Ex Parte Menefee

Board of Patent Appeals and Interferences

May 26, 2009

10915210 (B.P.A.I. May. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES Y. MENEFEE
____________

Appeal 2008-6066
Application 10/915,210
Technology Center 3600
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Decided:1 May 26, 2009
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Before: JENNIFER D. BAHR, JOHN C. KERINS, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-6066
Application 10/915,210

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STATEMENT OF THE CASE
James Y. Menefee (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-6. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a shotgun shell. Inside
shell 10 are wads 32 and 36, propellant 34, slug 48, and ball 46. The ball 46
is positioned in between a hollow base 52 of slug 48 and a depression 40 of
wad 36. Specification 3:23-31, fig. 1. The ball 46 is made of lightweight,
hard plastic and serves as a centering device positively linking slug 48 to
wad 36, and allowing a clean release of both ball 46 and wad 36 from slug
48 in flight. Specification 2:1-6, 20-29.
Claim 1, reproduced below, is representative of the claimed invention:
1. A shotgun shell comprising:
(a) a shotshell base including a primer;
(b) a tubular hull extending from said
shotshell base at a fore end and having an aft end
which is closed until fired;
(c) propellant within said hull in contact
with said primer;
(d) a wad within said hull, said wad having a
fore end adjacent said propellant and an aft end,
said aft end including a central depression;
(e) a slug within said hull adjacent the
closed aft end, said slug including a fore end
having a central depression; and
(f) a single ball positioned between said wad
and said slug to be cupped within said central
depressions.
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Application 10/915,210

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The Rejections
Appellant seeks review of the Examiner's rejection of claims 1-6
under 35 U.S.C. § 102(b) as anticipated by U.S. Patent 4,479,438 to
Bilsbury (Oct. 30, 1984)2.

SUMMARY OF DECISION
We REVERSE.

ISSUES
Appellant argues the subject matter of claims 1-6 is not anticipated by
Bilsbury. Appellant argues claims 1-6 as a group.
The issue presented in this appeal is whether Appellant has
demonstrated that the Examiner erred in rejecting claims 1-6 under 35
U.S.C. § 102(b) as anticipated by Bilsbury. The issue turns on whether the
saboted shot of Bilsbury describes the claimed slug.

FACTS PERTINENT TO THE ISSUES
FF1 Bilsbury describes saboted shot for use in a shotgun. Abstract. The
sabot provides a more effective delivery of shot by preventing the shot
from becoming deformed during acceleration. Col. 1, ll. 52-55, col. 2,
ll. 4-11. A shotgun cartridge 10 holds alternating layers of shot and
sabot. Fig. 1. Shot layers 18, 20, 24, and 28 are held in place by

2 Two additional grounds of rejection were presented in the Final Office
Action mailed Oct. 11, 2006. However, the Examiner withdrew these
rejections on pages 2-3 of the Examiner's Answer mailed Oct. 26, 2007.
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sabot layers 19, 21, 22, and 26. Col. 2, ll. 20-23, fig. 1. Each sabot
layer is made of four quarter cylinder segments 26A-26D, each
segment with top and bottom hemispherical dimples to house the
bottom and top of adjacent shot layers. Col. 2, ll. 32-44, fig. 4. The
sabot is made of a material with a high compression strength and low
density in order to reduce the "parasitic weight" of the buckshot load.
Col. 2, ll. 11-15.
FF2 One of ordinary skill in the art would understand "slug" to mean a
"large, single projectile." Speer Reloading Manual #13.
FF3 One of ordinary skill in the art would understand "shot" to mean
"spheres … which are used for the projectiles in shotguns." Speer
Reloading Manual #13.
FF4 One of ordinary skill in the art would understand "sabot" to mean "a
lightweight carrier or 'shoe' in which a sub-caliber projectile is
centered." Further, it is known that sabots are generally discarded
after the gun is fired. Speer Reloading Manual #13.

PRINCIPLES OF LAW
“Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, “[t]here must be
no difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention.” Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
1991). It is not necessary that the reference teach what the subject
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application teaches, but only that the claim read on something disclosed in
the reference, i.e., that all of the limitations in the claim be found in or fully
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772
(1984).
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language 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).

ANALYSIS
As noted in our findings above, Bilsbury describes a shotgun shell
having alternating layers of sabot and shot. FF1. The Examiner found that
either sabot layer 19 or the combination of sabot layers 19, 22, and 26 of
Bilsbury reads on the slug of claims 1-6. Ans. 4-5. Appellant argues, inter
alia, that the sabot layers of Bilsbury are not a slug or slugs because this
interpretation would be inconsistent with the definition of slug. Appeal Br.
6-8, Reply Br. 10-14.
Two types of projectiles are generally fired from shotguns: slugs and
shot. They are distinguishable by the payload fired from the gun. A slug is
a payload consisting of a unitary object. FF2. Shot is a payload consisting
of several objects. FF3. Therefore, a shot is not a slug, and vice versa,
under their ordinary meaning. A sabot is a carrier for a projectile, but is not
considered to be the effective element of the payload. FF4. Therefore, a
sabot is neither a slug nor shot, but is something that holds one or the other.
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In Bilsbury, the sabot carries shot. FF1. The purpose of firing the
shell in Bilsbury is not to hit the target with the sabot, but with the shot
carried by the sabot. See FF1, FF4. The sabot of Bilsbury cannot be
considered a slug because the sabot of Bilsbury is not a large, single
projectile, but rather several small, lightweight carriers for several small
projectiles.
Even if the combination of sabot layers and shot in Bilsbury were to
be bound together, such that the sabot did not fall away and would strike a
target along with the shot, as the Examiner appears to suggest (Ans. 6-7), a
person of ordinary skill in the art would still recognize this combination as
nothing more than shot held by a sabot. Both shot and sabot remain
distinguishable elements of the payload and are not a large, single projectile
but several small projectiles held in place by several lightweight carriers.
The effective element of the payload remains the shot, not the sabot.
Therefore, a combination of sabot and shot as described by Bilsbury, would
not be considered a slug.
In light of the above, Appellant's arguments persuade us that the
Examiner erred in finding that Bilsbury anticipates the subject matter of
claims 1-6.

CONCLUSION
Appellant has demonstrated that the Examiner erred in rejecting
claims 1-6 under 35 U.S.C. § 102(b) as anticipated by Bilsbury.

DECISION
The Examiner's decision is reversed as to claims 1-6.
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REVERSED

LV:

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