Ex Parte 7293385 et al

Patent Trial and Appeal Board

Aug 30, 2017

90013655 (P.T.A.B. Aug. 30, 2017)

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.
90/013,341 09/08/2014 7293385 80960.0001 2607
27804 7590 08/30/2017
HOLLAND & BONZAGNI, P.C.
171 DWIGHT ROAD, SUITE 302
LONGMEADOW, MA 01106-1700
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/30/2017 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 O.F. MOSSBERG & SONS, INC.1
Appellant, Patent Owner
____________________

Appeal 2017-009660
Reexamination Control 90/013,341 and 90/013,6552
Patent No. US 7,293,385 C13
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 O.F. Mossberg & Sons, Inc. is the real party in interest (Appeal Brief
(hereinafter “App. Br.”) 5).
2 These ex parte reexamination proceedings were merged in Decision
Merging Reexamination Proceedings, mailed March 29, 2016.
3 Issued November 13, 2007 (hereinafter “the ’385 patent”). The ’385 patent
was previously the subject of Reexamination Control No. 90/013,200, which
resulted in Reexamination Certificate issued August 20, 2014.
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Claims 3, 5–9, and 11–15 are subject to reexamination, claims 1, 2,
and 4 having been canceled. The Patent Owner appeals under 35 U.S.C.
§§ 134(b) and 306 from a Final Rejection of claims 3, 5–9, and 11–15. We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We are informed that the ’385 patent is the subject of ten different
patent infringement litigations that are pending, as well as four other patent
infringement litigations that have been settled (App. Br. 5–6).
In addition to the Appeal Brief, the Patent Owner also relies on four
declarations of Mr. Seth K. Bredbury in support of patentability. Because
such evidence is referred to in the Appeal Brief, the Final Office Action, and
the Answer, we do not explicitly cite to such evidence below but instead,
cite to the portions of these documents where the evidence is discussed.
The invention is directed to a modular trigger group for firearms and
to firearms having the same (Title). Representative claim 3 depends from
canceled claim 2, which in turn, depends from canceled independent claim
1. Claim 3 incorporating the language of canceled claims 1 and 2 reads as
follows (App. Br., Claims App’x; Spec. col. 9, l. 39–col. 10, l. 4, deletions
double bracketed, reference numerals in single brackets added for clarity;
see also App. Br. 6–7):
[[1.]] A trigger group module [10] for a firearm, the firearm
including a receiver [50] that defines a trigger group receiving
area [51] between a first receiver side wall and a second
receiver side wall, the trigger group module including:
(a) a module housing [11] adapted to be inserted to an
operating position in the trigger group receiving area [51], the
module housing having a lower extremity that is located above
a lowermost edge of the first receiver side wall and a lowermost
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edge of the second receiver side wall when the module housing
is in the operating position;
(b) a number of trigger group components mounted
within the module housing;
(c) a first pin receiver [26, 27] positioned in the module
housing [11] so as to align with first pin receptacle openings
[57, 58] of the firearm when the module housing is in the
operating position, the first pin receptacle openings defining pin
support surfaces formed in the first receiver side wall and the
second receiver side wall; and
(d) a first module pin [21] mounted in the first pin
receiver [26, 27] on which one of the trigger group components
is supported in the module housing, the first module pin
including an opening [21a] that aligns with the first pin
receptacle openings [57, 58] of the firearm when the module
housing is in the operating position[[.]]
[[2. The trigger group module of claim 1]] further including a
second pin receiver [29, 30] positioned in the module housing
[11] so as to align with second pin receptacle openings [59, 60]
of the firearm when the module housing is in the operating
position, the second pin receptacle openings defining pin
support surfaces formed in the first receiver side wall and the
second receiver side wall[[.]]
[[3. The trigger group module of claim 2]] further including a
second module pin [22] mounted in the second pin receiver [29,
30] on which an additional one of the trigger group components
is supported in the trigger group housing, the second module
pin including an opening [22a] that aligns with the second pin
receptacle openings [59, 60] of the firearm when the module
housing is in the operating position.

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The Examiner rejects the reexamined claims under 35 U.S.C. § 103(a)
as follows:
1. Claims 3, 5–9, and 11–15 as obvious over Li4 in view of AR-15
Schematics,5 Jewell,6 American Riflemen,7 and Tollinger.8
2. Claims 5, 6, 8, and 9 as obvious over Jewell in view of
Bielfeldt,9 Biller,10 Walker,11 AR-15 Schematics, and Li.
3. Claims 3, 7, and 11–15 as obvious over Jewell in view of
Bielfeldt, Biller, Walker, American Rifleman, as evidenced by Benelli
Owner’s Manual,12 Tollinger, AR-15 Schematics, and Li.
We AFFIRM.

PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to

4 490,847 (Taiwan), Application 088205701, Oct. 21, 2000.
5 AR-15.com: Parts Diagrams: Lower Receiver and Buttstock Assembly
available at
http://web.archive.org/web/19991008122813/http://www.arl5.com/parts/low
er.asp (WaybackMachine, last visit date unkown).
6 U.S. Patent No. 4,671,005, June 9, 1987.
7 Scott E. Mayer, Exploded View, Benelli Montefeltro Super 90 (January
2005), (“American Rifleman Publication”).
8 US. Patent No. 4,103,586, Aug. 1, 1978.
9 U.S. Patent No. 3,707,796, Jan. 2, 1973.
10 U.S. Patent No. 5,904,132, May 18, 1999.
11 U.S. Patent No. 2,514,981, July 11, 1950.
12 Benelli Owner’s Manual, Super 90, Montefeltro 12 Montefeltro 20
(undated).
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a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In KSR, the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art,” and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 415–16. The Court also
affirmed that “when a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
Id. at 416.

ANALYSIS
We note that only those arguments timely made in the briefs of record
in this appeal have been considered. Other arguments not made or those not
properly presented to the Board have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37 (c)(1)(iv). We also address the rejection
based on Li first as presented by the Examiner in the Final Rejection and
Answer, instead of the rejections based on Jewell as presented by the Patent
Owner in its Appeal Brief.

