Robert Semaan

Patent Trials and Appeals Board

Aug 18, 2021

2021000557 (P.T.A.B. Aug. 18, 2021)

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.
16/262,531 01/30/2019 Robert Semaan 108892.000001 7822
177569 7590 08/18/2021
Quicker Law, LLC
Two Ballpark Center
800 Battery Avenue SE Suite 100
Atlanta, GA 30339
EXAMINER
KLEIN, GABRIEL J
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
08/18/2021 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):
docketing@quickerlaw.com
quickerlawdocketing@maxval.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT SEMAAN
____________

Appeal 2021-000557
Application 16/262,531
Technology Center 3600
____________

Before JOHN C. KERINS, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–11 and 13–21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Robert Semaan as the real party in
interest. Appeal Br. 1.
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THE INVENTION
Appellant’s invention relates to “firearm sights.” Spec. ¶ 1. Claims 1,
11, and 21 are the independent claims on appeal. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A retrofit sight system for a firearm, the sight system
comprising:
a housing configured to be fitted on a firearm;
an aiming indicia at least partially enclosed by the housing,
comprising a rear iron sight having two spaced apart sight
elements defining a rear sight gap, and a front iron sight
configured to be aligned with the rear sight gap, wherein
the rear iron sight sight elements and the front iron sight
each include a transparent optical lens disposed on a rear
side; and
wherein each optical lens has a positive optical power configured
to provide substantially clear vision of the aiming indicia
when viewed through the optical lens and, wherein each
optical lens is configured to assist a firearm user with a
vision condition aiming the firearm at a target to bring into
focus the rear iron sight and the front iron sight at the rear
sight gap.[2]

2 Notably, the claim term “iron sight” does not appear in the Specification
or claims as originally filed. The claim language referencing “a rear iron
sight” and “a front iron sight” was added by an Amendment dated May 23,
2019 (“Amdt.”), wherein Appellant submitted that support for the claim
amendments is in the Specification at paragraphs 3, 4, and 17, as originally
filed, as well as in the Figures. Amdt. 6; Spec. ¶ 4 (“As an example, a
conventional sight may comprise two rear dot sights defining a sight gap and
a front dot sight configured to be aligned with the gap in the rear sight.”).
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THE REJECTIONS3,4
The Examiner relies upon the following as evidence in support of the
rejections:
Name Reference(s) Date
Gazda US 2,399,431 Apr. 30, 1946
Carlough US 5,283,689 Feb. 1, 1994
Chesnut US 5,561,563 Oct. 1, 1996
LoRocco US 2009/0013581 A1 Jan. 15, 2009
The following rejections are before us for review:
I. Claims 1, 4, 5, 11, 15, 16, and 21 stand rejected under 35
U.S.C. § 102(a)(1) as anticipated by LoRocco.
II. Claims 2 and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over LoRocco and Gazda.
III. Claims 3 and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over LoRocco, Gazda, and Chesnut.
IV. Claim 6–8, 10, and 17–19 stand rejected under 35 U.S.C.
§ 103 as unpatentable over LoRocco and Carlough.
V. Claim 9 and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over LoRocco.

3 The Examiner withdraws the rejection of claims 1–11 and 13–20 under 35
U.S.C. § 112(b). Ans. 3.
4 The Examiner states, under the heading of “Double Patenting,” that
“should claim 9 be found allowable, claim 20 will be objected to under 37
[C.F.R. §] 1.75 as being a substantial duplicate thereof.” Final Act. 8; see
also Appeal Br. 24 (“Appellant amended claim 20 to recite ‘claim 11’ as
opposed to ‘claim 1.’”). Thus, there is no present double patenting rejection
stated in the record for our review.
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OPINION
Rejection I
Independent claims 1, 11, and 21, and dependent claims 5 and 16
Regarding independent claim 1, the Examiner finds that LoRocco
discloses an aiming indicia comprising a rear iron sight having two spaced
apart sight elements defining a rear sight gap and a front iron sight
configured to be aligned with the rear sight gap, as claimed. Final Act. 3
(citing LoRocco Figs. 1–4); see, e.g., LoRocco ¶ 21 (disclosing, with
reference to Figure 1, that front and rear sight modules 18, 20 have sighting
devices 22 “that serve as sight points or dots for aligning the projectile
launching device with a distal target”). The Examiner also finds that
LoRocco’s lenses 74 of the enclosed capsules 60, which are disposed on the
rear of LoRocco’s rear iron sight sight elements and front iron sight, are
disclosed as “plano-convex,” and therefore, have a positive optical power.
Id. at 3–4; see, e.g., LoRocco ¶ 26 (with reference to Figure 7, “lens 74 is
preferably a convex planar lens”); see also Ans. 5 (discussing the optics of
converging lenses). Thus, the Examiner finds that LoRocco discloses the
structural limitations recited in claim 1. See Final Act. 4; Ans. 5.
Claim 1 also includes functional recitations: the positive optical
power of each optical lens must be “configured to provide substantially clear
vision[5] of the aiming indicia when viewed through the optical lens” and

5 The Specification provides preferred definitions of “substantially clear
vision”: “[s]ubstantially clear vision may be defined as the optical lens 6
bringing an image of the aiming tool 5 or of an indicia on the aiming tool in
focus at a retina 12 of the eye 11 of the user of the firearm 2, when the user
views the aiming tool 5 through the corrective sight . . . [and/or] a view of an
image of the aiming tool 5 or of the indicia of the aiming tool through the
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each lens must also be “configured to assist a firearm user with a vision
condition aiming the firearm at a target to bring into focus the rear iron sight
and the front iron sight at the rear sight gap.” First, the Examiner finds that
these functional recitations “do not impart any additional structure upon the
claims.” Ans. 6. The Examiner also finds that LoRocco’s plano-convex
lenses 74 are configured to provide the required substantially clear vision
because a user views LoRocco’s aiming indicia through the positively
optically powered lenses 74, in an identical way as compared to Appellant’s
claimed invention, such that lenses 74 would inherently provide
substantially clear vision of the aiming indicia (i.e., bring the image of the
aligned front and rear iron sights in focus at the retina of the eye of a user).
Final Act. 4 (“identical structures are inherently capable of identical
functions”); Ans. 5 (“the structure of LoRocco, being identical to the
structure claimed by Appellant, is thus inherently capable of functioning
in a manner identical to Appellant’s structure”). The Examiner finds that
LoRocco’s lenses 74 “clearly function to provide a focused presentation of
the front and rear sights,” as claimed, and thus, assist a user with a vision
condition (i.e., by providing a clear and well-defined view of the front and
rear sights to the user) (Ans. 6), “if the vision condition of the user coincides
with the optical power of the lenses of LoRocco” (Advisory Act. 2)
(emphasis added).
Appellant does not dispute the Examiner’s findings relative to the
structural limitations of claim 1. Appeal Br. 13–21. Appellant argues that
LoRocco does not disclose the functional recitation wherein optical lenses

