Ex Parte Rice et al

Board of Patent Appeals and Interferences

Mar 29, 2012

10282897 (B.P.A.I. Mar. 29, 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.
10/282,897 10/29/2002 John Ronald Rice 023698-0101 6936
27433 7590 03/30/2012
FOLEY & LARDNER LLP
321 NORTH CLARK STREET
SUITE 2800
CHICAGO, IL 60654-5313
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
03/30/2012 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 JOHN RONALD RICE, NICHOLAS JOHN MARKS, and
MARK ANDREW WALKER
___________

Appeal 2010-001754
Application 10/282,897
Technology Center 3600
___________

Before JOSEPH F. RUGGIERO, SCOTT R. BOALICK, and
CARLA M. KRIVAK, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
Applicants (“Appellant”) appeal under 35 U.S.C. § 134(a) from the
final rejection of claims 1-8 and 10-20. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Claims 1-8, 12, 13, and 16-20 were rejected under 35 U.S.C. § 102(e)
as anticipated by Kotsiopoulos (US 6,226,915 B1; May 8, 2001).
Claims 10 and 11 were rejected under 35 U.S.C. § 103(a) as obvious
over Kotsiopoulos and Moore (US 5,701,878; Dec. 30, 1997).
Claims 14 and 15 were rejected under 35 U.S.C. § 103(a) as obvious
over Kotsiopoulos and Perry (US 6,349,711 B1; Feb. 26, 2002).
Claim 9 is allowed.

APPELLANT’S INVENTION
Appellant discloses a trigger grip for a paintball marker (i.e., paintball
gun). (Abstract). Appellant’s Fig. 3, reproduced in part below, shows a
marker including an embodiment of the grip. (Spec. 6:14-15).

Appellant’s Fig. 3 is a schematic side view of a paintball
marker having a trigger grip according to an embodiment of the
invention.
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Appellant’s abstract describes the invention as follows (features 112,
X-X, 134 shown but not labeled in reproduced Fig. 3):
A paintball marker comprises a main body 110 and a
barrel 112 defining a firing axis X-X, a trigger 122, and a grip
120 arranged to be held in a hand of a user which operates the
trigger. The grip 120 has a rear edge 134 arranged to engage
the palm of the hand of a user, the rear edge 134 being
substantially vertical so as to enable the marker to be held in a
comfortable and controlled manner during use.

FINDINGS AND ANALYSIS
1. § 102(e) Rejection of Claims 1-8, 12, 13, and 16-20
Claims 1-8, 12, 13, and 16-20 were rejected as anticipated by
Kotsiopoulos. Claims 1, 5, and 20 are independent and recite a paintball
marker with a trigger grip that extends “substantially perpendicular” to the
marker’s firing axis. All other claims depend from claim 1 or 5.
Kotsiopoulos discloses a paintball marker with a forward-facing grip,
i.e., angled toward the marker’s muzzle. (Kotsiopoulos, abstract).
Appellant argues that Kotsiopoulos teaches away from a substantially
perpendicular grip because Kotsiopoulos states that perpendicular grips are
poorly suited for correctly holding a paintball marker. (Brief 12:11-13:3;
see also Kotsiopoulos col. 1, ll. 16-30). The Examiner finds that
Kotsiopoulos claims a grip of any acute forward angle and, as such,
discloses a substantially perpendicular grip. (Ans. 3-4; 9:17-10:1). The
Examiner further finds that Kotsiopoulos discloses "positioning the user's
trigger hand on the trigger grip frame while the marker is held close to the
user's face with the trigger hand held in an unstrained position as a result of
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the trigger grip frame being substantially perpendicular to the barrel."
(Ans. 4:4-16.)
We are not persuaded by Appellant’s arguments. First, whether a
prior art reference teaches away from a claimed invention is not relevant for
anticipation.1 Second, Kotsiopoulos does not teach away from perpendicular
grips, but rather expresses a mere preference for its forward-facing grip.2
Third, the discussion of perpendicular grips in Kotsiopoulos cited by
Appellant is not directed to the broader scope of the claimed substantially
perpendicular grip.3
Appellant has not shown error in the Examiner's finding that the
claims of Kotsiopoulos disclose a substantially perpendicular grip.
Kotsiopoulos discloses a grip that extends at an “acute angle” relative to a
marker’s firing axis (claim 5). An acute angle is one "measuring less than
90 degrees." Webster’s Third New International Dictionary of the English
Language Unabridged 23 (1971). Accordingly, Kotsiopoulos teaches a grip
that extends at an angle measuring less than 90 degrees relative to a marker's
firing axis -- which includes a grip that is substantially perpendicular to the