Rejection 1
The Examiner rejects claims 3, 5–9, and 11–15 finding that “Li
teaches a similar replaceable trigger module as claimed only with a different
mode of attachment to the firearm receiver,” and does not use “module pins
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with an opening (as a hollow sleeve such that typical module pins can
connect the assembly to the receiver).” (Final Act. 6). The Examiner relies
on AR-15 Schematics to establish that pins for supporting trigger
components in the receiver of the firearm, as well as pin openings on the
sidewall of the receiver for receiving such pins, was well-known (Final Act.
6; see AR-15 Schematics).
The Examiner further relies on Jewell and/or Tollinger to establish
that using “hollow bushings in removable trigger module housings to attach
those housings to a receiver” was also well-known (Final Act. 7–8). The
Examiner finds that because the bushings disclosed in Jewell and Tollinger
appear to be “fixed in the housing,” they are not pins with openings (Final
Act. 8). However, the Examiner further relies on American Rifleman for
disclosing a removable bushing 15 and pin 14 that “connects the trigger
assembly to the receiver (44) via the bushing/first module pin.” (Final Act.
9).
Accordingly, the Examiner concludes that the use of a hollow module
pin/bushing and pin combination to removably attach a trigger group module
would have been obvious to one of ordinary skill in the art, and application
of the teachings of the art “would have yielded the predictable result of
connecting the trigger assembly to the stock trigger component attachment
openings of an AR-15 platform rifle lower receiver” so as to allow the
trigger assembly to be removed and replaced (Final Act. 10). The Examiner
further concludes that the additional limitations in claims 2 and 3 directed to
the second pin receiver and second module pin that includes an opening,
would have been obvious as well (Final Act. 11).
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We generally agree with the Examiner. Li clearly discloses a
replaceable trigger group module secured in a firearm receiver, but Li
secures the trigger group module via selector 44 and positioning spring 45
instead of hollow sleeves/pins (Li, Summary; ¶ 57; Figs. 1, 3, 5, 6).
Tollinger discloses a removable firearm trigger mechanism wherein
The trigger housing assembly 26 includes a housing 34
removably mounted in the receiver 20 and locked in place by a
pair of pins 37 which extend completely through the trigger
housing 34 and into aligned holes in the receiver walls. A
trigger 35 having a centrally bored ear 36 is pivotally mounted
on a trigger pivot bushing 38 fixed in the housing 34 and
through which extends the rear pin 37.
(Tollinger, col. 4, l. 63–col. 5, l. 2; Fig. 1).
Figures 1, 3, and 5–7B of Tollinger each show various views of the
trigger mechanism including bushings 38, 192 that support trigger group
components and extend between the walls of receiver 20 (Tollinger, col. 9,
ll. 40–44; Figs. 1, 3, 5–7B). As set forth in the above reproduced portion of
Tollinger and illustrated in the noted figures, bushings 38, 192 are aligned
with “holes in the receiver walls” and receive pins 37 therein, the pins
extending “completely through the trigger housing 34 and into aligned holes
in the receiver walls.” (Tollinger, col. 4, l. 63–col. 5, l. 2; Figs. 1, 3, 5–7B).
Tollinger also discloses that
To field strip the gun for cleaning and oiling, the trigger
housing assembly 126 [sic, 26] is removed by simply pushing
the pins 37 completely through the bushing 38 and 192 and out
of the receiver. The trigger housing assembly can then be
removed from the bottom of the receiver.
(Tollinger, col. 12, ll. 21–26).
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Therefore, we agree with the Examiner that the invention of claim 3 is
merely a “combination of familiar elements according to known methods
[which] is likely to be obvious when it does no more than yield predictable
results,” or a “mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR,
550 U.S. at 415–16. The claimed invention combines the trigger group
module of the type disclosed in Li with an alternative, known
arrangement/method for attaching such trigger assemblies as shown in
Tollinger. Stated alternatively, the claimed invention merely substitutes the
selector/positioning spring attachment arrangement of Li with the
bushing/pin attachment arrangement of Tollinger.13
In its arguments, the Patent Owner does not dispute the findings of
fact relative to the prior art relied upon. Instead, the Patent Owner argues
that
OEM hammer and trigger pins fit through aligned holes (57 and
59, 60 and 62).[] All the AR-15 trigger components are
mounted on those pins.[] Li does not disclose such holes in Li’s
lower receiver 51.
(App. Br. 37).
However, we agree with the Examiner (Ans. 5) that the Patent
Owner’s argument is unpersuasive because it argues Li separately, whereas
the rejection also relies on AR-15 Schematics as well as Tollinger. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“the test [for obviousness] is what
the combined teachings of the references would have suggested to those of

13 We do not find it necessary to address Jewell which was alternatively
relied upon by the Examiner for the same teachings discussed above relative
to Tollinger (Ans. 7–8).
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ordinary skill in the art”); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). As noted by the Patent Owner, AR-15 Schematics already disclose
trigger components mounted on pins, and holes in the sidewalls of the
receiver. Moreover, Tollinger clearly discloses that it was known to mount
trigger modules using pins that extend through bushings of the trigger
module that align with holes in the walls of a receiver. The claimed
invention combines the teachings of the prior art to utilize/substitute a
known arrangement/method for attaching trigger assemblies.
The Patent Owner also argues that Li’s module is too big to fit in an
AR-15 lower receiver and cannot be modified to fit and function within AR-
15’s lower receiver space without destroying how Li’s module works (App.
Br. 39–41, quoting 4th Decl. Bredbury ¶¶ 12–19). However, this argument is
unpersuasive because the rejection does not seek to physically fit the trigger
group module of Li into an AR-15.14 In addition, the argument is
unpersuasive because “[c]ombining the teachings of references does not
involve an ability to combine their specific structures.” In re Nievelt, 482
F.2d 965, 968 (CCPA 1973); see also EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect. On the issue
of obviousness, the combined teachings of the prior art as a whole must be

