Ex Parte Forrester

Board of Patent Appeals and Interferences

Jun 27, 2007

08460218 (B.P.A.I. Jun. 27, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID J. FORRESTER
____________

Appeal 2007-2368
Application 08/460,218
Technology Center 3600
____________

Decided: June 27, 2007
____________

Before HUBERT C. LORIN, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David J. Forrester (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 16-18, 29-33, and 35-40, the only
pending claims. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).
Appeal 2007-2368
Application 08/460,218

This is a second appeal on this application. The first appeal (Appeal
No. 1997-1405) resulted in a Decision on Appeal (mailed November 8,
2000) by a panel of Administrative Patent Judges Calvert, Frankfort, and
Bahr affirming the rejection of claims 16, 17, 29, 31-33, 36, and 37 under
35 U.S.C. § 102(b) as anticipated by Careaga (US 1,405,276) and the
rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over Maxim
(DE 36,248) in view of Litman (US 4,030,421), reversing the rejection of
claims 18 and 38 under 35 U.S.C. § 102(b) as anticipated by Careaga and the
rejections under 35 U.S.C. § 103(a) of claims 18, 29-32, and 35 as
unpatentable over Maxim in view of Litman and claims 17, 33, and 36-38 as
unpatentable over Maxim in view of Litman and Szemerey (US 889,644),
entering new rejections of claims 17, 36, and 37 under 35 U.S.C. § 102(b) as
anticipated by Maxim and claims 29-33 under 35 U.S.C. § 103(a) as
unpatentable over Litman pursuant to 37 C.F.R. § 1.196(b) (2000), and
remanding to the Examiner for consideration of an enablement issue.
On January 3, 2001, Appellant filed a Request for Rehearing of the
portions of the Decision on Appeal affirming the rejections of claims 16, 17,
29, 31-33, 36, and 37 and entering new rejections pursuant to 37 C.F.R.
§ 1.196(b) (2000). In a Decision on Request for Rehearing (mailed February
14, 2001), the panel of Judges Calvert, Frankfort,1 and Bahr denied the
Request for Rehearing insofar as it sought any reversal or modification of
the Decision on Appeal. The application was remanded to the Examiner for
consideration of the enablement issue raised in the Decision on Appeal
(Decision on Req. for Reh’g 6). The Decision on Request for Rehearing

1 Judges Calvert and Frankfort have subsequently retired.
2
Appeal 2007-2368
Application 08/460,218

indicated on pages 6 and 7 that it was not considered final for the purposes
of judicial review, in view of the remand.
Subsequent to the first appeal, on October 31, 2002, Appellant filed an
amendment changing the dependency of claims 17, 30, 31, and 37 to claims
18, 35, 35, and 38, respectively, thereby obviating the affirmed prior art
rejections and the new prior art rejections pursuant to 37 C.F.R. § 1.196(b)
(2000) with respect to claims 17, 30-33, and 37 and placing claims 35 and
40 in independent form. On March 12, 2003, the Examiner issued a Final
Rejection rejecting claims 16-18, 29-33, and 35-40 under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not described in the
specification in such a way as to enable one skilled in the art to which it
pertains, or with which it is most nearly connected, to make and/or use the
invention (Final Rejection 2). The Final Rejection also maintained the
affirmed and new prior art rejections of claims 16, 29, and 36, pursuant to
the Decision on Appeal and Decision on Request for Rehearing in Appeal
No. 1997-1405 (Final Rejection 3).
Appellant seeks review of the Examiner’s rejection of claims 16-18,
29-33, and 35-40 under 35 U.S.C. § 112, first paragraph (Appeal Br. 8-11).
Appellant also seeks review of the maintained prior art rejections (Appeal
Br. 11-21). Claims 16, 29, and 36 have not been amended subsequent to the
Decision on Request for Rehearing in Appeal No. 1997-1405. Since the facts
underlying the Decision on Request for Rehearing have not changed, the
request to review the maintained prior art rejections amounts to a second
request for rehearing.
37 C.F.R. § 1.197(b) (2001), the provisions of which are now set forth
in 37 C.F.R. § 41.52(a)(1) (2006), afforded Appellant the opportunity to file
3
Appeal 2007-2368
Application 08/460,218

