Ex Parte Lackey

Board of Patent Appeals and Interferences

Jan 30, 2008

10631230 (B.P.A.I. Jan. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GEORGE C. LACKEY
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Appeal 2007-3724
Application 10/631,230
Technology Center 3600
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Decided: January 30, 2008
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Before WILLIAM F. PATE, III, DAVID B. WALKER, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

Opinion by PATE, III, Administrative Patent Judge.

Concurring Opinion by WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
The Appellant appeals under 35 U.S.C. § 134 (2002) from a final
rejection of claims 1, 2, 4-6, and 8-13. Claims 3 and 7 stand withdrawn
from consideration. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
The Appellant claims a firearm supporting apparatus that attaches to
an elongated support member such as a walking stick, the apparatus
including a firearm supporting surface for supporting a firearm thereon.
Appeal 2007-3724
Application 10/631,230

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Independent claim 1 reads as follows:
1. A firearm supporting apparatus suitable for use with
shafts of varying diameters and lengths, including:
an elongated support member having an end surface and
a top surface, wherein said end surface further comprises a
clamping surface and said top surface further comprises a
firearm supporting surface and said clamping surface and said
firearm supporting surface are integral with the elongated
support member;
a collar connected with the elongated support member;
and
an adjustable mechanism connecting the collar with the
elongated support member and adjusting the position of the
collar relative to the clamping surface of the support member,
resulting in movement of the collar relative to the clamping
surface in a direction parallel to the elongated support member,
the collar and clamping surface securing the support member to
the shaft.

The prior art relied upon by the Examiner in rejecting the claims is:
Paden 3,302,497 Feb. 7, 1967
Kopelman 5,829,099 Nov. 3, 1998
Knight 3,805,646 Apr. 23, 1974
Scholl EP 618045 A1 May 10, 1994

The Examiner rejected claims 1, 2, and 6 under 35 U.S.C. § 102(b) as
anticipated by Paden, or in the alternative, under 35 U.S.C. § 103(a) as
obvious over Paden.
The Examiner also rejected claims 4, 5, and 8-10 under 35 U.S.C.
§ 103(a) as unpatentable over Paden in view of Kopelman.
The Examiner further rejected claims 11 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Paden in view of Knight.
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The Examiner also rejected claims 1 and 13 under 35 U.S.C. § 103(a)
as unpatentable over Scholl.
We REVERSE.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Appellant has shown that the Examiner erred in
rejecting claims 1, 2, and 6 as anticipated by Paden, or in the alternative, as
obvious over Paden.
2. Whether the Appellant has shown that the Examiner erred in
rejecting claims 4, 5, and 8-10 as unpatentable over Paden in view of
Kopelman.
3. Whether the Appellant has shown that the Examiner erred in
rejecting claims 11 and 12 as unpatentable over Paden in view of Knight.
4. Whether the Appellant has shown that the Examiner erred in
rejecting claims 1 and 13 as unpatentable over Scholl.

PRINCIPLES OF LAW
“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. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). Analysis of
whether a claim is patentable over the prior art under 35 U.S.C. § 102 begins
with a determination of the scope of the claim. We determine the scope of
the claims in patent applications not solely on the basis of the claim
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language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). The properly interpreted claim must then be compared with the prior
art.
In interpreting a claim, a term appearing in a preamble is limiting
when it is found to be required to confer meaning on the claim. Phillips
Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866, 872 (Fed. Cir.
1998). “If the claim preamble, when read in the context of the entire claim,
recites limitations of the claim, or, if the claim preamble is ‘necessary to
give life, meaning, and vitality’ to the claim, then the claim preamble should
be construed as if in the balance of the claim.” Pitney Bowes Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (quoting Kropa v. Robie,
187 F.2d 150, 152 (CCPA 1951)); see also Corning Glass Works v.
Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)
(stating that the preamble “[a]n optical waveguide” is a claim limitation in
addition to the core and cladding limitations recited in the body of the claim
so that the claim requires the particular structural relationship defined in the
specification for the core and cladding to function as an optical waveguide).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
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underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). The Court noted that to facilitate review, the obvious analysis
should be made explicit. KSR, 127 S.Ct. at 1741, citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
I. Claims 1, 2, and 6 10
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The Examiner rejected claims 1, 2, and 6 as lacking novelty, or in the
alternative, as obvious over Paden that discloses a chain pipe wrench. The
Examiner asserts that Paden discloses each and every limitation except for a
clamping surface and a supporting surface integral with the elongated
support member (Ans. 4, ll. 7-11). The Examiner’s position is that the term
“integral” is sufficiently broad to embrace constructions united by fastening
or welding, and thus, these claims are anticipated (Ans. 4, ll. 11-14). In the
alternative, the Examiner states that forming the components of Paden as an
integral piece would have been obvious (Ans. 5, ll. 1-5). The Examiner
further asserts that statements of intended use have not been given patentable
weight and that the recitation “a firearm supporting apparatus” in the
preamble is not a limitation because the body of the claim does not depend
on the preamble for completeness (Ans. 5, ll. 5-20).
The Appellant argues that Paden fails to disclose each and every
limitation of the claim, and thus, the anticipation rejection is inappropriate
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(App. Br. 11, ll. 13-18). The Appellant further argues that the cited Paden
reference does not render the claimed invention obvious because Paden is
directed to a chain pipe wrench (App. Br. 13, ll. 4-6).

