Ex Parte Wygant

Board of Patent Appeals and Interferences

Nov 27, 2007

10789078 (B.P.A.I. Nov. 27, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN J. WYGANT
____________

Appeal 2007-3303
Application 10/789,078
Technology Center 3600
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Decided: November 27, 2007
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Before MURRIEL E. CRAWFORD, LINDA E. HORNER, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-15, 17-18, and 20-22. Claims 16, 19, and 23 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We
AFFIRM.

Appeal 2007-3303
Application 10/789,078

THE INVENTION
The Appellant’s claimed invention is directed to a pneumatic shooting
device. The shooting device includes a barrel and an action having a
housing defining a pressure reservoir with a discharge outlet connected to
the barrel. (Specification, 3: 6-8.) Claim 1, reproduced below is
representative of the subject matter of appeal.
1. A pneumatic shooting device, comprising:
a barrel; and
an action including a housing defining a pressure
reservoir with a discharge outlet connected to and
approximately collinear with said barrel, a linear bearing body
coupled with said housing, and a piston having a discharge end,
said piston being slidably movable within said linear bearing
body to selectively open and close said discharge outlet.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Schneider 5,769,066 June 23, 1998
Salva 2004/0200466 A1 October 14, 2004

The following rejections are before us for review:
1. Claims 1-5, 7-9, 12-14, 17-18, and 20-22 are rejected under
35 U.S.C. § 102(b) as anticipated by Schneider.
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2. Claims 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schneider in view of Salva.
3. Claims 10-11 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schneider.

THE ISSUE
The Appellant argues that the Examiner erred in rejecting the claims
1-5, 7-9, 12-14, 17-18, and 20-22 under 35 U.S.C. § 102(b) as anticipated by
Schneider.
This first issue is whether Schneider discloses “a pressure reservoir
with a discharge outlet connected to and approximately collinear with said
barrel.”
This second issue is whether Schneider discloses “a piston being
slidably movable within said linear bearing body to selectively open and
close said discharge outlet.”

FINDINGS OF FACT
We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence1:
1. Schneider shows a pneumatic shooting device with a barrel (72)
(Figure 6).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
explaining the general evidentiary standard for proceedings before the Patent
Office.

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Application 10/789,078

2. Schneider shows a housing (12) with an air reservoir (109), a
longitudinal bore (21) collinear with the gun barrel, piston sleeve (32), and
piston (40) (Figures 6 and 22.)
3. Webster’s New World Dictionary, Third College Edition (1988), lists
the primary definition of outlet as: 1) a passage or vent for letting something
out.
4. Schneider’s air reservoir (109) is vented when first radial vents (26)
momentarily align with second radial vents (18). In this position the
longitudinal bore (21) being previously sealed, receives the accumulated gas
charge within air reservoir (109) (Col. 5:48-57).
5. Schneider’s bore (21) serves as a “discharge outlet” for the air
reservoir (109) since gas is vented to this bore.
6. Schneider piston (40) moves air control spool (20) in the direction of
the arrow as seen in Figures 22-23 (Col. 5:28-43).

PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631, (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
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interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.
"[A] prima facie case of anticipation [may be] based on inherency." In
re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once a prima facie case of
anticipation has been established, the burden shifts to the Appellant to prove
that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977) ("Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product."). See also In re Spada, 911 F.2d 705,
708-09 (Fed. Cir. 1990).

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
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secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
The Appellant argues that claim 1 is not anticipated because, “The
discharge outlet of Schneider is defined as a radial vent …, which defines
the outlet as being perpendicular to the barrel. The Examiner has defined a
housing with a discharge outlet, while Appellant has claimed a discharge
outlet from the pressure reservoir.” (Reply Br. 5:9-12). The Appellant also
argues, “The circuitous route of the radial vents, is simply not the structure
claimed by the present invention…” (Br. 13:10-11).
We disagree. In Schneider’s device the air reservoir (109) serves as a
pressure reservoir since it stores gas (FF 4). The accumulated gas is vented
to bore (21) from the air reservoir (109) after traveling through the radial
vents (FF 4). Giving the term “outlet” it broadest reasonable interpretation
in view of the Specification, we determine that the bore (21) may be
considered an “outlet” since the gas is eventually vented there (FF 4).
Schneider’s bore or “outlet” (21) is collinear with the gun barrel (31) as
required by claim 1 (FF 2). There is no requirement in the claim that the
vented gas cannot travel perpendicularly, circuitously, or in any other
direction, before being vented to the outlet which is collinear to the barrel.
As noted in the Examiner’s Answer, the use of the term “comprising” does
not exclude other elements from the claim (Ans. 10:3-5). The Specification
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does not provide a definition of “outlet” that is inconsistent with our
definition, and we decline to read a specific embodiment of an outlet from
the detailed description into the rejected claims.
The Appellant also argues Schneider does not disclose that the “piston
is slidable so as to selectively open and close the discharge outlet of the
pressure reservoir” (Reply Br. 5:22-23). The Appellant further argues that
only the radial vents 26 are closed or opened, not the discharge outlet (Reply
Br. 6:1-3).
We disagree. When the piston (40) moves air control spool (20), gas
is vented from the pressure reservoir (109) to the radial vents, and then to the
discharge outlet (21) (FF 3-5). The motion of the piston (40) controls
whether or not the bore (or “discharge outlet”) (21) is opened to the pressure
reservoir (109).
The Appellants arguments for claims 6, 10-11, 15, and 21-22 are the
same as relied on for claim 1 and are unpersuasive for the reasons given
above.

CONCLUSIONS OF LAW
We find that the Appellant has failed to show that the Examiner erred
in rejecting claims 1-5, 7-9, 12-14, 17-18, and 20-22 are rejected under
35 U.S.C. § 102(b) as anticipated by Schneider.
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We find that the Appellant has also failed to show that the Examiner
erred in rejecting claim 6 under 35 U.S.C. § 103(a) as unpatentable over
Schneider in view of Salva, and claims 10-11 and 15 as unpatentable over
Schneider.
DECISON
The decision of the Examiner to reject claims 1-15, 17-18, and 20-22
is AFFIRMED.

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)(1)(iv).

vsh

TODD T. TAYLOR
TAYLOR & AUST, P.C.
142 S. MAIN ST.
P.O. BOX 560
AVILLA IN 46710

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