Ex Parte Richeson

Board of Patent Appeals and Interferences

Aug 26, 2009

11321573 (B.P.A.I. Aug. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LELAND JAY RICHESON
____________

Appeal 2009-004732
Application 11/321,573
Technology Center 3600
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Decided: August 26, 2009
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Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Leland Jay Richeson (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-9. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellant’s invention is drawn toward a gunstock assembly for a
firearm including a gunstock 101 having a cavity 102, and a laser sighting
device 104 positioned within the cavity 102. Spec. 3, ¶ [16] and fig. 1B.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A gunstock assembly, comprising:

a laser sighting device; and

a gunstock comprising a cavity containing the laser
sighting device, the gunstock being for a long, shoulder-
fired firearm.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Marshall US 3,813,795 Jun. 4, 1974
Moore US 5,531,040 Jul. 2, 1996
Paldino US 5,694,713 Dec. 9, 1997

The following rejections are before us for review:
The Examiner rejected claims 1 and 7-9 under 35 U.S.C. § 102(b) as
anticipated by Marshall.
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The Examiner rejected claims 1, 2, and 7-9 under 35 U.S.C. § 102(b)
as anticipated by Paldino, or in the alternative, as unpatentable under 35
U.S.C. § 103(a) over Paldino.
The Examiner rejected claims 1 and 3-9 under 35 U.S.C. § 102(b) as
anticipated by Moore.

THE ISSUE
Has Appellant shown that each of Marshall, Paldino, and Moore fails
to teach a gunstock “for a long, shoulder-fired firearm”?

SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Marshall teaches a laser beam firing rifle that resembles an
actual rifle including a laser transmitter 4 that is built within the
rifle 1. Marshall, col. 2, ll. 45-47 and fig. 1.
2. Marshall further teaches that when the trigger is pressed rifle 1
fires a laser beam. Marshall, col. 2, ll. 47-49.

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3. An ordinary and customary meaning of the term “firearm” is “a
weapon from which a shot is discharged by gunpowder.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 438 (10th Ed.
1997).
4. Paldino discloses a laser sight device mounted internally of a
handgun (gunstock cavity). Paldino, col. 2, ll. 8-9. See also
figs. 1, 2.
5. The handgun of Paldino uses a recoil spring guide rod 100 to
contain the laser sight device. Paldino, Abstract; col. 3, l. 47;
col. 4, l. 5; and fig. 2.
6. Paldino discloses an optical window 28 of the laser sight device
that extends beyond the cavity of a fore end of the gunstock.
Paldino, fig. 1.
7. Paldino further discloses an actuator switch 23 that, when
actuated, causes the laser sighting device to emit a laser beam.
Paldino, col. 3, ll. 44-45 and fig. 1.
8. Paldino appears to disclose a COLT TM semi-automatic that is
known to be available in both unitary-body constructions as
well as at least two mating piece constructions. See Paldino,
fig. 1.
9. Moore discloses a laser sight device mounted internally of an
automatic pistol. Moore, Abstract. The laser sight device is
located within the recoil spring guide tube 32, which is located
within the automatic pistol (gunstock cavity). Moore, col. 3, ll.
58-60; and figs. 5, 13.
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10. The laser sight device of Moore is easily adaptable to a large
variety of weapons using recoil spring guide rods or tubes.
Moore, col. 13, ll. 22-25.

PRINCIPLES OF LAW
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros, Inc.. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
The Supreme Court stated that in cases involving more than the
simple substitution of one known element for another, or the mere
application of a known technique to a piece of prior art ready for the
improvement, it will be necessary to "determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue." Id. at 417-418. The Court noted that "[t]o facilitate
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review, this analysis should be made explicit." Id. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.")

OPINION
The anticipation rejection based on Marshall
Appellant argues that Marshall does not teach a gun stock having a
cavity that is “for a long, shoulder-fired firearm” because the rifle of
Marshall is not a firearm. Br. 3. Pointing to the Abstract of Marshall, the
Examiner responds that Marshall specifically teaches a “rifle or light
machine gun.” Ans. 6. We disagree. As noted above, Marshall teaches a
laser beam firing rifle that resembles an actual rifle. FF 1. Further, Marshall
teaches that when the trigger is pressed rifle 1 fires a laser beam. FF 2. In
contrast, an ordinary and customary meaning of the term “firearm” is “a
weapon from which a shot is discharged by gunpowder.” FF 3. Hence, we
agree with Appellant that the rifle of Marshall does not constitute a
“firearm.”
Accordingly, the rejection of claims 1 and 7-9 under 35 U.S.C.
§ 102(b) as anticipated by Marshall cannot be sustained.

The anticipation rejection based on Paldino
Appellant argues that Paldino does not teach a gunstock having a
cavity that is “for a long, shoulder-fired firearm” because the weapon of
Paldino is a handgun. Br. 6. The Examiner responds that the gunstock of
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Paldino is capable of being used with a “long, shoulder-fired firearm.” Ans.
7. However, the Examiner provides no other evidence or reasoning that
might be construed as support for finding that the gunstock of Paldino is
capable of being used with a “long, shoulder-fired firearm.” The Examiner’s
finding that the gunstock of Paldino is capable of being used with a “long,
shoulder-fired firearm” does not go far enough to show that the gunstock of
a handgun can be used with a “long, shoulder-fired firearm,” i.e., a rifle. For
example, the length of a handgun gunstock is much shorter than that of a
rifle (long, shoulder-fired firearm) gunstock. Without sufficient evidence or
reasoning to support the finding that the gunstock of Paldino is configured
for use with a “long, shoulder-fired firearm,” i.e., a rifle, Paldino does not
anticipate claims 1, 2, and 7-9.
Accordingly, the rejection of claims 1, 2, and 7-9 under 35 U.S.C.
§ 102(b) as anticipated by Paldino likewise cannot be sustained.

The obviousness rejection based on Paldino
Appellant argues that the Examiner has not provided reasoning with a
rational underpinning to support the conclusion that it would have been
obvious to a person of ordinary skill in the art that the gunstock of Paldino is
capable of being used with “a long, shoulder-fired firearm.” Br. 7. We
agree. The Examiner merely makes a conclusory statement that the
gunstock of Paldino is capable of being used with a “long, shoulder-fired
firearm.” Ans. 7. The Examiner’s finding does not go far enough to support
the conclusion that it would have been obvious to a person of ordinary skill
in the art that the gunstock of Paldino is configured for use with a “long,
shoulder-fired firearm.”
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Therefore, in light of the above, we conclude that the Examiner has
not discharged the initial burden of establishing a prima facie case of
obviousness of the subject matter of claims 1, 2, and 7-9. However,
although Paldino discloses a laser sight device mounted internally of a
handgun, we also find that the handgun of Paldino uses a recoil spring guide
rod 100 to contain the laser sight device. FF 4, 5. A person of ordinary skill
in the art of firearms would have understood that a large variety of firearms,
including shoulder-fired firearms, use recoil spring guide rods. An artisan
must be presumed to know something about the art apart from what the
references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Hence, a person of ordinary skill in the art of firearms would have readily
known to modify Paldino’s gunstock such that it can be used with other
types of firearms using recoil guide rods, namely, a “long, shoulder-fired
firearm.”
For the reasons discussed above, we conclude that the recitation of “a
long, shoulder-fired firearm” in claim 1 does not in fact distinguish the
subject matter of claim 1. With respect to claim 2, Paldino discloses an
optical window 28 of the laser sight device that extends beyond the cavity of
a fore end of the gunstock. FF 6. Regarding claim 7, Paldino discloses an
actuator switch 23 that, when actuated, causes the laser sighting device to
emit a laser beam. FF 7. Finally, with respect to claims 8 and 9, Paldino
appears to disclose a COLT TM semi-automatic that is known to be available
in both unitary-body constructions as well as at least two mating piece
constructions. FF 8.
Accordingly, the rejection of claims 1, 2, and 7-9 under 35 U.S.C. §
103(a) as unpatentable over Paldino is affirmed. However, we denominate
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the affirmance of this rejection as a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), because our reasoning to support the conclusion of
obviousness is different from that articulated by the Examiner.

The anticipation rejection based on Moore
Appellant argues that Moore does not teach a gunstock having a
cavity that is “for a long, shoulder-fired firearm” because the weapon of
Moore is a handgun. Br. 8. The Examiner responds that the gunstock of
Moore is capable of being used with a “long, shoulder-fired firearm.” Ans.
7. Pointing to col. 1, ll. 34-36 and col. 13, ll. 23-25 of Moore, the Examiner
concludes that Moore “clearly contemplates incorporating a laser sight
device into a long, shoulder-fired firearm.” Id. We disagree. Moore teaches
a laser sight device located within the recoil spring guide tube 32 of an
automatic pistol. FF 9. Moore further teaches that the laser sight device is
easily adaptable to a large variety of weapons using recoil spring guide rods
or tubes. FF 10. However, Moore does not teach explicitly or inherently
that the laser sight device is adaptable to a “long, shoulder-fired firearm.”
For example, the variety of weapons to which Moore refers can equally be
other types of handguns.
In conclusion, we find that the Examiner has not provided sufficient
evidence to support the finding that the gunstock of Moore is configured for
use with a “long, shoulder-fired firearm.” Accordingly, the rejection of
claims 1 and 3-9 under 35 U.S.C. § 102(b) as anticipated by Moore cannot
be sustained.

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NEW GROUNDS OF REJECTION
We make the following additional new grounds of rejection pursuant
to 37 C.F.R. § 41.50(b).
Claims 1 and 3-9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Moore.
As noted above, Moore discloses a laser sight device mounted
internally of a handgun. We also find that the handgun of Moore uses a
recoil spring guide tube 32 to contain the laser sight device. FF 9. Moore
further teaches that the laser sight device is easily adaptable to a large
variety of weapons using recoil spring guide rods or tubes. FF 10. A person
of ordinary skill in the art of firearms would have understood that a large
variety of firearms, including shoulder-fired firearms, use recoil spring guide
rods. Accordingly, the same person of ordinary skill in the art of firearms
would have readily known to modify Moore’s gunstock such that it can be
used with other types of firearms using recoil guide rods, namely, a “long,
shoulder-fired firearm.”
For the reasons discussed above, we find that the recitation of “a long,
shoulder-fired firearm” in claim 1 does not in fact distinguish the subject
matter of claim 1. With respect to claims 3-9, although we decline to reject
every claim under our discretionary authority under 37 C.F.R. § 41.50(b),
we emphasize that our decision does not mean the remaining claims are
patentable. Rather, we merely leave the patentability determination of these
claims to the Examiner. See MPEP § 1213.02.
In light of the above, we conclude that claims 1 and 3-9 are
unpatentable under 35 U.S.C. § 103(a) over Moore.

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CONCLUSIONS
Appellant has shown that the Examiner erred in determining that each
of Marshall, Paldino, and Moore teaches a gunstock “for a long, shoulder-
fired firearm.”
We enter a new ground of rejection of claims 1, 2, and 7-9 under 35
U.S.C. § 103(a) as unpatentable over Paldino and a new ground of rejection
of claims 1 and 3-9 under 35 U.S.C. § 103(a) as unpatentable over Moore.

DECISION
The Examiner’s decision to reject claims 1 and 7-9 under 35 U.S.C.
§ 102(b) as anticipated by Marshall is reversed.
The Examiner’s decision to reject claims 1, 2, and 7-9 under 35
U.S.C. § 102(b) as anticipated by Paldino is reversed.
The Examiner’s decision to reject claims 1 and 3-9 under 35 U.S.C.
§ 102(b) as anticipated by Moore is reversed.
The Examiner’s decision to reject claims 1, 2, and 7-9 under 35
U.S.C. § 103(a) as unpatentable over Paldino is affirmed. For the reasons
discussed above, we denominate our affirmance of the rejection of claims 1,
2, and 7-9 as new grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
We enter new grounds of rejection of claims 1 and 3-9 under 35
U.S.C. § 103(a) as unpatentable over Moore.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

mls

JOSEPH P. CURTIN
1469 N.W. MORGAN LANE
PORTLAND, OR 97229