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A.
We agree with the Appellant the anticipation rejection is
inappropriate. In particular, Paden fails to disclose a “firearm supporting
apparatus” as recited in the preamble as well as the “firearm supporting
surface” recited in the body of claim 1. While we acknowledge that
statements of “intended use” and preamble generally should not be given
patentable weight, it is our view that “firearm” in the preamble and the body
of the claim is not a mere statement of intended use, but is an actual
limitation of the invention that cannot be ignored. More specifically, the
preamble recitation “firearm supporting apparatus” is “necessary to give life,
meaning, and vitality” to the claim. Pitney Bowes, 182 F.3d at 1305. We
further disagree with the Examiner’s contention that the body of claim 1
fully sets forth the complete invention and that the preamble offers no
significance. The preamble further explains the limitations “a firearm
supporting surface” and “said firearm supporting surface” specifically
recited in the body of claim 1. Id. Thus, the statement “firearm supporting
apparatus” is not merely describing the invention’s intended field of use, but
is interrelated with, and further explains, the ensuing language in the claim,
namely, the firearm supporting surface. Id. at 1306.
In addition, it is our view that the Examiner’s assertion that Paden
discloses the limitation “firearm supporting surface” is speculative because
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Paden discloses a tubular handle which would result in a mere line contact
support with the firearm rather than a surface support.

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B.
Furthermore, we disagree with the Examiner’s rejection of these
claims as obvious in view of Paden. We do not believe that it would have
been obvious to one of ordinary skill in the art of firearm accessories to use a
variation of a chain pipe wrench for a firearm supporting apparatus. We
further note that the technical problem addressed by the Appellant’s device
is in providing a support surface for a firearm to improve firing accuracy
(Br. 13, ll. 4-16; Br. 14, ll. 6-11). In contrast, the Paden reference addresses
the technical problem of applying rotational torque to an object such as a
pipe (Br. 14, ll. 1-5; Br. 14, ll. 13-19). The Examiner asserts that wrenches
and the firearm supporting apparatus of the claimed invention are both tools,
and thus, are in the same art (Ans. 9, ll. 12-19). However, the Examiner’s
reasoning fails to convince, since under such reasoning, most physical
objects would qualify as tools. There is no other articulated rational basis as
to why one of ordinary skill in the art of firearm accessories would use a
chain wrench in the manner suggested by the Examiner.
In view of the above, we agree with the Appellant that the Examiner
erred in rejecting claims 1, 2, and 6 based on Paden, claims 2 and 6
ultimately depending from claim 1.

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II. Claims 4, 5, and 8-10
Claims 4, 5, and 8-10 were rejected by the Examiner as unpatentable
over Paden in view of Kopelman. Kopelman discloses a universal
ergonomic handle including a contoured surface. These claims ultimately
depend from independent claim 1 discussed supra. Correspondingly, the
Appellant has also shown that the Examiner erred in rejecting claims 4, 5,
and 8-10.

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III. Claims 11 and 12
Claims 11 and 12 were rejected by the Examiner as unpatentable over
Paden in view of Knight. Knight discloses another chain wrench. However,
claims 11 and 12 also ultimately depend from independent claim 1.
Correspondingly, the Appellant has shown that the Examiner also erred in
rejecting claims 11 and 12.

