Ex Parte Ramirez et al

Board of Patent Appeals and Interferences

Jul 28, 2011

10758845 (B.P.A.I. Jul. 28, 2011)

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.
10/758,845 01/16/2004 Henry Gene Ramirez FP-0402 6940
36088 7590 07/28/2011
KANG LIM
2491 San Ramon Valley Blvd., #1-229
San Ramon, CA 94583
EXAMINER
WEBER, JONATHAN C
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
07/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HENRY GENE RAMIREZ and GABRIEL A. RAMIREZ
____________________

Appeal 2010-002108
Application 10/758,845
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, PHILLIP J. KAUFFMAN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002108
Application 10/758,845
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 4-13 under 35 U.S.C. § 112, first paragraph, as lacking an
enabling disclosure and under 35 U.S.C. § 103(a) as unpatentable over
Jamison (US 5,970,879, issued Oct. 26, 1999). Claims 1-3 are withdrawn
from consideration. We have jurisdiction under 35 U.S.C. § 6(b).

The Invention
Claim 4, reproduced below, is illustrative of the claimed subject
matter.
4. A gun chamber for use with a gun action and barrel, and
configured for accepting a 50 caliber gun cartridge having a
proximal and distal end for propelling a bullet of a pre-
determined weight, the gun chamber comprising:
a case section proximal to the gun action and configured
for housing a cartridge case having a diameter of approximately
0.688 inches at the distal end;
a free bore section proximal to the barrel and distal end
of the cartridge case;
a shoulder section at the proximal end angling inward
from the case section; and
a neck portion located between the shoulder section and
the free bore section wherein the neck portion is configured for
accepting a cartridge having a mouth with a bore diameter of
approximately .510 inches for accepting a bullet; and
wherein the length of the case section is dependant [sic]
upon water weight volume of the cartridge case, the bore
diameter of the gun barrel, and the weight of the bullet.

SUMMARY OF DECISION
We AFFIRM.

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OPINION
Enablement
In relevant part, independent claims 4 and 9 require a gun chamber
having a case section with a length “[dependent] upon water weight volume
of the cartridge case, the bore diameter of the gun barrel, and the weight of
the bullet.” The Examiner rejected claims 4 and 9 because “[t]here is no
indication, in the specification or claims, as to how the length of the case
depends on these variables, and further, what value might be specified by
these variables.” Ans. 3. Accordingly, the first issue in this appeal is
whether the Specification has a disclosure sufficient to enable a person of
ordinary skill the in art to make a case section with a length “[dependent]
upon water weight volume of the cartridge case, the bore diameter of the gun
barrel, and the weight of the bullet” without undue experimentation.
The enablement requirement seeks to assure that a person skilled in
the art can make and use the invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The claims do not set forth how
to determine the case section length. Thus, we turn to the Specification.
The passages cited by Appellants (paras. [0019], [0027], [0030], table at
Spec. pp. 12-13)1 do not describe determining the case length using the
listed variables. The table2 cited by Appellants appears to show some
relevant information (i.e., water weight, bore size, and bullet weight
variables3), but the table shows the variables calculating an “Efficiency

1 See App. Br. 6, 8 (summarizing the claimed invention), 9 (incorporating by
reference arguments from a reply to final office action mailed Mar. 17, 2008
at p. 5, directing attention to the table at pp. 12-13 of the Specification).
2 “Efficiency Ratings of Cartridge Embodiments with 30 Degree Shoulder”
3 As defined in the table, water weight is the weight of the water that would
fill a cartridge case, in grains (7000 grains = 1 lb), bore size is the diameter
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Application 10/758,845
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Rating,” not the length of the case section. Further, the table is limited to 30
degree shoulders; it is unclear what the effect of other shoulder angles would
have on these variables. While the table appears to describe a roughly linear
relationship between water weight and case length, this relationship does not
determine the case length based on the bore size or bullet weight as required
by the claims. Indeed, the table suggests that bore size and bullet weight
may not in fact affect the case length4. We are unable to find any disclosure
in the Specification where the length of the case is determined using the
water weight, bore size, and bullet weight. Accordingly, the Specification
provides no examples or guidance as to how to determine a case length
based on water weight, bore size, and bullet weight.
The Wadsworth declaration contends that there are infinite
combinations of dimensions available to create a cartridge because there are
many variables to consider. See Decl. of Wadsworth, para. 5. For example,
Wadsworth states that the water weight variable takes into consideration the
volume of the casing but a particular case volume can be enclosed by several
shapes, depending on the variables listed in paragraphs 5 and 6 of the
declaration, even considering the variables fixed by the claims. As such, we
find that by varying taper, necking, wall thickness, or the one of the other
variables discussed in Wadsworth, one could come up with nearly infinite
possible casing lengths for a particular water weight. Thus, significant
experimentation would be required to determine what case length to use for

of the bullet, in thousandths of an inch, and bullet weight is the weight of the
bullet itself, in grains. See also Spec., para. [0027].
4 For example, with a water weight of 139.5 grains, a bore diameter of 510
thousandths of an inch, and a bullet weight varying from 500 to 650 grains,
the case length remains at 1.9 inches. As such, the case length of 1.9” does
not depend on bullet size, as required by claim 4.
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any given water weight and bullet weight combination. Consequently, we
do not find that the disclosure in the Specification would allow one of
ordinary skill to determine the relationship between case length, water
weight, bore size, and bullet weight, without undue experimentation in view
of the complexity of cartridge design.
Independent claims 4 and 9 purport to cover a gun chamber
configured to accept any 50 caliber cartridge having a cartridge case
diameter of approximately 0.688 inches and bore of 0.510 inches. The
dependent claims add additional restrictions, but do not significantly limit
the vast number of variables that must be considered in cartridge and
chamber design. See, e.g., Wadsworth, paras. 5-6 (“for any given caliber,
there are infinite combinations of dimensions available to design a gun
cartridge”). Accordingly, the claims are broad and read on a large number
of gun chamber configurations for a large number of cartridge designs.
The weight of the record supports a finding that, in view of the
Specification, it would require undue experimentation to determine how “the
length of the case section … [is dependent] upon water weight volume of the
cartridge case, the bore diameter of the gun barrel, and the weight of the
bullet.” Accordingly, we sustain the Examiner’s rejection of claims 4-13 as
lacking an enabling disclosure.
Obviousness
The Examiner found that Jamison describes a gun chamber having the
claimed structure, except for a 50 caliber cartridge chamber having the
particular measurements and ranges claimed. Ans. 4-5. The Examiner
found that the length of the case section is inherently dependent upon the
water weight of the case, the bore diameter of the barrel, and the weight of
the bullet. Ans. 4. The Examiner also found that 50 caliber cartridges are
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“known to be within the ranges claimed” and that it would have been
obvious to provide “those values for a 50-caliber cartridge.” Ans. 5.
Appellants argue that Jamison describes that the length of the case is
dependent on the diameter of the bullet, not the weight of the bullet or the
water weight of the case. App. Br. 13. Accordingly, the second issue in this
appeal is whether the Examiner has shown that Jamison renders obvious a
gun chamber with a case section having a length “[dependent] upon water
weight volume of the cartridge case, the bore diameter of the gun barrel, and
the weight of the bullet.”
“Inherency … may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA
1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939))
(emphasis added). Thus, to permit us to sustain the Examiner’s finding that
the length of the case is inherently dependent on the water weight volume,
bore diameter, and weight of the bullet, the record “must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991).
From the table on pages 12 and 13 of the Specification, it is not clear
that the length of the case is necessarily dependent on the bore diameter and
bullet weight. For example, a bullet’s weight could be 650 grains, but the
case length could be anywhere from 1.9” to 2.5”. As such, the length of the
case is not necessarily dependent on the weight of the bullet. Thus, we do
not sustain the Examiner’s finding of inherency.
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The Examiner further states that it would have been obvious to
“provide those values for a 50-caliber cartridge.” Ans. 5 (discussing
“discovering an optimum value of a result effective variable”). However,
the Examiner has not provided evidence that the variables and the effects of
varying them are known to be result-effective. See In re Antonie, 559 F.2d
618, 620 (CCPA 1977) (reversing a rejection when the parameter was not
recognized to be a result effective variable). The Examiner then states that it
would be “‘obvious to try’ to achieve the same design [of Jamison] on
differently-sized gun cartridges … given the small variation in size that such
a modification would entail.” Ans. 5. However, the Examiner has not
provided evidence or reasoning to suggest that the possible approaches to
solve the problem are “known and finite” or that one of ordinary skill had
“good reason to pursue the known options within his or her technical grasp.”
See Takeda Chem. Indus. v. Alphapharm Pty., 492 F.3d 1350, 1359 (Fed.
Cir. 2007) (discussing the requirements of an “obvious to try”-type
obviousness rejection). While parameters such as case length, water weight,
bullet weight, and shoulder angle are known to describe cartridges, this does
not mean that every cartridge configuration is obvious to try, without
evidence or reasoning tending to demonstrate the obviousness of the
particularly claimed configuration. The Examiner has not provided such
evidence or reasoning.
Lastly, the Examiner states that the “length of the case section is
dependent upon …” limitation of independent claims 4 and 9 is merely an
intended use and a product-by-process limitation and thus “not pertinent in
this instance to the patentability of this product claim.” Ans. 8-9. However,
claim 4 requires a case section of a gun chamber having a length determined
by the water weight volume of the cartridge case, the bore diameter of the
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Application 10/758,845
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gun barrel, and the weight of the bullet. Similarly, claim 9 requires a step of
forming a length of a case section of a gun chamber based on the water
weight volume of the cartridge case, the bore diameter of the gun barrel, and
weight of the bullet. Both claims recite limitations material to determining
the patentability of the claim and cannot simply be ignored. Thus we do not
sustain the Examiner’s rejection of claims 4-13 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 4-13 under 35
U.S.C. § 112, first paragraph. We reverse the Examiner’s decision rejecting
claims 4-13 under 35 U.S.C. § 103(a) as unpatentable over Jamison.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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