NOTE: This disposition is nonprecedential.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. 

___________________________ 

Decided: March 7, 2012 

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IN RE PEPPERBALL 2

FRANCO A. SERAFINI, Themis Law, of La Jolla, California, 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 Interferences (“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 Technologies, 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 projectile 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 extracted 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 projectiles 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 projectile 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 substance, wherein upon impact with the target the rigid frangible shell ruptures 

radially dispersing the powdered inhibiting 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 material contained within the volume comprising the powdered inhibiting substance 

occupies between 60% and 95% of the volume. 

The ’960 patent is a child of the ’992 patent. There 

are two main differences in the ’960 patent from its parent. First, the powdered inhibiting substance is nonivamide instead of oleoresin capsicum. Second, upon 

impact, the shell ruptures dispersing the powdered substance omnidirectionally instead of radially. Nonivamide 

is a synthetic capsaicinoid. Claims 1 and 11 are representative: 

1. A system comprising: 

a frangible projectile to be impacted 

with a target where the frangible projectile is adapted to be launched such that a 

propellant gas acts directly on the frangible projectile to propel and launch the 

frangible projectile without an intermediary 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 substance proximate to the target into a 

cloud; and 

wherein the powdered inhibiting substance 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 rupturing of the projectile and in inducing the 

omnidirectional dispersion of the powdered inhibiting substance. 

As issued, the ’992 patent had 17 claims. During reexamination, 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 “payload” 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 paintball impacts the target, Smith teaches a method of filling 

a paintball by fusing together two separate compartments. 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 specification discloses substituting the coloring agent with a 

variety of fill components, including tear gas. Kotsiopoulos, 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 capsaicinoid. Fedida, at col.5 ll. 35-38; PepperBall, 2010 WL 

2638032, at *12. The specification discloses the composition 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 powdered 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 ordinary 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 irritant as equivalent to prior art irritants in projectiles. 

Fedida does not criticize, discredit, or otherwise discourage 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 conventional (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 similarity 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 experimentation. 

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 reference Smith. PepperBall has made no substantial arguments 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 PepperBall does not provide sufficient detail to overcome the 

prima facie showing here. That evidence lacks a sufficient 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 obviousness 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.