Hoyt Archery, Inc.Download PDFPatent Trials and Appeals BoardOct 4, 20212020002236 (P.T.A.B. Oct. 4, 2021) 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. 14/815,708 07/31/2015 Jeremy J. Ell 506267-00070 9197 153511 7590 10/04/2021 Dorsey & Whitney - SLC 111 South Main Street 21st Floor Salt Lake City, UT 84111-2176 EXAMINER KLAYMAN, AMIR ARIE ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 10/04/2021 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): ip.docket.slc@dorsey.com ip.patent.sl@dorsey.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEREMY J. ELL, DAN’L J. ANSELMO, and ZAK T. KURTZHALS Appeal 2020-002236 Application 14/815,708 Technology Center 3700 Before BRETT C. MARTIN, ANNETTE R. REIMERS, and MICHAEL L. WOODS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–38. An Oral Hearing in accordance with 37 C.F.R. § 41.47 was held on December 15, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hoyt Archery, Inc. Appeal Brief (“Appeal Br.”) 4, filed Aug. 22, 2019. Appeal 2020-002236 Application 14/815,708 2 CLAIMED SUBJECT MATTER The claimed subject matter “relates to archery bows and limbs for archery bows.” Spec. ¶ 1. Claims 1, 13, 20, 24, 28, and 35 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter and recites: 1. An archery bow with abutting limb support, comprising: a riser, comprising: a handle portion; a first riser portion extending from the handle portion, the first riser portion having a plurality of limb contact surfaces, the plurality of limb contact surfaces being spaced apart; a second riser portion extending from the handle portion; a first limb comprising: a neutral axis; a tension surf ace; a proximal end portion having a plurality of external surfaces, the plurality of external surfaces abutting and articulable relative to the plurality of limb contact surfaces, wherein the first limb is free-floating against the first riser portion; and an intermediate portion having a pivoting surface, the pivoting surface contacting at least one of the plurality of limb contact surfaces of the first riser portion, the pivoting surface having a center of curvature positioned outside the tension surface and positioned opposite the neutral axis relative to the pivoting surface; a second limb connected to the second riser portion; a bowstring connected to the archery bow, wherein tension in the bowstring is transferred to the first and second limbs. Appeal 2020-002236 Application 14/815,708 3 REJECTIONS I. Claims 1–12 and 24–27 stand rejected under 35 U.S.C. § 112(b) for indefiniteness. II. Claims 13–17 and 19 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Sims (US 8,347,869 B2, issued Jan. 8, 2013). III. Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable over Sims and Andrews (US 2006/0011181 A1, published Jan. 19, 2006). IV. Claim 20–23 stand rejected under 35 U.S.C. § 103 as unpatentable over Sims and Doornenbal (US 5,408,982, issued Apr. 25, 1995). V. Claims 28–30 and 32–34 stand rejected under 35 U.S.C. § 103 as unpatentable over Andrews and McPherson (US 2014/0116408 A1, published May 1, 2014). VI. Claim 31 stands rejected under 35 U.S.C. § 103 as unpatentable over Andrews, McPherson, and Eee (US 2011/0120436 A1, published May 26, 2011). VII. Claims 35–38 stand rejected under 35 U.S.C. § 103 as unpatentable over Sims and Denton (US 2016/0091273 A1, published Mar. 31, 2016). ANALYSIS Indefiniteness Claims 1–12 Regarding independent claim 1, the Examiner determines that it is unclear how the plurality of external surfaces of the proximal end portion can abut and articulate relative to the plurality of limb contact surfaces. Ans. Appeal 2020-002236 Application 14/815,708 4 3–4; see also Final Act. 2, 16–18.2 In particular, the Examiner takes the position that “[c]laim 1 requires two conditions: A) that proximal end will have a plurality of external surfaces; and B) that the pivoting surface of the intermediate will contact at least one of the plurality of external surface.” Ans. 4. First, Appellant correctly points out that “claim 1 actually recites, ‘the pivoting surface contacting at least one of the plurality of limb contact surfaces of the first riser portion.’” Reply Br. 5; see also Appeal Br. 9–10; id. at 25 (Claims App.).3 As such, “the pivoting surface of the intermediate is not required to contact at least one of the plurality of external surfaces, as alleged by the Examiner, but is required to contact at least one of the limb contact surfaces of the first riser portion.” Reply Br. 5; see also Appeal Br. 9–10; id. at 25 (Claims App.). Second, Appellant also correctly points out that claim 1 recites “a first limb comprising . . . a proximal end portion . . . not a proximal end, as asserted by the Examiner.” Reply Br. 5; see also Appeal Br. 9–10; id. at 25 (Claims App.). We agree with Appellant that “[t]he Examiner appears to be interpreting the proximal end portion as strictly the very most proximal end of the first limb and not a portion of the limb.” Reply Br. 5; see also Final Act. 18 (The Examiner stating that “[a]ccording to [Appellant’s] disclosure it seems impossible that one side of the limb (e.g. the proximal end) can be position[ed] upon the riser’s plurality of surfaces that are spaces apart.”). 2 Final Office Action (“Final Act.”), dated Feb. 26, 2019. Examiner’s Answer (“Ans.”), dated Nov. 26, 2019. 3 Reply Brief (“Reply Br.”), filed Jan. 27, 2020. Appeal 2020-002236 Application 14/815,708 5 We further agree with Appellant that an ordinarily skilled artisan “would understand claim 1, particularly when the claim is read in light of the [S]pecification,” in that the Specification “provides the plurality of limb contact surfaces can comprise a proximal limb pocket, within which the proximal end of the limb abuts and articulates (i.e., abuts and articulates relative to the plurality of limb contact surfaces within the proximal limb pocket).” Reply Br. 5; see also Appeal Br. 9; Spec. ¶¶ 10, 51, 63, Fig. 4. As such, we also agree with Appellant that “the plurality of external surfaces of the proximal end portion (e.g., outer pivoting surface 213, distally-facing surface 228) can abut and articulate relative to the plurality of limb contact surfaces (as recited in claim 1) rather than a single surface (as asserted by the Examiner).” Reply Br. 5; see also Appeal Br. 10; id. at 25 (Claims App.); Ans. 3–4; Final Act. 2, 16–18. Accordingly, for the above reasons, we do not sustain the Examiner’s rejection of claims 1–12 for indefiniteness. Claims 24–27 Regarding independent claim 24, the Examiner determines that “it is unclear how the ‘proximal end portion’ of the limb can free-float against ‘a first proximal limb pocket’ and not against a portion of the riser.” Ans. 5; see also Final Act. 18. First, Appellant correctly points out that claim 24 recites, in part, “a riser, comprising . . . a first riser portion extending from the handle portion, the first riser portion having a first proximal limb pocket.” Reply Br. 6; see also Appeal Br. 10–11; id. at 30 (Claims App.). We agree with Appellant that “the proximal end portion of the limb free-floats against a portion of the Appeal 2020-002236 Application 14/815,708 6 riser because the first proximal limb pocket is claimed as an element of the riser.” Reply Br. 6 see also Appeal Br. 10–11; id. at 30 (Claims App.). Second, Appellant also correctly points out that paragraph 37 of the Specification describes that “[t]he proximal end portion may have a plurality of external surfaces that contact a plurality of limb contact surfaces on the riser (e.g., within the proximal limb pocket and at an intermediate rocker support/pocket).” Reply Br. 6 see also Appeal Br. 10–11; Spec. ¶ 37; see also id. ¶¶ 10, 38, 43, 51, Fig. 2. As such, we agree with Appellant that “like the language in claim 24 itself, the [S]pecification also discloses that the proximal limb pocket is part of the riser.” Reply Br. 6. Regarding independent claim 24, the Examiner further determines that it is unclear how only the first limb of the first and second limbs is free- floating. Ans. 5–6; see also Final Act. 19. We agree with Appellant that “the Examiner appears to contend that the second limb must be claimed as free-floating if the first limb is so claimed.” Reply Br. 6. However, Appellant correctly points out that [t]he original disclosure . . . specifically states, ‘while the bow 100 in this example has upper and lower limbs 104, 106 that both have features of the present disclosure, it will be appreciated that in some embodiments only some of the limbs 104, 106 may have the features disclosed herein, with the remaining limbs having conventional features. Reply Br. 6 (citing Spec.¶ 46). Based on this disclosure from Appellant’s Specification, we agree with Appellant that “the second limb may be fastened to the second riser portion using conventional methods know[n] to a person having ordinary skill in the art” and that “the second limb does not Appeal 2020-002236 Application 14/815,708 7 need to free-float against the second riser portion to allow the first limb to free-float against the first riser portion.” Id.; see also Appeal Br. 11. Accordingly, for the above reasons, we do not sustain the Examiner’s rejection of claims 24–27 for indefiniteness. Anticipation by Sims Claims 13–17 and 19 Independent claim 13 recites “a first limb comprising: a neutral axis positioned within the first limb; a proximal end portion being rotatable about an axis of rotation relative to the limb pocket, the axis of rotation intersecting the neutral axis.” Appeal Br. 27 (Claims App.) (emphasis added). The Examiner finds that Sims teaches a neutral axis of a limb that intersects an axis of rotation. Final Act. 3–4; see also Ans. 7–11. The Examiner provides the following annotated version of Figure 15 of Sims, reproduced below. Appeal 2020-002236 Application 14/815,708 8 Figure 15 of Sims “is a side view of a fifth embodiment of the [Sims’s] invention” and “depicts a compound bow 202 embodying the principles of the present invention with limb pockets 204 and 206 mounted to the riser 208 of the bow, wherein “[r]iser 208 has upper and lower surfaces 209 and 210 which are arcs of circles with virtual centers 211 and 212.” Sims 6:57–58, 12:18–22, Fig. 15. Appeal 2020-002236 Application 14/815,708 9 The Examiner takes the position that “each axis of rotation of Sims’[s] limbs are within virtual centers 211 and 212, wherein the natural axis of each limbs, which is within the limbs, intersect such centers/axis of rotations.” Ans. 8. The Examiner further takes the position that “it is clear that within Sims (again as marked by the [E]xaminer [in the annotated version of Figure 15 of Sims]) the line of axis of rotation, and not the point (as argued by [Appellant]), is a cross line/reference that intersects the natural axis of the rotation.” Id. at 10 (italics omitted). Appellant contends the Examiner has not established that “Sims teaches, either expressly or inherently, ‘a first limb comprising: a neutral axis positioned within the first limb; a proximal end portion being rotatable about an axis of rotation relative to the limb pocket, the axis of rotation intersecting the neutral axis,’” as recited in claim 13. Reply Br. 7; see also Appeal Br. 12–13; id. at 27 (Claims App.). Appellant takes the position that “points 211 and 212 act as the axes of rotation for the respective limbs of the Sims reference” and provides the following annotated version of Figure 15 of Sims, reproduced below. Reply Br. 7–8; see also Appeal Br. 12–13. Appeal 2020-002236 Application 14/815,708 10 As discussed above, Figure 15 of Sims “is a side view of a fifth embodiment of the [Sims’s] invention” and “depicts a compound bow 202 embodying the principles of the present invention with limb pockets 204 and 206 mounted to the riser 208 of the bow, wherein “[r]iser 208 has upper and lower surfaces 209 and 210 which are arcs of circles with virtual centers 211 and 212.” Sims 6:57–58, 12:18–22, Fig. 15. In Appellant’s annotated version of Figure 15 of Sims, reproduced above, “point 212 is separated from the neutral axis [of] the limb by radius R.” Reply Br. 8. As correctly noted by Appellant, claim 13 recites “the neutral axis is positioned within the first limb.” Reply Br. 8; see also Appeal Br. 27 (Claims App.). We agree with Appellant that the axis of rotation denoted by virtual center 212 of Sims “extends orthogonally into and/or out of the page” and “does not extend parallel to the plane created by the page.” Reply Br. 8; see also Appeal Br. 12–13. As such, “the axis of rotation (i.e., the virtual center 212) [of Sims] does not intersect the neutral axis of the limb 217 because the point 212 is not even near the limb 217, let alone the neutral axis of the limb.” Reply Br. 8; see also id. (“Point 212 [of Sims], which is positioned outside of the limb, cannot intersect an axis that is positioned within the limb 217.”). Appeal 2020-002236 Application 14/815,708 11 We also agree with Appellant that even if the axis of rotation were interpreted as suggested by the Examiner, i.e., “as a line or ‘cross line/reference’” that extends into and out of the page, “that axis of rotation would not intersect the neutral axis of the limb because the limb is spaced apart from the neutral axis (e.g., by radius R depicted in [Appellant’s] annotated FIG. 15 [of Sims]), and the axis of rotation and the neutral axis extend perpendicular to one another.” Reply Br. 9; see also Ans. 10. Additionally, as noted by Appellant, the Examiner appears to be “interpreting an arbitrary radial line that extends between the virtual center 212 to the limb 217 (i.e., parallel to the page with respect to FIG. 15 of Sims) as an axis of rotation for the limb 217”; however, this arbitrary radial line is not “an axis of rotation of the limb because the limbs rotate about virtual centers 211 and 212, not about any other axes.” Reply Br. 9. Accordingly, for the above reasons, we do not sustain the Examiner’s rejection of claims 13–17 and 19 as anticipated by Sims. Obviousness over Sims and Andrews Claim 18 Claim 18 indirectly depends from claim 13. Appeal Br. 27, 28 (Claims App.). The Examiner relies on the same unsupported findings in Sims for claim 18 as those discussed above for independent claim 13. See Final Act. 6–7. The Examiner does not rely on the teachings of Andrews to remedy the deficiencies of Sims addressed above. Accordingly, for reasons similar to those presented above for claim 13, we do not sustain the Examiner’s rejection of claim 18 as unpatentable over Sims and Andrews. Appeal 2020-002236 Application 14/815,708 12 Obviousness over Sims and Doornenbal Claims 20–23 Appellant contends that “[t]he alleged dihedral limb-contacting surface of Doornenbal is not ‘angled upward relative to a lateral direction, the lateral direction being substantially perpendicular to the limb length and extending laterally away from a center plane of the riser,’” as recited in claim 20. Appeal Br. 15; see also id. at 29 (Claims App.); Reply Br. 11. Appellant’s contention is persuasive. As an initial matter, we note the Specification describes that angles 724, 726, the curved surfaces 214, and/or the outer pivoting surfaces 718 may be referred to as being ‘dihedral’ in the sense used in aeronautics, wherein the angles 724, 726 or those surfaces extend upward and outward relative to the center of the riser 702 and relative to a horizontal plane through the bow. In other words, the angles 724, 726 or those surfaces may extend away from the handle portion of the bow and laterally outward or horizontally relative to a vertical center plane or centerline of the riser 702 that is centrally positioned between the limbs 704. Spec. ¶ 67 (emphasis added). In addition, we note Figure 7 of the subject application clearly depicts angles 724, 726 as being “angled upward” relative to the center of the riser 702. See id.; see also Fig. 7; Appeal Br. 16; Reply Br. 11; In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (“[T]hings patent drawings show clearly are [not] to be disregarded.”) (emphasis in original). Appeal 2020-002236 Application 14/815,708 13 In this case, although limb-contacting surface (ball bearing 24) of Doornenbal is positioned on the center plane of the riser, the side surfaces of Doornenbal’s ball bearing 24, which contact the limb, “are angled downward” relative to a lateral (sideward) direction. Appeal Br. 15–16. Otherwise, as correctly pointed out by Appellant, “bearing 24 could not be received within a seat 28 on the bow limb 30.” Id. at 16; see also Doornenbal 5:47–53, Fig. 3.4 As such, we agree with Appellant that Doornenbal’s ball bearing 24 “is not angled upward relative to a lateral direction”; rather, it “is angled downward relative to the center plane of the riser.” Appeal Br. 15–16 (emphasis added). Accordingly, for the above reasons, we do not sustain the Examiner’s rejection of claims 20–23 as unpatentable over Sims and Doornenbal. 4 The Examiner does not appear to address Appellant’s argument regarding the downward angled limb-contacting surface (ball bearing 24) of Doornenbal. See Ans. 11–13. Rather, the Examiner appears to take issue with Appellant’s alleged inclusion of limitations from the Specification, “in this case the angles as shown in Fig. 7, into the claimed device.” Id. at 13. However, we note that claim 20 explicitly recites, “the at least one dihedral limb-contacting surface is angled upward relative to a lateral direction.” Appeal Br. 29 (Claims App.) (emphasis added). In addition, as discussed above, Appellant’s Specification describes that “angles 724, 726 . . . extend upward” relative to the center of riser 702 and Figure 7 of the subject application, clearly depicts angles 724, 726 as being “angled upward” relative to the center of riser 702. Spec. ¶ 67, Fig. 7. Further, as correctly pointed out by Appellant, “limitations within the claims should be read, not in a vacuum, but in light of the application.” Reply Br. 10 (citing MPEP § 2173). Appeal 2020-002236 Application 14/815,708 14 Obviousness over Andrews and McPherson Claims 28–30 and 32–34 Citing to paragraph 26 and Figure 1 of McPherson, the Examiner finds that “damper 120 is located in between a proximal limb support and an intermediate limb support along a span of the limb, i.e. between the proximal and intermediate limb supports.” Final Act. 12; see also Ans. 15; McPherson ¶ 26, Fig. 1. We agree with Appellant that “the McPherson reference provides no disclosure . . . that supports the Examiner’s assertion as to the position of the vibration dampener [120] being between the alleged limb supports.” Reply Br. 13; see also Appeal Br. 18. As correctly pointed out by Appellant, “[o]ther than the lone illustrated portrayal in FIG. 1, the position of the vibration dampener is not addressed in the McPherson reference” and “[t]he lone reference to the vibration dampener 120 within the McPherson reference merely states, ‘In some embodiments, a bow 100 comprises a