corrective sight 1 as a user with 20/20 vision would view, without
assistance, the aiming tool 5 or the indicia of the aiming tool.” Spec. ¶ 17.
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having positive optical power are configured to assist a firearm user with a
vision condition to bring into focus the rear iron sight and the front iron sight
at the rear gap, as claimed, nor is LoRocco’s “Self-Illuminated Sighting
Device” identical to Appellant’s “Corrective Sight for Firearms.” Appeal
Br. 16 (quoting LoRocco Title, Spec. Title); see also id. at 20–21 (citing
LoRocco ¶¶ 2, 4, 31). Appellant submits that the Examiner’s finding
relative to LoRocco’s positively optically powered lenses 74 being
configured as claimed is speculative because “nowhere in the LoRocco
specification does it ever use the term ‘corrective.’” Id. at 19. In particular,
Appellant argues that the Examiner errs by
determin[ing] that the LoRocco “corrective” lenses are
necessarily capable of assisting a firearm user with a vision
condition (such as myopia, hyperopia, presbyopia, or
astigmatism) bring[ing] into focus the rear iron sight the front
iron sight at the rear sight gap—with no experimental guidance.
By extension, according to the Examiner’s analysis, all user
vision conditions are correctable by a mere convex lens.
Id.; see also id. at 19 (“To suggest that a convex lens would fix the vision
problems for the estimated 160 million people in the United States that have
a vision condition requiring the user of corrective lenses is absurd.”); id. at
21 (“nothing in LoRocco contemplates that the lenses are intended to be
modified to address a user’s myopia, hyperopia, presbyopia, or astigmatism
vision issues” and “nothing in the LoRocco disclosure enables one of
ordinary skill in the art to do so”).
For a prior art reference to anticipate a claim, it must disclose all of
the limitations of the claim, “arranged or combined in the same way as in the
claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir.
2008). Anticipation is a question of fact, including whether an element is
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inherent in the prior art. See In re Gleave, 560 F.3d 1331, 1334–35 (Fed.
Cir. 2009). Anticipation challenges under § 102 must focus only on the
limitations actually recited in the claims. See Constant v. Adv. Micro-
Devices, Inc., 848 F.2d 1560, 1570–71 (Fed. Cir. 1988).
We are not persuaded by Appellant’s arguments.
We agree that LoRocco expressly discloses a different purpose for
each of lenses 74 than functioning as a corrective lens with respect to the
user, namely, to transmit light from the capsule through the lens to be
viewable by a user and “thereby serve as an illuminated sight point or dot for
alignment with a desired distal target.” LoRocco ¶ 36; see also id.at Abstr.
(“An illuminated sighting device includes a capsule with an integrally
formed lens that is adapted to face rearwardly for viewing by a user . . .
during dark or low light conditions”). Notwithstanding, Appellant does not
provide persuasive argument or evidence as to why the Examiner errs by
finding that LoRocco’s “convex planar lens” (id. ¶ 26) is also inherently
corrective to a user whose vision condition coincides with the positive
optical power provided by LoRocco’s lenses, in the same way as Appellant’s
optical lens is recited to function. Contrary to Appellant’s claim
interpretation supra, claim 1 does not require each optical lens to address the
vision conditions of all possible firearm users, but only to assist a firearm
user with a vision condition. Nor does the Examiner propose a modification
to LoRocco to anticipate claim 1 or require a teaching to enable a person of
ordinary skill in the art to experiment to arrive at the claimed invention.
Appellant also argues that LoRocco does not disclose that LoRocco’s
lenses are configured “to bring into focus the rear and front iron sights at the
rear sight gap,” as claimed. Appeal Br. 20. In support, Appellant quotes
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LoRocco’s disclosure relative to preferred lens construction, including
material that is “transparent or translucent to radiant energy,” such as “clear
or tinted Pyrex® or other borosilicate glass, plastic, a mixture of glass and
plastic, Teflon®, or other fluorinated polymer, and so on,” wherein “lens 74
may have a coated surface to match the wavelength of radiant energy
emitted by the light collector 62 and/or to enhance the brightness of the light
collector.” Id. (citing LoRocco ¶ 28); see also id. at 20–21 (noting that
LoRocco “even suggests that the lenses may be ‘roughened to enhance the
transfer of light . . . to provide a particular visual effect” (citing LoRocco
¶¶ 29–39)).
In further support, Appellant submits that the Specification discloses,
with reference to Figure 1B, that “aiming tool 5 may be disposed at a
distance from the optical lens 6 . . . based on an optical power of the optical
lens 6, . . . a focal length ‘fl’ of the optical lens 6[,] . . . an eye 11 of a user
from the optical lens” and that “optical lens 6 may be integrated in the
aiming tool and may have a fixed or adjustable optical power such as to
enable substantially clear vision of the aiming tool 5 when viewed through
the optical lens 6.” Reply Br. 3 (quoting Spec. ¶ 17); id. (“the sight system,
as described and claimed, allows the user to look through the optical lens”).
Appellant submits that LoRocco’s end cap or plug 80 prevents a user from
viewing the front or rear iron sights through the lenses, arguing, “[w]hile
lens 74 may be a ‘lens,’ it is not comparable to the claimed optical lens
because it is not – and cannot be –‘configured to provide substantially
clear vision of the aiming indicia when viewed through the optical lens
[. . .’].” Id. at 4; id. at 4–5 (“Even if a user were to try to look through lens
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74 she would not see ‘substantially clear vision of the aiming indicia when
viewed through the optical lens,’ as claimed.”).
Claim 1 requires, in relevant part, that each positive optically powered
lens (i.e., each of the individual lenses disposed into the rear side of rear iron
sight sight elements and the lens disposed into the rear side of the forward
iron sight) is configured to provide substantially clear vision of the aiming
indicia6 (which comprises all of the rear and front iron sights, and which
itself incorporates the lenses), when viewed through each optical lens. The
claim does not specify an aiming tool integrated into each of the rear and
front sights and being separated a distance from the lenses, or that the
firearm user looks through the lenses on the rear iron sight sight elements to
see the front iron sight, or through the lens on the rear of the front sight
element to see the target. We decline to read into claim 1 additional
structures of the aiming indicia, such as an aiming tool, or limit claim 1 to
require that claimed focusing requires the firearm user to view, through the
lens, an iron sight or target, as compared to a sight point or dot viewed
through a transparent, convex planar lens as disclosed in LoRocco. A
particular embodiment appearing in the written description may not be read
into the claim if the claim language is broader than the embodiment. See
SuperGuide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (During patent

