Emissive Energy Corp.

Patent Trials and Appeals Board

Jun 18, 2020

2019005048 (P.T.A.B. Jun. 18, 2020)

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.
15/787,944 10/19/2017 Robert D. Galli E001 P02544-PCT-US3 5072
3017 7590 06/18/2020
BARLOW, JOSEPHS & HOLMES, LTD.
40 WESTMINSTER STREET
3RD FLOOR
PROVIDENCE, RI 02903
EXAMINER
CATTANACH, COLIN J
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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):
drj@barjos.com
patent@barjos.com
sjh@barjos.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT D. GALLI and CHRISTOPHER J. O’BRIEN
____________

Appeal 2019-005048
Application 15/787,944
Technology Center 2800
____________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–4. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Emissive Energy Corporation as the
real party in interest. Appeal Brief (“Appeal Br.”) filed Mar. 23, 2019, 1.
Appeal 2019-005048
Application 15/787,944
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STATEMENT OF THE CASE2
The invention “relates generally to a multi-function flashlight
assembly that includes an integrated weapon mounting interface making the
flashlight capable of being utilized for a handgun having an accessory rail
provided ahead of the trigger guard.” Spec. ¶ 2. The Specification states
that prior flashlights for military applications were actuated by a user
pressing a button in an axial manner. Id. ¶ 3. According to the
Specification, this configuration was awkward and contributed to the
displacement of the flashlight within its clamp. Id. In addition, smaller
flashlight accessories for handguns typically had toggle levers that moved up
and down and required a weak, awkward finger motion. Id. ¶ 4. In view of
this, the Specification discloses a flashlight that includes at least one paddle
switch that extends rearwardly of the flashlight’s body and includes a
clamping assembly that mounts the flashlight to the rail of a handgun.
Id. ¶¶ 6, 7, 13.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative (disputed limitation italicized).
1. A flashlight comprising:
a housing having a light source disposed at a first forward
end thereof and further having a switching mechanism disposed
at a second rearward end thereof, said housing having a
longitudinal axis extending between said first and second ends
thereof, and said housing having a recess;

2 Our Decision refers to the Specification (“Spec.”) filed Oct. 19, 2017, the
Final Office Action (“Final Act.”) dated May 10, 2018, the Examiner’s
Answer (“Ans.”) dated Apr. 17, 2019, and Appellant’s Reply Brief (“Reply
Br.”) filed June 17, 2019.
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Application 15/787,944
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a fixed clamp arm extending longitudinally along a first
side of the housing, said fixed clamp arm being fixed relative to
the housing;
a movable clamp arm extending longitudinally along a
second side of the housing and slidably disposed within said
recess of said housing, said fixed and movable clamps
cooperating to engage a dovetail mounting rail;
a spring band fixedly secured to said fixed clamp arm and
extending laterally across said housing, said spring band
extending through an opening in said movable clamp to
moveably retain said movable clamp within said recess such that
said movable clamp can laterally move and pivot within said
recess; and
a laterally extending actuator lever seated within an
external cavity in said movable clamp arm, said actuator lever
including a longitudinal retaining pin wherein a second end of
said spring band is received around the retaining pin to fix the
second end relative to said retaining pin, said actuator lever
further including an offset camming pin adjacent said retaining
pin,
said cavity defining a cam follower surface wherein
pivoting movement of the actuator lever causes camming action
of the camming pin against the cam follower surface to move the
movable clamp arm between an open position, a neutral position
and a closed position.
Appeal Br. Claims Appendix i.
The remaining claims on appeal depend directly or indirectly from
claim 1.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
Appeal 2019-005048
Application 15/787,944
4
identify the alleged error in the examiner’s rejections.”)). After considering
the positions of both the Examiner and Appellant, we are persuaded the
Examiner reversibly erred for the reasons set forth in Appellant’s briefs and
discussed below.
Rejection 1: Anticipation of Claims 1, 2, and 4
The Examiner rejects claims 1, 2, and 4 under 35 U.S.C. § 102(a)(1)
as anticipated by Kincaid ’255.3 Final Act. 3–6.
The Examiner finds Kincaid ’255 discloses a flashlight that includes a
housing having a recess, a fixed clamp arm, a movable clamp arm, a spring
band that aids in retaining the movable clamp arm within the recess such that
the movable clamp arm can laterally move and pivot, and a laterally
extending actuator lever. Final Act. 3–4.
Appellant contends Kincaid ’255 does not disclose a movable clamp
arm that can laterally move and pivot because Kincaid ’255’s movable
clamp arm 143 is pivotally connected to housing 112 via attachment pin 149,
which prevents lateral movement. Appeal Br. 3–4. Appellant asserts that
interpreting Kincaid ’255’s movable clamp arm 143’s pivoting movement as
including both lateral movement and pivoting essentially renders the
limitation “laterally move” superfluous and does not give full effect to all
claim terms. Id. at 4–5.
The Examiner responds by finding Kincaid ’255’s secondary locking
arm 143 functions as a movable clamp arm that laterally moves and pivots
between the positions shown in Kincaid ’255’s Figures 6A and 6B. Ans. 3–
4. The Examiner specifically finds “movable clamp (143) pivots about the
pivot point (149/150), and in doing so, the movable clamp (143) also moves

