Ex Parte Barish

Patent Trial and Appeal Board

Jun 11, 2013

12314008 (P.T.A.B. Jun. 11, 2013)

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.
12/314,008 12/02/2008 Benjamin J. Barish 45293 4841
67801 7590 06/11/2013
MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
P.O. BOX 16446
ARLINGTON, VA 22215
EXAMINER
TILLMAN, JR, REGINALD S
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
06/11/2013 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 BENJAMIN J. BARISH
____________________

Appeal 2011-002698
Application 12/314,008
Technology Center 3600
____________________

Before GAY ANN SPAHN, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002698
Application 12/314,008

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4 under 35 U.S.C. § 102(b) as anticipated by Barish (US 6,123,229,
iss. Sep. 26, 2000) (Ans. 3-4).1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The sole independent claim on appeal is reproduced below and is
representative of the appealed subject matter.
1. A projectile launching device, comprising:
a housing having a barrel at one end;
an air pulsator within the housing having an inlet and an
outlet;
a pump communicating with the inlet of the air pulsator
for pumping air into the air pulsator to pressurize the air
therein; and
a projectile chamber within the barrel for receiving a
projectile to be launched;
said air pulsator including a pressure-responsive valve
which is normally closed to permit the pump to pressurize the
air therein to a desired level, said valve being automatically
openable in response to a maximum high-pressure within the
pulsator to output an air pulse discharge therefrom into the
projectile chamber, and thereby to launch the projectile from

1 The rejection of claims 1-4, 7, and 8 under 35 U.S.C. § 102(b) as
anticipated by Johnson (US 6,220,237 B1, iss. Apr. 24, 2001) has been
withdrawn. Ans. 2. We assume the Examiner meant to indicate that claims
7 and 8 now stand objected to as being dependent from a rejected base
claim. In any event, any objections to claims 7 and 8 would not be subject
to this appeal. See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP)
§ 1201 (8th Ed., Rev. 8, Jul. 2010) (the Board will not ordinarily hear a
question that is reviewable by petition).
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Application 12/314,008

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the barrel at a velocity according to the force applied to the
projectile by said air pulse discharge.

ANALYSIS
Appellants argue claims 1-4 as a group. Br. 8-10. We select claim 1
as the representative claim, and claims 2-4 fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
Appellant contends that the prior art fails to disclose an “air pulsator”
as claimed, but rather discloses a “water pulsator.” App. Br. 9 (emphasis
omitted). As the Examiner correctly points out, claims directed to an
apparatus must be distinguished from the prior art in terms of structure
rather than function, provided the structure is capable of performing the
function. Ans. 4; see also In re Schreiber, 128 F.3d 1473, 1477-78 (Fed.
Cir. 1997) (holding that a funnel disclosed for oil dispensing anticipated a
claim to a funnel-like structure employed for dispensing popcorn and that
applicant had the burden to prove that the funnel was not capable of
dispensing popcorn once the Examiner established a similarity in structure)
and Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device
does.”).
The Examiner found that Barish’s pulsator includes:
a pressure-responsive valve (Figs[.] 3-3c) which is normally
closed (Fig[.] 3) to permit the pump to pressurize the air therein
to a desired level, said valve being automatically openable
(Fig[.] 3c) in response to a maximum high pressure (c. 2, l. 5-7)
within the pulsator to output a[] pulse discharge therefrom into
the projectile chamber, and thereby to launch the projectile
from the barrel at a velocity according to the force applied to
the projectile by said air pulse discharge.
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Application 12/314,008

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Ans. 3-4. The Examiner also found that “[i]t is commonly known in the art
of valves that valves are used in both liquid and gas operating systems” and
that Barish’s valve for a liquid operating system is “clearly capable of being
used in [a] gas operating system[].” Ans. 4. The Examiner also found that
“claim 1 does not recite any structural difference to distinguish [Appellant’s]
valve [from] the valve disclosed in Barish” and that both valves are
“pressure-responsive snap action valves and both have the same exact
structure.” Id. at 5; see also Barish, col. 4, ll. 24-29 (which indicates that
“two bellows plates 40, 50, and deformable membrane 60 mounted within
them, together act as a snap-action valve controlled by the flow rate selector
20 (FIG. 1) to produce either a continuous stream discharge from the outlet
connector 53, or a plurality of short squirt discharges spaced as desired.”).
In light of the Examiner’s findings, the burden shifted to Appellant to show
that Barish’s valve is incapable of pulsating air as called for in claim 1. See
Schreiber, 128 F.3d at 1478 (once the Examiner finds that the prior art
structure would be capable of performing all of the functions claimed, the
burden shifts to the applicant to show this this is not the case).
Although Appellant contends that an air pulsator “is clearly a different
structure from a water pulsator” (App. Br. 9), that claim 1 recites “a novel
structure” (App. Br. 9), and that “there are significant differences in the
structure, mode of action, and results produced with respect to the two types
of devices” (Reply Br. 2), such conclusory statements without any
accompanying evidence or reasoning are unpersuasive. See In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (An attorney's arguments in a brief
cannot take the place of evidence). Appellant’s contentions are attorney’s
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Application 12/314,008

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argument, not persuasive evidence or technical reasoning that Barish’s water
pulsator is incapable of performing the intended use or function of the
claimed apparatus to operate on air rather than water in order to output an air
pulse discharge. Indeed, the water pulsator of Barish has very similar
structure to the air pulsator of the present application.
Appellant’s additional contention that “to modify the structure in the
cited prior Barish patent as an air pulsator would not only completely distort
the clear meaning of the words ‘water pulsator’ . . ., but would also render
that patent unworkable for its intended purpose” (App. Br. 9) is not
persuasive because it fails to address the rejection as articulated by the
Examiner. The Examiner’s rejection is not based on a modification of
Barish’s water pulsator to be an air pulsator; rather, the Examiner’s rejection
is based on the finding that Barish’s existing structure without any
modification is capable of performing the intended use and function of
Appellant’s claimed apparatus to operate on air rather than water in order to
output an air pulse discharge. “[T]he absence of a disclosure relating to
function [i.e., the use of Barish’s disclosed structure with air rather than
water] does not defeat the . . . finding of anticipation.” Schreiber, 128 F.3d
at 1477.
We have also considered Appellant’s argument that Barish cannot
meet the limitation that the valve be openable “to output an air pulse
discharge therefrom into the projectile chamber . . . to launch the projectile”
(App. Br. 12, Claims App’x.) since the water discharged by the Barish
device would have to improperly be considered both the claimed pulse and
the claimed projectile to meet the recited claim limitations. App. Br. 9-10.
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This argument is not persuasive as the projectile is not positively recited in
the claim, such that claim 1 only requires that the recited valve structure be
capable of being openable to operate on air rather than water in order to
output an air pulse discharge to launch a projectile (i.e., any projectile
received in the chamber in the barrel of Barish’s device). See Ans. 3. As
described supra, Appellant has not persuasively shown that Barish’s device
is incapable of such use or function to rebut the Examiner’s finding.
We have also considered Appellant’s argument that Barish’s barrel
cannot be the claimed “projectile chamber” because “a ‘chamber’ is
generally defined as an enclosed space or compartment,” whereas Barish
shows only “a passageway.” Reply Br. 2. Words of the claims are given
their ordinary meaning unless such a meaning is inconsistent with the
specification and prosecution history. See Desper Products, Inc. v. QSound
Labs, Inc., 157 F.3d 1325, 1336 (Fed. Cir. 1998). Here, Appellant’s own
Specification indicates that “[t]he device may then be fired by operating
lever 7 to launch the projectile 5 within projectile chamber 30 through the
open end of barrel 4.” Spec. 9, ll. 3-4; figs. 1, 3c-3e. As Appellant’s
projectile chamber 30 itself includes an open end at the discharge end of
barrel 4, we do not find Appellant’s proposed construction of “chamber” to
be reasonable. Instead, a reasonable construction of the claim term
“projectile chamber” that is consistent with the Specification encompasses a
passageway within the barrel for receiving a projectile to be launched. See,
e.g., Spec. 2, ll. 11-12 (“a projectile chamber within the barrel for receiving
a projectile to be launched”); Spec. 3, ll. 15-16 (“[a] further embodiment is
described wherein the end of the barrel serves as the projectile chamber”);
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Application 12/314,008

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Spec. 6, ll. 1-2 (“for launching a projectile 5 from projectile chamber,
generally designated 30, at a high velocity through the end of barrel 4”); and
Spec. 6, ll. 3-4 (“[t]he structure[] of . . . projectile chamber 30 [is] more
particularly illustrated in Fig. 3a”). Because Appellant’s proposed
construction of the term “projectile chamber” is not reasonable in light of
Appellant’s Specification, we do not find Appellant’s arguments to be
convincing.
Appellant also references an amendment proposed in a “Response to
Final” filed on June 1, 2010 in which Appellant sought to amend the claims
to recite that a projectile is “of a solid material” in an effort to overcome the
rejection. App. Br. 10; Reply Br. 3-4. The Examiner refused to enter the
amendment after final rejection because it would require further
consideration and/or search. See Advisory Action mailed June 23, 2010.
Appellant has requested that the amendment be entered, contending that the
amendment will not necessitate a new search. Reply Br. 4. This relates to a
matter that is petitionable to the Director under 37 C.F.R. § 1.181, and thus
is not within the jurisdiction of the Board. See MPEP § 1201 (8th Ed., Rev.
8, Jul. 2010) (the Board will not ordinarily hear a question that is reviewable
by petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re
Hengehold, 440 F.2d 1395, 1403-04 (CCPA 1971) (stating that there are
many kinds of decisions made by examiners that are not appealable to the
Board when they are not directly connected with the merits of issues
involving rejections of claims, and holding that “the kind of adverse
decisions of examiners which are reviewable by the board must be those
which relate, at least indirectly, to matters involving the rejection of
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Application 12/314,008

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claims”)); and In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that
the refusal of an examiner to enter an amendment of claims is reviewable by
petition under 37 C.F.R. § 1.181, and not by appeal to the Board).
For the foregoing reasons, the Examiner did not err in finding that
Barish disclosed all of the limitations recited in independent claim 1, and we
sustain the rejection of independent claim 1, and claims 2-4 which depend
therefrom and fall therewith, under 35 U.S.C. § 102(b) as anticipated by
Barish.

DECISION
The Examiner’s rejection of claims 1-4 under 35 U.S.C. § 102(b) as
anticipated by Barish is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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