10906190 - (D) (B.P.A.I. Mar. 28, 2011)

Ex Parte Weir

Board of Patent Appeals and InterferencesMar 28, 2011

10906190 - (D) (B.P.A.I. Mar. 28, 2011)

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. 10/906,190 02/08/2005 Robert F. Weir 188-001 3190 37468 7590 03/28/2011 STOCKWELL & SMEDLEY, PSC 861 CORPORATE DRIVE, SUITE 200 LEXINGTON, KY 40503 EXAMINER TROY, DANIEL J ART UNIT PAPER NUMBER 3641 MAIL DATE DELIVERY MODE 03/28/2011 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 ROBERT F. WEIR ____________________ Appeal 2009-009649 Application 10/906,190 Technology Center 3600 ____________________ Before: WILLIAM F. PATE III, LINDA E. HORNER, and KEN B. BARRETT, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-009649 Application 10/906,190 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 9. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a rail mounted sling fitting. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A rail mounted sling fitting for a weapon, the fitting comprising: A fitting body; At least two clamp ends extending from and curling under the fitting body such that a space is defined as an interior of the fitting body and ends; A tightening means for biasing the clamp ends towards one another. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Howe US 2003/0121197 A1 Jul. 3, 2003 REJECTION Claims 1-9 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Howe. Ans. 3. OPINION We adopt as our own the Examiner’s findings of fact in the paragraph bridging pages 3 and 4 of the Examiner’s Answer and the first four full paragraphs on page 4 of the Answer. We also adopt the Examiner’s claim construction that the preambular recitation of a rail mounted sling fitting is Appeal 2009-009649 Application 10/906,190 3 an intended use. Ans. 5. Finally, we adopt the Examiner’s finding that the fitting body housing 55 of Howe is capable of being used as a rail mounted sling fitting for a weapon. Ans. 3. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). In this instance, we agree with the Examiner that the body of the claim defines a structurally complete invention that uses the preamble only to state a purpose or intended use. Accordingly, the Examiner has properly construed the claim under the applicable law and determined that the structure of Howe, which includes every feature of the independent claim, is an anticipatory reference. Under this claim construction, Appellant’s argument about the suitability of the housing 55 of Howe as a sling fitting is unavailing. Additionally, Appellant’s argument that the vented rib of Howe is not a rail is not persuasive. Notwithstanding that we have determined that the Examiner’s claim construction is reasonable, we are also in agreement with the Examiner’s finding that the housing 55 of Howe is capable of being used as a rail mounted sling fitting for a weapon. As the Examiner has noted, the housing 55 has identical structure to that claimed in independent claim 1. Furthermore, the housing 55 appears to be robustly made and fastened on to Appeal 2009-009649 Application 10/906,190 4 the weapon with two bolts 58. Howe, para. [0034]. Therefore, it is our conclusion that the Appellant’s argument that use of Howe’s housing 55 as a sling fitting would damage the sight of the weapon is based on speculation or conjecture. Br. 8. The argument that the sling would obscure the sight is based on the premise that the sling remains attached when the weapon is sighted and fired. Id. Appellant’s argument that the vented rib 68 is not a rail is also not convincing. See Br. 8-9. The dictionary defines a rail as “a bar of wood or metal fixed horizontally for any of various purposes . . . .” RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE 1595 (2d. Unabridged Ed. 1988). The ventilated rib of Howe certainly satisfies such a definition. Finally with respect to claim 9, which Appellant argues separately, the Examiner has identified opening 75 of Howe as the offset clip hole. Ans. 4. Appellant has presented no argument as to how the opening 75 does not satisfy the offset clip hole limitation. Therefore, the Examiner has satisfied his burden of establishing that the housing 55 of Howe discloses the claimed element of an offset clip hole. For the reasons given above, it is our finding that Howe anticipates the subject matter of claims 1-9. DECISION The rejection of claims 1-9 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) (2010). AFFIRMED nlk