoning that one skilled in the art would be led to add the grooves, as
taught in Leven ’439, to threaded fastener B of Leven ’430, to keep parts
from becoming loose or shifting, as reasoned by the Examiner supra. Leven
’439 ¶ 15. In other words, the grooves in Leven ’430 are disclosed within
housings 40, 42, 44 to receive and compress O-rings 46 about multi-rods 4
to both dampen vibration along the rods and to fix the housings in place
along the rods. See, e.g., Leven ’420 4:34–36, 5:10–27. Leven ’439,
however, discloses, with respect to a single rod B (i.e., threaded fastener B)
that
[i]n operation, by tightening the weights L and lock nut G onto
the fastener B, the elastomeric washers D and F are compressed.
While being compressed, the washers D and F also expand
against the interior surface of the housing A. As a result of being
compressed and also being expanded against the interior surface
of the housing A, the mechanical vibration limiting and
absorbing characteristics of the device can be varied. As a result,
the tension or stiffness can be adjusted by tightening or loosening
the tension on the washers to change the amount of movement of
any weight attached to the device.
Leven ’439 ¶ 18.
As argued by Appellant, Leven ’439 operates in a different way than
Leven ’430, in that elastomeric washers D of Leven ’439 are compressed
Appeal 2019-001992
Application 14/701,132

9
against housing A via tightening weights L and lock nut G. Leven ’439 ¶
18. Again, Leven ‘439 teaches that although elastomeric washers D receive
the threaded fastener B, threaded fastener B is allowed movement relative to
the washers D. See, Leven ’439 ¶ 15. Thus, the Examiner’s reasoning and
resultant modification to the apparatus of Leven ’439 appears to be contrary
to the teachings of Leven ’439 itself, and lacks sufficient support. The
Examiner appears to improperly rely on hindsight.
Accordingly, we do not sustain the Examiner’s decision rejecting
independent claim 1, and 2–4, 7, 9, and 18 depending therefrom. The
Examiner relies on the same deficient reasoning with respect to the rejection
of independent claim 19 as relied on in the rejection of claim 1 supra, and
therefore, for essentially the same reasons discussed supra, we also do not
sustain the Examiner’s rejection of independent claim 19 and claim 20
depending therefrom. Ans. 6 (relying on Leven ’430 for disclosing an
annular groove, and modifying threaded fastener B of Leven ’439 to have an
annular groove formed on the outer surface thereof, as required by claim
19).
Rejections III–VI
The Examiner’s reliance on the following prior art does not cure the
deficiencies in the Examiner’s reasoning with respect to independent claims
1 and 19 supra: (i) Khoshnood for disclosing “different suspended masses”
in the rejection of claim 10 pursuant to Rejection III (Final Act. 8); (ii)
Leven ’022 for disclosing “a connecting member comprising an elastomeric
material” in the rejection of claim 11 pursuant to Rejection IV (id. at 8–9);
(iii) Kozlik for disclosing limitations regarding first and second body
portions in the rejection of claims 12–16 pursuant to Rejection V (id. at 9–
Appeal 2019-001992
Application 14/701,132

10
11); and (iv) Hess for disclosing a “threaded receptacle” in the rejection of
claim 17 pursuant to Rejection IV.
Rejection VII
Claim 21, recites, in relevant part, “a suspended mass comprising a
first weight, a second weight and a connector attaching the first weight to the
second weight.” Appeal Br. 26 (Claims App.).
Regarding independent claim 21, the Examiner finds that Leven ’439
discloses housing A as the suspended mass, as applied to claim 1 supra, and
further, that Figure 3 of Leven ’439 disclose “the use of two such
hous[ings],” which correspond to the claimed first and second weights.
Final Act. 11. The Examiner relies on Kozlik for disclosing “dampening
members 30,” which the Examiner also construes as weights connected to
each other via bars 18. Id. at 12 (citing Kozlik ¶¶ 19–24, Figs. 1–3). The
Examiner reasons that it would have been obvious to have connected the
weights of Leven ’439 via a connector, as taught by Kozlik, “to form such
stabilizer with space[d] apart weight[s] for enhance the dampening
properties of the stabilizer.” Id. (citing Kozlik ¶¶ 20, 21).
Appellant correctly argues that the Examiner erred by interpreting
Figure 3 of Leven ’439 as depicting two housings A. Rather, Figure 3 of
Leven ’439 depicts the cross-section of a single housing A. See, e.g., Leven
‘439 ¶ 21 (disclosing with reference to Figure 3 that “[t]his third
embodiment is substantially the same in principal and parts as that of
embodiments one and two except that the housing is a cavity formed in an
accessory,” wherein “a cavity K could be formed in the riser of the archery
bow and this third embodiment provided therein”).
Appeal 2019-001992
Application 14/701,132

11
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 21.

DECISION
The Examiner’s decision rejecting claim 8 under 35 U.S.C. § 112(a)
as failing to comply with the enablement requirement is REVERSED.
The Examiner’s decision rejecting claims 1–4, 7, 9, and 18–21 under
35 U.S.C. § 103 is REVERSED.

REVERSED