James E. Stoller

Patent Trials and Appeals Board

Oct 2, 2019

13798851 - (D) (P.T.A.B. Oct. 2, 2019)

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.
13/798,851 03/13/2013 James E. Stoller Y12.0025 9193
29438 7590 10/02/2019
Mathew R. P. Perrone, Jr.
Hibbs Law, LLC
224 West Judd Street
Suite 8
Woodstock, IL 60098
EXAMINER
GRAHAM, MARK S
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
gh@hibbslaw.com
m_perrone@hibbslaw.com
paralegal@perronepatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES E. STOLLER
____________

Appeal 2018-000904
Application 13/798,851
Technology Center 3700
____________

Before JENNIFER D. BAHR, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 21–23. Claims 1–20 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real part in interest as James E.
Stoller. Appeal Brief (“Appeal Br.”) 3, filed July 1, 2016.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to a target in sheet form. Spec.
¶¶ 1, 32, Fig. 4. Claim 21 is the sole independent claim.
Claim 21 recites:
21. A target which is easily stored yet easily brought into use
comprising:
a substrate formed from a print receivable polymer;
the substrate being easily stored yet easily brought into
use;
the print receivable polymer being flexible, bendable, and
a low density polymer;
the substrate being in sheet form;
the substrate having a target printed thereon;
the target being part of a roll of targets;
the target being separable from the roll of targets by
perforations or a cutting edge;
the roll of targets being stored in a dispenser;
the target being foldable;
the low density polymer forming the target being a printed
sheet of low density polyethylene;
the sheet form having a thickness in the range of about one
mil to about seven mils; and
the sheet form having a density in the range of about two
grams to about 10 grams for a square meter of the sheet form.
Appeal Br. 26 (Claims App.) (emphases added).
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REJECTIONS2
Claims 21–23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over McQuary (US 4,247,116, issued. Jan. 27, 1981) in view of Rehfuss
(US 398,186, issued Feb. 19, 1889).

ANALYSIS
Appellant does not offer arguments in favor of claims 22 and 23
separate from those presented for claim 21. See Appeal Br. 6–24. We select
claim 21 as the representative claim, and claims 22 and 23 stand or fall with
claim 21. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 21 recites a polyethylene sheet with targets printed thereon, the
sheet having: (1) “perforations” and (2) “a thickness in the range of about
one mil to about seven mils” and “a density in the range of about two grams
to about 10 grams for a square meter.” Appeal Br. 26 (Claims App.).
In the Final Office Action, the Examiner finds McQuary teaches a
polyethylene sheet with printed targets but lacks perforations. Final Act. 2.3
Relying on Rehfuss, the Examiner concludes it would have been obvious to
modify McQuary’s sheet to include perforations since it was known in the
art that such perforations facilitate target removal. Id.

2 Appellant presents additional evidence in the form of five declarations filed
under 37 C.F.R. § 1.132. The declarations, each filed on January 27, 2016,
include the Declaration of Kerri Lovelace (“Lovelace Declaration”), the
Declaration of James Arner (“Arner Declaration”), the Declaration of James
Jones (“Jones Declaration”), the Declaration of James E. Stoller (“Stoller
Declaration”), and the Declaration of Mathew R. P. Perrone, Jr. (“Perrone
Declaration”).
3 Final Office Action (“Final Act.”), dated Sept. 23, 2015.
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The Examiner also finds McQuary lacks the sheet’s claimed thickness
and density ranges but concludes that such would have been obvious. Final
Act. 2–3; Ans. 2–3.4 Specifically, the Examiner states:
[A]bsent a showing of unexpected results it would have been
obvious to one of ordinary skill in the art to have used a thickness
such as that claimed depending on strength and durability desired
in the target material vs. the increased cost of thicker material. .
. . As to the specific density of such material, again absent a
showing of unexpected results such would obviously have been
up to one of ordinary skill in the art depending on the strength
and durability desired in the target material. . . . “Where the
general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by
routine experimentation.” In re Aller, 220 F.2d 454, 456 . . .
(CCPA 1955).
Ans. 2–3.
In the Appeal and Reply Briefs, Appellant makes several arguments,
which we now address below:
Appellant contends that Rehfuss’ sheet material is not equivalent to
that of McQuary, rendering these references uncombinable. Appeal Br. 6.
We are not persuaded. Rehfuss is only relied on for its disclosure of
perforations for removal of targets from a roll. See Final Act. 2 (“Rehfuss
[discloses] it is known in the art to provide perforations b' on such target
rolls so that targets can be removed from the roll.”); see also Rehfuss 43–39,
Fig. 2. The Examiner merely proposes modifying McQuary’s sheet to
include perforations for target removal. Final Act. 2; see also Ans. 2. As
the Examiner explains in the Answer, even if McQuary’s sheet material is
not identical to that of Rehfuss, McQuary’s sheet is still capable of being

