Ex Parte Baker

Patent Trial and Appeal Board

Oct 4, 2018

13615897 (P.T.A.B. Oct. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/615,897 09/14/2012
26158 7590 10/09/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Travis Baker
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.
R087 1800US.l 6914
EXAMINER
COOPER, JOHN
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
10/09/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocketing@wbd-us.com
BostonPatents@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRAVIS BAKER
Appeal2017-000261
Application 13/615,897
Technology Center 3600
Before LINDA E. HORNER, LYNNE H. BROWNE, and
BRENT M. DOUGAL, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
13--45. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 The remaining claims in the instant application.
Appeal2017-000261
Application 13/615,897
CLAIMED SUBJECT MATTER
Claims 13, 19, 22, and 33 are independent. Claim 13, reproduced
below, is illustrative of the claimed subject matter:
13. A firearm comprising:
a receiver; and
a stock, the stock comprising:
a first stock portion having a first proximal face and a first
distal face, the first proximal face being configured for coupling
to the receiver;
a second stock portion spaced apart from the first stock
portion and having a second proximal face and a second distal
face, the second distal face defining a butt end of the stock; and
a recoil reducer located within the stock between the first
stock portion and the second stock portion to substantially reduce
a recoil force transmitted through the stock, the first stock
portion, second stock portion and recoil reducer defining a
substantially unitary stock, and wherein the recoil reducer
compnses:
a guide extending between the first stock portion and the
second stock portion to direct a relative motion between the first
distal face and the second proximal face; and
a resilient insert positioned between the first stock portion
and the second stock portion, the resilient insert being
compressible by the relative motion between the first distal face
of the first stock portion and the second proximal face of the
second stock portion, the insert including at least one body of a
compressible, resilient material with a modulus of elasticity
sufficient to reduce the recoil force transmitted through the stock
upon firing of the firearm as the insert is compressed by the
relative motion between the distal face of the first stock portion
and the proximal face of the second stock portion.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stewart us 2,677,207 May4, 1954
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Application 13/615,897
Bragg
Johnson
us 4,663,877
us 4,922,641
us 5,410,833
US 6,305,115 Bl
US 6,481,143 B2
May 12, 1987
May 8, 1990
May 2, 1995
Oct. 23, 2001
Nov. 19, 2002
May 1, 2003
Paterson
Cook
McCarthy
Poff, Jr. US 2003/0079394 Al
REJECTIONS
I. Claims 33-39, 44 and 45 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
II. Claims 13-27, 32-36, 40-42, and 44 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Bragg and Stewart.
III. Claims 28 and 37 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bragg, Stewart, and Cook.
IV. Claims 29, 30, 38, 39, 43, and 45 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Bragg, Stewart, and
Johnson.
V. Claims 13-15, 17-21, and 33-35 stand rejected under 35
U.S.C. § I02(b) as anticipated by McCarthy.
DISCUSSION
Rejection I: Indefiniteness of Claims 33-39, 44, and 45
The Examiner determines that claim 33 is indefinite because "[t]he
term 'nontrivial portion of the recoil force' in claim 33 is a relative term
which renders the claim indefinite." Non-Final Act. 4. The Examiner
reasons that "[i]t is unclear how much absorption of recoil would constitute
a 'nontrivial' amount," because "[t]he term 'nontrivial' is not defined by the
claim, the specification does not provide a standard for ascertaining the
requisite degree, and one of ordinary skill in the art would not be reasonably
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Application 13/615,897
apprised of the scope of the invention." Id. As no mention is made of
claims 34--39, 44, and 45 in the explanation of this rejection, it appears that
these claims stand rejected based on their dependence from claim 33. See id.
Accordingly, our determination with respect to claim 33 is dispositive for
claims 34--39, 44, and 45 as well.
Appellant contends "that the features and limitations of Claims 33-39
and 44--45, when viewed in light of the specification and considered as a
whole, are sufficiently clear to apprise one of ordinary skill of their scope
and thus meet the standard for definiteness." Appeal Br. 9. In support of
this contention, Appellant directs our attention to several paragraphs of the
Specification (paragraphs 45, 55, 67, and 68) and to Graphs A and B (Spec.
19, 20) as illustrating the claimed nontrivial portion of the recoil force. Id. at
9-10. Appellant explains that "[i]t can be seen in [the] results [shown in
Graphs A and BJ that the peak or most substantial portion of the recoil force,
generated within about .01 seconds of firing, is substantially reduced using
the recoil reducer according to embodiments of the claimed invention." Id.
at 10. Appellant concludes that "the context of the term 'non-trivial,' as
meaning a substantial or significant portion of the recoil forces generated are
subject to a reduction in recoil force within the stock ... such that the metes
and bounds of ... the claimed invention would have been readily
ascertainable." Id.
It is unclear how Graphs A and B illustrate what constitutes a
"nontrivial portion of the recoil force of the firearm." See Spec. 19-20.
Graphs A and B, titled "Recoil Force - Target Loads" and "Recoil Force-
Magnum Loads," graph force (measured in pounds without an indication of
direction) versus time measured in seconds for a variety of firearms (Firearm
A, Firearm B, Competitive Firearm Y, Firearm A with Recoil Reducer, and
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Appeal2017-000261
Application 13/615,897
Competitive Firearm X). See id. The only firearm with a recoil reducer
appears to be Firearm A. In Graph A, a comparison of Firearm A with and
without the recoil reducer, suggest very little difference in reduction of
recoil force. Whereas in Graph B, the same comparison suggests a much
larger reduction. It is unclear if both of these Graphs illustrate a non-trivial
reduction in recoil force, or if only Graph B illustrates such a non-trivial
reduction. Thus, it is unclear that one skilled in the art would be able to
ascertain what does and what does not constitute a non-trivial reduction as
claimed.
Turning to the paragraphs of the Specification cited by Appellant,
these paragraphs are not more enlightening. For example, although
paragraph 45 explains that "axially-directed forces, including both the recoil
force and any supporting forces, are transferred from the first stock portion
to the second stock portion through the resilient insert 90 of the recoil
reducer 50, which cushions and/or dampens these axial forces to reduce the
recoil felt by the shooter," this paragraph does not address what amount of
cushioning or dampening is required for this reduction in force to be non-
trivial. The remaining cited paragraphs, likewise, describe that a reduction
in force occurs, but do not provide a standard by which one having ordinary
skill in the art would be able to discern what amount of dampening
constitutes a non-trivial reduction in force. Spec. ,r,r 55, 67, and 68. Further,
the amount of reduction in force achieved by a given recoil reducer is
dependent on numerous factors such as the type of ammunition used and the
size of the user. Moreover, the term "non-trivial" is subjective in that the
same amount of force may be non-trivial to one user (for example a small
child or adolescent) while being trivial to another user (for example a large
adult). Without further guidance, we agree with the Examiner, that one
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skilled in the art would not be able to ascertain what reductions in recoil
force are trivial and what reductions are non-trivial as claimed.
For these reasons, we sustain the Examiner's decision rejecting claim
33, and its dependent claims 34--39, 44, and 45 under 35 U.S.C. § 112,
second paragraph.
Rejection V: Anticipation of Claims 13-15, 17-21, and 33-35 by McCarthy2
Appellant argues claims 13-15, 17-21, and 33-35 together. Appeal
Br. 10-14. We select independent claim 13 as the representative claim and
claims 14, 15, 17-21, and 33-35 stand or fall with claim 13. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds that McCarthy discloses each and every limitation
of claim 13. Non-Final Act. 14--15. In particular, the Examiner finds that
McCarthy discloses a resilient insert, which he identifies as corresponding to
McCarthy's springs 118 and 140, and that this resilient insert constitutes at
least one body of compressible, resilient material. See id. at 15. In addition,
the Examiner finds that McCarthy discloses a "first stock portion, second
stock portion and recoil reducer defining a substantially unitary stock
(fig.7)." Id.
Noting that the Examiner has taken the position that "that the springs
118 and 140 of McCarthy somehow teach a 'body' of a resilient insert as is
recited in independent Claims 13, 19, and 3 3," Appellant contends that
"such attempt to stretch McCarthy's disclosed springs 118 and 140 to now
read on a 'body' of a resilient member as recited by Claims 13, 19, and 33 is
improper and not in line with the broadest reasonable interpretation standard
2 Appellant address Rejection V before addressing Rejections II-IV. See
generally Appeal Br. In response, the Examiner also address the rejections
in this order. For consistency, we do as well.
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Application 13/615,897
as set forth in the MPEP." Appeal Br. 12; see also Reply Br. 5. In support
of this contention, Appellant directs our attention to the language of claim
13, which "describes the insert as including 'at least one body of a
compressible, resilient material with a modulus of elasticity sufficient to
reduce the recoil force transmitted through the stock upon firing of the
firearm.'" Id. at 13. Appellant further directs our attention to several
paragraphs of the Specification "which discloses/describes the body of the
resilient insert 90 that is compressible between the first and second stock
portions 20/30 in a rigid-compliant-rigid sandwich type arrangement, such
as shown ... in Fig. 2 of the application." Id. (citing ,r,r 36, 39, 55, 57, 59;
Fig. 2).
In response, the Examiner directs our attention to paragraph 30 of the
Specification which "states that resilient materials can include ' .... for
example and without limitation, compressible or elastic materials such as
rubber, urethane or other elastomeric materials, coil springs, fluid-filled
springs or cylinders, and the like."' Ans. 3 ( emphasis omitted).
The Examiner's reliance on paragraph 30 is misplaced. Although, this
paragraph includes springs in the category of resilient devices, the question
before us is not whether McCarthy's springs have a modulus of elasticity
sufficient to reduce the recoil force, but whether the body (i.e. material from
which the spring is made) has such a modulus of elasticity as claimed ("at
least one body of a compressible, resilient material with a modulus of
elasticity ... "). Appeal Br. 26 (Claims App.). As McCarthy is silent with
respect to the modulus of elasticity of the material from which its springs are
made, the Examiner's finding is not supported by a preponderance of
evidence.
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For this reason, we do not sustain the Examiner's decision rejecting
claim 13, and claims 14, 15, 17-21, and 33-35 which stand therewith, as
anticipated by McCarthy.
Rejection II: Obviousness of Claims 13-27, 32-36, 4rJ--42, and 44
In View of Bragg and Stewart
The Examiner finds that Bragg and Stewart disclose or suggest all of
the limitations of claim 13. See Non-Final Act. 5---6. In particular, the
Examiner finds that Bragg discloses "a resilient insert ( 44) positioned
between the first stock portion and the second stock portion (see figs. 2 and
3), ... , the insert including at least one body of a compressible, resilient
material (see at least column 2 line 48, comprise 'sponge rubber or like
material')." Id. at 5. The Examiner further finds that "Stewart discloses a
gunstock with a recoil pad ( 4) made of sponge rubber ( column 2 line 25),
teaching that sponge rubber is known in the art to be used as a recoil
absorbing pad." Id. at 6. Based on these findings, the Examiner reasons that
it would have been obvious to one skilled in the art that "the sponge rubber
resilient pad of Bragg is capable of possessing a modulus of elasticity
sufficient to reduce the recoil forces from firing the firearm, as foam rubber
is the only recoil pad material taught by Stewart." Id.
Appellant notes that in describing element 44 "Bragg [] provides that
' [a] compressible element 44 of sponge rubber or like material surrounds the
guide rods in the space between the end piece 20 and mounting plate 26 to
prevent dirt from getting onto the guide rods and into the bores."' Appeal
Br. 16 (citing Bragg, 2:47-51) (emphasis omitted). Appellant explains that
"element 44 is not designed for, nor does there appear to be any disclosure in
Bragg that it functions as or is capable of, substantially absorbing or
dampening recoil forces generated upon firing." Id. at 18. Rather, as
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Application 13/615,897
Appellant explains, Bragg discloses "using 'an oil filled damping
mechanism 90' with '[s]prings 92, 94, and 96 operatively secured to the rods
30, 40, 42"' to provide a dampening effect. Id. at 15-16. In other words,
Appellant contends that Bragg's elements 44 do not read on the claimed
at least one body of a compressible, resilient material with a
modulus of elasticity sufficient to reduce the recoil force
transmitted through the stock upon firing of the firearm as the
insert is compressed by the relative motion between the distal
face of the first stock portion and the proximal face of the second
stock portion
required by claim 13. Appeal Br. 26 (Claims App.). Appellant further
contends that Stewart does not cure this deficiency in Bragg. Id. at 17-18.
As discussed supra, Bragg describes "[a] compressible element 44 of
sponge rubber or like material surrounds the guide rods in the space between
the end piece 20 and mounting plate 26 to prevent dirt from getting onto the
guide rods and into the bores." Bragg, 2:47-51. Bragg does not
contemplate use of compressible element 44 to reduce recoil, because Bragg
provides a different mechanism to achieve that purpose. See, e.g. Bragg,
1 :58-2:7. Although, Stewart describes the use of sponge rubber as a recoil
pad, this disclosure in and of itself is insufficient to support the Examiner's
reasoning that it would have been obvious to use such sponge rubber for
Bragg's compressible element 44. Moreover, the Examiner does not
adequately explain why one skilled in the art would modify Bragg's element
44 to have "a modulus of elasticity sufficient to reduce the recoil force
transmitted through the stock upon firing of the firearm," when Bragg
already includes a different mechanism for achieving this goal. Appeal Br.
26 (Claims App.). Accordingly, the Examiner's reasoning for the proposed
modification lacks rational underpinning.
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For these reasons, we do not sustain the Examiner's decision rejecting
claim 13, and claims 14--18 and 40, which depend therefrom as obvious in
view of Bragg and Stewart. The Examiner relies upon the same flawed
reasoning in the rejection of claims 19, 22, and 33. See Non-Final Act. 7-8,
9, 11. Accordingly, we do not sustain the Examiner's decision rejecting
claims 19, 22, and 33, and their respective dependent claims 20, 21, 23-27,
32, 34--36, 41, 42, and 44, for the same reason.
Rejections III and IV: Obviousness of
Claims 28 and 3 7 in View of Bragg, Stewart, and Cook
Claims 29, 30, 38, 39, 43, and 45 in View of Bragg, Stewart, and Johnson
Rejections III and IV rely upon the same flawed reasoning as
Rejection II discussed supra. Accordingly, we do not sustain the
Examiner's decision rejecting claims 28 and 37 in view of Bragg, Stewart,
and Cook for the same reason we do not sustain the Examiner's decision in
Rejection II. Likewise, we do not sustain the Examiner's decision rejecting
claims 29, 30, 38, 39, 43, and 45 in view of Bragg, Stewart, and Johnson for
the same reason.
DECISION
The Examiner's rejection of claims 33-39, 44, and 45 under 35 U.S.C.
§ 112, second paragraph, is AFFIRMED.
The Examiner's rejection of claims 13-15, 17-21, and 33-35 under
35 U.S.C. § 102(b) based on McCarthy is REVERSED.
The Examiner's rejection of claims 13-27, 32-36, 40-42, and 44
under 35 U.S.C. § 103(a) based on Bragg and Stewart is REVERSED.
The Examiner's rejection of claims 28 and 37 under 35 U.S.C.
§ 103(a) based on Bragg, Stewart, and Cook is REVERSED.
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Application 13/615,897
The Examiner's rejection of claims 29, 30, 38, 39, 43 and 45 under 35
U.S.C. § 103(a) based on Bragg, Stewart, and Johnson is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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