Ex Parte NygaardDownload PDFPatent Trial and Appeal BoardNov 27, 201714057032 (P.T.A.B. Nov. 27, 2017) Copy Citation 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. 14/057,032 10/18/2013 George M. NYGAARD MNY 0104 PUS 1026 22045 7590 11/29/2017 RROOKS KTTSHMAN P C EXAMINER 1000 TOWN CENTER BERGIN, JAMES S TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER 3641 NOTIFICATION DATE DELIVERY MODE 11/29/2017 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): docketing @brookskushman. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE M. NYGAARD1 Appeal 2016-008222 Application 14/057,032 Technology Center 3600 Before DANIEL S. SONG, JAMES P. CALVE, and LEE L. STEPINA, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Final Office Action rejecting claims 1, 2, 5—12, and 22—32. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant is identified as the real party in interest. Appeal Br. 2. Appeal 2016-008222 Application 14/057,032 CLAIMED SUBJECT MATTER The claims are directed to methods of manufacturing bullets, and in particular, to high-speed methods of making jacketed bullets. Spec. 11. Claims 1 and 22 are independent. Claim 1 is reproduced below. 1. A high-speed, jacketed bullet manufacturing method comprising: providing tubing made of a first material, the tubing defining an inner diameter and an outer diameter; inserting a wire into the tubing to form composite tubular stock, the wire being made of a second material and defining a wire diameter, the first and second materials being different from one another; bonding the inner surface of the tubing to the outer surface of the inserted wire to form bonded tubular stock wherein, after the bonding step, the inner diameter of the tubing is substantially equal to the wire diameter such that, when viewed in section, the wire completely fills the tubing; after the bonding step, cutting the bonded tubular stock to form work-pieces of a desired length; and warm or cold forging the workpieces to form jacketed bullets, wherein the step of forging is performed by a warm or cold forging machine and wherein the machine includes a series of horizontal punches and dies. REJECTION Claims 1,2, 5—12, and 22—32 are rejected under 35 U.S.C. § 103(a) as unpatentable over Amick (US 2011/0203477 Al, pub. Aug. 25, 2011), Klebl (US 3,894,675, iss. July 15, 1975), and Appellant’s Admission of Prior Art at paragraph 87 of the Specification. ANALYSIS Appellant argues claims 1, 2, 5—12, and 22—32 as a group. Appeal Br. 7—9. We select claim 1 as representative, with claims 2, 5—12, and 22—32 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). 2 Appeal 2016-008222 Application 14/057,032 The Examiner finds that Amick discloses a method of warm or cold forging workpieces to form jacketed bullets as recited in claim 1, except for the method of forming composite tubular stock of first and second materials by inserting a metal wire into a tubing and cold forging with a machine that has a series of horizontal punches and dies. Final Act. 2—3. The Examiner finds that Klebl discloses forming copper tubing around a steel wire to form a rigid bond between the copper tubing and the steel core. Id. at 3. The Examiner determines it would have been obvious to modify the method of Amick by bonding the copper tube to the steel wire, as taught by Klebl, to form a flawless, rigid bond between the copper tubing and a steel core to prevent any potential for separation of the jacket from the bullet core upon firing of the bullet. Id. at 3; Ans. 7. The Examiner also finds that Appellant’s Specification discloses that the step of cold forging such workpieces is known in the art to be done with a series of horizontal dies 44 and corresponding punches 46 at forging stations 52, 54, 56, 58. Final Act. 3 (citing Spec. 1 87). The Examiner finds this statement in the Specification “describes] the state of the art of bullet manufacturing automation technology at the time the invention was filed.” Id. at 3, 4. The Examiner determines it would have been obvious to perform Amick’s cold forging step with a cold forging machine that includes a series of horizontal punches and dies to automate Amick’s bullet manufacturing process using a known common known design of a cold forging machine to increase the speed of the process. Id. at 3^4. In the Answer, the Examiner clarifies that Appellant’s Specification is treated as an admission of a known common design used in the metalworking arts for warm or cold forging of workpieces, and not specifically for forming jacketed bullets. Ans. 5. 3 Appeal 2016-008222 Application 14/057,032 Appellant argues that the Examiner’s Answer effectively asserts new grounds of rejection (1) by treating paragraph 87 of the Specification as an admission of the state of art for bullet manufacturing in the Final Action and then treating it as an admission of machinery used for warm or cold forging in the metalworking arts in the Answer and (2) by rewriting the reasoning and rationale for combining Amick and Klebl from the Final Action to the Answer. Reply Br. 1—6. The issue of whether the Answer contains a new ground of rejection is not appealable to the Board. 