vibration dampener 120, for example as shown in FIG. 1, which may be disposed in the riser 101.’” Reply Br. 13; McPherson ¶ 26, Fig. 1; see also Appeal Br. 18. Consequently, we agree with Appellant that this single sentence partnered with the depiction of Figure 1 of McPherson “does not teach or suggest a vibration dampener positioned between limb supports, as alleged by the Examiner.” Reply Br. 13. Accordingly, for the above reasons, we do not sustain the Examiner’s rejection of claims 28–30 and 32–34 as unpatentable over Andrews and McPherson. Appeal 2020-002236 Application 14/815,708 15 Obviousness over Andrews, McPherson, and Eee Claim 31 Claim 31 depends from claim 28. Appeal Br. 31, 32 (Claims App.). The Examiner relies on the same unsupported findings in McPherson for claim 31 as those discussed above for independent claim 28. See Final Act. 13–14. The Examiner does not rely on the teachings of Eee to remedy the deficiencies of McPherson addressed above. Accordingly, for reasons similar to those presented above for claim 28, we do not sustain the Examiner’s rejection of claim 31 as unpatentable over Andrews, McPherson, and Eee. Obviousness over Sims and Denton Claims 35–38 The Examiner finds that Denton discloses a limb contact surface that is oriented at an angle directed away from the handle portion and laterally away from a vertical center plane, as called for in claim 35. Final Act. 14– 15; see also Ans. 18–19; Appeal Br. 32 (Claims App.). In support of this finding, the Examiner provides the following annotated version of Figure 4 of Denton, reproduced below. Appeal 2020-002236 Application 14/815,708 16 Figure 4 of Denton is a section view of the archery bow of Figure 3 with limb 104 in tension and includes an illustration of longitudinal axis L of limb 104 that extends through the centerline of limb 104. Denton ¶¶ 29, 61, Fig. 4. As an initial matter and as noted above, Appellant’s Specification describes that angles 724, 726, the curved surfaces 214, and/or the outer pivoting surfaces 718 may be referred to as being ‘dihedral’ in the sense used in aeronautics, wherein the angles 724, 726 or those surfaces extend upward and outward relative to the center of the riser 702 and relative to a horizontal plane through the bow. In other words, the angles 724, 726 or those surfaces may extend away from the handle portion of the bow and laterally outward or horizontally relative to a vertical center plane or centerline of the riser 702 that is centrally positioned between the limbs 704. Appeal 2020-002236 Application 14/815,708 17 Spec. ¶ 67 (emphases added), Fig. 7.5 In this case, upon review of the Examiner’s annotated version of Figure 4 of Denton, we note that the alleged angle formed by the limb contact surface is in-line with center plane, L, not laterally away from center plane, L, as required by claim 35. Final Act. 15, Ans. 19; see also Appeal Br. 32 (Claims App.); Denton, Fig. 4. As such, we agree with Appellant that “the alleged angle asserted by the Examiner is not directed laterally away from the vertical center plane of the riser but extends along or parallel to the vertical center plane.” Reply Br. 16; see also Appeal Br. 22–23. Accordingly, for the above reasons, we do not sustain the Examiner’s rejection of claims 35–38 as unpatentable over Sims and Denton. 5 Similar to that discussed above in reference to Sims and Doornenbal at footnote 4, the Examiner appears to take issue with Appellant’s alleged inclusion of limitations from the Specification into the claimed device. See Ans. 19–20. However, we note that claim 35 explicitly recites, “the limb contact surface being oriented at an angle directed away from the handle portion and laterally away from a vertical center plane of the first riser portion.” Appeal Br. 32 (Claims App.) (emphases added). In addition, as discussed above, Appellant’s Specification describes that “angles 724, 726 . . . may extend away from the handle portion of the bow and laterally outward or horizontally relative to a vertical center plane or centerline of the riser 702.” Spec. ¶ 67, Fig. 7. Further, as correctly pointed out by Appellant, “limitations within the claims should be read, not in a vacuum, but in light of the application.” Reply Br. 16 (citing MPEP § 2173). Appeal 2020-002236 Application 14/815,708 18 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–12, 24–27 112(b) Indefiniteness 1–12, 24–27 13–17, 19 102(a)(1) Sims 13–17, 19 18 103 Sims, Andrews 18 20–23 103 Sims, Doornenbal 20–23 28–30, 32– 34 103 Andrews, McPherson 28–30, 32– 34 31 103 Andrews, McPherson, Eee 31 35–38 103 Sims, Denton 35–38 Overall Outcome 1–38 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). REVERSED Copy with citationCopy as parenthetical citation