3 US 7,735,255 B1, issued June 15, 2010 (“Kincaid ’255”).
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Application 15/787,944
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laterally (i.e. situated on, directed toward, or coming from the side,
[Merriam-Webster]) within said recess with respect to said longitudinal axis
of the housing.” Id. at 4. The Examiner determines Appellant’s claim 1
does not preclude movement restricted about a pin and finds Kincaid ’255’s
attachment pin 149 does not “limit[] the motion of the movable clamp arm to
strictly pivoting only.” Id. at 5–6. The Examiner states that the rejection
over Kincaid ’255 “[does] not equate ‘pivoting’ to ‘lateral motion’” but,
rather, is based on the finding that “lateral movement simply implies that a
device is moving to the side with respect to a reference point or object, and
not that the object is moving linearly.” Id. at 7 (emphasis omitted). The
Examiner finds “two effects of the motion of” Kincaid ’255’s movable
clamp arm 143 based on this understanding of “lateral movement.” Id.
Appellant’s arguments are persuasive of harmful error. Kincaid
’255’s Figures 6A and 6B are reproduced below.

Figure 6A is a front view of Kincaid ’255’s adjustable accessory mounting
clamp and Figure 6B depicts the adjustable accessory mounting clamp in an
open position. Kincaid ’255, 3:31–39.
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Application 15/787,944
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Figure 6A shows adjustable accessory mounting clamp 140 including
primary locking arm 141, secondary locking arm 143, cam lever 145, and
threaded adjustment rod 147. Kincaid ’255, 11:47–48, 11:57–60. Primary
locking arm 141 includes primary locking claw 142 and secondary locking
arm 143 includes secondary locking claw 144. Id. at 11:61–64. Kincaid
’255 discloses primary locking arm 141 is fixed “while the secondary
locking arm 143 is maintained in a pivotable position relative to the light
body 112 and the primary locking arm 141.” Id. at 11:65–12:2. Clamp
attachment pins 149 are received in apertures 150 to removably couple
accessory mounting clamp 140 to light body 112. Id. at 12:47–54.
Kincaid ’255 discloses that when cam lever 145 is moved to an open
position, as shown in Figure 6B, “the secondary locking claw 144 is pivoted
away from the primary locking claw 142” and when cam lever 145 is moved
to a closed position, as shown in Figure 6A, “the secondary locking claw
144 is pivoted towards the primary locking claw 142.” Kincaid ’255, 12:18–
22. Kincaid ’255 thus teaches secondary locking arm 143 pivots. Figures
6A and 6B indicate pivoting occurs about receiving aperture 150, through
which clamp attachment pin 149 couples adjustable mounting clamp 140 to
the body of a flashlight. Id. at 12:47–54. The cited record in this appeal
does not support the Examiner’s finding (Ans. 7) that Kincaid ’255’s
moveable clamp arm has “two effects” of movement, both “pivoting” and
“lateral movement.” The Examiner directs us to Kincaid ’255’s Figures 3A
and 3B as suggesting secondary locking arm 143 is capable of lateral
movement because it moves to the side to attach and detach from the
firearm. Ans. 7. Figures 3A and 3B are shown below.
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Application 15/787,944
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Figure 3A shows a front elevational view of an offset mountable light
mounted to a handgun for a left side application and Figure 3B is a front
elevation view of an offset mountable light mounted to a handgun for a right
side application. Kincaid ’255, 3:1–8. Based on Kincaid ’255’s description
of Figures 3A and 3B as two separate applications of the invention for a
right or left side configuration of the light attachment, these figures do not
show lateral movement to the side of Kincaid ’255’s clamp arm 143.
Therefore, the record does not support the Examiner’s finding that Kincaid
’255’s clamp arm 143 is capable of moving laterally.
Kincaid ’255’s disclosure, as discussed above, also does not support
the Examiner’s finding that “movable clamp (143) pivots about the pivot
point 149/150, and in doing so, the movable clamp (143) also moves
laterally . . . with respect to a reference point or give[n] object.” Ans. 7. It
is also harmful error to the extent that it does not give full effect to all of
terms recited in claim 1, specifically “said movable clamp can laterally
move and pivot within said recess.” In other words, claim 1 requires that the
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Application 15/787,944
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movable clamp is capable of both laterally moving and pivoting. As
Appellant argues, the Examiner’s position (Ans. 5) that pivot motion alone
encompasses lateral movement renders the language “laterally move”
superfluous.
In view of the above and for the reasons provided in the Appeal Brief
and the Reply Brief, we reverse the Examiner’s rejection of claim 1 over
Kincaid ’255. We also reverse the Examiner’s rejection of claims 2 and 4,
which depend from claim 1, for the same reasons.
Rejection 2: Anticipation of Claims 1–4
The Examiner rejects claims 1–4 under 35 U.S.C. § 102(a)(1) as being
anticipated by Kincaid ’355.4 Final Act. 6–9.
The Examiner finds Kincaid ’355 discloses a flashlight that includes a
housing having a recess, a fixed clamp arm, a movable clamp arm, a spring
band that aids in retaining the movable clamp arm within the recess such that
the movable clamp arm can laterally move and pivot, and a laterally
extending actuator lever, as claim 1 recites. Id. at 6–8 (annotating Kincaid
’355’s Figure 12B).
Similar to the rejection of claim 1 over Kincaid ’255, Appellant
contends Kincaid ’355 does not disclose a movable clamp arm that both
laterally moves and pivots. Appeal Br. 7–8. Appellant also argues that
interpreting the pivoting movement of Kincaid ’355’s movable clamp arm as
including both lateral movement and pivoting essentially renders the
limitation “laterally move” superfluous and does not give full effect to all
claim terms. Id.

