Ex Parte Tercho

Board of Patent Appeals and Interferences

Mar 25, 2010

10741049 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DANIEL GEORGE TERCHO
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Appeal 2009-003741
Application 10/741,049
Technology Center 1700
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Decided: March 25, 2010
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/741,049

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A. Introduction1
Daniel George Tercho (“Tercho”) timely appeals under
35 U.S.C. § 134(a) from the final rejection2 of claims 1 and 3-5. We have
jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART.
The subject matter on appeal relates to shot—ammunition
projectiles—that do not contain the toxic and environmentally undesirable
element lead. The non-toxic formulation contains tungsten (for high
density), tin, and iron (for its ferromagnetic properties, to provide an easy
way to distinguish the non-toxic shot from shot that contains lead) in certain
amounts.
Representative Claims 1 and 4 are reproduced from the Claims
Appendix to the Principal Brief on Appeal:
1. Non-toxic shot for use with fish and game, said non-toxic
shot consisting essentially of
a) 20-60% by weight tin;
b) 40-60% by weight tungsten; and
c) 5- 10% by weight iron.
(Claims App., Br. 9.)

1 Application 10/741,049, Non-toxic Shot Formulation and Method of
Making, filed 18 December 2003. The specification is referred to as the
“049 Specification,” and is cited as “Spec.” The real party in interest is
listed as Daniel George Tercho. (Appeal Brief, filed 28 January 2008
(“Br.”), 1.)
2 Office action mailed 13 July 2007 (“Final Rejection”; cited as “FR”).
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Claim 5 is similar to claim 1, but requires that the shot “consists of”
the recited ranges of tin, tungsten, and iron.
4. A method of making non-toxic shot comprising the steps of
a) blending
i) powdered tin,
ii) powdered tungsten, and
iii) powdered iron,
95% by weight of all metallic particles
having particle sizes less than 325 mesh;
iv) powdered flux in which 99.9% by weight of the
particles are less than 100 mesh;
b) compaction forming the blended material into shape at
a pressure range of between 20 and 40 tons per square
inch;
c) sintering the blended material at a temperature
exceeding 350°F bonding the powdered metals and
driving off the flux.
The Examiner has maintained the following grounds of rejection:3
A. Claims 1 and 3 stand rejected under
35 U.S.C. § 102(b) in view of Amick.4
B. Claims 1 and 3 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Siddle5 and Nadkarni.6

3 Examiner’s Answer mailed 25 April 2008. (“Ans.”).
4 Darryl D. Amick, Tungsten-Containing Articles and Methods for Forming
the Same, U.S. Patent Application Publication US 2002/0124759 A1
(12 September 2002).
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C. Claim 5 stands rejected under 35 U.S.C. § 103(a)
in view of the teachings of Nadkarni.
D. Claim 4 stands rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Nadkarni and
Thompson.7
E. Claim 4 stands rejected under 35 U.S.C. § 112(1)
for lack of an adequate written description of the
limitation “sintering the blended material at a
temperature exceeding 350°F.”
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Tercho argues that the Examiner failed to show that Amick, in
Table 1, discloses compositions that have the required compositions of tin,
tungsten, and iron, and therefore anticipates shot covered by claims 1 and 3.
(Ans. 3-4.) Tercho argues, inter alia, that Amick paragraph [0044], on
which the Examiner relies to substantiate the compositions of the FeW
(ferrotungsten) and WHA (tungsten heavy alloy) powders reported in
Table 1, shows that the compositions are outside the claimed ranges. (Id.)
The Examiner does not rebut Tercho’s argument regarding

5 David Richard Siddle et al., Ammunition Using Non-Toxic Metals and
Binders, U.S. Patent Application Publication US 2003/0056620 A1 (27
March 2003), based on an application filed 6 March 2001.
6 Anil V. Nadkarni and John T. Abrams, Lead-Free Frangible Bullets and
Process for Making Same, U.S. Patent 6,546,352 B1 (25 March 2003), based
on an application filed 10 May 2000.
7 C.B. Thompson, Lubrication of Metal Powders, in Powder Metallurgy,
7 ASM Handbook 190 (1984).
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paragraph [0044]. Rather, for the first time, in the Response to Arguments
section of the Examiner’s Answer, the Examiner argues that, based on
disclosures in Amick paragraph [0030], it can be shown that the tin-
tungsten-iron ratios in the eighth [sic: ninth] and fourteenth [sic: fifteenth]
examples in Table 1 are within the scope of claims 1 and 3. (Ans. 9-10.) In
particular, the Examiner argues, “[i]f it is assumed that the FeW
contains 85 wt% W and 15 wt% Fe, the eighth [sic: ninth] and fourteenth
[sic: fifteenth] examples can be converted to Fe, W and Sn proportions as
follows.” (Id. at 9.)
The Examiner’s arguments are without merit. Anticipation does not
lie when there is a need for selective picking and choosing from the universe
of disclosed possibilities to arrive at the claimed invention. See, e.g., In re
Arkley, 455 F.2d 586, 587 (CCPA 1972). Amick paragraph [0030] refers to
“VHA powder,” which, as the Examiner points out, contains varying
amounts of tungsten, iron, and nickel. The Examiner has not directed our
attention to credible evidence that iron must be present in the FeW powders
used in the cited Examples in Table 1 in amounts that meet the range
required by claims 1 or 3, even assuming that nickel is not excluded by the
“consisting essentially of” transitional language in claim 1. We therefore
REVERSE the rejection for anticipation.
In Tercho’s view, the teachings of Siddle and Nadkarni are too
general regarding amounts of the required tungsten, tin, and iron to teach or
suggest the ranges recited in claims 1 and 3. (Br. 5.) According to Tercho,
Nardkarni is “even more nebulous than Siddle et al., there being no
proximate ranges that would suggest the combination of tungsten, iron and
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tin in any proportions, let alone rendering obvious Appellants’ claimed
ranges.” (Id.) Tercho concludes that the rejection of claims 1 and 3 is not
supported by Siddle and Nadkarni, and that the rejection of claim 5 over
Nadkarni alone should also be reversed. (Id. at 5 and 6-7.)
The Examiner maintains that because “[t]he references do not limit
the relative proportions of the tungsten, tin and iron,” they are therefore
“considered to encompass any proportion that functions for the purpose of
the disclosed invention. Accordingly, the references are considered to teach
proportions that overlap the tungsten, tin and iron proportions recited in the
claims.” (FR 4.) As for the absence of a specific formulation in either
reference of a shot based on tungsten, tin, and iron, the Examiner maintains
that the phrase “and their mixtures” in Siddle suffices to reasonably suggest
the more specific proportions to persons having ordinary skill in the art. (Id.
at 10-11.) A similar argument is applied to Nadkarni. (Id. at 12-13.)
Obviousness is a legal conclusion based on factual inquiries as to the
scope and content of the prior art, the differences between the prior art and
the claimed subject matter, and the level of skill in the art. Graham v. John
Deere Co., 383 U.S. 1, 17 (1966). Mere enablement is not a proxy for
obviousness. In the present case, the differences between the claimed
subject matter and the prior art lie in the specificity of the claims as to
substances and relative amounts, and some very broad teachings in the prior
art that include the substances, but which, the Examiner admits, provide no
numerical bounds as to relative amounts beyond the limits of a finite amount
and less than 100%. The Examiner’s arguments that the intended use of the
compositions as shot suffice as factual evidence in support of obviousness
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are not persuasive. On the present facts, that finding does little more than
establish that Siddle and Nadkarni are in the same field of endeavor. Put
another way, the Examiner has not bridged the gap between what would
have been enabled (had anyone thought to do it), and what would have been
obvious to do, based on the teachings of the prior art. Cases such as In re
Peterson, 315 F.3d 1325 (Fed. Cir. 2003), on which the Examiner relies
(FR 4; Ans. 6), are readily distinguishable. In Peterson, it was undisputed
that the prior art, Shah, taught compositions of nickel-base superalloy that,
component by component, closely encompassed the claimed ranges. Here,
the Examiner has not explained why a person having ordinary skill in the art
would have selected the particular elements from the metals and alloys listed
to make shot, nor what teachings would have directed such a person towards
the particular ranges. We REVERSE the rejections for obviousness of
claims 1, 3, and 5.
Regarding the rejection of claim 4, which covers methods of making
shot, Turcho argues that Nadkarni does not suggest the required three-
component system; and that none of the size or condition limitations as
required are suggested by either Nadkarni or by Thompson. (Br. 7-8.) The
Examiner has not cured the absence of reasonably specific teachings in
Nadkarni as to the tungsten-tin-iron mixture, the size of the powders, and the
conditions of treatment with a rationale based on facts of record establishing
that the recited sizes would have been obvious. The Examiner’s argument
that Nadkarni’s use of the plural word “powders” to describe the metal(s)
that make up the matrix suffices to teach “a three powder embodiment which
is encompassed by appellant’s three powder method” (Ans. 15) begs the
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questions of which powders would have been useful, and why. The
Examiner’s arguments that a person would have been able to determine
appropriate compaction pressures, etc., does not establish obviousness of the
recited ranges.
The rejection for lack of an adequate written description of the
limitation “sintering the blended material at a temperature exceeding 350°F”
stands differently. Whether the originally filed specification provides a
written description of subsequently claimed subject matter is a question of
fact. In re Alton, 76 F.3d 1168, 1171-72 (Fed. Cir. 1996). The Federal
Circuit has explained that “[i] If the applicant claims embodiments of the
invention that are completely outside the scope of the specification, then the
examiner or Board need only establish this fact to make out a prima facie
case.” Id. at 1175, citing In re Wertheim, 541 F.2d, 257, 263-64
(CCPA 1976).
In the present case, the 049 Specification, as originally filed, contains
only four references to the sintering of the formed shot. Each reference
teaches that the sintering takes place “at a temperature in the range of 350
and 425°F.” (Spec. 1, ll. 20-21; 2, ll. 18-19; 3, ll. 23-24 (original claim 4);
and 4, ll. 7-8 (Abstract).) As the Examiner points out (FR 2), the range now
claimed is open-ended and encompasses temperatures higher than the
original maximum temperature of 425°F. Such higher sintering
temperatures were not described in the specification as originally filed.
Tercho, arguing that the specification as originally filed “need only
support one embodiment which the claim covers” (Br. 3), appears to have
conflated the enablement requirement with the written description
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requirement. The Federal Circuit has ruled that the written description
requirement is separate from the enablement requirement. Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Company, 2010 WL 1007369 *12
(Fed. Cir. 2010) (en banc). As the court explained, the test for written
description “requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art.
Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Id. Moreover, the written description
requirement does not extend to that which is obvious in view of the original
disclosure. Lockwood v. American Airlines, 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (“a prior application itself must describe an invention, and do so
in sufficient detail that one skilled in the art can clearly conclude that the
inventor invented the claimed invention as of the filing date sought.”)
We AFFIRM the rejection of claim 4 under 35 U.S.C. § 112(1) for
lack of an adequate written description of what is now claimed.
C. Order
We REVERSE the rejection of claims 1 and 3 under
35 U.S.C. § 102(b) in view of Amick.
We REVERSE the rejection of claims 1 and 3 under
35 U.S.C. § 103(a) in view of the combined teachings of Siddle and
Nadkarni.
We REVERSE the rejection of claim 5 under 35 U.S.C. § 103(a) in
view of the teachings of Nadkarni.
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We REVERSE the rejection of claim 4 under 35 U.S.C. § 103(a) in
view of the combined teachings of Nadkarni and the Thompson.
We AFFIRM the rejection of claim 4 under 35 U.S.C. § 112(1) for
lack of an adequate written description.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

PL Initial:
sld

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