Ex parte Barbaccia

Board of Patent Appeals and Interferences

Apr 23, 2001

05281815 (B.P.A.I. Apr. 23, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PHILIP L. BARBACCIA
____________
Appeal No. 2001-0058
Application No. 281,815
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-8, which
are all of the claims pending in this application.
We REVERSE.
Appeal No. 2001-0058 Page 2
Application No. 281,815
BACKGROUND
The appellant's invention relates to a method (claims 1-6) and apparatus (claims 7
and 8) for creating clouds of burning matter for use in military countermeasures. An
understanding of the invention can be derived from a reading of exemplary claim 1, which
appears in an appendix to the appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Geeraert 2,669,437 Feb. 16, 1954
Griffin et al. (Griffin) 2,971,573 Feb. 14, 1961
Lager 3,150,848 Sep. 29, 1964
McKinnon 3,154,041 Oct. 27, 1964
Sargent et al. (Sargent) 3,258,917 Jul. 5, 1966
Corino et al. (Corino) 3,639,258 Feb. 1, 1972
Claims 1 and 4-8 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Lager in view of Griffin, Geeraert, Sargent and McKinnon.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Lager in view of Griffin, Geeraert, Sargent, McKinnon and Corino.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the Answer (Paper
No. 9) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 8) and Reply Brief (Paper No. 10) for the appellant's arguments thereagainst.
OPINION
Appeal No. 2001-0058 Page 3
Application No. 281,815
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Independent claim 1 is directed to a method for creating discrete clouds of burning
matter which can be utilized for military countermeasures purposes to protect aircraft and
other vehicles against infrared heat-seeking hostile missiles and light radiation devices
such as laser weapons. The objective is to dispense from the vehicle a cloud of burning
matter that has the same radiation signature as the vehicle propulsion means, so that any
weapon is disposed to focus upon the cloud of burning material rather than the vehicle. As
manifested in claim 1, the method comprises the steps of withdrawing from the fuel tank of
the vehicle for which the protection is intended a quantity of the fuel used in the propulsion
means of the vehicle, passing this fuel to a dispenser, gelling the fuel by adding a gelling
agent, passing the gelled fuel through a plurality of openings in an apertured plate to
change it into particulate form, the passing through being at a rate and pressure that will
impart momentum sufficient to project the particles away from the dispenser such that the
particulate gelled fuel is expelled from the vehicle in the form of a discrete cloud of
particles, and igniting the cloud in the dispenser prior to its expulsion from the vehicle to
Appeal No. 2001-0058 Page 4
Application No. 281,815
produce a fireball having wavelengths comparable to the radiation emitted by the vehicle
propulsion means.
As we understand the examiner’s rejection, it is that Lager discloses the basic steps of the
method, that the missing features are taught by Geeraert, Griffin, Sargent and McKinnon,
and that it would have been obvious to one of ordinary skill in the art to combine the
teachings of the five references in such a manner as to render the claimed method
obvious. The appellant disputes this conclusion, pointing out a number of reasons why he
believes there would have been no suggestion to combine the references in the manner
proposed by the examiner.
The test for obviousness is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not from the appellant's disclosure.
Appeal No. 2001-0058 Page 5
Application No. 281,815
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Lager is directed to the solution of the same problem as the appellant, but creates
the cloud of burning matter in a different manner. Lager combines an oxidizer and a
pyrophoric material in such proportions that they will spontaneously ignite when mixed, and
dispenses the mixture from the vehicle through a nozzle. Ignition in the dispenser is
prevented by also including in the ingredients an ignition inhibitor, which delays
spontaneous ignition until the cloud is clear of the immediate vicinity of the vehicle. Using
the language of claim 1 as a guide, Lager fails to disclose or teach withdrawing fuel from
the propulsion fuel tank of the vehicle, passing gelled fuel through a plurality of openings in
an apertured plate to change it into a particulate form at a rate and pressure that will impart
momentum sufficient to project the particles away from the vehicle in a discrete cloud, and
igniting the particles in the dispenser.
Geeraert is directed in general to a flame thrower gun and in particular to a device
for mixing the ingredients for the flame. The only description provided of the configuration
of the flame that issues from the weapon is that it is a “fluid stream” (column 5, line 59).
There is nothing in the reference which would suggest that the flame is intended to be or is
capable of functioning as a countermeasure, much less that it is in the form of a “discrete
