Timothy Flynn

Patent Trials and Appeals Board

Jan 4, 2022

2021003977 (P.T.A.B. Jan. 4, 2022)

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. 15/054,397 02/26/2016 Timothy J. Flynn CD-168 1038 42419 7590 01/04/2022 PAULEY ERICKSON & SWANSON 2800 WEST HIGGINS ROAD SUITE 365 HOFFMAN ESTATES, IL 60169 EXAMINER VANDERVEEN, JEFFREY S ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 01/04/2022 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 TIMOTHY J. FLYNN Appeal 2021-003977 Application 15/054,397 Technology Center 3700 Before BRETT C. MARTIN, CARL M. DEFRANCO, and BRANDON J. WARNER, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 11-16, 19, and 23-35. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Timothy J. Flynn. Appeal Br. 2. Appeal 2021-003977 Application 15/054,397 2 CLAIMED SUBJECT MATTER The claims are directed to target label assembly. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A target for penetration by a projectile from a firearm, comprising: a hollow cylindrical cardboard tube open at opposing ends and having an outer surface; a colored substrate including at least one paper or plastic layer and having a first color, the colored substrate having a front surface and a back surface, the back surface adhered to and around the outer surface of the hollow cylindrical tube; a transparent plastic film having a front surface and a back surface, the back surface of the transparent plastic film overlaying the front surface of the colored substrate; an opaque layer of ink overlaying the front surface of the transparent plastic film and masking the first color under the ink; and a toner layer defining a target image and overlaying the opaque ink layer, wherein the opaque layer is visible about a periphery of the image of the target and the toner layer has a second color different from the first color. Appeal Br. 15 (Claims Appendix). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Edwards US 5,188,371 Dec. 3, 2013 Eggiman US 2013/0328268 A1 Dec. 12, 2013 Flynn US 9,625,239 B2 Apr. 18, 2017 Pink and Green Mama (“Pink”), May 24, 2011 Appeal 2021-003977 Application 15/054,397 3 REJECTIONS Claims 11-16, 19, and 23-25 stand rejected under 34 U.S.C. § 103 as being unpatentable over Edwards and Pink. Final Act. 2. Claims 26-35 stand rejected under 35 U.S.C. § 103 as being unpatentable over Edwards, Pink, and Eggiman. Final Act. 12. Claims 11-16, 19, and 23-35 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of Flynn, Edwards, and Pink. Final Act. 5. OPINION Obviousness Appellant’s argument, in general, is that Pink is non-analogous art to the claimed invention because “[t]he Edwards targets are for actual ballistic firearms,” and the Pink “blog site is not directed to firearms or target shooting.” Appeal Br. 7. Appellant further asserts that Pink “is not relevant to ballistic targets or reactive targets according to Edwards, and the Edwards targets require bullets to operate and would not work with Pink and Green Mama’s water pistols.” Id. Along similar lines, Appellant also argues that the Examiner’s motivation to combine is flawed because Pink “does not suggest to one of ordinary skill in the art to instead use the reactive firearms targets of Edwards on toilet paper tubes.” Appeal Br. 9. Appellant, however, defines the field of art unreasonably narrowly so as to exclude Pink. When looked at more broadly, the field of art here is better described as mounting systems for shooting targets. Appellant’s assertion that ballistic targets are incompatible with Pink’s mounting system amounts to nothing more than attorney argument as Appellant has provided no evidence that this is the case. Although we agree with Appellant that Appeal 2021-003977 Application 15/054,397 4 shooting with water guns, per se, would not “break the surface/layers of the target for the reactive target to function,” we do not agree that Pink “would not be expected to support the Edwards target sheet against a firearm projectile.” Appeal Br. 9, 11. Appellant appears to assume that ballistic targets would only be shot at with powerful, high caliber weapons that would not be suitable with toilet paper tubes. Although this is arguable, we do not agree with Appellant’s unsupported argument that such would apply to smaller caliber projectiles such as .22 lr or even pellets/bbs. Such projectiles move at high velocities and, having a smaller caliber, would likely penetrate a toilet paper tube. Even higher calibers would also likely be useful against such targets, with a drawback being that the targets could be easily knocked over and may have to be reset after each shot. Regardless, however, Appellant has produced no evidence beyond attorney argument that any ballistic projectile would be unsuitable for use with the Examiner’s