Ex Parte Richeson

Board of Patent Appeals and Interferences

Sep 20, 2011

11321573 (B.P.A.I. Sep. 20, 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.
11/321,573 12/28/2005 Leland Jay Richeson 129.0001 8169
35987 7590 09/20/2011
JOSEPH P. CURTIN
1469 N.W. MORGAN LANE
PORTLAND, OR 97229
EXAMINER
HAYES, BRET C
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
09/20/2011 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 LELAND JAY RICHESON
____________

Appeal 2011-002594
Application 11/321,573
Technology Center 3600
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge STAICOVICI

Opinion Concurring filed by Administrative Patent Judge McCARTHY

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/321,573

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STATEMENT OF THE CASE1
Leland Jay Richeson (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 1,
2, and 7-9 as unpatentable over Paldino (US 5,694,713, issued Dec. 9, 1997)
and Harvey (US 2,571,132, issued Oct. 16, 1951) or Allyn (US 3,058,399,
issued Oct. 16, 1962) and claims 1 and 3-9 as unpatentable over Moore (US
5,531,040, issued Jul. 2, 1996) and Harvey or Allyn. We have jurisdiction
over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to 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, para. [16] and fig. 1B.
Claims 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 rifle.

1 This is Appellant’s second appeal before the Board of Patent Appeals
and Interferences. In the first appeal (2009-004732, Decision mailed August
26, 2009) (hereafter “Decision,”) the Examiner’s decision was affirmed as to
then-pending claims 1, 2 and 7-9 and reversed as to claims 3-6. Specifically,
the rejection of claims 1, 2, and 7-9 under 35 U.S.C. § 103(a) as
unpatentable over Paladino was affirmed, and pursuant to 37 C.F.R. §
41.50(b), was denominated as a new ground of rejection. A new ground of
rejection of claims 1 and 3-9 under 35 U.S.C. § 103(a) as unpatentable over
Moore was entered. Since this Decision, Appellant has amended
independent claim 1.
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SUMMARY OF DECISION
We REVERSE.

ANALYSIS
The Examiner found that Paldino discloses a laser sight device
contained within recoil spring guide rod 100 of a handgun. Ans. 4. See
also, Paldino, col. 3, ll. 46-48 and figs. 1 and 3. Similarly, with respect to
the disclosure of Moore, the Examiner found that Moore discloses a laser
sight device mounted within recoil spring guide tube 32 of an automatic
pistol and that the laser sight device can be adapted to a large variety of
weapons using recoil spring guide rods or tubes. Ans. 5. See also, Moore,
col. 3, ll. 58-60 and figs. 5 and 13. The Examiner further found that neither
Paldino nor Moore disclosed that the gunstock is “for a rifle,” as called for
by independent claim 1. See e.g., Ans. 4. However, based on the Decision,
the Examiner opines that, a person of ordinary skill in the art of firearms
would know that rifles also use recoil guide rods and as such would have
readily known to modify the gunstock of either Paldino or Moore such that it
can be used with a rifle. Ans. 4 and 5-6. As evidence, the Examiner points
to the rifles of Harvey and Allyn that have guide rods 28 and 420,
respectively, located below the barrel, which is similar to the arrangement of
Paldino and Moore, where guide rods 100 and 32, are located below barrels
4 and 30, respectively. Ans. 4 and 6. See also, Paldino, figs. 1 and 3 and
Moore, figs. 5 and 8. The Examiner concluded that it would have been
obvious for a person of ordinary skill in the art to modify either Paldino or
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Moore to include the laser sight device in the rifle of either Harvey or Allyn
“in order to utilize the laser sight device within rifles.” Ans. 4 and 6.
Although we appreciate the Examiner’s position that all references
disclose recoil guide rods located below the barrel of a firearm, nonetheless,
the principle of operation of the firearms of Paldino and Moore is
substantially different from those of Harvey and Allyn. The Appellant
argued that the firearms of Paldino and Moore are of a “blowback-type or a
recoil-operation-type.” App. Br. 4 and 15. Since the Examiner has not
provided any evidence to the contrary, we shall adopt Appellant’s proposed
finding as our own. Appellant further argues, and we agree that Harvey and
Allyn disclose “gas-pressure-based actions that use the gas pressure
generated by burning the propellant of a cartridge to operate the bolt
mechanism.” App. Br. 5. Specifically, Allyn discloses that:
In operation, after the cartridge is fired [and] …
[a]fter the bullet passes the aligned gas vent
openings 404 and 402, gas passes from the barrel
therethrough under high pressure to the piston
chamber and strikes the piston head 412 with a
sharp blow, as is conventional, to the end that the
recoil energy of the discharge of the firearm is
transmitted to the piston and recoil springs.

Allyn, col. 9, ll. 42-49. See also, Allyn, fig. 13 and Harvey, col. 2, ll. 43-47.
One of ordinary skill in the art would infer from Allyn that in a gas-operated
self-loading rifle (like that of Allyn and Harvey), in order for the rifle to self-
load, the piston chamber must be sealed to maintain the gas under high
pressure to strike the piston head. Where the proposed modification would
render the prior art invention being modified unsatisfactory for its intended
purpose, the proposed modification would not have been obvious. See Tec
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Air Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999);
In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). "A reference may be said
to teach away when a person of ordinary skill, upon [examining] the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Here, in the Examiner’s proposed combination, a hole would have
to be made in guide rods 28 and 420 of Harvey and Allyn, respectively, to
mount a laser sight system and to allow for transmission of the laser beam.
Since the piston chamber must be sealed to maintain the gas under high
pressure, we find that it would not be possible to drill a hole in guide rods 28
and 420 of Harvey and Allyn, respectively, to mount a laser sight system and
to allow for transmission of the laser beam, as proposed by the Examiner.
The Examiner has not explained how a person of ordinary skill in the art
would modify either Paldino or Moore to include the laser sight device in the
rifle of either Harvey or Allyn while maintaining a sealed piston chamber.
See Ans. 7-8. Moreover, we agree with Appellant that the carbon or powder
residue resulting from the burning propellant would likely cover the lens of
the laser-sight system, hence undermining the use of the laser-sight system
in the Examiner’s proposed combination. App. Br. 7. We thus find that
both Harvey and Allyn would have discouraged one of ordinary skill in the
art from providing the laser-sight system of either Paldino or Moore.
Accordingly, the modification proposed by the Examiner of providing the
laser-sight system of Paldino and Moore in the self-loading rifle of either
Harvey or Allyn would not have been obvious to the person of ordinary skill
in the art. As such, the rejection of claim 1 and its dependent claims 2 and
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7-9 over the combined teachings of Paldino and Harvey or Allyn cannot be
sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an
independent claim is nonobvious under 35 U.S.C. § 103, then any claim
dependent therefrom is nonobvious). Similarly, the rejection of claim 1 and
its dependent claims 3-9 under 35 U.S.C. § 103(a) as unpatentable over
Moore and Harvey or Allyn likewise cannot be sustained.

SUMMARY
The decision of the Examiner to reject claims 1-9 is reversed.

REVERSED

JRG

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McCARTHY, Administrative Patent Judge, Concurring.
I agree with the decision reached by my colleagues. I write separately
due to the procedural posture in which this appeal comes before the Board.
In a decision dated August 26, 2009, this panel reversed rejections
under 35 U.S.C. § 102(b). The Board designated its affirmance of an
alternative rejection of claims 1, 2 and 7-9 under § 103(a) as being
unpatentable over Paldino as a new ground of rejection. The Board also
entered a new ground of rejection against claims 1 and 3-9 under § 103(a) as
being unpatentable over Moore. During prosecution under 37 C.F.R.
§ 41.50(b)(1), the Examiner supplemented these new grounds of rejection
with the teachings of two additional references, Harvey and Allyn.
In response to the new grounds of rejection, the Appellant amended
claim 1 to limit the gunstock to being one for a rifle rather than for a long,
shoulder-fired firearm. Counsel also provided extensive technical arguments
explaining why one of ordinary skill in the art might not have expected
success in modifying the firearms described by Paldino and Moore in the
fashion claimed in amended claim 1. The Appellant has submitted no
additional evidence since this Board issued its decision on August 26, 2009.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)(“An assertion of
what seems to follow from common experience is just attorney argument
and not the kind of factual evidence that is required to rebut a prima facie
case of obviousness.”). Consequently, the Appellant has provided no
reason to depart from the findings of the Board in the August 26, 2009
decision.
Nevertheless, the arguments of the Appellant’s attorney have provided
a persuasive basis for concluding that the Board’s findings do not provide a
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rational underpinning for the legal conclusions reach by the Board in
entering the new grounds of rejection. Since my colleagues have explained
why our findings do not imply that one of ordinary skill in the art would
have had reason to modify the firearms described by Paldino and Moore in
the fashion claimed in claim 1, I will not attempt to discuss the reasons at
length. Although attorney arguments are not evidence (see Geisler), the
Examiner has not disputed the factual bases for the argument in this appeal.
For example, page 8 of the decision of August 26, 2009, concluded
that “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.’” The arguments of the Appellant’s attorney persuasively explain
why this was not the case, at least with regard to the rifles described by
Harvey and Allyn. (See App. Br. 4-8.) Finding of Fact 10 of the August 26,
2009 decision stated that “[t]he laser sight device of Moore is easily
adaptable to a large variety of weapons using recoil spring guide rods or
tubes.” (Citing Moore, col. 13, ll. 22-25.) The arguments of the Appellant’s
attorney persuasively explain why rifles such as those described by Harvey
and Allyn would not have been among the variety of long-shoulder-fired
firearms to which the laser sight device of Moore would have been easily
adaptable. (See App. Br. 15-16.) Relying on the factual representations
made by the Appellant’s attorney, I agree with my colleagues that the
rejections on appeal should not be sustained.

SDAM