Ex Parte Kapeles

Patent Trial and Appeal Board

May 18, 2018

12632582 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/632,582 12/07/2009 John A. Kapeles
75620 7590 05/21/2018
Kane Kessler P.C.
666 Third A venue
New York, NY 10017-4041
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2198/1281 4055
EXAMINER
THROWER,LARRYW
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
05/21/2018 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 JOHN A. KAPELES
Appeal2017-007511
Application 12/632,582
Technology Center 1700
Before JEFFREY B. ROBERTSON, JENNIFER R. GUPTA, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 17, 18, 20-23, and 25-30. 3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this Decision, we refer to the Specification filed December 7, 2009
("Spec."), the Final Office Action dated September 23, 2015 ("Final Act."),
the Appeal Brief filed July 27, 2016 ("Appeal Br."), the Examiner's Answer
dated February 14, 2017 ("Ans."), and the Reply Brief filed April 11, 2017
("Reply Br.").
2 Appellant identifies the real party in interest as Safariland, LLC. Appeal
Br. 2.
3 Claims 19 and 24 are withdrawn from consideration by the Examiner.
Final Act. 1.
Appeal2017-007511
Application 12/632,582
The subject matter of the claims on appeal relates to methods of
manufacturing a non-lethal projectile, more particularly a non-lethal
projectile that includes densified materials, for example elastomers
formulated with a high-density powder or filler, for portions of the projectile
to provide a maximum amount of kinetic energy delivered by the projectile
and provide a means to dissipate some of the energy through compression
upon impact with a target. Spec. ,r,r 1, 8, 9. Claim 1 7, reproduced below
from the Claims Appendix of the Appeal Brief, is illustrative of the claims
on appeal.
17. A method of manufacturing a non-lethal projectile
comprising the steps of:
selecting a desired elastomer material for the projectile;
calculating a required amount of filler material for a desired
density of the projectile; compounding the selected elastomer
material and the calculated filler material; and molding the
compounded elastomer and filler materials into the projectile.
Appeal Br. 11 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 17, 18, 20-23, and 25 under 35 U.S.C. § 103(a)
as unpatentable over Lyon (US 6,041,712, issued March 28, 2000) in view
of Mano le et al. (US 6,990,905 B 1, issued January 31, 2006) ("Mano le") or
Hubsch et al. (US 4,208,968, issued June 24, 1980) ("Hubsch") (Ans. 3);
and
Rejection 2: Claims 26-30 under 35 U.S.C. § 103(a) over Lyon in
view of Mano le or Hubsch, further in view of Booth (WO 88/094 7 6,
published December 1, 1988) (Ans. 4).
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Application 12/632,582
DISCUSSION
Rejection 1
Appellant argues the claims subject to the first-stated ground of
rejection together. Appeal Br. 6. We select independent claim 17 as
representative. Independent claims 21 and 25, also subject to the first
ground of rejection, as well as dependent claims 18, 20, 22, 23, will stand or
fall with claim 17. See 37 C.F.R. § 41.37 (c)(l)(iv).
We sustain the Examiner's first Section 103(a) rejection for the
reasons given in the Final Office Action, the Answer, and below.
The Examiner finds that Lyon discloses a method for manufacturing a
non-lethal projectile (projectile 4 having nose 5) that includes compounding
and molding a polyolefin foam into a projectile. Final Act. 2 (citing Lyon
6:15-21, Fig. 2). The Examiner acknowledges that Lyon fails to disclose
that the nose of its projectile includes a densified material. Final Act. 2. To
account for that difference, the Examiner relies on Manole or Hubsch. Id.
The Examiner finds that Manole discloses using densifying filler
materials, such as a metal filler, dispersed in a rubber or plastic or composite
projectile component of a non-lethal projectile "to add weight or ballast to
the projectile." Id. ( citing Manole 3:51-53). The Examiner finds that
Hubsch discloses producing a projectile body of a non-lethal projectile using
synthetic resins "with fillers of a higher density such as quartz powder, iron
powder, or the like .... " Ans. 5 ( citing Hubsch 6: 17-20). Based on
Manole's and Hubsch's disclosures, the Examiner finds that one of ordinary
skill in the art would have been led to add a densified filler, such as a metal
filler, to Lyon's projectile to allow "for precise control over both the mass
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Application 12/632,582
and the mass distribution of the projectile while maintaining optimal flight
stability." Final Act. 2-3.
Appellant argues that neither Manole nor Hubsch teaches or would
have reasonably suggested the step of "calculating a required amount of
filler material for a desired density of an elastomeric portion of a projectile,
especially where the projectile is a non-lethal projectile having an
elastomeric nose." See Appeal Br. 9; see also Appeal Br. 6-8.
Appellant's arguments are not persuasive of reversible error in the
Examiner's rejection. Initially, Appellant's contentions of the differences
between compounding fillers with rigid materials and elastomeric materials
as significant are unpersuasive because Appellant has not directed our
attention to any persuasive evidence of record to support this assertion.
Arguments of counsel cannot take the place of factually supported objective
evidence. In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996). Indeed, as
the Examiner points out, Manole and Hubsch do not limit the synthetic
materials to hard materials, but rather disclose rubber, which is elastomeric,
and Hubsch further discloses that the synthetic resin has elastic properties.
Ans. 5 (citing Manole, 2:41--44 and Hubsch 2:46--47). Thus, Appellant has
not directed our attention to sufficient evidence that one of ordinary skill in
the art would have understood the disclosures of the prior art to be limited,
as Appellant contends, and not applicable to nose portions as well as body
portions of projectiles made of synthetic materials. KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) ("When a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability."); see
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Application 12/632,582
also id. at 421 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton.").
Hubsch also teaches, as Appellant acknowledges (Appeal Br. 9), that
it considers the varying mass densities of the materials used in making its
training projectile when sizing the individual cavities of the projectile,
especially that of dummy detonator 2, so that the training projectile is
provided with almost the same weight as a live shell and has a center of
gravity position that enables the projectile to exhibit practically the same
precision as live ammunition. Hubsch 7 :41--46. Although not explicit, a
person of ordinary skill in the art, reading this disclosure in Hubsch, would
reasonably understand that there is a desired density for the material used to
make a training projectile, particularly the nose of a projectile (dummy
detonator 2), so that when the projectile is fired, it will have the same
weight and target accuracy as live ammunition. In re Preda, 401 F.2d 825,
826-27 (CCP A 1968) ("[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom."). Likewise, as the Examiner finds, a person of
ordinary skill in the art would know that adding filler effects density (Final
Act. 3), and thus, would calculate the amount of filler required to achieve the
desired density of the projectile. We, therefore, are not persuaded that the
Examiner erred reversibly in finding that Hubsch teaches or would have
reasonably suggested a method of manufacturing a non-lethal projectile that
includes "calculating a required amount of filler material for a desired
density of the projectile," as recited in independent claim 17.
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Further, Hubsch discloses a projectile for training ammunition.
Hubsch, Abstract. As shown in Hubsch's Figure 1, reproduced below, in
one embodiment, its projectile has projectile body 1, made for example of
steel, connected to a dummy detonator 2, made, for example, of high
pressure polyethylene, constructed as cap-shaped hollow body 3. Hubsch
Abstract, 7:1--4.
FIG. I
Figure 1 illustrates an embodiment of Hubsch's training projectile.
As illustrated in Figure 1, Hubsch teaches that a lug shaped stem 5 is
arranged at the front end of projectile body 1. Hubsch 7:4--8. Stem 5 in
Figure 1 is provided at its front end with an axial, cylindrical projection 9
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Application 12/632,582
extending into hollow space 10 of dummy detonator 2. Id. at 7: 13-16.
According to Hubsch, projectile body 1 of the training projectile can be
fashioned, including the optionally provided stem 5 and axial projection 9,
of synthetic resins, optionally with fillers of a higher density, such as quartz
powder, iron powder, or the like. Id. at 6:6-20. Thus, a preponderance of
the evidence supports the Examiner's finding that Hubsch teaches using an
elastomer material along with a filler material in a projectile, including a
nose portion of the projectile (axial projection 9 extending into hollow
space 10 of dummy detonator 2 (nose)). Ans. 5; see also Booth Abstract, 9,
11. 13-24 (teaching using filler in the nose of a training projectile).
In sum, on the record before us, a preponderance of the evidence
weighs in favor of the Examiner's conclusion of obviousness as to
claims 17, 18, 20-23, and 25 over Lyons in view of Manole or Hubsch.
Accordingly, we sustain the Examiner's first-stated ground of rejection.
Rejection 2
Appellant's argument regarding the claims subject to the second-
stated ground of rejection focus on claim 26. Appeal Br. 10. Claim 26 is
reproduced below from the Claims Appendix of the Appeal Brief.
26. A method as set forth in claim 17 wherein:
the step of selecting a desired elastomer material for the
projectile comprises selecting a desired elastomer material for a
nose portion of the projectile;
the step of calculating a required amount of filler material
for a desired density of the projectile comprises calculating a
required amount of filler material for a desired density of the
nose portion of the projectile; and
the step of molding the compounded elastomer and filler
materials into the projectile comprises molding the
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Application 12/632,582
compounded elastomer and filler materials into the nose portion
of the projectile; and
further comprising the step of joining the nose portion of
the projectile with a body portion of the projectile.
Appeal Br. 12 (Claims App.).
Appellant argues that Manole and Hubsch teach filler material in the
base of the projectile, not in the nose of the projectile. Reply Br. 1; Appeal
Br. 10.
Appellant's argument is not persuasive of reversible error. As
discussed above, we are not persuaded that one of ordinary skill in the art
would not have understood that the teachings of Mano le and Hubsch would
also be applicable to the nose of the projectile, and that Hubsch teaches
using filler material in the nose of its projectile (axial projection 9 extending
into hollow space 10 of dummy detonator 2 (nose)). Ans. 5; Hubsch 7:13-
16, 6:6-9, 12-20.; see also Booth Abstract, 9, 11. 13-24 (teaching using filler
in the nose of a training projectile).
Additionally, for the reasons discussed above, we are unpersuaded
that the Examiner erred reversibly in finding that Hubsch teaches or would
have reasonably suggested a method of manufacturing a non-lethal projectile
that includes "calculating a required amount of filler material for a desired
density of the nose portion of the projectile," as recited in claim 26.
Because Appellant has not identified reversible error in the
Examiner's second-stated rejection, we sustain the rejection of claims 26-
30.
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DECISION
For the above reasons, the rejections of claims 17, 18, 20-23, and 25-
3 0 are 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).
AFFIRMED
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