proposed combination. We note that items such as aluminum cans are often used as shooting targets with a wide range of calibers. Bullets do not simply bounce off or knock over such cans, but are capable of penetrating them in a manner similar to what would be expected of a toilet paper tube. Once the proper scope of the field of endeavor here is considered, namely cylindrical target stands, we are not persuaded that Appellant has provided persuasive argument as to why the Examiner’s combination is improper. We also note that ballistic targets do not work as a standalone item. Ballistic targets usually require some kind of mounting frame and often some kind of backing. For instance, ballistic target stickers are made to be adhered to something more substantial for actual shooting. In that sense, a cardboard tube such as that disclosed in Pink could be augmented with Appeal 2021-003977 Application 15/054,397 5 further support devices to actually function as a ballistic target. In reverse, one of skill in the art would understand that ballistic targets could also be used as a target for shooting water pistols. Granted, the features of the reactive target might not be activated, but, returning to our initial point, the field of endeavor here is not simply reactive targets, but is a mounting system for targets. As such, Pink teaches that a cardboard tube is a suitable device for mounting targets for shooting practice. Accordingly, we are not persuaded that the Examiner erred in rejecting claim 11. Claims 23, 24, 33, and 34 Generally, regarding the variously claimed configurations of the printed targets, the Examiner is correct that these are “considered printed matter and not patent eligible.” Ans. 5. As such, we are unpersuaded that any specific design of the printed target derives patent eligibility. That said, the Examiner is also correct that Pink “clearly shows printed matter or indicia placed on and around the cylindrical target,” and that “[t]here is no persuasive evidence on the record of new and unexpected results directed towards the use of multiple indicia placed on a cylindrical substrate for use as targets.” Ans. 5-6. Claims 25 and 35 We also agree with the Examiner that “limitations directed towards how the target is placed or oriented when in use . . . are considered to be directed towards the intended used of the apparatus.” Ans. 6. Appellant argues that “the tube[’]s horizontal orientation . . . limitation provides context and meaning to the corresponding horizontal structure of the target image.” Appeal Br. 12. As with claim 23, this argument goes to the orientation of the printed matter, which is not deemed to provide patentable weight. Furthermore, an upright target laid on its side would still function Appeal 2021-003977 Application 15/054,397 6 the same whether the image strictly is intended as a horizontal image or not. For instance, the upright stick figures in Pink would provide the same target experience on their side as an elongated image of a rat in a horizontal presentation. Either way, we are not persuaded of error in the Examiner’s rejections. Claim 26 Appellant argues that “the toilet paper roll of Pink and Green Mama is not a known ballistic target,” and so the Examiner’s use of Eggiman is improper because it implies adjusting the thickness of an already known ballistic target. Again, this argument relies on an unreasonably narrow scope of the field of use in this instance. Pink teaches the use of a target mounted on a cylindrical stand. Once the hurdle of the manner of mounting is overcome, which it is in the Examiner’s original rejection, the Examiner’s combination becomes a valid ballistic target. Even if it were not, however, one of skill in the art could take the teaching of Pink and modify it so that it would be suitable for ballistic use. The only difference, as far as we can surmise from Appellant’s argument, is that the thickness of the cylinder determines whether a target mount is ballistic or not. Eggiman satisfactorily provides the teaching necessary to convert Pink into a ballistic target merely by providing the proper thickness for the cardboard cylinder. Double Patenting As Appellant states, “the double patenting rejection fails [or succeeds] for the same reasons as described above.” Appeal Br. 14. Having determined that the Examiner’s rejection is proper, we likewise sustain the Examiner’s double patenting rejection. Appeal 2021-003977 Application 15/054,397 7 CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11-16, 19, 23-25 103 Edwards, Pink 11-16, 19, 23-25 26-35 103 Edwards, Pink, Eggiman 26-35 11-16, 19, 23-35 Flynn, Edwards ’643, Pink 11-16, 19, 23-35 Overall Outcome 11-16, 19, 23-35 TIME PERIOD FOR RESPONSE 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