4 Examiner’s Answer (“Ans.”), dated Oct. 18, 2016.
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perforated. Ans. 4; see also McQuary 1:51–53 (“The apparatus includes a
length of ‘perforatable material’ having target indicia thereon.”). In light of
these reasons, Appellant’s statements that the McQuary and Rehfuss sheet
materials are not the same is not sufficient argument or technical reasoning
to persuade us that any differences in sheet materials would render adding
perforations to McQuary’s sheet improper.
Appellant argues the Examiner’s proposed combination fails to teach
all the claimed elements, i.e., that neither McQuary nor Rehfuss set out the
claimed thickness and density ranges, and durability. Appeal Br. 6–7.
In particular, Appellant argues the Examiner improperly relies on
Aller, cited in MPEP § 2144.05(II)(A), for the claimed thickness/density
ranges in lieu of relying on precise teachings in McQuary or Rehfuss.
Appeal Br. 6–7, 19–22. Specifically, Appellant argues that (1) McQuary
does not teach the general conditions of the claim, (2) “there is no
experimentation set forth anywhere in the application directed toward
discovering optimum or workable range,” (3) the results were unexpected,
and (4) Aller is a chemical case and not applicable to a case involving an
item of manufacture. Id.
“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed.
Cir. 2012) (quoting Aller, 220 F.2d at 456). This rule is largely limited to
cases in which the optimized variable was recognized to be a “result-
effective variable.” Id. (quoting In re Antonie, 559 F.2d 618, 620 (CCPA
1977)); see In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of
an optimum value of a result effective variable . . . is ordinarily within the
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skill of the art.”). “The outcome of optimizing a result-effective variable
may still be patentable if the claimed ranges are ‘critical’ and ‘produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art.’” Applied Materials, 692 F.3d at
1297 (quoting Aller, 220 F.2d at 456); see Antonie, 559 F.2d at 620.
With this in mind, we address below whether: (1) the general
conditions of the claim were disclosed in McQuary, (2) the claimed
thickness/density ranges were recognized as optimized result-effective
variables discoverable via routine experimentation, (3) the claimed
thickness/density ranges are critical and produce unexpected results, and (4)
Aller is applicable case law to an item of manufacture.
General Conditions Disclosed
We discern no error in the Examiner’s position that McQuary’s
“sheet” thickness and “inherently low density” polyethylene teach the
general conditions of the claim with respect to thickness and density. Ans.
3. Appellant has not sufficiently argued or provided technical reasoning as
to why McQuary does not teach the general conditions of the claim.
Result-Effective Variable
Here, the question is whether thickness and density were known to
affect strength and durability (or other properties) of the sheet material and,
thus, are result-effective variables. Applied Materials, 692 F.3d at 1297 (“A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.”).
As an initial matter, Appellant does not directly refute the Examiner’s
determination that thickness and density were known to affect strength and
durability. See, e.g., Appeal Br. 7; Ans. 4. “A person of ordinary skill is
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also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421(2007). Further, what a reference teaches or
suggests must be examined in the context of the knowledge, skill, and
reasoning ability of a skilled artisan and is not limited to what a reference
specifically “talks about” or what is specifically “mentioned” or “written” in
the reference. Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380
(Fed. Cir. 2005). In addition, Appellant’s Specification suggests thickness
and density were known to affect flexibility, bendability, and durability. For
example, the Specification states:
[A] flexible, bendable, low density polymer is preferred. A high-
density polymer tends to burst instead of puncture. . . . This
material is in sheet form and generally has a thickness in the
range of about one mil to about seven mils. . . . This material in
sheet form also generally may have a density in the range of
about one gram to about 100 grams for a square meter. . . . So,
soft, more flexible type materials are more suitable than hard
and rigid materials.
Spec. ¶¶ 31–33 (emphasis added).