4 US 8,132,355 B1, issued Mar. 13, 2012 (“Kincaid ’355”).
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Application 15/787,944
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Appellant’s arguments are persuasive of harmful error for reasons
similar to those discussed above with regard to the rejection over Kincaid
’255. Kincaid ’355’s Figure 12B is reproduced below.

Figure 12B is a front view of an adjustable accessory mounting clamp in an
open position. See Kincaid ’355, 4:18–22.
Figure 12B shows adjustable accessory mounting clamp 300 including
accessory band 311 (which forms accessory aperture 312), primary locking
arm 341, secondary locking arm 343, cam lever 345, and threaded
adjustment rod 347. Kincaid ’355, 20:8–10, 20:24–28. Similar to Kincaid
’255’s locking arm, Kincaid ’355 discloses that its secondary locking arm
343 pivots. Id. at 20:33–38 (“secondary locking arm 343 is maintained in a
pivotable position relative to the accessory band 311 and the primary locking
arm 341”).
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Application 15/787,944
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Although Kincaid ’355’s clamp embodiment differs from Kincaid
’255’s clamp, the Examiner responds to Appellant’s arguments in a similar
manner. Specifically, the Examiner finds Kincaid ’355’s “movable clamp
(343) pivots about a pivot point at a base portion thereof, and in doing so,
the movable clamp (343) also moves laterally” and “a pivoting motion can
encompass, or otherwise cause, an object to move laterally with respect to a
reference point or object.” Ans. 13–16. The Examiner’s position that the
pivoting motion of Kincaid ’355’s secondary locking arm 343 includes
lateral movement, however, does not give full effect to all of the terms of
claim 1, which recites that “said movable clamp can laterally move and pivot
within said recess.” Stated differently, the Examiner’s position renders the
claim language “laterally move” superfluous.
In addition, we agree with Appellant that the Examiner has not
identified a recess of a flashlight’s housing in which the movable clamp arm
is slidably disposed as claim 1 requires, because Figure 12B only depicts
Kincaid ’355’s adjustable accessory mounting clamp 300. Appeal Br. 7;
Final Act. 8; Ans. 12; Kincaid ’355, 20:8–10. Adjustable accessory
mounting clamp 300 is attached to an accessory, such as the flashlight
depicted in Figure 13A. Kincaid ’355, 4:23–25, 21:4–11.
In view of the above, and for the reasons provided in the Appeal Brief
and the Reply Brief, we reverse the Examiner’s rejection of claim 1 over
Kincaid ’355. We also reverse the Examiner’s rejection of claims 2–4,
which depend from claim 1, for the same reasons.
Rejection 3: Obviousness of Claim 3
The Examiner rejects claim 3 under 35 U.S.C. § 103 as unpatentable
over Kincaid ’255 in view of Kincaid ’355. Final Act. 9–10.
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The Examiner’s obviousness rationale for the rejection of claim 3
does not cure the deficiencies discussed above with regard to the § 102
rejection of claim 1 over Kincaid ’255. Therefore, we do not sustain the
Examiner’s rejection of claim 3 under § 103.

CONCLUSION
For these reasons and those the Appellant provides, we reverse the
Examiner’s rejections of claims 1–4 under 35 U.S.C. §§ 102(a)(1) and 103.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 2, 4 102(a)(1) Kincaid ’255 1, 2, 4
1–4 102(a)(1) Kincaid ’355 1–4
3 103 Kincaid ’255, Kincaid ’355 3
Overall
Outcome 1–4

REVERSED