6 Although claim 1 expressly recites the structure required by the claimed
“aiming indicia” (i.e., rear and front iron sights), the Specification does not
use the claim term “aiming indicia,” except in the claims as originally filed.
Cf. Spec. ¶ 5 (“[t]he indicia may comprise, for example, a graphic image, a
holographic image, or a reflected image.”); ¶ 17 (“indicia on the aiming
tool” or “indicia of the aiming tool”).
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prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.).
In sum, claim 1 reads on LoRocco’s lenses, which are configured to
provide substantially clear vision of the aiming indicia (i.e., sighting devices
22 corresponding to rear and front iron sights—into which the lenses are
integrated), when the user views the capsules through the lenses and which
assists the user with a vision condition when the user’s vision condition
coincides with the positive optical power of the lenses, such that when the
user aims the firearm at a target, the rear iron sight and front iron sight at the
rear sight gap are brought into focus for the user—especially when viewing
during dark or low light conditions. Appellant’s arguments do not apprise us
of error in the Examiner’s findings. Appellant does not identify a structural
difference between the claimed invention and LoRocco’s sight system, such
that LoRocco’s lenses are not also configured as claimed.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant relies on the same arguments for the patentability of
independent claims 11 and 21, and dependent claims 5 and 16, as relied on
supra for the patentability of independent claim 1, and therefore, for
essentially the same reasons, we also sustain the Examiner’s rejection of
independent claims 11 and 21, and dependent claims 5 and 16.
Dependent claims 4 and 15
Claims 4 and 15 depend from independent claims 1 and 11,
respectively, and recite, in relevant part, “wherein the positive optical power
is configured to bring an image of the aiming indicia in focus at a retina of
an eye of a user of the firearm when the user views the aiming indicia
through the optical lens.” Appeal Br. 26, 28 (Claims App.).
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The Examiner finds that LoRocco inherently brings an image of the
aiming indicia in focus, as claimed. Final Act. 4.
Appellant argues that the claim limitations of claims 4 and 15 are not
disclosed in LoRocco. Appeal Br. 17 (“The Examiner maintains that these
missing elements are unnecessary because the other structures included in
LoRocco would be ‘inherently capable’ of performing what the claimed
sight system requires.”).
We are not persuaded by Appellant’s conclusory argument. In other
words, we are not persuaded that the Examiner errs by finding that
LoRocco’s convex planar lenses 74 inherently bring an image of the aiming
indicia (i.e., collectively, the iron sights) in focus at a retina of an eye of a
user of the firearm having a vision condition that is correctable and
corresponds to the positive optical power of lenses 74.
Accordingly, we sustain the Examiner’s rejection of claims 4 and 15
under 35 U.S.C. § 102(a)(1).
Rejections II–V
Appellant argues that
the Examiner’s obviousness analysis provides merely conclusory
statements about how a skilled artisan would modify LoRocco
without ever identifying a teaching within LoRocco to prompt
such a modification: with Gazda “to reduce glare,” with Chestnut
“to adjust lighting coming through to a user’s eye,” with
Carlough “to provide the user with the capability to select a
different optical power looking through a different portions of
the lens” and to “form each of these portions from different
materials . . . as a matter of obvious design choice,” and with
LoRocco alone “to have a positive optical power of greater than
zero diopters to 10 diopters.” . . . There is no indication on why
a person of ordinary skill in the art would apply the LoRocco
teaching to make these modifications, or how those
modifications would be routine or have expected results.
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Appeal Br. 23.
Appellant also argues that Gazda, Chesnut, and Carlough do not cure
the deficiencies in LoRocco. Appeal Br. 23. Appellant concludes that the
Examiner impermissibly relies on hindsight. Id. at 24.
First, there is no requirement that the primary reference, LoRocco,
must provide the motivation for the Examiner’s proposed modification.
Notwithstanding, we recognize that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Regarding claims 2 and 13, the Examiner finds that Gazda teaches
that “it is known to provide an optical lens of a sight system with a
polarization region to reduce glare” and reasons that it would have been
obvious to provide LoRocco’s lenses with a polarization region, as taught in
Gazda, “to reduce glare.” Final Act. 5–6 (citations omitted); Appeal Br. 26,
