Ex Parte Marsac

Patent Trial and Appeal Board

Aug 22, 2013

10943746 (P.T.A.B. Aug. 22, 2013)

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.
10/943,746 09/17/2004 Bertrand Marsac CSOFT.00001 1948
22858 7590 08/22/2013
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
CLEMENT, MICHELLE RENEE
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
08/22/2013 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 BERTRAND MARSAC
____________

Appeal 2011-008273
Application 10/943,746
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, JOHN W. MORRISON, and
HYUN J. JUNG, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-3 and 37. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 10/943,746

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Rejections
Claims 1-3 and 37 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 1-3 and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Morioka1 (JP 03-35997, pub. Jul. 30, 1991) and Foster
(US 2,526,018, iss. Oct. 17, 1950).
Claimed Subject Matter
Claim 1 is the sole independent claim on appeal, is representative of
the subject matter on appeal, and recites:
1. A projectile trajectory correction device for a
weapon replica, comprising:
(a) a tubular cannon having a bore;
(b) a tubular elastic insert disposed within
said bore along the inner surface of the cannon;
(c) a first pin and a second pin inserted into
said cannon and symmetrically positioned on either
side of a vertical axis passing through a
longitudinally extending central axis of the cannon,
and wherein the first and second pins are disposed to
one side of a horizontal axis passing through the
central axis of the cannon;
wherein said first and second pins are
circumferentially spaced apart and extend radially
inward into the bore of the cannon and press into said
elastic insert thereby creating first and second bosses
inside the bore; and
wherein the first and second pins are
positioned at the breech of the cannon, wherein the
first and second bosses apply pressure to a projectile
fired from the weapon replica, thereby modifying the
trajectory of the projectile when it exits the cannon.

1 We derive our understanding of this reference from the English language
translation prepared by FLS, Inc., dated December 2010.
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Application 10/943,746

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OPINION
Written Description
Claim 1 recites “wherein the first and second pins are positioned at the
breech of the cannon.” The Examiner finds that the original Specification
does not describe that the first and second pins are positioned at a breech of
the cannon. See Ans. 4. The Appellant contends that claim 1 is supported
by the original Specification, which states “[w]hatever embodiment is
chosen, the trajectory correction device is placed just after the location from
where the projectile is projected toward the outside, at the entrance of the
cannon.” Br. 4-5 (citing Spec. 8, l. 36 – 9, l. 2) (emphasis added).
In response, the Examiner finds that the placement of the trajectory
correction device may refer to the muzzle end of the cannon (barrel) rather
than the breech of the cannon because the muzzle end of the cannon is the
place where the projectile is projected toward the outside. See Ans. 6.
Although the Examiner’s finding is appreciated, it is notable that if the
placement of the trajectory correction device is placed “just after” the
muzzle end of the cannon then it would have to be positioned in front of the
muzzle end. In that case, the trajectory correction device would not be
placed on the weapon rather it would be placed off of the cannon. Since the
Specification is clear that “cannon 1 is equipped with a projectile trajectory
correction device” (Spec. 4, ll. 27-28), the placement of the trajectory
correction device cannot be “just after” the muzzle end of the weapon. Here,
it is reasonable that the statement in the Specification that “the trajectory
correction device is placed just after the location from where the projectile is
projected toward the outside” refers to the breech of the cannon rather than
the muzzle end of the cannon.
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The Examiner also finds that the Specification’s reference to “‘at the
entrance of the cannon’ does not clearly indicate a breech of a cannon.”
Ans. 6 (emphasis added). However, whether or not the Specification
“clearly indicate[s]” a disclosure is not the correct standard for rejecting a
claim under the written description requirement. To satisfy the written
description requirement, the disclosure must reasonably convey to skilled
artisans that Appellant possessed the claimed invention as of the filing date.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). Furthermore, the Appellant contends “that it is well established in
the art that the place where the projectile enters a cannon (breech) and exits
a cannon (muzzle) are traditionally defined according to the operation of the
cannon (shooting), not the method of loading.” Br. 4. The Examiner’s
response concerning open-breech and closed-breech cannons is appreciated.
Ans. 6-7. The Examiner’s response, however, focuses on loading the
cannon of a weapon rather than explaining a flaw in the Appellant’s
contention that a skilled artisan refers to the entrance of the cannon at the
breech due to its operation while shooting rather than loading. See Ans. 7,
Br. 4-5.
For the reasons provided above, we find that the Appellant’s
contentions are persuasive. Thus, the rejection of claim 1, and its dependent
claims, as failing to comply with the written description requirement is not
sustained.
Obviousness over Morioka and Foster
The Examiner finds that Morioka discloses nearly all of the
limitations of claim 1, including a trajectory adjustment screw (a first pin)
11, but does not disclose a second pin. See Ans. 4, 8. The Examiner turns to
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Foster’s disclosure of a first and a second pin 47 to cure the deficiency of
Morioka with respect to claim 1. Id. The Examiner concludes that “[i]t
would have been obvious to one of ordinary skill in the art to apply the
technique of utilizing additional pins as taught by Foster . . . to improve the
device of Morioka for the predictable result of having better trajectory
control.” Ans. 5.
The Appellant contends that “[t]here is no motivation to combine
Foster with Morioka in the manner suggested by the Examiner.” Br. 6. The
Appellant asserts that Morioka’s device “is designed primarily to increase
the range and vertical accuracy of pellet/bb guns by imparting back spin on
the pellets” and that this design “keep[s] the projectile in as straight a line as
possible for as long as possible.” Id. As for Foster’s simulation pitching
device, the Appellant asserts that it is designed to alter the path of the ball
from a straight line. Id.
In response, the Examiner finds that Morioka’s adjustment screw is
designed to change the trajectory direction of its projectile. Ans. 8 (quoting
Morioka, p. 6, ll. 18-23, “[a]lso, by changing the position of the adjustment
screw 11, i.e. by changing the position in the circumferential direction, it
becomes possible to select the trajectory direction to be corrected.”). Since
Morioka’s device includes in its design the ability to change direction of a
projectile, the Appellant’s contention is unpersuasive. Additionally, we
agree with the Examiner that both the Morioka and Foster devices alter the
trajectory of a projectile by applying pressure/friction to the projectile. See
Ans. 8-9.
The Appellant also points out that Morioka’s trajectory adjustment
screw 11 is positioned at the breech of the gun whereas Foster’s device the
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fingers 47 are positioned at the muzzle. Br. 6. The Appellant contends that
the placement of the trajectory adjustment mechanisms of Morioka and
Foster are placed at opposite ends of the barrel, which evidences the
opposing purposes and functions of each device. See id. As such, the
combination of Morioka’s and Foster’s teachings results in hindsight. See
Br. 7. However, the Examiner indicates that “Foster . . . is relied on for the
teaching of utilizing multiple pins for altering the trajectory of a projectile
from a launching tube.” Ans. 8. In other words, the Examiner does not rely
on Foster for teaching the location its trajectory adjustment mechanism. See
Ans. 8-9. As such, the Appellant’s contention is unpersuasive.
For the foregoing reasons, we conclude that the Examiner has
articulated adequate reasoning with rational underpinning as to why one of
ordinary skill in the art would have combined the teachings of the references
to result in the claimed subject matter. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)). Thus, the rejection of claims 1-3
and 37 as unpatentable over Morioka and Foster is sustained.

DECISION
We REVERSE the rejection of claims 1-3 and 37 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
We AFFIRM the rejection of claims 1-3 and 37 under 35 U.S.C.
§ 103(a) as unpatentable over Morioka and Foster.
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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)(1)(iv).

AFFIRMED

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