As seen above, the Specification suggests a person of ordinary skill in
the art would understand that reducing density and thickness would result in
a softer, more flexible material. At a minimum, we see nothing in the
Specification that provides any evidence that the Examiner erred in
determining that it was known that thickness and density affect the sheet’s
physical properties, such as durability, and, thus, are result-effective
variables discoverable via routine experimentation.
Regarding Appellant’s statement that “no experimentation” is set forth
anywhere in the case history (Appeal Br. 19), the Stoller Declaration, in fact,
states:
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Much research went into the determination of the proper target
sheet. The sheet had to be durable, foldable and printable. After
many experiments, I determined that a sheet having claimed and
disclosed density and thickness were vastly superior to any other
sheet for use as a target, especially an archery target.
Stoller Declaration ¶ 4 (emphases added).

Thus, contrary to the statement made in the Appeal Brief, the Stoller
Declaration actually acknowledges that the claimed thickness/density ranges
were determined via experimentation, and does not provide sufficient
evidence that the experimentation was anything more than routine.
Criticality
Appellant’s Specification does not show any criticality of the sheet
material and its thickness/density ranges. On the contrary, the Specification
states:
For the target of this invention, a flexible, bendable, low
density polymer is preferred. A high-density polymer tends to
burst instead of puncture. Thus, low density polymer is
preferred. An especially preferred material is low density
polyethylene. . . .
This material is in sheet form and generally has a thickness
in the range of about one mil to about seven mils. More
preferably, the thickness is about 2 mils to about six mils. Most
preferably, the thickness is about two mils to about four mils.
This material in sheet form also generally may have a
density in the range of about one gram to about 100 grams for a
square meter. More preferably, the density is about two grams
to about 10 grams for a square meter. Most preferably, the
density is about two grams to about five grams for a square
meter. So, soft, more flexible type materials are more suitable
than hard and rigid materials.
Spec. ¶¶ 31–33 (emphases added).

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As seen in the above excerpt from the Specification, Appellant has
indicated several times that certain ranges and materials are “preferred” or
“more suitable,” which suggests that the ranges are not critical.
Furthermore, the Specification does not provide any indication that the
claimed thickness/density ranges achieve an unexpected result. Rather, the
Specification discloses changing thickness and density would affect the
flexibility of the sheet, which is an expected result.
Applicability of Aller
We are not persuaded by Appellant’s unsupported assertion that Aller,
a case involving chemical ranges, would not be applicable in this case,
which involves ranges of thickness and density. Appellant’s assertion that
the legal principle regarding obvious ranges, set forth in Aller, cannot be
applied in a case involving an item of manufacture is not supported by
sufficient evidence or argument. In fact, we note that the “[t]he law is
replete with cases in which the difference between the claimed invention and
the prior art is some range or other variable within the claims.” In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see, e.g., Gardner v. TEC
Sys., Inc., 725 F.2d 1338 (Fed. Cir. 1984); Boesch, 617 F.2d 272; In re
Ornitz, 351 F.2d 1013 (CCPA 1965).
Further, Appellant’s argument that the proposed combination lacks
the precise claimed ranges and thus the same “printability” and “durability”
of the subject invention is not persuasive. See Appeal Br. 6–7. The
Examiner’s position is that an ordinarily skilled artisan would have
understood that McQuary’s sheet is printable and that modifying the sheet’s
thickness/density would affect sheet durability. Ans. 2–3; Final Act. 2–3;
see also McQuary 3:17–18 (“The targets 14 are ‘printed’ on a plastic sheet
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15.”). The Examiner further finds that McQuary’s modified sheet would
“react in the same manner,” as the claimed sheet, i.e., has the same
durability. Ans. 3. Appellant does not provide persuasive evidence or
argument apprising us of Examiner error. Moreover, we note that a
particular sheet “durability” is not claimed. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (Limitations not appearing in the claims cannot be relied
upon for patentability).
Appellant also generally argues that the Examiner engaged in
hindsight reconstruction. Appeal Br. 8.
However, as correctly pointed out by the Examiner,
[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); Ans. 5. Here, the
Examiner provides rationales to modify McQuary with perforations and
specific thickness and density, i.e., to facilitate target removal and to achieve
the desired strength and durability, respectively. Final Act. 2–3. We are not
persuaded of error, because Appellant has not made a showing that these
rationales were outside of the knowledge within the level of ordinary skill in
the art at the time the claimed invention was made or were gleaned only
from Appellant’s disclosure.
In addition to the above arguments, Appellant presents evidence
contending non-obviousness via the Lovelace, Arner, Jones, Stoller, and
Perrone Declarations. See Appeal Br. 28 (Evidence App.). Appellant
contends that its declarations demonstrate sufficient evidence that the
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claimed invention solved a major problem and represented a major
improvement in archery targets, was praised by others, solved a long-felt and
unmet need, had commercial success, was realized only after much research
and testing, and provided unexpected results. Id. at 21–24; see also Reply
Br. 1–3.5
We are not persuaded for the following reasons:
As correctly pointed out by the Examiner (Ans. 6), the arguments
presented in the Lovelace, Arner, and Jones Declarations appear to be
directed to the McQuary and Rehfuss references individually, which are not
commensurate with the Examiner’s rejection of claim 21 based on the
combined teachings of McQuary and Rehfuss. See Ans. 6 (citing Evidence
App. (Lovelace, Arner, Jones Declarations ¶¶ 6–7)). Additionally, the
Examiner points out that the Lovelace, Arner, and Jones Declarations offer
“opinions with regard to some other target or targets, none of which are
identified, and presumably are not those of the references applied against the
instant claims.” Id. The declarations only discuss unspecified prior art
archery targets instead of the prior art actually applied, the modified
McQuary gun and slingshot target. By failing to address whether it would
have been obvious for a skilled artisan to modify McQuary’s gun target to
have perforations and the claimed ranges, these declarations are insufficient.
In addition, we do not give significant weight to the evidence
regarding praise by others in the Lovelace, Arner, and Jones Declarations.
Although the declarants claim to be experts in the field of archery recreation,
hunting, and instruction (see e.g., Lovelace Declaration ¶ 2), it is not evident

