Ex parte Cooper

Board of Patent Appeals and Interferences

May 8, 2000

07930880 (B.P.A.I. May. 8, 2000)

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(2) is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALAN N. COOPER
_____________
Appeal No. 1997-2585
Application 07/930,880
______________
ON BRIEF
_______________
Before HAIRSTON, FLEMING and HECKER, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-2585
Application 07/930,880
2
This is a decision on appeal from the rejection of
claims 1 through 10 and 12 through 20. Claim 11 has been
canceled.
Appellant’s invention relates to video displays for
motor vehicles using a single silicon detector which can
detect
different wavelengths corresponding to the visible colored
light and short wavelength infrared radiation. More
specifically, Appellant on pages 10 and 11 of the
specification and Figs. 4a, 4b, and 5 shows a series of
columns of filters over a single silicon detector to
distinguish between red, blue, green, and infrared
wavelengths. Electrical signals corresponding to each
detected wavelength or color are processed through matrix 56
and encoder 58. The final image is black and white based on
the infrared signal enhanced with the colored information for
objects such as tail lights and stop lights obtained from the
visible colored light signals.
Representative independent claim 1 is reproduced as
follows:
Appeal No. 1997-2585
Application 07/930,880
The Examiner’s final rejection was incorrectly based on1
the U.S. Patent No. 4,751,571 to Lillquist issued June 14,
1988 and was corrected in the supplemental examiner’s answer
mailed August 19, 1996 by introducing new grounds of rejection
based on the U.S. Patent No. 4,679,068 to Lillquist et al..
3
1. A video system which provides an operator of a
vehicle with an enhanced visual display of selected portions
of the vehicle's surrounding environment comprising:
an illuminator to project short wavelength infrared
energy;
a single silicon detector for both short wavelength
infrared and visible colored light electromagnetic radiation
to generate both short wavelength infrared signals and visible
colored light signals;
a signal processing circuit to produce electrical
signals corresponding to the detected electromagnetic
radiation and based on said short wavelength infrared signals
and said visible colored light signals;
the signal processing circuit converting the
electrical signals corresponding to the detected short
wavelength infrared radiation into a visual display for the
vehicle operator; and
the signal processing circuit enhancing the visual
display of the infrared signal with selected portions of the
colored light signal.
The Examiner relies on the following references:
Harada et al. (Harada) 4,651,001 Mar. 17, 1987
Lillquist et al. (Lillquist) 4,679,068 July 7, 19871
Appeal No. 1997-2585
Application 07/930,880
Appellant filed an appeal brief on March 4, 1996. 2
Appellant also filed a reply brief on July 26, 1996 which was
acknowledged and entered by the Examiner with further comments
and new grounds of rejection in a supplemental answer. In
response to the new grounds of rejection, Appellant filed an
amendment to claims 1, 4, 10, 12, and 15 and a supplemental
reply brief on October 28, 1996 which were entered by the
Examiner and acknowledged in a second supplemental examiner’s
answer. Appellant further filed a second supplemental reply
brief on February 11, 1997 which was entered and acknowledged
in a communication from the Examiner mailed April 17, 1997.
The Examiner mailed an answer on May 23, 1996, a3
supplemental answer on August 19, 1996, and a second
supplemental answer on December 6, 1996.
4
Burley et al. (Burley) 5,001,558 Mar. 19, 1991
Claims 1, 2, 10, 15, 16, and 20 stand rejected under
35 U.S.C. § 103 over Burley and Lillquist. Claims 3 through
9, 12 through 14, and 17 through 19 stand rejected under 35
U.S.C.
§ 103 over Burley, Lillquist, and Harada.
Rather than repeat the arguments of Appellant and
the Examiner, we make reference to the briefs and the answers2 3
for the details thereof.
OPINION
Appeal No. 1997-2585
Application 07/930,880
5
After careful review of the evidence before us, we
do not agree with the Examiner that claims 1 through 10, and
12 through 20 are properly rejected under 35 U.S.C. § 103.
Accordingly, we reverse.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions
found
in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983). “Additionally, when
determining obviousness, the claimed invention should be
considered as a whole; there is no legally recognizable
‘heart’ of the invention.” Para-Ordnance Mfg. v. SGS
Importers Int'l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 519 U.S. 822 (1996)
citing W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
Appeal No. 1997-2585
Application 07/930,880
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1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
Turning to the rejection of claims 1, 2, 10, 15, 16,
and 20 under 35 U.S.C. § 103, Appellant on page 5 of the
appeal brief argues that contrary to the claimed single
silicon detector for both infrared and visible color light,
Burley’s night vision system has an infrared imager separate
from a visible light color TV camera. Appellant on page 2 of
the supplemental reply brief adds that the output signal from
the single silicon detector of Lillquist corresponding to the
visible light radiation is black and white.
In response to Appellant’s arguments, the Examiner
on page 7 of the second supplemental answer points out that
Lillquist is relied upon to show a single silicon detector
responsive to both visible colored light and infrared
radiation while Burley teaches the use of such combined sensor
in a vehicle. The Examiner on page 10 of the second
supplemental answer adds that visible light is colored and
Appeal No. 1997-2585
Application 07/930,880
7
therefore, the recited limitation of “visible colored light”
is the same as the visible light radiation of Lillquist.
As pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is
the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). Claims will be given their
broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification
are not to be read into the claims. In re Etter, 756 F.2d
852, 858, 225 USPQ 1, 5 (Fed. Cir.), cert. denied, 474 U.S.
828 (1985).
We note that Appellant’s claim 1 recites
a single silicon detector for both short wavelength
infrared and visible colored light electromagnetic
radiation to generate both short wavelength infrared
signals and visible colored light signals (emphasis
added).
We find that Appellant’s claim 1 includes a single
silicon detector for both short wavelength infrared and
visible colored light. Additionally, Appellant specifically
recites a
Appeal No. 1997-2585
Application 07/930,880
8
detector that generates visible colored light signals which
clearly differ from black and white signals with various
shades of gray representing different colors. Prior to the
amendment of October 28, 1996, independent claim 1 did not
preclude a single silicon detector to generate visible black
and white signals. However, claim 1 as amended, which is now
before us, does clearly limit the output from the detector to
visible colored light signals. This is further supported by
Appellant’s disclosure on page 10 of the specification and
Figs. 4a and 5 which show that electrical signals
corresponding to infrared, blue, green, and red wavelengths
are generated by detector 34 and sent to matrix 56. Thus,
Appellant’s claim 1 requires a single silicon detector to
generate electrical signals corresponding to both infrared and
visible colored light radiation.
We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference or shown to be common
knowledge of unquestionable demonstration. Our reviewing
court requires this evidence in order to establish a prima
Appeal No. 1997-2585
Application 07/930,880
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facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ
785, 787-88 (Fed. Cir. 1984); In re Knapp-Monarch Co., 296
F.2d 230, 232, 132 USPQ 6, 8
(CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268,
271-72 (CCPA 1966). Furthermore, our reviewing court states
in Piasecki, 745 F.2d at 1472, 223 USPQ at 788, the following:
The Supreme Court in Graham v. John Deere
Co., 383 U.S. 1 . . . (1966), focused on
the procedural and evidentiary processes in
reaching a conclusion under section 103.
As adapted to ex parte procedure, Graham
is interpreted as continuing to place the
"burden of proof on the Patent Office which
requires it to produce the factual basis
for its rejection of an application under
sections 102 and 103" [citing In re Warner,
379 F.2d 1011, 1016, 154 USPQ 173, 177
(CCPA 1967)].
After a review of the teachings in Lillquist, we
fail to find a single silicon detector with output signals
corresponding to both short wavelength and visible colored
light radiation as recited in Appellant’s claim 1. We
disagree with the Examiner that Appellant’s claimed limitation
of “visible colored light” lacks patentable weight and clearly
Appeal No. 1997-2585
Application 07/930,880
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reads on Lillquist’s visible light radiation. Lillquist in
col. 3, lines 27 through 39, and Fig. 1 teaches that a
single silicon detector 12 detects infrared and visible
colored light but generates black and white electrical signals
corresponding to the visible light. Therefore, the limitation
of “to generate . . . visible colored light signals,” as
recited in Appellant’s
claim 1, is absent in Lillquist’s detector which generates
black and white signals corresponding to the visible light.
We note that the other independent claims 10 and 15 similarly
recite a single silicon detector for producing electrical
signals corresponding to both infrared and colored light.
Accordingly, we reverse the rejection of claims 1 through 10
and 12 through 20 under 35 U.S.C. § 103 over Lillquist and
Burley.
In view of the foregoing, the decision of the
Examiner rejecting claims 1 through 10, and 12 through 20
under 35 U.S.C. § 103 is reversed.
REVERSED
Appeal No. 1997-2585
Application 07/930,880
11
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
MRF:psb
Appeal No. 1997-2585
Application 07/930,880
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Wade James Brady
Texas Instruments, Inc.
P.O. Box 655474
M/S 219
Dallas, TX 75265