Ex Parte 8777786 et al

Patent Trial and Appeal Board

Jul 29, 2016

90013349 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013,349 09/22/2014
87197 7590
Skaar Ulbrich Macari, P.A.
601 Carlson Parkway
Suite 1050
Minneapolis, MN 55305
07/29/2016
FIRST NAMED INVENTOR
8777786
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5007.29REXM1 4638
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAILDATE DELIVERY MODE
07/29/2016 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
Exparte CLEAN-SHOT ARCHERY, INC. 1
Appellant, Patent Owner
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Technology Center 3900
Before JAMES T. MOORE, DANIELS. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
1 Clean-Shot Archery, Inc. is the real party in interest (Appeal Brief
(hereinafter "App. Br.") 3).
2 Issued July 15, 2014 (hereinafter "the '786 patent").
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Claims 8-10, 14-16, and 21-28 are subject to reexamination. The
Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from a Final
Rejection (hereinafter "Final Act.") of these claims (App. Br. 5). We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
In addition to the Appeal Brief, the Patent Owner also relies on a
Reply Brief (hereinafter "Reply Br."), declarations of Mr. Larry R. Bay
dated December 10, 2014 and April 9, 2015, and various exhibits attached
thereto, in support of its appeal. We are also informed that the '786 patent is
the subject of a lawsuit, Case No. 2:14-cv-01076 (WD Wash.), which has
been stayed (App. Br. 4). An oral hearing was held at the Patent Trial and
Appeal Board on June 15, 2016 with the legal representative of the Patent
Owner, a transcript of which will be entered into the electronic record in due
course.
The invention is directed to a lighted nock kit for arrow shafts, the
sole independent claim 8 reading as follows (App. Br. 24, Claims App'x.
(emphasis added)):
8. A lighted nock kit for arrow shafts, the kit comprising:
a package
a lighted nock assembly disposed in the package, the
lighted nock assembly including a shaft insertion portion
having a first diameter dimension;
a first adaptor disposed in the package, the first adaptor
including an internal opening having an internal diameter
conforming to the first diameter dimension of the shaft insertion
portion of the lighted nock assembly, and the first adaptor
having a first adaptor outside diameter larger than the first end
outside diameter dimension of the shaft insertion portion of the
lighted nock assembly; and
a second adaptor disposed in the package, the second
adaptor including an internal opening having an internal
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diameter conforming to the first diameter dimension of the shaft
insertion portion of the lighted nock assembly, and the second
adaptor having a second adaptor outside diameter larger than
the first adaptor outside diameter.
The Examiner rejects various claims under 35 U.S.C. § 103(a) as
unpatentable over the following noted prior art references:
1. Claims 8-10, 14-16, 21-25, 27, and 28 over Marshall '282. 3
2. Claims 8-10, 14-16, 21-25, 27, and 28 over Marshall '284.4
3. Claim 26 over either Marshall '282 or Marshall '284 further in
view of Bednar. 5
4. Claims 8-10, 14-16, 21-25, 27, and 28 over Cyr6 and either
Marshall '282 or Marshall '284.
5. Claim 26 over Cyr and either Marshall '282 or Marshall '284, and
further in view of Bednar.
6. Claims 8-10, 14-16, 21-25, 27, and 28 over Easton Guide,7 Cyr,
and either Marshall '282 or Marshall '284.
We AFFIRM-IN-PART.
3 Marshall, Jr. (US 2014/0148282 Al, pub. May 29, 2014).
4 Marshall, Jr. (US 2014/0148284 Al, pub. May 29, 2014).
5 Bednar et al. (US 2014/0083406 Al, pub. Mar. 27, 2014).
6 Cyr et al. (US 2004/0048703 Al, pub. Mar. 11, 2004).
7 EASTON 2001-2002 ARCHERY GUIDE, www.eastonarchery.com.
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ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner's findings with respect to Marshall '282 or
Marshall '2 84 are correct.
2. Whether the Examiner established a prima facie case of
obviousness.
3. Whether the Examiner properly weighed the evidence of
secondary considerations.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Marshall '284 is directed to a lighted nock assembly (Abstract).
2. A. Marshall '284 discloses:
[0006] . . . Advantageously, Applicant's disclosed subject
matter provides a more universal construction, whereby a user
conveniently may gain access to the working components,
whereby those components may be transferred to other arrows,
whereby the user may substitute nocks and LED/battery
assemblies of his choice, and whereby the user can more easily
access the LED/battery assembly to activate and deactivate the
assembly without undue difficulty-all in field-use conditions.
[0007] It would be further desirable, however, to provide a
lighted nock assembly that would provide for use of a
standardized nock and for use of a standardized size, length,
style, and/or configuration of small-profile LED and battery
assembly within any of the several standardized arrow and
crossbow bolt sizes available in the marketplace. In order to do
so, it would be beneficial to provide an insert for use within a
conventional arrow or bolt shaft, the insert being appropriately
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sized on one end to accommodate and provide for use of such a
standardized nock and standardized small-profile LED and
battery assembly, while being appropriately sized on an
opposite end to fit within, and be affixed into, a particular sized
conventional arrow or bolt shaft.
(Marshall '284 ,-i,-i 6, 7 (emphasis added)).
B. In order for a nock to be transferable to other arrows as
disclosed in paragraph 6 of Marshall '284, the nock and working
components in Marshall '284 are of a standardized size as disclosed in
paragraph 7.
C. Paragraph 7 of Marshall '284 specifically recognizes that in
the marketplace, conventional arrow and bolt shafts come in several
different sizes, and discloses that the standardized nock and
components are for use within any of the several conventional arrow
or bolt shaft sizes available in the marketplace, the standardized nock
and components being inserted within an insert sized to accommodate
the standardized nock and components at one end, and to fit within a
particularly sized conventional arrow/bolt shaft at an opposite end.
D. Therefore, a person of ordinary skill in the art would
understand Marshall '284 as disclosing different sized inserts for
different sized arrow shafts, the inserts being sized to receive
standardized nock and components, but having different outer
diameters for fitment within a particularly sized arrow/bolt shaft.
3. A. Marshall '284 also discloses:
[0009] In general, the present disclosure is directed to lighted
nocks for use with arrows, cross-bow bolts, and the like.
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Specifically, and pursuant to a preferred embodiment of the
present disclosure, an insert is provided for use within a
conventional arrow or bolt shaft, the insert being appropriately
sized on one end to receive, accommodate, and provide for use
of such a standardized nock and standardized small-profile
LED and battery assembly, while being appropriately sized on
an opposite end to fit within, and be affixed into, a conventional
arrow or bolt shaft.
(Marshall '284 ,-i 9 (emphasis added)).
B. Therefore, a person of ordinary skill in the art, knowing that
several standardized arrow and crossbow bolt sizes are available in the
marketplace (see, e.g., FF 2A), would have understood Marshall '284
as disclosing that in order for the disclosed insert to be fit within a
particularly sized conventional arrow/bolt shaft, there must be
different sized inserts, which are sized for the differently sized
conventional arrow/bolt shafts.
