TIMBERGHOST TACTICAL, LLC

Patent Trials and Appeals Board

Mar 28, 2022

2021005038 (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. 16/046,307 07/26/2018 Roy Stephen FOX 8F10.1-011 9039 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 2021-005038 Application 16/046,307 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 1-6, 8-13, and 16-25. Claims 7, 14, and 15 have been canceled. Appeal Br. 12, 13 (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 2021-005038 Application 16/046,307 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 a shell comprising stainless steel and a primer housing 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. 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 Drobockyi US 9,939,236 B2 Apr. 10, 2018 Filed July 27, 2016 REJECTIONS Claim(s) Rejected 35 U.S.C. § References/Basis 1-6, 8, 10-13, 16-22, 24, 252 103 Seeman, Flatau, Nemec 9, 23 103 Seeman, Flatau, Nemec, Kelsey 2 In the Final Action, the heading for this rejection mistakenly includes claim 7 as being rejected over Seeman, Flatau, and Nemec. Final Act. 2. However, claim 7 has been canceled. Appeal Br. 12 (Claims App.). Appeal 2021-005038 Application 16/046,307 3 OPINION Claims 1-6, 8, 10-13, 16-22, 24, and 25 -§ 103-Seeman, Flatau, and Nemec Appellant argues the claims subject to this rejection as a group. Appeal Br. 5-10. We select claim 1 as representative of the group, and decide the appeal of this rejection 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. 2 (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. The Examiner also acknowledges that Seeman does not specify that the casing comprises a separate primer housing made of aluminum. Id. The Examiner finds, however, that Nemec teaches “that it is well known to have a cartridge with a primer housing formed from one of many metals, including aluminum.” Id. (citing Nemec ¶ 47). The Examiner also finds that “Nemec implicitly teaches that the primer can be formed from a different material than the case.” Id. at 3 (citing Nemec ¶ 47). The Examiner determines that one of ordinary skill in the art would have made Appeal 2021-005038 Application 16/046,307 4 the primer housing out of aluminum or steel based on “desired performance parameters, price, or availability.” Id. at 2-3. Appellant does not dispute that Seeman teaches the claimed non-lead projectile housing in a non-brass casing, that Flatau teaches a stainless-steel casing, or that Nemec teaches a casing comprising a separate primer housing comprising aluminum. 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 complete lack of any clear motivation or teaching to combine the teachings of the cited references.” Appeal Br. 6. Appellant similarly argues that Nemec “fails to indicate or explain the ‘desired performance parameters, price, or availability’ associated with the use of aluminum for the primer housing, or portions of casings, so again there appears to be an utter lack of any clear motivation or teaching in Nemec to combine the teachings of the cited references.” Id. These arguments appear to be premised on a requirement that a motivation to combine references 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, these arguments are 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. 6-7. Appellant asserts that “[t]he present application pointed out that the prior Appeal 2021-005038 Application 16/046,307 5 Palcher reference specifically noted that a mere substitution of materials was not appropriate.” Id. at 6 (citing Spec. ¶ 6). This argument is unpersuasive of Examiner error. According to the Specification, Palcher3 teaches making cartridge casings with “polymeric materials.” Spec. ¶ 3. Neither the Specification not 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. Appellant also proffers evidence purporting to show objective indicia of nonobviousness, in particular evidence of unexpected results and industry praise. Appeal Br. 7-10. 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 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 “[e]vidence of unpredictable and unexpected results associated with the combination of the stainless steel/aluminum casing and non-lead projectile.” Appeal Br. 7. Appellant points to paragraphs 81 and 83 as such evidence. However, the Specification at issue does not contain paragraphs 81 and 83; the final paragraph of the Specification is paragraph 69.4 3 PCT Pub. WO 83/00213 A1 (Jan. 20, 1983). 4 Appellant is likely referring to paragraphs 81 and 83 of U.S. Appl. No. 16/716571 (“the ’571 application”), which is a continuation-in-part of the Appeal 2021-005038 Application 16/046,307 6 Appellant also refers us to paragraphs 45-705 of the Specification, asserting that this portion of the Specification “describes the testing” of embodiments of the claimed ammunition round, and the “results” of that testing, which allegedly identify the “benefits and advantages of the claimed construction.” Appeal Br. 7. Appellant does not identify which results are being relied on specifically, or why those results are “unexpected.” Thus, we are not persuaded by this evidence. 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. 8. In support of this contention, Appellant appends the following exhibits to its Appeal Brief: Exhibit A: Excerpt from the December 2019 issue of Tactical Life (Appeal Br. 16-17); Exhibit B: Excerpt from Volume 22 of American Handgunner (id. at 18-19); Exhibit C:” Excerpt from May 2018 issue of American Rifleman (id. at 20-23); Exhibit D: Excerpt from March 2018 issue of Gun Digest (id. at 24-26); Exhibit E: Excerpt from December 2017 issue of Guns & Ammo (id. at 27-29); application at issue in this case. The ’571 application is on appeal in Appeal 2021-004780. 