Ex Parte Hengstenberg

Board of Patent Appeals and Interferences

Feb 6, 2007

10428792 (B.P.A.I. Feb. 6, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERIC T. HENGSTENBERG
____________
Appeal No. 2006-2529
Application No. 10/428,792
____________
ON BRIEF
_____________

Before PATE, CRAWFORD and HORNER, Administrative Patent Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-12. These are the only
claims in the application.
The claimed invention is directed to a breech plug for use with firearms such
as a muzzleloading rifle. Appellant’s breech plug has a generally cylindrical body
with a first end having a nipple to which a percursive cap is applied. The second
end of the breech plug has a stem of smaller diameter than the barrel. This forms a
cavity between the diameter of the stem and the barrel.
Appeal No. 2006-2529
Application No. 10/428,792

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The reference of record relied upon by the examiner as evidence of
anticipation is:
Laney 5,907,920 Jun. 1, 1999
According to appellant, claims 1-12 stand as one group. Accordingly we
will confine our decision to the independent claim 1.

ISSUE
The sole issue for our consideration is whether Laney anticipates claim 1.

PRINCIPLES OF LAW
The prior art may anticipate a claimed invention, and thereby render it non
novel, either expressly or inherently. See In re Cruciferous Sprout Litigation, 301
F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 US
907 (2003). Express anticipation occurs when the prior art expressly discloses
each limitation “i.e., each element” of a claim. Id.

FINDINGS OF FACT
We find that Laney discloses a breech plug or percussion nipple 14 for use
in a muzzleloading firearm with a barrel. Laney is comprised of a generally
cylindrical body 22 (provided with two wrench flats) with a first end 16 and a
second end 20. The first end 16 is a percussion nipple where cap 18 is placed. The
Appeal No. 2006-2529
Application No. 10/428,792

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second end is a stem 26 which extends into the barrel on the breech end. The
diameter of the stem is described in the following way:
The outer diameter of the free end portion 26 is substantially less than
the inner diameter of the nipple bore 54 so that the outer surface 28 of
the nipple is spaced from the inner surface 56 of the nipple bore to
form an annular auxiliary fire channel 72 extending from the side fire
channels 42 to the powder well 50. (Col. 3, lines 54-59).
Therefore, as readily can be seen, the stem of Laney is of uniform diameter and
forms a cavity between the diameter of the stem and the barrel. Lastly, Laney has
a bore that extends longitudinally through the entire breech plug.
ANALYSIS
Appellant argues that Laney fails to disclose a cavity formed between the
outer diameter of the stem and the inner diameter of the bore. We must emphasize
that Laney does disclose such a cavity. It might be argued that the cavity of Laney
is not between the stem and the barrel but between the stem and Laney’s breech
plug 68. However, the claim does not preclude the presence of another member
(the breech plug) between the barrel and the stem. Therefore, the cavity 72 is
physically located between the stem and the barrel.
In the reply, appellant argues that Laney fails to show a stem of uniform
diameter extending outwardly from the second end of the body as required by the
claim. Here again, we must note that the stem extends out of the body 22 with a
threaded portion 27 juxtaposed between the stem and the body. As noted above,
the claim, in “comprising” language, does not preclude the addition of the threaded
portion 27, inasmuch as Laney discloses a nipple, a body, and a stem. In other
words, the threaded portion 27 is not precluded by the claim language of claim 1.
Appeal No. 2006-2529
Application No. 10/428,792

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CONCLUSION
For the foregoing reasons, it is our finding of fact that claim 1 is anticipated
by Laney.
ORDER
Since all claims on appeal fall with claim 1, we affirm the rejections of claims 1-12
under 35 U.S.C. § 102.
Appeal No. 2006-2529
Application No. 10/428,792

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIMED

WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal No. 2006-2529
Application No. 10/428,792

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