TIMBERGHOST TACTICAL, LLC

Patent Trials and Appeals Board

Mar 28, 2022

2021004780 (P.T.A.B. Mar. 28, 2022)

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. 16/716,571 12/17/2019 Roy Stephen FOX 8F10.1-012 4620 23506 7590 03/28/2022 GARDNER GROFF & GREENWALD, PC 1640 Powers Ferry Road Building 4, Suite 200 Marietta, GA 30067 EXAMINER ELDRED, JOHN W ART UNIT PAPER NUMBER 3641 NOTIFICATION DATE DELIVERY MODE 03/28/2022 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): USPTO@dockettrak.com patent@gardnergroff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROY STEPHEN FOX Appeal 2021-004780 Application 16/716,571 Technology Center 3600 Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and LISA M. GUIJT, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-17 and 19-34. Claim 18 has been canceled. Appeal Br. 14 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Timberghost Tactical, LLC. Appeal Br. 2. Appeal 2021-004780 Application 16/716,571 2 CLAIMED SUBJECT MATTER The claims are directed to small-arms ammunition round with a non- brass casing and a non-lead projectile. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A small arms ammunition round, comprising: a non-brass casing comprising stainless steel; and a non-lead projectile housed within the casing, the non-lead projectile comprising a matrix of at least one epoxy, at least one non-epoxy polymer, and copper. REFERENCES Name Reference Date Flatau US 4,212,244 July 15, 1980 Kelsey US 5,133,261 July 28, 1992 Nemec US 2016/0018199 A1 Jan. 21, 2016 Seeman US 9,322,623 B2 Apr. 26, 2016 Drobockyi2 US 9,939,236 B2 Filed July 27, 2016 REJECTIONS Claim(s) Rejected 35 U.S.C. § References/Basis 12, 13, 21, 22, 31, 32 112(b) Indefiniteness 1-6, 10-16 103 Seeman, Flatau 7, 8, 17, 19-26, 28-34 103 Seeman, Flatau, Nemec 27 103 Seeman, Flatau, Nemec, Kelsey 9 103 Seeman, Flatau, Kelsey 2 We rely on Drobockyi to support a new ground of rejection, set forth below. Appeal 2021-004780 Application 16/716,571 3 OPINION Claims 12, 13, 21, 22, 31, and 32-§ 112(b)-Indefiniteness The Examiner determines that the terms “416 stainless steel,” “7075 aluminum,” and “7078 aluminum” used in claims 12, 13, 21, 22, 31, and 32 are indefinite. Final Act. 2. The Examiner reasons that “[w]hile these are currently industry standard journal terms, they are subject to change as to the actual physical limitations that are intended by the term[s].” Id. According to the Examiner, “[t]he fact that prior art uses the terms and can be applied against claims, does not negate the problem that the implied limitations can change in the future.” Id. Appellant responds that “those skilled in the art . . . understand that these terms are indicative of certain compositions and are not amenable to multiple interpretations.” Appeal Br. 4. Appellant submits that “[t]hese terms are not ‘subject to change over time’ any more than are any words in the English language.” Id. at 5. During prosecution, a claim may be rejected as indefinite “when it contains words or phrases whose meaning is unclear,” MPEP § 2173.02, or if it is “amenable to two or more plausible claim constructions,” Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). In determining whether a claim is definite under 35 U.S.C. § 112, “[t]he USPTO, in examining an application, is obliged to test the claims for reasonable precision.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). It does not appear that the Examiner considers the terms “416 stainless steel,” “7075 aluminum,” and “7078 aluminum” to be unclear or amenable to more than one plausible construction at the present time. Instead, the Examiner is concerned that the meaning of these terms is Appeal 2021-004780 Application 16/716,571 4 “subject to change” in the future. The Examiner has not provided evidence to support this concern, however, such as evidence that the meaning of these terms has varied in the past. Therefore, the Examiner’s concern is speculative, and insufficient to support an indefiniteness rejection of claims containing these terms. Accordingly, we do not sustain the Examiner’s rejection of claims 12, 13, 21, 22, 31, and 32 as indefinite. Claims 1-6 and 10-16-§ 103-Seeman and Flatau Claims 7, 8, 17, 19-26, and 28-34-§ 103-Seeman, Flatau, and Nemec Claim 27-§ 103-Seeman, Flatau, Nemec, and Kelsey Claim 9-§ 103-Seeman, Flatau, and Kelsey Appellant does not separately argue the patentability of any individual claim rejected under § 103, but rather argues the claims as a group. Appeal Br. 7-11. Therefore, we select claim 1 as representative of all of the appealed claims, and decide the appeal of the above rejections on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Seeman discloses a small-arms ammunition round comprising a non-brass (aluminum) casing and a non-lead projectile comprising a matrix of epoxy, polymer, and copper. Final Act. 3 (citing Seeman 5:15-16, 6:10-17, 50-53, 57-60); see id. Fig. 1. The Examiner acknowledges that Seeman does not teach a casing made specifically of stainless steel, but finds that Flatau teaches “that it is known to form cartridge cases from one of a number of metals and alloys, including steel or aluminum.” Id. (citing Flatau 5:44-46). The Examiner determines that one of ordinary skill in the art would have made Seeman’s casing out of steel instead of aluminum because the combination would have been “the mere substitution of known casing metals due to desired performance, cost, or availability.” Id. Appeal 2021-004780 Application 16/716,571 5 Appellant does not dispute that Seeman teaches the claimed non-lead projectile housing in a non-brass casing. Appellant also does not dispute that Flatau teaches a stainless-steel casing. Appellant does argue, however, that Flatau “fails to indicate or explain the ‘desired performance, cost, or availability’ associated with the use of steel for casings so there appears to be a lack of any clear motivation or teaching to combine the teachings of the cited references.” Appeal Br. 7. This argument appears to be premised on a requirement that a motivation or reason to combine references must be expressly set forth in the references. This premise is incorrect. An express teaching, suggestion or motivation to combine references is not required to support a conclusion of obviousness based on the combination of the references. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Therefore, this argument is unpersuasive. Appellant further argues that casing materials “cannot be simplistically swapped,” and that “a mere substitution of materials” is an insufficient reason to combine Seeman and Flatau. Appeal Br. 8. Appellant relies on various portions of the Specification to support this argument. For example, Appellant asserts that “[t]he present application pointed out that the prior Palcher reference specifically noted that a mere substitution of materials was not appropriate.” Id. (citing Spec. ¶ 6). Appellant also asserts that “because stainless steel is harder, stiffer, and less malleable than the commonly used brass, its use in the making of casings leads to problems, such as difficulty in flaring the casing mouth as is common practice in preparation to load conventional brass casings.” Id. (citing Spec. ¶ 71). Appellant thus submits that “the substitution of stainless steel in place of conventional brass casing material . . . doe not yield predictable results.” Id. Appeal 2021-004780 Application 16/716,571 6 This argument is unpersuasive of Examiner error. First, according to the Specification, Palcher3 teaches making cartridge casings with “polymeric materials.” Spec. ¶ 3. Neither the Specification nor Appellant alleges that Palcher discusses making casings out of stainless steel. Thus, the relevance of Palcher to the use of stainless steel for cartridge casings is far from clear. Second, Appellant incorrectly characterizes the proposed modification as substituting stainless steel in place of brass to make casings. In fact, the substitution is that of stainless steel in place of aluminum for Seeman’s casing. Final Act. 3. Third, while the Specification discusses challenges that the inventor faced in using stainless steel casings, that does not mean that the solution to those challenges was beyond the level of ordinary skill in the art. That the inventor faced challenges in using stainless steel casings does not defeat the Examiner’s determination that using stainless steel casings would have been obvious to one of ordinary skill in the art at the time of the invention. Appellant does not dispute that Flatau teaches that stainless steel casings were known in the art. In teaching that casings can be made from aluminum or steel, Flatau suggests the interchangeability of these materials for casings. Appellant also proffers evidence purporting to show objective indicia of nonobviousness, such as evidence of unexpected results and industry praise. Appeal Br. 9-11. Objective evidence of nonobviousness, i.e., evidence of secondary considerations, can establish that “an invention appearing to have been obvious in light of the prior art was not,” and may be “the most probative and cogent evidence in the record.” Apple Inc. v. Int’l 3 PCT Pub. WO 83/00213 (Jan. 20, 1983). Appeal 2021-004780 Application 16/716,571 7 Trade Comm’n, 725 F.3d 1356, 1366 (Fed. Cir. 2013) (internal citations omitted). This evidence “guards against the use of hindsight because it helps turn back the clock and place the claims in the context that led to their invention.” Id. (internal citations omitted). Appellant asserts that it has provided “evidence of unpredictable and unexpected results associated with the combination of the stainless steel casing and non-lead projectile.” Appeal Br. 9. Appellant points to portions of the Specification that disclose that stainless steel casings “allowed for thinner casings over conventional brass casing, which provided larger internal capacity and greater performance.” Id. (citing Spec. ¶¶ 45-70, 81). Appellant also asserts that the Specification discloses that “[t]he combination of poly/copper projectiles and stainless steel casings also yielded increased power, accuracy and velocities not duplicated by any known combination of brass casings and poly/copper projectiles.” Id. (citing Spec. ¶ 83). To be particularly probative, evidence of unexpected results must establish that there is a difference between the results obtained and those of the closest prior art, and that the difference would not have been expected by one of ordinary skill in the art at the time of the invention. Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed.Cir.2006). The advantages touted by Appellant-increased power, accuracy, and velocities-are compared with cartridges comprising the claimed projectiles in brass casings. Appeal Br. 9. Seeman, however, teaches the claimed projectiles in aluminum casings. Appellant has not proffered evidence purporting to show advantages of the claimed cartridges over Seeman’s cartridges. As a result, we do not give substantial weight to this evidence. Appeal 2021-004780 Application 16/716,571 8 Appellant also submits evidence of industry praise. Appellant contends that “the claimed small arms ammunition rounds have garnered praise or acclaim by others for the combination of the non-lead projectile and non-brass casing comprising stainless steel.” Appeal Br. 9. In support of this contention, Appellant submits the following exhibits to its Appeal Brief: Exhibit A: Excerpt from the December 2019 issue of Tactical Life (Appeal Br. 18-19); Exhibit B: Excerpt from Volume 22 of American Handgunner (id. at 20-21); Exhibit C:” Excerpt from May 2018 issue of American Rifleman (id. at 22-25); Exhibit D: Excerpt from March 2018 issue of Gun Digest (id. at 26-28); Exhibit E: Excerpt from December 2017 issue of Guns & Ammo (id. at 29-31); Exhibit F: Excerpt from April 2018 issue of Shooting Illustrated (id. at 32-24). The Examiner considered Appellant’s evidence of industry praise, but concluded that it did not “overcome[] the case for obviousness in light of the cited prior art.” Ans. 6. The Examiner found that “[w]hile it is clear that the authors of these publications liked Applicant’s ammunition and compared it favorably to ammunition currently on the market,” they did not “perform any analysis of obviousness in view of known prior art.” Id. at 6-7. The Examiner also found that “there is an element of marketing in each of these publications,” as they resort to “hyperbole” and “non-scientific hype.” Id. at 7. Appeal 2021-004780 Application 16/716,571 9 Evidence of industry praise may be probative of nonobviousness. See Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013) (holding that patent owner’s proffered evidence of industry praise is probative of nonobviousness). However, “[f]or objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (internal citation and quotation marks omitted) (emphasis in original). “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” (internal citation omitted) (emphasis in original). It is Appellant’s burden to prove that the industry praise is attributable to the combination of the claimed non-lead projectile and non- brass casing, “as opposed to, for example, prior art features in isolation or unclaimed features.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1378 (Fed. Cir. 2019). After carefully reviewing Appellant’s proffered evidence of industry praise, we agree with the Examiner that it does not outweigh the evidence of obviousness of claim 1. Each of the above article excerpts discusses “Novx” ammunition.4 Appeal Br. 19, 21, 23, 27, 30, 33. As gleaned from the proffered evidence, the Novx round combines an epoxy/polymer/copper matrix projectile made by “Quantum Ammunition” with a bi-metal casing made by “Shell Shock Technologies.” Id. at 23-24 (Ex. C), 30 (Ex. E), 33 (Ex. F). The Novx projectile presumably corresponds to claim 1’s non-lead 4 One article identifies “Novx Ammunition” as a “holding of Timberghost Tactical, LLC,” the real party in interest in this case. Appeal Br. 23 (Ex. C). Appeal 2021-004780 Application 16/716,571 10 projectile comprising a matrix of at least one epoxy, at least one non-epoxy polymer, and copper; likewise, the Novx casing apparently corresponds to claim 1’s non-brass casing comprising stainless steel. It is undisputed that both claim 1’s non-lead projectile and its non-brass, stainless steel casing are “prior art” features, i.e., Seeman teaches the claimed projectile5 and Flatau teaches the claimed stainless-steel casing. A careful reading of Appellant’s evidence reveals that, although the authors recognize that the Novx round combines the non-lead projectile and non-brass casing described above, the praise is generally directed to each of these individually rather than the way in which they are combined. For example, in Exhibit A, the author ascribes the “utterly reliable performance and previously unimagined velocities” to the stainless steel case. Appeal Br. 19. The author explains that “[s]tainless steel cases do not expand as much as their brass counterparts, so more energy is transferred to the base of the bullet, producing higher speeds.” Id. As noted above, however, stainless steel casings were known in the art at the time of the invention. Flatau 5:44-45. Another reference praises the epoxy/polymer/copper projectiles as “lightweight,” which “enables them to be propelled extremely quickly, thereby increasing the foot-pounds of energy delivered on target through speed.” Id. at 23 (Ex. C). But it was already known that such projectiles had “less mass than conventional projectiles,” and thus were necessarily comparatively lightweight. Seeman 5: 67-6:4. Similarly, another reference states that the “much lighter” projectiles used in Novx’s round “allows a much higher velocity-1,655 feet 5 One reference also notes that the projectiles using in the Novx rounds “have been around since 2014.” Appeal Br. 33 (Ex. F). Appeal 2021-004780 Application 16/716,571 11 per second.” Appeal Br. 28 (Ex. D). But Seeman already teaches that its projectiles can achieve higher velocities. See Seeman 7:10-14 (stating that a tested projectile generated a muzzle velocity of “2300 ft/s”). In sum, we read the article excerpts provided by Appellant as directing praise to what was already known in the art- epoxy/polymer/copper projectiles and stainless-steel casings-for attributes that were already known in the art. Weighing such evidence together with the evidence of obviousness relied upon by the Examiner, the preponderance of the evidence indicates that claim 1 would have been obvious over Seeman and Flatau. Accordingly, we sustain the Examiner’s rejection of: claims 1- 6 and 10-16 as unpatentable over Seeman and Flatau; claims 7, 8, 17, 19- 26, and 28-34 as unpatentable over Seeman, Flatau, and Nemec; claim 27 as unpatentable over Seeman, Flatau, Nemec, and Kelsey; and claim 9 as unpatentable over Seeman, Flatau, and Kelsey. New Ground of Rejection under37 C.F.R. § 41.50(b): Claims 1 and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Seeman and Drobockyi Drobockyi issued from an application filed July 27, 2016, and claims priority to two provisional patent applications filed in 2015. Drobrockyi codes (21), (60). The application at issue claims priority to a provisional patent application filed July 27, 2017. Spec. ¶ 1. There are no inventors common to Drobockyi and the application at issue, and they do not appear to be commonly owned. Therefore, Drobockyi is prior art under 35 U.S.C. § 102(a)(2).6 6 The Specification also appears to recognize the prior-art status of Drobockyi. Spec. ¶¶ 5-6. Appeal 2021-004780 Application 16/716,571 12 Independent Claim 1 is drawn to an ammunition round comprising: (1) a non-brass casing comprising stainless steel; and (2) a non-lead projectile housed within the casing and comprising a matrix of at least one epoxy, at least one non-epoxy polymer, and copper. Appeal Br. 13 (Claims App.). Similarly, claim 17 is drawn to an ammunition round comprising: (1) a non-brass casing comprising at least two portions, one portion comprising stainless steel and the other portion being non-ferrous; and (2) a non-lead projectile within the casing. Id. at 14. We adopt the Examiner’s finding that Seeman teaches a small arms ammunition round comprising a non-brass casing (comprising aluminum), and a non-lead projectile housed within the casing, the non-lead projectile comprising a matrix of at least one epoxy, at least one non-epoxy polymer, and copper. Final Act. 3 (citing Seeman 5:15-16, 6:10-17, 50-53, 57-60). As noted above, these findings do not appear to be disputed. Although Seeman does not teach that its non-brass casing comprises stainless steel, or a two-portion casing comprising a stainless-steel portion and a non-ferrous portion, Drobockyi teaches a two-piece projectile casing comprising a sleeve made of an austenitic stainless steel and a base made of an aluminum alloy. Drobockyi 5:49-56, Figs. 4, 5. We determine that it would have been obvious to one of ordinary skill to use Seeman’s composite projectile in Drobockyi’s casing. Drobockyi teaches that making the sleeve portion of the case with stainless steel is advantageous because steel has “a higher strength than cartridge brass,” allowing the case to have “thinner casing walls.” Drobockyi 11:6-8. This in turn results in a larger internal diameter and thus room for more gunpowder. Id. at 11:12-16. According to Drobockyi, tests of cartridges using its casing Appeal 2021-004780 Application 16/716,571 13 show “a higher repeatability in bullet velocity at the exit of the barrel of a gun,” which “results in more accurate targeting of the bullet.” Id. at 11:23- 26. Making the base out of an aluminum alloy, such as 7075 alloy, allows the base to be anodized and dyed for color coding, to demark different types of cartridges. Id. at 13:42-49. Drobockyi describes its cartridge as providing “light weight, lower cost and higher performance than prior art casings,” as well as “durability during handling and the capability for reloading.” Id. at 14:59-63. Thus, one of ordinary skill in the art looking for a casing to use for Seeman’s projectile would have been motivated to choose Drobockyi’s cartridge to obtain the above benefits. We also find that one of ordinary skill in the art would have had a reasonable expectation of success in combining Seeman’s projectile with Drobockyi’s casing. Seeman teaches that its projectile can be used in a variety of different casings, both brass and non-brass casings, i.e., “[a]ny commercially available casing is suitable” for its composite projectile. Seeman 5:15-18. Additionally, Drobockyi teaches that cartridges can be made using its casing using the same kind of equipment as has been used for making cartridges with brass casings. We have considered the above evidence of obviousness of claims 1 and 17 in light of Appellant’s proffered evidence of unexpected results and industry praise for commercial embodiments of its invention. For reasons discussed above, we determine that this evidence does not outweigh the evidence of obviousness. Therefore, we reject independent claims 1 and 17 under § 103 as unpatentable over Seeman and Drobockyi. In the event of further prosecution, the Examiner may wish to determine whether any of the dependent claims are also unpatentable on this basis. Appeal 2021-004780 Application 16/716,571 14 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 12, 13, 21, 22, 31, 32 112(b) Indefiniteness 12, 13, 21, 22, 31, 32 1-6, 10- 16 103 Seeman, Flatau 1-6, 10- 16 7, 8, 17, 19-26, 28-34 103 Seeman, Flatau, Nemec 7, 8, 17, 19-26, 28-34 27 103 Seeman, Flatau, Nemec, Kelsey 27 9 103 Seeman, Flatau, Kelsey 9 1, 17 103 Seeman, Drobockyi 1, 17 Overall Outcome 1-17, 19-34 1, 17 FINALITY OF DECISION This decision contains a new ground of rejection under 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, “must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence Appeal 2021-004780 Application 16/716,571 15 relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record.” 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)(1)(iv). AFFIRMED 37 C.F.R. § 41.50(b)