Ex Parte LyrenDownload PDFPatent Trial and Appeal BoardAug 28, 201814823528 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/823,528 08/11/2015 64021 7590 PHILIP S. L YREN, PC 289 Woodland A venue Wadsworth, OH 44281 08/29/2018 FIRST NAMED INVENTOR Philip Lyren 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. PSL-030 9925 EXAMINER HESS, DANIEL A ART UNIT PAPER NUMBER 2876 MAIL DATE DELIVERY MODE 08/29/2018 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 PHILIP L YREN Appeal2017-009930 Application 14/823,528 Technology Center 2800 Before GEORGE C. BEST, DONNA M. PRAISS, and MERRELL C. CASHION JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1, 3-5, 7-17, 19, and 20. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1The Examiner objected to claims 2, 6, and 18 as allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Final Act. 11-12. Accordingly, these claims are not before us for review on appeal. Appeal2017-009930 Application 14/823,528 Claims 1, 9, and 16 illustrate the subject matter on appeal and are reproduced below: 1. A method, comprising: providing, by an electronic scope connected to a rifle, a point of aim that is visible through the electronic scope to show where the rifle is aimed on a target; determining, by the electronic scope, a location of the point of aim on the target before a bullet is fired from the rifle; determining, by the electronic scope, an impact location of the bullet on the target after the bullet is fired from the rifle; determining, by the electronic scope, a difference between the location of the point of aim on the target and a location of the impact location on the target; and moving, by the electronic scope, the point of aim that is visible through the electronic scope so the location of the point of aim on the target aligns with the impact location of the bullet on the target. 9. An electronic scope, comprising: a memory that store instructions; a display that communicates with the memory; and a processor that executes the instructions to display on the display a point of aim that shows where a handheld firearm connected to the electronic scope is aimed on a target, to detect an impact location on the target of a bullet fired from the handheld firearm, to calculate a distance and a direction between the point of aim on the target and the impact location of the bullet on the target, and to move the point of aim based on the distance and the direction in order to sight the electronic scope such that subsequent bullets fired from the handheld firearm impact locations at the point of aim. 2 Appeal2017-009930 Application 14/823,528 16. A non-transitory computer readable storage medium storing instructions that cause one or more processors to execute a method, comprising: obtain a distance from a firearm to a target; display on a display of an electronic scope connected to the firearm a point of aim that shows where the firearm is aimed on a target; detect a miss location adjacent to the target where a bullet fired from the firearm missed the target; calculate a distance and a direction between the point of aim on the target and the miss location where the bullet missed the target; create an adjusted point of aim by moving the point of aim based on the distance from the firearm to the target, the distance between the point of aim on the target and the miss location where the bullet missed the target, and the direction between the point of aim on the target and the miss location; and display the adjusted point of aim on the display of the electronic scope. Appellant2 requests review of the following rejections maintained by the Examiner: I. Claims 1, 4, 5, 7-9, 12, 16, and 19 rejected under 35 U.S.C. §§ I02(a)(l) and I02(a)(2) as anticipated by Drexler (US 2008/0022575 Al, published January 31, 2008). II. Claims 3, 13, 14, and 20 rejected under 35 U.S.C. § 103 as unpatentable over Drexler and Cox (US 2005/0268521 Al, published December 8, 2005). III. Claim 10 rejected under 35 U.S.C. § 103 as unpatentable over Drexler. 2 Four Mile Bay LLC is identified as the real party in interest. App. Br. 2. 3 Appeal2017-009930 Application 14/823,528 IV. Claim 11 rejected under 35 U.S.C. § 103 as unpatentable over Drexler and Horvath (US 2012/0000979 Al, published January 5, 2012). V. Claims 15 and 17 rejected under 35 U.S.C. § 103 as unpatentable over Drexler and Samuels (US 5,966,859, issued October 19, 1999). OPINION After review of the respective positions provided by Appellant and the Examiner, we reverse the Examiner's prior art rejections of claims 1, 3-5, 7- 17, 19, and 20 under 35 U.S.C. §§ 102(a)(l), 102(a)(2), and 103 essentially for the reasons presented by Appellant in the Appeal and Reply Briefs. We add the following for emphasis. Prior Art Rejections3 Independent claim 1 Independent claim 1 is directed to a method of adjusting the point of aim of a weapon after an errant shot by using an electronic scope that determines the parameters to move the point of aim that is visible through the electronic scope so the location of the point of aim on the target aligns with the impact location of the bullet on the target. The Examiner finds Drexler discloses a method of adjusting the point of aim of a weapon after an errant shot that anticipates the subject matter of claim 1. Final Act. 3--4; Drexler Figure 4; ,r 21. Appellant argues that Drexler does not teach the limitation of moving, by the electronic scope, the point of aim that is visible through the electronic scope so the location of the point of aim on the target aligns with the impact 3 We limit our discussion to independent claims 1, 9, and 16. 