Ex parte Moore

Board of Patent Appeals and Interferences

Oct 21, 1998

08215467 (B.P.A.I. Oct. 21, 1998)

Application for patent filed March 21, 1994.1
1
Paper No. 19
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MICHAEL A. MOORE
______________
Appeal No. 96-1874
Application 08/215,4671
_______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH and CARMICHAEL, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1 and 2. Claims 3-5
Appeal No. 96-1874
Application 08/215,467
2
have been indicated as containing allowable subject matter.
Claims 6-8 have been allowed by the examiner. Although the
appeal is nominally directed to claims 1-5, only claims 1 and
2 have been rejected by the examiner, and therefore, we
consider the appeal as limited to claims 1 and 2.
The disclosed invention pertains to a protective cover
for a firearm having a percussion cap mounted to a nipple
thereon and a hammer for striking the percussion cap. The
cover has a handle joined to it by a cantilevered connection
which permits the cover to be bent out of alignment when force
is applied to the handle. A loop of elastomeric material is
connected to the handle and is attachable to a portion of the
firearm.
Representative claim 1 is reproduced as follows:
1. A protective cover for a firearm having a percussion
cap mounted to a nipple thereon and a hammer for striking said
percussion cap, said cover being removably mounted over said
percussion cap and between said hammer and said cap, said
cover comprising:
a cover extending along a longitudinal axis and being
formed from a waterproof material which is sufficiently
resilient so as to permit said cover to be bendable off of
that longitudinal axis,
said cover being closed at one end thereof and open at
Appeal No. 96-1874
Application 08/215,467
3
another end with an interior cavity being defined
therebetween,
said interior cavity being sized so as to fit closely
over said nipple,

a handle joined to said cover by a cantilevered
connection at a point between the ends of said cover and
extending substantially perpendicular to said longitudinal
axis for a given length toward a free end,
said cantilevered connection extending for a relatively
short length along said longitudinal axis and said given
length being sufficiently long that application of force to
the free end of said handle will permit said handle to move at
least a portion
of said cover out of alignment with said longitudinal axis,
and
a loop member connected to said handle and formed from
elastomeric material, said loop being dimensioned so as to be
attachable to a portion of said firearm.
The examiner relies on the following references:
Haskins 35,418 May 27, 1862
Lunders 4,485,577 Dec. 04, 1984
Claims 1 and 2 stand rejected under 35 U.S.C. § 103.
As evidence of obviousness the examiner offers Haskins in view
of Lunders.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
Appeal No. 96-1874
Application 08/215,467
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OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the examiner has failed to provide a record
which supports the obviousness of the invention as set forth
in claims 1 and 2. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual deter-
minations set forth in Graham v. John Deere Co., 383 U.S. 1,
Appeal No. 96-1874
Application 08/215,467
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17, 148 USPQ 459, 467 (CCPA 1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
The examiner’s rejection basically takes the position
that Haskins teaches all the features of independent claim 1
except for the loop member. Lunders is cited as teaching a
Appeal No. 96-1874
Application 08/215,467
6
loop member formed of elastomeric material. The examiner
concludes that it would have been obvious to the artisan to
employ the teachings of Lunders on the Haskins cover [answer,
pages 4-5].
Appellant argues that there are two recitations of
claim 1 which are not taught by the prior art combination as
applied by the examiner. First, appellant argues that the
handle in Haskins is not sufficiently cantilevered with
respect to the cover that the application of force at the
handle free end will move a portion of the cover out of
alignment with the longitudinal axis of the rest of the cover.
According to appellant, the examiner’s position that the
Haskins cover inherently possesses this property is without
support in the Haskins disclosure. Second, appellant argues
that the loop member of Lunders is not made from an
elastomeric material. According to appellant, the leather
material used for the Lunders loop is not an elastomeric
material as claimed [brief, pages 5-7].
The examiner simply responds that the Haskins cover
and handle inherently have the properties recited in claim 1,
Appeal No. 96-1874
Application 08/215,467
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and that leather is known to exhibit the elastic properties of
an elastomeric member [answer, pages 5-6].
In our view, the examiner’s factual findings are not
supported by the record in this case, and the examiner’s
rejection has failed to appropriately establish a prima facie
case of obviousness.
With respect to the question of the cantilevered
connection of the handle and whether the Haskins’ device
inherently possesses the property recited in claim 1, we are
constrained to agree with appellant that the examiner has
failed to support his case. Although the question should
properly be whether the property recited in claim 1 would have
been an obvious property to provide to the handle of a
protective cover, this question has never been addressed. The
obviousness issue got lost in the examiner’s position that
Haskins inherently has the property recited in claim 1.
We agree with appellant that there is no clear
indication in Haskins that the handle and cover have the
property recited in claim 1. The position that a force
applied on Haskins’ “handle” A would move a portion of the
Appeal No. 96-1874
Application 08/215,467
8
cover out of alignment with the longitudinal axis of the cover
is pure speculation on the part of the examiner. There is no
indication that the Haskins cover possesses this property, and
we agree with appellant that the Figure 5 embodiment of
Haskins suggests that such a property is not intended for the
Haskins cover. We are not inclined to dispense with an
appropriate showing of evidence where the examiner’s reliance
on inherency does not have clear factual support in the
record.
With respect to the question of the loop being of
elastomeric material, the examiner has again failed to
properly address the question of obviousness. The appropriate
question for review should be whether it would have been
obvious to the artisan to use a loop made of elastomeric
material with the Haskins cover. Instead, this question is
left unaddressed by both the examiner and appellant.
The focus on the elasticity of the material is
misplaced. The claim recites that the loop is made from an
elastomeric
material. An elastomer is a synthetic rubber. Thus, the
Appeal No. 96-1874
Application 08/215,467
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claimed loop is made from a synthetic rubber material. The
leather of Lunders is not an elastomeric material because
leather is not a synthetic rubber. Whether it would have been
obvious within the meaning of 35 U.S.C. § 103 to replace
Lunders’ leather material with an elastomeric material is a
question which has not been briefed by the parties.
Although we cannot say whether there is prior art
available which would suggest the obviousness of claims 1 and
2, we can say that the prior art applied by the examiner does
not support the rejection as formulated by the examiner.
Therefore, the decision of the examiner rejecting claims 1 and
2 under
35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
Appeal No. 96-1874
Application 08/215,467
10
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
JS/cam
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