Ex parte Dreano et al.

Board of Patent Appeals and Interferences

Jun 18, 1998

07949289 (B.P.A.I. Jun. 18, 1998)

Application for patent filed September 22, 1992.1
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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JEAN-PIERRE DREANO
and JEAN-PHILIPPE BOYER
__________
Appeal No. 95-2640
Application 07/949,2891
__________
ON BRIEF
__________
Before THOMAS, KRASS, and TORCZON, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-2640
Application No. 07/949,289
2
This is a decision on appeal from the final rejection of
claims 12 through 23, all of the claims pending in the
application.
The invention pertains to an electrostatic shutter tube.
More particularly, a shutter electrode therein is made to
conform to the electric field produced by a first electrode.
The shutter electrode has a rim positioned in a location where
one of the equipotential lines of the electric field is to be
produced and in a shape which conforms to the predetermined
shape of the line. The shutter electrode also has a minimal
thickness at least at its edge. The shutter electrode shape
and location is said to result in a shutter electrode which
does not substantially disturb the equipotential lines of the
electric field produced by the first electrode.
Independent claim 12 is reproduced as follows:
12. An electrostatic shutter tube for producing a
representation of a photon image, said tube comprising:
a. an electron source for emitting a flow of electrons in
response to an incident photon image;
b. a target on which an image may be inscribed by
incident electrons;
Appeal No. 95-2640
Application No. 07/949,289
3
c. first electrode means disposed between the electron
source and the target for producing an electric field, defined
by a multiplicity of equipotential lines having predetermined
shapes, for accelerating the flow of electrons toward the
target and focusing said flow of electrons at said target;
d. shutter electrode means for facilitating interruption
of the flow of electrons from the electron source to the
target, said shutter electrode means having a rim with an edge
defining an aperture for passing the flow of electrons, said
rim being positioned in a location where one of said
equipotential lines is to be produced, having a shape
substantially conforming to the predetermined shape of said
line, and having a minimal thickness at least at said edge,
such that, during transmission of the flow of electrons
through the aperture, the shutter electrode does not
substantially disturb the equipotential lines of the electric
field produced by the first electrode means.
The examiner relies on the following references:
Stoudenheimer et al. 3,474,275 Oct. 21, 1969
(Stoudenheimer)
Santilli et al. 3,989,971 Nov. 2, 1976
(Santilli)
Wang 4,814,599 Mar. 21,
1989
Claims 12 through 23 stand rejected under 35 U.S.C. §
112, second paragraph, as being indefinite. Claims 12 through
16, 18 and 19 stand further rejected under 35 U.S.C. § 102(b)
as anticipated by Stoudenheimer. Claims 17 and 20 through 23
stand further rejected under 35 U.S.C. § 103. As evidence of
Appeal No. 95-2640
Application No. 07/949,289
4
obviousness, the examiner cites Stoudenheimer and Santilli
with regard to claim 17 and Stoudenheimer and Wang with regard
to claims 20 through 23.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
Turning first to the rejection of claims 12 through 23
under 35 U.S.C. § 112, second paragraph, we will not sustain
this rejection.
The examiner holds the claims to be indefinite because
“it is unclear as to what amount of ‘minimal thickness’ is
necessary” to achieve the results recited in independent claim
12. We find no indefiniteness here as the specification
states, at page 3, lines 8-10:
Ideally, the shutter electrode should have a thickness
which is substantially equal to zero. Since this is
impossible in practice, it is given a minimal
thickness
(for example less than 0.2 mm) at the rim of the central
aperture...
Appeal No. 95-2640
Application No. 07/949,289
5
Thus, reference to the specification makes it clear as to the
meaning of “minimal thickness.” That is, the thickness of
the shutter electrode should be as small as possible within
the confines of the practical. An exemplary thickness, less
than
0.2 mm, is disclosed. Therefore, the “minimal thickness” is
disclosed to be less than 0.2 mm and there is nothing
indefinite about it. The examiner may be confusing breadth
with
indefiniteness. Breadth is not to be equated with
indefiniteness. In re Miller, 441 F.2d 689, 693; 169 USPQ
597, 600 (CCPA 1971).
We also note, with some curiosity, that claim 17 calls
for a more specific thickness of the rim, i.e., “less than
approximately 0.2 mm,” yet the examiner saw fit to include
this claim in the rejection under 35 U.S.C. § 112, second
paragraph, as being indefinite. Clearly, there is nothing
indefinite about this specific claim.
We now turn to the rejection based on prior art.
First, with regard to the rejection of claims 12 through
16, 18 and 19 under 35 U.S.C. § 102(b), we will not sustain
Appeal No. 95-2640
Application No. 07/949,289
6
this rejection because we find no indication in Stoudenheimer
of the claimed shutter electrode means having a rim with the
required location, thickness and shape. Further,
Stoudenheimer mentions nothing whatsoever about equipotential
lines so it is not understood how Stoudenheimer can disclose
or even suggest the shape of the rim of a shutter electrode
which conforms “to the predetermined shape of said line.”
The examiner identifies the combination of elements 22
and 42 of Stoudenheimer as the claimed “first electrode
means...for producing an electric field” and then identifies
one of the elements of this combination, i.e., element 22, as
also constituting the claimed “shutter electrode means.” It
is not clear how a single element 22 in Stoudenheimer can be
considered to be part of both the first electrode means and
the shutter electrode means. Moreover, even if element 22
could, somehow, be considered a “shutter electrode means,” we
find absolutely nothing in Stoudenheimer evenly remotely
intimating that such a “shutter electrode means” has a
rim...positioned in a location where one of said
equipotential lines [no mention of any equipotential
lines in Stoudenheimer] is to be produced, having a shape
substantially conforming to the predetermined shape
of said line, and having a minimal thickness...such
that...the shutter electrode does not substantially disturb
Appeal No. 95-2640
Application No. 07/949,289
7
the equipotential lines of the electric field
produced by the first electrode means.
The examiner contends [page 4-answer] that the rim
“inherently and substantially conforms with one of the
equipotential lines...” [emphasis ours]. However, in order
for a thing to be inherent, it must be shown that the claimed
property or function must necessarily occur. The examiner has
given us no evidence that there is any “shutter electrode
means,” as claimed, in Stoudenheimer or that there is any rim
associated therewith which would necessarily conform to an
equipotential line having a predetermined shape. Not only is
there no explicit identification in Stoudenheimer of any
“shutter electrode means,” but there is also no mention of, or
apparent interest in, any equipotential lines, their shape or
the shape of any rim associated with a shutter electrode means
or that the shape of any such rim conforms to the shape of an
equipotential line.
Accordingly, the examiner has fallen far short of
establishing a prima facie case of anticipation of the claimed
subject matter of independent claim 12. Therefore, claims 13
Appeal No. 95-2640
Application No. 07/949,289
8
through 16, 18 and 19, dependent from claim 12, also cannot be
anticipated by Stoudenheimer.
With regard to the obviousness rejections of claims 17
and 20 through 23, the references to Santilli and Wang are
relied upon for the teachings of a rim thickness of about 0.2
mm and for a target being a charge-transfer device,
respectively. Without ruling on the specifics of these
references vis á vis the claimed subject matter, clearly, the
rejections rely on Stoudenheimer as the principal reference
for a teaching of the shutter electrode means having the
characteristics set forth in independent claim 12. Since we
find, for the reasons supra, that Stoudenheimer is lacking in
this respect and it is clear that neither Santilli nor Wang
provide for this deficiency, we will not sustain the
rejections of claims 17 and 20 through 23 under 35 U.S.C. §
103.
We have not sustained any of the rejections of the claims
under 35 U.S.C. § 112, second paragraph, 35 U.S.C. § 102(b) or
35 U.S.C. § 103.
Accordingly, the examiner’s decision is reversed.
Appeal No. 95-2640
Application No. 07/949,289
9
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Richard Torczon )
Administrative Patent Judge )
Appeal No. 95-2640
Application No. 07/949,289
10
Corporate Patent Counsel
U.S. Philips Corporation
580 White Plains Rd.
Tarrytown, NY 10591