Ex Parte Eberhart et al

Board of Patent Appeals and Interferences

May 31, 2011

11011318 (B.P.A.I. May. 31, 2011)

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.
11/011,318 12/13/2004 Gerald Todd Eberhart 102654-100 9692
27267 7590 06/01/2011
WIGGIN AND DANA LLP
ATTENTION: PATENT DOCKETING
ONE CENTURY TOWER, P.O. BOX 1832
NEW HAVEN, CT 06508-1832
EXAMINER
JOHNSON, STEPHEN
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
06/01/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte GERALD TODD EBERHART and
MICHAEL EUGENE STOCK JR.
________________

Appeal 2010-001375
Application 11/011,318
Technology Center 3600
________________

Before MICHAEL P. TIERNEY, KEN B. BARRETT and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
Gerald Todd Eberhart et al. (Appellants) appeal under 35 U.S.C.
§ 134(a), from the Examiner’s decision to finally reject claims 1-3, 5-12, 14-
16, 18-20, 26-28, 30 and 31. We have jurisdiction under 35 U.S.C. § 6(b).
WE AFFIRM-IN-PART, REVERSE-IN-PART and WE ENTER A
NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY
UNDER 37 C.F.R. § 41.50(b).

References Relied on by the Examiner
Nosler US 3,003,420 Oct. 10, 1961
Sliney US 3,599,573 Aug. 17, 1971
Carter US 4,879,953 Nov. 14, 1989
Hickerson US 6,186,072 B1 Feb. 13, 2001
Pi US 6,792,869 B2 Sep. 21, 2004

The Invention
Appellants’ invention relates to a firearm projectile having a dense
core bonded in a rear jacket cavity and a tip at least partially inserted into a
front jacket cavity.
Independent claim 1 is illustrative of the invention and is reproduced
below:
1. A controlled expansion projectile, comprising: a unitary
metal jacket including nose, middle, and heel portions, said
nose portion including a front cavity and said heel portion
including rear cavity having sidewalls, said nose and heel
portions joined to one another via said middle portion; a dense
core contained within said rear cavity and bonded to said
sidewalls; and a tip at least partially inserted in said front
cavity. (App. Br. Claims App’x 17).

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The Rejections on Appeal
1. Claims 1-3, 5, 9-12, 14-16, 18-20, 26-28 and 30-31 are rejected under
35 U.S.C. § 103(a) as being obvious in view of Nosler and Carter (Ans. 4).
2. Claims 6-7 are rejected under 35 U.S.C. § 103(a) as being obvious in
view of Nosler, Carter and Pi (Ans. 5).
3. Claims 1-3, 5, 9-12, 14-16, 18-20, 26-28 and 30-31 are rejected under
35 U.S.C. § 103(a) as being obvious in view of Nosler and Sliney (Ans. 6).
4. Claims 1-3, 6, 8-12, 14-16, 18-20, 26-28 and 30-31 are rejected under
35 U.S.C. § 102(b) as being anticipated by Hickerson (Ans. 7).
5. Claim 8 is rejected under 35 U.S.C. § 103(a) as being obvious in view
of Nosler, Carter and Hickerson (Ans. 7).

B. ISSUE
The issues before us are: (1) whether the combination of Nosler and
Carter or the combination of Nosler and Sliney teach bonding between the
rear sidewalls and a dense core; (2) whether Pi’s front cavity lacks lead and
contains a substantially polycarbonate or polypropylene tip; (3) whether
Hickerson discloses bonding a dense core and a rear closure disc; and (4)
whether the cited art teaches a partially inserted tip and metal softening.

C. FINDINGS OF FACT
1. Appellants’ Specification states that the bond between the dense core
and the rear cavity sidewalls “may be a metallurgical, mechanical, or an
adhesive bond” (Spec. ¶ [0017]).
2. Nosler discloses a metal jacket with front and rear cavities and a
middle portion connecting the two (Nosler 2:4-14, 2:27-28, Figs. 1, 4).
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3. Nosler discloses a lead slug (“dense core’) in the rear cavity that is
“crimped” in place (Nosler 2:11-14, 2:28-29, Fig. 1).
4. Nosler inserts a separate lead slug in the front cavity that is shaped to
“form the lead nose portion” of the bullet (Nosler 2:29-32).
5. Carter teaches melting the lead core to “cause it to bond to the inner
surface of the jacket” which “also anneals the jacket” (Carter 3:5-9).
6. Sliney discloses pressure bonding a non-lead core and an outer jacket
together to achieve “a good metallurgical bond” between them (Sliney 2:10-
25, 2:36-46).
7. Pi teaches a jacket core filled with lead and “a plastic sphere formed
of polypropylene plastic” (Pi 2:24-25, 2:33-39).
8. Hickerson discloses a ballast front cavity containing non-lead material
and a payload rear cavity containing explosives or instrumentation
(Hickerson 11:36-39, 13:21-31).
9. Hickerson teaches that the rear cavity “is securely closed with a solid
metallic disk” (Hickerson 14:12-14).

D. ANALYSIS
Appellants present separate arguments for independent claims 1, 10
and 26 as well as separate arguments for dependent claims 2, 6, 7, 8, 12, 16
and 27. Appellants’ arguments regarding these claims are addressed below
with the remaining claims standing or falling with these claims. See 37
C.F.R. § 41.37(c)(1)(vii).

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1. Claims 1, 2, 10, 26 and 27 are Obvious in View of Nosler and
Carter and in view of Nosler and Sliney

Independent Claims 1, 10 and 26 each require “a dense core1” to be
bonded to the sidewalls of a rear cavity and a tip “at least partially inserted”
into a front cavity. Dependent claims 2 and 27 further require a
“metallurgical” bond between the dense core and the cavity’s sidewalls. The
Examiner rejected these claims under Nosler and Carter and likewise under
Nosler and Sliney (Ans. 4, 6, 8-12). In each rejection, Nosler was relied
upon for teaching all the claimed features except for metallurgical bonding
for which Carter and Sliney were relied upon. The Examiner found that it
would have been obvious to a person of ordinary skill to combine Nosler
with Carter or Sliney (Ans. 4-7).
a. Bonding a Dense Core to a Rear Cavity
Appellants contend that the references do not teach bonding a dense
core to the sidewalls of a rear cavity (App. Br. 11-14, Reply Br. 4-5).
Appellants specifically contend that Nosler does not teach bonding because
Nosler “relies upon tapered sidewalls to retain the core” in its rear cavity
(App. Br. 11). However, Appellants’ Specification states that examples of
bonding include “reverse tapers” as well as “crimps” and Nosler’s tapered
rear cavity is specifically “crimped” to secure the lead slug in place (Spec.
¶ [0016]; Nosler 2:28-34 and Fig. 1). Also, Nosler teaches that properly
securing the lead slug in the rear compartment is important to prevent the
slug “from expanding too much or breaking through, as it is driven forward

1 Appellants’ Specification states that the bullet’s dense core “is typically
formed from lead but may be formed from lead compounds or other heavy
metals” (Spec. ¶ [0014]).
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upon explosion of the charge behind it” and hence the bullet “maintains a
unitary structure throughout its use” (Nosler 3:19-27).
Carter and Sliney disclose, respectively, lead melting and pressure
bonding to secure a core to an outer jacket (Carter 3:5-9; Sliney 2:36-46).
Appellants argue that the interaction of the core with the walls of the front
compartment of a jacketed bullet (as in the case of Carter) or along the walls
of a cylindrical jacket (as in the case of Sliney) are “significantly different
from the interaction of the dense core with the walls of the rear
compartment” (italics added) (App. Br. 11, 14; see also Reply Br. 4-6).
However, Appellants have not provided any evidence to show that the
interaction of a bond in a front jacket compartment or along a jacket cylinder
is “significantly different” from the interaction of a bond in a rear jacket
compartment. Consequently, we decline to credit Appellants’ unsupported
attorney argument regarding a difference in bonding due to a difference in
location. See Estee Lauder, Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed.
Cir. 1997).
Regarding dependent claims 2 and 27, Appellants’ Specification states
that an example of metallurgical bonding is bringing a dense core “to a
molten state to bond it to” the sidewalls (Spec. ¶ [0016]). Carter likewise
teaches melting the lead core to “cause it to bond to the inner surface of the
jacket” and Sliney teaches forming “a good metallurgical bond between the
core and the shell” (Carter 3:5-7; Sliney 2:42-43).
In view of the above, we find that Nosler teaches bonding a dense
core in a rear compartment of a bullet’s jacket and the benefits thereof. We
also find that Carter and Sliney both teach a metallurgical bond between a
core and a jacket’s sidewalls.
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b. A Tip “at least partially inserted” in the Front Cavity

Independent claims 1, 10 and 26 require a tip “at least partially
inserted” in the front cavity. The Examiner relies on Nosler which discloses
a front slug filling the front cavity and forming the tip of the bullet (Ans. 4,
6; Nosler 2:29-32 and Fig. 1). Appellants contend that Nosler’s front slug
fills “the entirety” of the front cavity and does not disclose a tip that is
“partially inserted” into the front cavity as claimed (Reply Br. 3). Claims 1,
10 and 26 do not require only a “partially inserted” tip; instead, they require
a tip that is “at least” partially inserted in the front cavity. Nosler’s front
slug forms the tip of the bullet and is “at least partially inserted.”
Accordingly, we are not persuaded by Appellants’ contention.
Based on the record presented, we hold that Appellants’ claims 1, 2,
10, 26 and 27 are directed to a combination of known elements (a jacket
with front and rear cavities containing lead slugs therein and various
methods of bonding) for their known purpose (bonding the slug to a rear
cavity) to achieve a predictable result (an assembled bullet). We affirm the
Examiner’s rejection of claims 1, 2, 10, 26 and 27 in view of Nosler and
Carter as well as in view of Nosler and Sliney.

2. The Combination of Nosler, Carter and Pi Do Not Teach a
Front Cavity Lacking Lead (Claim 6) but Do Teach a
Polypropylene Tip (Claim 7)

Dependent claims 6 and 7 both depend directly from claim 1. Claim 6
requires the front cavity to “not contain lead” while claim 7 requires the tip
to include “substantially polycarbonate or polypropylene material.” The
Examiner relies on Pi as teaching these limitations (Ans. 5-6, 9-10). Pi
discloses a “plastic sphere formed of polypropylene plastic” that is received
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in a cavity formed in the lead core contained in the jacket (Pi 2:33-39, Fig.
1). Appellants do not dispute the material of Pi’s plastic tip (claim 7) but
Appellants argue that Pi’s front cavity is filled with a lead core “in addition
to” the plastic ball (App. Br. 12-13, Reply Br. 5-6).
Claim 6 requires that the “front cavity does not contain lead” and
parent claim 1 defines the front cavity with respect to the jacket. Pi’s
polypropylene plastic tip is secured in a cavity in the lead material contained
by the jacket (Pi 2:38-39). Pi does not disclose or teach a jacket’s front
cavity that “does not contain lead.” Nosler and Carter also only disclose
lead in the front cavity. Accordingly, we reverse the Examiner’s rejection of
claim 6 based on the combination of Nosler, Carter and Pi but we affirm the
Examiner’s rejection of claim 7 as Pi discloses a tip that includes
polypropylene material.

3. Dependent Claims 12 and 16 are Obvious in View of Nosler
and Carter and in view of Nosler and Sliney

Claims 12 and 16 depend directly from claims 10 and 1 respectively.
Claims 12 and 16 require a metal jacket that “is softened adjacent said rear
cavity.” The Examiner finds that Nosler discloses this limitation (Ans. 5-6).
Appellants contend that Nosler “does not disclose a means for softening the
jacket adjacent the rear cavity, but rather teaches a means for hardening the
jacket” in an area adjacent this cavity (Reply. Br. 3).
Appellants’ Specification states that jacket softening can typically be
accomplished “through annealing” (Spec. ¶ [0016]). Carter also teaches
“annealing” the jacket around the lead core for softening purposes (Carter
1:60-64). Both Appellant and Carter describe this annealing process as
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occurring when the lead core is heated to bond the core to the cavity’s
sidewalls (Carter 1:60-64; Spec. ¶ [0016]). Nosler discloses a jacket that
“varies in hardness throughout its length” and specifically that the jacket
portion surrounding the rear lead slug is “relatively soft” (Nosler 2:35-46).
Further, Nosler and Carter both teach that a variance in jacket hardness is
desirable as it aids in the manufacture and operation of the bullet (Nosler
2:17-50, 3:3-27; Carter 1:57-66). Sliney also teaches heating the jacket and
the core “to an elevated temperature” (Sliney 2:56-58).
KSR provides instruction that if a person of ordinary skill in the art
would recognize that a known metal softening technique (annealing) would
improve similar devices in the same way, “using the technique is obvious
unless its actual application is beyond his or her skill.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007). We do not find annealing a jacket
to be beyond the skill of one skilled in the metallurgical art. Based on the
record presented, we hold that Appellants’ dependent claims 12 and 16 are
directed to the use of a known technique (metal forming and annealing) to
improve a similar device (a jacketed bullet) in a similar way (softening of
metal). We affirm the Examiner’s rejection of claims 12 and 16 in view of
Nosler and Carter as well as in view of Nosler and Sliney.

4. Claim 8 is Obvious in view of Nosler, Carter and Hickerson
Claim 8 depends directly from claim 1. Claim 8 further requires a
“closure disc” joined to the jacket “to enclose said dense core within said
rear cavity.” The Examiner finds that Hickerson teaches a “closure disc 29”
stating that it would have been obvious to apply the teachings of Hickerson
to the combination of Nosler and Carter (Ans. 8). Appellants acknowledge
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that Hickerson discloses a disc that closes the rear end of the projectile, but
Appellants contend that Hickerson’s disc “does not enclose a dense core
within a rear cavity” as claimed (Reply Br. 8).
Nosler teaches the benefit of securing a dense core in the rear cavity
of a projectile and in view of this, one skilled in the art would have had
reason to employ Hickerson’s disk to close the rear payload cavity (Nosler
3:19-27; Hickerson 14:12-13, 15:60-61). Accordingly, we hold that
Appellants’ dependent claim 8 is directed to a combination of known
elements (a jacket, a dense core and a closure disk) for their known purpose
(enclosing the core within the jacket’s rear cavity) to achieve a predictable
result (an assembled bullet with a closed rear cavity). We affirm the
Examiner’s rejection of claim 8 in view of Nosler, Carter and Hickerson.

5. Hickerson Does Not Anticipate the Claimed Invention
Each of the claims discussed above (other than claim 7) were also
rejected by the Examiner as being anticipated by Hickerson. “A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987). Appellants contend that Hickerson does not teach the claimed dense
core bonded in a rear cavity (App. Br. 15, Reply Br. 7). Hickerson does not
itself expressly or inherently describe a “dense core” in the rear cavity as this
term is used in the Specification2 (Hickerson 11:36-39; Spec. ¶ [0014]).
Because each and every claim element is not found in a single prior art

2 Examples of the contents of Hickerson’s rear payload cavity include
explosives and instrumentation with no mention of lead, lead compounds or
other heavy metals in this rear cavity (Hickerson 11:36-39; Spec. ¶ [0014]).
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reference, we reverse the Examiner’s anticipation rejection in view of
Hickerson.

NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Claim 6 is rejected under 35 U.S.C. § 103(a) as being obvious in view
of Nosler, Carter and Hickerson.
Claim 6 is directly dependent on claim 1 (which has been rejected
under 35 U.S.C. § 103(a) as being obvious in view of Nosler and Carter).
Claim 6 further requires that “said front cavity does not contain lead.”
Hickerson teaches a projectile where the front cavity requires a “high-
strength material, with good high temperature tensile strength and fracture
toughness” (Hickerson 13:21-24). Hickerson expressly states that lead “is
too soft and weak for this application” and is not suitable in the front cavity
(Hickerson 13:30-31). Hickerson discloses other materials in lieu of lead for
insertion into the front cavity (Hickerson 13:25-30). In view of Hickerson, it
would have been obvious for a person of ordinary skill in the art at the time
of the invention to replace the front lead slug of Nosler and Carter with non-
lead material because lead can be too soft and weak and also because the
modification is no more than “the simple substitution of one known element
for another.” KSR, 550 U.S. at 417.

E. CONCLUSIONS OF LAW
1. The combination of Nosler and Carter and the combination of Nosler
and Sliney teach bonding between sidewalls and a dense core.
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2. Pi’s front jacket cavity contains a polypropylene tip but does not lack
lead.
3. Hickerson discloses a rear closure but does not disclose a dense core
in a rear cavity.
4. Nosler teaches a tip at least partially inserted in the front cavity.
5. Nosler and Carter teach metal softening.

F. SUMMARY OF DECISION
1. The rejection of claims 1-3, 5, 9-12, 14-16, 18-20, 26-28 and 30-31
under 35 U.S.C. § 103(a) as being obvious in view of Nosler and Carter is
affirmed.
2. The rejection of claim 6 under 35 U.S.C. § 103(a) as being obvious in
view of Nosler, Carter and Pi is reversed.
3. The rejection of claim 7 under 35 U.S.C. § 103(a) as being obvious in
view of Nosler, Carter and Pi is affirmed.
4. The rejection of claims 1-3, 5, 9-12, 14-16, 18-20, 26-28 and 30-31
under 35 U.S.C. § 103(a) as being obvious in view of Nosler and Sliney is
affirmed.
5. The rejection of claims 1-3, 6, 8-12, 14-16, 18-20, 26-28 and 30-31
under 35 U.S.C. § 102(b) as being anticipated by Hickerson is reversed.
6. The rejection of claim 8 under 35 U.S.C. § 103(a) as being obvious in
view of Nosler, Carter and Hickerson is affirmed.

We have also entered a NEW GROUND OF REJECTION against
dependent claim 6 under 37 C.F.R § 41.50(b). Claim 6 is obvious under 35
U.S.C. § 103(a) in view of Nosler, Carter and Hickerson.
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Regarding the affirmed rejections that have not been denominated as a
new ground of rejection, 37 C.F.R. §41.52(a)(1) provides “Appellants may
file a single request for rehearing within two months from the date of the
original decision of the Board.”
37 C.F.R § 41.50(b) provides that 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 the Appellants, 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 examiner, in which
event the proceeding will be remanded to the examiner…; or
(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same record…

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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No time period for taking any subsequent action in connection with
the appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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