1 Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed.
Cir. 1998) (“[T]he question whether a reference ‘teaches away’ from the
invention is inapplicable to an anticipation analysis.”).
2 In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.”).
3 When the term “substantially” is recited by a claim, its meaning is
determined from the specification. See Seattle Box Co., v. Indus. Crating &
Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
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firing axis. Again, Appellant has not provided any convincing argument or
evidence to demonstrate error in this teaching.
Accordingly, the anticipation rejection of claims 1-8, 12, 13, and 16-
20 is sustained.

2. § 103(a) Rejection of Claims 10 and 11
Claims 10 and 11 were rejected as obvious over Kotsiopoulos and
Moore. Claim 10 depends from claim 5 and further restricts the rear profile
of the substantially perpendicular grip. Claim 11 depends from claim 10.
In reaching the further restrictions of claim 10, the Examiner proposed
to substitute the convex rear profile of Moore’s grip for the straight rear
profile of Kotsiopoulos’ grip. (Ans. 7:19-8:2). According to the Examiner,
the substitution would have been an obvious means of improving the
shooter’s comfort in holding Kotsiopoulos’ marker. (Id.).
Appellant does not contest this articulated reason for the modification.
Appellant argues only that Kotsiopoulos’ grip and Moore’s grip are not
substantially perpendicular grips and do not provide the inherent advantages
of a substantially perpendicular grip, such as “resulting in the user’s wrist
being unstrained when the marker is held close to the user’s face.” (Brief
16:21-17:8). Note that all argued advantages are inherent advantages.
(Spec. 6:4-12; 10:12-17; 11:7-15; 17:4-7; abstract).
Appellant argues that Moore’s grip is “angled significantly away”
from the firing axis. The argument does not meaningfully explain, as
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required, why Moore’s grip is not a substantially perpendicular grip.4
Appellant does not address the scope of a substantially perpendicular grip,
much less explain why that scope excludes Moore’s grip and particularly
excludes Kotsiopoulos’ grip as modified to include the rear profile of
Moore’s grip.
Accordingly, the obviousness rejection of claims 10 and 11 over
Kotsiopoulos and Moore is sustained.

3. § 103(a) Rejection of Claims 14 and 15
Claims 14 and 15 were rejected as obvious over Kotsiopoulos and
Perry. Claim 14 depends from claim 5 and adds a gas propellant port.
Claim 15 depends from claim 14 and adds a compressed gas bottle.
Appellant does not address the further restrictions of claims 14 and
15. Rather, Appellant argues that Perry fails to teach or suggest a
substantially perpendicular grip and, therefore, does not cure the Examiner’s
reliance on Kotsiopoulos with respect to this feature. (Brief 19:1-10). We
do not agree with Appellant because, as previously discussed, Kotsiopoulos
discloses a substantially perpendicular grip.

4 See In re Jung, 637 F.3d 1356, 1362-65 (Fed. Cir. 2011) (“Before the
examiner, Jung merely argued that the claims differed from Kalnitsky, and
chose not to proffer a serious explanation of this difference.”); see also 37
C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”); 37 C.F.R. § 1.111(b) (“A general allegation that the claims
define a patentable invention without specifically pointing out how the
language of the claims patentably distinguishes them from the references
does not comply with the requirements of this section.”).
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Accordingly, we sustain the obviousness rejection of claims 14 and 15
over Kotsiopoulos and Perry.

DECISION
The rejection of claims 1-8, 12, 13 and 16-20 under § 102(e) as
anticipated by Kotsiopoulos is affirmed.
The rejection of claims 10 and 11 under § 103(a) as unpatentable over
the combined teachings of Kotsiopoulos and Moore is affirmed.
The rejection of claims 14 and 15 under § 103(a) as unpatentable over
the combined teachings of Kotsiopoulos and Perry is affirmed.

AFFIRMED

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