Ex Parte Thompson

Board of Patent Appeals and Interferences

Nov 8, 2010

10914792 (B.P.A.I. Nov. 8, 2010)

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.
10/914,792 08/10/2004 Gerald Robert Thompson 941-1-1-1 8323
23898 7590 11/08/2010
VINCENT L. CARNEY LAW OFFICE
P.O. BOX 80836
LINCOLN, NE 68501-0836
EXAMINER
ELDRED, JOHN W
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
11/08/2010 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 GERALD ROBERT THOMPSON
____________

Appeal 2009-002599
Application 10/914,792
Technology Center 3600
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and KEN B.
BARRETT, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-002599
Application 10/914,792

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STATEMENT OF THE CASE
Gerald Robert Thompson (Appellant) seeks our review under 35
U.S.C. § 134 of the Examiner’s final rejection of claims 1-12, all of the
claims currently pending in the application. We have jurisdiction under 35
U.S.C. § 6(b) (2002). We AFFIRM.
THE INVENTION
Appellant’s claimed invention is to a firearm and method for making a
firearm including a wood gunstock and holder. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method of making a firearm comprising the
steps of:

forming a wood gunstock with a recess sufficiently
large to receive a barrel and action of the firearm;

fastening a holder to the wood gunstock in the
recess;

supporting the barrel and action of the firearm on
the holder, wherein the holder has a high modulus
of elasticity and vibration conductivity, whereby
recoil forces are distributed over the holder
without damage to the holder and from the holder
to a contact area with the wood gunstock of at least
12 square inches whereby vibrational forces in the
holder are transferred to the wood gunstock over a
wide area of the wood without concentration of
forces;

the step of fastening including the step of fastening
the holders to the wood gunstock with tubular
bushings having fasteners passing through their
center, whereby concentrated forces from
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discharge of the firearm are not transferred directly
to the fasteners to loosen them.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1-12 under 35 U.S.C. § 103(a) as being unpatentable over
Casull (US 4,385,464, issued May 31, 1983) in view of either Wild (US
3,972,143, issued August 3, 1976) or Mason (US 5,247,758, issued
September 28, 1993);
(ii) claims 1-12 under 35 U.S.C. § 103(a) as being unpatentable over
Clerke (US 3,830,003, issued August 20, 1974) in view of either Wild or
Mason; and
(iii) claims 1-12 under 35 U.S.C. § 103(a) as being unpatentable over
Dye (US 3,206,885, issued September 21, 1965) in view of either Wild or
Mason.

ISSUE
Did the Examiner err in concluding that the subject matter of claims
1-12 would have been obvious to a person of ordinary skill in the art over
each of the Casull, Clerke and Dye patents, in view of the teachings of either
Wild or Mason?

ANALYSIS
The Examiner found that each of the Casull, Clerke and Dye patents
discloses most of the limitations appearing in claims 1-12. (Ans. 3-4).
These three patents were found by the Examiner to be lacking an explicit
disclosure of the particular size of the area of contact between the wood
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gunstock and the holder (pertinent to claims 1-3 and 7-12), and the claimed
high modulus of elasticity of the holder (pertinent to all except claim 4).
(Id.). The three patents were also found to lack a disclosure of fastening the
holder to the gunstock with tubular bushings having fasteners passing
through their centers, such that the firearm discharge forces are not
transferred directly to the fasteners to loosen them (pertinent to claims 1-3).
(Ans. 4).
The Examiner maintains that, assuming the guns of Casull, Clerke and
Dye are of normal size, the area of contact between the holder and the stock
would be inherently met, or, in the alternative, would have been an obvious
engineering choice in order to provide a desired level of support. The
Examiner further points out, with respect to the claim limitations calling for
the holder to have a high modulus of elasticity, that Appellant only
specifically discloses making the holder of aluminum, while generally
commenting that other materials could be used. The Examiner concludes
that, since each of the three patents discloses a holder made of some type of
metal, it would have been obvious to select a metal such as aluminum or
steel, which are common gun materials, which would have the claimed high
modulus of elasticity, since the metal must be rigid and strong enough to
withstand the firing forces of the gun.
The Examiner further concluded that it would have been obvious, in
view of the teachings of Wild or Mason, to modify any of the Casull, Clerke
or Dye constructions, so as to include fasteners comprising bushings through
which fasteners are passed, in order to provide a construction in which the
initial tension of the fasteners is not lost (Wild) or to avoid compression of
the stock material (Mason).
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Obviousness--Casull in view of either Wild or Mason
In countering the Examiner’s above findings and conclusions relative
to the combination of Casull and Wild or Mason as applied to claim 1,
Appellant contends that:
[t]he patent to Casull teaches away from close
bedding with the stock. It splits the long wooden
member and increases rather than decreases
vibrations. At any rate it teaches away from the
claims.
(Appeal Br. 9).
We disagree with Appellant’s characterization of Casull’s teachings
regarding bedding of the action with the stock. While Casull does teach that
it is desirable to closely space the barrel of the rifle to the front grip portion
of the stock, Casull expressly states that an objective of the disclosed
construction is to:
provide a rifle in which the action associated with
the barrel is securely attached to a rigid insert
member which, in turn, is secured to an opening in
the stock of the rifle. An additional objective is to
provide a method of firmly securing the rigid insert
member within the opening in the barrel.
(Casull, col. 1, ll. 38-44).
Appellant’s argument directed to Casull splitting the long wooden
member and increasing rather than decreasing vibration fails to identify any
structure set forth in claim 1 that patentably defines Appellant’s construction
over the Casull construction. The assertion that vibration will increase
rather than decrease is nothing more than attorney argument unsupported by
evidence in the record. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed.
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Cir. 1996)(argument of counsel cannot take the place of factually supported
objective evidence).
Appellant’s contentions with respect to the Wild and Mason patents
(see Appeal Br. 9) fail to identify how the fasteners in claim 1 structurally
distinguish over the fasteners disclosed in Wild and Mason, and further do
not point to any error in the Examiner’s articulated reason to combine the
teachings of Wild or Mason with those of Casull. We are thus not persuaded
that the Examiner’s conclusion that claim 1 is unpatentable over Casull and
Wild or Mason is in error.
Appellant separately argues the patentability of claims 2 and 3, which
depend from claim 1. (Appeal Br. 9-10). These claims recite that the holder
is to have a modulus of elasticity of at least 3 million psi (claim 2), and
between 9 and 10 million psi (claim 3). Appellant contends that the
modulus of elasticity is not a mere matter of design choice, but describes the
type of material needed to distribute the forces evenly without itself
disintegrating as wood does. (Id.). Appellant asserts that none of Casull,
Wild or Mason suggests a need for the holder to have a high modulus of
elasticity. (Appeal Br. 10).
The Examiner notes that Appellant’s Specification identifies only
aluminum as a specific material from which the holder is to be made. (Ans.
3). The Examiner further points to the use of metal for the holder/insert
member in Casull, and concludes that it would have been obvious to use
either aluminum or steel, both common gun materials, with the claimed
modulus of elasticity properties, in that the metal must be rigid and strong
enough to withstand the firing forces of the gun. (Ans. 4). Casull indeed
calls for the insert member to be “rigid” and made of “a cast or machined
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block of metal”. (Casull, col. 1, ll. 50-51; col. 2, ll. 61-62). As such, we are
not persuaded that Casull fails to suggest a need for the holder to have a high
modulus of elasticity. Further, neither Appellant’s Specification nor any
other evidence of record persuasively establishes any criticality or
unexpected results obtained by employing a holder having the particular
values of the modulus of elasticity set forth in claims 2 and 3. See In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellant separately argues the patentability of independent claim 4.
Appellant’s contentions in this regard are that Casull does not suggest
distributing the vibrations over a wide area of the stock, and transmitting
them to the wood over an area of at least 12 square inches, and that Casull
teaches away from the invention by explicitly transferring vibrations from
the holder to narrower members that will concentrate forces. (Ans. 11).
The holder/insert member 16 in Casull appears to be mounted in the
wood gunstock 12 much in the same manner and position as is the holder in
