Ex parte Bushman

Board of Patent Appeals and Interferences

Jun 28, 1999

08345114 (B.P.A.I. Jun. 28, 1999)

Application for patent filed November 28, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BOYD B. BUSHMAN
_____________
Appeal No. 97-0514
Application 08/345,1141
______________
ON BRIEF
_______________
Before CALVERT, FRANKFORT and DIXON, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 to 27, all the claims in the application.
Appeal No. 97-0514
Application 08/345,114
In the final rejection (Paper No. 4), claims 2, 4, 5,2
13, 14, 16 and 19 to 21 were also rejected on grounds (2) and
(continued...)
2
The claims on appeal are drawn to a system and
method for evaluating defects, and a system for measuring an
unknown parameter of a material. A copy of the claims is
contained in Appendix A of appellant's brief.
The references applied by the examiner in the final
rejection are:
Seddick 3,992,663 Nov. 16, 1976
Fichtenbaum 4,186,338 Jan. 29, 1980
Murphy et al. (Murphy) 5,087,873 Feb. 11, 1992
The appealed claims stand finally rejected on the
following grounds:
(1) Claims 1 to 27, unpatentable for failure to comply with
35 U.S.C. § 112, second paragraph;
(2) Claims 1, 3, 6 to 12, 15, 17, 18 and 22 to 27, anticipated
by Murphy or Fichtenbaum, under 35 U.S.C. § 102(b);
(3) Claims 1, 3, 6 to 12, 15, 17, 18 and 22 to 27, unpatent-
able over either of Seddick or Fichtenbaum in view of Murphy,
under 35 U.S.C. § 103.2
Appeal No. 97-0514
Application 08/345,114
(...continued)2
(3), but the examiner states in the answer (page 3) that the
rejections of those claims under 35 U.S.C. §§ 102(b) and 103
have been withdrawn.
3
Rejection (1)
This rejection is stated on page 2 of the final
rejection as follows:
Claims 1-27 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefi-
nite for failing to particularly point out
and distinctly claim the subject matter
which applicant regards as the invention.
It is not clear how the use of an analyzer
or a processor is differentiated from each
other as mentioned in claims 1, 12 and 17.
A processor can be an analyzer such as a
processor used in a personal computer to
perform program execution that analyzes
data. Furthermore, an analyzer can utilize
a processor to perform analysis of a mea-
sured signal. A spectrum analyzer is an
example of an item of test equipment capa-
ble of performing analysis and moreover it
is well known in the art that these instru-
ments can utilize processors such as a
microprocessor.
From this statement, and the arguments made on page 6 of the
answer, it appears to be the examiner's position that since an
analyzer may include a processor, and a processor may be an
Appeal No. 97-0514
Application 08/345,114
4
analyzer, there is no clear distinction between the claimed
analyzer and processor.
The test for compliance with 35 U.S.C. § 112, second
paragraph, is
whether the claim language, when read by a
person of ordinary skill in the art in
light of the specification, describes the
subject matter with sufficient precision
that the bounds of the claimed subject
matter are distinct.
In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA
1975). Applying this test in the present case it would seem,
first, that
the indefiniteness found by the examiner would be applicable
only to claims which recite both an analyzer and a processor,
i.e., claims 7 to 16. The scope of the system claims which
recite an analyzer but not a processor (claims 1 to 6) is not
indistinct, because the term "analyzer" would clearly cover
all analyzers, regardless of whether they incorporated a
processor or not, as long as they complied with the other
claimed limitations. Likewise, the scope of method claims 17
to 27 is distinct, since they do not recite an analyzer or
Appeal No. 97-0514
Application 08/345,114
5
processor, but instead recite, inter alia, steps such as
"performing an analysis of the output" (claim 17) or "compar-
ing the analysis with a reference" (claim 23), which do not
require that they be performed by any particular apparatus.
As for claims 7 to 16, we do not consider that they
are so unclear that one of ordinary skill would have any
difficulty comprehending their scope. Claim 12, for example,
calls for:
an analyzer operable to measure the
intensity of said detected emitted radia-
tion; and
a processor coupled to said analyzer,
said processor operable to determine the
parameter by comparing said measured inten-
sity with a reference.
In our view, it would be evident to one of ordinary skill that
the scope of this language is such that the claimed processor
would read on any processor which was "coupled to said ana-
lyzer" and "operable to determine . . . with a reference,"
regardless of whether the processor performing the recited
determining function was included as a part of the analyzer,
or constituted a separate unit. This is particularly clear
from the disclosure in the paragraph bridging pages 11 and 12
Appeal No. 97-0514
Application 08/345,114
6
of the specification, to the effect that the analyzer and
processor "may be physically separate or contained on the same
device," e.g., as "part of a single computer system, such as a
microprocessor system." As appellant states on page 6 of the
brief,
it should be clear from the Specification
that any processing unit in the analyzer is
different from the processor [as disclosed
and claimed], which is used to process the
measurement made by the analyzer.
We therefore conclude that claims 1 to 27 are in
compliance with the second paragraph of § 112, and will not
sustain rejection (1).
Rejections (2) and (3)
These rejections will be considered together, since
each involves the same issue; namely, the scope of the term
"radiation." Also, the rejected claims will all stand or fall
together, as appellant has not given any explanation as to why
Appeal No. 97-0514
Application 08/345,114
7
he believes any of them to be separately patentable. 37 CFR
§ 1.192(c)(7).
The three references involved disclose the detection
of magnetic fields produced by electrical current flowing in
the soil (Murphy) or in a wire (Fichtenbaum and Seddick).
