Robert SemaanDownload PDFPatent Trials and Appeals BoardAug 18, 20212021000557 (P.T.A.B. Aug. 18, 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. 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. Appeal 2021-000557 Application 16/262,531 2 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.”). Appeal 2021-000557 Application 16/262,531 3 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. Appeal 2021-000557 Application 16/262,531 4 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 Appeal 2021-000557 Application 16/262,531 5 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. Appeal 2021-000557 Application 16/262,531 6 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 Appeal 2021-000557 Application 16/262,531 7 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 Appeal 2021-000557 Application 16/262,531 8 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 Appeal 2021-000557 Application 16/262,531 9 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”). Appeal 2021-000557 Application 16/262,531 10 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.). Appeal 2021-000557 Application 16/262,531 11 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. Appeal 2021-000557 Application 16/262,531 12 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 Appeal 2021-000557 Application 16/262,531 13 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 Appeal 2021-000557 Application 16/262,531 14 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). Appeal 2021-000557 Application 16/262,531 15 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 Copy with citationCopy as parenthetical citation