Ex parte Jehle

Board of Patent Appeals and Interferences

Sep 29, 1997

08018125 (B.P.A.I. Sep. 29, 1997)

Application for patent filed February 16, 1993. 1
Claim 4 has been amended subsequent to final rejection.2
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT E. JEHLE
____________
Appeal No. 95-2533
Application No. 08/018,1251
____________
ON BRIEF
____________
Before SCHAFER, Vice Chief Administrative Patent Judge, and
MEISTER and FRANKFORT, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Robert E. Jehle (the appellant) appeals from the final
rejection of claims 1, 2, 4, 12, 15 and 16. Claims 6-9 and 13,2
the only other claims remaining in the application, stand
allowed. We affirm.
By way of background, the instant application was the
subject of a prior appeal wherein this merits panel of the Board
Appeal No. 95-2533
Application No. 08/018,125
2
reversed the examiner’s rejections of claims 1-9 and 12-15 under
35 U.S.C. § 103 and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), entered new rejections of claims
1-5 and 12-15 under 35 U.S.C. § 103 (see our decision dated
November 15, 1995 (Paper No. 18)). Subsequent to that decision
(1) claims 1, 4, 12 and 13 have been amended, (2) claims 3, 5 and
14 have been canceled, (3)claims 6-9 and 13 have been allowed and
(4) claim 16 has been added.
The appellant’s invention pertains to a launcher having a
barrel bore through which a projectile is displaced by propelling
gas forces. Of particular importance is the provision of an
obturator which is formed of a flexible barrier containing a body
of fluid. The obturator is positioned between the projectile the
propelling gas in such a manner that forces generated by the
propelling gas cause the flexible barrier to deform into sliding
contact with the barrel during the launch of the projectile for
the purpose of providing a seal which prevents leakage of the
propelling gas past the projectile. Independent claim 1 is
further illustrative of the appealed subject matter and reads as
follows:
Appeal No. 95-2533
Application No. 08/018,125
Copies of translations of the French and Swiss patents3
have previously been provided to the appellant (see Paper No.
18).
3
1. In combination with a launcher having a barrel bore
through which a projectile is displaced by propellant forces,
obturator means disposed within the barrel bore for sealing gas
passages between the barrel bore and the projectile during
launch, said obturator means including interfacing means for
transmitting the propellant forces to the projectile, a body of
shock-absorbing fluid within the barrel bore and flexible barrier
means having a non-porous wall portion isolating the body of
shock-absorbing fluid and undergoing gas sealing deformation into
contact with the barrel bore in response to transfer of the
propellant forces by said interfacing means through the body of
shock-absorbing fluid during said launch.
The references relied on by the examiner are:3
Ashton 634,101 Oct. 3, 1899
Lainé 580,461 Nov. 7, 1924
(French Patent)
Talobre 349,902 Dec. 15, 1960
(Swiss Patent)
Claims 1, 2, 4, 12 and 15 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Ashton in view of the French
patent.
Claims 1, 2, 12, 15 and 16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Ashton in view of the Swiss
patent.
Appeal No. 95-2533
Application No. 08/018,125
4
The examiner’s rejections are explained on pages 2-4 of the
answer. Rather than reiterate the arguments of the appellant and
examiner in support of their respective positions, reference is
made to pages 4-6 of the “new” or substitute brief, pages 1-4 of
the reply brief and pages 4-6 of the answer for the details
thereof.
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions advanced
by the appellant in the substitute brief and reply brief and by
the examiner in the answer. As a consequence of this review, we
will sustain both of the above-noted rejections.
According to the examiner:
Ashton discloses a launcher having a barrel through
which a projectile is displaced, a propellant charge
(lines 44 and 45), an obturator A, a rear pusher
plate C and a front pusher plate B. The obturator A
includes a flexible barrier means containing a body of fluent
material (line 30) which is pressed against the wall of the
barrel when the charge is detonated so as to (1) form an
"efficient gas-check" (line 41) and
(2) absorb shock (lines 22-24). French patent
discloses an obturator having a flexible barrier means
(B',c) filled with a fluid (liquid (a)) for the purpose
of providing an obturator which conforms closely to the
shape of a barrel "while at the same time providing a
perfect obturation" (see translation, lines 1 and 2 of
page 60 [sic, 6]). It would have been obvious to one
Appeal No. 95-2533
Application No. 08/018,125
5
of ordinary skill in this art to substitute in Ashton
for his obturator A the liquid-filled obturator of
French patent in order to achieve the French patent's
expressly stated advantage of providing an obturator
which closely conforms to the barrel while at the same
time providing "a perfect obturation."
We find ourselves in agreement with the above-noted findings and
conclusion of the examiner and adopt them as our own.
The appellant argues that the flexible barrier of the French
patent is made of felt-covered white wool and thus cannot be
considered to be “non-porous” with respect to the fluid contained
therein as required by the claims on appeal. In support of this
position the reply brief on page 2 states that:
The French patent never describes or refers to the wad
(B’) as being “non-porous” with respect to the moldable
core (a). The Examiner’s use of the term “non-porous”
to characterize the wad (B’) is therefore not
substantiated, and is hereby challenged.
We do not find this contention to be persuasive. Initially,
we observe that the French patent does not simply disclose felt-
covered white wool as a material for the flexible barrier as the
appellant would apparently have us believe. Instead, the French
patent discloses that the flexible barrier may be “made of felt-
covered white wool that has been greased around its periphery”
(see the sentence bridging pages 4 and 5 of the translation;
emphasis ours). Moreover, while independent claims 1 and 12 each
Appeal No. 95-2533
Application No. 08/018,125
6
set forth a “non-porous wall portion” (emphasis ours), it is well
settled that the claims in a patent application are to be given
their broadest reasonable interpretation during prosecution of a
patent application (In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989)) and limitations from a pending
application’s specification will not be read into the claims
(Sjolund v. Musland, 847 F.2d 1573, 1581-82, 6 USPQ2d 2020, 2027
(Fed. Cir. 1988)). Turning to the appellant’s specification, it
is stated therein that the flexible barrier is “in the form of a
thin flexible enclosure wall 40 made of a material such as rubber
that is non-porous with respect to the fluid 38” (page 5, lines
14-16). Accordingly, consistent with the appellant’s
specification, one of ordinary skill in this art would interpret
“non-porous” as used in the claims to mean -- non-porous with
respect to shock-absorbing fluid contained within the flexible
barrier --.
Inasmuch as the French patent discloses that the fluid
contained within the flexible barrier B’ is “an appropriate
mixture of wax and grease” (translation, page 4, line 23) or “cup
grease” (translation, page 3, line 9), there is a sound basis to
conclude that the grease-covered wall portion of the felt-covered
white wool wad B’ is non-porous with respect to the fluid
Appeal No. 95-2533
Application No. 08/018,125
7
contained therein. This is particularly the case since the
French patent states that during firing (when the wad is
subjected to propellant forces) the fluid wad is “non-
compressible or nearly so, [and] is only capable of spreading
without shrinking in volume” (translation, page 6, lines 3 and 4;
emphasis ours).
As to the appellant’s “challenge” of the examiner’s position
that the wall portion of the wad or obturator B’ of the French
patent can be considered to be “non-porous,” where, as here,
there is a sound basis to believe that the critical function for
establishing novelty in the claimed subject matter may, in fact,
be an inherent characteristic of the prior art device, it is
incumbent upon an appellant to prove that the prior art device
does not in fact possess the characteristics relied on. See,
e.g., In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990); In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 597
(CCPA 1980); In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430,
433 (CCPA 1977); In re Glass, 474 F.2d 1015, 1019, 176 USPQ 529,
532 (CCPA 1973); and In re Ludtke, 441 F.2d 660, 664, 169 USPQ
563, 566-67 (CCPA 1971).
Appeal No. 95-2533
Application No. 08/018,125
Counsel’s arguments in the brief cannot take the place of4
evidence. In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196
(Fed. Cir. 1984), In re Payne, 606 F.2d 303, 315, 203 USPQ 245,
256 (CCPA 1979) and In re Pearson, 494 F.2d 1399, 1405, 181 USPQ
641, 646 (CCPA 1974).
8
It is also the appellant’s position that “the type of shock-
absorbing material disclosed in the French patent does not enable
more effective obturation in response to and during transfer of
gas propellant forces” (see substitute brief, page 5). There is,
however, no evidence of record to support such a contention. 4
Contrary to the appellant’s bald assertion that the flexible
barrier and fluid contained therein (i.e., wad B’) of the French
patent does “not enable more effective obturation,” the French
patent, after noting the problems of the prior art resulting from
propellant gases rushing between a wad and a forcing cone during
firing (see the paragraph bridging pages 1 and 2 of the
translation), states that it is an object of the invention to
provide an obturator wad which is “capable of ensuring its
expansion at the rear, so as to make it conform progressively to
the shape of the cone” (translation, page 2, lines 19 and 20).
Thereafter, the French patent goes on to state that
as soon as the wad exits slightly from the case, it
begins to swell increasingly towards the rear as it
exits the case, with the result being that it ends up
conforming closely to the shape of the forcing cone
Appeal No. 95-2533
Application No. 08/018,125
9
(3), while at the same time providing a perfect
obturation inside of said cone. [See translation, line
22 of page 5 through line 1 of page 6; emphasis ours.]
The appellant also makes much of the fact that the
obturation in Ashton occurs in a cylindrical bore whereas the
obturation in the French patent occurs in a forcing cone. We
observe, however, the test for obviousness is what the combined
teachings of the references would have suggested to one of
ordinary skill in the art. In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, in applying
this test, all of the features of the secondary reference need
not be bodily incorporated into the primary reference (Keller,
642 F.2d at 425, 208 USPQ at 881) and the artisan is not
compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent
judgment (Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881,
889, 221 USPQ 1025, 1032 (Fed. Cir. 1984). Here, we share the
examiner’s view that a combined consideration of Ashton and the
French patent would have fairly suggested to the artisan to
substitute in Ashton for his obturator the liquid-filled
obturator of the French patent in order to achieve the French
patent’s expressly stated advantage of providing an obturator
Appeal No. 95-2533
Application No. 08/018,125
10
which closely conforms to the barrel while at the same time
providing “a perfect obturation.”
The appellant additionally argues that the above-noted
substitution of obturators would destroy Ashton’s invention
inasmuch as Ashton’s disclosed obturator is formed of a flexible
barrier of textile or other material which encloses granulated
cork. However, the substitution of a more effective obturator
than that disclosed by Ashton would enhance, not destroy,
Ashton’s invention.
In view of the foregoing, we will sustain the rejection of
claims 1, 2, 4, 12 and 15 under 35 U.S.C. § 103 based on the
combined teachings of Ashton and the French patent.
Turning now to the rejection of claims 1, 2, 12, 15 and 16
as being unpatentable over Ashton in view of the Swiss patent,
the examiner has relied on the teachings of the Swiss patent for
a suggestion to effect a “sealing expansion” of a flexible wall
of an obturator by means of a shock-absorbing fluid (independent
claims 1 and 12) and shock-absorbing gas (independent claim 16).
The appellant, however, contends that in the Swiss patent it is
the tapered wall portion (2) of the obturator, and “not the
cushioning air” that effects the sealing expansion of the
Appeal No. 95-2533
Application No. 08/018,125
11
flexible wall of the obturator disclosed therein (see substitute
brief, page 6).
We are unpersuaded by the appellant’s contention. The Swiss
patent discloses a wad or obturator wherein air is compressed
within a barrier means during the absorption of the shock of
recoil when a projectile is fired (see pages 1 and 3). This wad
or obturator is described as being formed of
two pieces (1 and 2), each in the shape of a hollow
cylinder provided with a single bottom, fitting one
inside the other. The exterior wall of the exterior
piece (1) is cylindrical and has ring-shaped sealing
flanges (3), whereas its interior wall is slightly
truncated, and flared towards its opening. The
exterior wall of the interior piece (2) has the same
conicity that the interior wall of the piece (1) has
and the dimensions of the two pieces are such that when
they are set inside one another, the bottom of the
interior piece is flush with the bottom of the exterior
piece and the edge of the interior piece is at a
certain distance from the bottom of the exterior piece
(figure 2). [See the paragraph bridging pages 2 and 3
of the translation.]
After noting that the two pieces are made of a material
having flexibility and elasticity, the Swiss patent does
thereafter state that the exterior piece becomes distended by the
interaction between the tapering surfaces during firing of the
projectile in order to effect a seal between the wad or obturator
and the barrel of a gun. However, it is further stated in the
Swiss patent that “a cushion of air is trapped between the two
Appeal No. 95-2533
Application No. 08/018,125
12
pieces and plays the role of the recoil reducer” (see
translation, page 3, lines 22-24). Particularly in view of the
fact that the two pieces are disclosed as being made of a
material having flexibility and elasticity, we are of the opinion
that the shock-absorbing compressed air would, at least to some
degree, assist in the distention of the exterior piece when the
gas seal between the wad or obturator and the barrel of the gun
is effected.
From our perspective, it would have been obvious to one
having ordinary skill in this art to substitute in Ashton for his
means (A,B,C) for achieving shock absorption and a sealing of
propellant gases, the analogous shock absorption and means for
sealing propellant gases taught by the Swiss patent in Figs. 2
and 3. The artisan would have been motivated to make such a
modification in order to achieve the Swiss patent’s expressly
stated advantage of “ensuring a perfect seal which allows maximum
use of the gas pressure” (see translation, page 1). This being
the case, we will sustain the rejection of 1, 2, 12, 15 and 16
under 35 U.S.C. § 103 based on the combined teachings of Ashton
and the Swiss patent.
In summary:
Appeal No. 95-2533
Application No. 08/018,125
13
The rejection of 1, 2, 4, 12 and 15 under 35 U.S.C. § 103
based on the combined teachings of Ashton and the French patent
is affirmed.
The rejection of claims 1, 2, 12, 15 and 16 under 35 U.S.C.
§ 103 based on the combined teachings of Ashton and the Swiss
patent is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
RICHARD E. SCHAFER, Vice Chief )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 95-2533
Application No. 08/018,125
14
Office Of Counsel, Code 004
Naval Surface Warfare Center
Carderock Division
9500 MacArthur Boulevard
West Bethesda, MD 20817-5700
JMM/jrg
APPEAL NO. 95-2533 - JUDGE MEISTER
APPLICATION NO. 08/018,125
APJ MEISTER

APJ FRANKFORT
Vice Chief APJ SCHAFER
DECISION: AFFIRMED
Typed By: Jenine Gillis
DRAFT TYPED: 11 Aug 97
FINAL TYPED: 29 Sep 97