11341896 (B.P.A.I. Aug. 30, 2012)

Ex Parte Brus et al

Board of Patent Appeals and InterferencesAug 30, 2012

11341896 (B.P.A.I. Aug. 30, 2012)

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. 11/341,896 01/30/2006 Giovanni Brus MAGK-001 2979 21884 7590 08/30/2012 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER PARSLEY, DAVID J ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 08/30/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte GIOVANNI BRUS, WILLIAM LEE HEARN, and GREG DIXON ____________________ Appeal 2010-004549 Application 11/341,896 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and JOHN W. MORRISON, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004549 Application 11/341,896 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION Appellants’ claimed invention relates to consumable cartridges for muzzle loading firearms. Spec. 2. Claims 1, 11, and 17 are the independent claims on appeal, and claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A consumable cartridge for a muzzle loading firearm, comprising: a consumable cartridge case including a central internal cavity, the cartridge case includes a first end and a second end open to the central internal cavity for receipt of granular, explosive powder within the central internal cavity, the cartridge case being shaped and dimensioned for positioning within a bore of a rifle; a paper disk covering the second end of the cartridge case maintaining the explosive powder within the central internal cavity of the cartridge case; wherein the cartridge case is composed of a consumable solid material comprising nitrate salt, percholate1 salt and a fuel. REJECTIONS Appellants seek review of the following rejections: 1. Claims 1-7, 10, and 17-19 under 35 U.S.C. § 103(a) as unpatentable over Mayberry (US 35,699; iss. Jun. 24, 1862) and Griesbach (US 6,688,232 B2; iss. Feb. 10, 2004). 1 Presumably this should be “perchlorate.” Appeal 2010-004549 Application 11/341,896 3 2. Claims 8, 9, and 20 under 35 U.S.C. § 103(a) as unpatentable over Mayberry, Griesbach, and Nadel (US 3,348,445; iss. Oct. 24, 1967). 3. Claims 11-16 under 35 U.S.C. § 103(a) as unpatentable over Griesbach and Mayberry. OPINION Claims 1-7, 10, and 17-19 over Mayberry and Griesbach Independent claims 1 and 17 are each directed to a consumable cartridge for a muzzle loading firearm that includes a consumable cartridge case having first and second ends open to a central internal cavity for receipt of explosive powder, the cartridge case composed of a consumable solid material comprising nitrate salt, perchlorate salt, and fuel. The Examiner found that Mayberry discloses a consumable cartridge case for a muzzle loading firearm, except that Mayberry does not disclose that the cartridge case (tube of paper A) is composed of a consumable solid explosive material comprising nitrate sale, perchlorate salt and fuel as called for in independent claims 1 and 17. Ans. 3. The Examiner found that Griesbach discloses a cartridge case (premeasured compressed powder charge 2) composed of a consumable solid explosive material as claimed, that acts as a cartridge in that “it is used behind a bullet” so that it “functions as a cartridge much like appellant’s cartridge.” Ans. 3, 8; see also Griesbach, fig. 5. The Examiner concluded that it would have been obvious “to take the device of Mayberry and add the consumable cartridge of Griesbach” to allow the device to be more complete and rapidly burn. Ans. 3-4. Appeal 2010-004549 Application 11/341,896 4 The Examiner’s proposed combination is unclear. The rejection proposes to “add” Griesbach’s premeasured compressed powder charge 2 to Mayberry’s device, implying that the entirety of Mayberry’s device is retained. See Ans. 3. In such a combination the cartridge case (Mayberry’s tube A) is unmodified and thus composed of paper, rather than a consumable solid material comprising nitrate salt, perchlorate salt, and fuel as called for in claims 1 and 17. Mayberry, col. 1, ll. 35-36, figs 1, 2. A second interpretation is that the Examiner proposes to replace the paper in Mayberry’s tube A with a consumable solid material comprising nitrate salt, perchlorate salt, and fuel, as disclosed by Griesbach.2 However, Griesbach’s premeasured compressed powder charge 2 is a solid structure. See Griesbach, col. 6, ll. 18-19; figs. 1-6; see also Br. 10. While the Examiner contends such structure functions as a cartridge (Ans. 8), the Examiner does not provide any evidence or reasoning to establish that Griesbach’s solid structure could function as a case including a central internal cavity for receipt of granular, explosive powder. See Griesbach, col. 6, ll. 18-19; figs. 1-6; Spec. figs. 1-4. While Griesbach’s premeasured compressed charge 2 may be used in a cartridge case, Griesbach does not teach or suggest using it as a cartridge case. Griesbach, col. 15, ll. 5-8; see also Br. 11. The fact that Griesbach’s premeasured compressed powder charge 2 may function similar to a cartridge does not demonstrate that the material used therein would be suitable for use as a case for such a cartridge. Ans. 8. 2 The Examiner’s finding that Griesbach’s powder charge 2 is a consumable solid material (Ans. 3), and that Mayberry’s cartridge case (tube A) has a frustoconical shape as called for in claims 6 and 18 (Ans. 8), each support this interpretation of the rejection. Appeal 2010-004549 Application 11/341,896 5 Thus, the Examiner has not established that there was a reasonable expectation that Mayberry’s cartridge case (tube A) would function properly if it were made from the material of Griesbach’s powder charge 2. The rejection fails to adequately articulate why the subject matter of claims 1 and 17 would have been obvious to a person of ordinary skill in the art in light of Mayberry and Griesbach. Accordingly, we cannot sustain the rejection of independent claims 1 and 17 and their respective dependent claims 2-7, 10, 18, and 19. Claims 8, 9, and 20 over Mayberry, Griesbach, and Nadel Claims 8 and 9 depend, directly or indirectly, from independent claim 1, and claim 20 depends from independent claim 17. The rejection does not rely upon Nadel to correct the deficiency of the Mayberry and Griesbach combination explained in the analysis of independent claims 1 and 17, supra. Ans. 6-7, 9. Accordingly, we cannot sustain the rejection of claims 8, 9, and 20 because their rejection suffers from the same shortcoming as the rejection of independent claims 1 and 17. Claims 11-16 over Griesbach and Mayberry Independent claim 11 is similar to independent claims 1 and 17, and is directed to a consumable cartridge for a muzzle loading firearm having a hollow cartridge case comprised of nitrate salt, approximately 15% to approximately 25% by weight potassium perchlorate and an organic fuel. Though this rejection is stated as Griesbach and Mayberry, rather than Mayberry and Griesbach, the rejection still relies upon the erroneous finding that Griesbach’s premeasured compressed powder charge 2 corresponds to a Appeal 2010-004549 Application 11/341,896 6 consumable cartridge case as claimed.3 Cf. Ans. 7-9 (Griesbach and Mayberry) to Ans. 3-4 and 8 (Mayberry and Griesbach). Thus, our analysis of the rejection of claims 1 and 17, supra, is equally applicable here. Accordingly, we cannot sustain the rejection of independent claim 11 and its dependent claims 12-16. DECISION We reverse the Examiner’s decision to reject claims 1-20. REVERSED mls 3 See also In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“where a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary.”).