With respect to Murphy, appellant argues (brief, pages 6 to 7;
original emphasis):
Initially, Applicant points out that the
existing claim language of "radiation" and
"emitted radiation" clearly refers to, and
should be construed to cover, light radia-
tion in the form of photons emitted from
the surface of the device or material.
This meaning is clear from the Specifica-
tion. E.g., page 6, line 33 to page 7,
line 17. Also, this meaning is in accord
with the common meaning of "radiation" in
this context. The American Heritage Dic-
tionary, Second College Edition, for exam-
ple, defines "radiation" as "... 2. Phys-
ics. a. The emission and propagation of
waves or particles. b. The propagating
waves or particles, such as light, sound,
radiant heat, or particles, emitted by
radioactivity."
Applicant submits that the Murphy refer-
ence does not anticipate Applicant's
claimed invention. Specifically, the
Murphy reference does not disclose, as
required by Claims 1 and 12, "a radiation
Appeal No. 97-0514
Application 08/345,114
8
detector operable to detect radiation
emitted . . . ,
said emitted radiation caused by said
current flow." The Murphy reference also
does not disclose, as required by Claim 17,
"detecting radiation emitted by the
surface, the emitted radiation caused by
said current flow in the surface."
The Murphy reference discloses detecting
magnetic fields produced by current in soil
in which a pipe being tested is buried.
Without question, the magnetic field
produced by this flowing current is very
different from, and does not anticipate,
the emitted radiation of Applicant's
claimed invention. In fact, the Murphy
reference does not address, in any way, the
emission or detection of radiation of
Applicant's claimed invention.
The same argument is presented concerning the Fichtenbaum and
Seddick references, and is the only argument made by appellant
as to rejections (2) and (3).
It is fundamental that "[d]uring patent examination
the pending claims must be interpreted as broadly as their
terms reasonably allow." In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989). In general, terms in a
claim are to be given their ordinary and accustomed meaning;
general descriptive terms will ordinarily be given their full
Appeal No. 97-0514
Application 08/345,114
Bueche, Introduction to Physics for Scientists and3
Engineers, 2nd Ed. (McGraw-Hill, 1975). In addition to the
paragraph quoted by the examiner, we note that in the last
paragraph on page 546 there is reference to "a magnetic field
radiated from the antenna" (emphasis added).
9
meaning, and modifiers will not be added to broad terms
standing alone. Johnson Worldwide Assocs., Inc. v. Zebco
Corp., ___ F.3d ____, ____, 50 USPQ2d 1607, 1610 (Fed. Cir.
1999). The examiner here
does not contest the dictionary definition of "radiation"
quoted by appellant, supra, but notes that the definition is
not limited to light, sound, heat or particles emitted by
radioactivity
(answer, page 7). He takes the position that one of ordinary
skill would consider a magnetic field produced by flowing
current to be radiation, quoting a paragraph to that effect
from page 545 of a physics textbook. 3
In addition to this text, we take official notice of
pages 522, 523 and 1311 of the McGraw-Hill Dictionary of
Appeal No. 97-0514
Application 08/345,114
Copy enclosed.4
10
Scientific and Technical Terms (2nd Ed., 1978). On4
page 1311, "radiation" is defined as "2. The energy
transmitted by waves through space or some medium; when
unqualified, usually refers to electromagnetic radiation.
Also known as radiant energy." Since "electromagnetic
radiation" is defined on page 523 as "Electromagnetic waves
and, especially, the associated electromagnetic energy," and
"electromagnetic energy" is defined
on page 522 as "The energy associated with electric or
magnetic fields" (emphasis added), it appears that the
accepted definition of "radiation" includes energy from a
magnetic field. Appellant has not submitted any evidence to
the contrary.
We recognize that an applicant may be his or her own
lexicographer by imparting a special meaning to a term used in
the claims. However, this must be done "by clearly setting
forth an explicit definition for a claim term." Johnson
Worldwide Assocs., Inc., supra. The uncommon definition "must
be done with reasonable clarity, deliberateness, and
Appeal No. 97-0514
Application 08/345,114
11
precision," In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671,
1674 (Fed. Cir. 1994), and the special meaning "must be
sufficiently clear in the specification that any departure
from common usage would be so understood by a person of
experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477, 45 USPQ2d
1429, 1432 (Fed. Cir. 1998).
In the present case, appellant's specification does
not meet these criteria, since the term "radiation" is not
explicitly defined therein. Also, although appellant's
disclosure is generally directed toward the detection of
photons, it implies that other types of radiation may be
detected by its disclosure that radiation "being caused by
current flowing in the surface" is detected (page 4, lines 8
and 9), and that "detector 16 may be any detector capable of
detecting radiation" (page 6, lines
15 and 16; emphasis added).
Appeal No. 97-0514
Application 08/345,114
12
We therefore conclude that the term "radiation" as
used in the instant claims should be interpreted according to
its ordinary and accustomed meaning. Since this meaning
includes a magnetic field, "radiation" is readable on the
magnetic fields detected by Murphy, Fichtenbaum and Seddick.
Rejections (2) and (3) will accordingly be sustained.
Conclusion
The examiner's decision to reject claims 1 to 27
under 35 U.S.C. § 112, second paragraph, is reversed, and to
reject claims 1, 3, 6 to 12, 15, 17, 18 and 22 to 27 under 35
U.S.C. §§ 102(b) and 103 is affirmed.
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Appeal No. 97-0514
Application 08/345,114
13
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
IAC:psb
Appeal No. 97-0514
Application 08/345,114
14
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