Ex Parte Tarazi

Patent Trial and Appeal Board

Apr 11, 2018

14642315 (P.T.A.B. Apr. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/642,315
128605 7590
Taylor Intellectual
1023 E. 6th Street
Royal Oak, MI 48067
03/09/2015
04/12/2018
FIRST NAMED INVENTOR
Omar Tarazi
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.
II-OTl-lU 2277
EXAMINER
LEE, BENJAMIN P
ART UNIT PAPER NUMBER
3641
MAILDATE DELIVERY MODE
04/12/2018 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
Exparte OMAR TARAZI
Appeal2017-004798
Application 14/642,315
Technology Center 3600
Before STEVEN D.A. MCCARTHY, LYNNE H. BROWNE, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1--4, 7, 11-14, 16-21, 25, 31-33, 35, 36, and 38 under 35 U.S.C. § 103 as
unpatentable over Casull (US 3,798,818, iss. Mar. 26, 1974) and Bresan (US
4,291,482, iss. Sept. 29, 1981. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 We note that claim 15 was canceled in the Amendment entered March 1,
2016. Accordingly, we understand the rejection of claim 15 set forth in the
Non-Final Action dated May 9, 2016 to have been included in that Action by
mistake.
Appeal2017-004798
Application 14/642,315
Claims 1, 11, and 19 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A structure for connecting an accessory to a firearm magazine,
compnsmg:
a connecting component; and
a structural component;
wherein the structural component is selected from the
group consisting of:
a firearm magazine baseplate and a firearm magazine;
wherein the connecting component is mechanically
secured to, integrated with, or part of the structural component;
wherein the connecting component is adapted to
mechanically secure an accessory to the structural component;
and
wherein the accessory is not a shoulder brace.
DISCUSSION
Appellant's arguments are directed to claim 1. 2 See Appeal Br. 4-13.
Appellant does not address claims 2-9, 11-14, 16-25, 31-33, 35, 36, and 38
separately. See id. Accordingly, claims 2-9, 11-25, 31-33, 35, 36, and 38
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Casull discloses all of the limitations of claim
1 except for an accessory that is not a shoulder brace. See Non-Final Act. 6.
The Examiner finds that Bresan "teaches a handgun with an attachable stock
that can be used advantageously in either a wrist support configuration or an
extended shoulder brace configuration." Id. at 6-7 (citing Bresan 2:9-12).
Based on these findings, the Examiner determines that it would have been
obvious "to provide the Casull auxiliary stock with an additional
2 Although argued separately (see Appeal Br. 9, 11, 13), claim 15 is
canceled. See n.1.
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Appeal2017-004798
Application 14/642,315
configuration allowing wrist support instead of shoulder support as taught by
Bresan, to increase the versatility of the device." Id.at 7.
Appellant contends that Bresan teaches away from the proposed
combination, arguing that "Bresan specifically teaches that its primary
objective is to connect its shoulder and forearm brace to a firearm without
connecting to the butt end of the gun (where any connection to the magazine
would be)." Appeal Br. 5 (emphasis omitted); see also Reply Br. 2. In
support, Appellant directs our attention to column 1, lines 2 7--44, 51-5 3, and
61---63, which are reproduced in the Appeal Brief. Id. at 6.
Lines 27--44 criticize prior art not at issue in this case and lines 61-63
indicate that one of the objectives of Bresan's device is to provide a multi-
purpose extension which fits directly on the firearm's handgrip. See Bresan
1:27--44, 61---63. Lines 51-53 state that "[i]t is an additional object of this
invention to provide a forearm support for a firearm which does not interfere
with holding the butt end of the firearm." Id. at 51-53.
In view of this additional objective as described in Bresan, we agree
that one skilled in art would be led away from modifying a firearm to
include a forearm support that interferes with holding the butt end of the
firearm. We do not agree, however, that this portion of Bresan teaches away
from the proposed modification of Casull. The Examiner finds that "that the
location of the additional stock of the Casull invention, which is connected
to the bottom of the magazine under the hand grip, would not hinder access
of a user to the hand grip." Non-Final Act. 4. Appellant does not
adequately explain why Casull's support interferes with holding the butt end
of the gun or provide evidence in support of this contention.
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Appeal2017-004798
Application 14/642,315
Moreover, Appellant's argument that Bresan teaches away from
modifying a firearm to include a forearm support that interferes with holding
the butt end of the firearm is not responsive to the rejection as articulated by
the Examiner because the rejection does not propose such a modification.
Rather, as quoted supra, the rejection proposes modifying Casull's existing
support to include a wrist support configuration. See Non-Final Act. 6-7.
As noted by Appellant, the prior art must be considered as a whole. See
Appeal Br. 4; see also Reply Br. 1. In this instance, Bresan must be
considered for all of its teachings, including its teaching of a multi-purpose
forearm device, which "may be extended and used as a shoulder support
providing greater versatility and the possibility of greater accuracy when
firing the firearm." Bresan 2: 10-12. Appellant does not identify nor do we
discern where Bresan teaches away from such modification. Thus,
Appellant does not apprise us of error.
Appellant further contends that Casull teaches away from the
proposed modification. See Appeal Br. 9-10; see also Reply Br. 3. In
support of this contention, Appellant quotes the Abstract and much of the
first column of Casull. Id. Appellant observes that "[l]iterally every aspect
of Casull is directed toward conversion of a handgun to a rifle (or a handgun
with a shoulder stock)." Id. at 10. Appellant does not, however, identify
where Casull discourages the use of a reconfigurable brace. Thus,
Appellant's argument is unconvincing because "teaching away" requires that
the reference "criticize, discredit, or otherwise discourage" the use of other
alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here,
the portions of Casull cited by Appellant do not criticize, discredit, or
otherwise discourage use of a reconfigurable brace. We will not read into a
reference a teaching away from a proposed combination when no such
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Appeal2017-004798
Application 14/642,315
language exists. See Dystar Textilfarben GmbH & Co. Deutsch/and KG v.
CH Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
In addition, Appellant contends that there is no reasonable expectation
of success. Appeal Br. 11-12; see also Reply Br. 3--4. In support of this
contention, Appellant discusses the effects of changing the location of
Bresan's brace to attach to the butt end of the gun. See id.
Again, Appellant's argument is not responsive to the rejection as
articulated by the Examiner. As quoted supra, the rejection does not
propose modifying Bresan. Rather, the rejection proposes modifying
Casull's brace to include a wrist support configuration. See Non-Final Act.
6-7. Thus, Appellant does not apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
1 and claims 2-9, 11-14, 16-25, 31-33, 35, 36, and 38 which fall therewith.
DECISION
The Examiner's rejection of claims 1-9, 11-14, 16-25, 31-33, 35, 36,
and 3 8 is AFFIRMED.
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
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