Ex Parte Downing

Patent Trials and Appeals Board

Mar 15, 2019

14998214 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/998,214 12/23/2015 Warren Downing
23413 7590 03/19/2019
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
CFL0031US18 3514
EXAMINER
MORGAN, DERRICK R
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
03/19/2019 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WARREN DOWNING
Appeal2018-006856
Application 14/998,214
Technology Center 3600
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Colt Canada Corporation ("Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 12-19. See Appeal
Br. 2-3. Claims 1-11 have been withdrawn. See id. at 7-8 (Claims App.).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Colt Canada Corporation is the applicant, as provided in 37 C.F.R.
§ 1.46. According to Appellant, the real party in interest is Wilmington
Savings Fund Society, FSB. Appeal Br. 1.
Appeal2018-006856
Application 14/998,214
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relate[s] generally to systems and
methods of providing information between one or more different battlefield
participants." Spec. ,r 2. Claims 12 and 16 are independent. Claim 12,
reproduced below, is illustrative of the subject matter on appeal.
12. A rifle comprising:
a barrel;
a rail;
at least one accessory carrier coupled to the rail; and
a sensor pack coupled to the at least [one] accessory
carrier that includes a first sensor for determining a bearing of
the rifle, a second sensor for determining an acceleration of the
rifle and ... a rate gyroscope.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Cox US 2005/0268521 Al Dec. 8, 2005
Lupher US 2013/0286239 Al Oct. 31, 2013
Teetzel US 2015/0041538 Al Feb. 12,2015
Teich US 2016/0316128 Al Oct. 27, 2016
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Application 14/998,214
REJECTIONS
The following rejections are before us for review: 2
I. Claims 12-19 stand rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Lupher. Final Act. 2-3.
II. Claims 12, 13, 16, and 17 stand rejected under 35 U.S.C.
§ I02(a)(l) as anticipated by Cox. Id. at 3--4.
III. Claims 12-19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Teich and Lupher. Id. at 4---6.
IV. Claims 12-19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lupher and Teetzel. Ans. 7-9. 3
ANALYSIS
Rejection I - Claims 12-19 as anticipated by Lupher
Each of independent claims 12 and 16 recites, in relevant part, a
"sensor for determining a bearing of the rifle." Appeal Br. 8-9 (Claims
App.). Appellant argues that Lupher, as relied upon in the rejection, does
not disclose such a feature. See id. at 4; Reply Br. 2-3. We agree that the
Examiner has not sufficiently identified credible evidence that Lupher
discloses this disputed limitation.
2 We note that a rejection of claims 12-19 under 35 U.S.C. § 103 as
being unpatentable over Schechter (US 2016/0223278 Al, pub. Aug. 4,
2016) and Lupher has been withdrawn by the Examiner and thus is not
before us for review as part of the instant appeal. Ans. 9; see also Final
Act. 6-7.
3 We note that Rejection IV was introduced by the Examiner as a
New Ground of Rejection in the Examiner's Answer (see Ans. 7-9) and was
responded to by Appellant in the Reply Brief (see Reply Br. 2-3).
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Application 14/998,214
In rejecting claims 12 and 16, the Examiner found that Lupher
discloses, inter alia, "a first sensor (750 and/or 756) for determining a
bearing of the rifle (inclinometer [750 is] capable of use for determining
bearing of a rifle[,] and 756 [is] disclosed as other motion detector
circuitry[,] which can determine the bearing of the rifle as well)." Final
Act. 3. The Examiner takes the position that "a bearing sensor is something
that determines a direction[,] and an inclinometer broadly and reasonably
determines a direction." Ans. 10 ( emphasis added). 4
Appellant persuasively asserts that "a bearing sensor must measure a
direction. This is DIFFERENT than an inclination. In short, teaching an
inclinometer does not teach the claimed bearing sensor." Appeal Br. 4
( emphasis added); see also id. ( asserting that Merriam-Webster "dictionary
defines an [i]nclinometer as 'an instrument for indicating the inclination to
the horizontal of an axis' ... [and] defines a bearing as 'the situation or
horizontal direction of one point with respect to another or to the compass"
(citing https://www.merriam-webster.com/dictionary)). Although the
Examiner is obliged to apply the broadest reasonable interpretation to claim
terms during prosecution, such an interpretation must remain reasonable in
light of the Specification, and consistent with the interpretation that one of
ordinary skill in the art would reach. See In re Am. A cad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004); MPEP § 2111.01.
