Swan, Richard E.

Patent Trials and Appeals BoardSep 6, 2019

15613953 - (D) (P.T.A.B. Sep. 6, 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. 15/613,953 06/05/2017 Richard E. Swan A042 P03273-US 5311 3017 7590 09/06/2019 BARLOW, JOSEPHS & HOLMES, LTD. 40 WESTMINSTER STREET 3RD FLOOR PROVIDENCE, RI 02903 EXAMINER GOMBERG, BENJAMIN S ART UNIT PAPER NUMBER 3641 NOTIFICATION DATE DELIVERY MODE 09/06/2019 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): drj@barjos.com patent@barjos.com sjh@barjos.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD E. SWAN ____________ Appeal 2019-0048341 Application 15/613,9532 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, KENNETH G. SCHOPFER, and AMEE A. SHAH, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1, 3, 6, 8–12, 14–19, and 21–24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our Decision references the Appeal Brief (“Appeal Br.,” filed Feb. 21, 2019), the Reply Brief (“Reply Br.,” filed May 31, 2019), the Examiner’s Answer (“Ans.,” mailed Apr. 2, 2019), and the Final Office Action (“Final Act.,” mailed Sept. 26, 2018). 2 According to Appellant, the real party in interest is Richard E. Swan. Appeal Br. 1. Appeal 2019-004834 Application 15/613,953 2 BACKGROUND The Specification describes that “the present invention relates to an accessory mounting assembly, which includes an actuator that provides adjustable spring tension to control the clamping force exerted by the actuator against the firearm interface rail, and which provides added tensile strength for the threaded governor post.” Spec. ¶ 1. CLAIMS Claims 1, 14, and 21 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A mounting assembly for attaching an accessory to a dovetail rail interface, said mounting assembly comprising: a body having a lower portion and an upper portion, said lower portion configured to engage a first side of said dovetail rail, said upper portion configured to receive and retain said accessory; a boss formation extending outwardly from a side of said body and including an opening therein; a clamping assembly configured to releasably engage a second side of said dovetail rail, including, a foot portion positioned adjacent a bottom surface of said boss formation, said foot portion including a cam surface and a threaded bore; an actuator arm extending outwardly from said foot portion; a threaded governor post threadably received through the threaded bore of said foot portion and extending upwardly through said opening in said boss formation; a spring received around said threaded governor post adjacent a top surface of said boss formation; Appeal 2019-004834 Application 15/613,953 3 a retention nut threadedly received on said threaded governor post such that said spring is captured between a bottom surface of said retention nut and the top surface of said boss formation; and wherein the foot portion is formed from a first material and the threaded governor post is formed from a second material, where the first material is different than the second material. Appeal Br., Claims App. i. REJECTION3 The Examiner rejects claims 1, 3, 6, 8–12, 14–19, and 21–24 under 35 U.S.C. § 103 as unpatentable over Swan 4764 in view of Sirois5 and Swan 794.6 DISCUSSION Each of independent claims 1, 14, and 21 recites a foot portion that is formed of a first material and a governor post that is formed of a second, different material. As discussed below, we are persuaded that by Appellant’s argument that the Examiner has not shown the use of two different materials for these parts to be obvious. With respect to claim 1, for example, the Examiner finds that Swan 476 discloses a mounting assembly as claimed including a foot portion and a governor post, except that Swan 476 does not disclose a governor post with the specific structure claimed or that the foot portion and governor post are 3 The rejections of claims 13 and 20 are not before us on appeal because those claims have been cancelled. See Amendment filed Nov. 21, 2018; see also Advisory Action mailed Dec. 20, 2018. 4 Swan, US 7,886,476 B1, iss. Feb. 15, 2011. 5 Sirois, US 8,347,540 B2, iss. Jan. 8, 2013. 6 Swan et al., US 8,650,794 B2, iss. Feb. 18, 2014. Appeal 2019-004834 Application 15/613,953 4 formed of two different materials. Final Act. 4–6. The Examiner relies on Sirois and Swan 794 to cure these deficiencies, respectively. Id. at 5–6. In particular, with respect to the materials claimed, the Examiner finds and concludes: Swan 794 teaches “an apparatus for connecting a firearm to tactical equipment, comprising a rail grabber . . . for grabbing a rail connectable to a firearm and positionally maintaining the apparatus with respect to the rail” (col. 3 lines 21-29), wherein the rail grabber “may be made of metal or plastic material, or any other material known to those skilled in the art which is capable of performing the purposes of the rail grabber” (col. 19 lines 39- 42), and further comprising one or more fastening members (25) screwed into one or more holes (17) in the apparatus (10), wherein the “one or more fastening members 25 may be made from . . . stainless steel” (col. 6 lines 36-38). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the foot portion to be a different material than the threaded governor post in Swan 476, the material of the governor post being stainless steel as taught by Swan 794, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for its intended use. In re Leshin, 125 USPQ 416. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297. MPEP § 2144.07. Id. at 6. Appellant argues that the Examiner mischaracterizes Swan 794 and does not provide an adequate reason to support the conclusion that it would have been obvious to use different materials for the foot and governor post as claimed. Appeal Br. 7–8. We agree. Swan 794 discloses “an apparatus for connecting a firearm to tactical equipment, comprising a rail grabber having a hooking member for receiving and tensioning a strapping member.” Swan 794 col. 3, ll. 21–24. Appeal 2019-004834 Application 15/613,953 5 Swan 794 discloses an apparatus 10 that includes holes for fastening members 25 such that the fastening members are able to positionally secure the apparatus to a rail section. Id. at col. 6, ll. 24–26. Swan 794 discloses that the fastening members “may be made from plastic . . . , stainless steel, aluminum, and/or forge-hardened steel.” Id. at col. 6, ll. 36–38. Swan 794 separately discloses that “[e]mbodiments may include a rail grabber[, ]which may be made of metal or plastic material, or any other material known to those skilled in the art which is capable of performing the purposes of the rail grabber as described herein[].” Id. at col. 19, ll. 39–42. Notably, Swan 794 neither expressly discloses that the fastening members and rail grabber are made of different materials nor does Swan 794 disclose any reason why one would choose different materials for these elements. Regarding the reason for choosing different materials, the Examiner does not cite to any portion of the art of record and only states that “it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for its intended use.” Final Act. 6 (citing In re Leshin, 277 F.2d 197 (CCPA 1960)). Appellant argues that the Specification provides a specific reason for providing separate materials for the foot and governor post. Appeal Br. 8 (citing Spec. ¶ 13). Thus, Appellant contends that the subject matter at issue is not merely a matter of choosing a known suitable material, but instead is a selection of a particular material property for two different claim elements which provides a result not suggested by the prior art. Id. We agree with Appellant that the Examiner’s reliance on Leshin is misplaced because the requisite factual findings have not been established. Specifically, the Examiner has not established that the feature at issue is a Appeal 2019-004834 Application 15/613,953 6 selection of a known material based merely on suitability for the intended use. We do not understand Leshin to stand for the proposition that every claim feature involving a selection of materials is per se obvious. Here, the claims require the specific selection of two different materials for two different elements, and the Examiner has failed to provide an adequate reason as to why it would have been obvious to provide different materials for these parts. Based on the foregoing, we are persuaded of error in the rejection of each of the independent claims. Accordingly, we do not sustain the rejection of claims 1, 14, and 21. We also do not sustain the rejection of dependent claims 3, 6, 8–12, 15–19, and 22–24 for the same reasons. CONCLUSION We REVERSE the rejection of claims 1, 3, 6, 8–12, 14–19, and 21–24. REVERSED