Ex Parte YehleDownload PDFPatent Trial and Appeal BoardJan 25, 201814454224 (P.T.A.B. Jan. 25, 2018) Copy Citation 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. 14/454,224 08/07/2014 Craig T. Yehle BOWT10DV1 9045 23892 7590 01/29/2018 DAVID S AT AVT EXAMINER 2852 WILLAMETTE ST KLAYMAN, AMIR ARIE #402 EUGENE, OR 97405-8200 ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 01/29/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): dsalavi@northwestpatent.com dsalavi@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CRAIG T. YEHLE Appeal 2016-007883 Application 14/454,224 Technology Center 3700 Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and JEFFREY A. STEPHENS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 18—23. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2016-007883 Application 14/454,224 CLAIMED SUBJECT MATTER The claims are directed to a method of nocking an arrow into a compound archery bow. Claim 23, reproduced below, is illustrative of the claimed subject matter: 23. A method comprising: (i) nocking an arrow onto a draw cable of a compound archery bow at brace, wherein the compound archery bow comprises: (a) a riser and first and second bow limbs attached to the riser, (b) first and second pulley members rotatably mounted on the first and second bow limbs, respectively, (c) the draw cable engaged with the first and second pulley members, (d) one or more additional cables coupled to the first and second bow limbs, and (e) a cable guard comprising (1) an elongated, resilient, non-articulated member attached to and extending backward from the riser, and (2) a cable retainer engaged with the elongated member and with each additional cable, wherein the cable guard is arranged with the bow at brace to retain a central portion of each additional cable displaced laterally from a shooting plane of the bow by a first cable displacement distance D1 that is greater than or about equal to a distance F that fetching of an arrow nocked onto the draw cable extends transversely from the shooting plane toward the one or more additional cables; (ii) pulling the draw cable to draw the bow with the nocked arrow, wherein: (a) the bow limbs, the draw cable, and the additional cables are arranged so that pulling the draw cable to draw the bow causes (1) the pulley members to rotate and let out the draw cable, (2) each additional cable to be taken up or let out by at least one of the pulley members, and (3) the first and second bow limbs to bend toward one another, (b) the cable guard is arranged so that pulling the draw cable to draw the bow causes the cable guard to bend toward the shooting plane in response to tension in at least one of the one or more additional cables and, with the bow drawn, to retain the 2 Appeal 2016-007883 Application 14/454,224 central portion of at least one of the one or more additional cables displaced laterally from the shooting plane by a second cable displacement distance D2, (c) the second cable displacement distance D2 is greater than or about equal to a distance S that a shaft of the arrow nocked onto the draw cable extends transversely from the shooting plane toward the one or more additional cables, and (d) the second cable displacement distance D2 is less than the distance F; and (iii) releasing the draw cable to shoot the arrow. REJECTIONS Claims 18—23 are rejected under 35 U.S.C. § 101. Claims 18—23 are rejected under § 103(a) as being unpatentable over Grace ’943 (US 2010/0083943 Al, pub. Apr. 8, 2010). OPINION The Examiner initially considered § 101 eligibility under the “machine-or-transformation test,” (Final Act. 2-4) which is “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). However, the Examiner incorrectly interpreted that test as requiring both a machine and transformation, and also requiring a machine that performs the transformation without human assistance or manipulation. Final Act. 2-4; Ans. 4—6. The Examiner further asserted in the Examiner’s Answer that the claims were directed to the abstract idea of nocking, drawing and firing an arrow, which the Examiner reasoned was a method of organizing human activity. Ans. 3. Claim 23 requires specific structural elements, an arrow, 3 Appeal 2016-007883 Application 14/454,224 implicitly having a nock and fletching, and a compound bow having cables, a riser, limbs, pulleys, and a cable guard. Claim 23 also requires a specific sequence of events, nocking an arrow, pulling the draw cable so as to bend the cable guard in a particular way and releasing the cable to shoot the arrow. These are not elements or steps that can be embodied by any one of a vast selection of known or unknown structures or manipulations, as is the case with abstractions. This makes the limitations in the present case distinguishable from those in the cases cited by the Examiner. Ans. 6—8. Accordingly, we conclude the subject matter of claims 18—23 is patent-eligible. Turning to the rejection under § 103(a), the critical point of contention is whether the so-called “general conditions” ready for “routine optimization”1 are taught by the cited reference Grace ’943. Final Act. 6—8; App. Br. 9-10; Ans. 9—13; Reply. Br. 4. Appellant and the Examiner agree on what constitutes the critical portions of the Grace ’943 disclosure: This reduced dimension can enable the titanium cable guard to flex in a predetermined manner, possibly reducing the potential for one of more of the cams to lean out of vertical alignment. As yet another option, the materials used to construct the cable guard can be selected and/or combined in a way so that the resulting cable guard flexes slightly toward the plane in which the bowstring travels. With this flexing cable guard construction, the potential for one or more of the cams to lean out of vertical alignment can be reduced if desired. ... It is noted that while there might be a slight flexure of the cable guard when the cables are under extreme tension along 1 For a detailed discussion of In re Aller, 220 F.2d 454 (CCPA 1955), cited by both the Appellant and the Examiner, and related cases, see MPEP §2144.05. 4 Appeal 2016-007883 Application 14/454,224 the draw stroke, the cable guides are still considered to be held at a fixed distance from the riser 102. Grace ’943 paras. 33—37. Appellant and the Examiner disagree regarding how the disclosure reproduced above would be interpreted by one skilled in the art. Although we agree with the Examiner that one skilled in the art reading the Grace ’943 disclosure would understand a very slight amount of flexure in the cable guard to be desirable, we cannot agree with the Examiner that one skilled in the art would understand this disclosure as an invitation to seek an optimal degree of flexibility for the cable guard far exceeding anything contemplated in the Grace ’943 disclosure. Grace ’943 does not illustrate any flexure and the limited mention of the cable guard’s flex is referred to only as slight. Paragraph 37 appears to indicate that the slight cable guard flexure contemplated is insufficient to cause an appreciable movement of the cable guide with respect to the riser. This starkly contrasts with the type of movement depicted in Appellant’s Figures 2A, 2B, 4A, 4B. Although we recognize the § 103(a) inquiry is an objective one, US Patent 8,424,5112 to Grace (Grace ’511), which issued from a continuation- in-part in the same patent family as Grace ’943, is informative as to how one skilled in the art would understand the Grace’ 943 disclosure. In Grace ’511, the importance of additional flexibility is expressly recognized. In contrast to Grace ’943, the flexibility of the cable guard is depicted in the Grace ’511 figures (e.g., Fig. 4B) and the degree of that flexibility is expressly discussed (col. 10,11. 50-61; col. 11,11. 1—5), as are various options for achieving it (e.g., Figs. 15—31). The Examiner is essentially asking us to read aspects of 2 Previously made of record on the Aug. 11, 2014 PTO form 1449. 5 Appeal 2016-007883 Application 14/454,224 the later Grace ’511 disclosure into the disclosure of Grace ’943. We cannot agree with the Examiner that one skilled in the art would read Grace ’943 in this manner without the benefit of hindsight. The difference between the type of flexibility discussed in Grace ’943 and that described in the Specification, and recited in the claims, of the present application is a difference in kind and not merely a difference in degree. See, e.g., MPEP § 2144.05 (quoting In re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933)). Accordingly, we cannot sustain the § 103(a) rejection on the basis set forth by the Examiner. DECISION The Examiner’s rejections are reversed. REVERSED 6 Copy with citationCopy as parenthetical citation