11317647 (P.T.A.B. Aug. 19, 2013)

Ex Parte Moore et al

Patent Trial and Appeal BoardAug 19, 2013

11317647 (P.T.A.B. Aug. 19, 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. 11/317,647 12/22/2005 Larry Moore 59898.0005 1935 20322 7590 08/20/2013 SNELL & WILMER L.L.P. (Main) 400 EAST VAN BUREN ONE ARIZONA CENTER PHOENIX, AZ 85004-2202 EXAMINER LEE, BENJAMIN P ART UNIT PAPER NUMBER 3641 MAIL DATE DELIVERY MODE 08/20/2013 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 LARRY MOORE and RANDY ALLEN HOFF ____________________ Appeal 2011-009266 Application 11/317,647 Technology Center 3600 ____________________ Before: MICHAEL C. ASTORINO, JOHN W. MORRISON, and ADAM V. FLOYD, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009266 Application 11/317,647 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 19, 22-29, 32, and 33. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED INVENTION The claims are related to an apparatus for aiding the alignment of a scope of a firearm. Spec. 2, para. [0001]. Claim 1, reproduced below, is illustrative of the claimed subject matter: l. An apparatus for aiding in the alignment of a scope of a firearm, the apparatus comprising: a light generation device attachable to the firearm, the light generation device for generating a reference beam; and a level indicator, wherein the reference beam is level with respect to a horizontal plane when the level indicator indicates a level state. REFERENCES Flanagan Eggenschwyler Lee Breda Thummel US 3,112,567 US 3,801,205 US 5,367,779 US 5,566,459 US 6,295,753 B1 Dec. 3, 1963 Apr. 2, 1974 Nov. 29, 1994 Oct. 22, 1996 Oct. 2, 2001 Liao Varshneya US 2002/0073561 A1 US 2002/0134000 A1 Jun. 20, 2002 Sep. 26, 2002 Appeal 2011-009266 Application 11/317,647 3 REJECTIONS 1. Claims 1, 2, 6, 8-14, and 32 are rejected under 35 U.S.C. § 102(b) as being anticipated by Thummel. 2. Claims 19, 22, 24-28, 31, and 33 are rejected under 35 U.S.C. § 102(b) as being anticipated by Lee. 3. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Thummel and Breda. 4. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Thummel and Varshneya. 5. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Thummel and Flanagan. 6. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Thummel and Lee. 7. Claims 3 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Thummel and Eggenschwyler. 8. Claim 29 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee and Eggenschwyler. 9. Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee and Liao. ANALYSIS 1. Anticipation by Thummel Appellants argue claims 1, 2, 6, 8-14, and 32 as a group and we select independent claim 1 as the representative claim. Claims 2, 6, 8-14, and 32 stand or fall with claim 1. See App. Br. 5-7; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2011-009266 Application 11/317,647 4 Addressing claim 1, the Examiner finds that Thummel discloses all of the recited claim limitations, including “a level indicator, wherein the reference beam is level with respect to a horizontal plane when the level indicator indicates a level state.” Ans. 5. The Examiner then finds that that “Thummel teaches a three point laser alignment system that aligns the laser with the longitudinal axis of the firearm which constitutes a ‘level indicator’ and functions as a means for leveling of the ‘reference beam’(col. 4, lines 15-34).” Id. Appellants argue that “Thummel's device gives no indication as to whether the system is level: ‘Examiner agrees that the laser alignment device of Thummel is not meant to level the barrel with respect to a horizontal plane.’” App. Br. 6 citing Fin. Rej. 2 (dated Feb. 24, 2010). We agree with Appellants. The three point system of Thummel does not disclose a level indicator “wherein the reference beam is level with respect to a horizontal plane when the level indicator indicates a level state” as recited in claim 1. The three point system of Thummel only provides alignment with the barrel, but does not provide any indication with respect to the horizontal plane. The Examiner further explains his position by stating the ‘level indicator’, as claimed, is not limited to any specific device or structure and the straight elongated form of the device of Thummel constitutes a ‘level indicator’ (i.e. one can use the length of the device as a means to determine, visually, when viewed from a distance relative to the ground whether or not the device is approximately level). Ans. 19. The Examiner appears to assert that it is not the three point alignment system, but rather of the elongated form of Thummel that is the level indicator. Appellants respond “[n]owhere in Thummel, however, is it explained how a user would know when, even after making adjustments using the three-point alignment system, Thummel's device would be true Appeal 2011-009266 Application 11/317,647 5 with the axis of the gun barrel or the horizontal plane.” Reply Br. 2. We agree with Appellants. Using the “elongated form” to visually determine distance to the ground assumes that the ground is level. However, without some means to determine if the ground is level, it would be impossible to determine if “the reference beam is level with respect to a horizontal plane” as recited by claim 1. The Examiner has erred by finding that the three point alignment system of Thummel or the elongated form of the device of Thummel is a “level indicator” as recited in claim 1. Thus, we do not sustain the rejection of independent claim 1 or claims 2, 6, 8-14, and 32 which stand or fall with claim 1. 2. Anticipation by Lee Appellants argue claims 19, 22, 24-28, and 33 as a group and we select independent claim 19 as the representative claim. Claims 22, 24-28, and 33 stand or fall with claim 19. See App. Br. 7-11; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants argue claim 33 separately. Addressing claim 19, the Examiner finds that Lee teaches all of the recited limitations including “the light generation device attachable to a provided firearm,” and states, “[n]ote that the light generation device, within the housing, is capable of being attached to a firearm via any of various means which may include tape, clamps etc.” Ans. 8. Appellants argue that there is nothing inherent in Lee “that discloses or suggests using its device in such a manner, nor does the Examiner provide any explanation as to how Lee's device would be ‘taped or clamped’ to a gun barrel in order to function properly.” App. Br. 9. We agree with Appellants. The Examiner has erred by not explaining how Lee discloses the use of tape or clamps that may be used to attach the housing to a firearm. As such, we do not sustain the Appeal 2011-009266 Application 11/317,647 6 rejection of claim 19, claims 22, 24-28, and 33 which stand or fall with claim 19, as anticipated by Lee. Addressing claim 33 only, claim 33 requires that the light generation device includes a “bore connector, wherein the light generation device is attachable to the firearm by inserting the bore connector in a bore of the firearm.” App. Br. Claims App’x. The Examiner finds Lee discloses that the light generation device includes a bore connector and that the light generation device is attachable to the firearm by inserting the bore connector in a bore of the firearm. Note that Lee teaches an embodiment where the light generation and housing are attached to a component (item 9 of Lee figures 3 and 4) that is capable of functioning in the manner claimed, since it (item 9) can be inserted into the bore of ‘a firearm’. Additionally, since no specific firearm is claimed, the component disclosed as item 9 is capable of being inserted (into any of various size firearm bores) in the same manner as the ‘bore connector’ as claimed. Ans. 10. Appellants argue “there is no support for this statement anywhere in Lee, and thus the basis for rejecting claim 33 is mere conjecture.” App. Br. 11. We agree with Appellants. The Examiner fails to explain how the rectangular item 9 of Lee would act as a bore connector and become attached to a firearm if it were inserted into the circular bore of a firearm. Merely inserting a rectangular object in a square hole would not attach the light generation device to the firearm. As such, the Examiner has erred in finding that item 9 of Lee is capable of being used as a bore connector. Thus, we do not sustain the rejection of claim 33 as anticipated by Lee. Appeal 2011-009266 Application 11/317,647 7 3-9. Obviousness rejections For each of the obviousness rejections, Appellants argue that “neither Thummel [n]or Lee disclose[s] each and every limitation of independent claims 1or 19.” App. Br. 14. As discussed above, we do not sustain the rejection of claim 1 as anticipated by Thummel. None of the Examiner’s findings for rejections 3-7 cure the deficiency of Thummel to disclose “a level indicator, wherein the reference beam is level with respect to a horizontal plane when the level indicator indicates a level state.” See Ans. 11-14. As such, we do not sustain these obviousness rejections. In particular, (i) we do not sustain the rejection of claims 4 and 5 as unpatentable over Thummel and Breda; (ii) we do not sustain the rejection of claim 7 as unpatentable over Thummel and Varshneya; (iii) we do not sustain the rejection of claim 15 as unpatentable over Thummel and Flanagan; (iii) we do not sustain the rejection of claims 16 and 17 as unpatentable over Thummel and Lee; and (iv) we do not sustain the rejection of claims 3 and 18 as being unpatentable over Thummel and Eggenschwyler. As discussed above, we do not sustain the rejection of claim 19 as anticipated by Lee. None of the Examiner’s findings for rejections 8 and 9 cure the deficiency of Lee to disclose a “the light generation device attachable to a provided firearm.” Ans. 15-18. As such, we do not sustain these obviousness rejections. In particular (i) we do not sustain the rejection of claim 29 as unpatentable over Lee and Eggenschwyler; and (ii) we do not sustain the rejection of claim 23 as unpatentable over Lee and Liao. Appeal 2011-009266 Application 11/317,647 8 DECISION For the above reasons, the Examiner’s rejections of claims 1-19, 22- 29, 32, and 33 are reversed. REVERSED hh