4. A. Marshall '284 further discloses:
[0045] In some embodiments, the subject matter of the present
disclosure may be provided in packaged form comprising one
or more suitably configured nock, small-profile LED and
battery assembly, and insert. In such form, a user may utilize
his own arrow or bolt in association with the subject matter of
the present disclosure
[0046] In some embodiments, the subject matter of the present
disclosure may be provided in packaged form comprising one
or more, optionally pre-fletched, arrow or bolt, along with one
or more suitably configured nock, small profile LED and
battery assembly, and insert.
(Marshall '284 ,-i,-i 45--46 (emphasis added)).
B. Thus, Marshall '284 explicitly discloses providing in a package,
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one or more of the disclosed lighted nock, together with the various
components thereof, including the insert.
5. Marshall '284 further discloses:
[0029] It is noted that, in some embodiments, insert 50 is
constructed of aluminum; however, any material may be used
that would be suitable to the intended applications and uses
described herein.
(Marshall '284 ,-i 29).
6. Marshall '284 also discloses:
It was recognized, advantageously, that such a lighted nock
could provide a means to track arrow flight and targeting, such
as may be useful at night, in low light conditions, or in poor
visibility situations.
(Marshall '284 ,-i 3).
7. Cyr discloses a detachable nock for an arrow having a locating
device to permit tracking of an animal shot with the arrow (Cyr,
Abstract; see also Cyr ,-i 3). The locating and tracking device is
identified as Cyr teaches that the locating device may be a radio
transmitting or "any type of locating device known in the art." (Cyr ,-i
23).
8. Cyr further discloses that "[t]he detachable nock 9 is removably
attached to the arrow shaft 2 by the attachment component 20, either
directly or indirectly in conjunction with an adapter 30," the
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attachment component being disclosed as a projecting extension of the
nock (Cyr i-f 30; see also Fig. 4).
9. Cyr also discloses that the adapter is fitted into the arrow,
the adaptor having a cylindrical shape and:
an outside diameter just slightly smaller than the inside
diameter of the arrow aperture 5, such that the adapter 30 is
suitably adapted to fit into the arrow aperture 5 and remain
secured to the arrow 1 by frictional forces.
(Cyr i-f 33; see also i-f 31 ).
10. A. Cyr further discloses that:
[0035] The use of the adapter 30 permits a standard sized
attachment component 20 to be used, with different sized
adapters 30 to accommodate different styles of arrows 1.
Alternatively, the adapter itself may be made in a standard size
to fit within an existing arrow shaft adapter, such as the UNI
BUSHING (TM) series. Thus, the manufacture of the
detachable nock 9 is simplified and its use is made universal.
(Cyr i-135).
B. Thus, Cyr discloses differently sized adapters that are used
with standard sized attachment component.
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)(l)(iv) ("Except as provided for in
§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the
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appeal brief will be refused consideration by the Board for purposes of the
present appeal."). In addition, we address the rejections in an order that
differs slightly from the order presented in the record. Furthermore, while
the secondary considerations evidence proffered by the Patent Owner has
been considered in conjunction with the Patent Owner's arguments and the
Examiner's rejections, the secondary considerations evidence is discussed
separately infra for clarity.
As noted above, an issue raised in the present appeal is with respect to
the scope of disclosure of prior art Marshall '282 and Marshall '284. Due to
the general similarities in the disclosures of Marshall '2 82 (Rejection 1) and
Marshall '284 (Rejection 2), the disagreement between the Examiner and the
Patent Owner as to what these references disclose is substantially the same
(Ans. 10; App. Br. 17-18). For the purposes of the present appeal, we focus
on the Marshall '284 relied upon in Rejection 2, but address the Patent
Owner's arguments relative to both Rejections 1 and 2, the arguments
directed to Rejection 1 being also relied upon by the Patent Owner with
respect to Rejection 2 (Ans. 10; App. Br. 17-18).
Rejection 2
Claims 8-10, 14-16, 21-25, 27, and 28 stand rejected over Marshall
'284 (Final Act. 16-21). As to independent claim 8, the Examiner finds that
Marshall '284 discloses a first adaptor as well as "a second adaptor having
an internal opening conforming to the first diameter opening," and having an
outside diameter that is larger than that of the first adaptor (Final Act. 17
(citing Marshall '284 ,-i,-i 9, 45)). The Examiner finds that based on Marshall
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'284, "[t]hose in the art would understand [paragraph 9] to mean that there
are different arrow sizes with different requisite insert sizes" (Final Act. 1 7
(citing Marshall '284 ,-i 9)).
The Examiner acknowledges that Marshall '284 does not specifically
state that the two different sized adaptors are packaged together, but finds
that a person of ordinary skill in the art would have understood that "more
than one adaptor (insert) size could have been included in the packaging to
accommodate those users with arrows and bolts" (Final Act. 18 (citing
Marshall '284 ,-i 45)). The Examiner concludes that packaging more than
one adaptor size in the same packaging would have been predictably
desirable to consumers "who own more than one arrow size, or to those that
have multiple archers in the same household with different arrow sizes, such
as a father and son" (Final Act. 18), and that:
It plainly would have been obvious to those in the art
before the filing date of the invention to have packaged (and
marketed) more than one known adaptor size with the known
standardized nock assembly of Marshall to allow use of the
standardized nock assembly by users with multiple arrow sizes
without requiring these users to purchase these known
components separately.
(Final Act. 19).
We generally agree with the Examiner and address the various
arguments of the Patent Owner below.
The Patent Owner argues that the Examiner fails to establish a prima
facie case of obviousness because Marshall '284 lacks disclosure of a second
adaptor having a common inside diameter as the first adaptor but a different
outside diameter, or providing both first adaptors and such second adaptors
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in a single package together with the lighted nock assembly (App. Br. 17-
18; see also App. Br. 11).
We agree, and the Examiner concedes, that Marshall '284 lacks
disclosure of a package having both first and second adaptors together with
the lighted nock assembly (Ans. 3, 10). However, we disagree with the
Patent Owner that Marshall '284 lacks disclosure of a second adaptor having
a common inside diameter as the first adaptor, but a different outside
diameter. To the contrary, Marshall '284 discloses a standardized nock that
is transferable to, and is usable with, other arrows, and that such
standardized nock is sized to fit within an insert that is sized to fit within a
conventional arrow or bolt (FF 2A-3B). Marshall '284 further discloses that
in the marketplace, several standardized arrow and crossbow bolt sizes are
available (FF 2A, 2C). Therefore, a person of ordinary skill in the art would
have understood Marshall '284 as disclosing different sized inserts
corresponding to different sized arrow shafts available in the marketplace,
the inserts receiving a standardized nock (FF 2D).
The Patent Owner argues that the Marshall '284 indicates that the
lighted nock is suitably configured for use with user's own arrow or bolt
(singular) so that providing multiple sizes is not envisioned by Marshall '284
(App. Br. 17; see Marshall '284 ,-i 45). This argument is unpersuasive.
Marshall '284 does not disclose this user's arrow or bolt as being a specific
size, but instead discloses that in the marketplace, there are several
standardized sizes available for arrows and bolts, and that the disclosed
standardized lighted nock is for use with an insert that is appropriately sized
to be received within a conventional arrow or bolt shaft (FF 2A-2C; FF 3A).
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Thus, a person of ordinary skill in the art would have understood Marshall
'284 as disclosing inserts of different sizes, each size corresponding to, and
usable with, a particular sized conventional arrow or bolt shaft of the several
standardized arrow and bolt sizes available in the marketplace (FF 2D; FF
3B).
As to the Patent Owner's argument that Marshall '284 lacks a second
adaptor having an outside diameter different from the first adaptor, but
common inside diameters, we disagree with the Patent Owner, and agree
with the Examiner's finding that Marshall '284 discloses this limitation.
The Patent Owner does not fully account for the standardization of the nock
that provides a more universal construction (FF 2A). The Patent Owner's
argument would mean that the inserts of Marshall '284 would have different
outer diameters to be fitted into differently sized standardized arrow/bolt
shafts available in the marketplace, as well as differently sized inner
diameters for receiving differently sized shaft insertion portions of nocks.
However, contrary to the Patent Owner's assertion, Marshall '284 discloses
a standardized nock and working components thereof for use "within any of
the several standardized arrow and crossbow bolt sizes available in the
market place," together with an appropriately sized insert (FF 2A).
In the above regard, we find the Patent Owner's argument is solely
based on attorney argument that relies on a strained interpretation of
Marshall '284 rather than considering what Marshall '284 discloses and how
that disclosure would have been understood by those of ordinary skill in the
art. Indeed, despite having submitted two declarations in support of its
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appeal, declarant Mr. Bay who is an interested party8 does not provide an
opinion as to how the prior art Marshall references would have been
understood by those in the art, or offer any persuasive discussion in support
of its attorney's assertions. Specifically, Mr. Bay does not declare, or
provide persuasive support to the assertion, that the inserts in Marshall '284
would have had different outer diameters and differently sized inner
diameters for receiving differently sized shaft insert portions for the nocks.
Instead, the declarations (2d Deel. Bay, specifically) are directed
toward how the alleged commercial embodiment of the lighted nock
disclosed in the Marshall references did not include a first adaptor and a
second adaptor together in the same package (see generally, 2d Deel. Bay
i-fi-1 46-50). In fact, we note that Mr. Bay declares that "[t]he lighted nock
devices disclosed in the Marshall '282 and Marshall '284 publications are
sold commercially by a company called NuFletch under the brand name
IGNITOR" (2d Deel. Bay i-f 38). Mr. Bay further submitted Exhibit L with
several photographs "showing how the NuFletch IGNITOR lighted nocks
were packaged" and noting that "the first three images are of packages for
three different ID sizes of arrow shafts for vertical bows (2d Deel. Bay i-f 46).
Indeed, the first three photographs illustrate packages of IGNITOR lighted
nocks in sizes "H," "X," and "GT/S" (2d Deel. Bay, Exhibit L). Thus, the
Patent Owner clearly demonstrated actual possession of what are attested to
be the commercial implementations of the lighted nocks disclosed in the
Marshall references. However, the declarant does not attest that these
8 Mr. Bay is the inventor of the reexamined '786 patent, and CEO of Clean-
Shot Archery, Inc. that owns the patent (1st Deel. Bay i-fi-f l, 2).
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commercial implementations of the lighted nocks disclosed in the Marshall
references, in fact, include inserts having different diameters, which can be
ascertained by simply measuring the differing internal diameters of the
inserts provided in the various IGNITOR packages in possession so as to
support, via factual evidence, the argument being made by the Patent
Owner's attorney.
Thus, we find the Patent Owner's argument is based on a strained
interpretation of Marshall '284, and is merely attorney argument that is not
substantiated by any persuasive evidence. See In re Schulze, 346 F .2d 600,
602 (CCPA 1965) ("Argument in the brief does not take the place of
evidence in the record."). Therefore, in view of the above, we find that a
person of ordinary skill in the art would have understood Marshall '284 as
disclosing different sized inserts for different sized arrow shafts that receive
a standardized nock. Hence, we agree with the Examiner that:
In sum, Marshall discloses all of the items of the claimed
kit less the package. It is maintained that it would have been
obvious to those in the art before the filing date of the invention
to have packaged (or marketed) all of the kit items of Marshall
together, that is to say, to package more than one known
adapter size with the known standardized nock assembly of
Marshall to allow use of the standardized nock assembly by
users with multiple arrow or bolt sizes without requiring these
users to purchase these known components separately. Packing
all of the known kit elements of Marshall together purely
amounts to a marketing mechanism and therefor lacks
patentable moment.
(Ans. 5; see also Final Act. 19).
The Patent Owner further argues that there must be evidence to
establish that universal fit package features were known, but that the
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Examiner failed to provide any such evidence, and that such evidence must
be in the form of prior patents or printed publications (App. Br. 13-14;
Reply Br. 2-3). We do not find these arguments persuasive.
The Examiner articulated a reason for packaging the differently sized
inserts together in the same passage would have been desirable so that these
components need not be separately purchased by consumers who own more
than one arrow size, and households that have multiple archers that use
different arrow sizes, such as a father and son (Final Act. 18, 19).
Thus, the Examiner's rejection is based on an articulated reason that is
supported by rational underpinnings, regardless of whether prior "universal
kit packaging" was well known in the art or not. This is the requirement for
establishing obviousness.
Specifically, the Supreme Court noted that obvious analysis should be
made explicit. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness")). The Court
also made clear that "the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. The Court further cautioned
that "obviousness analysis cannot be confined by a formalistic conception of
the words teaching, suggestion, and motivation, or by overemphasis on the
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importance of published articles and the explicit content of issued patents."
Id. at 419.
Except for disputing the Examiner's findings with respect to the
disclosure in Marshall '284, the Patent Owner does not substantively address
the articulated rejection of the Examiner, namely, that it would been obvious
to provide the second insert (i.e., adapter) in the same package as the first
insert for the reasons noted above. Instead, the Patent Owner relies on KIS
Himpp v. Head-Wear Techs., LLC for the proposition that basic knowledge
or common sense cannot be a replacement for core factual findings, which
the Patent Owner asserts, must be documentary evidence in the present
reexamination proceeding (see App. Br. 13 (citing Himpp, 751F.3d1362
(Fed. Cir. 2014)); see also Reply Br. 2-3). The Patent Owner's reliance on
Himpp is misdirected.
In Himpp, the claim at issue recited "a plurality of prongs that provide
a detachable mechanical and electrical connection to an audio processing
module," but there was no evidence in the record that such a structural
connection with plurality of prongs was known in the art. Himpp, 751 F.3d
at 1363-64. Based on that evidentiary deficiency, the Board refused to
reject such claims, and the Federal Circuit affirmed the Board's decision. Id.
at 1365. However, it is clear that the court (and the Board) in Himpp
recognized that the limitation at issue was a structural limitation requiring a
specific structural connection (with a plurality of prongs) for which there
was no evidence in the record that such a structural connection was known
in the art. Id. ("Board was correct to require record evidence to support an
assertion that the structural features of [the claims] were known prior art
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elements"); see also id. at 1364 (noting the Board's statement of "the
particular distinct connection structures set forth in those claims are [not]
disclosed").
Moreover, the court in Himpp further recognized that the structural
limitation must also be an important structural limitation. Id. at 1365-66
(evidence is required "particularly where it is an important structural
limitation that is not evidently and indisputably within the common
knowledge of those skilled in the art"); id. at 1366 ("Board cannot accept
general conclusions about what is 'basic knowledge' or 'common sense' as a
replacement for documentary evidence for core factual findings in a
determination of patentability"); see also id. at 1365 ("The determination of
patentability of claims with this limitation therefore requires a core factual
finding, and as such, requires more than a conclusory statement").
The present appeal is distinguishable from Himpp in that each and
every structural limitation of the sole independent claim (claim 8) is
disclosed in Marshall '284. There is no structural component or device that
is missing. As set forth supra in the findings, Marshall '284 discloses first
and second adaptors recited in claim 8, and providing one or more of its
lighted nocks in a package (FF 2B-2D, 3A-3B, 4A--4B).
As noted above, Marshall '284 does not explicitly disclose the
placement of the disclosed second insert (i.e., adaptor) within the same
disclosed package as the disclosed first insert/adaptor. However, this
placement of the second insert is not a structural limitation or element. As
discussed supra, the Examiner has articulated a reason for providing the
second insert in the same package as the first insert, which is supported by
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rational underpinnings as required by law. KSR, 550 U.S. at 418. In
asserting that there must be evidence to establish that such packaging was
known, the Patent Owner appears to essentially require documentary proof
that the reason articulated by the Examiner has been previously applied in a
prior art document/publication, regardless of whether the articulated reason
is based on rational underpinnings. We discern no such heightened
requirement in KSR. To the contrary, KSR mandates that we do not throw
out common sense, skill and ordinary creativity of those in the art when
considering obviousness of the invention claimed, or overemphasize the
importance of publications or explicit content of issued patents. Id. at 418-
19.
In seeking to further explain obviousness of the claimed invention, the
Examiner gave an example of an electrical transformer stating:
For example, electrical transformers for international outlets are
packaged and sold with multiple adapters representing a
selection of potential countries that such an adapter might be
required.
(Final Act. 14; see also Ans. 6 ("Packaging multiple adapters together is far
from an unknown practice (e.g. the notoriously old packaging of A/C
voltage adapters for different sized international outlets)."). The Patent
Owner argues that referring to A/C voltage adaptors "is not itself evidence"
(App. Br. 14), and is not a ground for the rejection.9 Thus, the Patent Owner
argues that A/C voltage adapters should not be considered in this appeal
proceeding (Reply Br. 5-6).
9 During Oral Hearing, the Patent Owner's attorney stated that A/C voltage
adapters are "not a grounds for the rejection."
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We are not in disagreement with the Patent Owner that A/C voltage
adapters is not part of the rejection because the Examiner's rejection does
not rely on the example of A/C voltage adapters. Thus, this issue is not
dispositive as to the appeal. As discussed above, the Examiner has
articulated a reason with rational underpinnings for providing the second
insert disclosed in Marshall '284 in the same package as the first insert also
disclosed. KSR, 550 U.S. 418.
Secondary Considerations Evidence
In Graham, the Supreme Court stated that "secondary considerations
as commercial success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding the origin of
the subject matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy." See Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). The Patent Owner
argues that the secondary considerations evidence of record was not
correctly weighed by the Examiner, and asserts non-obviousness based
thereon (App. Br. 19).
Copying by NuFletch
The Patent Owner argues that copying of the claimed invention by
NuFletch demonstrates non-obviousness of the claimed invention (App. Br.
19-20). Specifically, the Patent Owner argues that NuFletch packaged
differently sized adapters into a single package of lighted nocks only after
the patented invention was introduced into market (App. Br. 19-20; 2d Bay
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Deel. i-fi-138-39, 49). The Examiner finds this evidence unpersuasive stating
that there is insufficient evidence to establish that the product sold by
NuFletch was the same as that sold by the Patent Owner, and that the
evidence of obviousness outweighs the case for non-obviousness (Final Act.
11-12; see also Ans. 12). In response to the Examiner's citation to Pentec,
Inc. v. Graphic Controls Corp. for the proposition that actual copying is
required (Final Act. 11 (citing Pentec, 776 F.2d 309 (Fed. Cir. 1985))), the
Patent Owner asserts that the Examiner applied an incorrect legal standard
and that it "need only show that the claimed invention was copied." (App.
Br. 19 (citing Pentec, 77 6 F .2d at 317) ).
We first clarify that in contrast to what the Patent Owner's argument
seems to imply, "[n]ot every competing product that arguably [falls] within
the scope of a patent is evidence of copying. Otherwise every infringement
suit would automatically confirm the nonobviousness of the patent. Rather,
copying requires the replication of a specific product." Iron Grip Barbell Co.
v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). As the term
implies, to demonstrate "copying," there must be evidence of copying,
which:
may be demonstrated either through internal documents, see
Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc.,
344 F.3d 1186, 1196-97 (Fed.Cir.2003); direct evidence such
as disassembling a patented prototype, photographing its
features, and using the photograph as a blueprint to build a
virtually identical replica, see Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1285 (Fed.Cir.2000); or
access to, and substantial similarity to, the patented product (as
opposed to the patent), Cable Elec. Prods., Inc. v. Genmark,
Inc., 770 F.2d 1015, 1027 (Fed.Cir.1985), overruled on other
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grounds by, Midwest Indus., Inc. v. Karavan Trailers, Inc., 175
F.3d 1356, 1359 (Fed.Cir.1999) (en bane).
Iron Grip Barbell Co., 392 F.3d at 1325. In addition, "more than the mere
fact of copying by an accused infringer is needed to make that action
significant to a determination of the obviousness issue" because "copying
could have occurred out of a general lack of concern for patent property."
Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985);
see also In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). In this
regard, the mere fact of copying is not necessarily dispositive of
nonobviousness. Cable Elec., 770 F.2d at 1028.
There is no persuasive evidence in the record that NuFletch copied the
Nock Out® product. In addition, even if the Patent Owner's assertion were
correct and only copying of the claimed invention need be shown, no
persuasive evidence has been set forth to establish that some document
disclosing the claimed invention (such as the subject '786 patent or any
other document) was copied by NuFletch.
In the present appeal, the sole evidence of copying is from Mr. Bay
who testifies:
45. Based upon my conversations with Mr. Marshall and the
competing relationship between our respective companies, I am
certain that NuFletch and Mr. Marshall have been keenly aware
of Clean-Shot's NOCK OUT lighted nock product since its
introduction to the market. I am also certain that they have
been monitoring the market's reception to our universal fit
technology.
47. It was not until NuFletch learned of Clean-Shot's NOCK
OUT universal fit lighted nock system and was able to see that
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the NOCK OUT system achieved phenomenal success in the
marketplace in only its first year of sales that NuFletch
recognized that a universal fit lighted nock system was superior
to their conventional shaft ID size-specific IGNITOR lighted
nock system. This is shown by the attached Exhibit M, which
is a pre-release advertisement for NuFletch' s new IGNITOR
Multi-Pak Lighted Nocks that just appeared in the April 2015
Arrow Trade Magazine. Arrow Trade Magazine is an archery
trade publication that only goes out to Dealers (not consumers).
49. The advertisement in Exhibit M also repeats the same
benefits that I mentioned in my first declaration as being
provided by my universal fit invention, including SKU
(inventory) optimization, eliminating lost sales because
customers do not know what ID size shaft they have, and the
resulting satisfied customers and increased sales.
51. NuFletch only introduced its copycat "Multi-Pak" universal
fit lighted nock package in April 2015 after learning of the
benefits of Clean-Shot's universal system by talking to me and
watching the NOCK OUT system overtake established
competitors in the marketplace.
(2d Deel. Bay iTiT 45, 47, 49, 51).
While copying by NuFletch is clearly asserted, the evidence
comprises general statements of copying by an interested party,
circumstantial evidence based on the timing ofNuFletch's product's
packaging, and touting of benefits in NuFletch's advertisement, which are
said to be the same as that of Clean-Shot's NOCK OUT® product's
packaging. The proffered evidence in support of copying is not objective,
direct evidence that would have more probative value in demonstrating
actual copying by NuFletch.
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Long-Felt Need
The Patent Owner asserts that there existed a long-felt need, which
has been met by the claimed invention (App. Br. 20-22). According to the
Patent Owner, the long-felt need was due to the fact that: 1) customers did
not know which package to buy because they did not know their arrow shaft
size; 2) retailers had to inventory and display many different sizes per each
different color; and 3) manufacturers incurred tooling expense associated
with manufacturing separate nock sizes for every popular arrow shaft
diameter (App. Br. 20-22). The Patent Owner further argues that the claims
are non-obvious because "[i]f universal fit were really an obvious feature,
then it would have been implemented as soon as lighted nocks were
introduced to the market over a decade ago" (App. Br. 22; see also Reply Br.
6; 1st Deel. Bay ii 20 ("If my invention were obvious, I would expect that
the many sophisticated manufacturers of lighted nocks would have solved
these long-standing problems many years ago."); 2d Deel. Bay ii 50).
Establishing a 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-
39 (CCP A 1967). There must be 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, 7 45 F .2d 1468,
1475 (Fed. Cir. 1984). In this regard, satisfaction of a long-felt but
unresolved need is not evidence of nonobviousness unless it is shown that
widespread efforts of skilled workers having knowledge of the prior art had
failed to find a solution to the problem. In re Allen, 324 F.2d 993, 997
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(CCP A 1963); see also Toledo Pressed Steel Co. v. Standard Parts, Inc.,
307 U.S. 350, 356 (1939). The mere fact that a patented invention provides
a benefit over the prior art, in and of itself, does not establish that a long-felt
need existed, that the attained benefit addresses a persistent problem
recognized by those in the art, or that others in the art tried but failed to
provide a feasible solution.
In the present appeal, there is little evidence that the identified
"problems" were in fact, persistent problems, or that such problems were
recognized by those in the art. In this regard, the Patent Owner's assertions
as to a long-felt need for a "universal fit" feature is misdirected and the
starting point of its assertion is not correct. As discussed in detail supra,
Marshall '284 discloses standardized fitment of lighted nocks and differently
sized inserts/adaptors. Hence, the art has already solved the "universal fit"
problem to any extent that a long-felt need actually existed. The Patent
Owner's invention's contribution to the art, and its distinction from the
disclosure of Marshall '2 84 is in packaging of the lighted nocks and
differently sized inserts/adaptors within the same package. Thus, the proper
establishment of long-felt need should begin from the disclosure of Marshall
'284 with objective evidence showing existence of a persistent packaging
problem recognized by those of ordinary skill in the art for which a solution
was not known. The Patent Owner does not provide evidence of long-felt
need for such a package subsequent to the disclosure of Marshall '284.
Notwithstanding the above, we address the Patent Owner's specific
assertions of long-felt need infra.
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The Patent Owner asserts that:
These frustrations [enumerated above] have certainly not
escaped the manufacturers' knowledge. The multiplied tooling
costs, loss of precious retail shelf space to competitors,
inventory control frustrations and feedback from frustrated
customers all serve as constant reminders that single size
lighted nock packages are full of drawbacks.
(App. Br. 21).
However, the Patent Owner's statement is not substantiated by
persuasive, objective evidence, and with the exception of the retail space and
inventory control, not substantiated by testimonial evidence from
disinterested parties. Exhibits E, F, G, and H submitted with the 1st
Declaration of Bay do tend to indicate that retail space and inventory control
was an actual persistent problem for retailers, each of these exhibits lauding
the benefit of reduced retail space requirements and the ease of inventory
control afforded by the commercial implementation of the claimed
packaging.
As to the other asserted problems, namely, that customers did not
know which package to buy, and manufacturers incurred higher tooling
expense, we find that there is very little evidence to demonstrate that these
were persistent problems, or that such problems was recognized by those in
the art. While the claimed packaging with adaptors of different sizes may
have provided benefits of facilitating customer purchases and of reducing
manufacturing costs, as noted above, providing of benefits over prior art
devices or products does not mean that the benefit addresses a persistent
problem recognized by those in the art, or that others in the art tried but
failed to provide a feasible solution.
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Commercial Success
The Patent Owner argues that the proffered evidence also
demonstrates commercial success because even though Clean-Shot Archery,
Inc. and its Nock Out® product were new to the field of archery, the Nock
Out® product was selected for sale by various retailers including W almart,
Bass Pro Shops, Scheel's, Field & Stream, Pape's, Kinsey's, and Lancaster
in its first year of production (App. Br. 22-23; 1st Deel. Bay i-fi-123-30). The
Patent Owner also asserts that its Nock Out® product has displaced well-
known/established competitors (App. Br. 23; 1st Deel. Bay i-fi-122, 25; 2d
Deel. Bay i-fi-152, 54). The Patent Owner further points to sales of "around
$400K for this year (2014)" and $150,000 spent in marketing "instead of
10% of all sales like other lighted nock companies" as evidence of
commercial success (1st Deel. Bay i-fi-123, 28). The Patent Owner also relies
on projected sales growth and planned marketing expenditures as evidence
of commercial success (1st Deel. Bay i124; 2d Deel. Bay i-fi-153, 55).
The Examiner finds the evidence unpersuasive because, inter alia,
there is no evidence that "the packaging was the reason for success," and
observes that with a marketing budget of $150,000, the Patent Owner's
marketing represents 3 7. 5% of sales, which is much higher than the 10% of
competitors, such that a significant portion of sales may be actually
attributed to this large percentage in the marketing budget as opposed to the
patented features (Ans. 13-14). The Examiner dismisses assertions of
commercial success based on projected sales growth and planned marketing
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expenditures because the assertion is based on speculation instead of actual
data (Ans. 14).
Firstly, we agree with the Examiner that projected sales growth and
planned marketing expenditures are speculative, and do not constitute
evidence of commercial success. As to the marketing budget of $150,000,
we find persuasive the Patent Owner's explanation that the percentage of
sales spent on marketing is not dispositive and that gross dollars spent on
marketing must be considered (Reply Br. 7). However, the explanation
merely rebuts the Examiner's reason for not giving sales information more
weight, and does not, in and of itself, demonstrate commercial success. In
this regard, notwithstanding the inexplicably vague sales figure of "around
$400K," this sales figure is rather small compared to the lighted nock market
that is said to be approximately $30 million (1st Deel. Bay i-f 28 10). Again,
while the Patent Owner relies on expected sales and future market share
based on projections, such figures are speculative and do not constitute
evidence of commercial success.
Moreover, while the Patent Owner has asserted that its Nock Out®
product has actually displaced/replaced other lighted nock products from
other manufacturers at various retailers (App. Br. 23; 1st Deel. Bay i-fi-123,
25; 2d Deel. Bay i-fi-152, 54), the assertions are overall vaguely stated and are
not supported by objective evidence. While Mr. Bay has provided some
10 We note that this $30 million figure in Mr. Bay's First Declaration signed
December 10, 2014, appears to conflict with Mr. Bay's Second Declaration,
which states that "[t]he total available market for lighted nocks in 2014 was
approximately $12.0 million (wholesale)." (2d Deel. Bay i-f 55). We
presume the discrepancy arises from the fact that the $12 million figure is a
wholesale figure whereas the $30 million is a retail figure.
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detail with respect to Walmart to support the assertion by naming three
specific brands its Nock Out® product has actually displaced/replaced (2d
Deel. Bay i-f 52), supporting objective evidence has not been provided.
Objective evidence has also not been provided with respect to the assertion
of increasing the number of SKUs at Walmart (1st Deel. Bay i-f 25). In this
respect, we note that Mr. Bay has submitted e-mail evidence from Walmart
that notes the benefit of the reduction in the number of packages (1st Deel.,
Exhibit H), but this evidence does not mention any
displacement/replacement of products of other manufacturers, or the
increase in the number of SKU s allotted to the Nock Out® product and the
significance thereof. Moreover, no details or objective evidence are
provided with respect to any other retailers as to the asserted
displacement/replacement of products of other manufacturers.
On the other hand, the fact that the Patent Owner's new product from
an unknown company was able to penetrate the market so as to be sold by
Walmart, Bass Pro Shops, Cabela's, and others (2nd Deel. Bay i-f 52) to
attain sales of "about $400K," indicates some level of commercial success in
what appears to be a competitive retail environment.
As to the Examiner's finding there is no evidence that "the packaging
was the reason for success," we observe that both the Specification of the
'786 patent and the commercial implementation thereof note the lighted
nock's ability to be deactivated (i.e., tum off) and used in a practice mode
(see col. 2, 11. 20-43; col. 8, 1. 51-col. 9, 1. 48; Figs. 25-30; 1st Deel. Bay,
Exhibit D). Mr. Bay declares that "[t]he practice mode feature is unique to
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NOCK OUT® lighted nocks, but that has not been driving our success from
the feedback I have received." (1st Deel. Bay i-f 30).
While the evidence of commercial success need not only be
attributable to the limitation asserted as distinguishing the claimed invention
from the prior art of record (i.e., provision of first and second inserts in the
same package), the presence of the additional functional benefit in the
commercial product (i.e., practice mode) does tend to somewhat dilute the
nexus between the claimed invention and the above noted level of success.
Mr. Bay's testimony is not persuasive in establishing that the contribution of
the practice mode feature in the asserted success of the commercial product
was negligible so that it can be ignored. Indeed, the evidence submitted by
Mr. Bay tends to indicate that the additional functional benefit provided in
the commercial product played at least some role in the above noted level of
success. Specifically, various exhibits state:
Naturally, consumers are excited about the NOCK OUT's
Practice Mode and Easy Off, but they are also very excited
about the Universal Fit feature"
(1st Deel. Bay, Exhibit E)
On and off position, no need for shaft preparation ... just some
of the benefits and all of this in one beautiful retail package ....
Thanks to NOCK OUT universal size and on-off shooting, we
saw huge increase in sales.
(1st Deel. Bay, Exhibit F)
That is not to say that the packaging of first and second adaptors in the
same package did not contribute to the level of success noted above.
However, we are noting that the evidence indicates that the packaging was
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not the only contributor to that success, and that another feature was a
contributor as well.
Conclusion Regarding Secondary Considerations Evidence
Having fully considered the secondary considerations evidence
proffered by the Patent Owner in support of non-obviousness, we conclude
that on balance, the evidence is not persuasive to establish non-obviousness
of the claims. As discussed supra, there is some evidence of long-felt need
in that retail space requirements and inventory control was a persistent
problem for retailers, which the commercial implementation of the present
invention addresses. There is also some limited evidence of commercial
success. However, most of the evidence amounts to general assertions by
interested party Mr. Bay, which are not substantiated by more persuasive
objective evidence, and thus, are of diminished probative value. There is no
evidence of copying. If the proffered evidence was of higher quality and
quantity, our conclusion may have been different. However, under the
present record, we are not persuaded that the evidence shows non-
obviousness. In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359, 1368
(Fed. Cir. 2004) (The Board has "broad discretion as to the weight to give
declarations offered in the course of prosecution.").
Claim 9
Dependent claim 9 recites a third adaptor disposed in the package
having the same internal diameter as the first and second adaptor, but having
an outside diameter larger than the second adaptor outside diameter (see
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App. Br., Claims App'x). The Patent Owner argues that, like the second
adaptor, the third adaptor is not disclosed in Marshall (App. Br. 14-15). The
Examiner finds that "those having ordinary skill in the art would have
recognized that more than two arrow sizes were available at the time of the
invention, and as such, more than two adaptor sizes would have been within
the scope of the Marshall, Jr. teaching." (Final Act. 19; Ans. 8).
We agree with the Examiner. Marshall '284 discloses that its lighted
nock can be used "within any of the several standardized arrow and
crossbow bolt sizes available in the marketplace" (FF 2A (emphasis added))
thereby disclosing more than two or three sizes. 11 Thus, a person of ordinary
skill in the art would have understood Marshall '284 as disclosing several
differently sized inserts/adaptors. 12
Claim 23
Claim 23 depends from claim 22, which requires the package to
include a plastic shell. Claim 23 recites that "the shell includes a first pocket
and a second pocket, the first and second pockets being physically separate
11 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE:
Several: 1. Being of a number more than two or three but not many,
12 While not necessary for affirming the present rejection of claim 9, we note
that the Easton Guide also discloses numerous arrow shaft sizes (see
generally, Easton Guide). See Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63
(Fed. Cir. 2013) (prior art of record not specifically relied upon in the
rejection considered as evidence of the state of the art, common knowledge,
and common sense of one of ordinary skill in the art).
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from one another." (App. Br. 25, Claims App'x). The Examiner rejects
claim 23 (and claim 24 discussed infra) stating that:
packaging items for display wherein the individual components
are separately housed in "pockets" or separate compartments
such that a prospective buyer might easily ascertain the
components within the packaging was notorious to the
marketing arts at the time of the invention, the incorporation of
such into the Marshall device thus would have amounted to
mere design expedient in order to effect increased sales
exposure of the kit components.
(Final Act. 20; see also Ans. 8).
The Patent Owner argues that the Examiner's reliance on general
knowledge in the packaging arts is improper (App. Br. 15), and that the
Examiner has not established the requisite motivation to provide such a
package (Reply Br. 8).
We find no error in the Examiner's rejection. While we agree with
the Examiner's finding that such packaging with pockets was well-known, 13
the Examiner further articulated that such packaging would have been a
design choice that can be made to increase sales exposures of the kit
components. Thus, to any extent that such packaging was not well-known in
the archery art, the Examiner provided a reason with rational underpinnings
13 Indeed, although not necessary to affirm the Examiner's rejection of claim
23, we also note that even the Patent Owner's own submitted evidence
indicates that such packaging with pockets was well-known in the packaging
art generally, and well-known in the archery art specifically (see 2d Deel.
Bay, Exhibit L (showing three separate packages ofIGNITOR for crossbow
bolts that are said to have been introduced to the market "early 2013" (,-i 46),
each package having three separate pockets with each pocket containing at
least a lighted nock and sleeve)).
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for providing such a package, which is sufficient to support the conclusion
of obviousness. KSR, 550 U.S. at 418.
Claim 24
Claim 24 depends from claim 23 and further recites "wherein at least
a portion of the lighted nock assembly is disposed in the first pocket and at
least one of the first and second adaptors are disposed in the second pocket."
(App. Br. 25, Claims App'x). The Patent Owner argues that there is no
evidence of such arrangement of the lighted nock assemblies within a
package, and that the Examiner failed to address why the claimed package
configuration would have been provided (App. Br. 15; Reply Br. 8).
We disagree and again find no error in the Examiner's rejection. The
Examiner articulated a reason for providing the claimed package
configuration, namely, "such that a prospective buyer might easily ascertain
the components within the packaging." (Final Act. 20; see also Ans. 8-9).
In such a package containing both first and second adaptors that can be used
with a standardized nock, separating the first adaptors from the differently
sized second adaptors would facilitate the ease with which the buyer can
ascertain what is within the package. Thus, the Examiner has articulated a
reason with rational underpinnings sufficient to support the conclusion of
obviousness. KSR, 550 U.S. at 418.
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Claim 25
Dependent claim 25 recites that "both of the first and second adaptors
are a plastic material." (App. Br. 25, Claims App'x). The Examiner points
to paragraph 29 of Marshall '284 to conclude:
Since nocks were typically made of plastic before the filing date
of the invention, those having ordinary skill at that time would
have recognized plastic as a known functionally equivalent
material suitable for the Marshall adaptor (insert). Such a
modification would have yielded expected and predictable
results and would have performed in kind as the aluminum
adaptor noted by Marshall. Further based on the Marshall
teaching that other suitable materials could have been used, and
given that nocks were known to be plastic, it would have been
obvious to try a plastic material for its already known suitability
in that environment.
(Final Act. 20-21; Ans. 9).
The Patent Owner disagrees and argues that the Examiner's reasoning
that plastic could have been used for the cap instead of aluminum lacks
evidentiary support, and requires "knowing additional technical data that is
missing in the Marshall '2 82 reference," because " [ w] ithout knowing the
activation gap actuation force and the mechanical properties of the cap floor
material, one cannot make any conclusions about the suitability of plastic
material for the cap," and use of plastic may result in fatigue failure (App.
Br. 15-16; see also Reply Br. 9).
The Patent Owner's arguments are unpersuasive because they ignore
the suggestion in Marshall '284 that other materials may be used (FF 5), and
the ordinary skill and creativity of those in the art. KSR, 550 U.S. at 418.
We agree with the Examiner's articulated rejection noted above, and the
Examiner's further position that the Patent Owner's argument is:
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not persuasive as determining suitable materials was well
within the scope of engineering design choice resulting from
routine trial and error of material stresses for fatigue points.
(Ans. 9-10).
Claim 27
Dependent claim 27 recites that the nock body includes:
an index structure that prevents relative rotation of the nock
body with respect to the arrow shaft while allowing the nock
body to move towards the arrow shaft along a longitudinal axis
of the arrow shaft.
(App. Br. 26, Claims App'x).
The Examiner rejects this claim stating "in the broadest sense," the
string attachment portion of the nock of Marshall '284 satisfies this
limitation because:
when the string of a bow is engaged, the lighted nock assembly
is allowed to move towards the arrow shaft when fired, but is
prevented from relative rotation with respect to the arrow shaft.
(Final Act. 21 ).
The Patent Owner disagrees and argues that while the bow string may
prevent rotation of the nock body when the nock engages the bow string, the
nock body can still rotate relative to the insert/adaptor and the arrow shaft
joined thereto (App. Br. 16; Reply Br. 9).
Thus, the issue raised with respect to claim 2 7 is that of claim
construction. The Examiner states that claim 27:
does not limit the cap relative to the arrow shaft, rather it
requires that the index structure prevents relative motion of the
nock body with respect to the arrow shaft while allowing the
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nock body to move toward the arrow shaft, which the Marshall
structure does.
(Ans. 10).
While we understand the position of the Examiner, we find the
Examiner's claim interpretation to be unreasonably broad in view of the
Specification of the '786 patent as it would have been understood by one of
ordinary skill in the art. The '786 patent discloses provision of "raised male
index tabs 118" that are received within "female index slots 119." (Fig. 3;
col. 5, 11. 39--42). These indexing structures are described as follows:
Another advantage of certain embodiments is that the
index position will not be lost by operation of the lighted nock
assembly. The raised male index tabs 118 of the nock body 110
engage the recessed female index slots 119 of the housing 116
when the two components are secured together. This
configuration prevents rotation of the nock body 110 with
respect to the nock housing 116, while permitting these
respective components to still move longitudinally with respect
to one another.
(Col. 6, 11. 17-25).
Thus, the Specification of the '786 patent clearly focuses on
preventing rotation of the nock body relative to the housing that is secured to
the arrow shaft. Correspondingly, a person of ordinary skill in the art would
not interpret claim 27 as merely requiring prevention of rotation of the nock
(which can be satisfied by engagement of the string attachment portion of
the nock with the bow string), but instead, would understand the claim as
explicitly requiring indexing structure that prevents rotation of the nock
relative to the arrow shaft. While the PTO is obligated to give claims their
broadest reasonable interpretation, "any such construction [must] be
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'consistent with the specification, [ ... ] and ... claim language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art."' In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed.
Cir. 2010) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
Thus, because the Examiner's rejection of claim 27 is based on an
unreasonably broad construction of the claim language, we reverse the
rejection of claim 27.
Summary Regarding Rejection 2
Therefore, in view of the above, we find that the Examiner properly
set forth a prima facie case of obviousness claims 8-10, 14-16, 21-25, and
28 over Marshall '284, and that the proffered secondary considerations
evidence does not persuade us to the contrary. Hence, we affirm the
Examiner's rejection of claims 8-10, 14-16, 21-25, and 28. However, we
find the Examiner's rejection of dependent claim 27 to be based on an
unreasonably broad claim construction, and thus, reverse the rejection as to
claim 27.
Rejection 3
Dependent claim 26 stands rejected over either Marshall '282 or
Marshall '284 further in view of Bednar. The Patent Owner does not argue
this claim separately, but relies on its dependency on independent claim 8
and arguments directed toward the prior art Marshall references for
patentability (App. Br. 18). Thus, having found independent claim 8 to be
unpatentable over Marshall '284 for the reasons discussed above relative to
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Rejection 2, we also affirm Rejection 3 based on the combination of
Marshall '284 and Bednar. This rejection alternatively based on Marshall
'282 is moot and we decline to opine on the same.
Rejection 4
Claims 8-10, 14-16, 21-25, 27, and 28 stands rejected over Cyr and
either Marshall '282 or Marshall '284. The Patent Owner argues that a
prima facie case of obviousness is lacking because none of these references
"disclose the universal fit package features of a second adaptor disposed in
the package" with a common interior diameter but an outside diameter larger
than that of the first adaptor (App. Br. 18). The Patent Owner further relies
on the arguments submitted with respect to Rejection 2 noting that the
Examiner's basis for finding the universal fit package features obvious is the
same as in Rejection 2.
However, as discussed supra, the Patent Owner's arguments relative
to Rejection 2 and Marshall '284 are unpersuasive. In that regard, as the
Examiner finds, Cyr also discloses first and second adaptors with different
outside diameters (Final Act. 24; FF 8-1 OB). Moreover, while the
components of Cyr are not provided in a package, Marshall '284 clearly
discloses a package (FF 4A, 4B), and the Examiner has articulated a reason
for providing the different sized adaptors together in the same package,
which is supported by rational underpinnings, that is, to appeal to
"customers who own more than one arrow size, or to those that have
multiple archers in the same household with different arrow sizes, such as a
father and son." (Final Act. 25-26). KSR, 550 U.S. at 418. Furthermore, as
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already discussed supra, the secondary considerations evidence proffered by
the Patent Owner is insufficient to persuade us of unobviousness.
Therefore, in view of the above considerations, we likewise affirm the
Examiner's rejection of claims 8-10, 14-16, 21-25, and 28 as being obvious
over the combination of Cyr and Marshall '284. As to these claims, this
rejection based on the alternative combination of Cyr and Marshall '282 is
moot and we decline to opine on the same. However, we reverse Rejection
4 based on the combination of Cyr and either Marshall'282 or Marshall '284
with respect to claim 27, the rejection thereof being based on an
unreasonably broad claim construction as discussed supra relative to
Rejection 2.
Rejection 5
Dependent claim 26 also stands rejected over Cyr and either Marshall
'282 or Marshall '284, and further in view of Bednar. The Patent Owner
does not argue this claim separately, but relies on its dependency on
independent claim 8 and arguments directed toward the prior art Marshall
references for patentability (App. Br. 19). Thus, having found independent
claim 8 to be unpatentable over the combination of Cyr and Marshall '284,
we also affirm Rejection 5 based on the combination of Cyr, Marshall '284,
and Bednar. This rejection alternatively based on the combination of Cyr,
Marshall '282, and Bednar is moot and we decline to opine on the same.
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Rejection 1
Having affirmed the rejection of these claims 8-10 and 14-16 and 21-
25, and 28 supra, it is unnecessary to reach this rejection based on Marshall
'282 as to these claims. As to dependent claim 27, we reverse the
Examiner's rejection of claim 27 based on Marshall '282 for substantially
the same reasons discussed supra relative to Rejection 2, the rejection being
based on an unreasonably broad claim construction.
Rejection 6
Having affirmed the rejection of these claims 8-10 and 14-16 and 21-
25, and 28 supra, it is unnecessary to reach this rejection based on the
combination of Easton Guide, Cyr, and either Marshall '282 or Marshall
'284 as to these claims. As to dependent claim 27, we reverse the
Examiner's rejection of claim 27 for substantially the same reasons
discussed supra relative to Rejection 2, the rejection being based on an
unreasonably broad claim construction.
ORDERS
1. A. Rejection 2 based on Marshall '284 is affirmed as to claims 8-
10, 14-16 and 21-25, and 28.
B. Rejection 2 is reversed as to claim 27.
2. A. Rejection 3 based on the combination of Marshall '284 and
Bednar is affirmed.
B. Rejection 3 based on the combination of Marshall '282 and
Bednar is moot.
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3. A. Rejection 4 based on the combination of Cyr and Marshall '284
is affirmed as to claims 8-10, 14-16, 21-25, and 28.
B. Rejection 4 based on the combination of Cyr and Marshall '282
is moot as to claims 8-10, 14-16, 21-25, and 28.
C. Rejection 4 based on the combination of Cyr and either
Marshall '282 or Marshall '284 is reversed as to claim 27.
4. A. Rejection 5 based on the combination of Cyr, Marshall '284
and Bednar is affirmed.
B. Rejection 5 based on the combination of Cyr, Marshall '282
and Bednar is moot.
5. A. Rejection 1 based on Marshall '282 is moot as to claims 8-10,
14-16, 21-25, and 28.
B. Rejection 1 is reversed as to claim 27.
6. A. Rejection 6 based on the combination of Easton Guide, Cyr,
and either Marshall '282 or Marshall '284 is moot as to claims
8-10, 14-16, 21-25, and 28.
B. Rejection 6 is reversed as to claim 27.
SUMMARY
At least one rejection of each of claims 8-10, 14-16, 21-26, and 28
has been affirmed. Each rejection of dependent claim 27 has been reversed.
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-IN-PART
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