Appellant’s disclosed embodiment. (compare Casull, Fig. 1 with
Appellant’s Figs. 1-7). As such, we have trouble understanding Appellant’s
contention that Casull does not disclose or suggest distributing vibrations
from the firing of the rifle over a wide area of the stock, i.e. the area
surrounding the insert member. With respect to the contention that Casull
does not suggest distributing the vibrations over an area of at least 12 square
inches, Appellant is doing little more than restating a claim limitation,
without calling into question with any degree of specificity the Examiner’s
finding that, assuming a normal sized gun, the area of contact between the
holder and the gunstock of Casull (and thus the area of distribution) would
be inherently provided.
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We are thus not persuaded of error in the Examiner’s rejection of
claim 4 as being unpatentable over Casull in view of Wild or Mason.
Appellant additionally presents arguments under separate headings for
claims 5 and 6, which depend from claim 4. These arguments mirror those
presented for claims 2 and 3 discussed above, and for those same reasons,
we are not persuaded of error in the Examiner’s rejection of claims 5 and 6.
Independent claim 7, and claims 8 and 9, depending therefrom are
each argued under a separate heading. Appellant’s arguments for the
patentability of each of these claims are essentially the same as those
presented for claims 1, 2 and 3, respectively. For the reasons stated above,
we are not persuaded of error in the Examiner’s rejection of these claims as
being unpatentable over Casull in view of Wild or Mason.
Independent claim 10, and claims 11 and 12 depending therefrom are
also each argued under a separate heading. Appellant’s arguments for the
patentability of each of these claims are essentially the same as those
presented for claims 1, 2 and 3, respectively. For the reasons stated above,
we are not persuaded of error in the Examiner’s rejection of these claims as
being unpatentable over Casull in view of Wild or Mason.
The rejection of claims 1-12 as being unpatentable over Casull in
view of Wild or Mason will be sustained.
Obviousness--Clerke in view of either Wild or Mason
Clerke discloses a lightweight metal stock of steel, magnesium or
other suitable metal. (Clerke, col. 4, ll. 59-65). Clerke expressly states that
the wooden side members 45, asserted by the Examiner to constitute the
gunstock to which forces or vibrations are transferred from a holder (Ans.
5), will have “no forces [] passed through the wood from the stock. In other
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words, the wood only serves as an ornamental material . . .”. (Clerke, col. 6,
ll. 17-26). Taking this teaching of Clerke at face value as to what Clerke
fairly teaches, we must agree with Appellant’s contention that the Examiner
has misconstrued the teachings of Clerke in rejecting the claims.
The rejection of claims 1-12 as unpatentable over Clerke, Wild and
Mason will not be sustained.
Obviousness--Dye in view of either Wild or Mason
Appellant contends that, in Dye, the metal insert or holder is spaced
apart from the wood gunstock by a plastic resin, and that vibrations resulting
from recoil of the firearm are not transferred directly from the holder to the
contact area of the wood gunstock, but instead are transferred from the
holder to the plastic resin, then to the wood. (Appeal Br. 8). The Examiner
replies that the claims do not contain a limitation requiring direct transfer of
vibrations, and that the claims do not specify that the holder and the wood
gunstock be in direct contact. (Ans. 4).
Claims 1-3 and 7-12 all require the existence of a contact area
between the wood gunstock and the holder. Claims 4-6 do not include
reference to a contact area, but only to an area over which vibrations are
transmitted. We conclude that the broadest reasonable interpretation of
claims 1-3 and 7-12 that is consistent with the Appellant’s Specification is
that the claimed contact area is to be interpreted as requiring direct contact
between the holder and the wood gunstock. The only mention of the use of
an adhesive in Appellant’s Specification is a disclosure that, in some
embodiments, an epoxy may be used to better connect the barrel holding
section of the holder to the wood stock. (Spec., p. 7, l. 21-p. 8, l. 3).
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Accordingly, the Examiner’s rejection of claims 1-3 and 7-12 over
Dye in view of Wild or Mason is based on an unreasonably broad
interpretation of the language in these claims requiring the presence of a
contact area. The rejection will not be sustained as to those claims. No
similar limitation is present in claims 4-6, and Appellant’s argument is thus
not commensurate in scope with those claims. Appellant’s remaining
arguments relative to this ground of rejection as they apply to claims 4-6 are
essentially recitations of claim language, and are not persuasive of error.
The rejection of claims 1-3 and 7-12 as unpatentable over Dye and
Wild or Mason will not be sustained. The rejection of claims 4-6 will be
sustained.
CONCLUSIONS
The Examiner did not err in concluding that the subject matter of
claims 1-12 would have been obvious over the Casull patent, in view of the
teachings of either Wild or Mason.
The Examiner erred in concluding that the subject matter of claims 1-
12 would have been obvious over the Clerke patent, in view of the teachings
of either Wild or Mason.
The Examiner erred in concluding that the subject matter of claims 1-
3 and 7-12 would have been obvious over the Dye patent, in view of the
teachings of either Wild or Mason.
The Examiner did not err in concluding that the subject matter of
claims 4-6 would have been obvious over the Dye patent, in view of the
teachings of either Wild or Mason.
DECISION
The decision of the Examiner to reject claims 1-12 as being
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unpatentable over Casull in view of Wild or Mason is AFFIRMED. The
decision of the Examiner to reject claims 1-12 as being unpatentable over
Clerke in view of Wild or Mason is REVERSED. The decision of the
Examiner to reject claims 1-3 and 7-12 as being unpatentable over Dye in
view of Wild or Mason is REVERSED. The decision of the Examiner to
reject claims 4-6 as being unpatentable over Dye in view of Wild or Mason
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)(1)(iv) (2007).

AFFIRMED

mls

VINCENT L. CARNEY LAW OFFICE
P.O. BOX 80836
LINCOLN, NEBRASKA 68501-0836