Application of Dardick, Patent Appeal No. 9180.
| Citation | 496 F.2d 1234,181 USPQ 834 |
| Decision Date | 23 May 1974 |
| Docket Number | Patent Appeal No. 9180. |
| Parties | Application of David DARDICK. |
| Court | United States Court of Customs and Patent Appeals |
Alfred B. Levine, Washington, D. C., and Donald R. Nyhagen, Woodland Hills, Cal., attorneys of record, for appellant.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Henry W. Tarring, II, Falls Church, Va., of counsel.
Before MARKEY, Chief Judge, RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge.
This is an appeal from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 1-5 of appellant's application1 entitled "Salvo Ammunition For Multiple Bore Open Chamber Gun." We reverse.
The claims on appeal are directed to ammunition for a "multiple bore open chamber gun." With reference to the figures set forth below, appellant's specification contains the following description of the preferred embodiment of the claimed invention:
An open chamber gun, as described in appellant's specification, has a rotating cylinder with cut-out triangular sections running its length. The cartridge is laterally inserted into one of these sections and rotated into firing position within the breech.
The "multiple bore open chamber gun" in which this ammunition is employed has a number of bores (barrels) equal to the number of projectiles in the round, in this case three. When a round is fired in the gun, the projectiles are discharged simultaneously as a salvo, thereby increasing the likelihood that the target will be struck.
Claims 1 and 4 are representative of those on appeal:
The references relied upon were:
Dardick2 2,865,126 December 23, 1954
Hawthorne 3,437,039 April 8, 1969
(filed March 7, 1962)
Hawthorne describes a triangular shaped round for open chamber guns having three projectiles. Dardick describes a triangular round for open chamber guns having a single projectile which is surrounded by an obturating sleeve.3
Claims 1-3 and 5 were rejected under 35 U.S.C. § 102 as anticipated by Hawthorne. Claim 4 was rejected under 35 U.S.C. § 103 as unpatentable over Hawthorne in view of Dardick. In the examiner's view, it would have been obvious to one of ordinary skill in the art to use the obturating sleeve of Dardick in the round described by Hawthorne.
In the proceedings below, appellant did not challenge the examiner's conclusion based upon his interpretation of the prior art. However, appellant did submit affidavits and corroborating evidence under the provisions of Rule 131 in order to have Hawthorne removed as a reference. The evidence submitted under Rule 131 consisted of two affidavits by appellant, a corroborating affidavit by an employee of the Dardick Corporation (Charles Scheidler), a document purporting to be a part of a proposal to be submitted to a licensee, hand-written report of firing tests allegedly carried out using cartridges like that described in the specification, and three photographs of a cartridge case like that described in the specification.
The examiner did not consider the affidavits and other evidence to be an adequate showing under Rule 131 for essentially two reasons. In his view, the evidence submitted neither adequately described the cartridge in question nor demonstrated that whatever cartridge was tested was actually reduced to practice before the filing date of Hawthorne. He summarized his position as follows:
For its part, the board noted, without comment, the examiner's conclusions regarding the adequacy of the description of the cartridge in the affidavits and exhibits. However, after observing that the bullets tumbled in one of the firing tests reported, the board concluded that "* * * to have a reduction to practice in this art the bullets should not tumble."
OpinionAppellant, with the solicitor's concurrence, states the issue to be resolved on this appeal as follows:
The sole issue in this appeal is the sufficiency of the affidavits and exhibits submitted under Rule 131 to eliminate a reference patent of Hawthorne.
However, for us to address this issue requires that we consider two subsidiary questions. The first is that directly addressed by the board, i. e., whether the evidence as embodied in the firing tests is sufficient to show that whatever cartridge was tested was reduced to practice before the filing date of Hawthorne. The second is whether the affidavits and exhibits submitted under Rule 131 present an adequate description of the invention for the purpose of having Hawthorne removed as a reference.
Although the board did not expressly approve the examiner's decision regarding the adequacy of the description of the invention, neither did it expressly overrule the examiner on this ground for rejecting the showing under Rule 131. Accordingly, we must regard it as having been affirmed. See Patent Office Rule 196(a); In re Halliwell, 358 F.2d 1008, 53 CCPA 1112 (1966), and In re Rubinfield, 270 F.2d 391, 47 CCPA 701 (1959). We turn now to a consideration of these questions in the order presented.
The firing tests are adequate to establish that the cartridge tested was reduced to practice.
In response to the first office action, appellant submitted the report of the firing tests as an exhibit in support of his first affidavit under Rule 131. In the second office action received by him, in which the rejection was made final, the examiner did not criticize this report except to say that it was given no weight because of the inadequacy of the description of the cartridge. It was in response to this that appellant filed his second affidavit with Scheidler's corroborating affidavit. The affidavit was entered but deemed inadequate, without comment, to overcome the rejection. It was not until he prepared his answer to appellant's brief on appeal to the board that the examiner raised the question of the adequacy of the firing test as proof of a reduction to practice. He observed:
The success of the test results is not clear from the report. The only success from the report appears to be that the bullets were ejected and hit a target. It appears that the bullets tumbled (test # 1), that the sleeve imbedded in the barrel (test # 3), that something broke in test # 5, that only one bullet was used in test # 9 and that no sleeve was used in test # 10.
As we have already indicated, the board focused on the fact that in test #1 all the bullets tumbled. Appellant, in a request for reconsideration adressed to the board after its decision adverse to him and in his brief on this...
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