28 (Claims App.). Appellant does not dispute Gazda’s teaching, or provide
any argument or evidence as to why modifying LoRocco’s lenses to reduce
glare, for example, such that a firearm user may view LoRocco’s sight
points or dots for aligning the projectile launching device with a distal target
more easily, lacks rational underpinning or is conclusory.
Regarding claims 3 and 14, which depend from claims 2 and 13,
respectively, the Examiner finds that Chesnut discloses “utilizing polarized
eyewear in combination with a polarized lens of a sight system” and reasons
that it would have been obvious to provide LoRocco’s sight system, as
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modified by Gazda as applied to claims 2 and 13, to include polarized
eyewear “to effect cross-polarization in a manner that allows a user to adjust
[the] color of the lighting coming through to a user’s eye (different color
lighting being suited to different situations).” Final Act. 6 (citations
omitted); Appeal Br. 26, 28 (Claims App.). Appellant does not dispute
Chesnut’s teaching, or provide any argument or evidence as to why
modifying LoRocco’s self-illuminated sighting device, modified to include a
polarization region to reduce glare, to also include polarized eyewear to
allow a user to adjust the color of the lighting coming through to a user’s
eye, lacks rational underpinning or is conclusory.
Regarding claims 6, 7, 10, 17, and 18, the Examiner finds that
Carlough teaches that “it is known to provide sight system lenses with first
(lower) and second (upper) regions having corresponding different optical
powers,” and reasons that it would have been obvious “to provide each lens
of the LoRocco sight system with first (lower) and second (upper) regions
. . . to provide a user with the capability to select a different optical power by
looking through a different portion of the lens.” Final Act. 7; Appeal Br. 27,
28 (Claims App.). Appellant does not dispute Carlough’s teaching, or
provide any argument or evidence as to why modifying LoRocco’s lenses to
include different optical power regions, as taught in Carlough, lacks rational
underpinning or is conclusory.
Regarding claims 8 and 19, which depend from claims 6 and 17,
respectively, the Examiner finds that Carlough “shows that the lens 44
comprises [] two portions (full portion and segment portion), and the
hatching shown in the drawings would at once indicate to a person of
ordinary skill in the art that the two portion[s] may comprise different
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materials,” and reasons that it would have been obvious to further modify
LoRocco’s lenses to “form each of these portion[s] from different
materials,” as taught in Carlough, “since it has been held to be within the
general skill of a worker in the art to select a known material on the basis of
its suitability for the intended use as a matter of obvious design choice.”
Final Act. 7; Appeal Br. 27, 28 (Claims App.). Appellant does not dispute
Carlough’s teaching, or provide any argument or evidence as to why further
modifying LoRocco’s lenses to include different materials, as taught in
Carlough, lacks rational underpinning or is conclusory.
Regarding claims 9 and 20, the Examiner finds that, although
LoRocco fails to disclose a positive optical power from greater than zero
diopter to 10 diopters, “positive optical power inherently indicates greater
than zero diopters, and the lens of LoRocco provides positive optical power
as set forth above,” and reasons that it would have been obvious to form
each of LoRocco’s lenses 74 to have a positive optical power in the claimed
range, “since it has been held that where the general conditions of a claim
are disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art.” Final Act. 8; Appeal Br. 27, 28
(Claims App.). Appellant does not dispute LoRocco’s teaching, or provide
any argument or evidence as to why the Examiner’s reasoning lacks rational
underpinning or is conclusory.
In sum, we find that the Examiner has articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness for
Rejections II–V, and that Appellant’s general attorney argument cannot take
the place of evidence in the record. Estee Lauder, Inc. v. L’Oreal, S.A., 129
F.3d 588, 595 (Fed. Cir. 1997).
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Accordingly, we sustain the Examiner’s rejections of claims 2, 3, 6–
10, 13, 14, and 17–20 under 35 U.S.C. § 103.
CONCLUSION
The Examiner’s decision rejecting claims 1–11 and 13–21 is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 4, 5, 11,
15, 16, 21
102(a)(1) LoRocco 1, 4, 5, 11,
15, 16, 21

2, 13 103 LoRocco, Gazda 2, 13
3, 14 103 LoRocco, Gazda,
Chesnut
3, 14
6–8, 10,
17–19
103 LoRocco, Carlough 6–8, 10,
17–19

9, 20 103 LoRocco 9, 20
Overall
Outcome
1–11, 13–
21

TIME PERIOD FOR RESPONSE
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).
AFFIRMED