Ex Parte 7194960 et alDownload PDFBoard of Patent Appeals and InterferencesJun 29, 201090008731 (B.P.A.I. Jun. 29, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PepperBall Technologies, Inc., Appellant ____________ Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B21 Technology Center 3900 ____________ Decided: June 30, 2010 ____________ Before RICHARD E. SCHAFER, JEFFREY B. ROBERTSON, and DANIEL S. SONG, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL 1 The patent under reexamination (hereinafter the “‘960 Patent”) issued to Edward J. Vasel, Scott C. Nunan, Gregory A. Niederhaus, and Peter G. Coakley on March 27, 2007 from Application 10/866,031 filed on June 10, 2004, which is said to be a continuation of Application 09/289,258, filed on April 9, 1999, now United States Patent 6,393,992, which is the subject of Reexamination Control 90/008,728 (Appeal No. 2010-003789). Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 2 PepperBall Technologies, Inc., the owner of the ‘960 Patent under reexamination, appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-28 (Appeal Brief filed August 21, 2009, hereinafter “Br.,” at 4; Final Office Action mailed November 7, 2008).2 We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM. STATEMENT OF THE CASE This reexamination proceeding arose from a third-party request for ex parte reexamination, filed by Security with Advanced Technology, Inc. (Request for Ex Parte Reexamination, filed August 15, 2007). As indicated above, the current appeal is related to Appeal No. 2010-003789, Reexamination Control 90/008,728, United States Patent 6,393,992 B1 which is decided concurrently with the present appeal. We also understand that the ‘960 Patent was the subject of litigation styled PepperBall Techs., Inc. v. Sec. with Advanced Tech., Inc. et al., in the U.S. District Court for the Southern District of California, Civil Action No. 07 CV 0672 JAH (POR), which has subsequently settled and the case dismissed. (Br. 3.) The ‘960 Patent states that the invention involves a non-lethal projectile system, including a non-lethal projectile that delivers an inhibiting substance to a target. (Col. 1, ll. 17-48.) 2 See Patent Assignment Abstract of Title, Reel 016793, Frame 0958, which was entered into the record of this proceeding as “Title Report” on July 6, 2007. Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 3 Claims 1, 3, 4, and 23 on appeal read as follows: 1. A system comprising: a frangible projectile to be impacted with a target where the frangible projectile is adapted to be launched such that a propellant gas acts directly on the frangible projectile to propel and launch the frangible projectile without an intermediary between the frangible projectile and the propellant gas and where an ignitable substance is not used in launching the frangible projectile; the frangible projectile comprising a rigid frangible shell having a thickness and a volume formed within, wherein the rigid frangible shell ruptures upon impact with the target; and a substance contained within the volume; wherein the substance comprises a powdered inhibiting substance, wherein upon impact with the target the rigid frangible shell ruptures, omnidirectionally dispersing the powdered inhibiting substance proximate to the target into a cloud; and wherein the powdered inhibiting substance comprises nonivamide. 3. The system of claim 1 wherein the rigid frangible shell [further comprises a material selected from the group consisting of polymers and plastics] is generally spheroid such that the frangible projectile is a generally spheroid frangible projectile. 4. The system of claim [1] 3 wherein the rigid frangible shell [further comprises at least one structurally weakening feature] is configured to rupture upon impact where the omnidirectional dispersion of the powdered inhibiting substance into the cloud results from the rupturing of the rigid frangible shell so that the cloud has a length that is greater than a size of an adult human head within a time of a human target reflexively reacting to being impacted by the frangible projectile. Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 4 23. The system of claim 1, wherein the frangible projectile is launched independent of one or more other projectiles such that only the frangible projectile is launched at a time targeted at the target. (Claims App’x, Br. 331, 332, 335.) The Examiner relied upon the following as evidence of unpatentability (Examiner’s Answer mailed October 1, 2009, hereinafter “Ans.,” 3-4): Fogelgren 3,921,614 Nov. 25, 1975 Flatau 3,951,070 Apr. 20, 1976 Honigsbaum 4,976,202 Dec. 11, 1990 Grinberg 5,009,164 Apr. 23, 1991 Smith 5,018,450 May 28, 1991 Luxton 5,035,183 July 30, 1991 Kotsiopoulos 5,254,379 Oct. 19, 1993 [Kotsiopoulos ‘379] Carbone 5,361,700 Nov. 8, 1994 Kotsiopoulos 5,639,526 June 17, 1997 [Kotsiopoulos ‘526] Fedida 5,821,450 Oct. 13, 1998 Vasel 5,965,839 Oct. 12, 1999 Admitted Prior Art, Response to January Office Action, filed in prosecution of U.S. Patent 5,965,830, a parent application to the ‘962 Patent. Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 5 PACHYDERM, No. 20, 1995, including the article Osborn, F.V. and L.E.L. Rasmussen, Evidence for the Effectiveness of an Oleo-Resin Capsicum Aerosol as a Repellent against Wild Elephants in Zimbabwe. PACHYDERM, No. 21, 1996. PACHYDERM, No. 20, 1995. Appellant relied on certain parts of the following (Br. 337-338): Ex. 9.1: Decl. of Eric P. Wenaas dated December 8, 2008. Ex. 9.2: Decl. of Edward J. Vasel (hereinafter Vasel2 Declaration) dated December 8, 2008. Ex. 9.3: Decl. of Craig L. Beery dated July 14, 2001. Ex. 9.4: Decl. of Roger E. Behrendt dated July 17, 2001. Ex. 9.5: Decl. of Charlie Campe dated July 15, 2001. Ex. 9.6: Decl. of Charles S. Heal dated June 19, 1998. Ex. 9.7: Decl. of Charles N. Mills dated July 16, 2001. Ex. 9.8: Decl. of Edward J. Vasel (hereinafter the Vasel1 Declaration), dated July 17, 2001. Ex. 9.9: Decl. of Michael R. Wagg dated July 17, 2001. Ex. 9.10: Exhibit A: Collection of magazine/journal articles. Ex. 9.11: Exhibit B: Collection of newspaper articles. Ex. 9.12: Exhibit C: Excerpt of Testimony given by Dr. Paul Freedenberg to the Senate Banking Committee dated February 7, 2001. Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 6 The Examiner rejected claims 1-28 as follows: I. Claims 4, 26, and 28 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; II. Claims 23-25 under 35 U.S.C. § 112, second paragraph, as being indefinite; III. Claims 1, 3-8, 10-21, and 26-28 under 35 U.S.C. § 102(b) as anticipated by Honigsbaum; IV. Claims 1, 3-8, 10-21, and 26-28 under 35 U.S.C. § 103(a) as unpatentable over Honigsbaum in view of APA; V. Claims 1-4, 6, 7, 9-11, 13-21, 26, and 28 under 35 U.S.C. § 103(a) as unpatentable over Flatau in view of Fedida or APA, as evidenced by Osborn; VI. Claims 5 and 12, under 35 U.S.C. § 103(a) as unpatentable over Flatau in view of Fedida or APA, further in view of Grinberg; VII. Claims 1-28 under 35 U.S.C. § 103(a) as unpatentable over Luxton in view of Fedida or APA, as further evidenced by Osborn; and VIII. Claims 1-28 under 35 U.S.C. § 103(a) as unpatentable over Kotsiopoulos in view of Fedida, with further evidence by Carbone, Flatau. 35 U.S.C. § 112, First Paragraph Rejection The Examiner found that claims 4, 26, and 28 fail to comply with the written description requirement because there is no support in the Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 7 Specification for relating the length of the dispersion cloud to human reaction time. (Ans. 4-5.) Appellant contends that support for the claim limitations can be found in Figures 25-27 and column 26, lines 46-51. (Br. 20-23, fn. 16.) Appellant also argues that the reaction time between individuals is consistent, such that one skilled in the art would fully understand the metes and bounds of the claims. (Br. 21.) Thus, a first issue on appeal is: does the ‘960 Patent convey, with reasonable clarity, to those skilled in the art that as of the filing date, that Appellant was in possession of the relationship between the size of the cloud of the radially dispersed powdered inhibiting substance and the reflex time of a human target? FINDINGS OF FACT (“FF”) 1. Figures 25-27 from the ‘960 Patent are reproduced below: Figures 25-27 represent a sequence of profile views of a target 5000, which is impacted by a projectile system 600 (fig. 25). Upon impact, the projectile system 600 ruptures, dispersing the contents 5004 in a radial, Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 8 cloud-like manner (fig. 26) causing the target’s head to be surrounded by the dispersing cloud (fig. 27). (Col. 26, ll. 40-61.) 2. The ‘960 Patent states: [a]bout simultaneously with dispersal of the contents 5004 of the capsule, the target 5000 begins to hunch towards the point of impact of the capsule on his/her body . . . [and] such movement is a natural reaction for people when they are hit by something with such force. Within a matter of seconds, and as illustrated in FIG. 27, the target’s head 5002 is essentially surrounded by the dispersing cloud of inhibiting and/or marking substance 5004. (Col. 26, ll. 49-61.) 3. The ‘960 Patent states that in testing the projectile system utilizing a wall above a stall in which a target is hiding, “the individual could not escape the effects of the inhibiting substance and was well incapacitated thereby.” (Col. 29, ll. 24- 26.) PRINCIPLES OF LAW 35 U.S.C. § 112, first paragraph states that “[t]he specification shall contain a written description of the invention.” In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue. See Fujikawa v. Wattanasin, 93 F.3d 1559, 1570, 39 USPQ2d 1895, 1904 (Fed. Cir. 1996). Nonetheless, the disclosure must … convey with reasonable clarity to those skilled in the art that … [the inventor] was in possession of the invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Put another way, one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims. Waldemar Link GmbH & Co. Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 9 v. Osteonics Corp., 32 F.3d 556, 558, 31 UPSQ2d 1855, 1857 (Fed. Cir. 1994). That inquiry is a factual one and must be assessed on a case-by-case basis. See Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116. Purdue Pharm. L.P. v. Faulding, Inc., 230 F.3d 1320, 1323-24 (Fed. Cir. 2000). ANALYSIS Initially, we note that claims 4 and 26 relate only to the size of the cloud with respect to a human target reflex reaction time. Claims 4 and 26 do not require the cloud to be in contact with any particular part of a human target. In contrast, claim 28 requires the cloud to contact a human target’s face. Nevertheless, we agree with the Examiner that the ‘960 Patent, while supporting that the cloud dispersion occurs in a matter of seconds, does not reasonably convey that Appellant was in possession of the relationship between the cloud dispersion size and the reflex reaction time of a human target. (Ans. 19.) Specifically, Figures 25-27, and the corresponding description thereof, describe impact of a projectile and rupture where the target hunches toward the point of impact “about simultaneously” with the dispersal of the contents. (FF 1-2.) While Figures 26 and 27 depict cloud-like dispersions 5004 of the projectile contents, it is unclear from the drawings whether the cloud is of the recited sizes in a time frame that corresponds to the reflex reaction recited in the claim. That is, it cannot be discerned from Figures 25 and 26 and the description thereof whether the reflex reaction of the target occurs prior to the cloud reaching the recited sizes. Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 10 Appellant additionally contends that Figures 25-27 and the corresponding description thereof provide support for the recited relationship because the reflexive reaction time reacting to impact from a projectile “is consistent between individuals.” (Br. 21-22.) Yet, Appellant has not presented any evidence as to what such reflexive reaction times correspond to in units of absolute time. Therefore, we are not persuaded that the ‘960 Patent provides support for the general relationship between reflex reaction time and cloud size recited in the claims. Moreover, Appellant’s reliance on the testing disclosed in the ‘960 Patent for support is misplaced. The testing was conducted in a bathroom stall where the individual was hiding and where the projectile was fired at the wall above the stall. (FF 3.) Thus, that an individual could not escape the effects of the inhibiting substance in such a confined space is not sufficient to show that Appellant was in possession of the relationship between cloud size and reflexive reaction time recited in the claims. 35 U.S.C. § 112, Second Paragraph Rejection The Examiner determined that claims 23-25 are indefinite because the claims do not recite sufficient structure to support the claimed methodology. (Ans. 5.) Appellant contends that the functional language recited in claims 23- 25 defines the structure of the projectile, and distinguishes the claimed system over prior art systems that require launching with multiple projectiles. (Br. 33-35.) Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 11 Thus, a second issue on appeal is: does the functional language “wherein the frangible projectile is launched independent of one or more other projectiles” limit the structure of the projectile with a reasonable degree of clarity and particularity such that one skilled in the art would fully appreciate and understand the metes and bounds of claim 23? PRINCIPLES OF LAW The test for definiteness under 35 U.S.C. §112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). “[T]here is no support . . . for the proposition, put forward here, that ‘functional’ language, in and of itself, renders a claim improper.” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). ANALYSIS The Examiner’s rejection of claims 23-25 reads in its entirety “[c]laims 23-25 are indefinite in that they lack structure to support the claimed methodology. These limitations are better suited to method of use claims.” (Ans. 5.) While we agree with the Examiner that the recited limitations may be “better suited” for method claims, we agree with Appellant that claims 23-25 are not purely functional, but impart structure to the projectile system to where the projectile is readily launched individually. (Br. 33-34.) As stated Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 12 by Appellant, such structure “must be sufficiently strong to allow individual loading and launched individually as claimed, while still being frangible so as to rupture upon impact with a target to omnidirectionally disperse.” (Br. 33-35.) The Examiner’s rejection does not discuss why the recited limitations fail to define the structure of the projectile such that one of ordinary skill in the art would not understand what is claimed in light of the Specification. Accordingly, we do not sustain the Examiner’s rejection of claims 23-25. 35 U.S.C. §§ 102, 103 Rejections Rejections based on Honigsbaum and Luxton (Rejections III, IV, and VII) Independent claims 1, 8, and 17 on appeal recite that “an ignitable substance is not used in launching the frangible projectile” and that “the rigid frangible shell ruptures, omnidirectionally dispersing the powdered inhibiting substance proximate to the target into a cloud.” Regarding these limitations, the Examiner found that Honigsbaum’s capsules would be inherently capable of being launched in the manner claimed because the capsules must withstand an initial impact of a grenade explosion. (Ans. 23- 24.) The Examiner also stated: As to the combination with admitted prior art Kotsiopoulos, it is argued that the [sic] Kotisopoulos is not capable of, nor capable of being modified to allow the Honigsbaum capsules to break. The Examiner disagrees because it is not technically impossible. Furthermore, it certainly would have been within the scope of routine experimentation to those having ordinary skill in the art at the time of the invention to have altered the shell thickness when launching with different velocity Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 13 launching mechanisms in order to ensure breakage upon impact at a given velocity. (Ans. 30.) With respect to Luxton, the Examiner stated that launching the projectile where an ignitable substance is not used “has no bearing on the structure of the projectile set forth in the system . . . [because] in order to meet this limitation, the Luxton projectile only need be capable of being launched without an ignitable substance.” (Ans. 40.) The Examiner also stated that “there is nothing to prevent launch from an equivalent force from a non-ignitable launch mechanism. Such modification is certainly technically feasible which renders the Luxton projectile capable of the claimed intended use.” (Ans. 42.) The Examiner further stated: “[w]ithin the art: frangible projectiles were known, compressed launchers for launching them were known . . . . The resultant combination yielding the claimed invention as established would not have been non-obvious as argued despite the particular launch or projectile requirements of Luxton alone.” (Ans. 42-43.) Appellant contends that Honigsbaum teaches away from and does not enable projectiles launched without an ignitable substance and that rupture upon impact with a target. (Br. 44, 46, 49, 71-72.) Appellant contends that Luxton does not disclose all of the limitations of the recited system, and instead teaches away from a frangible projectile that ruptures when launched without an ignitable substance to omnidirectionally disperse the powdered inhibiting substance, as claimed. (Br. 208.) Specifically, Appellant argues that Luxton discloses projectiles that are fired from standard firearms, and hence does not suggest a projectile Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 14 that is launched without the use of an ignitable substance. (Br. 209-210.) Appellant further argues that the Examiner has not sufficiently supported the position that Luxton’s projectiles are “capable of” being launched without an ignitable substance while also being capable of rupturing on impact as recited in the claims. (Br. 218.) Accordingly a third issue on appeal is: Did the Examiner err in determining that Honigsbaum’s and Luxton’s projectiles would be inherently capable of launching without an ignitable substance and rupturing upon impact with a target radially dispersing the powdered inhibiting substance proximate to the target in a cloud? FINDINGS OF FACT (“FF”) 4. Honigsbaum discloses grenades with igniters and propelling charges comprising frangible spheroid capsules including irritants. (Col. 1, ll. 59-68; col. 3, ll. 53-63; col. 6, ll. 17-30.) 5. Luxton discloses “a new form of nonlethal projectile and cartridge casing, adapted for use in firearms.” (Col. 1, ll. 5-9; col. 4, ll. 1-3.) 6. Luxton discloses that problems for producing frangible projectiles for real firearms include providing a projectile with “sufficient strength to withstand the stress of feeding and firing in a firearm yet frangible enough to break upon impact even upon an unrigid surface.” (Col. 1, ll. 18-27.) 7. Inventors Edward Vasel and Eric P. Wenaas declared: I have performed, oversaw others and directed others to test launch numerous balls with varying thicknesses Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 15 using the primer from a shotgun shell - which has scientifically less energy than the black powder envisioned in the Honigsbaum patent. These tests have repeatedly demonstrated that even two balls will not survive an explosive launch from a barrel with a primer - the minimum energy possible in a detonation . . . . Further testing was performed in attempts to try and make the shell survive the primer launch by using wadding and sabots to cushion the projectiles as suggested in the Honigsbaum patent without avail. Based on these extensive tests it has definitively been concluded that for projectiles that are thin enough to break when impacting an individual at a kinetic energy of less than 25 ft-lbs (e.g., 400 ft/sec with 3 gram projectiles a minimum mass for sufficient powder effect), an explosive launch of two or more projectiles to velocities greater than 250 ft/sec (the minimum velocity for the specific projectiles selected to break against clothing) is not possible even with cushioning positioned about the projectiles at the time of launch. (Vasel2 Decl., ¶ 10; Wenaas Decl., ¶ 10.) 8. Inventor Edward Vasel and Eric P. Wenaas declared that a standard paintball gun, such as those disclosed in Kotsiopoulos ‘379 operates at a maximum pressure of approximately 850 psi, while a standard shotgun shell generates a launch pressure of 8000 psi. (Vasel2 Decl., ¶ 11D; Wenaas Decl., ¶ 11D.) PRINCIPLES OF LAW “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Ludtke, 441 Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 16 F.2d 660, 664 (CCPA 1971)). “‘[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product . . . . Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same . . . [footnote omitted].’” In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255 (CCPA 1977)). The Examiner “bears the initial burden, on review of prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Supreme Court further explained, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. However, the Court went on to state, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. The Court further explained that “[a]lthough common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 17 relevant field to combine the elements in the way the claimed new invention does.” Id. ANALYSIS We agree with Appellant that the Examiner has not provided sufficient support for the proposition that “it is technically feasible to generate enough force with a compressed air launching mechanism to effect rupture of the projectiles on impact.” (Ans. 30; 42.) Appellant has provided declaration evidence to support the position that frangible projectiles used in conventional firearms, such as in Honigsbaum, require a thicker shell to survive launch with an ignitable substance. (FF 7.) In addition, Appellant has provided evidence that projectiles having the required thicknesses disclosed for launching would not rupture when fired from a standard gas launcher, such as those described in Kotsiopoulos, based on the differences in launch pressure between a standard paintball gun and a standard shotgun shell. (FF 8.) Similar analysis applies to the Examiner's rejection based on Luxton. Accordingly, the Examiner has not provided sufficient basis for the proposition that Honigsbaum’s or Luxton’s projectiles would be capable of both being launched without the use of an ignitable substance and also rupturing upon impact with the target as required by the claims. In addition, the Examiner does not set forth any sufficient rationale as to how the secondary references remedy the deficiencies in Honigsbaum or Luxton. Although the Examiner states in the rejection, based on Luxton, that each of the recited elements is independently known in the art, the Examiner does Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 18 not provide sufficient reasoning to explain why the independent teachings of the prior art would have been combined in the manner disclosed by Appellant. KSR, 550 U.S. at 418. Therefore, we do not sustain the Examiner’s rejections of the claims using Honigsbaum or Luxton as the base reference. Rejections based on Flatau (Rejections V and VI) In addition to the requirements discussed above, independent claims 1, 8, and 17 on appeal also require that the frangible projectile be launched “without an intermediary.” The Examiner acknowledges that Flatau requires the use of either a traditional sabot or a “captured sabot” intermediary, where when a captured sabot is used, it is retained by the launcher and does not leave the barrel of the firearm. (Ans. 33-34.) The Examiner stated that any compression in the barrel would directly affect the projectile, which is inherently capable of launch without an intermediary, if the projectile were oriented orthogonal to the way it is used in Flatau. (Ans. 33-34.) Appellant contends that the combination of Flatau, Fedida or APA, as evidenced by PACHYDERM, No. 20, 1995 (Osborn), does not disclose all of the limitations of the claims. (Br. 127.) Specifically, Appellant argues that the combination requires the use of an intermediary to transfer the propulsion force to the airfoil ring, and therefore teaches away from the recited system. (Br. 127-128.) In addition, Appellant contends that Flatau requires the use of an ignitable substance to launch the ring airfoil, and that gas launchers would be ineffective to launch Flatau’s ring airfoil as they would not be able to impart the necessary spin or velocity needed to achieve Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 19 the specified launch distances and cause rupture of the ring airfoil upon contact with the target. (Br. 129-131.) Thus, a further issue on appeal is: Did the Examiner err in determining that Flatau’s ring airfoil is inherently capable of being launched without an intermediary or that replacing Flatau’s ring airfoil with a spheroid projectile would have been obvious to one of ordinary skill in the art? FINDINGS OF FACT (“FF”) 9. Flatau discloses a non-lethal ring airfoil projectile for use in pacifying or dispersing unruly persons. (Col. 1, ll. 12-15.) 10. Flatau discloses: It may be noted that mechanical launch means such as a rifle and adapter 7 (FIG. 2) are capable of imparting spin in excess of 2,000 rpms, normally 4,000-6,000 rpms. Spin stressing the wing wall offers several safety features. The ring wing material can be made strong enough for safe handling, even mishandling without rupture. Also, in the event any ring airfoil projectile does land without rupture and payload release and is then hurled back by a rioter, it will not normally rupture or fragment upon impact (for lack of prestressing through spin). (Col. 3, ll. 33-46.) 11. Flatau discloses a sabot, which is used in launching the ring airfoil and separates from the ring airfoil in flight, or a captured sabot that is retained by the launcher during launch of the ring airfoil. (Col. 6, ll. 24-40; Figs. 3 and 8.) 12. Flatau discloses: Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 20 The smooth low drag airfoil shaping minimizes velocity decay and spin decay of the projectile in flight conserving the launch-imparted kinetic energy and centrifugal forces . . . . The high tangential velocity of the individual payload particles (due to the high spin rate of the projectile) disperses the payload into a cloud in the target area upon release from the ruptured projectile. (Col. 6, l. 50 – col. 7, l. 1.) 13. Flatau discloses: The low drag, flat trajectory due to lift, and accuracy of the ring airfoil projectile enables it to be aimed and fired at a point target from a distance so that only that amount of payload needed to expose a point target to the effects of the payload agent need be delivered thereto. This eliminates the necessity to contaminate a large area in order to assure that a point target is exposed to the payload agent. For example, the ring airfoil projectile can be fired into a window from about 100 meters or to hit a specific individual at 30-50 meters. (Col. 7, ll. 2-12.) PRINCIPLES OF LAW Combinations of references that render a prior art device inoperable, or that fundamentally change the manner of operation of the device, have not previously supported a finding of obviousness. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 21 900, 902 (Fed. Cir. 1984) (“the [prior art] apparatus … would be rendered inoperable for its intended purpose.”). ANALYSIS Flatau’s invention is directed to non-lethal ring airfoil projectiles. (FF 9.) Flatau discloses the benefits of the ring airfoil achieved as a result of the projectile shape and spin imparted by the launch mechanism, which includes the use of a sabot, an intermediary. (FF 11.) Thus, Flatau does not disclose that the ring airfoil is capable of being launched without an intermediary, as claimed. We also agree with Appellant that the Examiner has failed to provide a sufficient basis for concluding that if oriented orthogonally, Flatau’s projectile is capable of being launched without an intermediary and still provide the required spin and trajectory needed for the ring airfoil to perform its intended function. (Br. 128-129.) Flatau’s ring airfoil was designed to be launched in a specific manner and orientation to fulfill its intended purpose. (FF 10-13.) There is no basis in this record to support the Examiner’s position that when the orientation of the ring airfoil is changed, it would still be capable of the flight and spin necessary to rupture upon impact with a target, as intended. In addition, the Examiner’s proposed modification of Flatau’s ring airfoil to form spherical projectiles, because spherical projectiles are known, fails to consider the effects of such modification on the launch of the projectiles as related to Flatau’s disclosed benefits obtained therefrom. In other words, by employing spherical projectiles instead of the ring airfoil disclosed by Flatau, one of ordinary skill in the art would completely change Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 22 the mode of operation of Flatau’s invention and would require substantial redesign of Flatau’s invention to achieve the intended benefits. The Examiner fails to identify a sufficient reason, other than with the benefit of hindsight, to make the suggested modifications to Flatau. Therefore, we cannot sustain the Examiner’s rejections of the claims using Flatau as the base reference. Rejection based on Kotsiopoulos ‘526 (Rejection VIII) The Examiner found that Kotsiopoulos ‘526 discloses spheroid paint ball projectiles launched from conventional gas paint ball guns for police and military use, but that Kotsiopoulos ‘526 does not disclose the nonivamide irritant. (Ans. 15.) The Examiner relies on Fedida, Carbone, and Flatau to provide evidence that powdered pepper-based irritants were well-known as payloads for non-lethal projectiles. (Ans. 15-16.) The Examiner concluded that it would have been obvious to have substituted any known pepper-based irritant for the irritant disclosed in Kotsiopoulos ‘526 “as a mere substitution of known functional equivalents, or alternatively in order to incorporate the desired benefit of negligible persistence in clothing so that police personal or other users of the weapon are not affected by the irritant as taught by Fedida.” (Ans. 16.) Appellant contends that neither Kotsiopoulos ‘526 nor Fedida discloses how to incorporate powder into a spherical paint ball, and the Appellant has presented Declaration evidence that demonstrates the difficulties of such procedures. (Br. 258-259, 261-262.) Appellant argues that one of ordinary skill in the art would have no expectation of success of Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 23 the recited dispersion characteristics, but instead would have expected the individual payload particles would clump and impact as a solid or substantially without dispersion. (Br. 268.) Appellant also contends that the Examiner does not adequately support the finding that the dispersion cloud of claim 4 would inherently result. (Br. 275-276.) Thus, an additional issue in this appeal is: Did the Examiner err in concluding that a person of ordinary skill in the art in view of Fedida, Carbone, and Flatau, would have found it obvious to have incorporated powdered irritants into the spherical projectiles of Kotsiopoulos ‘526? FINDINGS OF FACT (“FF”) 14. Kotsiopoulos ‘526 describes an improved paint ball shell that “readily fractures upon striking a victim with a greatly decreased risk of physical harm to the victim.” (Col. 2, ll. 56- 59.) 15. Kotsiopoulos ‘526 discloses a paint ball shell comprised of a thermoplastic linear polymer such as polystyrene. (Col. 3, ll. 6- 8.) 16. Kotsiopoulos ‘526 discloses that the paint ball shell “may be fill [sic, filled] with other suitable components such as tear gas.” (Col. 7, ll. 3-5.) 17. Fedida discloses irritant compositions including at least one capsaicinoid, such as capsaicin. (Col. 3, ll. 7-10.) Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 24 18. Fedida discloses that the composition may be provided as a granulated powder, where “the advantage of using a powder resides in the fact that when projected, the powder particles can cover a large surface or volume in which the target persons or animals are to be found.” (Col. 4, ll. 32-43.) 19. Fedida discloses that the granulated powder is encapsulated in microspheres or capsules, “which can act as a charge for a munition such as a grenade.” (Col. 4, ll. 59-61.) PRINCIPLES OF LAW In considering the question of obviousness, we are guided by the basic principle that the question under 35 U.S.C. § 103 is not merely what the references expressly teach, but what they would have suggested to one of ordinary skill in the art at the time of the invention. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807-08 (Fed. Cir. 1989); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not . . . that the claimed invention must be expressly suggested in any one or all of the references.”). “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (citations omitted). “Under §103 . . . a reference need not be enabled; it qualifies as prior art, regardless, for whatever is disclosed therein.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003). Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 25 The Board has “broad discretion as to the weight to give declarations offered in the course of prosecution.” In re Am. Acad. of Sci. Tech. Center, 367 F.3d 1359, 1368 (Fed. Cir. 2004). ANALYSIS Appellant presents separate arguments for claims 1, 4, 8, 17, 26, and 28. However, Appellant’s arguments with respect to claims 4, 17, 26, and 28 are similar to arguments made for claims 1 and 8. Accordingly, we select claim 1 as representative of Appellant’s arguments and make reference to the other separately argued claims where appropriate, pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Upon careful review of Appellant’s arguments as well as the evidence of record, we are unpersuaded that one of ordinary skill in the art would not have been able to incorporate powdered irritants into the spherical projectiles disclosed in Kotsiopoulos ‘526. As explained by the Examiner and evidenced by at least Fedida, incorporation of powdered irritants into spherical projectiles was known in the art. (Ans. 45-46; FF 18-19.) Contrary to Appellant’s arguments (Br. 259), Fedida is not limited to use of powder-filled capsules in grenades, but only lists grenades as an example of a “munition.” (FF 19.) Therefore, Appellant’s argument is not persuasive. Appellant’s arguments that the Wenaas and Vasel2 declarations provide evidence that incorporation of powdered irritants into a generally spheroid projectile “is not a trivial task” and that “months of undue experimentation would be required” are not persuasive. (Br. 259.) The Examiner acknowledges that filling spherical projectiles with a powder Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 26 would have been more than a trivial task, but concluded that such a task would have been performed by one of ordinary skill in the art with routine experimentation. (See Ans. 45.) We agree with the Examiner's conclusion. In addition, we agree with the Examiner that concerns, such as spilling of the fill powder, the balance of the filled projectile, and the effect of the fill material on launch and impact identified in the Wenaas and Vasel2 declarations would have involved engineering design issues known to one of ordinary skill in the art. (Ans. 45.) Regarding claims 4, 26, and 28, Fedida provides evidence that the recited dispersion characteristics would have been inherent to the use of the powder in the spherical projectile. (FF 18.) Indeed, Fedida discloses that the benefit to using powder is the large surface or volume that is covered when the powder particles are projected. (FF 18.) Thus, Appellant’s argument that the dispersion characteristics recited in the claims are not necessarily achieved is not persuasive. (Br. 275-277.) Accordingly, Appellant has not sufficiently identified error in the Examiner’s reasoning. Secondary Considerations Appellant contends that the system recited in the claims has achieved commercial success and fulfilled long-felt but unsolved needs, which demonstrate that the recited system would not have been obvious over the prior art of record. (Br. 280-281.) Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 27 Long-Felt Need Appellant argues that a long-felt need existed “for a non-lethal device that is easy to use, that is easy to clean up, that minimizes the chance of cross contaminations, and that can be used at different ranges without effecting [sic] the accuracy and/or effectiveness of the device.” (Br. 283.) As evidence of long-felt need, Appellant relies on the Mills, Wagg, Heal, Beery and Campe declarations, as well as certain magazine, journal, and newspaper articles. (Br. 283.) Appellant contends that the declarations establish the aforementioned needs existed “for a long time in the law enforcement field and numerous efforts were made for arriving at a product that would address the need.” (Br. 284-285.) Appellant also argues that TaserTM devices, chemical sprays, tear gas, beanbag shotgun, and 37mm/40mm kinetic projectile rounds did not satisfy the above needs. (Br. 285-288.) Appellant contends that the discussed needs are fulfilled due to the advantages provided by the claimed invention. (Br. 291-295.) Commercial Success Appellant contends that the Wagg, Campe, Heal, Mills, Beery, Behrendt, Vasel1, Vasel2, and Wenaas declarations provide evidence that the recited system has achieved commercial success and that there is a direct nexus between the claimed features of the system and the commercial success. (Br. 303-304; 308-313.) Appellant further argues that the commercial success is not due to extensive advertising or marketing efforts. (Br. 314-321.) Appellant provides sales figures of PepperBall® products, said to be embodiments of the recited system as well as sales figures of Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 28 competitors as evidence of commercial success. (Br. 321-324.) Appellant argues that there is a direct nexus between the commercial success and the recited projectile “because the claimed projectile provides a significant advantage to customers because it contains a powdered inhibiting substance that is omnidirectionally dispersed into a cloud.” (Br. 327.) Accordingly, an additional issue on appeal is: Is the Appellant’s evidence of secondary considerations, particularly Appellant’s evidence of long-felt need and commercial success, persuasive to establish non-obviousness? FINDINGS OF FACT (“FF”) 20. Flatau discloses that “the principal object of the present invention is to provide a projectile containing a riot control payload which will not cause lethal injury upon impact with the human body due to kinetic energy even at the point blank range.” (Col. 2, ll. 1-5.). 21. Flatau discloses that “[a]nother object of the present invention is to provide a projectile containing a mob control payload, capable of being launched accurately from a distance.” (Col. 2, ll. 6-8.) 22. Fedida discloses that prior art gas incapacitating compositions “impregnate and remain in the clothing of the target person or the localities in which they are used. This causes problems to police forces when a person is interviewed after such a gas has Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 29 been used, since the police themselves may be inconvenienced by the residual substance.” (Col. 1, ll. 8-24.) 23. Fedida discloses that the composition of the invention “is free of secondary effects on persons exposed thereto, and which has negligible persistence in clothing or in the environment.” (Col. 1, ll. 51-54.) 24. Inventor Edward Vasel and Eric P. Wenaas declared that the Flatau ring foil did not provide a truly non-lethal weapon, target to a specific individual that ensures minimal cross contamination, is mainly limited to a specific suspect, and cannot be loaded or launched quickly. (Vasel2 Decl., ¶ 70; Wenaas Decl., ¶ 70.) 25. Roger E. Behrendt declared that he was the President and Chief Executive Officer of Jaycor Tactical Systems, Inc. [the previous assignee of the ‘960 Patent]. (Behrendt Decl., ¶ 1.) 26. Mr. Behrendt declared that he oversees product development, sales and marketing of the PepperBall® system. (Behrendt Decl., ¶ 3.) 27. The Behrendt Declaration states that the “red” projectiles sold as part of the PepperBall® system “are the live inhibiting rounds that contain powdered OC [oleoresin capsicum] (in some versions, the red projectiles contain powdered capsaicin- the active ingredient within OC) . . . [and] equate to about $567,227 in sales for a total of about 27% of the gross sales from August 2000 to May 2001.” (Behrendt Decl., ¶ 5.) Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 30 28. The Behrendt Declaration states that the PepperBall® product has been sold to “approximately 500 out of 35,000 law enforcement agencies nationwide of about 1.4% of all the law enforcement agencies in the United States” and that “[c]ompeting products include OC aerosol spray canisters, tasers, bean bag shotgun rounds and 37mm/40mm projectile launchers that launch kinetic or chemical rounds. It is estimated that tasers are also used in about 1% of the agencies. We estimate that bean bag shotgun rounds and OC spray canisters are each used in over 50% of the agencies nationwide.” (Behrendt Decl., ¶ 7.) 29. Charlie Campe, a Sergeant with the San Diego Sheriff’s Department declared “I can not state that the Pepperball product would be non-lethal in all possible uses, but with proper usage the Pepperball product appears non-lethal.” (Campe Decl., ¶ 1, 20.) PRINCIPLES OF LAW Once a prima facie case of obviousness has been established, objective evidence of secondary considerations must be considered in making an obviousness decision. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983). Any initial obviousness determination is reconsidered anew in view of the proffered evidence of nonobviousness. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990); Ex Parte Quist, App. No. 2008-001183, Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 31 at 10-11 (BPAI June 2, 2010) (Precedential) (available at http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd08001183.pdf). The ultimate determination of whether a claimed invention would have been obvious or non-obvious is a legal conclusion, which is made based on considering and weighing all of the facts in evidence. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A “nexus” must be established between the merits of the claimed invention and the evidence of secondary considerations in order for the evidence to be given substantial weight. See In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). The scope of the “objective evidence of non- obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In re Tiffin, 448 F.2d 791, 792 (CCPA 1971); see also In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003). The objective evidence is not commensurate in scope (coextensive) with the claimed subject matter if the claims are unreasonably broader in scope than the scope of the objective evidence, e.g., if the product included elements or features not recited in the claims which may be responsible for the commercial success or praise. See Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 229-30 (D.D.C. 1990), aff'd, 959 F.2d 226 (Fed. Cir. 1992). Long-Felt Need Establishing long-felt need requires objective evidence showing existence of a persistent problem recognized by those of ordinary skill in the art for which a solution was not known. In re Gershon, 372 F.2d 535, 539 (CCPA 1967). In addition, the long-felt need must not have been satisfied Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 32 by another before the invention by applicant. Newell Co. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Hence, the appellant must present affidavits or other factual evidence of “a failure of others to provide a feasible solution to [a] long-standing problem” and evidence “that experts did not foresee” the solution claimed. See In re Piasecki, 745 F.2d 1468, 1475 (Fed. Cir. 1984). Finally, the invention must satisfy the long-felt need. In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). Commercial Success If evidence of commercial success is relied upon, the Appellant must offer proof “that the sales were a direct result of the unique characteristics of the claimed invention – as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). The evidence must also demonstrate commercial success in the relevant market. See Id. In addition, there must be a nexus between the commercial success and merits of the claimed invention. Cable Electric Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026 (Fed. Cir. 1985). ANALYSIS Long-Felt Need We have carefully reviewed the Mills, Wagg, Heal, Beery and Campe declarations, as well as the magazine, journal, and newspaper articles submitted by Appellant. Considering the evidence as a whole, we agree with the Examiner that Appellant has failed to establish that the alleged long-felt need has not been solved by others, as best evidenced by Flatau and Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 33 Fedida. (Ans. 48-49.) Flatau discloses a non-lethal device that is easy to use and that can be used at different ranges without affecting the accuracy and/or effectiveness of the device. (FF 20.) Fedida provides evidence that use of irritant powders in projectiles provides the benefits of easy clean up and minimal chance of cross-contamination. (FF 22-23.) Thus, the prior art already had provided solutions to the long-felt needs identified by Appellant. Moreover, the statements made in the Vasel2 and Wenaas Declarations that Flatau’s ring airfoil is not non-lethal and does not have the ability to target a specific individual (Vasel2 Decl., ¶ 70; Wenaas Decl., ¶ 70) contradict the express purposes disclosed by Flatau. Flatau expressly states that the ring airfoil is non-lethal even when fired at the human body at point blank range. (FF 20.) Flatau also expressly states that the ring airfoil projectile can hit a specific individual at 30-50 meters. (FF 13.) The Vasel2 and Wenaas Declarations provide no persuasive factual evidence to support the opinions expressed therein. Likewise, the Vasel2 and Wenaas Declarations provide no supporting factual evidence regarding the loading and launch times of the Flatau projectile system as compared to the claimed projectile system. Accordingly, Appellant’s evidence of long-felt need is not persuasive. Commercial Success We are also unpersuaded by Appellant’s evidence of commercial success. Specifically, Appellant has not established the required nexus between the commercial success and the claimed invention. The recited projectile system requires that the inhibiting substance be powdered nonivamide. Appellant relies on sales of the “red” projectiles for Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 34 establishing a nexus between the commercial success and the claimed invention. (FF 27.) However, the Behrendt Declaration states that the “red” projectiles contain oleoresin capsicum or “in some versions, the red projectiles contain powdered capsaicin.” (FF 27.) Thus, Appellant fails to provide definitive evidence that all of the sales relied on to establish the commercial success were of projectiles having the recited inhibiting substance. Further, we disagree with Appellant that the PepperBall® products should be viewed as a separate market due to the non-lethal nature of the recited projectiles. Indeed, Appellant has provided declaration evidence that competing products include less-lethal products such as OC aerosol spray canisters, tasers, bean bag shotgun rounds and 37mm/40mm projectile launchers that launch kinetic or chemical rounds. (FF 28.) Appellant states that in this market, the PepperBall® product has been sold to about 1.4% of all the law enforcement agencies in the United States, where tasers are used in about 1% of the agencies, and bean bag shotgun rounds and OC spray canisters are each used in over 50% of the agencies nationwide. (FF 28.) In addition, Appellant's presented evidence does not establish that the PepperBall® products are non-lethal in all cases. (FF 29.) Thus, Appellant’s market share evidence is not persuasive in establishing non- obviousness. CONCLUSION On this record, Appellant has failed to demonstrate any error in the Examiner’s factual findings and conclusions that: Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 35 (1) the ‘960 Patent fails to convey, with reasonable clarity, to those skilled in the art that as of the filing date, that Appellant was in possession of the recited relationship between the size of the cloud of the omnidirectionally-dispersed powdered inhibiting substance and the reflex time of a human target in claims 4, 26, and 28; (2) a person of ordinary skill in the art, in view of Fedida, Carbone, and Flatau, would have found it obvious to have incorporated powdered irritants into the spherical projectiles of Kotsiopoulos ‘526; and (3) Appellant’s evidence of secondary considerations, particularly Appellant’s evidence of long-felt need and commercial success, are not persuasive to establish non-obviousness. On the other hand, Appellant has demonstrated error in the Examiner’s factual findings and conclusions that: (1) the functional language “wherein the projectile is launched independent of one or more other projectiles” does not limit the structure of the projectile with a reasonable degree of clarity and particularity such that one skilled in the art would not fully appreciate and understand the metes and bounds of claim 23; (2) Honigsbaum’s and Luxton’s projectiles would be inherently capable of launching without an ignitable substance and rupturing upon impact with a target omnidirectionally dispersing the powdered inhibiting substance proximate to the target in a cloud; and (3) Flatau’s ring airfoil is inherently capable of being launched without an intermediary or that replacing Flatau’s ring airfoil with a spheroid projectile would have been obvious to one of ordinary skill in the art. Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 36 DECISION We affirm the Examiner’s decision to reject claims 4, 26, and 28 under 35 U.S.C. §112, first paragraph. We affirm the Examiner’s decision to reject claims 1-28 under 35 U.S.C. § 103(a) under 35 U.S.C. § 103(a) as unpatentable over Kotsiopoulos in view of Fedida, with further evidence by Carbone, Flatau. We reverse, however, the Examiner’s decision to reject: claims 23-25 under 35 U.S.C. §112, second paragraph; claims 1, 3-8, 10-21, and 26-28 under 35 U.S.C. §102(b); claims 1, 3-8, 10-21, and 26-28 under 35 U.S.C. § 103(a) as unpatentable over Honigsbaum in view of APA; claims 1-4, 6, 7, 9-11, 13-21, 26, and 28 under 35 U.S.C. § 103(a) as unpatentable over Flatau in view of Fedida or APA, as evidenced by Osborn; claims 5 and 12, under 35 U.S.C. § 103(a) as unpatentable over Flatau in view of Fedida or APA, further in view of Grinberg; and claims 1-28 under 35 U.S.C. § 103(a) as unpatentable over Luxton in view of Fedida or APA, as further evidenced by Osborn. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED bim Appeal 2010-004091 Reexamination Control 90/008,731 Patent 7,194,960 B2 37 FOR PATENT OWNER: PEPPERBALL TECHNOLOGIES, INC. 6142 NANCY RIDGE DRIVE SUITE 101 SAN DIEGO, CA 92121 FOR THIRD-PARTY REQUESTER: JAMES A. PINTO, ESQ. BROWNSTEIN HYATT FARBER SCHRECK, P.C. 410 SEVENTEENTH STREET DENVER, CO 80202 Copy with citationCopy as parenthetical citation