Ex parte CHEN et al.

Board of Patent Appeals and Interferences

Oct 28, 1998

08200044 (B.P.A.I. Oct. 28, 1998)

Application for patent filed February 22, 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publication in a law journal and (2) is not binding precedent of the Board.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 CHAN-CHIH D. CHEN, JEAN-MARC P.
DELAVAUX, STEPHEN W. GRANLUND, SUN-YUAN
HUANG, KHANH C. NGUYEN and
KATHERINE A. YANUSHEFSKI
_____________
Appeal No. 97-1163
Application 08/200,0441
______________
ON BRIEF
_______________
Before LEE, TORCZON and CARMICHAEL, Administrative Patent
Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner's final rejection of claims 1, 3-7 and 9-14.
Appeal No. 97-1163
Application 08/200,044
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Claims 2 and 8 have been cancelled. No claim has been
allowed.
Reference relied on by the Examiner
Albanese 4,683,573 July 28,
1987
The Rejections on Appeal
Claims 1, 3-7 and 9-14 stand finally rejected under
35 U.S.C. § 112, first and second paragraphs.
Claims 1, 3 and 12 stand finally rejected under 35 U.S.C.
§ 103 as being unpatentable over Albanese.
The Invention
The invention is directed to a laser module. Claims 1
and 12 are the only independent claims. Claim 12 specifically
recites a first and a second laser and does not recite any
cooling apparatus. Claim 1 specifically recites a first and a
second thermoelectric cooling apparatus but does not expressly
recite a laser. Claims 1 and 12 are reproduced below:
1. A laser module comprising:
first and second thermoelectric cooling apparatus, said
first and second cooling apparatus being connected in series;
first and second variable resistances, and first and
second variable resistances being connected in series and
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being connected in parallel with said first and second cooling
apparatus, respectively; and
a microcontroller connected to said first and second
variable resistances and controlling said first and second
variable resistances.
12. A laser module comprising:
first and second lasers, said lasers being connected in
series;
first and second variable resistances, said first and
second variable resistances being connected in series and
being connected in parallel with said first and second lasers,
respectively; and
a microcontroller connected to said first and second
variable resistances and controlling said first and second
variable resistances.
Opinion
We reverse.
Our opinion is based only on the positions as expressed
by the examiner. We do not undertake to perform examination
de novo based on prior art, even those already of record. Our
reversal of the rejections on appeal should not be construed
as a pronouncement that the claimed invention is patentable
over prior art including the same reference relied on by the
examiner.
The rejection under 35 U.S.C.
§ 112, first and second paragraphs
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The rejection of claims 1, 3-7, and 9-14 under 35 U.S.C.
§ 112, first paragraph, is summarily reversed. The examiner
has not made any showing of why the specification is either
(1) without an enabling disclosure for the claimed invention,
(2) without an adequate written description of the claimed
invention, or (3) fails to disclose the best mode as
contemplated by the inventors.
Evidently, the real rejection is under 35 U.S.C. § 112,
second paragraph, for being vague and indefiniteness, which we
also cannot sustain.
It is not the role of claims to explain how the invention
works or how it may be constructed and made to operate. That
is the purpose of the specification. The claims merely define
the metes and bounds or the scope of coverage of the invention
sought to be protected. In our view, the claims clearly
define, in no uncertain terms, what is within their scope and
what is not. While the claims are indeed broad, breadth of
claim should not be confused with indefiniteness. In re
Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971); In
re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970).
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The examiner’s position on complete or incomplete
claiming is also misplaced. There is no requirement that a
claim must recite every element that is needed to somehow
complete an actually operating device. In Hughes Aircraft Co.
v. United States, 215 USPQ 787, 796 (Ct. Cl. 1982), the Court
of Claims upheld the validity of claims drawn to a satellite
system but which did not recite a ground controller which was
necessary to make the system operate for its intended purpose.
The Court reiterated a previous statement from Hughes Aircraft
Co. v. United States, 640 F.2d 1193, 1197, 208 USPQ 785, 789
(Ct. Cl. 1980), that "it is not necessary to claim in a patent
every device required to enable the invention to be used." We
recognize no statutory basis for holding as unpatentable
claims which do not recite every "essential" element without
which the claimed invention would not or could not operate.
We follow the Court of Claims's stated position in Hughes
Aircraft Co., 640 F.2d at 1197, 208 USPQ at 789, that it is
not necessary to recite in a claim every element which may be
required in order to enable operation of the claimed
invention. For example, if a motor vehicle is claimed, it may
not be necessary to recite a steering device although a motor
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vehicle needs one to operate, and if a helicopter is claimed,
it may not be necessary to recite a tail rotor even though the
aircraft needs it to fly.
For the foregoing reasons, we also do not sustain the
rejection of claims 1, 3-7, and 9-14 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
The rejection for obviousness
over the Albanese reference
The initial burden is on the examiner to establish a
prima facie basis to reject the claims. In re Oetiker, 977
F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
examiner must provide an adequate factual basis to support an
obviousness conclusion. See e.g., In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988); In re Warner,
379 F.2d 1011, 1016, 154 USPQ 173, 178 (CCPA 1967). Here, the
examiner has failed to present a reasonable explanation as to
why the evidence establishes a prima facie case of
obviousness. The necessary burden has not been met.
The examiner is expected to make the underlying factual
determinations as set forth in Graham v. John Deere Co., 383
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U.S. 1, 17, 148 USPQ 459, 467 (CCPA 1966) and to provide
reasons why one with ordinary skill in the art would have been
led by the prior art to arrive at the claimed invention. Such
reasons must stem from some teaching or suggestion in the
prior art as a whole. Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins
& Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664
(Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by
the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness.
Here, we find that the examiner failed to determine and
appreciate all the differences between the appellants’ claimed
invention and the applied prior art reference, Albanese.
Specifically, claim 1 recites two variable resistances which
are not only in series with each other, but also each
connected in parallel with a corresponding one of the cooling
apparatus (claim 1) or laser (claim 12). Albanese does not
disclose series connected variable resistances, specifically
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series-connected variable resistances which are respectively
coupled in parallel to a corresponding one of two series-
connected cooling apparatuses or lasers. The invention is
more than merely connecting two cooling apparatuses (claim 1)
or two lasers (claim 12) in series. Clearly, several features
of the claimed invention have not been adequately accounted
for.
The examiner’s approach improperly puts the burden on
appellants to demonstrate nonobviousness. Under 35 U.S.C.
§ 102, a patent shall issue unless the examiner has
established one of the basis for refusing the issuance of a
patent. It is not enough to reject these claims simply
because variable resistances are known, cooling apparatuses
are known, lasers are known, microcontrollers are known, and
series and parallel connections are known. It is the
"combination" of elements as recited by the appellants which
must be rendered obvious. If it is the examiner’s view that a
well known way to control devices connected in series is by
way of series-connected variable resistances which are each
positioned in parallel with a corresponding one of the
controlled devices, a citation to some reference, e.g., text
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book, would be needed, as well as an explanation why one would
apply that knowledge to two series connected lasers or cooling
apparatuses.
Furthermore, it should be noted that the mere fact that
the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification. In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992). It is impermissible to use the claimed invention
as an instruction manual or "template" to piece together the
teachings of the prior art so that the claimed invention is
rendered obvious. In re Fritch, 972 F.2d at 1266, 23 USPQ2d
at 1784.
For the foregoing reasons, we do not sustain the
obviousness rejection of the claims on appeal over Albanese.
Conclusion
The rejection of claims 1, 3-7 and 9-14 under 35 U.S.C.
§ 112, first and second paragraphs, is reversed.
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The rejection of claims 1, 3 and 12 under 35 U.S.C. § 103
as being unpatentable over Albanese is reversed.
REVERSED
JAMESON LEE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
RICHARD TORCZON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 97-1163
Application 08/200,044
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sd
S. H. Dworetsky
AT&T Bell Laboratories
600 Mountain Avenue
P. O. Box 636
Murray Hill, NJ 07974-0636