4 Appeal2017-009930 Application 14/823,528 location of the bullet on the target. App. Br. 7-8. As argued by Appellant, Drexler's Figure 4 shows generating a new aiming correction or pipper 170 ( compared to original aim or pipper 166) that is off-target. Id. at 8. That is, Appellant asserts that Drexler's pipper 170 is not aligned with the impact location of the bullet on a target as claimed and illustrated in the Application's Figures 8A and 8B. Id. at 10-12. We agree with Appellant that there is reversible error in the Examiner's determination of obviousness. For the Examiner to carry the burden of establishing a prima facie case of anticipation, the Examiner must establish where each and every element of the claimed invention, arranged as required by the claim, is found in a single prior art reference, either expressly or under the principles of inherency. See generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The Examiner explains that Drexler's Figure 4 and Appellant's Figure 8B are fundamentally the same figure and the same concept. Ans. 10-11. However, the Examiner does not address Appellant's contention that Drexler does not align the new aim 170 so the location of the point of aim on the target aligns with the impact location of the bullet on the target. Further, the Examiner does not direct us to any disclosure in Drexler describing this claimed feature or adequately explains why the claimed feature would be inherent in the method of Drexler within the meaning of 35 U.S.C. § 102. Independent claim 9 Independent claim 9 is directed to an electronic scope comprising a processor that executes instructions to detect an impact location on a target of an errant bullet fired from the handheld firearm and determine the 5 Appeal2017-009930 Application 14/823,528 parameters to move the point of aim so that subsequent bullets fired from the handheld firearm impact locations at the point of aim. The Examiner finds Drexler's electronic scope anticipates the subject matter of claim 9. Final Act. 5. Appellant argues the Examiner has not shown that Drexler's processor is capable of performing the claimed function because Drexler never detects an impact location on a target. App. Br. 12. According to Appellant, Drexler teaches predicting, based on the trajectory of the bullet, an impact location and then showing this predicted location with a red dot without detecting an impact location the target. Id. at 13. Appellant has identified reversible error in the Examiner's determination of obviousness. The question is not whether patentable weight should be accorded to the functional language, but, rather, whether the structure of the prior art is capable of performing the recited function of the claim. Where there is reason to conclude that the structure of the prior art is inherently capable of performing the function, the burden shifts to the applicant to show that the function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212,215 (CCPA 1981). The Examiner speculates that Drexler uses bullet trajectory observations to determine, via calculations, where the bullet crosses the target which the Examiner designates as an impact location. Ans. 13-14. At the same time, the Examiner acknowledges that Drexler' s method is different, meaning that Drexler does not detect an impact location as claimed. Id. at 13 (acknowledging the difference between Drexler's and the claimed invention), 14. The Examiner also fails to provide the necessary 6 Appeal2017-009930 Application 14/823,528 "capable of' analysis. Thus, the Examiner has not met the burden to establish that Drexler' s electronic scope anticipates the claimed invention. Independent Claim 16 Independent claim 16 is directed to a non-transitory computer readable storage medium that stores instructions executable by a processor, including instructions to detect a miss location adjacent to a target where a bullet fired from a firearm missed the target. Appellant argues that the Examiner does not identify any teaching in Drexler that describes this claimed feature. App. Br. 13. According to Appellant, the Examiner relies on the discussion of Drexler with respect to claim 1 in addressing the subject matter of claim 16, however claim 1 does not recite the disputed claim feature. Id. The Examiner does not address Appellant's arguments in the Answer. See generally Ans. Thus, we agree with Appellant that the Examiner committed reversible error by not specifically addressing the subject matter of claim 16. Accordingly, we reverse the Examiner's prior art rejection under 35 U.S.C. §§ 102(a)(l) and 102 (a)(2) of claims 1, 4, 5, 7-9, 12, 16, and 19 for the reasons presented by Appellant and given above. The separate rejections of claims 3, 10, 11, 13-15, 17, and 20 under 35 U.S.C. § 103 are based on Drexler anticipating the subject matter of the independent claims. Further, the additionally cited references were not relied upon by the Examiner to overcome the deficiencies noted above with respect to Drexler. Therefore, we also reverse these rejections as well for the reasons presented by Appellant and given above. 7 Appeal2017-009930 Application 14/823,528 ORDER The Examiner's prior art rejections of claims 1, 3-5, 7-17, 19, and 20 under 35 U.S.C. §§ 102(a)(l), 102(a)(2), and 103 are reversed. REVERSED 8 Copy with citationCopy as parenthetical citation