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IV. Claims 1 and 13
Claims 1 and 13 were rejected by the Examiner as unpatentable over
Scholl, which is directed to an oil filter wrench. For reasons similar to those
set forth supra relative to the Examiner’s rejection of claim 1 in view of
Paden, we find that the Examiner erred in rejecting claims 1 and 13 based on
Scholl, claim 13 depending from claim 1.

CONCLUSIONS
On the record before us, the Appellant has shown that:
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1. The Examiner erred in rejecting claims 1, 2, and 6 as anticipated
by, or in the alternative, as obvious over Paden.
2. The Examiner erred in rejecting claims 4, 5, and 8-10 as
unpatentable over Paden in further view of Kopelman.
3. The Examiner erred in rejecting claims 11 and 12 as unpatentable
over Paden in further view of Knight.
4. The Examiner also erred in rejecting claims 1 and 13 as
unpatentable over Scholl.

ORDER
The Examiner’s rejections of claims 1, 2, 4-6, and 8-13 are
REVERSED.

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REVERSED

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WALKER, Administrative Patent Judge, Concurring,
I join the majority in reversing the Examiner’s rejections of claims 1,
2, 4-6, and 8-13. I agree with the majority’s rationale in reversing the
Examiner’s rejections under 35 U.S.C. § 103(a) as discussed in Parts I.B.
and II. to IV. of the majority’s opinion. But as to reversing the Examiner’s
rejection under 35 U.S.C. § 102, I concur in the majority’s result with
respect to Part I.A, but would reverse the rejection using an alternate
rationale.
The Appellant argues that the rejection of claims 1, 2, and 6 is
inappropriate because Paden lacks an express limitation of independent
claim 1, upon which claims 2 and 6 depend, namely that “said clamping
surface and said firearm supporting surface are integral with the elongated
support member” (Br. 11). The Examiner found that
Although Paden does not expressly disclose the
clamping surface and the supporting surface being
integral with the elongated support member, Paden
does state that forward part of the handle (i.e.
supporting surface) “shall be called a part of the
head and it is fixed to the remainder of the head”
(i.e. clamping surface) and the handle (i.e.
supporting surface) (column 3, lines 64-74). It is
the examiner's position that this shows that the
head (i.e. clamping surface) and the supporting
surface are integral with the handle (i.e. elongated
support member) and it has been held that the term
“integral” is sufficiently broad to embrace
constructions united by such means as fastening
and “welding.” In re Hotte, 177 USPQ 326, (328
(CCPA 1973).
(Answer 4). The Appellant argues that the Examiner misapplied In re Hotte
because
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In rejecting the applicant's argument that the use of
“integral” in claim 1 required the plate and leads to
be one-piece, the CCPA noted that the applicant's
specification did not expressly restrict the meaning
of “integral” to “one piece” and that such an
interpretation was irreconcilable with a recitation
in claim 1 of “a vitreous case surrounding and
integrally united with the capacitor unit so
formed?” 475 F.2d at 647, 177 U.S.P.Q. at 238.
Thus, the court's decision was an application of the
general rule that requires claims to be read in light
of the specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
(Reply Br. 8). The Appellant further argues that the Specification, unlike the
specification in Hotte, supports interpreting “integral” to mean “one piece”
and notes that such a claim construction was argued in the Office Action
Response of October 15, 2004 (Reply Br. 8-9). In that Action, the Appellant
amended claim 1 to add the disputed language requiring said clamping
surface and said firearm supporting surface to be formed of a single piece
with the elongated support member and sought to distinguish the amended
claim 1 over a prior art reference because the applied reference utilizes
multiple pieces to accomplish its attachment and supporting functions
(Office Action Response of October 15, 2004, 7). In response to the
Appellant’s amendment and arguments, the Examiner withdrew the
contested rejection and entered the 35 U.S.C § 102(b) over Paden currently
on appeal (Final Office dated April 22, 2005, 2-4).
We determine the scope of the claims in patent applications “not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
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F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc)
(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70
USPQ2d 1827, 1830 (Fed. Cir. 2004)). I believe the plain meaning of the
term “integral,” the Specification, and the Appellant’s arguments during
prosecution support a claim interpretation that requires the said clamping
surface and said firearm supporting surface to be formed of a single piece
with the elongated support member.
Therefore, I concur in the result of reversing the Examiner’s rejection
of claims 1, 2, and 6 under 35 U.S.C. § 102 based on Paden, but would
reverse the rejection because Paden fails to disclose a clamping surface and
a firearm supporting surface that are integral with the elongated support
member as recited in independent claim 1.

JRG

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