5 Reply Brief (“Reply Br.”), filed Nov. 16, 2016.
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whether the declarants are familiar with gun and sling shot type targets, such
as in McQuary.
Moreover, to the extent that the Lovelace, Arner, and Jones
Declarations evince recognition of a problem, these declarations do not
provide sufficient evidence of a long-felt but unsolved need for a target
having polyethylene sheets having perforations and the claimed thickness
and density. Furthermore, there is no evidence of any prior unsuccessful
attempts to manufacture a polyethylene target having the perforations or
claimed ranges.
As to the invention’s commercial success, the Stoller Declaration
states that many units had been or will be sold, but provides no indication of
whether this represents a substantial quantity in the relevant market. Stoller
Declaration ¶¶ 5–10. Evidence related solely to the number of units sold
provides a very weak showing of commercial success. See In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996). Furthermore, it is well established that
“[e]vidence of commercial success . . . is only significant if there is a nexus
between the claimed invention and the commercial success.” Galderma
Labs., L.P. v. Toulmar, Inc., 737 F.3d 731, 740 (Fed. Cir. 2013) (quoting
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006)).
Here, the Stoller Declaration does not provide sufficient evidence that “the
sales were a direct result of the unique characteristics of the claimed
invention—as opposed to other economic and commercial factors unrelated
to the quality of the patented subject matter.” Applied Materials, 692 F.3d at
1299–1300; Stoller Declaration ¶¶ 5–10.
Regarding the Stoller Declaration’s statement that much research and
testing was required to realize the invention, as discussed above, Appellant’s
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statements that “much research” and “many experiments” were conducted
do not provide sufficient evidence that the experimentation was non-routine
or outside of the skill of the art. Stoller Declaration ¶ 4.
Lastly, as to the Perrone Declaration, we agree with the Examiner that
the anecdote of a patent examiner’s recognition and handling of unexpected
results in another case is of little relevance to the case before us. See Ans. 8.
The weight to be given any objective evidence is made on a case-by-case
basis. The mere fact that another applicant has presented sufficient evidence
of unexpected results in another case does not mean that the evidence
presented here is dispositive of the issue of obviousness in the case at hand.
Having considered all the evidence presented by Appellant against
obviousness and weighing such evidence anew, we discern no error in the
Examiner’s analysis and reasoning on the issue of objective indicia of non-
obviousness. As such, Appellant has not overcome the prima facie case of
obviousness. See In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court
balanced the Office’s case against the strength of Appellant’s indicia of
non-obviousness.).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 21 as unpatentable over McQuary and Rehfuss, and
further sustain the rejection of claims 22 and 23, which fall with claim 21.

DECISION

We AFFIRM the decision of the Examiner to reject claims 21–23 as
unpatentable over McQuary and Rehfuss.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED