Ex Parte Shevick

Patent Trial and Appeal Board

Oct 17, 2012

10966279 (P.T.A.B. Oct. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/966,279 10/15/2004 Barry L. Shevick 04084.011 8807
41689 7590 05/29/2013
BRADLEY P. HEISLER
HEISLER & ASSOCIATES
3017 DOUGLAS BOULEVARD, SUITE 300
ROSEVILLE, CA 95661
EXAMINER
MARSH, STEVEN M
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
05/29/2013 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARRY L. SHEVICK
____________

Appeal 2010-004630
Application 10/966,279
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-004630
Application 10/966,279

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Barry Shevick (Appellant) filed a Request for Rehearing (hereinafter
“Request”) under 37 C.F.R. § 41.52 requesting that we reconsider our
decision of October 17, 2012 (hereinafter “Decision”) affirming the rejection
under 35 U.S.C. § 102(b) of claims 1-3, 5, 6, 11, 12, 27-30, 33, and 40 as
anticipated by O’Brien (US 3,110,506, issued Nov. 12, 1963) and the
rejections under 35 U.S.C. § 103(a) of claim 4 as unpatentable over O’Brien;
of claims 15, 38, and 41 as unpatentable over O’Brien and Moore (US
6,694,543 B2, issued Feb. 24, 2004); and of claims 16, 39, and 42 as
unpatentable over O’Brien, Moore, and McCahill (US 6,807,780 B2, issued
Oct. 26, 2004).
Rehearing is limited to matters overlooked or misapprehended by the
Board in rendering the initial decision. Pointing to the Reply Brief at page
3, lines 11-27, and the Record of Oral Hearing held October 10, 2012 at
page 7, l. 7 to 8, l. 2 and ll. 20-21, Appellant contends that we
misapprehended or overlooked Appellants’ argument that “lever (30) of
O’Brien cannot fairly be considered to be a trigger.” Request 2.
Specifically, at page 3, lines 11-26 of the Reply Brief,1,2 Appellant argues
that in contrast to the instant invention where a trigger “releases stored
energy in a spring or other driver so that this spring or other driver can apply
a force tending to push the slide out of the cavity in the housing,” O’Brien’s
lever/handle 30 “does not release any force stored in any other driver
separate from the lever/handle (30).” See also Request 3. Addressing
firearm triggers and electric triggers, Appellant further contends that a

1 We note that page 3 of the Reply Brief has 26 lines of text.
2 The Record of Oral Hearing held October 10, 2012 at page 7, l. 7 to.
8, l. 2 and ll. 20-21 has a similar argument.
Appeal 2010-004630
Application 10/966,279

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“trigger thus causes activity from a source other than the trigger.” Request
5. In contrast, Appellant notes that a pedal or a crank arm that “receive[s] an
input force from a hand of a user” cannot be considered a “trigger.” Id.
Thus, according to Appellant, it is unreasonable to construe lever/handle of
O’Brien as a “trigger.” Id. at 6.
Although we appreciate that Appellant’s “trigger” releases energy
stored in a spring and that firearm and electrical triggers cause activity from
a source other than the trigger itself, in this case, neither independent claim 1
nor independent claim 27 includes any structural limitations of the claimed
“trigger.” Specifically, the limitations of independent claim 1 of “said
trigger adapted to activate said driver, when said trigger is activated, said
trigger holding said slide to said housing until said trigger is activated, such
that said slide and said housing move together before trigger activation” are
functional limitations. Decision 2. Independent claim 27 uses similar
limitations for the claimed “trigger.” See App. Br., Claims Appendix.
Although Appellant is permitted to define a part of the invention in
functional terms, as long as lever/handle 30 of O’Brien is capable of
performing the claimed function, lever/handle 30 of O’Brien constitutes the
claimed “trigger.” See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). As noted on page 6 of our Decision, O’Brien specifically teaches that
when lever/handle 30 moves between a retracted position (dotted lines in
Figure 1) and an extended position (solid lines in Figure 1) compression of
spring 54 (driver) by a predetermined amount occurs. O’Brien, col. 1, ll. 58-
68. As such, lever/handle 30 of O’Brien is adapted to activate/actuate spring
54, i.e., the driver. Furthermore, because spring 54 is in contact with rod 34
before actuation of lever/handle 30, O’Brien teaches a “trigger” holding a
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Application 10/966,279

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housing and a slide such that they “move together” before trigger activation
or actuation, as called for by independent claims 1 and 27, respectively.
Decision 7. Thus, because lever/handle 30 of O’Brien is capable of
performing the claimed functions, lever/handle 30 of O’Brien teaches a
“trigger,” as called for by each of independent claims 1 and 27.
Furthermore, Appellant’s Specification does not define the term
“trigger.” The Specification merely describes a lever 70 as a “form of
trigger” that “can be flexed so that . . . [a] driver is activated to push the slide
40 out of the cavity of the housing 20.” Spec. 11, ll. 22-24 and l. 27 through
Spec. 12, l. 2 and figs. 7 and 8. Moreover, an ordinary and customary
meaning of the term “trigger” is “a similar movable part by which a
mechanism is actuated.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY
(10th Ed. 1997). Thus, in O’Brien, because spring 54 is compressed
(actuated) to force members 12 and 14 axially outwardly when lever/handle
30 is moved (movable part), lever/handle 30 constitutes a “trigger.”
In conclusion, Appellant’s Request does not persuade us that this panel’s
Decision misapprehended or overlooked any matter or that we erred in
affirming the Examiner’s rejection of claims 1-6, 11, 12, 15, 16, 27-30, 33,
and 38-42.

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CONCLUSION
We have granted Appellant’s request to the extent that we have
considered our Decision in light of the points raised therein, but have denied
the request with respect to any modification to the Decision.
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).

DENIED

rvb