Here, Appellant's Specification describes that "sensor 220 [is] capable
of determining a bearing of firearm 10. Such a sensor may be a compass or
4 Both Appellant and the Examiner use the terms "bearing sensor" and
"sensor for determining a bearing of the rifle" interchangeably. See Appeal
Br. 4; Ans. 9-10; Reply Br. 2-3.
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Application 14/998,214
part of a GPS device or other device." Spec. ,r 38 (emphasis added); see
also id. ,r 21 ( separately listing "bearing sensors" and "inclination sensors");
id. ,r 46 ( describing "bearing information (shown by compass 203)"). Even
assuming, arguendo, that an inclinometer is something that determines a
direction in a very broad sense (i.e., inclination being a direction in a vertical
plane), we are not convinced that one of ordinary skill in the art would
consider Lupher's inclinometer 750 a sensor for determining a bearing (i.e.,
a direction in a horizontal plane, such as determined by a compass). In other
words, finding a sensor that simply determines "a direction" is not sufficient;
the claim does not recite merely a "direction sensor." Moreover, the
Examiner does not point to any evidence of record to support the position
that Lupher's inclinometer 750 and/or other motion detection circuitry 756
would be capable of determining a bearing. See Final Act. 3; Ans. 9.
In short, the Examiner's interpretation of the disputed "sensor for
determining a bearing," recited in claims 12 and 16, as reading on Lupher's
inclinometer 750 and/or other motion detection circuitry 756 is unreasonably
broad, such that the rejection based upon this claim construction is in error.
In particular, the Examiner has not established a finding supported by a
preponderance of the evidence that Lupher, as relied upon in the rejection
presented, discloses this disputed limitation.
Accordingly, based on the record before us-because an anticipation
rejection requires a finding in a single reference of each and every limitation
as set forth in the claims-we do not sustain the rejection of independent
claims 12 and 16, or dependent claims 13-15 and 17-19, under 35 U.S.C.
§ 102(a)(l) as anticipated by Lupher.
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Application 14/998,214
Rejection II - Claims 12, 13, 16, and 17 as anticipated by Cox
In this rejection of independent claims 12 and 16, the Examiner found
that Cox discloses, inter alia, "a first sensor ( 61) for determining a bearing
of the rifle." Final Act. 4. The Examiner takes the position that Cox's tilt
sensor 61 meets the broadest reasonable interpretation of a "sensor for
determining a bearing of the rifle." See Ans. 10 ( explaining that "the
Examiner's response to the inclinometer of Lupher are reiterated with regard
to the tilt sensor of Cox and the reference does in fact disclose a bearing
sensor when given the broadest reasonable interpretation").
Here, Rejection II is deficient for the same reasons discussed above
with respect to Rejection I. Namely, the rejection is predicated upon an
unreasonably broad claim construction of "sensor for determining a bearing
of the rifle," as recited in claims 12 and 16. In particular, the Examiner has
not established a finding supported by a preponderance of the evidence that
Cox, as relied upon in the rejection presented, discloses this disputed
limitation. Accordingly, we do not sustain the rejection of claims 12, 13, 16,
and 17 under 35 U.S.C. § 102(a)(l) as anticipated by Cox.
Rejection III - Claims 12-19 as unpatentable over Teich and Lupher
Appellant presents arguments against the rejection of claims 12-19
together as a group. See Appeal Br. 4--5. We select independent claim 12 as
representative of the issues that Appellant presents in the appeal of this
rejection, with claims 13-19 standing or falling therewith. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner found that Teich discloses most of the limitations of
independent claim 12, including, inter alia, "a sensor for determining a
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Application 14/998,214
bearing ... of the rifle," noting that paragraph 33 of Teich "discloses
determining the positioning and orientation of the weapon and also discloses
use of a [GPS] sensor and compass and thus sufficiently disclose[s]
determining the bearing of the rifle." Final Act. 4. The Examiner
acknowledged that "Teich does not specifically disclose an accessory carrier
coupled to the rail" (id. at 4--5), but found that "Lupher teaches an accessory
carrier 122 in [F]igure 1 which is used to couple an accessory to an
accessory rail" (id. at 5). The Examiner concluded that, given the teachings
of the prior art, it would have been obvious "to modify or define Teich such
that an accessory carrier or mounting structure is provided similar to that as
taught by Lupher in order to carry an accessory in a removable fashion such
that the firearm can be used with or without the accessory." Id.
Appellant argues that "[t]he claims require a carrier that carries the
accessory and the sensor pack. The sensors of Teich would have to be
removed from the camera and then placed on the accessory to meet the
claim." Appeal Br. 5; see also id. (asserting that "Teich's camera would
have to be destroyed, the sensors pulled out, and moved to [a] location that
is separated from the camera"). According to Appellant, such modifications
would require substantial redesign, and, thus, are not obvious. See id. ( citing
MPEP § 2124.0l(VI)).
We are not persuaded by this line of argument because it is not
commensurate with the scope of claim 12, which does not recite that the
sensor pack is in a location that is separated from the accessory. As stated
by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
199 8), "the name of the game is the claim." It is well established that
limitations not appearing in the claim cannot be relied upon for patentability.
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See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, claim 12 only
recites, in relevant part, "a sensor pack coupled to the at least [one]
accessory carrier." Appeal Br. 8 (Claims App.). We find nothing in the
language of claim 12 that would preclude the sensor pack from being
internal to the accessory (e.g., Teich's camera) that is coupled to the
accessory carrier.
Further, Appellant's argument is not responsive to the modification
proposed by the Examiner in the rejection presented. Here, the Examiner
only proposed modifying Teich to include the rail-mounting structure of
Lupher, but did not propose any modification of Teich with regard to
relocating the sensors. See Final Act. 4--5; Ans. 10 (explaining that "Teich
is left intact and is only modified or defined to mount to the rail of Teich and
not remov[ e] the sensors of Teich in any way"). The Examiner explains that
"Teich shows an accessory mounted to a firearm but does not clearly
disclose the mounting structure of the accessory[,] and Lupher is merely
relied upon to teach the mounting structure to attach the accessory to the
rail." Ans. 10 ( citing Lupher, Fig. 1 ). In this regard, Appellant does not
specifically address the Examiner's reasoning articulated in support of the
proposed combination of teachings or explain why this reasoning would be
in error. See Final Act. 5.
After careful consideration of the evidence of record, Appellant's
arguments do not apprise us of error in the Examiner's findings or reasoning
in support of the conclusion of obviousness. Accordingly, we sustain the
rejection of claim 12, and of claims 13-19 falling therewith, under 35 U.S.C.
§ 103 as being unpatentable over Teich and Lupher.
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Appeal2018-006856
Application 14/998,214
Rejection IV - Claims 12-19 as unpatentable over Lupher and Teetzel
Regarding Rejection IV, we note that this new ground of rejection is
premised on the same erroneous claim construction and purported disclosure
from Lupher discussed above for Rejection I, and that the Examiner relied
on Teetzel for teaching additional features, but not to cure the above-noted
deficiency in Rejection I. See Ans. 7-8. Consequently, we likewise do not
sustain the rejection of claims 12-19 under 35 U.S.C. § 103 as being
unpatentable over Lupher and Teetzel.
DECISION
We REVERSE the Examiner's decision rejecting claims 12-19 under
35 U.S.C. § 102(a)(l) as anticipated by Lupher.
We REVERSE the Examiner's decision rejecting claims 12, 13, 16,
and 17 under 35 U.S.C. § 102(a)(l) as anticipated by Cox.
We AFFIRM the Examiner's decision rejecting claims 12-19 under
35 U.S.C. § 103 as being unpatentable over Teich and Lupher.
We REVERSE the Examiner's decision rejecting claims 12-19 under
35 U.S.C. § 103 as being unpatentable over Lupher and Teetzel.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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