Ex Parte Barr

Board of Patent Appeals and Interferences

Aug 29, 2006

09611177 (B.P.A.I. Aug. 29, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOWARD BARR
____________

Appeal No. 2006-0963
Application No. 09/611,177
____________

ON BRIEF
____________

Before CRAWFORD, BAHR, and FETTING , Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 18 to 40,
which are all of the claims pending in this application. Claims 1 to 17 have been
cancelled.
The appellant's invention relates to a radio-controlled aircraft utilizing
accelerometers to determine the attitude of the aircraft (specification, pages 1 and 3).
A copy of the claims under appeal is set forth in the appendix to the appellant's
brief.

Appeal No. 2006-0963
Application No. 09/611,177

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The Prior Art
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Meyer 4,206,411 Jun. 03, 1980
Jenkins 4,725,956 Feb. 16, 1988
Berejik et al. (Berejik) 4,964,598 Oct. 23, 1990

Admitted Prior Art, page 6 of specification

The Rejection

Claims 1 to 40 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Jenkins in view of Berejik, Meyer and Admitted Prior art on Page 6 of the Specification.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(mailed June 18, 2004) and the final rejection (mailed July 1, 2003) for the examiner's
complete reasoning in support of the rejections, and to the brief (filed March 29, 2004)
and reply brief (filed August 20, 2004) for the appellant's arguments thereagainst.
OPINION
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.
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Application No. 09/611,177

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The examiner has rejected claims 18 to 40 under 35 U.S.C. § 103 as being
unpatentable over Jenkins in view of Berejik, Meyer and the admitted prior art on page
6. We initially note that the test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re Young,
927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, in evaluating such references
it is proper to take into account not only the specific teachings of the references but also
the inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
The examiner’s findings in regard to this rejection can be found on pages 2 to 3
of the final rejection. In regard to the recitation in each of the independent claims
related to reading positioning signals to a current attitude from an accelerometer, a
positioning module that comprises a accelerometer or a positioning module that
provides positioning signals representing an attitude of the aircraft, the examiner states:
The admitted prior art on page 6 discloses two-axis accelerometers that
measure a directional component of the acceleration of gravity to
determine the current attitude are well known in the art.
. . . .
. . . .
It would have been obvious to one skilled in the art at the time the
invention was made to have used accelerometers disclosed by the
admitted prior arts on page 6 in Jenkins’ system to know the operating
status of the flight vehicle and to prevent damage to it [final rejection at
page 3].
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Application No. 09/611,177

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The appellants argue that the disclosure on page 6 of the specification is not
prior art.
Page 6 of the specification discloses in relevant part:

Also feeding into the microcontroller 130 is a two-axis accelerometer 140
that provides pulse-width modulated signals 142, 144 corresponding to the
present X and Y dimensional acceleration of the airplane 30, which
corresponds to the airplane’s pitch and roll. Several inclinometers could
be used as accelerometers. For example, a Model LCL (The Fredricks
Company, Huntingdon Valley, PA) or Biaxial Accelerometer Model LA02-
0201-1 from Humphrey (San Diego, CA) are useful for embodiments of an
accelerometer or an inclinometer. However, preferably the accelerometer
is an Analog Devices (Norwood, MA) ADXL 202 Model accelerometer.
The ADXL202 is a complete 2-axis accelerometer with a measurement
range of + 2g. The ADXL202 can measure both dynamic acceleration
(e.g., vibration) and static acceleration (e.g., gravity).

It is clear from the above-quoted section of the specification that accelerometers
were well known in the art. Even if accelerometers were well known in the art, that
alone would not have meant that their use in determining the current altitude of aircraft
was well known and therefore there must have been some motivation to modify the
Jenkins device to include accelerometers. We remind the examiner that when it is
necessary to select elements of various teachings in order to form the claimed
invention, we ascertain whether there is any suggestion or motivation in the prior art to
make the selection made by the appellants. Obviousness cannot be established by
combining the teachings of the prior art to produce the claimed invention, absent some
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Application No. 09/611,177

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teaching, suggestion or incentive supporting the combination. The extent to which such
suggestion must be explicit in, or may be fairly inferred from, the references, is decided
on the facts of each case, in light of the prior art and its relationship to the appellants'
invention. As in all determinations under 35 U.S.C. § 103, the decision maker must
bring judgment to bear. It is impermissible, however, simply to engage in a hindsight
reconstruction of the claimed invention, using the appellants' structure as a template
and selecting elements from references to fill the gaps. The references themselves
must provide some teaching whereby the appellants' combination would have been
obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991)
(citations omitted). That is, something in the prior art as a whole must suggest the
desirability, and thus the obviousness, of making the combination. See In re Beattie,
974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); Lindemann
Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462, 221
USPQ 481, 488 (Fed. Cir. 1984). In determining obviousness/nonobviousness, an
invention must be considered "as a whole," 35 U.S.C. § 103, and claims must be
considered in their entirety. Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d
1563, 1567, 220 USPQ 97, 101 (Fed. Cir. 1983).
Appeal No. 2006-0963
Application No. 09/611,177

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In our view, the examiner has failed to establish that the prior art would have
suggested using accelerometers in the Jenkins device but has rather utilized the
teachings of the appellant’s own specification to provide the suggestion. In this regard,
the examiner has failed to establish that the teachings of the prior art would have
suggested to a person of ordinary skill in the art that an accelerometer could be utilized
to know the operating status of the flight vehicle to prevent the damage to it.
The decision of the examiner is reversed.

REVERSED

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

MEC/vsh
Appeal No. 2006-0963
Application No. 09/611,177

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