Timothy Flynn

Patent Trials and Appeals Board

Mar 22, 2022

2021004238 (P.T.A.B. Mar. 22, 2022)

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. 16/118,853 08/31/2018 Timothy J. Flynn CD-169-CON 1800 42419 7590 03/22/2022 PAULEY ERICKSON & SWANSON 2800 WEST HIGGINS ROAD SUITE 365 HOFFMAN ESTATES, IL 60169 EXAMINER GLENN, CHRISTOPHER A. ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 03/22/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte TIMOTHY J. FLYNN __________ Appeal 2021-0042381 Application 16/118,853 Technology Center 3700 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 2, 4, 6, 8-15, and 20-22.3 Final Act. 1 (Office Action Summary). Claims 16-19 are allowed. See Final Act. 1, 1 Appellant states, “[t]he pending application was previously appealed, but no decision was rendered as the Examiner reopened prosecution upon the prior Appeal Brief.” Appeal Br. 2. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “Timothy J. Flynn” as the real party in interest. Appeal Br. 2. 3 Claim 7 is objected to as containing allowable subject matter and thus, the rejection of this claim over cited art has been withdrawn. See Ans. 3. Appeal 2021-004238 Application 16/118,853 2 18. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we AFFIRM IN PART the Examiner’s rejections. CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to a target for shooting practice, and, more particularly, to a target assembly that is foldable from a sheet of material into a three-dimensional target having target surfaces extending from each of a plurality of sides.” Spec. 1.4 Apparatus claims 1 and 10 are independent. Appeal Br. 2-5. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A target device for practicing shooting, the target device comprising: a planar material sheet having a first section and a second section; a separation line extending across the planar material sheet and dividing the first section from the second section, wherein the first section is adapted to fold about the separation line at an angle to the second section; and the separation line comprising a plurality of cuts in the material sheet and a fold line extending between and connecting each of adjacent pairs of the plurality of cuts, wherein each of the plurality of cuts in the material sheet defines one of a plurality of target extensions, the each of the plurality of cuts extends from the fold line in a direction toward the first section, each of the target extensions extends outward at and from the fold line when folded, each of the target extensions extends from the second section over the first section in a raised position, and the each of the target extensions is individually a shooting target. 4 We refer only to the page number of Appellant’s Specification because neither the paragraphs nor the lines are numbered. Appeal 2021-004238 Application 16/118,853 3 REFERENCES Name Reference Date Bernstein et al. (“Bernstein”) US 4,877,932 Oct. 31, 1989 Vandeveld US 4,919,421 Apr. 24, 1990 Levorchick et al. (“Levorchick”) US 5,029,797 July 9, 1991 Hufgard US 5,853,336 Dec. 29, 1998 Fleishman US 2011/0107706 A1 May 12, 2011 THE REJECTIONS ON APPEAL Claims 1 and 215 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Fleishman. Final Act. 2. Claim 10 is rejected under 35 U.S.C. § 102(a)(1) as anticipated by Bernstein. Final Act. 4. Claims 10-15 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Fleishman. Final Act. 5. Claims 1, 2, 4, 8, and 216 are rejected under 35 U.S.C. § 103 as unpatentable over Hufgard and Bernstein. Final Act. 7. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over Hufgard, Bernstein, and Vandeveld. Final Act. 13. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Hufgard, Bernstein, and Levorchick. Final Act. 14. Claims 20 and 22 are rejected under 35 U.S.C. § 103 as unpatentable over Fleishman and Levorchick. Final Act. 15. 5 Although the statement of the rejection does not list claim 21, in the body of the rejection, claim 21 is discussed. See Final Act. 4. 6 As indicated above in footnote 3, the rejection of claim 7 has been withdrawn. See Ans. 3. Appeal 2021-004238 Application 16/118,853 4 ANALYSIS THE REJECTION OF CLAIMS 1, 10-15, AND 21 AS ANTICIPATED BY FLEISHMAN7 THE REJECTION OF CLAIM 10 AS ANTICIPATED BY BERNSTEIN These anticipation rejections, and Appellant’s rebuttal thereof (whether predicated on Fleishman or Bernstein), are substantially similar such that they can be discussed together. We note below those instances where a difference exists between either the Examiner’s rejections or Appellant’s response thereto. Appellant does not offer arguments in favor of dependent claim 21 separate from those presented for independent claim 1, nor does Appellant offer arguments in favor of dependent claims 11-13 separate from those presented for independent claim 10. See Appeal Br. 7-12. We thus select claims 1 and 10 for review with claims 11-13 and 21 standing or falling with claim 1 or claim 10, respectively. See 37 C.F.R. § 41.37(c)(1)(iv) (2020). Regarding claims 14 and 15, Appellant only presents arguments regarding claim 14, which is discussed separately below. See Appeal Br. 12. Because claim 15 depends from claim 14, claim 15 will stand or fall with claim 14. 7 As noted above, the Examiner separately rejects claims 1 and 21 in one rejection and claims 10-15 in another rejection, but relies on the same art, structure, and reasoning in doing so (taking into account the different claim terms employed). Compare Final Act. 3 and 5. We combine these two rejections for purposes of discussion. Appeal 2021-004238 Application 16/118,853 5 Claims 1 and 10 Claims 1 and 10 both recite “[a] target device for practicing shooting” in their respective preambles. Claim 1 further recites a plurality of “target extensions” and that “each of the target extensions is individually a shooting target.” Claim 10 also recites a plurality of “target extensions” but recites a “target body . . . to stand the target device upright for the practicing shooting.” The Examiner finds that Fleishman and Bernstein each disclose the recited structure. See Final Act. 3, 5 (citing Fleishman Figs. 1-20), 4 (citing Bernstein Figs. 1-7); see also Ans. 3, 4. With respect to each claim, the Examiner notes that the claim term “‘target’ does not provide any structural limitation as any item can be used as a target” and that “[t]he term ‘target’ is being read as an intended use type limitation.” Final Act. 4-6; Ans. 3-5. Appellant disagrees contending that “a target is a thing, and not an intended use.” Appeal Br. 8, 9, 11; see also Reply Br. 2-3. Appellant’s Specification is entitled “MULTI-SIDED TARGET ASSEMBLY” (and not, for example, “An Assembly for Target Shooting”). See also Spec. 1 (“an improved target structure for shooting”). In both instances (and others, including their respective preambles), “target” is referred to as a physical device and not as an action to be undertaken. Although, we generally agree with Appellant that “a target is a thing,” it is not clear how or why something becomes a target other than by its use as such. Thus, while the term “target” is not “an intended use type limitation” per se, intended use would reasonably seem to have a very significant influence on whether something is considered a “target” as alluded to by the Examiner. See above. Appeal 2021-004238 Application 16/118,853 6 Regarding Fleishman (i.e., claims 1, 10-15, and 21), Appellant contends that Fleishman is directed to “cooperative mating building blocks . . . for walled, roofed or habitable structures” and “no person of ordinary skill in the art of target shooting would consider the Fleishman device a target.” Appeal Br. 7-8, 11. Regarding Bernstein (i.e., claim 10), Appellant contends that “Bernstein is a microwave container assembly for cooking food” and “no person of ordinary skill in the art of target shooting would consider the Bernstein device a target.” Appeal Br. 9. Appellant’s contentions are not persuasive. This is because, in matters of anticipation, we have been instructed that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). We have likewise been instructed that “the absence of a disclosure relating to [the recited] function does not defeat [a] finding of anticipation.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Further, Appellant’s Specification defines “target” in general terms stating that “target extensions . . . extend outward to serve as the shooting target.” Spec. 1. In other words, a “target” need only extend outward. See Appeal Br. 10, 12 (“[t]he Examiner has found another extension structure, albeit” for a different purpose); see also id. at 8. Consequently, Appellant does not explain what structure is lacking from Fleishman’s or Bernstein’s devices with respect to the recited limitations of claims 1 and 10, only that Fleishman’s or Bernstein’s devices are intended for use as either “mating blocks” or as a “heat opening.” See Appeal Br. 8, 10, 12. Appeal 2021-004238 Application 16/118,853 7 Further presuming that Appellant is arguing that Fleishman and Bernstein are non-analogous art (see Appeal Br. 8, 10, 12) we have also been instructed that the question whether a reference is analogous art is irrelevant to whether that reference anticipates. . . . A reference may be from an entirely different field of endeavor than that of the claimed invention or may be directed to an entirely different problem from the one addressed by the inventor, yet the reference will still anticipate if it explicitly or inherently discloses every limitation recited in the claims. Schreiber, 128 F.3d at 1478. Accordingly, Appellant’s focus on the different function or purpose of Fleishman’s and Bernstein’s devices (see Appeal Br. 7-12) are not persuasive of Examiner error. As to structural differences, Appellant argues that regarding claim 10 and with respect to Bernstein, “the extensions at cutout 40 are horizontal from the bottom, under the adjacent side” and further that “Bernstein does not disclose or suggest a device that, when used as taught, has target extensions that extend from one side over another side.” Appeal Br. 10. Figure 4 of Bernstein is reproduced below. Appeal 2021-004238 Application 16/118,853 8 Figure 4 reproduced above is a perspective view of a container assembly. See Bernstein 2:31-32. The assembly has cuts 40 which form semi-circular tabs (not numbered) disposed underneath sidewalls 36 when sidewall 36 is folded upward along perforated line 38 as shown. See Bernstein 3:1-23. We fail to see how these semi-circular tabs cannot be regarded as extensions that extend “outward from the target body and over a portion of the first side” (i.e., side 36 (Final Act. 4)) as recited in claim 10. The over/under issue is simply a matter of orientation and folding direction; there being no change in structure. In summation, and based upon the record presented, Appellant does not apprise us of Examiner error. Accordingly, the rejections of claims 1, 10-13, and 21 as being anticipated by Fleishman and/or Bernstein are sustained. Claim 14 Claim 14 recites a third side in addition to the first and second sides recited in parent claim 10. Appellant contends that “[t]he Fleishman device Appeal 2021-004238 Application 16/118,853 9 has tabs 36 and 38 extending flush from different edges of the two opposite faces 12, and does not provide all claim limitations of Claim 14.” Appeal Br. 12. There is merit to Appellant’s contentions. This is because in rejecting parent claim 10, the Examiner correlates Fleishman’s panel 12 to the recited “second side” whereas when rejecting dependent claim 14, the Examiner correlates Fleishman’s panel 32 to the recited “second side.” Final Act. 5, 6; see also Ans. 6. On the one hand, if the “second side” is changed to Fleishman’s panel 32 to satisfy the limitations of claim 14, then a limitation in parent claim 10 is not met. This is because parent claim 10 recites a target extension “extending flush from the second side” but there are no target extensions “extending flush from the second side” if this “second side” has been changed to panel 32. See Fleishman Figs. 5, 6. On the other hand, if the “second side” remains correlated to Fleishman’s panel 12 as in parent claim 10, then a limitation of dependent claim 14 is not met. This is because claim 14 recites a “plurality of target extensions cut out from the second side and each extending flush from the third side.” Should panel 12 be correlated to the recited “second side,” then it is not explained how extensions 36, 38 (see Final Act. 5) are “cut” from that side or how such extensions extend “flush from the third side” 14 (see Final Act. 6) as recited. See Fleishman Figs. 5, 6. Even if one considers Fleishman’s end flap 44 depicted in Figures 5 and 6, this end flap is not “cut out from the first side” as recited in parent claim 10 nor is end flap 44 “cut out from the second side” as recited in Appeal 2021-004238 Application 16/118,853 10 dependent claim 14. Accordingly, the rejection of claims 14 and 15 as being anticipated by Fleishman cannot stand. THE REJECTION OF CLAIMS 1, 2, 4, 8, AND 21 AS OBVIOUS OVER HUFGARD AND BERNSTEIN Concerning the Hufgard and Bernstein combination, Appellant contends that “[n]either Hufgard nor Bernstein is a target device.”8 Appeal Br. 15; see also id. at 13. Addressing Hufgard more specifically, Appellant contends that Hufgard’s device is not in the “field of endeavor” of shooting targets since “the prior art applied is an unrelated golf tool.” Appeal Br. 14. The Examiner states that “Hufgard and Bernstein are reasonably pertinent to the particular problem with which the applicant was concerned.”9 Ans. 8-9. The Examiner does not identify what the pertinent problem might be, but instead describes what “applicant’s invention is directed to (as described in applicant’s specification)” and concludes that “the prior art of Hufgard and Bernstein are directed to planar material sheets having fold lines and cuts that define target extensions.” Ans. 9. We fail to understand the common problem that might justify applying the teachings of Hufgard and Bernstein, as required under one prong of the analogous art test. Nor is such problem self-evident. We thus agree with Appellant’s contention that “[n]o person of ordinary skill in the art would look to combine a golf club support and a microwave container to 8 “Hufgard is titled a ‘GOLFING AID’” and “Bernstein[] is a microwave container assembly.” Appeal Br. 13, 15. 9 The Examiner does not assert that Hufgard and Bernstein are in the same field of endeavor as Appellant’s device, which is another prong of the analogous art test. See Ans. 8 (referencing In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992)). Appeal 2021-004238 Application 16/118,853 11 arrive at a target device for shooting.” Appeal Br. 15. Appellant also appears to be correct when stating that the Examiner’s “combination is clearly made using the claimed invention as a roadmap to search for structural elements, and thus using improper levels of hindsight.” Appeal Br. 15; see also id. at 16. The Examiner’s reasoning for modifying the golf club teachings of Hufgard with the target extensions from Bernstein’s microwave container assembly is “as a means of duplication of parts.” Final Act. 9; Ans. 10. We fail to see how duplication of parts is a proper basis for combining such disparate teachings to arrive at the recited “target device.” Consequently, we do not sustain the Examiner’s rejection of claims 1, 2, 4, 8, and 21 as being obvious in view of Hufgard and Bernstein. THE REJECTION OF CLAIM 6 AS OBVIOUS OVER HUFGARD, BERNSTEIN, AND VANDEVELD Claim 6 depends from claim 1. The Examiner relies on the additional teachings of Vandeveld for the additional limitations recited. See Final Act. 13. Vandeveld is entitled “TENNIS BALL DIVERTER.” The Examiner’s reasoning is that it would have been obvious “to provide the modified Hufgard” with Vandeveld “as a means of mere duplication of parts.” Final Act. 14 (italics added). As noted above, we are not persuaded that Hufgard can be properly “modified” as the Examiner contends. Similarly, the Examiner states, “the prior art of Hufgard, Bernstein, and Vandeveld are reasonably pertinent to the particular problem with which the applicant was concerned” but fails to disclose what that problem might be. Ans. 13-14. Further, Vandeveld’s tennis teachings do not cure the defect of the combination of Hufgard and Bernstein. See Appeal Br. 18-19. We reverse Appeal 2021-004238 Application 16/118,853 12 the Examiner’s rejection of claim 6 as being obvious over Hufgard, Bernstein, and Vandeveld. THE REJECTION OF CLAIM 9 AS OBVIOUS OVER HUFGARD, BERNSTEIN, AND LEVORCHICK Claim 9 depends from claim 1. The Examiner relies on the additional teachings of Levorchick for these additional limitations. See Final Act. 15. Levorchick is entitled “PLAYING CARD HOLDER.” The Examiner’s reasoning is that it would have been obvious “to provide the modified Hufgard” with Levorchick “as a means of using any one of various known adhesives.” Final Act. 15 (italics added). As noted above, we are not persuaded that Hufgard can be properly “modified” as the Examiner contends. Similarly, the Examiner states, “the prior art of Hufgard, Bernstein, and Levorchick are reasonably pertinent to the particular problem with which the applicant was concerned” but fails to disclose what that problem might be. Ans. 15. Further, Levorchick’s adhesive teachings do not cure the defect of the combination of Hufgard and Bernstein. See Appeal Br. 19. We reverse the Examiner’s rejection of claim 9 as being obvious over Hufgard, Bernstein, and Levorchick. THE REJECTION OF CLAIMS 20 AND 22 AS OBVIOUS OVER FLEISHMAN AND LEVORCHICK Concerning the Fleishman and Levorchick combination, Appellant contends that Fleishman “is directed to a building block” and that “Levorchick is directed to a playing card holder that forms a card holder pocket 13.” Appeal Br. 20. Again, we understand Appellant to be contending that the cited art is not analogous to that which is claimed. The Examiner’s Answer does not address the rejection of claims 20 and 22 as Appeal 2021-004238 Application 16/118,853 13 being obvious over Fleishman and Levorchick nor does the Examiner’s Answer proffer any explanation as to why Fleishman and Levorchick might be analogous art. See Answer generally. Even presuming the Examiner’s response would be along the same lines as previously discussed, the Examiner fails to explain why Fleishman’s building block can be properly combined with Levorchick’s playing card holder to arrive at the recited “target device.” Hence, we do not sustain the Examiner’s rejection of claims 20 and 22 as being obvious over Fleishman and Levorchick. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 21 102(a)(1) Fleishman 1, 21 10 102(a)(1) Bernstein 10 10-15 102(a)(1) Fleishman 10-13 14, 15 1, 2, 4, 8, 21 103 Hufgard, Bernstein 1, 2, 4, 8, 21 6 103 Hufgard, Bernstein, Vandeveld 6 9 103 Hufgard, Bernstein, Levorchick 9 20, 22 103 Fleishman, Levorchick 20, 22 Overall Outcome10 1, 10-13, 21 2, 4, 6, 8, 9, 14, 15, 20, 22 10 As regarding claims 1 and 21, 37 C.F.R. § 41.50 states, in part, “[t]he affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.” The rejection of claims 1 and 21 is thus sustained. Appeal 2021-004238 Application 16/118,853 14 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED IN PART