Bryan A. StearDownload PDFPatent Trials and Appeals BoardOct 24, 201914480057 - (D) (P.T.A.B. Oct. 24, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/480,057 09/08/2014 23464 7590 11/13/2019 BUCHANAN INGERSOLL & ROONEY PC P.O. BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Bryan A. Stear 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 0096657-000001 1627 EXAMINER VANDERVEEN, JEFFREYS ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 11/13/2019 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte BRYAN A. STEAR Appeal 2018-0023 77 Application 14/480,057 Technology Center 3700 BEFORE BRETT C. MARTIN, ANNETTE R. REIMERS, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant,2 Bryan A. Stear, appeals from the Examiner's decision to reject claims 11, 15-18, 20, 22-26, 28-29, 31, and 32. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 A hearing was conducted on September 24, 2019. 2 We use the word "Appellant" to refer to "Applicant" as defined in 3 7 C.F.R. § l.42(a). Appellant identifies the real party in interest as Shoot Indoors LLC and Bryan Stear of Broomfield, Colorado and Denver, Colorado, respectively. Appeal Br. 3. Appeal 2018-0023 77 Application 14/480,057 CLAIMED SUBJECT MATTER The claims are directed to a shooting range that has a front end with a different width from a back end. Claims 11 and 31 are independent. 3 Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A shooting range, comprising: a firing line at a front end; a back end; a floor below the front end and the back end; a ceiling above the front end, the back end, and the floor; walls extending from the floor to the ceiling and from the front end to the back end and defining the widths of the front end and the back end; wherein the back end is between 15 to 3 00 feet from the front end and the ratio of the width of the front end to the width of the back end is between 1.25 and 4; and a ballistically-resistant backstop located at the back end and contained within the width of the back end. Appeal Br. 26 (Claims App.). 3 Claims 1-10, 12-14, 19, 21, 27, and 30 have been cancelled. Appeal Br. 5. 2 Appeal 2018-0023 77 Application 14/480,057 REFERENCES The prior art relied upon by the Examiner is: Baldwin Steen Newman Halverson us 3,306,616 us 4,703,931 us 4,948,141 US 7,909,331 B24 REJECTIONS Feb.28, 1967 Nov. 3, 1987 Aug. 14, 1990 Mar. 22, 2011 I. Claims 11, 15, 17, 18, 20, 22, 28, 29, 31, and 32 are rejected under 35 U.S.C. § 103 as unpatentable over Halverson and Baldwin. Final Act. 2. II. Claims 16 and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Halverson, Baldwin, and Newman. Final Act. 9. III. Claims 23-26 are rejected under 35 U.S.C. § 103 as unpatentable over Halverson, Baldwin, and Steen. Final Act. 10. OPINION Rejection I Claims 11, 15, 17, 18, 20, 22, 28, and 29 The Examiner finds that Halverson discloses all the limitations of claim 11 except that (i) Halverson does not disclose that its backstop has a flat surface (the "backstop limitation"), and (ii) Halverson does not disclose that the ratio of the width of the front end of its range to the width of its back end of the range is between 1.25 and 4 (the "ratio limitation"). Final Act. 2- 4 In addition to referring to US 7,909,331 B2, the Examiner cites to US 2008/0302026 Al, which is the printed publication based on the same application. Final Act. 3. 3 Appeal 2018-0023 77 Application 14/480,057 4. The Examiner relies on Baldwin to teach the backstop limitation and on various rationales for modifying Halverson to provide the ratio limitation. Appellant contests each of the Examiner's rationales for modifying Halverson to include the ratio limitation as follows. First, Appellant contends that the Examiner erred in concluding that modifying the shooting range disclosed by Halverson to include the ratio limitation would have been a matter of design choice. Appeal Br. 14-15; see also Final Act. 4. Specifically, Appellant contends that the design choice doctrine applies only in instances where the modified characteristic is not a significant factor in the invention. Appeal Br. 15. In claim 11, Appellant contends, the recited ratio "is significant and is one of the key innovations in the claims." Id. In response, the Examiner states, "[ a ]lthough the [ A Jppellant does have a good reason to change the shape such as reducing the size of the back to reduce the cost, the utilization of a tapered shape to make one end smaller than another is well known in the art." Ans. 12 ( emphasis added). The Examiner also finds that Halverson discloses the use of different dimensions "which could include a shorter and longer front and rear end." Id. ( citing Halverson, 4: 13-17). We agree with Appellant on this issue. By conceding that the ratio limitation in claim 11 has been provided for a good reason, the Examiner is, in effect, admitting that this limitation is significant. Such an admission by the Examiner precludes reliance on the doctrine of design choice as 4 Appeal 2018-0023 77 Application 14/480,057 supplying an adequate rationale for modifying Halverson to include this ratio. 5 As for the Examiner's finding that Halverson discloses the use of various dimensions (Ans. 12 ( citing Halverson, 4: 13-17)), we agree with Appellant (Reply Br. 4) that Halverson's disclosure that "other shooting range module configurations enable the shooting range system to expand to varying widths, lengths, and optionally heights" is a teaching that a generally rectangular structure may have different widths, lengths, and heights. We do not agree that this teaching indicates that the shooting range disclosed by Halverson is provided in any arrangement other than a cuboid. See Halverson, Figs. 1-9. The Examiner finds that the proposed modification "would have provided improved safety down range by using a smaller footprint with reduced operating costs," and "[ o ]ne can reference [0031] of Halverson to see that the teaching discloses a 'modified container' wherein the change in shape to one with a shooting lane with front to rear width ratio would fall within such scope." Final Act. 4. Rather than referring to US 7,909,331, the Examiner appears to be citing to US 2008/0302026 Al, which is the USPTO printed publication (hereinafter the "Halverson Publication") based on the same application. The Examiner's findings in this regard are not supported by the cited portion(s) of Halverson. First, paragraph 31 of the Halverson Publication 5 Appellant is correct in indicating that the ratio limitation is a significant difference from the prior art. Appeal Br. 14-15. See Spec. 2:23-3:2 ("It takes the traditional square or rectangular shape of a shooting range and replaces it with a tapered or trapezoidal design that can significantly reduce the size of the bullet trap/backstop at the down-range end of the range."). 5 Appeal 2018-0023 77 Application 14/480,057 does not mention a "modified container." See Halverson Publication ,i 31. The term "modified container" is found in paragraph 32 of Halverson, which states, "[i]n one configuration, the shooting container 14 is a modified shipping container having varying lengths, widths, and heights." As noted supra, we understand Halverson to disclose only cuboid shooting ranges, and the varying lengths, widths, and heights discussed in paragraph 32 of Halverson refer to different dimensions of such a cuboid, not to dimensions of another shape. The Examiner next contends that if one were to simply remove the wall (64) between the shoot lanes in Figure 2 of Halverson and only use one of the backstops denoted at (80) one could achieve a front to rear width ratio of 1/0.5 or 2 (assuming that the two backstops of 80 and the wall 64 are located in the center) falling within the [ claimed] range. Final Act. 4-5. The Examiner reasons that it would have been obvious to omit a feature if that feature was not desired. Id. at 5 ( citing In re Larson, 340 F.2d 965 (CCPA 1965)). Appellant argues (Appeal Br. 16-18), and we agree, that removal of wall (backstop) 64 of Halverson would not result in the claimed invention because claim 11 recites that the walls defined the front and back ends of the shooting range (and, implicitly, the ratio limitation), and the proposed modification results in a cuboid container the is merely missing an internal divider, not a shooting range with the ratio limitation. Finally, as to the Examiner's finding that the ratio limitation would have been an obvious matter of optimization (Final Act. 5), we agree with Appellant that "[ n ]either Halverson nor Baldwin suggest that any kind of taper is optimal for operation or that tapering achieves some desired benefit" (Reply Br. 8). As discussed above, Halverson discloses only cuboid 6 Appeal 2018-0023 77 Application 14/480,057 structures. Although Baldwin mentions that its archery lane may have walls that "diverge slightly" from the rear end to the front end (Baldwin, 2:9-11 ), Baldwin does not disclose any particular reason for this divergence. Thus, Baldwin does not disclose enough about the tapering of its walls to suggest to a person of ordinary skill in the art that a ratio of a front end to a back end should fall within a range of 1.25 to 4 as recited in claim 11. 6 In other words, although Baldwin discloses a slight amount of taper to the structure formed by its walls, Baldwin does not recognize this taper as a result- effective variable that would make the recited ratio a matter of optimization. We do not sustain the rejection of claim 11, and claims 15, 17, 18, 20, 22, 28, and 29 depending therefrom, as unpatentable over Halverson and Baldwin. Claims 31 and 32 Independent claim 31 recites substantially similar features to those discussed above regarding claim 11. See Appeal Br. 27. Accordingly, for the same reasons discussed above regarding the rejection of claim 11, we do not sustain the rejection of claim 31, and claim 32 depending therefrom, as unpatentable over Halverson and Baldwin. 6 In the Response to Arguments portion of the Final Office Action, the Examiner finds that Newman discloses a structure with "tapered walls." Final Act. 12-13. However, as Appellant correctly points out (Appeal Br. 22), the ratio of the front end to the back end of the golfing range disclosed by Newman is arranged such that the front end is smaller than the back end, which provides a ratio the opposite of the claimed ratio ( a ratio of less than 1.0) (Newman, Fig. 1 ). The Examiner does not provide any explanation as to how optimization of such an arrangement would result in the ratio limitation recited in claim 11. 7 Appeal 2018-0023 77 Application 14/480,057 Rejections II and III The Examiner does not rely on either of Newman or Steen in any way that would remedy the deficiency discussed above regarding Rejection I. See Final Act. 9-11. Accordingly, for the same reasons, we do not sustain Rejections II and III. DECISION The Examiner's rejections are reversed. DECISION SUMMARY 11, 15, 17, 18, 20, 22, 28, 29, 31, and 32 16 and 17 § 103 alverson, aldwin, nd Newman 23-26 § 103 REVERSED 8 None All None All Copy with citationCopy as parenthetical citation