a single request for rehearing of the Decision on Appeal in Appeal No.
1997-1405 with respect to the affirmed rejections and new rejections
pursuant to 37 C.F.R. § 1.196(b) (2000). Appellant filed that request on
January 3, 2001 and received a decision on that request on February 14,
2001. Thus, Appellant is not entitled to another request for rehearing with
respect to the affirmed and new prior art rejections pursuant to the Decision
on Appeal and Decision on Request for Rehearing in Appeal No. 1997-1405.
Accordingly, we will not address the issues directed to prior art rejections
raised on pages 11-21 of the Appeal Brief. The only issue properly before
us in the present appeal is the propriety of the Examiner’s enablement
rejection of claims 16-18, 29-33, and 35-40 under 35 U.S.C. § 112, first
paragraph.
Appellant’s claimed invention relates to firearms, ballistics, and
ammunition and has as its objective allowing the user to vary the nature of
the projectile and its velocity without changing ammunition or weapons
(Specification 1:3-4 and 18-21). Claims 16, 35, 36, and 40 are illustrative of
the claimed invention and read as follows:
16. A cartridge apparatus comprising a cartridge
having a casing with a primer end and a projectile
end, and having a projectile with axially divisible
segments and retainer rings for surrounding the
segments for holding the segments together.
35. A cartridge apparatus comprising a cartridge
having a casing with a primer end and a projectile
end, and having a projectile with a front portion
and a trailing portion, a deployable air brake
positioned on the trailing portion and held inward
until the projectile is released from a barrel, further
comprising the projectile having segments held
together by friable bands and a shredder provided
4
Appeal 2007-2368
Application 08/460,218

on the barrel wherein the bands are breakable by
the shredder for releasing the segments for
independent movement from a muzzle end of the
barrel.
36. A cartridge apparatus comprising a cartridge
having a casing with a primer end and a projectile
end, and having a projectile with axially divisible
segments, wherein the segments are hollow and
have contents held within the segments, said
segments being separable when released from a
barrel, and wherein the contents of the segments
are released when the segments separate after
release from the barrel.
40. A cartridge apparatus comprising a cartridge
having a casing with a primer end and a projectile
end, and having a projectile with axially divisible
segments, wherein the segments are hollow and
have contents held within the segments, said
segments being separable when released from a
barrel, and wherein the contents of the segments
are released when the segments separate after
release from the barrel, further comprising friable
bands around the projectile, wherein the segments
are held together by the friable bands which are
breakable by the shredder for releasing the
segments for independent movement from the
muzzle end.

OPINION
Insofar as the enablement requirement is concerned, the dispositive
issue is whether Appellant’s disclosure, considering the level of ordinary
skill in the art as of the date of Appellant’s application, would have enabled
a person of such skill to make and use Appellant’s invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561,
5
Appeal 2007-2368
Application 08/460,218

563-64 (CCPA 1982). In calling into question the enablement of
Appellant’s disclosure, the examiner has the initial burden of advancing
acceptable reasoning why a person of ordinary skill in the art could not have
practiced the invention without undue experimentation. Id.
[A] specification disclosure which contains a
teaching of the manner and process of making and
using the invention in terms which correspond in
scope to those used in describing and defining the
subject matter sought to be patented must be taken
as in compliance with the enabling requirement of
the first paragraph of § 112 unless there is reason
to doubt the objective truth of the statements
contained therein which must be relied on for
enabling support.
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971)
(emphasis in original).
The Examiner (Final Rejection 2) articulates the basis of the
enablement rejection as follows:
Specifically, it is not clear how the claimed
segments are constructed, separated, or how
contents within the segments are released. The
drawings, especially Figures 25 and 26 disclose the
segments with an inner wall, so it is not clear how
the contents would be released, even after the
segments are separated. Furthermore, the function
of the retainer rings in the separation of segments
and the release of contents from the segments is
unclear. At page 16, lines 16-17, Applicant
discloses that retainer rings 121 and 123 hold
segments 119 together, while at page 17, lines 12-
15, Applicant discloses that shredding of ring 123
releases the segments and then shredding of ring
121 releases the shot and other contents from the
segments. In view of these apparently
6
Appeal 2007-2368
Application 08/460,218

contradictory disclosures and the structure shown
in the drawings, it is not clear how the shredding
ring 123 would release the segments nor how
shredding ring 121 will release the contents.
The specific teachings in Appellant’s Specification directed to the
operation and function of the retainer rings 121, 123, 133, and 135 and the
shredder are as follows:
1. Appellant’s cartridge 111 has a shell casing 113 with a primer end 115
and has a projectile 117 made of four segments 119 held together by
retainer rings 121 and 123 (Specification 16:14-17).
2. As illustrated in Figs. 25 and 26, each segment contains shot 125.
Alternatively, the segments may be solid (Specification 16:18-19).
3. Appellant’s cartridge may include an air brake 131, as illustrated in
the shell cartridge 129 in Figs. 27-29. Fig. 27 shows the air brake 131
contained; Fig. 28 shows the air brake 131 partially deployed; and
Fig. 29 shows the air brake 131 fully deployed. Retainer rings 133
and 135 hold the air brake. (Specification 16:20-25.) The air brake
131 is a layer of plastic over the segments or “pods” (Specification
5:3-5).
4. In one embodiment, the retainer rings 121, 123, 133, and 135
“protrude from the projectile in graduated amounts so that one, two,
three or four rings may be selectively cut” (Specification 17:1-3). In
another embodiment, the shredder “is loosely or tightly held” so as to
slit the rings and be lifted a predetermined amount controlled by
turning the dial 93 (Specification 17:3-6 and 16:4-6).
5. The operation of the shredder in its various settings is described as
follows:
7
Appeal 2007-2368
Application 08/460,218