cloud,” or provides a radiation signature that is the same as that of the propulsion system
Appeal No. 2001-0058 Page 6
Application No. 281,815
of the vehicle, as is required by claim 1. Geeraert has been cited by the examiner as
teaching that the fuel of a vehicle can be used as an ingredient of a combustible mixture
that is emitted from the vehicle. However, we cannot agree with the examiner that
Geeraert would have suggested to one of ordinary skill in the art that the Lager system be
modified to utilize vehicle fuel as an ingredient in the countermeasure material that is
emitted from the vehicle. We arrive at this conclusion because Lager requires that the
ingredients be an oxidizer and a material from the group which includes “alkyl and aryl
amines, hydrazine hydrate, the metallo-organics (tributyl-ethyl, etc.) and aniline” (column 3,
lines 6-10), that is, materials which when properly mixed with an oxidizer give rise to a
product that is self-igniting. There is no evidence upon which to base the conclusion that
the fuel of the vehicle would meet this requirement. Nor, in our view, would the combined
teachings of Lager and Geeraert have suggested to one of ordinary skill in the art that the
Lager system be changed from one in which the cloud is ignited after the material leaves
the dispenser to one in which it is ignited in the dispenser, for this would require that the
essence of the Lager invention be discarded, which would have been a disincentive to an
artisan to do so. Further in this regard, we find nothing in these two references from which
one of ordinary skill in the art would have learned to achieve the required separation
between the vehicle and the countermeasure by creating a gelled medium and then
passing it through an apertured plate to change it into particle form and at such a rate and
Appeal No. 2001-0058 Page 7
Application No. 281,815
pressure as to impart momentum sufficient to project it away from the vehicle in the form of
a discrete cloud, as is required by the claim.
Griffin is cited by the examiner for its teaching of “how a small amount of gelled fuel
may [be] ignited and expelled,” and Sargent and McKinnon for teaching “a gelled fuel may
be broken up into particle form prior to ignition” (Answer, page 2). The examiner has not
explained how the teachings of these references are to be interfaced with those of Lager
and Geeraert to meet the limitations of claim 1 that are not taught by the two basic
references and, left to our own devices, we are at a loss to appreciate how this would be
done.
The mere fact that the prior art structure could be modified does not make such a
modification obvious unless the prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). We fail to perceive
any teaching, suggestion or incentive which would have led one of ordinary skill in the art to
modify the Lager system in the manner proposed by the examiner other than the hindsight
afforded one who first viewed the appellant’s disclosure. This, or course, is not a proper
basis for a rejection under Section 103. See In re Fritch, 972 F.2d 1260, 1264, 23
USPQ2d 1780, 1784 (Fed. Cir. 1992).
For the reasons set forth above, we conclude that the combined teachings of Lager,
Geeraert, Griffin, Sargent and McKinnon fail to establish a prima facie case of
Appeal No. 2001-0058 Page 8
Application No. 281,815
obviousness with regard to the subject matter recited in independent claim 1, and we will
not sustain the rejection of this claim or of claims 4-6, which depend therefrom.
Independent claims 7 and 8 are directed to apparatus for creating coherent clouds
of burning matter that can be used as a military countermeasure. As pointed out by the
appellant, the examiner has not explained how the combined teachings of the five applied
references would have rendered the subject matter of claims 7 and 8 obvious. In fact,
aside from their inclusion in the statement of the rejection, claims 7 and 8 have not even
been mentioned in the Answer. From our perspective, these claims contain the same
limitations, expressed in an apparatus format, as method claim 1, and the deficiencies
pointed out above with regard to the rejection of claim 1 apply here also. The rejection of
claims 7 and 8 is not sustained.
Claims 2 and 3 stand rejected on the basis of the references applied against claim
1, considered further with Corino, which was cited for teachings concerning gelling agents.
Corino does not overcome the shortcomings in the rejection of claim 1, from which claims
2 and 3 depend, and therefore the rejection of these two claims also is not sustained.
SUMMARY
Neither rejection is sustained.
Appeal No. 2001-0058 Page 9
Application No. 281,815
The decision of the examiner is REVERSED..
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NEA:lbg
NORTHROP GRUMMAN CORP.
INTELLECTUAL PROPERTY DEPT.
M/S 60/110/N1-3
Appeal No. 2001-0058 Page 10
Application No. 281,815
1840 CENTURY PARK EAST
LOS ANGELES, CA 90067-2199
APPEAL NO. 2000-0852 - JUDGE ABRAMS
APPLICATION NO. 09/061,314
APJ ABRAMS
APJ BAHR
APJ CALVERT
DECISION: REVERSED
Prepared By:
DRAFT TYPED: 26 Apr 02
FINAL TYPED: