Ex Parte Delgado Acarreta

Patent Trial and Appeal Board

Apr 24, 2014

11883410 (P.T.A.B. Apr. 24, 2014)

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.
11/883,410 03/04/2008 Raul Delgado Acarreta 140330.00300 4356
14296 7590 04/24/2014
Blank Rome LLP (NY)
c/o Blank Rome LLP
Attn: Patent Docketing
600 New Hampshire Avenue, NW
Washington, DC 20037
EXAMINER
TILLMAN, JR, REGINALD S
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
04/24/2014 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 RAUL DELGADO ACARRETA
____________________

Appeal 2012-004309
Application 11/883,410
Technology Center 3600
____________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-004309
Application 11/883,410

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STATEMENT OF THE CASE
Raul Delgado Acarreta (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1, 3-6, and 8-22 under 35
U.S.C. § 103(a) as unpatentable over Wright (US 5,799,432; issued Sep. 1,
1998) and Fujiwara (US 4,810,965; issued Mar. 7, 1989). App. Br. 2, 4.1
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
Claims 1 and 22 are independent. Claim 1 is illustrative of the
claimed subject matter and reads:
1. An ammunition clip for an automatic and/or
semiautomatic firearm, the ammunition clip comprising:
a rounds counter;
a frame with an ammunition push mechanism housed
inside the frame;
wherein the ammunition push mechanism is movable by
a first spring between a base at one end of the frame and an
entry/exit hole for ammunition rounds at another end of the
frame;
wherein the rounds counter includes distance detection
means that measures a distance between the ammunition push
mechanism and the base of the frame;
wherein the distance detection means includes a variable
linear magnetoresistance element and a movable permanent
magnet secured to the ammunition push mechanism so that a
distance between the ammunition push tile and the base is
calculated by a magnetoresistance; and

1 Claims 2 and 7 have been cancelled.
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Application 11/883,410

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wherein the variable linear magnetoresistance is located
in the firearm handle.

ANALYSIS
Claims 1, 3-6, 8-11, and 22
Claim 1 recites, inter alia, a rounds counter which “includes distance
detection means that measures a distance between the ammunition push
mechanism and the base of the frame,” “wherein the distance detection
means includes a variable linear magnetoresistance element and a movable
permanent magnet secured to the ammunition push mechanism so that a
distance between the ammunition push tile and the base is calculated by a
magnetoresistance.”2 Emphasis added.
The Examiner found that Wright discloses an ammunition clip
comprising a push mechanism 3 (follower) and a rounds counter 111, but not
the rounds counter, as claimed. Ans. 5 (referencing fig. 3); see also col. 6,
ll. 39-42. The Examiner also found that Wright discloses that the rounds
counter is a position sensor. Id. (citing col. 3, ll. 18-20). Wright discloses
that the position sensor generates a signal that is a function of a linear
position of the follower within the magazine. See col. 3, ll. 18-20.
The Examiner found that Fujiwara discloses a position sensor
including a variable linear magnetoresistance element 15 and a permanent
magnet 11, in which a distance between these elements is calculated by

2 We note that in claim 1 “the ammunition push tile” lacks antecedent basis.
Emphasis added. For this appeal, we assume that “tile” should instead be
“mechanism.” It also appears that “the variable linear magnetoresistance” in
the final “wherein” clause should instead be “the variable linear
magnetoresistance element” to provide proper antecedent basis.
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magnetoresistance. Ans. 5 (referencing fig. 7). The Examiner determined
that it would have been obvious to modify Wright’s distance detection
means to calculate distance using magnetoresistance for the reason “to
replace one known distance detection means with another known distance
detection means.” Id.
The ammunition magazine shown in Figure 3 of Wright referenced by
the Examiner includes a cable take-up mechanism for determining the
position of movable follower 3 within housing 1. Col. 6, ll. 39-42. The
cable take-up mechanism includes a cable 101 attached to follower 3 and to
a rotatable drum 102. Id. at col. 6, ll. 48-49. The angular position of drum
102 is detected in order to determine the position of follower 3 in the
magazine. Id. at col. 6, l. 60-col. 7, l. 3; col. 7, ll. 51-52; col. 7, l. 58- col. 8,
l. 1.
Fujiwara discloses a position detector having a closed magnetic circuit
14 comprising a U-shaped yoke 12, a permanent magnet 11, and magnetic
sensor 15 including a magnetoresistance sensing element. Col. 7, ll. 33-39;
fig. 7. Magnetic sensor 15 is fixed to a transferring base 17 by a supporting
base 16, which is movable to move magnetic sensor 15 along the inside
surface of yoke 12. Id. at col. 7, ll. 46-51; figs. 7, 8. Magnetic flux lines 18
emanate from the N pole of magnet 11 and run through yoke 12 and return
to the S pole of magnet 11. Id. at col. 7, ll. 51-52; fig. 9. Magnetic sensor
15 senses magnetic flux intensity of magnetic leakage flux lines 19
emanating from the inside surface of yoke 12. Id. at col. 7, ll. 53-57; fig. 9;
see also col. 3, ll. 31-34.
Appellant contends that Fujiwara’s “position sensor requires a
stationary permanent magnet 11 that is not movable and thus must be
Appeal 2012-004309
Application 11/883,410

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fixedly secured to the yoke to form a closed magnetic circuit 14.” App. Br.
5-6. Appellant also contends that “Fujiwara requires a stationary magnetic
circuit and a ‘floating’ sensor moving inside the stationary magnetic
circuit.” Id. at 6.
In response, the Examiner stated that it would have been obvious to
modify the combination of Wright and Fujiwara to have a movable magnet
instead of a moveable sensor, because “a mere reversal of the essential
working parts of a device involves only routine skill in the art.” Ans. 10.
The Examiner also stated, “[r]egardless of whether the sensor moves away
from the magnet or the magnet moves away from the sensor, the parts are
performing the same function and the system would work the same (i.e.
distance would still be measured using the magnetic intensity given from a
magnet).” Id.
However, as noted by Appellant, claim 1 requires that the movable
permanent magnet be secured to the ammunition push mechanism. Reply
Br. 2. We agree with Appellant that even if Wright were modified to replace
its distance detection means with Fujiwara’s as proposed by the Examiner,
the Examiner did not make a finding that the modification would also secure
Fujiwara’s permanent magnet 11 to Wright’s follower 3, or articulate a
reason with a rational underpinning why it would have been obvious to
combine the reference teachings to result in the claimed arrangement
including “a movable permanent magnet secured to the ammunition push
mechanism.”
Thus, we reverse the rejection of claim 1, and its dependent claims 3-
6, and 8-11.
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Claim 22 is directed to an ammunition clip comprising, inter alia, “a
movable permanent magnet secured to the ammunition push tile to move
with the ammunition push tile between the first position and the second
position to produce a variable linear magnetoresistance.” Emphasis added.
The Examiner’s findings and reasoning in regard to claim 22 are the same as
those discussed supra for claim 1. Ans. 5; see also id. at 9-11. Thus, we
also reverse the rejection of claim 22.
Claims 12-21
NEW GROUND OF REJECTION
Claim 12 is directed to an automatic and/or semiautomatic firearm
comprising, inter alia, “a tip for loading the clip according to claim 1.”
Appellants do not provide a separate argument for claim 12. We find
that the meaning of the limitation “for loading the clip according to claim 1”
is indefinite, and thus, claim 12 is not sufficiently clear and definite so as to
comply with the requirements of 35 U.S.C. § 112, second paragraph. The
test for definiteness under 35 U.S.C. § 112, second paragraph, is whether
“those skilled in the art would understand what is claimed when the claim is
read in light of the specification.” Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). It is
unclear whether “for loading the clip according to claim 1” is an intended
use, or function, of the “tip.” That is, it is unclear whether this limitation
only requires a tip that can be used for, or is capable of, “loading” “the clip
according to claim 1.” It is also unclear whether “the clip according to claim
1” is a structural element (component) of the claimed firearm. That is, it
unclear whether the claimed firearm comprises “the clip according to claim
1” in addition to the “tip” and “programmable logic control means.”
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Accordingly, we find that the meaning of the recitation “a tip for
loading the clip according to claim 1” is subject to different plausible
interpretations, and thus, is vague and indefinite. See Ex Parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable
to two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C. § 112,
second paragraph, as indefinite.”). Thus, claim 12, and claims 13-20, which
depend from claim 12, do not comply with the requirements of 35 U.S.C.
§112, second paragraph.
Claim 21 recites “[a] system for counting ammunition rounds
comprising a clip and the firearm according to claim 12, wherein the clip is
partially or completely fitted in the firearm.” Appellants do not provide a
separate argument for claim 21. As discussed supra, we find it unclear
whether “the clip according to claim 1” is an element of the firearm of claim
12. Hence, it follows that it is unclear whether “the firearm according to
claim 12” recited in claim 21 comprises “the clip according to claim 1.” It is
further unclear whether “a clip” recited in claim 21 is the same clip as “the
clip according to claim 1,” or a different clip. Thus, we determine that claim
21 also does not comply with the requirements of 35 U.S.C. §112, second
paragraph.
We designate our rejection of claims 12-21 under 35 U.S.C. § 112,
second paragraph, as a NEW GROUND OF REJECTION under 37 C.F.R.
§ 41.50(b) to provide Appellant with an opportunity to react to the rejection.
Appeal 2012-004309
Application 11/883,410

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Obviousness
We are unable to reach the merits of the obviousness rejection of
claims 12-21 at this time. The reason that we are unable to do so is that
before a proper review of the rejection can be performed, the subject matter
that claims 12-21 encompass must be reasonably understood without resort
to speculation. Because we determine that claims 12-21 are not sufficiently
clear and definite to satisfy the requirements of the second paragraph of 35
U.S.C. § 112, we are constrained to reverse, pro forma, the rejection of
claims 12-21 under 35 U.S.C. § 103. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language.).

DECISION
The Examiner’s decision rejecting claims 1, 3-6, and 8-22 is
REVERSED.
This decision contains a NEW GROUND OF REJECTION of claims
12-21 under 35 U.S.C. § 112, second paragraph, pursuant to 37 C.F.R.
§ 41.50(b), which provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
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Application 11/883,410

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examiner, in which event the proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.…
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)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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