If the shredder is inserted in the barrel in a
first position, the horizontal retainer ring 135 is
shredded and the air brake 131 is partially
deployed as shown in Figure 28. If the shredder
blades are further positioned in the barrel, both
rings 133 and 135 are shredded and the air brake is
fully deployed. Additional positions of the
shredder first shred ring 123, releasing the
segments and discarding the air brake, and then
shred ring 121, releasing shot and other contents
from the segments.
The segments 119 may be solid or hollow
with shot, liquid, lancets, etc. Upon entering the
shredder, horizontal rings are broken, releasing the
air brake, the segments or the contents, depending
on the setting of the shredder. Thus a single round
can be deployed as a solid projectile, four
submunitions, or various other sub-submunitions,
all at the velocity of choice.
(Specification 17:7-21.)
The above description of Appellant’s cartridge and shredder does
present some inconsistency or confusion as to the function of the retainer
rings 121 and 123 in releasing the segments and contents. It is apparent
from this description, however, that, depending on the setting of the
shredder, retainer ring 135, retainer rings 135 and 133, retainer rings 135,
133, and 123, or retainer rings 135, 133, 123, and 121 may be shredded upon
passage of the cartridge through the barrel and past the shredder.2 It is also
clear from the description that shredding of ring 135 alone partially deploys
the air brake 131 and shredding of rings 135 and 133 fully deploys the air

2 Presumably, it is also contemplated that the shredder may be set so that all
of the retainer rings remain intact upon passage of the cartridge through the
barrel, but this is not pertinent to the enablement issue raised in this appeal.
8
Appeal 2007-2368
Application 08/460,218

brake 131. One of ordinary skill in the art would also readily appreciate
from the description that shredding of all of the retainer rings 135, 133, 123,
and 121 releases the segments and their contents upon emergence of the
projectile from the barrel.
What is not certain is whether Appellant’s Specification also
contemplates that a projectile having four segments, one or more of the
segments having contents therein, can be selectively released either (1) as
four submunitions, namely, the four separated segments, with the contents
retained securely within the segments upon release of the segments from the
barrel, by shredding of retainer rings 135, 133, and 123, or (2) as various
sub-submunitions with the contents of the segments released from the
separated segments, by shredding of retainer rings 135, 133, 123, and 121.
While the inconsistency in Appellant’s Specification addressed by the
Examiner might be sufficient to call into question whether Appellant’s
Specification contains a teaching of the manner and process of making and
using a projectile having such capability to be released either as four
submunitions (the separated segments, with the contents retained in the
segments) or as further sub-submunitions (with the contents of the segments
released from the segments), depending on the setting of the shredder, none
of Appellant’s claims is directed to such an embodiment or requires such
capability. Claim 29 recites neither projectile segments nor contents within
segments. Claims 16, 18, 30-32, and 35 recite separable segments but do not
even mention contents therein. Claims 17, 33, and 36-40 recite contents in
the segments but merely describe the contents as being released as the
segments are released from a barrel or when the segments separate after
release from the barrel and do not require, expressly or implicitly, dual
9
Appeal 2007-2368
Application 08/460,218

capability of, on the one hand, separation of the segments without release of
the contents and, on the other hand, separation of the segments along with
release of the contents.
While Appellant’s Specification does not provide any details as to
how the contents of the segments are released, such details are required to
comply with the enablement requirement of 35 U.S.C. § 112, first paragraph,
only if necessary to enable one of ordinary skill in the art to make and use
Appellant’s invention without undue experimentation. The Examiner has
not advanced any reasoning why a person of ordinary skill in the art of
firearms, ballistics, and ammunition would not have been able, from
techniques known in that field, to make and use a cartridge made up of
separable segments from which contents are released upon separation of the
segments when released from the barrel of a firearm, so as to satisfy the
Examiner’s initial burden in calling into question the sufficiency of
Appellant’s Specification in providing enabling disclosure of the claimed
subject matter. Accordingly, the enablement rejection cannot be sustained.
SUMMARY
The decision of the Examiner to reject claims 16-18, 29-33, and 35-40
under 35 U.S.C. § 112, first paragraph, is reversed. As this decision
concludes proceedings before the Examiner pursuant to the remand in the
Decision on Request for Rehearing in Appeal No. 1997-1405, the decision in
Appeal No. 1997-1405, pursuant to which the rejections of claims 16, 29,
and 36 under 35 U.S.C. § 102(b) as anticipated by Careaga and of claim 16
under 35 U.S.C. § 103(a) as unpatentable over Maxim in view of Litman are
affirmed, claim 36 is rejected under 35 U.S.C. § 102(b) as anticipated by
10
Appeal 2007-2368
Application 08/460,218

Maxim, and claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Litman, is now final for purposes of judicial review.
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) (2006).
REVERSED

vsh:

JAMES C. WRAY
1493 CHAIN BRIDGE ROAD
SUITE 300
MCLEAN, VA 22101

11