Ex Parte Perdue

Patent Trial and Appeal Board

Jul 30, 2018

13902913 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/902,913
65355 7590
Russell C. Scott
324 Limestone Trail
AUSTIN, TX 78737
FILING DATE FIRST NAMED INVENTOR
05/27/2013 Jon Perdue
07/30/2018
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.
RCS.KSS026 4575
EXAMINER
VANDERVEEN, JEFFREYS
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
07/30/2018 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 ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON PERDUE
Appeal2017-008927
Application 13/902,913
Technology Center 3700
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134 from a rejection of claims
1-10. We have jurisdiction under35 U.S.C. § 6(b).
We reverse.
1 The Appeal Brief states the inventor, Jon Perdue, is the real party in
interest. App. Br. 1.

Appeal 2017-008927
Application 13/902,913
within said crossfrre chamber while said cross piece rear end
guards said user against wrist slap injury by said latex band; and
while the latex band is stretched and released to launch the frrst
arrow, the frrst and second rigid cylindrical arms remain
substantially linear, thereby permitting at least a second arrow to
remain disposed within the elongated internal storage
compartment without being damaged.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tolleson us 4,002,236 Jan. 11, 1977
Hunsicker us 4,169,453 Oct. 2, 1979
Nishioka us 4,465,054 Aug. 14, 1984
Webb us 4,573,445 Mar. 4, 1986
Graf US 6,725,851 Bl Apr. 27, 2004
Scaniffe US 7,997,261 B2 Aug. 16, 2011
LIFE SPRINKLED WITH GLITTER, http://lifesprinkledwithglitter. blogspot
. com/p/the-avengers-homemade-hawkeye-costume. html (hereinafter
"LSWG")
REJECTIONS
Claims 1, 5-8, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over LSWG in view of Nishioka, Graf, and Webb.
Claims 2 is rejectedunder35 U.S.C. § 103(a)as beingunpatentable
overLSWG, Nishioka, Graf, Webb, and Tolleson.
Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over LSWG, Nishioka, Graf, Webb, and Hunsicker.
Claim 9 is rejectedunder35 U.S.C. § 103(a)as beingunpatentable
over LSWG, Nishioka, Graf, Webb, and Scaniffe.
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Application 13/902,913
OPINION
A short summary of the claimed "slingbow and quiver" is that it
resembles a traditional bow and arrow in some aspects of its appearance, but
ultimately operates more like a slingshot, relying on potential energy from
stretching a latex band, as opposed to bending the bow itself, to propel
arrows. The functional aspect just described is embodied in the claim
language calling for the pair of arms to be "generally rigid" and specifying
that "while the latex band is stretched and released to launch the first arrow,
the first and second rigid cylindrical arms remain substantially linear,
thereby permitting at least a second arrow to remain disposed within the
elongated internal storage compartment without being damaged."
The Examiner initially found, without making of record any specific
supporting reasoning therefor, that LSWG disclosed "a pair of generally
rigid cylindrical arms." Final Act. 5. Regarding the second limitation quoted
above, the Examiner, citing In re Schreiber, 128 F.3d 1473, 1477-78 (Fed.
Cir. 1997) reasoned, "[ a ]dditional limitations are added to defme the rigid
functionality of the arms as being able to hold an arrow undamaged without
utilizing structural limitations which distinguish the claimed embodiment
from the prior art." Final Act. 8.
In the Answer, the Examiner provided a lengthy discussion regarding
the alleged imprecision of the phrase "generally rigid." Ans. 13-15. The
Examiner's discussion in this regard would seem more pertinentto a
rejection under 35 U.S. C. § 112, second paragraph, for including a term of
degree where that degree was not readily ascertainable. See, e.g., MPEP
§ 2173. 05(b ). Here, the second limitation, quoted above, provides the
standard for measuring the degree of rigidity required of the pair of
cylindrical arms. Although that limitation is functional in nature, in that it
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Application 13/902,913
describes the claimed subject matter by how it behaves or performs, the
limitation still serves to defme particular structures that do or do not fall
within the scope of the claim. Because such a standard is provided, it is
therefore not required in this case that Appellant expressly lists the particular
structural attributes of tubes falling within the scope of the claim language.
See Ans. 13-16.
As is consistent with the holding in Schreiber, supra, the pertinent
question in this situation becomes whether the prior art structure possesses
the inherent capability to perform the recited function. App. Br. 5---6. The
burden is on the Examiner to provide sufficient evidence or scientific
reasoning to establish that there is a sound basis for the Examiner's belief
that the functional limitation is met by an inherent characteristic of the prior
art. SeelnreSpada,9llF.2d705, 708(Fed.Cir. 1990). Thefactthata
certain result or characteristic may occur or be present in the prior art is not
sufficient to establish the inherency of that result or characteristic. In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). In relying upon the theory of
inherency, the Examiner must provide a basis in fact and/ or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic nee es sari ly flows from the teachings of the applied prior art.
Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990).
Inherency has not been established on the record before us. LSWG
employs%" tubular PVC arms of unspecified structural characteristics.
LSWG 1. The LSWG bow is shown and described as bent, at least a little,
during assembly. LSWG 2-3. A nylon string, not identified as having any
significant elasticity or resiliency, is also specified. LSWG 1. The weight of
evidence, therefore, is that the bow of LSWG functions more like a typical
bow, storing energy by bending the bow, as opposed to remaining rigid and
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Application 13/902,913
relying on an extensible band. At most, it cannot be said with certainty
whether or not LSWG would operate in the fashion recited above, allowing
for arrows to be shot and quivered at the same time, due to the rigidity of the
arms. Thus, the Examiner has not established that the LSWG bow would
necessarily exhibit behavior sufficient to satisfy the argued functional
limitations of claim 1 or establish the general rigidity of the LSWG arms.
App. Br. 5---6; Reply. Br. 3.
The Examiner relied only on LSWG as satisfying the claim language
discussed above. Thus, the issue of whether or not the claimed subject
matter would result from combining the reference teachings cited is not
squarely before us. Nonetheless, it is noted that where the Examiner cites
Nishioka and Webb as evidence that it would have been obvious to use
elastic or latex bands for the stated purpose of "producing releasable stored
energy to launch a projectile" (Final Act. 7; see also Ans. 16), Appellant is
correct that the Examiner's stated reasoning lacks rational underpinnings.
App. Br. 6-7. A resilient band would seemingly prevent energy storage in
the bow itself as presumably relied upon by the bow in LSWG. The
Examiner does not provide any persuasive reasoning to demonstrate that it
would have been obvious to change the principle of operation ofLSWG.
See, e.g.,In re Ratti, 270 F.2d 810,813 (CCPA 1959) (If the proposed
modification or combination of the prior art would change the principle of
operation of the prior art invention being modified, then the teachings of the
references are unlikely to demonstrate the claimed subject matter would
have been obvious.) Such reasoning is necessary to ensure the Examiner did
not base a conclusion of obviousness upon facts gleaned only through
hindsight. In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006) ("there must be
some articulated reasoning with some rational underpinning to support the
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Application 13/902,913
legal conclusion of obviousness" ( cited with approval in KSR Int' l. v.
Teleflex, 550 U.S. 398,418 (2007))). To draw on hindsight knowledge of the
patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction-
an illogical and inappropriate process by which to determine patentability.
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(citing WL. Gore &Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983)).
For the foregoing reasons we do not sustain the Examiner's rejections
on the basis set forth by the Examiner.
DECISION
The Examiner's rejections are reversed.
REVERSED
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