Ex Parte McPherson et al

Patent Trial and Appeal Board

Feb 14, 2017

13230763 (P.T.A.B. Feb. 14, 2017)

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.
13/230,763 09/12/2011 Mathew A. McPherson M55.2-13971-US02 3708
490 7590 02/16/2017
VIDAS, ARRETT & STEINKRAUS, P.A.
Richard A. Arrett
9531 West 78th Street
Suite 400
Eden Prairie, MN 55344
EXAMINER
KLAYMAN, AMIR ARIE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
02/16/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail@vaslaw.com
rleaf@vaslaw.com
rarrett @vaslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHEW A. MCPHERSON and GARY L. SIMONDS
Appeal 2015-002664
Application 13/230,763
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-002664
Application 13/230,763
THE INVENTION
Appellants’ invention relates to compound archery bows. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. An archery bow comprising:
a first rotatable member, the first rotatable member being
rotatable about a first rotatable member axis;
a first power cable anchor, said first power cable anchor
attached to said first rotatable member and rotatable with
respect to said first rotatable member about a first anchor axis,
said first anchor axis offset from said first rotatable member
axis;
a first axle supported by a first bow limb, said first axle
extending through at least said first rotatable member and said
first power cable anchor; and
a first power cable anchored to said first power cable
anchor.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Jennings US 4,561,413 Dec. 31, 1985
Evans US 5,782,229 July 21, 1998
McPherson I US 5,890,480 Apr. 6, 1999
McPherson US 6,247,466 B1 June 19, 2001
Yehle US 7,305,979 B1 Dec. 11,2007
The following rejections are before us for review:1
1. Claims 1—4, 16, 17, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over McPherson and Jennings.
2. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over McPherson, Jennings, and McPherson I.
1 A double patenting rejection over US 8,020,544 to McPherson has been
withdrawn in view of Appellants’ filing of a Terminal Disclaimer. Ans. 8.
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Application 13/230,763
3. Claims 6—8, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over McPherson, Jennings, and Evans.
4. Claim 9-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McPherson, Jennings, and Yehle.
OPINION
Unpatentability of Claims 1—4, 16, 17, and 20
over McPherson and Jennings
Claim 1
The Examiner finds that McPherson discloses all of the limitations of
claim 1 except for an axle that extends through both a rotatable member and
a power cable anchor. Final Action 2-4. In particular, the Examiner finds
that element 106 of McPherson is a “first power cable anchor” within the
meaning of claim 1. Id. at 3. Similarly, the Examiner also finds that the
string having end 144 associated with McPherson elements 106, 143,
and 146 is a “power cable” within the meaning of claim 1. Id. The
Examiner relies on Jennings as disclosing a first axle that extends through
both the first rotatable member and the first power cable anchor. Id. at 4—5.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to modify
McPherson with Jennings’s teachings regarding a first axle to achieve the
claimed invention. Id. at 5. According to the Examiner, a person of
ordinary skill in the art would have done this to provide a symmetrical
anchor for the power cables with respect to each limb centerline. Id.
In traversing the rejection, Appellants first argue that the Examiner
erred in finding that McPherson element 106 is a “power cable anchor” and
that the string associated with element 106 is a “power cable”:
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Application 13/230,763
A person of ordinary skill in the art will recognize that
McPherson ‘466 teaches a single-cam bow, and that the cable
segment attached to the secondary string feed out arm 106 is a
“secondary” or “return” cable segment, not a power cable.
Appeal Br. 10, see also id. at 15 (“the secondary string feed out 106 is not a
power cable anchor” (emphasis omitted)). Appellants argue that the
McPherson string associated with element 106 is a “secondary cable,” which
is distinguishable from a “power cable.” Id. at 10. According to Appellants,
a “secondary cable” differs from a “power cable” in that a secondary cable is
an elongated string that is continuous with a bowstring. Id. at 14. In a
single-cam bow, the bowstring wraps around a pulley disposed on the limb
(the “pulley limb”) opposite the limb that supports the single cam (the “cam
limb”). Id. at 13—14. Appellants allege that the portion that does not serve
as the bowstring, which wraps around the pulley and returns to the cam limb,
is a low-force cable, which Appellants denominate a “secondary cable” or
“return cable.” Id. Appellants assert that a low-force secondary cable is
unlike a high-force power cable. Id. In support of their position, Appellants
rely on their Specification (id. at 8—9) and at least six U.S. Patents that
purportedly distinguish between power cables and secondary cables (id.
at 17).
In the Answer, the Examiner takes the position that Appellants have
failed to differentiate a “power cable” from other types of archery cables on
the basis of structural differences. Ans. 8—14. Among other things, the
Examiner refers to language in the Darlington reference2 and the Miller
reference3 cited in Appellants’ Appeal Brief as supporting the proposition
2 US 6,990,970 to Darlington, iss. Jan. 31, 2006.
3 US 5,505,185 to Miller, iss. Apr. 9, 1996.
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Application 13/230,763
that the term “secondary cable” may be used interchangeably with “power
cable” in single-cam bows. Ans. 13.
We think that both the Appellants’ and the Examiner’s evidence on
this point is, at best, equivocal. In essence, Appellants assert that “power
cable” is a term of art in the field of archery. However, the term “power
cable” is not operationally defined in Appellants’ Specification, neither is it
operationally defined in any of the six patent references cited on page 17 of
the Appeal Brief. Appellants do not support their position with a technical
dictionary definition from the field of archery. Appellants do not provide
expert opinion testimony or other extrinsic evidence to support the position
that “power cable” is a term of art in the archery field that is known to
exclude secondary or return cables. Finally, Appellants cite to no language
in their Specification that expressly or impliedly excludes a secondary cable
from consideration as a “power cable.”4
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). 35 U.S.C. § 112, second
paragraph, provides that:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
4 Appellants’ Specification expressly contemplates that archery bows of their
invention include both single cam bows and dual cam bows. Spec. 4.
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35U.S.C. § 112, second paragraph. Section 112 places the burden of
precise claim drafting on the applicant. See In re Morris, 127 F.3d 1048,
1056-57 (Fed. Cir. 1997).
Careful and straightforward claim drafting by prosecuting
attorneys and agents, and rigorous application by examiners of
the statutory standard to particularly point out and distinctly
claim the subject matter regarded to be the invention, see 35
U.S.C. § 112,12 (2000), serve an important public notice
function.
Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1300
(Fed. Cir. 2008). In the absence of persuasive evidence from Appellants on
a definite and more limited meaning of “power cable,” the Examiner did not
err in applying a broad, but reasonable, definition. Precise claim drafting
serves an important public notice function. Id. If Appellants desire to define
their invention so as to clearly and unequivocally exclude what they have
described as secondary or return cables in their Appeal Brief, they will have
an opportunity to do so upon resumption of prosecution following this
appeal. However, for purposes of this appeal, we will treat “power cable” as
sufficiently broad to read on the cable associated with element 106 in
McPherson.
Appellants argue that the Examiner’s proposed combination changes
the principal of operation of McPherson, renders McPherson unsatisfactory
for its intended purpose, and suffers from a lack of clearly articulated
reasoning. Appeal Br. 7, 20-22. As these concepts are somewhat
interrelated, we will treat them as a single argument. Essentially, Appellants
point out that McPherson’s secondary string feed out 106 is a component of
a single-cam bow apparatus, while Jennings’s power cable, cam, and yoke
assembly are components of a dual-cam bow apparatus. As such, the two
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Application 13/230,763
mechanisms operate and behave differently. For example, Appellants point
out that the respective rotational moments applied to a cam assembly by
(1) a power cable; and (2) a bowstring, act in opposite directions of each
other when the bowstring is drawn. See, e.g., Appeal Br. 9. This point is not
challenged by the Examiner. Appellants argue that modifying McPherson so
that its axle extends through both its rotational member and its power cable
anchor would interfere with movement of the string payout arm and
corresponding string take-up during draw of the bowstring. Id. at 21.
In response, the Examiner recites, in conclusory fashion, that
obviousness does not require the bodily incorporation of a second reference
into the structure of a primary reference. Ans. 14. Similarly, the Examiner
states, in conclusory fashion, that:
Jennings teaches an axle A extending through a rotatable
member 6/6' and a first cable anchoring (assembly 26) (figs. 1,
3, and 4; col. 4, lines 23-40).
Jennings also asserts that this particular arrangement provides
a symmetrical anchor of the power cables with respect to each
limb centerline.
Now, how do these specific teachings (emphasis added) of
Jennings while employed within McPherson will render his
archery bow unsatisfactory for its intended used or changes the
principles of its operations?
A teaching of a prior art does not mean taking
features/structure of one reference and “plug” them into another
reference.
As such, Appellant cannot, for example, point to Jennings’s
assembly 26, and concludes that it cannot be fitted within
McPherson's assembly since this will result in axle 102 extend
through the secondary string feed out arm 106 at, for example,
rotation point 142 (page 19 of his remarks).
The teachings of the references is what was known to a
person of ordinary skill in the art at the time the invention was
made, and what was known is the fact that this particular
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Application 13/230,763
arrangement provides advantage in a symmetrical anchor of the
power cables with respect to each limb centerline.
Id. at 15 (emphasis omitted). Notwithstanding these statements by the
Examiner, it is not readily apparent to us how a person of ordinary skill in
the art would take the individual teachings of McPherson and Jennings and
combine them to achieve Appellants’ invention. The Examiner’s reliance on
generic legal principles with no accompanying practical application to the
actual facts of the case leads us to the conclusion that the Examiner’s
conclusion of obviousness is not supported by sound reasoning.
Consequently and for the reasons set forth above, we do not sustain
the Examiner’s unpatentability rejection of claim 1.
Claims 2—4, 16, 17, and 20
Claims 2—4, 16, 17, and 20 depend, directly or indirectly, from
claim 1. Claims App. The rejection of each of these claims suffers from the
same infirmity as the rejection of claim 1 and, accordingly, we do not sustain
the unpatentability rejection of claims 2—4, 16, 17, and 20.
Unpatentability of Claims 5—15, 18, and 19
Claims 5—15, 18, and 19 depend, directly or indirectly, from claim 1.
Claims App. The Examiner rejected these claims over a combination based
on McPherson and Jennings, together with various additional references.
Final Action 5—8. In each instance, the Examiner relies on the same findings
of fact with regard to the combination of McPherson with Jennings that we
have found to be in error in connection with the rejection of claim 1. Id.
Consequently, the rejections of each of these claims suffer from the same
infirmity as the rejection of claim 1, which infirmity is not cured by the cited
additional references.
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In view of the foregoing, we do not sustain the unpatentability
rejection of claims 5—15, 18, and 19.
DECISION
The decision of the Examiner to reject claims 1—20 is REVERSED.
REVERSED
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