5 As noted above, the Specification ends with paragraph 69, so we understand Appellant to be citing paragraphs 45-69. Appeal 2021-005038 Application 16/046,307 7 Exhibit F: Excerpt from April 2018 issue of Shooting Illustrated (id. at 30-32). The Examiner considered Appellant’s evidence of industry praise, but concluded that it does not “overcome the case for obviousness in light of the cited prior art.” Ans. 5. 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. 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 5-6. 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, for such evidence, as with any 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). “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.” Id. (internal citation omitted). 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 Appeal 2021-005038 Application 16/046,307 8 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 proffered article excerpts discusses “Novx” ammunition.6 Appeal Br. 17, 19, 21, 25, 28, 31. As gleaned from the proffered evidence, the Novx round combines an epoxy/polymer/copper projectile made by “Quantum Ammunition” with a bi-metal casing made by “Shell Shock Technologies.” Id. at 21-22 (Ex. C), 28 (Ex. E), 31 (Ex. F). The Novx projectile presumably corresponds to claim 1’s non-lead projectile comprising a matrix of at least one epoxy, at least one non-epoxy polymer, and copper; likewise, the Novx casing presumably corresponds to claim 1’s non-brass casing comprising a shell comprising stainless steel and a primer housing comprising aluminum. It is undisputed that both claim 1’s non-lead projectile and its non-brass casing are “prior art” features, i.e., Seeman teaches the claimed projectile7 and the combination of Flatau and Nemec teaches the claimed 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. 6 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). 7 One reference also notes that the projectiles using in the Novx rounds “have been around since 2014.” Appeal Br. 31 (Ex. F). Appeal 2021-005038 Application 16/046,307 9 For example, in Exhibit A, the author ascribes the “utterly reliable performance and previously unimagined velocities” to the stainless steel case. Appeal Br. 17. 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. 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. Another reference similarly states that the “much lighter” projectiles used in Novx’s round “allows a much higher velocity-1,655 feet per second.” Appeal Br. 26 (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 supports the Examiner’s determination that claim 1 would have been obvious over Seeman, Flatau, and Nemec. Accordingly, we sustain the Examiner’s rejection of claims 1-6, 8, 10-13, 16-22, 24, and 25 under § 103 as unpatentable over Seeman, Flatau, and Nemec. Appeal 2021-005038 Application 16/046,307 10 Claims 9 and 23-§ 103-Seeman, Flatau, Nemec, and Kelsey Appellant does not separately argue the patentability of claims 9 and 23, but relies on arguments made in support of the patentability of claim 1, which we found unpersuasive. Appeal Br. 10. Accordingly, we sustain the Examiner’s rejection of claims 9 and 23 as unpatentable over Seeman, Flatau, Nemec, and Kelsey. New Ground of Rejection: Claims 1 and 13 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. Drobockyi 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).8 Independent Claim 1 is drawn to an ammunition round comprising: (1) a non-brass casing comprising a shell comprising stainless steel and a primer housing comprising aluminum; 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. 12 (Claims App.). Independent claim 13 is drawn to an ammunition round comprising: (1) a multi-piece, non-brass casing comprising a stainless steel portion and an aluminum portion; and (2) a non-lead projectile housed within the casing and 8 The Specification appears to recognize the prior-art status of Drobockyi. Spec. ¶¶ 5-6. Appeal 2021-005038 Application 16/046,307 11 comprising a matrix of at least one epoxy, at least one non-epoxy polymer, and copper. Id. at 13. We adopt the Examiner’s findings 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. 2 (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 a shell comprising stainless steel and a primer housing comprising aluminum (claim 1), or a multi-piece, non-brass casing comprising a stainless steel portion and an aluminum portion (claim 13), Drobockyi teaches the casing recited in claims 1 and 13; specifically, 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. 3, 4, 5. The base is configured to receive a primer, and is therefore a “primer housing” as recited in claim 1). Id. at 5:13-21, Fig. 3. In sum, Drobockyi teaches the non-brass casing recited in claims 1 and 13, and Seeman teaches the non-lead projectile recited in claims 1 and 13. 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 2021-005038 Application 16/046,307 12 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 that has been used for making cartridges with brass casings. We have considered the above evidence of obviousness of claims 1 and 13 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 13 under § 103 as unpatentable over Seeman and Drobockyi. In the event of further prosecution, the Examiner may wish to consider whether any of the dependent claims are also unpatentable on this basis. Appeal 2021-005038 Application 16/046,307 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1-6, 8, 10-13, 16-22, 24, 25 103 Seeman, Flatau, Nemec 1-6, 8, 10-13, 16-22, 24, 25 9, 23 103 Seeman, Flatau, Nemec, Kelsey 9, 23 1, 13 103 Seeman, Drobockyi 1, 13 Overall Outcome 1-6, 8- 13, 16- 25 1, 13 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 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. Appeal 2021-005038 Application 16/046,307 14 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)