14 It is not clear from the Patent Owner’s argument, but to the extent that it is
contesting the Examiner’s earlier finding that Li discloses an AR-15 semi-
automatic rifle, the Examiner has withdrawn that finding stating that
“responsive to Patent Owner’s argument, the reference to Li being an AR-15
is removed from the rejection,” and “it is recognized that the Li teaching is
not an AR-15.” (Final Act. 14).
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considered”; Keller, 642 F.2d at 425 (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference.”).
The Patent Owner further argues that Li teaches against the suggested
combination as applied by the Examiner’s rejection (App. Br. 41) because
Li’s module can be quickly replaced by: removing only
positioning spring (i.e., a lock spring) 45 and selector 44; lifting
Li’s module out of Li’s lower receiver; inserting a replacement
module; and reattaching only spring 45 and selector 44.
(App. Br. 42, quoting Li ¶ 57).
In that regard, the Patent Owner asserts that
Adding such AR-15 holes and retainer pins, fitting through
those holes and Li’s module, would prevent Li’s module from

being lifted out of Li’s receiver by just removing spring 45 and
selector 44.
(App. Br. 42).
We find this argument unpersuasive as well because mere description
of an implementation in the prior art that differs from the claimed invention,
without more, does not establish “teaching away.” In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (“[t]he prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed . . . .”). The Patent Owner does
not direct us to teachings in Li that criticize, discredit, or otherwise
discourage usage of bushings/pins to attach a trigger group module.
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Moreover, the Patent Owner presents no evidence as to the time
required to remove a trigger group module that is attached via a
positioning/locking spring and selector, versus the time required to remove a
trigger group module that is attached via the removal of two pins. In that
regard, Tollinger specifically teaches that “[t]he disassembly of the disclosed
shotgun is a simple and fast operation and it can be done in the field without
the use of tools” (Tollinger, col. 4, ll. 1–3, emphasis added), thereby
indicating the removal of the trigger group module can be attained quickly.

Rejections 2 and 3 Based on Jewell
Claims 5, 6, 8, and 9 stand rejected as obvious over Jewell in view of
Bielfeldt, Biller, Walker, AR-15 Schematics, and Li, while claims 3, 7, and
11–15 stand rejected as obvious over Jewell in view of Bielfeldt, Biller,
Walker, American Rifleman, as evidenced by Benelli Owner’s Manual,
Tollinger, AR-15 Schematics, and Li. The rejection of each these claims
under Rejection 1 has been affirmed above. Accordingly, it is unnecessary
to reach these rejections, and we decline to reach them.

Inconsistent Reexaminations
The Patent Owner points out that prior to the merger with
Reexamination Control No. 90/013,655, claims 3, 7, and 11–15 were
indicated to be allowable over Jewell, Bielfeldt, Walker, Biller, and AR-15
Schematics during Reexamination Control No. 90/013,341 (App. Br. 43).
The Patent Owner observes that the present Examiner in this merged
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proceeding has made various “conflicting rulings,” thereby attaining an
inconsistent result (App. Br. 44–45).
However, the Patent Owner does not establish on what basis the
apparent change in position of the Patent Office during a reexamination is
improper. In addition, the inconsistency in reexaminations noted by the
Patent Owner does not pertain to Rejection 1 which is based on the
combination of Li in view of AR-15 Schematics, Jewell, American
Riflemen, and Tollinger. Finally, notwithstanding the fact that no specific
remedy appears to be requested by the Patent Owner as to this issue, it
appears this issue is not appealable to the Board, and instead, is petitionable
to the Director to any extent the Patent Owner seeks a particular remedy.

CONCLUSION
The Examiner’s rejection of claims 3, 5–9, and 11–15 is affirmed.

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