37 C.F.R. § 41.40(a) ( “Any request to seek review of the primary examiner’s failure to designate a rejection as a new ground of rejection in an examiner’s answer must be by way of a petition to the Direction under §1.181... within two months from the entry of the examiner’s answer and before the filing of any reply brief.”). Appellant’s filing of a Reply Brief effectively waives any arguments in this regard. Id. The Examiner’s reasons for combining the teachings of Amick with those of Klebl and Appellant’s Admitted Prior Art in the Specification are supported by rational underpinning. The Examiner finds that Klebl teaches the steps of forming clad iron wire by inserting a steel wire core into copper tubing and bonding the elements together to form a flawless rigid bond between the copper tubing and steel core, and reasons correctly that it would have been obvious to include these steps in Amick’s method for the similar results of forming a flawless rigid bond between the copper tubing and steel core to prevent any potential for separation of the jacket from the bullet core when the bullet is fired. Final Act. 3. This rationale relies on the express teachings of Klebl of such bonding. See Klebl, 3:42—45, cited in Final Act. 3; see KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). 4 Appeal 2016-008222 Application 14/057,032 In this regard, Amick’s method teaches the benefits of forming bullets from “clad wire,” which is defined as “a composite, bimetallic wire having an inner core of a first metal surrounded by an outer layer, or cladding, of a second metal that is bonded to the inner core and that is different than the inner core.” Amick H 22, 35. Amick provides examples of clad wire to be used in Amick’s method and sizing of different wire diameter for particular caliber bullets. Id. ff 36-42; see Final Act. 2 (citing id. ]Hf 22, 36, 39-42). The Examiner also finds that Appellant’s Specification discloses the utility of a known common apparatus design for cold forging or heading as having horizontal dies 44 and corresponding punches 46 located at forging stations 52, 54, 56, 58 in paragraph 87 of the Specification and determines correctly that it would have been obvious to use such a machine to automate Amick’s bullet manufacturing process by using such a common design of a cold forging machine known in the art to increase the speed of Amick’s bullet manufacturing process. Final Act. 3^4. The use of a known device or technique from one field to provide similar improvements to similar devices and methods in the same way is likely obvious unless its actual application is beyond the level of ordinary skill in the art. KSR, 550 U.S. at 417. In this regard, Amick teaches that its method 200 includes a working step 210 by which the clad wire is formed into the configuration of a bullet by processes that include heading, swaging, and rolling. Amick 149; see Final Act. 2 (citing id. 45—50 as disclosing warm or cold forging steps). The Examiner reasons correctly that Appellant’s Admitted Prior Art cold forging machinery would have been obvious to use in Amick’s method. See also Spec. H 19 (the two most common bullet-forming methods are casting and swaging), 23 (swaging is a cold forming process of shaping metal). 5 Appeal 2016-008222 Application 14/057,032 The presence of articulated rational underpinnings for combining the teachings of Amick with Klebl and Appellant’s Admitted Prior Art also addresses Appellant’s hindsight arguments. Appeal Br. 8; Reply Br. 7—7; see In re Cree, 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (hindsight argument is of no moment where the Examiner provides a sufficient, non-hindsight reason to combine the references). Appellant’s arguments that it would not have been obvious to use a cold forging or heading apparatus in the claimed method because it is used in non-analogous metal working arts, and there is insufficient explanation of why a skilled artisan would have been motivated to combine the references’ teachings (Appeal Br. 8; Reply Br. 5) does not apprise us of error in the Examiner’s stated reasons for combining teachings of the referenced in the manner discussed above. The Examiner has relied on the express teachings of Klebl and Appellant’s Admitted Prior Art in the Specification as to the advantages of each respective method to combine these teachings in Amick’s method for similar beneficial results. See KSR, 550 U.S. at 417. Amick’s teachings also support the Examiner’s reasoning as discussed above. Thus, we sustain the rejection of claim 1, with claims 2, 5—12, and 22—32 falling therewith. DECISION We affirm the rejections of claims 1, 2, 5—12, and 22—32. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation