Ex Parte Grace et al

Patent Trial and Appeal Board

Dec 28, 2016

12646073 (P.T.A.B. Dec. 28, 2016)

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.
12/646,073 12/23/2009 Nathaniel E. Grace 126255.137364-0001 9483
24335 7590 12/30/2016
WARNER NORCROSS & JUDD LLP
INTELLECTUAL PROPERTY GROUP
900 FIFTH THIRD CENTER
111 LYON STREET, N.W.
GRAND RAPIDS, MI 49503-2487
EXAMINER
KLAYMAN, AMIR ARIE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
patents @ wnj. com
ckleinheksel @ wnj. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHANIEL E. GRACE, LOUIS GRACE JR., and
KYLE B. STOKES
Appeal 2015-002597
Application 12/646,073
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—3, 8—10, 12, 20, and 22 under 35 U.S.C. § 102(e) as
anticipated by McPherson (US 2012/0204851 Al, pub. Aug. 16, 2012),1
claims 4—7, 13, 14, and 16—19 under 35 U.S.C. § 103(a) as unpatentable
over McPherson, and claim 11 under U.S.C. § 103(a) as unpatentable over
McPherson and Sparks (US 5,553,597, iss. Sept. 10, 1996). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Examiner relies on the filing date of McPherson’s provisional
application (No. 61/101,562 filed Sept. 30, 2008) (hereinafter the
“McPherson Provisional”) to antedate Appellants’ date of invention. Ans. 8.
Appeal 2015-002597
Application 12/646,073
THE INVENTION
Appellants’ invention relates to archery bows. Spec. 11. Claim 1,
reproduced below, is the only independent claim and is representative of the
subject matter on appeal.
1. An archery bow comprising:
a riser;
an upper limb and a lower limb joined with the riser;
a first cam rotatably joined with at least one of the upper
and lower limbs;
a bowstring strung at least partially around the first cam and
adapted to travel in a bowstring plane;
a first cable strung at least partially around the first cam;
a cable guard including a riser end and a cable end, the riser
end joined with the riser, the cable guard joined with a cable
guide that guides the first cable, and
flexing means for flexing the cable guard toward the plane
in which the bowstring travels as the bow is drawn, so that the
first cable guided by the cable guide subsequently moves
toward the bowstring plane as the bow is drawn to reduce the
potential for the first cam to lean out of vertical alignment when
the bow is fully drawn.
OPINION
Anticipation of Claims 1—3, 8—10, 12, 20, and 22
by McPherson
Claim 1
The Examiner finds that McPherson discloses all of the elements of
claim 1. Final Action 2—3. In particular, the Examiner interprets the
following limitations of claim 1 as invoking the means-plus-function
provisions of 35 U.S.C. § 112, sixth paragraph. Id.
flexing means for flexing the cable guard toward the plane in
which the bowstring travels as the bow is drawn, so that the
first cable guided by the cable guide subsequently moves
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Application 12/646,073
toward the bowstring plane as the bow is drawn to reduce the
potential for the first cam to lean out of vertical alignment when
the bow is fully drawn.
Claims App. (hereinafter the “flexing means” limitation). The Examiner
finds that McPherson’s cable guard has a riser end, a cable end, and a central
region having a cross section less than a first and a second cross sections.
Final Action 3. Furthermore, the Examiner finds that McPherson discloses a
cable guard formed of flexible materials. Id. (citing H 11, 12, 33, & 34).
The Examiner finds that such cross-sectional dimensions and flexible
materials correspond to Appellants’ flexing means limitation. Id.
Appellants note that McPherson post-dates their date of invention and
traverse the rejection primarily by taking the Examiner to task for citing to
McPherson rather than the McPherson Provisional. Appeal Br. 5—10.
Appellant respectfully submits that it cannot be expected to
reasonably counter a 35 U.S.C. § 102(e) rejection based on
guesses as to what components in the McPherson Publication
match what is in the McPherson Provisional.
Reply Br. 3. However, the only limitation of claim 1 that Appellants
actually place in issue is the flexing means limitation. Appeal Br. 10 (“This
Appeal hinges on the disclosure of a ‘flexural member’ in the McPherson
Provisional').2 Furthermore, Appellants acknowledge that the Examiner’s
Final Action cites to the following language in the McPherson Provisional as
disclosing the flexing means limitation:
In some embodiments, the body po[r]tion 331 comprises a
flexural member supporting the cable engaging portion 334.
The cables 321, 322 can apply bending stresses and axial
compressive stress to the body portion 331.
2 “[T]he McPherson Provisional... is vastly different from the claimed
flexing means.” Appeal Br. 10 (emphasis added).
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Application 12/646,073
Appeal Br. 10, Final Action 7, McPherson Provisional, p. 5,11. 7—9.
In the Examiner’s Answer, the Examiner clarifies that the rejection is
based on the filing date and content of the McPherson Provisional. Ans. 8.
The Examiner observes that the filing date of the McPherson Provisional is
September 30, 2008, which antedates Appellants’ filing date of
December 23, 2009. Id. The Examiner reiterates the position taken in the
Final Action that the McPherson Provisional discloses the flexing means
limitation. Id. (quoting McPherson Provision p. 5, 11. 7—9). The Examiner
directs our attention to Appellants’ Specification to identify “flexible
material” as corresponding structure for the “flexing means.”3 Id. The
Examiner finds that the McPherson Provisional’s disclosed flexural cable
guard inherently possess the flexing means function of claim 1. Id. at 9.
In reply, Appellants criticize the Examiner for citing to Appellants’
own disclosure in the Answer:
Apparently, the Examiner is trying to cite the Appellant’s
very own disclosure as prior art, or alternatively using it as the
hindsight — which he contends he is not using — to conclude
that the cable guard of the McPherson Provisional flexes
toward the cable/strings. This simply is in error. Appellant’s
own Parent Application ’508 cannot now be cited as prior art
because it is not. Further, the Examiner is improperly relying
3 Now, referring to Appellant’s Chronology Table, page 7, under the
“Disclosure” Column, Lines 24—28, Appellant cites the disclosure from his
Parent Application ’508:
“As yet another option, the materials used to construct the
cable guard can be selected and/or combined in a way so that
the resulting cable guard flexes slightly toward the plane in
which the bowstring travels (emphasis on the original) A
Ans. 8.
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Application 12/646,073
on the Appellant’s very own discovery and invention that the
specific selection of materials used to construct the cable guard
can result in the cable guard flexing slightly toward the plane in
which the bowstring travels.
Reply Br. 4. Contrary to Appellants’ argument, we do not view the
Examiner as treating Appellants’ Parent Application as “prior art,” but,
instead, view the Examiner’s citation to Appellants’ Specification as part of
the process of claim construction.
The governing statute for means-plus-function claims provides, in
pertinent part, as follows:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
35 U.S.C. § 112, 6th paragraph (emphasis added). It is well settled that this
paragraph applies in patentability determinations before the PTO. See In re
Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994). Pursuant to
controlling precedent, the Examiner did not err in reviewing and citing to
Appellants’ Specification to identify corresponding structure in the process
of construing the flexing means limitation. Id. at 1195 (“the PTO was
required by statute to look to [Applicant’s] specification and construe the
‘means’ language ... as limited to the corresponding structure disclosed in
the specification”). In view of the foregoing, we reject Appellants’
argument that the Examiner improperly relied on Appellants’ Specification
in construing the flexing means limitation.
The McPherson Provisional discloses a compound archery bow with a
riser 17, a first limb 11, and a second limb 12. McPherson Provisional,
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pp. 2—3, Figs. 1—2. A first rotatable member 13 is disposed at the end of the
first limb 11 and a second rotatable member 14 is disposed at the end of the
second limb 12. Id. The first rotatable member 13 rotates around a first
shaft 15 and the second rotatable member 14 rotates around a second
shaft 16. Id. A bowstring 20 is strung between the first and second
limbs 11,12. Id. at p. 3, Figs. 1—2. Cables 21, 22 engage the engagement
region 80 disposed on the end of a cable guard 230 opposite an end that is
attached to riser 217. Id. at p. 4, Fig. 2. The McPherson Provisional
describes:
As the compound archery bow 210 is drawn from a brace
position (shown in Fig. 1) to a full draw position (shown in
Fig. 2), the lateral displacement of the cross cables can
decrease at the center of their span, and the shafts 15,16 can
move closer to the engagement region 80 between the
cable(s) 21, 22 and the guard 30. For example, the plane 7 can
move closer to the engagement region 80 as the bow is drawn.
Thus, the amount of lateral force applied to the cable(s) 21, 22
by the guard 30 in the direction of bowstring travel is less at full
draw than the amount of lateral force applied in the brace
condition.
Id. at p. 4 (emphasis added). The McPherson Provisional further describes:
as the bow returns from a drawn position to a brace position,
the lateral force placed on the roller guard 23 0 by the cross
cables 221, 222 increases. An increasing lateral force on the
cross cables acts to minimize oscillation by insuring that the
cross cables stay taught throughout arrow launch.
Significantly, lateral force in the roller guard is highest when
the bow is at brace position and lowest when the bow is fully or
nearly fully drawn.
Id. (emphasis added). With respect to the body portion of the cable guard,
the McPherson Provisional discloses that the body portion 331 can be made
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of a metal alloy, a composite material, plastic, or any other suitable material
or combination of materials. Id. at 4—5.
The foregoing passages of the McPherson Provisional provide
informative context for the passage quoted by the Examiner in the Final
Action and Answer; namely, “the body portion 331 comprises a flexural
member supporting the cable engaging portion 334. The cables 321, 322
can apply bending stresses and axial compressive stresses to the body
portion 331.” McPherson Provisional p. 5,11. 7—9, Final Action 7, Ans. 8.
Thus, to summarize its pertinent disclosures, the McPherson
Provisional discloses a compound bow with a cable guard whose body
portion comprises a flexural member composed of suitable material(s).
Cross-cables 21, 22 (or 321, 322) and cable guard 30 exert lateral forces on
each other in such a manner that lateral displacement of the cross cables
decrease at the center of their span. In view of the foregoing, the
Examiner’s findings that: (1) flexible materials disclosed in Appellants’
Specification satisfy the corresponding structure disclosure requirement for
purposes of 35 U.S.C. § 112, 6th paragraph, analysis of the flexing means
limitation, and (2) McPherson’s “flexural member” satisfies the “flexing
means” limitation of claim 1 are supported by a preponderance of the
evidence.
Appellants raise one more argument to support a contention that the
McPherson Provisional does not satisfy the flexing means limitation.
Appellants note that claim 4 appears in McPherson’s printed publication and
contains a limitation regarding proximity to the “bowstring plane.” See
McPherson, claim 4, Appeal Br. 14—15. Appellants argue that such claim 4
was rejected during prosecution as anticipated by Appellants’ U.S.
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Publication 2011/0011385. Id. at 15. Appellants argue that McPherson
“ceased pursuit” of this subject matter and further contend that this
evidences that Appellants antedate McPherson relative to this subject matter
and not vice versa as found by the Examiner. Id. at 15, see also Reply
Br. 5—7 (“surrendered”).
In response, the Examiner posits that there may be other reasons for
McPherson’s prosecution conduct than the unequivocal concession or
surrender speculated by Appellants. Ans. 9. We agree with the Examiner
that McPherson’s amendment of claim 4 is not persuasive evidence that the
McPherson Provisional does not satisfy the “flexing means” limitation of
Appellants’ claim 1.
We have considered Appellants’ other arguments and find them to be
without merit. The Examiner’s findings of fact that McPherson anticipates
claim 1 with disclosures entitled to the filing date of the McPherson
Provisional is supported by a preponderance of the evidence. Accordingly,
we sustain the Examiner’s anticipation rejection of claim 1.
Claims 2, 3, 8—10, 12, 20, and 22
Claims 2, 3, 8—10, 12, 20, and 22 depend, directly or indirectly, from
claim 1. Claims App. Appellants argue that these claims are allowable for
the reasons argued in connection with claim 1 that we do not find
persuasive. Appeal Br. 11—12. Appellants then list limitations from these
claims without raising what amounts to separate arguments for patentability.
See 37 C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a
claim recites will not be considered an argument for the separate
patentability of the claim”); see also In reLovin, 652 F.3d 1349, 1357 (Fed.
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Cir. 2011) (Rule 41.37 requires more than recitation of the claim elements
and a naked assertion that the elements are not found in the prior art).
Accordingly, we sustain the Examiner’s anticipation rejection of
claims 2, 3, 8—10, 12, 20, and 22.
Unpatentability of Claims 4-7, 13, 14, and 16-19
over McPherson
Claim 4^-7
Appellants argue claims 4—7 as a group. Appeal Br. 12—13. We
select claim 4 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner concedes that McPherson is silent regarding the
specific reduced cross section limitations of these claims. Final Action 4.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to form McPherson’s
cable guard with the claimed cross section. Id. According to the Examiner,
a person of ordinary skill in the art would have done this to optimize the
range of flexibility when the bow is fully drawn. Id. at 4—5 (citing In re
Aller, 220 F.2d 454, 456 (CCPA 1955)).
Appellants traverse the Examiner’s rejection by raising the same
arguments that we considered and found unpersuasive with respect to
claim 1, and which we find equally unpersuasive here. Appeal Br. 12—13.
Appellants also argue, in conclusory fashion, that a skilled artisan would
have had no reason to tinker with reduced cross sections, let alone
understand the particular cross sections suitable for flexing a cable guard
toward the bowstring plane. Id. at 13.
Appellants’ argument is not persuasive as it is not responsive to the
Examiner’s rationale under Aller regarding principles of routine
optimization that are considered to fall with the ambit of ordinary skill. See
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also In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (not
inventive to discover optimum or workable ranges by routine
experimentation). Here, Appellants provide no persuasive reason why a
person of ordinary skill in the art would not readily understand that the
cross-sectional profile of an elongated member would affect its flexibility
when exposed to lateral forces, and that increasing or decreasing the cross-
sectional profile to find an optimum dimension would have merely been a
matter of routine optimization.
We are not apprised of error and we sustain the Examiner’s
unpatentability rejection of claims 4—7.
Claims 13, 14, and 16—19
In traversing the rejection of these dependent claims, Appellants do
not dispute that the claim limitations are satisfied by McPherson and argue
merely that the Examiner cited to McPherson instead of the McPherson
Provisional. Appellants argue that McPherson does not qualify as 35 U.S.C.
§ 102(e) art. This argument is without merit. 35 U.S.C. § 119(e) treats a
non-provisional application as though filed on the date of its corresponding
provisional. See 35 U.S.C. § 119(e)(1); In re Giacomini, 612 F.3d 1380,
1383 (Fed. Cir. 2010). An important limitation on this provision is that the
provisional application must provide written description support for the
claimed invention. Id. However, although the Examiner cited to the non­
provisional application in the rejection, Appellants make no persuasive
showing that the McPherson Provisional fails to provide adequate written
description support for these claims.
For example, Appellants’ claim 13 contains a limitation directed to
using a combination of different first and second materials. Claims App.
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The McPherson Provisional provides that “the body portion 331 can also be
made of a metal alloy, composite material, plastic, or any other suitable
material or combination of materials.” McPherson Provisional, p. 4,1. 32 —
p. 5,1. 1 (emphasis added). Appellants’ claim 14 contains a limitation
directed to a first material of aluminum, magnesium, or titanium. Claims
App. The McPherson Provisional discloses that the body portion of the
cable guard can be made of aluminum, magnesium, a metal alloy, or any
other suitable material or combination of materials. McPherson Provisional,
p. 4,1. 30-p. 5,1. 1. We have reviewed the McPherson Provisional and are
persuaded that there is adequate written description support for the subject
matter claimed in claims 16—19 as well.
Accordingly, we are not apprised of error and we sustain the
Examiner’s unpatentability rejection of claims 13, 14, and 16—19.
Unpatentability of Claim 11
over McPherson and Sparks
Claim 11 depends from claim 1 and adds the limitation: “wherein the
cable guide includes a sliding element that slides along a path that is offset at
an angle relative to a longitudinal axis of the cable guard.” Claims App.
Appellants do not argue for the separate patentability of claim 11. Appeal
Br. 14. We sustain the rejection of claim 11.
DECISION
The decision of the Examiner to reject claims 1—3, 8—10, 12, 20,
and 22 as anticipated by McPherson is AFFIRMED.
The decision of the Examiner to reject claims 4—7, 13, 14, and 16—19
as unpatentable over McPherson is AFFIRMED.
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The decision of the Examiner to reject claim 11 as unpatentable over
McPherson and Sparks 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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