Ex Parte Smith

Patent Trials and Appeals Board

Mar 18, 2019

14561723 - (D) (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/561,723 12/05/2014
26158 7590 03/20/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Michael Leighton Smith
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
R087 2120US.l 2759
EXAMINER
MORGAN, DERRICK R
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
03/20/2019 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):
IPDocketing@wbd-us.com
BostonPatents@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL LEIGHTON SMITH
Appeal2017-004969
Application 14/561,723 1
Technology Center 3600
Before LINDA E. HORNER, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1-25. Final Office Action (December 1,
2015, "Final Act."). 2 We have jurisdiction under 35 U.S.C. § 6(b).
The Examiner rejected all of the claims as being anticipated by and/or
unpatentable over the prior art. Appellant contests each ground of rejection.
1 RA Brands, L.L.C. ("Appellant") is the applicant under 37 C.F.R. § 1.46
and is identified as the real party in interest. Appeal Brief (July 25, 2016,
"Appeal Br.") 2.
2 Claims 26 and 27 are canceled. Appeal Br. 2.
Appeal2017-004969
Application 14/561,723
As to anticipation, Appellant argues that the Examiner's findings about the
disclosure of the claimed subject matter in the prior art are not supported by
adequate evidence. As to obviousness, Appellant argues that teachings of
the prior art, when combined by a person having ordinary skill in the art,
would not have resulted in the claimed subject matter.
For the reasons explained below, we find that the anticipation
rejection is supported by the prior art. We conclude, however, that the
Examiner has failed to support adequately the determination of obviousness.
Thus, we AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter on appeal relates to a noise suppressor
adapted for rapid and secure mounting over a flash hider affixed to the
muzzle of a host firearm barrel with the noise suppressor stabilized against
undesirable vibration during firing of the host firearm. Specification
(December 5, 2014, "Spec.") ,r 2. Claims 1, 12, and 21 are the independent
claims. Claim 12 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitation shown in italics for emphasis.
12. A noise suppressor configured for mounting over a
flash hider attached to a barrel of a host firearm, the noise
suppressor compnsmg:
a body having a proximal end and a distal end, the body
defining an internal chamber positioned between the proximal
and distal ends;
a series of baffles mounted along the internal chamber of
the body, the series of baffles being positioned in the internal
chamber, and a portion of the internal chamber being positioned
between the proximal end of the body and a rearmost baffle of
the series of baffles;
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Application 14/561,723
a mount positioned proximate the proximal end of the
body for at least partially mounting the noise suppressor to the
flash hider; and
a stabilizer extending into the internal chamber at a
position between the mount and the series of baffles so that the
stabilizer at least partially divides the internal chamber, the
stabilizer being spaced apart from the mount positioned
proximate the proximal end of the body, the stabilizer
comprising an inner surface extending at least partially around
an opening positioned in the internal chamber for receiving a
distal end of the flash hider therein, and the inner surface of the
stabilizer being configured for extending at least partially
around and engaging at least one outer surface of the distal end
of the flash hider.
Appeal Br. 23-24 (Claims Appendix). Independent claim 21 is directed to a
noise suppressor and includes a medial mount having an inner surface,
which, similar to claim 12, is "configured for extending at least partially
around and engaging at least one outer surface of the distal end of the flash
hider." Id. at 25-26. Independent claim 1 is directed to a noise suppressor
and includes a stabilizing ring mounted "so as to engage and apply a
compressive force to at least one outermost surface of the distal end region
of the flash hider sufficient to dampen any vibration of at least one of the
noise suppressor and the flash hider created during firing of the host
firearm." Id. at 22 ( emphasis added).
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Application 14/561,723
REJECTIONS
The Final Office Action includes the following rejections3:
1. Claims 12, 13, 15-18, and 21-24 are rejected under 35 U.S.C.
§ I02(a)(l) as anticipated by Dueck (US 8,459,406 Bl, issued June
11, 2013).
2. Claims 1-25 are rejected under 35 U.S.C. § 103 as unpatentable
over Dueck and Shults (US 2014/0020977 Al, published January
23, 2014). 4
ANALYSIS
Rejection under 35 U.S.C. § 102(a)(l)
The Examiner found that Dueck discloses the noise suppressor of
independent claims 12 and 21 including a stabilizer/medial mount that
engages at least one outer surface of the end of the flash hider. Final Act. 3,
5-6. The Examiner provided an annotated Figure, reproduced below, that
indicates the portion of Dueck' s noise suppressor that the Examiner
considers to be the claimed stabilizer/medial mount. Id. at 4.
3 The Final Office Action mistakenly includes canceled claims 26 and 27 in
the grounds of rejection. Final Act. 2, 7, 11. The Examiner corrected the
rejections in the Answer. Examiner's Answer (December 12, 2016, "Ans."),
at 2, 7, 10.
4 The Examiner presented this rejection under two separate statements of
rejection. Final Act. 7-12. Appellants argue the rejections of claims 1-25
under 35 U.S.C. § 103 together. Appeal Br. 15-20.
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Application 14/561,723
ANNOTATED FIGURE A
The annotated figure shown above corresponds to Figure 12 of Dueck,
with the reference numerals omitted and the Examiner's annotation pointing
to a portion of back end member 140 that the Examiner finds to be a
stabilizing ring. The Examiner found that the inner surface of Dueck' s
stabilizer ring is in contact with or engages flash hider 168. Final Act. 3, 6. 5
Appellant argues that the Examiner's finding is not supported by
adequate evidence because the feature to which the Examiner pointed in the
annotated figure is not labeled in Figure 12 of Dueck, this feature is not
discussed in Dueck' s disclosure, and one cannot discern from the views
provided in Dueck's Figures whether this feature is aligned with the tines of
flash hider 168 or the spaces there between. Appeal Br. 9-13. 6
5 Although Appellant acknowledges that the Examiner does not rely on
element 148 of Dueck as the stabilizer ring/medial mount (Appeal Br. 9),
Appellant argues in the Reply Brief that the Examiner "calls out element 148
of Dueck as being a 'stabilizer."' Reply Brief (February 6, 2017, "Reply
Br."), 2. The Examiner makes clear in both the Final Action and the Answer
that the Examiner mentioned reference number 148 as a means to identify
the portion of element 140 that the Examiner found to be the stabilizer ring.
Final Act. 12; Ans. 12.
6 Appellant's counsel also presented arguments at an oral hearing on
February 28, 2019. A copy of the transcript from the oral hearing has been
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We find an adequate showing of the claimed feature in Dueck' s
Figure 12 to support the Examiner's finding. "Description for the purposes
of anticipation can be by drawings alone as well as by words." In re Mraz,
455 F.2d 1069, 1072 (CCPA 1972) (quoting In re Eager, 47 F.2d 951, 953
(CCP A 1931) ). Figure 12 is a left-side cross-sectional view of noise
suppressor 100 and flash hider 168 taken along a plane coincident with a
longitudinal axis of the noise suppressor/flash hider, as shown by line 12-12
in Figure 15. Dueck, col. 6, 11. 61-65. At this cross-sectional plane, the
indented portion of back end member 140 of Dueck's noise suppressor
engages the outer surface of the tines of flash hider 168 at its distal end.
This engagement is clear because both the indented portion of the back end
member 140 and the tines of flash hider 168 include at this area of
engagement cross hatching, which means that the plane 12-12 passes
through both the indented portion and the tines at this area. If, as Appellant
asserts, the indented portion resided in spaces between the tines of flash
hider 168, then the tines would not be shown using cross hatching in Figure
12. Although the function of this indented portion is not described in Dueck,
engagement 7 between the indented portion and the outer surface of the tines
of flash hider 168 is shown in the Figure, and thus, the indented portion of
entered in the official file wrapper of the application. Oral Hearing
Transcript (entered March 15, 2019, "Hearing Trans.").
7 Appellant's counsel acknowledged during oral argument that the indented
feature of back end member 140 that the Examiner identified as the
stabilizing ring "may be touching" the flash hider and further acknowledged
that there is "[ n Jo difference" between engaging and touching. Hearing
Trans. 9: 12-19.
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the back end member 140 meets the structural requirements of the stabilizer
ring/medial mount of the claims.
Appellant further argues that Dueck' s removal of cross-hatching in
Figure 13 "seems to suggest that Dueck's back end member 140 has gaps or
is otherwise discontinuous." Appeal Br. 11 (emphasis omitted). Appellant's
assertion that Dueck' s back end member 140 is discontinuous is belied by
the depiction of back end member 140 in Figures 16 and 17, which show a
front, left side perspective view and a rear, right side perspective view,
respectively, of the suppressor of Figure 13. Dueck, col. 7, 11. 11-16. Back
end member 140 is shown as continuous in these perspective views. Figure
21, which is a front end elevation view of back end member 140 of the
suppressor of Figure 13, also depicts back end member 140 as being
continuous. Dueck, col. 7, 11. 27-29. See Final Act. 3 (Examiner citing
Figures 12, 16, 21 of Dueck to support this contested finding).
Appellant argues that the Examiner improperly shifted the burden of
production to Appellant to show that the figures of Dueck do not inherently
teach the stabilizer or medial mount as claimed. Reply Br. 4. This is not an
accurate characterization of the anticipation rejection. The claims recite that
the stabilizer or medial mount "extends at least partially around and engages
at least one outer surface of the distal end of the flash hider." Thus, the
stabilizing or mounting function is effected by virtue of the engagement of
the surfaces. By contrast, in claim 1, the claim language expressly recites a
stabilizing ring that engages and applies a compressive force to at least one
outermost surface of the distal end region of the flash hider sufficient to
substantially dampen any vibration created during firing of the firearm.
Claims 12 and 21 do not recite that the stabilizer or medial mount applies a
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compressive force or dampens vibrations. We decline to read such functions
into the broad language of claims 12 and 21. The Examiner showed that
Dueck's Figure 12 depicts a structure that extends around and engages an
outer surface of the distal end of the flash hider. That showing is sufficient
to support the finding that Dueck discloses the stabilizer and medial mount
of claims 12 and 21.
Appellant raised for the first time at the oral hearing that Dueck' s
indented portion does not engage or touch the tines of the "distal end" of the
flash hider as recited in claims 12 and 21. Hearing Trans. 10:3-7
(Appellant's counsel acknowledging that this argument was not in the
Appeal Brief). We do not consider Appellant's belated argument. 37 C.F.R.
§ 4I.52(e) (providing that an appellant may present only arguments that
have been relied upon in the brief or reply brief, except for arguments
addressing recent relevant decisions of either the Board or a Federal Court).
Rejections under 35 U.S.C. § 103
The Examiner found that although Dueck discloses a portion of back
end member 140 that has a central opening configured to receive at least a
part of a distal end region of the flash hider therein, it does not specifically
disclose this portion applies a compressive force to the flash hider, as recited
in independent claim 1. Final Act. 7-8. The Examiner found that Shults
discloses suppressor 50 mounted over flash hider 30 and that the mounting
structure of the suppressor applies a compressive force against the outer
surface of the flash hider. Id. at 8, 11 ( citing Shults ,r,r 42, 63). The
Examiner determined that it would have been obvious to one having
ordinary skill in the art to have "modified or further defined the engagement
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Application 14/561,723
between the stabilizer and flash hider in Dueck to have a compressive
engagement similar to that as taught by Shults." Id. at 8, 11-12.
Shults teaches that prior art flash suppressors having tines emit an
undesirable "ringing" tone upon discharge of the firearm due to imparted
harmonics on the tines. Shults ,r,r 3, 8, 38. Shults proposes to solve this
"ringing" problem by using a flash suppressor having tines that are sized and
shaped to each have a different mass, which results in minimal or no induced
harmonic noise being emitted by the flash suppressor upon discharge of the
firearm. Id. ,r,r 8, 38. Shults also discloses that the exterior surface of the
body of the flash suppressor has a tapered waist portion 38 to provide a
surface for a compressive friction fit with a complementary tapered interior
surface of a proximal mount assembly, which is used to mount suppressor 50
onto flash hider 30. Id. ,r,r 42, 63. As seen in Figure 12 of Shults, this
tapered waist portion 38 is at the proximal end of flash hider 30. Thus,
Shults suggests use of a compression friction fit to attach the two
components at the proximal end, akin to the claimed proximal mount.
Shults does not teach adding a second stabilizer or distal mount to
apply a compressive force to an outer surface of the tines at the distal end
region of the flash hider 30. On the contrary, Shults teaches that when the
noise suppressor is mounted on the flash hider, the tines are "well spaced"
from the interior portion of the noise suppressor housing to prevent copper
and carbon build up from inhibiting the removal of the noise suppressor. Id.
,r 43. Further, as noted above, Shults provides a different solution than
Appellant to address the problem of ringing caused by harmonic noise from
the tines. Shults solves this problem by adjusting the mass of each
individual tine. Id. ,r 8. Thus, we agree with Appellant that one having
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ordinary skill in combining the teachings of Dueck and Shults would not
have been led to modify Dueck with the teachings of Shults in the manner
proposed by the Examiner.
For this reason, we do not sustain the rejection of claims 1-25 under
35 U.S.C. § 103 as unpatentable over Dueck and Shults.
DECISION
We sustain the rejection of claims 12, 13, 15-18, and 21-24 under
35 U.S.C. § 102(a)(l).
We do not sustain the rejection of claims 1-25 under 35 U.S.C. § 103.
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)(l )(iv).
AFFIRMED-IN-PART
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