Ex Parte Stock et al

Patent Trial and Appeal Board

Dec 19, 2013

11512480 (P.T.A.B. Dec. 19, 2013)

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.
11/512,480 08/30/2006 Michael Eugene Stock JR. 6113A-001634/US 2585
7590 12/19/2013
Anthony G. Fussner
Suite 400
7700 Bonhomme
St. Louis, MO 63105
EXAMINER
JOHNSON, STEPHEN
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
12/19/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL EUGENE STOCK, JR. and ROBERT J. GARDNER
____________

Appeal 2011-001985
Application 11/512,480
Technology Center 3600
____________

Before: JAMES P. CALVE, NEIL T. POWELL, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Michael Eugene Stock, Jr. and Robert J. Gardner (Appellants) appeal
under 35 U.S.C. § 134 from a final rejection of claims 1-13 and 26-30. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “projectiles having light
transmissive tips.” Spec., para. [0002]. Claim 1 represents the subject matter
on appeal and is reproduced below.
1. A bullet comprising a body having a generally cylindrical
proximal portion and an ogival distal portion terminating at a
distal rim, the ogival distal portion including a distal-facing
aperture extending inwardly from the distal rim into the body,
and a nose element having a proximal section extending at least
partially into the distal-facing aperture, and an ogival distal
section external to the distal-facing aperture, at least a portion
of the nose element being at least partially light transmissive
through which at least some ambient light is transmissible and
visually perceptible to an observer.
EVIDENCE
The Examiner relies on the following evidence:
Baker US 3,810,426 May 14,1974
Gilbert US 4,112,846 Sep. 12, 1978
Shaffer ‘413 US 4,190,413 Feb.. 26, 1980
Smith US 5,099,747 Mar. 31,1992
Adams US 5,222,798 Jun. 29, 1993
Willey US 5,495,806 Mar 5, 1996
Shaffer ‘369 US 4,049,369 Sep. 20, 1997
Yip US 6,244,185 Bl Jun. 12, 2001
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REJECTIONS
I. Claims 27, 29, and 30 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Yip. Ans. 3.
II. Claims 1, 2, 4-7, and 9-13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Yip and Gilbert. Ans. 5.
III. Claims 1-7, 9-13, and 27-30 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Adams. Ans. 5.
IV. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Adams and Willey. Ans. 6.
V. Claims 26-28 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Smith. Ans. 6.
VI. Claims 26-28 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Baker. Ans. 7.
VII. Claim 30 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Baker and Shaffer ’413. Ans. 7
VIII. Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Baker and Shaffer ’369. Ans. 7.

ANALYSIS
Outstanding Rejections I-V
Independent claim 1 recites a bullet. Independent claim 26 recites an
ammunition round. Independent claim 27 recites a method for enhancing
the cosmetic appearance of a bullet.
The Examiner finds, in the outstanding rejections, that Yip anticipates
claim 27 in disclosing a bullet (Ans. 4) and renders obvious claim 1 with
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Gilbert, which teaches a projectile body (Ans. 5), that Adams anticipates
claims 1 and 27 in disclosing a projectile (Ans. 5), and that Smith anticipates
claims 26 and 27 in disclosing an ammunition round (Ans. 6).
Paragraph [0034] of Appellants’ Specification defines the claim terms
“ammunition” and “bullet” in the following manner as types of projectiles:
As used herein, the term “projectile” generally refers to
and includes any of a wide range of projectiles for use with any
type of gun (e.g., rifles, handgun, shotguns, artillery, industrial
ballistic tools, etc.) and various ammunition types (e.g.,
centerfire, rimfire, muzzleloader ammunition, etc.). By way of
example only, the term “projectile” includes bullets, shells,
explosive-filled projectiles, shots, non-explosive projectiles,
hollow point bullets, etc.

Yip discloses a skyrocket or firework, Adams discloses a light
grenade, and Smith discloses a minefield breaching system that can be
mounted on a rifle to receive a bullet ejected from the rifle (see bullet trap
8). We agree with Appellants that Yip, Adams, and Smith do not disclose
“bullets” or “ammunition” as one skilled in the art would understand those
terms, particularly in light of paragraph [0034] of Appellants’ Specification.
See Reply Br. 2, 4.1 The Examiner does not allege that Willey cures the
deficiencies of Adams. We therefore do not sustain Rejections I and III-V
based on these references.

1 The Examiner states that Appellants provided no definition for the term
“bullet,” and that therefore the Examiner “must rely upon the dictionary to
provide some direction as to the intended meaning of this terminology in this
art.” Ans. 8. The Examiner proffers the following definition of bullet: “an
object resembling a projectile in shape, action, or effect” (id.), which we
consider to be unreasonably broad in light of Appellants’ Specification.
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Regarding Rejection II, we sustain the rejection of claims 1, 2, 4-7,
and 9-13 as unpatentable over Yip and Gilbert where the Examiner
substituted the projectile body and ogival portion of Gilbert for the projectile
body and ogival portion of Yip. Ans. 5, 9-10. Appellants’ argument that
Gilbert does not disclose a projectile is unpersuasive where Gilbert discloses
an “armor-piercing incendiary projectile” that is impacted with armor.
Appellants’ argument that Gilbert does not disclose an ogival portion that is
pointed is not persuasive, because claim 1 recites “an ogival distal portion
terminating at a distal rim” and “including a distal-facing aperture extending
inwardly from the distal rim into the body.”
Rejections VI-VIII Based on Baker
Regarding the rejection of claims 26-28 as anticipated by Baker,
Appellants argue that Baker’s 40 millimeter round fitted with a light source
and inserted into a grenade launcher is not the same as a bullet with a light
transmissive tip. App. Br. 18. Appellants explain that “[a] person of
ordinary skill, reading Applicants’ definition of a bullet as ammunition for
use in types of guns (e.g., rifles, handgun, shotguns), would not [consider]
Baker[’s] 40mm projectile fitted with a flashcube to [be] a bullet” because
flashcubes illuminate the target instead of penetrating the target as a bullet
does. Id. However, we see no proffered definition by Appellants that limits
bullets to target-penetrating projectiles, and we therefore are not persuaded
by this argument. We therefore sustain the rejection of claims 26-28 as
anticipated by Baker.
Claim 30 recites the method of claim 27, comprising “first and second
tip configurations including at least one of a different color and a different
light transmissibility to thereby differentiate between the first and second
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types of projectiles.” The Examiner finds that Shaffer ’413 teaches different
types of flash lamps constructed to give off different types of light, and that
Appellants merely “substitut[e] one type of flash lamp material for another
in an analogous art setting with expected or predictable results,” such that it
would have been obvious to a person of ordinary skill in the art to apply the
teachings of Shaffer ’413 to Baker’s bullet and have a bullet with a different
type of flash lamp. Ans. 7.
Appellants argue that Baker and Shaffer ’413 do not relate to bullets,
and Shaffer ’413 teaches a projectile with its own light source rather than a
tip allowing ambient light to pass or tip configurations having different
colors. App. Br. 20. Regarding Appellants’ argument that Baker and
Shaffer ’413 do not relate to bullets, we disagree at least with respect to
Baker for the reasons set forth above. Further, the fact that the projectile of
Shaffer ’413 has its own light source does not preclude its tip from being
light transmissive as recited in the claim. We therefore are not persuaded by
Appellants’ arguments and we sustain the rejection of claim 30 as
unpatentable over Baker and Shaffer ’413.
Regarding the rejection of claims 29 and 30 as unpatentable over
Baker and Shaffer ’369, the Examiner makes similar findings (Ans. 7-8) and
Appellants make the same arguments (App. Br. 22). For the reasons set
forth above with respect to the rejection of claim 30 over Baker and Shaffer
’369, we sustain the rejection of claims 29 and 30 as unpatentable over
Baker and Shaffer ’369.
New Grounds of Rejection - Obviousness - Claims 1-13 and 26-30
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We enter a New Ground of Rejection for claims 1-13 and 26-30 as
unpatentable over Appellants’ Admitted Prior Art. Paragraph [0004] of
Appellants’ Specification states:
Bullets are commonly provided with plastic tips as a means for
improving ballistic coefficient. By way of example, bullets
having plastic tips can be found in rifle, handgun, and shotgun
ammunition. Bullets having plastic tips can also be found in
centerfire, rimfire, and muzzleloader ammunition.

In addition, paragraph [0019] of Appellants’ Specification states:
Bullets are commonly provided with plastic opaque tips for
improving ballistic coefficient. In addition to improving
ballistic coefficient, the inventors hereof have recognized that a
bullet tip can be selectively configured to provide a cosmetic or
aesthetic enhancement to a bullet. In this regard, the inventors
have also recognized that even though some existing bullet tips
are available in different colors, these existing bullet tips are
opaque. The inventors has further recognized that a bullet's
cosmetic or aesthetic appearance (and possibly commercial
appeal) can be enhanced by providing the bullet with a tip or
nose element having at least a portion that is at least partially
light transmissive. Accordingly, the inventors hereof have
developed various tips and nose elements with at least a portion
that is at least partially light transmissive. When such a tip or
nose element is provided to a bullet, at least some ambient light
can pass through the light transmissive portion of the tip or nose
element and be visually perceptible to an observer (e.g., user,
customer, purchase, etc.). In turn, this light transmissibility can
provide a cosmetic or aesthetical enhancement to the bullet (or
other projectile).

Appellants’ Specification therefore teaches to one skilled in the art,
with respect to independent claim 1, that it was known to provide a bullet
comprising a body having a generally cylindrical proximal portion and an
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ogival distal portion terminating at a distal rim, the ogival distal portion
including a distal-facing aperture extending inwardly from the distal rim into
the body, and a nose element having a proximal section extending at least
partially into the distal-facing aperture, and an ogival distal section external
to the distal facing aperture. Appellants’ Specification does not teach “a
portion of the nose element being at least partially light transmissive through
which at least some ambient light is transmissible and visually perceptible to
an observer.”
It has been established that matters relating to ornamentation only and
having no mechanical function, where claims are directed to structure rather
than a design claim, cannot be relied on to patentably distinguish the claimed
invention over the prior art. See In re Seid, 161 F.2d 229 (CCPA 1947). A
claim reciting a structure that differs from the prior art structure only by way
of a limitation relating to ornamentation is unpatentable over the prior art.
See id. at 231. In claim 1, the recited transmissive characteristic of the nose
element is related to the “cosmetic or aesthetic appearance” of the bullet
(Spec., para. [0019]) and therefore cannot patentably distinguish the claimed
invention over the prior art. Moreover, Yip and Adams disclose transparent
or translucent nose elements, as the Examiner found (Ans. 4, 5), and we
determine that it would have been obvious to modify the opaque bullet tip or
nose piece of the AAPA to be transparent or translucent, as taught by Yip or
Adams to allow for a luminous means to be placed within and be visible
through the transparent or translucent tip or nose piece as a means of
locating the bullet, tracing the flight of the bullet, or disabling a person
within direct view of the bullet. See Adams, Abstract, col. 5, ll. 21-33; col.
6, ll. 33-51; Yip, col. 1, ll. 39-47; col. 2, ll. 59-62.
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With respect to dependent claims 2 and 3, Appellants’ Specification
does not teach that it was known to construct a bullet with substantially the
entire ogival distal section of the nose element, or substantially the entire
nose element, being light transmissive. The recited light-transmissive
characteristic of the nose element cannot patentably distinguish the claimed
invention over the prior art for the reasons set forth above regarding its
ornamental purpose. Moreover, Yip and Adams disclose transparent or
translucent nose elements including nose elements of ogival distal sections
that are light transmissive as set forth supra for the rejection of claim 1. We
determine that it would have been obvious to include such light transmissive
elements, as recited in claims 2 and 3, for the reasons set forth for claim 1
supra.
Regarding dependent claims 4-6, Appellants’ Specification admits
that it was known for the nose element to include a proximal-facing shoulder
intermediate the proximal and distal ends of the nose element, the proximal-
facing shoulder substantially abutting against the distal rim of the body,
thereby forming a relatively smooth transition from the nose element to the
body, that the ogival distal section of the nose element terminates in a point
at the distal end thereof, and that the proximal section of the nose element
comprises a generally cylindrical shaft, and wherein the distal-facing
aperture of the body comprises a generally cylindrical passage configured to
engagingly receive the generally cylindrical shaft.
Regarding dependent claim 7, Appellants’ Specification does not
teach that it was known to have the nose element being made from at least
one of a translucent material and a transparent material. Regarding
dependent claims 8-13, Appellants’ Specification does not teach that it was
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known to have the claimed light transmissive or coloring characteristics of
the nose element. With respect to claims 8-13, Appellants’ Specification
states that “some existing bullet tips are available in different colors” (Spec.,
para. [0019]), but does not teach light transmissive properties. Again, the
recited light-transmissive, transparent, or translucent characteristic of the
nose element cannot patentably distinguish the claimed invention over the
prior art for the reasons set forth above regarding its ornamental purpose.
Moreover, these features are obvious for the reasons set forth for claim 1
supra.
Regarding independent claim 26, Appellants’ Specification teaches to
one skilled in the art that it was known to provide an ammunition round
comprising a bullet having a nose element, but does not teach that it was
known to have the nose element comprise at least a portion that is at least
partially light transmissive through which at least some ambient light is
transmissible and visually perceptible to an observer. Regarding
independent claim 27, Appellants’ Specification teaches that it was known to
construct a bullet with a body and a tip coupled to the body, but does not
teach that it was known to use a method for enhancing the cosmetic
appearance of the bullet by providing a tip with at least a portion that is at
least partially light transmissive through which at least some ambient light is
transmissible and visually perceptible to an observer. Again, the light-
transmissive characteristic of the nose element cannot patentably distinguish
the claimed invention over the prior art for the reasons set forth above
regarding its ornamental purpose. Moreover, these features are obvious for
the reasons set forth for claim 1 supra.
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With respect to claims 28-30, Appellants’ Specification does not teach
the tip being light transmissive or colored as claimed. As stated above,
Appellants’ Specification states that “some existing bullet tips are available
in different colors” (Spec., para. [0019]) and the recited light-transmissive
characteristic of the nose element cannot patentably distinguish the claimed
invention over the prior art for the reasons set forth above regarding its
ornamental purpose. Moreover, these features are obvious for the reasons
set forth for claim 1 supra.
DECISION
We REVERSE the rejection of claims 27, 29, and 30 under 35 U.S.C.
§ 102(b) as anticipated by Yip.
We AFFIRM the rejection of claims 1, 2, 4-7, and 9-13 under 35
U.S.C. § 103(a) as unpatentable over Yip and Gilbert.
We REVERSE the rejection of claims 1-7, 9-13, and 27-30 under 35
U.S.C. § 102(b) as anticipated by Adams.
We REVERSE the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Adams and Willey.
We REVERSE the rejection of claims 26-28 under 35 U.S.C. § 102(b)
as anticipated by Smith.
We AFFIRM the rejection of claims 26-28 under 35 U.S.C. § 102(b)
as anticipated by Baker.
We AFFIRM the rejection of claim 30 under 35 U.S.C. § 103(a) as
unpatentable over Baker and Shaffer ’413.
We AFFIRM the rejection of claims 29 and 30 under 35 U.S.C.
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§ 103(a) as unpatentable over Baker and Shaffer ’369.
We enter a NEW GROUND OF REJECTION of claims 1-13 and 26-
30 under 35 U.S.C. § 103(a) as unpatentable over Appellants’ Admitted
Prior Art.
37 C.F.R. § 41.50(b) provides that, “[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 provide that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
the following two options with respect to the new ground 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.

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

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