David K. Roberts

Patent Trials and Appeals Board

Apr 7, 2020

14247763 - (D) (P.T.A.B. Apr. 7, 2020)

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.
14/247,763 04/08/2014 David K Roberts 028728.38402 3203
153348 7590 04/07/2020
Pitchford Fugett, PLLC
110 Meadowpointe W
Hendersonville, TN 37075
EXAMINER
JOHNSON, STEPHEN
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
04/07/2020 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 DAVID K. ROBERTS
____________________

Appeal 2019-000505
Application 14/247,7631
Technology Center 3600
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and
JOHN A. EVANS, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Introduction
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 17, 23– 25, 27, 28, 33, and 34. Claims 1–16, 18–22, 26, and 29–32

1 This application was filed, April 8, 2018, and as such 35 U.S.C. §§ 102,
103 as amended by the Leahy-Smith America Invents Act (“AIA”), Pub. L.
No. 112-29, 125 Stat. 284 (2011) are applied.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as the inventor, Mr. David K. Roberts
(Appeal Br. 2).
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have been canceled (see Appeal Br. 23, 24, Claims Appendix; Final Act. 2;
Advisory Act. 2).3 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s anticipation rejection of claims 17, 23, 28,
and 29 and obviousness rejections of claims 24 and 25, and we affirm the
Examiner’s anticipation rejection of claims 33 and 34. Therefore, we
affirm-in-part.
Appellant’s Disclosed and Claimed Invention
Appellant disclosed invention, entitled “Hybrid Polymer Lower
Receivers for Firearms and Metal Threaded Inserts, Kits, and Methods
Therefor” (Title), “relates generally to the field of firearms, and particularly
to synthetic receivers for firearms” (Spec. ¶ 2). Specifically, Appellant’s
invention pertains to an AR-15 style rifle (see Figs. 1A, 1B; Spec. ¶¶ 4, 5),
where the AR-15 basic platform includes “a typical AR-15 rifle 10” (Spec. ¶
26; see Figs. 1A, 1B) having “a buttstock 20 connected to a receiver 30
comprised of two separable structural pieces known in the art as an upper
receiver 40 and a lower receiver 50” (Spec. ¶ 26; see Figs. 1A, 1B); a pistol
grip 70, and barrel hand guard 25 (see Fig. 1A; Spec. ¶ 26); and where “[t]he
stock 20 is attached to the lower receiver 50 at the receiver extension
housing 55 via a receiver extension (also interchangabl[y] known as a
‘buffer tube’) 21” (Spec. ¶ 27; see Figs. 2A, 2B).

3 Throughout this Opinion, we refer to: (1) the Final Office Action mailed
June 12, 2017 (“Final Act.”); (2) the Advisory Action mailed September 29,
2017 (“Advisory Act.”); (3) the Appeal Brief (“Appeal Br.”) filed April 20,
2018; (4) the Examiner’s Answer mailed July 30, 2018 (“Ans.”); and (5) the
Reply Brief filed September 30, 2018. The oral hearing scheduled for April
17, 2020, was waived by Appellant’s paper filed March 18, 2020.
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“A receiver extension or buffer 21 is well known in the art and is a
generally cylindrical hollow tube configured with screw threads 22 to
connectively interface with complimentary threads disposed in the interior of
the buffer tube collar 55” (Spec. ¶ 27; see Figs. 2A, 2B). The buffer receiver
extension housing 55 or buffer tube typically allow a spring arrangement to
work in combination with the stock 20 to create a bump-stock or recoil
dampening device to reduce strain on the shooter.
There can be a large amount of force and stress put on the receiver
extension or buffer tube collar area of the lower receiver, therefore, it is
desirable to strengthen this area of the firearm. Spec. ¶ 7. Appellant’s
hybrid lower receiver provides a benefit (e.g., higher strength and rigidity)
over known AR-15 style rifles that have polymer threads in the receiver
extension or buffer tube collar (because the lower receiver is composed
purely of pure polymer), while still providing the advantage of decreased
weight as compared to aluminum lower receivers (see Spec. ¶ 36)
(disclosing hybrid lower receiver weights of less than 8 ounces).
Appellant’s claimed invention primarily relates to “[a] hybrid polymer
lower receiver body” (see claims 17, 33, 34, preambles) having a threaded
metal insert 90 (see Fig. 3–5; Spec. ¶¶ 28, 29, 34–36; claims 17, 33, 34)
permanently embedded in the rear/receiver extension or buffer tube collar 55
of the lower receiver 50 when the polymer lower receiver 50 is made (see
claim 17, limitation b; Spec. ¶¶ 28, 29; Figs. 3–5). The threaded metal
inserts 90 “are integrally embedded or molded” to fit inside the buffer tube
collar 55 (Spec. ¶ 29).
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Exemplary Claims
Independent claims 17, 33, and 34 under appeal are exemplary.
Claims 17, 33, and 34, with bracketed lettering and emphases added to key
portions of the claims at issue, read as follows:
17. A hybrid lower receiver for a firearm, comprising:

(a) a polymer lower receiver body having an integral
polymer receiver extension housing and a pistol grip
attachment portion, the receiver extension housing extending
upwardly from a rear portion of said body, the receiver
extension housing configured to receive a receiver extension
therethrough; and
(b) at least one metal insert permanently embedded
within said receiver extension housing or said pistol grip
attachment portion, said insert having an aperture
defined therethrough, the aperture configured to threadingly
engage said receiver extension or a pistol grip retaining
screw when said receiver extension or said pistol grip
retaining screw is received in said aperture.
Appeal Br. 23, Claims Appendix (emphases and bracketed lettering added).
33. A hybrid lower receiver for a firearm, comprising:
(a) a polymer lower receiver body having an integrally
molded polymer buffer tube collar extending upwardly from a
rear portion of said body, the buffer tube collar configured
to receive a buffer tube therethrough; and
(b) a metal insert embedded within said buffer tube
collar, wherein said insert is concentrically oriented within said
buffer tube collar and configured to releasably engage
said buffer tube when said buffer tube is received in said buffer
tube collar.
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34. A hybrid lower receiver for a firearm, comprising:
(a) a polymer lower receiver body having an integrally
molded polymer receiver extension housing extending upwardly
from a rear portion of said body, the receiver extension housing
configured to receive a receiver extension therethrough;
(b) a metal insert embedded within said receiver
extension housing, wherein said metal insert includes a
continuous complete ring structure; and
(c) a threaded aperture extending through said ring
structure, the aperture sized and shaped to couplingly engage
said receiver extension.
Claims Appendix 24–25 (emphases and bracketed lettering added). Notably,
claims 17, 33, and 34 have varying scopes and cover different subject
matter. Specifically, claim 17 requires at least one metal insert be
“permanently embedded within” the receiver extension housing (see claim
17, limitation b), whereas claims 33 and 34 simply require “a metal insert
embedded within” (see claims 33, 34, limitation b) either the buffer tube
collar (claim 33), or the receiver extension housing (claim 34). Thus, claim
17 differs in scope and subject matter covered with that that of claims 33 and
34 in that claim 17 requires embedding the metal insert permanently.
Examiner’s Rejections
(1) The Examiner rejected claim 33 under 35 U.S.C. § 112(a) as
failing to provide adequate written description of the claimed invention so as
to reasonably convey to one skilled in the relevant art that the inventors had
possession of the claimed invention at the time the application was
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effectively filed (Final Act. 3). Because the Examiner has withdrawn the
§ 112(a) rejection (Ans. 3), we will not address this rejection or Appellant’s
arguments directed thereto any further.
(2) The Examiner rejected claims 29 and 33 under 35 U.S.C. § 112(b),
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which Appellant regards as the invention (Final Act. 2).
The Examiner withdrew the rejection of claim 33 (Ans. 3), and states in the
Advisory Action that Appellant’s amendment filed after the final rejection
has overcome the indefiniteness rejection of claim 29, as claim 29 was
canceled (see Appeal Br. 24, Claims Appendix) by Appellant’s amendment
filed after the final rejection on September 12, 2017 (p. 3). Because the
Examiner has withdrawn the § 112(b) rejection (Ans. 3), we will not address
this rejection or Appellant’s arguments directed thereto any further.
(3) Claims 17, 23, 27, 28, 33, and 34 stand rejected under 35 U.S.C.
§ 102(a)(2) as being anticipated by DiChario (US 8,789,305 B1; issued
July7 29, 2014).4 Final Act. 6–7.
(4) Claim 24 stands rejected under 35 U.S.C. § 103 as being
unpatentable over DiChario and Crandall (US 6,526,683 B1; issued March
4, 2003). Final Act. 7.

4 Claim 29 was canceled in Appellant’s response after final filed September
12, 2017 (p. 3). Advisory Act. 2; see also Appeal Br. 2, 24. In the Answer
(see Ans. 2, 3), the Examiner indicates only claims 17, 23, 27, 28, 33, and 34
are rejected for anticipation over DiChario.

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(5) Claim 25 stands rejected under 35 U.S.C. § 103 as being
unpatentable over DiChario alone. Final Act. 7–8.
Appellant’s Contentions
Appellant primarily contends that “DiChario is not prior art to the
claimed invention” (Appeal Br. 9; see generally Appeal Br. 9–22; Reply
Br. 1–6). Appellant asserts “35 U.S.C. § 102(b)(2)(B) provides that a
third party disclosure shall not be prior art to a claimed invention under
35 U.S.C. § 102(a)(2) if the subject matter disclosed had, before such
subject matter was effectively filed, been publicly disclosed by the
inventor” (Appeal Br. 9 citing MPEP§ 2155.02). Appellant contends
that the 130(b) Declaration of David K. Roberts signed January 7, 2016
(hereinafter, “130(b) Declaration”), and specifically Exhibits 1–3
thereof, demonstrate evidence of public disclosure of the same or
substantially the same invention as disclosed in DiChario (see Appeal
Br. 9–16; Reply Br. 1, 4–6, citing 130(b) Declaration). More
specifically, Appellant contends evidence of the subject matter of
Exhibits 1–3 being the same or substantially the same as DiChario’s
disclosure is evidenced by the 37 C.F.R. § 132 Declaration of James E.
Scoutten signed September 6, 2017 (hereinafter, “Second Scoutten
Declaration”) (see Appeal Br. 12–16).
With regard to the anticipation rejection of claims 17, 23, 27, 28, 33,
and 34, Appellant primarily argues the claims as a group, without discussing
the differences in scope between claims 17, 33, and 34 (see Appeal Br. 9–
19; Reply Br. 5–7), and makes similar arguments as to the patentability of
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remaining claims 24 and 25 rejected for obviousness over DiChario taken
alone or in combination with Crandall (see Appeal Br. 20–21).
Independent claim 17, which has different scope and coverage than
claim 33 and 34, along with claims 23, 27, and 28 depending therefrom,
recite commensurate limitations regarding “[a] hybrid lower receiver for a
firearm, comprising: (a) a polymer lower receiver body” and “(b) at least one
metal insert permanently embedded with said receiver extension housing”
(claim 17). Based on Appellant’s arguments, and the commensurate subject
matter recited in claims 17, 23, 27, and 28, we select claim 17 as
representative of the group of claims rejected for anticipation consisting of
claims 17, 23, 27, and 28, pursuant to our authority under 37 C.F.R.
§ 41.37(c)(iv). Because claims 24 and 25 ultimately depend from claim 17,
and based on Appellant’s arguments, we find the arguments regarding claim
17 dispositive of the outcome for claims 24 and 25 rejected for obviousness
using DiChario as alone or as a base reference. Because claims 33 and 34
have different scope from claim 17 as explained above, we discuss claims 33
and 34 separately. Therefore, Appellant’s arguments in the briefs present us
with two issues: that of (1) representative claim 17, and (2) claims 33 and
34.
Principal Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 9–
22) and the Reply Brief (Reply Br. 1–6), the following issues are presented
on appeal:
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(1) Did the Examiner err in rejecting (a) representative claim 17, as
well as claims 23, 27, and 28 grouped therewith, under 35 U.S.C.
§ 102(a)(2) as being anticipated by DiChario; and (b) claims 24 and 25,
which depend from claim 17, under 35 U.S.C. § 103 as being unpatentable
over either DiChario alone or in combination with Crandall, based on the
Examiner’s failure to establish a prime facie case of anticipation with regard
to representative claim 17?
(2) Has Appellant shown the Examiner erred in rejecting claims 33
and 34 under 35 U.S.C. § 102(a)(2) as being anticipated by DiChario,
because Appellant has not shown that the inventions recited in claims 33 and
34 are the same or substantially the same as that of DiChario?

ANALYSIS
We have reviewed the Examiner’s (i) anticipation rejection of claims
17, 23, 27, 28 (Final Act. 6–7; Ans. 5–6); and (ii) obviousness rejections of
claims 24 and 25 (Final Act. 7–8; Ans. 4–5), and response to Appellant’s
arguments in the Appeal Brief (Ans. 5–11), in light of Appellant’s
arguments in the Appeal Brief (Appeal Br. 5–22) and the Reply Brief (Reply
Br. 1–6) that the Examiner has erred. We conclude that the Examiner fails
to provide a prima facie case of anticipation as to claim 17, however, the
Examiner has provided such as to claims 33 and 34. Our reasoning follows.
The Examiner is required to provide Appellant reasonable notice as to
the basis of a rejection. The notice requirement is set forth by 35 U.S.C.
§ 132:
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[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
35 U.S.C. § 132. That section “is violated when a rejection is
so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).

See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). To establish anticipation, every element and
limitation of the claimed invention must be found in a single prior art
reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “[A]bsence from the reference
of any claimed element negates anticipation.” Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).
In rejecting claims under 35 U.S.C. §§ 102 and 103, it is incumbent
upon the Examiner to establish a factual basis to support the prior art
rejection – the so-called “prima facie” case. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984) (the USPTO has the initial burden of proof “to
produce the factual basis for its rejection of an application under sections
102 and 103.” (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967))).
“[T]he examiner bears the initial burden, on review of the prior art or on any
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other ground, of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“When a reference is complex or shows or describes inventions other
than that claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each reference, if not
apparent, must be clearly explained and each rejected claim specified.” See
37 C.F.R. § 1.104(c)(2) (emphases added)).
Once a prima facie case is established as to anticipation and/or
obviousness, the burden shifts to Appellant to attempt to overcome an
examiner's obviousness rejection on appeal to the Board by submitting
arguments and/or evidence to show that the examiner made an error in either
(1) any underlying findings of fact, or (2) the reasoning used to reach the
legal conclusion of obviousness. See Ex Parte Frye, 94 USPQ2d 1072
(BPAI 2010) (precendential). More specifically, “after the PTO establishes
a prima facie case of anticipation based on inherency, the burden shifts to
[A]ppellant to ‘prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.”’ In re King, 801 F.2d 1324, 1327
(Fed. Cir. 1986) (emphasis added) (quoting In re Swinehart, 439 F.2d 210,
212-13 (CCPA 1971)). See also MPEP §§ 2112 (IV-V).
In the instant case, the Examiner’s notification to Appellant of the
determination of the anticipation of independent claims 17, 33, and 34 is
found at pages 6 through 7 of the Final Rejection, and pages 3 through 4 of
the Examiner’s Answer. Notably, as already discussed, claims 17, 33, and
34 are all apparatus claims for “[a] hybrid lower receiver for a firearm” (see
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claims 17, 33, 34, preambles), and contain different recitations, and different
scope. In particular, claim 17 requires the at least one metal insert to be
“permanently embedded within” the receiver extension housing (see claim
17, limitation b), whereas claims 33 and 34 simply require “a metal insert
embedded within” (see claims 33, 34, limitation b) either the buffer tube
collar (claim 33), or the receiver extension housing (claim 34).
The Examiner’s findings regarding claims 17, 33, and 34 are as
follows:
DiChario (305) discloses a firearm receiver comprising:
a) an integral polymer lower receiver body;
b) a buffer tube collar; 120
c) a pistol grip attachment point; attachment point of
109; see fig. 1
d) a plurality of holes and recesses; 110"; 112"
e) at least one threaded metal insert; 130; col. 5, lines
34-42
f) integrally molded or embedded; col. 5, line 57 to
col. 6, line 7
g) a traditionally threaded component on a buffer tube;
113; col. 5, lines 43-56
h) notches and recesses to permanently retain; 132,
134; col. 5, lines 57-67 and
i) a continuous complete ring structure 130, see fig. 4
Final Act. 6–7 (emphases added); see also Ans. 3–4 (repeating these
findings).
It is problematic that, in making the anticipation rejection (and as a
result, the obviousness rejections of claims 24 and 25), the Examiner maps
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the limitations of claims 17, 33, and 34 to DiChario as a general group
without recognizing the differences in claim scope of limitations b set forth
in each of claims 17, 33, and 34 discussed above (see Final Act. 6–7; Ans. 3–
4). With this in mind, we turn now to the two separate issues presented in
this appeal.
First Issue: Claim 17
Because DiChario (see Figs. 4–7; col. 5, l. 34–col. 6, l. 39) “shows or
describes inventions other than that claimed by the applicant,” such as
permanently embedding a metal insert in a receiver extension housing, “the
particular part relied on must be designated [by the Examiner] as nearly as
practicable. The pertinence of each reference [e.g., DiChario], if not
apparent, must be clearly explained and each rejected claim specified.” See
37 C.F.R. § 1.104(c)(2) (emphases added)). Here, the Examiner has not
made sufficient findings regarding limitation b of claim 17, namely, how
DiChario discloses “at least one metal insert permanently embedded
within said receiver extension housing.”
The Examiner’s rejection (see Final Act. 6–7; Ans. 2–3) does not
clearly address the “permanently embedded” nature of the claimed
invention. And, the Examiner’s attempt to clarify or correct this error in the
Answer (see Ans. 5–11) also falls short. The Examiner’s finding regarding
limitation b of claim 17, therefore, is speculative and unsupported by
evidence in the record. DiChario is silent as to, and the Examiner has not
adequately shown DiChario discloses (implicitly or explicitly), a metal insert
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being permanently embedded in a receiver extension housing, as recited in
claim 17.
Furthermore, we find no such disclosure in DiChario to support the
Examiner’s position that the subject matter (e.g., limitation b recited in claim
17), is anticipated by DiChario. We will not resort to speculation or
assumptions to cure the deficiencies in the Examiner’s fact finding. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). As such, we find that the
Examiner improperly relies upon DiChario to disclose and anticipate the
disputed claim limitations. See Warner at 1017.
Quite to the contrary, we find that although DiChario discloses a
“Hybrid Lower Receiver for a Rifle” (Title), DiChario specifically teaches
that the metal insert 130 (see Fig. 4) of the hybrid lower receiver (see Figs.
5, 6) is not permanently embedded in polymeric lower receiver housing 140,
but releasably and removably inserted into the lower housing 140 using
takedown pins that are removably attached through “takedown pin through-
holes 112a” in metal sidewalls 112a’ of metal insert 130 (see Figs. 4–7; col.
6, ll. 7–18). Furthermore, DiChario explains
Metal sidewalls 112a' defining through-holes 112a"
minimize wear to the lower receiver and takedown pin
when the lower receiver is separated from the upper
receiver for cleaning and re-lubrication. Metal sidewalls
112a', by extending through the elbow to form a unitary
metal insert with the threaded portion of the upwardly
extending lobe 120, increases the structural stability of the
elbow of the integrated polymer/metal hybrid lower
receiver. This hybrid polymer/metal elbow resists cracking
or fracturing such as that experienced by a solely
polymeric lower receiver while also minimizing
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component weight and manufacturing costs by decreasing
the amount of the metal used to construct the lower
receiver.

DiChario col. 6, ll. 14–26 (emphasis added). As a result, we find that
DiChario does not disclose, nor has the Examiner shown DiChario
discloses, “at least one metal insert permanently embedded within said
receiver extension housing” (claim 17, limitation b) (emphasis added), as
set forth in claim 17, as well as claims 23, 27, and 28 grouped therewith.
The Examiner has not (i) made a prima facie case for the anticipation
of claim 17, and ultimately, (ii) shown all of the claim limitations of claim
17 are disclosed by DiChario, and (iii) made a proper showing of
anticipation for claim 17 (see Final Act. 6–7; Ans. 3–4). Similarly, the
Examiner has not set forth a proper showing of (i) anticipation with respect
to dependent claims 23, 27, and 28 depending from, and grouped with, claim
17; and/or (ii) obviousness, with respect to dependent claims 24 and 25,
which ultimately depend from claim 17 and contain similar limitations, over
DiChario taken alone or in combination with Crandall.
Therefore, based on the record before us, we find that the Examiner
has not properly established factual determinations or articulated reasoning
with a rational underpinning to support the (i) factual finding of anticipation
for claim 17; and (ii) the resultant legal conclusion of obviousness for claims
24 and 25, resulting in a failure to establish a prima facie of (i) anticipation
for claims 17, and claims 23, 27, and 28 grouped therewith; and (ii)
obviousness for claims 24 and 25. As a result, based on the record before
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us, we conclude the Examiner erred in rejecting independent claim 17, and
claims 23–25, 27, and 28 depending respectively therefrom, under 35 U.S.C.
§§ 102(a)(2), 103, and we cannot sustain the Examiner’s (i) anticipation
rejection of claims 17, 23, 27, and 28 over DiChario; and (ii) obviousness
rejection of claims 24 and 25 over either DiChario alone or in combination
with Crandall.5
Second Issue: Claims 33 and 34
Prima Facie Case of Anticipation for Claims 33, 34
With regard to claims 33 and 34, which recite “a metal insert
embedded within” (claims 33, 34, limitations b) either “said buffer tube
collar” (claim 33), or “said receiver extension housing” (claim 34), the
Examiner makes the same general findings discussed above with regard to
claim 17 (see Final Act. 6–6; Ans. 3–4). However, due to the difference in

5 MPEP § 717.02(c)(I)(D) suggests that “the examiner should anticipate
that the reference may be disqualified” and “consider whether other
rejections based on alternative prior art should be made in case the
reference [or any portion thereof] is disqualified.” In other words, the
Examiner is encouraged to present all applicable prior art rejections in
the event of disqualification. In this instance, we note that references
applied as prior art in previous Office Actions may be applicable, such as
Dubois (US 2010/0162604 A1; published July 1, 2010) (teaching a lower
polymer receiver 6; see Figs. 1, 6; ¶¶ 9, 10, 25; Abstract); Rogers et al.
(US 2010/0162609 A1; published July 1, 2010) (teaching a receiver
extension 93 and a lower receiver; 10, 14, 15, 17; ¶¶ 31, 41, 43, 44) and
Allyn (US 3,336,691; issued August 22, 1067) (teaching a threaded
metal insert; col. 6, l. 74–col. 8, l. 1). Upon further prosecution of the
instant application on appeal, the Examiner may wish to consider the
appropriateness of applying different references combined differently in
determining the patentability of claim 17.
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claim scope as compared to claim 17 (requiring permanent embedding of the
metal insert in the receiver extension housing), our review of DiChario
reveals that DiChario meets all of the limitations recited in claims 33 and 34.
In particular, the metal insert 130 (see Fig. 4) shown in Figures 4
through 7 and described at column 5, line 34 through column 6, line 39 of
DiChario is removably embedded in the lower receiver housing 140. Thus,
under the broadest reasonable interpretation of “embedded within,”
DiChario’s metal insert which is removably embedded, although somewhat
different in appearance and function than Appellant’s, (see DiChario Figs.
4–7 compared with Appellant’s Figs. 3–6), is encompassed by the language
of claims 33 and 34 of being “embedded within” (as opposed to claim 17’s
recitation of “permanently embedded within”).6
Furthermore, DiChario’s polymer lower receiver body 140 has an
integrally molded polymer buffer tube collar or receiver extension housing
(i.e., upwardly extending lobe 120) that extends upwardly from a rear
portion of the receiver body 140 (see Figs. 6, 7) (showing dotted line
perimeter of upwardly extending lobe 120 of polymer lower receiver
housing 140 concentrically surrounding the metal insert 130), as recited in
claims 33 and 34. The insert 130 (see Fig. 4) fits in an embedded fashion

6 We note that in paragraph 20 of the Second Scoutten Declaration, the
declarant states “‘embedded within” as it is used in the claims of the ‘763
Application to mean that the metal insert is a permanently and integrally
secured in the lower body.” We decline to import the limitation of
“permanently” into claims 33 and 34 from the Specification. During
prosecution Appellant is free to amend their claims to include such a
limitation as Appellant did in claim 17.
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into the lower receiver housing 140 “wherein said insert is concentrically
oriented within said buffer tube collar” as required by claim 33.
Therefore, based on the record before us, we find that the Examiner
has properly established factual determinations to support the factual finding
of anticipation for claims 33 and 34, resulting in establishing a prima facie
of anticipation for claims 33 and 34. As discussed above, once a prima facie
case is established as to anticipation, the burden shifts to Appellant to
attempt to overcome an examiner's rejection on appeal to the Board by
submitting arguments and/or evidence to show that the examiner made an
error in any underlying findings of fact. See Ex Parte Frye, 94 USPQ2d
1072 (BPAI 2010) (precedential).
In this case, Appellant has made no showing that DiChario fails to
anticipate claims 33 and 34, nor has Appellant presented any argument or
evidence to overcome the Examiner’s prima facie case of anticipation for
claims 33 and 34 (see generally Appeal Br. 9–19; Reply Br. 1–6).
As a result, based on the record before us, we conclude Appellant has
not sufficiently (i) rebutted the Examiner’s prima facie case of anticipation
for claims 33 and 34; and/or (ii) shown that the Examiner erred in finding
DiChario discloses all of the limitations of claims 33 and 34 arranged in the
same manner as claims 33 and 34. In fact, DiChario’s claim 1 recites similar
subject matter as claims 33 and 34, namely that of a combination (i.e.,
hybrid) metal/polymer lower receiver for use in a rifle (i.e., firearm),
including (a) a polymeric lower receiver housing with an integral polymeric
upwardly extending lobe; and (b) a metal insert secured (i.e., embedded)
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within the polymeric upwardly extending lobe (DiChario claim 1, col. 6, l.
58–col. 7, l. 5).
1.130(b) Declaration and Disqualification of DiChario as Prior Art
Instead of arguing the merits of the Examiner’s findings and prima
facie case determination with regard to claims 33 and 34, Appellant
primarily contends that “DiChario is not prior art to the claimed invention”
(Appeal Br. 9; see generally Appeal Br. 9–22; Reply Br. 1–6). Appellant
reasons “35 U.S.C. § 102(b)(2)(B) provides that a third party disclosure
shall not be prior art to a claimed invention under 35 U.S.C. § 102(a)(2)
if the subject matter disclosed had, before such subject matter was
effectively filed, been publicly disclosed by the inventor” (Appeal Br. 9
citing MPEP§ 2155.02). Appellant contends that the 130(b)
Declaration, and specifically Exhibits 1–3 thereof, demonstrate
evidence of public disclosure of the same or substantially the same
invention as disclosed in DiChario, thus resulting in the disqualification
of all or portions of DiChario as prior art under the 35 U.S.C. §
102(b)(2)(B) exception to 35 U.S.C. § 102(a)(2) as set forth in MPEP §
717.01 (b) (see Appeal Br. 9–16; Reply Br. 1, 4–6, citing 130(b)
Declaration). We agree with Appellant (Appeal Br. 9) that
disqualification of subject matter of a prior art reference used under 35
U.S.C. § 102(a)(2) requires two prongs to be met:
(1) whether the subject matter was made publicly accessible by the
inventor prior to the earliest effective filing date of the prior art reference
being applied (hereinafter, “Prong One”); and
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(2) whether the subject matter disclosed by the inventor is the
same or substantially the same as all or a portion of the applied reference
under 35 U.S.C. § 102(a)(2) (hereinafter, “Prong Two”). See MPEP
§ 717, Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) [R-
11.2013] (emphases added); MPEP § 717.01(b)(1), Evaluation of
Declarations or Affidavits under 37 CFR 1.130(b) [R-07.2015]; MPEP
§ 717.01(b)(2), Determining if the Subject Matter of the Intervening
Disclosure is the Same as the Subject Matter of the Inventor-Originated
Prior Public Disclosure [R-07.2015]. For the reasons that follow, we
find that Prong One (i.e., as to public disclosure) has been met, and
Prong Two (i.e., as to the subject matter (all or a portion) being the same
or substantially the same) has not been met. Therefore, no portion of
DiChario is disqualified as prior art under 35 U.S.C. § 102(a)(2).
Prong One: Public Accessibility of Subject Matter of Claims 33 and 34
The inventor David K. Roberts sets forth persuasive evidence that
a public disclosure was made via the three Facebook posts made by Mr.
Roberts on June 17 and 21, 2013, and April 17, 2013. ¶¶ 5–8 of 130(b)
Declaration. These paragraphs establish public disclosure (i) prior to
(a) Appellant’s April 8, 2014 filing date, (b) Appellant’s June 28, 2013,
provisional application filing date, and (c) DiChario’s July 29, 2014,
issue date; but (ii) after DiChario’s June 26, 2013, filing date. This is
supported by paragraphs 2 and 4 through 8 of the Declaration of David
K. Roberts Under 37 C.F.R. § 1.132 signed September 11, 2017
(hereinafter, “132 Declaration of David Roberts”). This declaration
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establishes that “the Facebook group titled ‘Blackwater Alumni’ (the
‘Group’) was made up of approximately 600 former security
contractors of Blackwater Protection and veterans of the United States
armed forces” (¶ 5), which Group was therefore made up of (i) an
audience “highly knowledgeable about and skilled with firearms” (¶ 6);
and (ii) which were “end users of AR type rifles” (¶ 7).
In the instant case, we find the Exhibits attached to the 130(b)
Declaration show that David K. Robert’s June 17 and 21, 2013, and April
17, 2013 posts on a Facebook page, constituted a public disclosure by the
inventor. A disclosure is public if it was ‘“disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence can locate it.’” Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cri. 2016) (citing
Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed.
Cir. 2008).7 Here thee Facebook disclosures by David K. Roberts (see
130(b) Declaration, Exhibits 1–3), made over the Internet, were
disseminated to over 600 gun enthusiasts of AR-15 style rifles, a group of
interested public of ordinary skill in the art of firearms (see 132 Declaration
of David Roberts).
Appellant’s contentions (see Appeal Br. 17–19) that the
confidentially requests of David K. Roberts made in the public
disclosures (see Exh. 2 (“Please don[’]t share the picture below it is just
for ya’ll”); Exh. 3 (“I[] am in the patent process now so keep you[]r
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mouths shut”)) are immaterial are persuasive. Notably, the Examiner’s
objection to the Exhibits in this regard were withdrawn by the Examiner,
as the Examiner also found Appellant’s arguments persuasive in this
regard (see Ans. 9) (“The objections directed to . . . a request for
confidentiality are withdrawn in view of applicant’s arguments as
presented on pages 17-19 of the Appeal Brief”).
In view of the foregoing, we are in agreement with Appellant (see
Appeal Br. 17–19) that there was a public disclosure by Mr. Roberts of
the subject matter shown and described in the three Facebook posts from
2013, prior to the filing date of DiChario. Therefore, Prong One has
been met, and we turn next to Prong Two.
Prong Two: Are Limitations of Claims 33, 34 Same or Substantially
Same as DiChario

Although we agree with Appellant’s contentions that the 130(b)
Declaration and the 132 Declaration of David Roberts, evidence a public
disclosure (see Appeal Br. 17–19), we conclude that Appellant has not
sufficiently shown that the inventions recited in claims 33 and 34 are the
same or substantially the same as that of DiChario. Instead, we are in
agreement with the Examiner (see Final Act. 4–5; Ans. 5–11) that Exhibits
1–3, of the 130(b) Declaration, show and describe different subject matter.
Exhibit 1
As shown and described in Exhibit 1, the Facebook post dated June
21, 2013, Mr. Roberts publicly disclosed a “[p]olymer [r]eceiver with

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[m]etal inserts molded into the receiver itself” (see 130(b) Decl., Exh. 1).
As seen in the cross-sectioned side-view in the picture included in the post,
a ring-shaped metal insert is present in the buffer tube collar or receiver
extension housing of the lower receiver of a firearm. This metal insert,
however, is not the same or substantially the same as the metal insert, item
130, for a lower receiver shown and described by DiChario for at least
several reasons.
First, DiChario’s metal insert 130 is not permanently embedded in a
polymer lower receiver, but removably attached, via takedown pins that
pass through metal sidewalls 112a’ and polymeric sidewall 112’ by way of
takedown pin through-holes 112a” (see Figs. 4, 6, 7; col. 6, ll. 7–26).
Second, the metal insert 130 shown in DiChario’s Figures 4 through
7 has an elongated elevated plate 138 made to extend through plate opening
138a in lower polymeric receiver housing 140 to “allow[] for the marking
of a serial number or other identifier upon the lower receiver.” (DiChario
col. 6, l. 30–31). In contrast the ring-shaped metal insert shown embedded
in Exhibit 1 is completely embedded and surrounded by the polymer lower
receiver housing, and has no provision for displaying a serial number
externally while the firearm is assembled, as shown in the picture.
Third, DiChario’s metal insert 130 has extended metal sidewalls
112a’ having takedown pin through-holes 112a” (see Figs. 4–7) which
interact with a polymeric lower receiver housing 140 that has sidewalls
112’ having takedown pin through-holes 112” for receiving a takedown pin
112 (see Figs. 5, 7; col. 6, ll. 7–14). This is not the same or substantially
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the same as the picture and description in Exhibit 1 of a ring-shaped metal
insert which has not extended legs fully surrounded by a polymer receiver.
In view of the above findings, the statement in paragraph 6 of the
130(b) Declaration that “the hybrid lower receiver shown in my post is
virtually identical to that of FIG. 3 of DiChario” (1.130(b) Decl. ¶ 6) is not
persuasive. Similarly, the statements in (i) paragraph 14 of the Second
Scoutten Declaration, that “Exhibit 1 discloses the same lower receiver
as DiChario” as emphasized by Figure 3 of DiChario; and (ii) paragraph
21 of the Second Scoutten Declaration that “Exhibit 1 discloses the
same subject matter as DiChario” (Second Scoutten Decl. ¶ 21), are not
persuasive. Notably, Figures 2 and 3 of DiChario, relied upon in the
above paragraphs of the declarations are described at column 4, line 66
through column 5, line 33, appear to be a different embodiment than
that of Figures 4 through 7. Because Exhibit 1 does not disclose the
same or substantially the same subject matter as DiChario (see e.g.,
Figures 4–7; col. 5, ll. 34–col. 6, l. 39), even if it was publicly disclosed
prior to DiChario’s filing date, cannot serve to disqualify DiChario as
prior art under 35 U.S.C. § 102(a)(2).
Exhibit 2
As shown and described in Exhibit 2, the Facebook post dated June
17, 2013, Mr. Roberts publicly disclosed “a polymer lower with Marine
brass inserts or a machined billet lower” (130(b) Decl., Exh. 2). DiChario
more broadly teaches using a metal insert 130 and a polymeric lower
receiver housing 140, wherein: (i) the “[m]etal insert 130 can be
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constructed of any suitable metal, and is preferably constructed of aircraft
grade aluminum” (col. 5, ll. 38–39); and (ii) the polymeric lower receiver
housing 140 “can be constructed of any suitable polymeric material, and is
preferably constructed of glass reinforced nylon” (col. 5, ll. 40–42; see also
Figs. 4–7). Marine brass, the material disclosed by Exhibit 2 as composing
the metal insert, which is ring-shaped, is not the same or substantially the
same as the aircraft grade aluminum preferred by DiChario to make the
metal insert 130. Also, the ring-shaped brass insert (see 130(b) Decl., Exh.
2) has a different shape than the insert 130 of DiChario, which has extended
sidewalls with through-holes for takedown pins and an extended, exposed
serial number plate (see DiChario Figs. 4, 6, 7). In paragraph 22 of the
Second Scoutten Declaration, the declarant admits that what is depicted
in Exhibit 2’s post is a “polymer lower with Marine brass inserts,” and
not an aircraft grade aluminum or other type of metal insert.
In view of the above findings, the statement in paragraph 7 of the
130(b) Declaration that the same image used in Exhibit 1 and shown in
Exhibit 2 “is virtually identical to FIG. 3 of DiChario” is not persuasive.
Simiaraly, the statement in paragraph 25 of the Second Scoutten
Declaration, that “Exhibit 2 discloses the same subject matter as
DiChario” is not persuasive. Because Exhibit 2 does not disclose the
same or substantially the same subject matter as DiChario, based on the
record before us, Exhibit 2, even if it was publicly disclosed prior to
DiChario’s filing date, cannot serve to disqualify DiChario as prior art
under 35 U.S.C. § 102(a)(2).
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Exhibit 3
As shown and described in Exhibit 3, the Facebook post dated April
17, 2013, Mr. Roberts publicly disclosed a ring-shaped metal insert with
internal threads on the inside and knurling on the outside (see 130(b) Decl.,
Exh. 3). As disclosed in the post of Exhibit 3, “the alloy insert [is to] be
embedded into the polymer receiver,” and “the knurling along the outside
beds the insert into the polymer” of the lower receiver.
As already discussed with regard to Exhibits 1 and 2, DiChario’s
Figures 4 through 7 show, and the accompanying description describes, a
metal insert 130 and a polymeric lower receiver housing 140 with several
important differences, such as (i) extended metal sidewalls; and (ii) an
externally exposed elevated plate 138 showing through plate opening 138a
in lower receiver housing. This is not the same or substantially the same as
the ring-shaped metal insert made of Marine brass with knurling on the
outside discussed in Exhibit 3. Notably, the insert of Exhibit 3 is made for
permanent attachment by molding, and lacks extended legs with takedown
pin through-holes for removable attachment in a polymer lower receiver as
shown in DiChario’s Figures 4 through 7 and described in the
accompanying text at column 6, lines 6 through 18. The insert of Exhibit 3
also lacks an externally exposed elevated plate for showing through an
opening in the lower receiver housing for carrying a serial number or other
information while the firearm is assembled.
In view of the above findings, the statement paragraph 27 of the
Second Scoutten Declaration, that “Exhibit 3 discloses the same subject
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matter as DiChario,” is not persuasive. Notably, 130(b) Declaration of
David K. Roberts does not make any statement regarding whether the
subject matter shown and described in Exhibit 3 is the same or
substantially the same as DiChario. Namely, the 130(b) Declaration is
silent as to whether “the thread metal insert that is embedded in the
portion of [the] hybrid polymer lower receiver” shown in Exhibit 3 is
the same or substantially the same as DiChario’s metal insert 130 shown
in Figures 4 through 7 of DiChario (see 130(b) Decl. ¶ 8).
Because Exhibit 3 does not disclose the same or substantially the
same subject matter as DiChario, DiChario, based on the record before
us, Exhibit 3, even if it was publicly disclosed prior to DiChario’s filing
date, cannot serve to disqualify DiChario as prior art under 35 U.S.C.
§ 102(a)(2).
Summary
As a result of the above findings with regard to the 130(b)
Declaration and Exhibits 1 through 3 attached thereto, and on the record
before us, we do not find the Second Scoutten Declaration to be credible
evidence showing that the publicly disclosed subject matter of the
Facebook posts made by Mr. Roberts on June 17 and 21, 2013, and April
17, 2013, disclose the same or substantially the same subject matter as
DiChario. Appellant’s contentions that the Second Scoutten Declaration
provides evidence that the publicly disclosed subject matter of Exhibits
1–3 is the same or substantially the same as DiChario’s disclosure (see
Appeal Br. 12–16), are not persuasive.
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In view of the foregoing, Prong Two has not been met. Therefore,
Appellant has not satisfied the requirements of 35 U.S.C. § 102(b)(2)(B),
providing that a third party disclosure shall not be prior art to a claimed
invention under 35 U.S.C. § 102(a)(2) if the requirements for a
declaration under 37 C.F.R. 1.130(b) have been met (Prong One and/or
Prong Two). See MPEP §§ 717, 717.01(b)(1), 717.01(b)(2).
Accordingly, Appellant has not sufficiently shown DiChario to be
disqualified as prior art under 35 U.S.C. § 102(a)(2). And, because
Appellant has not sufficiently (i) rebutted the Examiner’s prima facie case
of anticipation for claims 33 and 34; and/or (ii) shown that the Examiner
erred in finding DiChario discloses all of the limitations of claims 33 and
34 arranged in the same manner as claims 33 and 34, we must sustain the
Examiner’s anticipation rejection of claims 33 and 34.
Summary
(1) The Examiner erred in rejecting claims 17, 23, 27, and 28 as being
anticipated by DiChario, and claims 24 and 25 as being obvious over
DiChario alone or in combination with Crandall, because the Examiner
failed to make a prima facie case for the anticipation of claim 17 over
DiChario.
(2) Appellant has not shown the Examiner erred in rejecting claims 33
and 34 as being anticipated by DiChario, because although the 130(b)
Declaration evidences a public disclosure, Appellant has not shown that the
inventions recited in claims 33 and 34 are the same or substantially the same
as that of DiChario.
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CONCLUSION
In summary, we reverse the Examiner’s decision to reject claims 17,
23–25, 27, and 28, and we affirm the Examiner’s decision to reject claims 33
and 34.
For all of the reasons above, we hold as follows:

Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
17, 23,
27, 28,
33, 34
102(a)(2) DiChario 33, 34 17, 23, 27,
28
24 103 DiChario, Crandall 24
25 103 DiChario 25
Overall
Outcome
33, 34

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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)(1)(iv). See
37 C.F.R. §§ 41.50(f), 41.52(b) (2013).

AFFIRMED-IN-PART