In Re PepperBall Technologies, Inc. , 469 F. App'x 878 ( 2012 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Reexamination No. 90/008,731)
IN RE PEPPERBALL TECHNOLOGIES, INC.
__________________________
2011-1137
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
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__________________________
(Reexamination No. 90/008,728)
IN RE PEPPERBALL TECHNOLOGIES, INC.
__________________________
2011-1138
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
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Decided: March 7, 2012
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IN RE PEPPERBALL 2
FRANCO A. SERAFINI, Themis Law, of La Jolla, Cali-
fornia, argued for appellant in both appeals. With him on
the brief was DAVID M. FORTNER.
FRANCES M. LYNCH, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee in both appeals. With her on the brief
were RAYMOND T. CHEN, Solicitor, and SCOTT C.
WEIDENFELLER, Associate Solicitor.
__________________________
Before RADER, Chief Judge, PLAGER, and DYK, Circuit
Judges.
PER CURIAM.
PepperBall Technologies, Inc. (“PepperBall”) appeals
the decision of the Board of Patent Appeals and Interfer-
ences (“Board”), affirming the examiner’s rejection of
claims 1-25 of U.S. Patent No. 6,393,992 (filed Apr. 9,
1999) (“the ’992 patent”). Ex parte PepperBall Technolo-
gies, Inc., No. 2010-003789, 2010 WL 2638032 (B.P.A.I.
June 30, 2010). PepperBall also appeals the Board’s
decision to affirm the examiner’s rejection of claims 1-28
of U.S. Patent No. 7,194,960 (filed June 10, 2004) (“the
’960 patent”). Ex parte PepperBall Technologies, Inc., No.
2010-004091, 2010 WL 2638033 (B.P.A.I. June 30, 2010).
This opinion resolves both appeals. Because the Board’s
fact findings are supported by substantial evidence, and
because this court sees no legal error in the Board’s
decision, this court affirms.
I.
The ’992 and ’960 patents disclose a non-lethal projec-
tile delivering an inhibiting substance to a living target
for riot control or subduing a suspected criminal. The
projectiles of the ’992 patent are spherical and contain a
3 IN RE PEPPERBALL
pepper-based, powdered inhibiting substance such as
oleoresin capsicum. Oleoresin capsicum is derived from
capsaicin, which is in the capsaicinoid family and ex-
tracted from plants in the capsicum genus (commonly
known as chili peppers). The projectiles are frangible,
rupturing upon impact and radially dispersing the powder
proximate to the target (e.g., a human) in a cloud. For
optimal dispersion of the powered substance, the projec-
tiles are filled greater than 50%, and preferably filled
greater than 90%. Filling the projectiles 100%, however,
will produce an undesirable clump instead of a cloud.
Claims 1 and 22 are representative:
1. A system comprising:
a generally spheroid frangible projec-
tile to be impacted with a target where the
frangible projectile is configured such that
an ignitable substance is not used in
launching the frangible projectile;
the frangible projectile comprising a
rigid frangible shell having a thickness
and a volume formed within, wherein the
rigid frangible shell ruptures upon impact
with the target; and
an inhibiting substance contained
within the volume and occupying at least
about 50% of the volume;
wherein the inhibiting substance
comprising a powdered inhibiting sub-
stance, wherein upon impact with the tar-
get the rigid frangible shell ruptures
radially dispersing the powdered inhibit-
ing substance proximate to the target into
a cloud; and
IN RE PEPPERBALL 4
wherein the inhibiting substance
comprises powdered oleoresin capsicum.
22. The system of claim 1, wherein a fill mate-
rial contained within the volume compris-
ing the powdered inhibiting substance
occupies between 60% and 95% of the vol-
ume.
The ’960 patent is a child of the ’992 patent. There
are two main differences in the ’960 patent from its par-
ent. First, the powdered inhibiting substance is noni-
vamide instead of oleoresin capsicum. Second, upon
impact, the shell ruptures dispersing the powdered sub-
stance omnidirectionally instead of radially. Nonivamide
is a synthetic capsaicinoid. Claims 1 and 11 are represen-
tative:
1. A system comprising:
a frangible projectile to be impacted
with a target where the frangible projec-
tile is adapted to be launched such that a
propellant gas acts directly on the frangi-
ble projectile to propel and launch the
frangible projectile without an intermedi-
ary between the frangible projectile and
the propellant gas and where an ignitable
substance is not used in launching the
frangible projectile;
the frangible projectile comprising a
rigid frangible shell having a thickness
and a volume formed within, wherein the
rigid frangible shell ruptures upon impact
with the target; and
a substance contained within the
volume;
5 IN RE PEPPERBALL
wherein the substance comprises a
powdered inhibiting substance, wherein
upon impact with the target the rigid
frangible shell ruptures, omnidirectionally
dispersing the powdered inhibiting sub-
stance proximate to the target into a
cloud; and
wherein the powdered inhibiting sub-
stance comprises nonivamide.
11. The system of claim 8 wherein the rigid
frangible shell further comprises at least
one structurally weakening feature
formed within the frangible shell wherein
the weakening features aid in the ruptur-
ing of the projectile and in inducing the
omnidirectional dispersion of the pow-
dered inhibiting substance.
As issued, the ’992 patent had 17 claims. During re-
examination, PepperBall amended claims 1, 5, 7, 10, and
11-13, and added new claims 18-25. The ’960 patent
issued with 21 claims. During reexamination, PepperBall
amended claims 1, 3, 4, and 8-11, and added new claims
22-28. The Board affirmed the examiner’s decision to
reject all claims of both patents as obvious and claims 5,
21, and 22 of the ’992 patent and claims 4, 26, and 28 of
the ’960 patent for lack of written description. This court
has jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
II.
Whether an invention would have been obvious is a
legal question. In re Gartside, 203 F.3d 1305, 1316 (Fed.
Cir. 2000). What a reference teaches and whether a
person with ordinary skill in the art would have been
motivated to combine the teachings of separate references
IN RE PEPPERBALL 6
are questions of fact. Id.; Para-Ordnance Mfg. v. SGS
Imps. Int'l, 73 F.3d 1085, 1088 (Fed. Cir. 1995). This
court upholds the Board’s fact findings supported by
substantial evidence, 5 U.S.C. § 706, and reviews legal
conclusions without deference, Gartside, 203 F.3d at
1315-16.
III.
The Board based its obviousness rejection on U.S.
Patent No. 5,639,526 (filed Oct. 14, 1993) (“Kotsiopoulos”)
in view of U.S. Patent No. 3,951,070 (filed Dec. 6, 1973)
(“Flatau”), U.S. Patent No. 5,018,450 (filed Apr. 25, 1991)
(“Smith”), U.S. Patent No. 5,361,700 (filed Dec. 10, 1993)
(“Carbone”), and U.S. Patent No. 5,821,450 (filed Mar. 31,
1997) (“Fedida”). PepperBall, 2010 WL 2638032, at *20.
First, there is substantial evidence to support the
Board’s fact findings on the teachings of the prior art.
Flatau discloses a non-lethal “frangible” ring airfoil
projectile that ruptures on impact to distribute a “pay-
load” to the target. Flatau, at col.2 ll.19, 64; PepperBall,
2010 WL 2638032, at *10. The payload can be a liquid or
powdered “incapacitating agent.” Flatau, at col.7 l.22 and
col.4 ll.15-18. The specification alleges the projectile is
effective at both “point blank range” or “from a distance.”
Flatau, at col.2 ll.1-8; PepperBall, 2010 WL 2638032, at
*16.
Smith discloses a paintball with two separately-sealed
compartments. PepperBall, 2010 WL 2638032, at *13.
Specifically, Smith claims a luminescent paintball for
nighttime use. Smith, at col.1 ll.10-19. To prevent the
two luminescent chemicals from mixing until the paint-
ball impacts the target, Smith teaches a method of filling
a paintball by fusing together two separate compart-
ments. Smith, at col.1 ll.7-13.
7 IN RE PEPPERBALL
Kotsiopoulos claims a paintball shell filled with a
“coloring agent” (e.g., paint) and that “readily fractures
upon striking a victim with a greatly decreased risk of
physical harm to the victim.” Kotsiopoulos, at col.2 ll.58-
61; PepperBall, 2010 WL 2638032, at *12. The specifica-
tion discloses substituting the coloring agent with a
variety of fill components, including tear gas. Kotsiopou-
los, at col.5 ll.3-7 and col. 7 ll. 20-22; PepperBall, 2010 WL
2638032, at *12.
Carbone discloses a shotgun cartridge comprised of a
ball held by a cup enveloped by a fan, which ejects a
substance upon impact to a target. Carbone, at claims 1
and 5. The substance can be marking dyes, paints, or
irritants such as pepper and tear gas. Carbone, at col.1
ll.8-10; PepperBall, 2010 WL 2638032, at *8.
Fedida discloses an irritant composition for use in
projectiles and that includes at least one capsaicinoid,
specifically a combination of piperidide and a capsaici-
noid. Fedida, at col.5 ll. 35-38; PepperBall, 2010 WL
2638032, at *12. The specification discloses the composi-
tion in a wide range of forms, including powder. Fedida,
at col.4; PepperBall, 2010 WL 2638032, at *13. The
specification explains that the advantage of a powder is
the ability to disperse a large surface or volume on the
target. Fedida, at col.4 ll.40-43; PepperBall, 2010 WL
2638032, at *13. The specification identifies oleoresin
capsicum as in the prior art. Fedida, at col.1 l.31.
Next, there is substantial evidence supporting the
Board’s finding that a person of ordinary skill in the art
would have been motivated to substitute a well-known
pepper-based irritant, such as oleoresin capsicum, for the
tear gas irritant disclosed in the Kotsiopoulos projectile.
The main difference in the PepperBall projectile from the
prior art Kotsiopoulos projectile is the type of filling
IN RE PEPPERBALL 8
agent. While Kotsiopoulos does not specifically mention
filling a paintball with a powdered irritant, PepperBall
admitted that tear gas could be a powder in a parent
application to the patents at issue. See U.S. Patent No.
5,965,839 col.14 ll.28-29 (filed Nov. 18, 1996) (“7. The
projectile of claim 1 wherein said powdered inhibiting
substance includes tear gas.”). Further, the prior art
teaches pepper-based powdered equivalents to tear gas.
See, e.g., Fedida, at col.3 ll.7-10; PepperBall, 2010 WL
2638032, at *12.
While Kotsiopoulos only teaches how to fill a paintball
with a liquid using an injection needle, the Board found
that prior art such as Fedida taught incorporating pow-
dered irritants into spherical projectiles. PepperBall,
2010 WL 2638032, at *13. The Board acknowledged that
filling a paintball with powder would be “more than a
trivial task.” Id. at 14. Nevertheless, the Board found
that the task could be accomplished by a person of ordi-
nary skill in the art “with routine experimentation.” Id.The Board properly rejected PepperBall’s argument
that Fedida taught away from the claimed systems.
PepperBall, 2010 WL 2638032, at *13. Though Fedida
does focus on ignitable projectiles, the Board relied on
Fedida for its teaching of a pepper-based powdered irri-
tant as equivalent to prior art irritants in projectiles.
Fedida does not criticize, discredit, or otherwise discour-
age use of such irritants in non-ignitable projectiles. See
In re Chapman, 595 F.3d 1330, 1337 (Fed. Cir. 2010);
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1327 (Fed. Cir. 2009). Similarly, contrary to
PepperBall’s assertions, Flatau does not teach away from
the claimed systems. PepperBall overstates Flatau’s
problems with tear gas grenades as reflecting all conven-
tional (spherical) projectiles. Indeed, Flatau does not
9 IN RE PEPPERBALL
reference spherical projectiles or problems with powdered
irritants.
The differing fill levels recited in claim 22 of the ’992
patent, however, is a closer question of obviousness. The
Board found that Kotsiopoulos teaches a “weighting
agent” could be added in a paintball to optimize flight.
PepperBall, 2010 WL 2638032, at *14. The Board found
that Kotsiopoulos’ adding a weighting agent was similar
to PepperBall’s modifying the fill percentage. Id. Thus,
the Board concluded that it would have been obvious to
modify the fill levels in a projectile within the recited
range in claim 22. Id.This court in the first instance might not have
reached the same conclusion as the Board on the similar-
ity of PepperBall’s differing fill levels and Kotsiopoulos’
weighting agent. PepperBall’s differing fill levels are for
the purpose of optimizing the size of the cloud upon
impact, while, in contrast, Kotsiopoulos’ weighting agent
is for the purpose of optimizing the flight of the projectile.
Nevertheless, this court does find substantial evidence to
support the Board’s finding of obviousness, because the
claimed range of 60% to 95% is so broad in this context
that a person of ordinary skill in the art likely would have
tried fill levels within this range during routine experi-
mentation.
Though claims 1-12 and 14-25 in the ’992 patent were
rejected in view of the same four references, the Board
rejected claim 13 in view of the additional prior art refer-
ence Smith. PepperBall has made no substantial argu-
ments as to this claim or as to Smith in its appeal briefs.
PepperBall has not met its burden to show there is no
substantial evidence to support the Board’s findings.
There is substantial evidence to support the Board’s
fact findings on the objective indicia of non-obviousness.
IN RE PEPPERBALL 10
While the claimed systems may have been beneficial, the
Board correctly found that others had previously solved
the long-felt need for a non-lethal projectile. PepperBall,
2010 WL 2638032, at *18. While PepperBall argues the
need addressed by its claimed systems is more specific
(i.e., a non-lethal, powdered irritant projectile with cloud
dispersion and that can be launched from both close and
far distances), PepperBall has not presented sufficient
evidence of such a specific need nor that it was long-felt.
See Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655
F.3d 1364, 1376 (Fed. Cir. 2011); Eli Lilly & Co. v. Zenith
Goldline Pharm., Inc., 471 F.3d 1369, 1380 (Fed. Cir.
2006).
The commercial success evidence proffered by Pep-
perBall does not provide sufficient detail to overcome the
prima facie showing here. That evidence lacks a suffi-
cient nexus to the claimed invention. The $3 million in
sales enjoyed by PepperBall covers not only projectiles but
also launch platforms, training revenues and “accessories
[like] carrying cases for the launchers, hoppers, high
pressure air bottles, magazines, tactical slings, speed pod
loaders and other projectiles for use in the launchers.”
See Crocs, Inc. v. ITC, 598 F.3d 1294, 1311 (Fed. Cir.
2010).
In conclusion, this court sees no error in the Board’s
conclusion that the proffered evidence of objective indicia
is insufficient to overcome the prima facie case of obvi-
ousness here.
The discussion above applies to both the child and
parent patents. Though on appeal PepperBall makes new
arguments as to both patents, those arguments are
waived and not discussed further in this opinion. By
affirming on obviousness grounds, this court does not
reach the written description rejections.
11 IN RE PEPPERBALL
AFFIRMED.