Ex parte ERSKINE et al.

Board of Patent Appeals and Interferences

Sep 5, 1997

07960148 - (D) (B.P.A.I. Sep. 5, 1997)

Application for patent filed October 13, 1992.1
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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(2) is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES C. ERSKINE and DALE L. PARTIN
____________
Appeal No. 96-0550
Application 07/960,1481
____________
ON BRIEF
____________
Before CALVERT, McQUADE and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's
final rejection of claims 10, 29 and 33. Claims 1-9, 11-28 and
30-32 have been canceled.
Appeal No. 96-0550
Application 07/960,148
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Appellants appealed subject matter is a vehicle
instrumentation apparatus. Claim 10 is illustrative of the
subject matter on appeal:
10. A vehicle instrumentation apparatus comprising a
deformable mirror device having a matrix of mirrors, each mirror
in the matrix individually controllable between at least two
states to provide information to a vehicle operator wherein a
windshield projects an image of a display created by the
deformable mirror device, wherein the image is projected as a
double image due to reflection of the image off of both an inside
reflecting surface and an outside reflecting surface of the
windshield, the apparatus also comprising, means for modulating
first mirrors of the array around a periphery of second mirrors
of the array generating the display, thereby surrounding the
periphery of the second mirrors on the deformable mirror device
with the first mirrors that are activated a smaller fraction of
the time than the second mirrors are activated, thereby softening
the edges of the display and the projected image to reduce
perception of the double image by the vehicle operator.
THE REFERENCES
The following references were relied on by the
examiner:
Gross 2,750,833 June 19, 1956
Lasher et al. (Lasher) 4,486,785 Dec. 4, 1984
Ott 4,680,579 July 14, 1987
Iino 4,804,836 Feb. 14, 1989
THE REJECTIONS
Claims 10, 29 and 33 stand rejected under 35 U.S.C.
Appeal No. 96-0550
Application 07/960,148
The examiner relies on Gross for teaching that the double2
image problem is a long well recognized problem.
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§ 112, first paragraph as being based on a specification which is
objected to for "failing to provide an enabling disclosure."
Claims 10, 29 and 33 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ott in view of Iino and Lasher.2
All the claims stand or fall together (Brief at page
7).
Rather than reiterate the entire arguments of the
appellants and the examiner in support of their respective
positions, reference is made to appellants' brief (Paper No. 19),
reply brief (Paper No. 22), supplement to appellants' brief
(Paper No. 25), the examiners answer (Paper No. 20), and
supplemental examiner's answer (Paper Nos. 23 and 26) for the
full exposition thereof.
OPINION
Turning first to the rejection under 35 U.S.C. § 112,
first paragraph, we initially note that it is well settled that
the examiner has the initial burden of producing reasons that
would substantiate a rejection based on lack of enablement. See,
In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993); In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
Appeal No. 96-0550
Application 07/960,148
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561, 563 (CCPA 1982). Once this is done, the burden shifts to
the appellants to rebut the conclusion of the examiner regarding
enablement by presenting evidence to prove that the disclosure is
enabling. Id. at 1561, 27 USPQ2d at 1513; In re Eynde, 480
F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973); In re Doyle, 482
F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973), cert. denied, sub
nom. Doyle v. Comm'r of Patents, 416 U.S. 935 (1974).
Additionally, as the court in In re Gaubert, 524 F.2d 1222, 1226,
187 USPQ 664, 667 (CCPA 1975) stated:
[t]o satisfy § 112, the specification disclosure must
be sufficiently complete to enable one of ordinary
skill in the art to make the invention without undue
experimentation, although the need for a minimum amount
of experimentation is not fatal.... Enablement is the
criterion, and every detail need not be set forth in
the written specification if the skill in the art is
such that the disclosure enables one to make the
invention.
The determination of what constitutes undue experimentation in a
given case requires the application of a standard of
reasonableness, having regard for the nature of the invention and
the state of the art. See, In re Wands, 858 F.2d 731, 736, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988). The provisions of 35 U.S.C.
§ 112, first paragraph, do not require that the specification
contain what is well known to those skilled in the art.
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co.,
Appeal No. 96-0550
Application 07/960,148
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730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984).
However, an examiner may reject a claim if it is reasonable to
conclude that one skilled in the art would be unable to carry out
the claimed invention. Eynde, 480 F.2d at 1370, 178 USPQ at 474.
In the present case the examiner is of the opinion that
the disclosure fails to disclose how to use gray scale to soften
the edges of the image reflected on the windshield (Examiner's
Answer at page 3).
The specification states that a double image is
produced when an image is projected onto an automotive windshield
due to the reflection of the projected image from both the inside
and outside reflecting surfaces of the windshield (Specification
at page 14). The specification also discloses:
The effect of the double image can be
made less noticeable by "softening" the
edges of the projected image. This
softening of the edge of the image is
achieved by surrounding the periphery of
the activated pixels on the deformable
mirror device with pixels that are
activated a smaller fraction of the
time, i.e., using gray scale. The "next
nearest neighbor" pixel may be activated
with a smaller duty cycle than the
pixels that are "nearest neighbors" to
the periphery of the fully activated
pixels, causing the edges of the image
to be less distinct and the double image
to be less noticeable. [Specification
at page 15]
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Application 07/960,148
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In our opinion, the specification clearly discloses how to make
and use the invention as required by 35 U.S.C. § 112, first
paragraph. In fact the examiner does not state that a person of
ordinary skill in the art would not be taught how to make and use
gray scale to reduce the perception of a double image. Rather,
the examiner states that the specification does not disclose how
gray scale is used to reduce the perception of a double image.
As such, the examiner's rejection is directed to the lack of
disclosure of the theory of the invention.
However, the inclusion of a theory of how the invention works is
not necessary to meet the enablement requirement of 35 U.S.C. §
112, first paragraph. See, Fromson v. Advance Offset Plate,
Inc., 720 F.2d 1565, 1570, 219 USPQ 1137, 1140 (Fed. Cir. 1983).
As the examiner has not advanced reasons why a person
skilled in the art would not be taught how to make or use the
invention, the examiner has failed to establish a prima facie
case of enablement. See Strahilevitz, 668 F2d at 1232, 212 USPQ
at 563. In view of the foregoing we will not sustain the
rejection of claims 10, 29 and 33 under 35 U.S.C. § 112, first
paragraph.
Turning now to the rejection of claims 10, 29 and 33 as
unpatentable under 35 U.S.C. § 103, we find that Ott discloses an
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optical system for projection of a display which includes a
matrix of mirrors. Each mirror in the matrix is individually
controllable between at least two states (Col. 3, line 66 to Col.
4, line 4, lines 33-41). In a quiescent state each mirror
reflects light along an optical path which impinges on a
reflecting portion of a Schlierin optical device and returns to
the original light source (Col. 4, lines 4-10). In a deformed
state, each mirror reflects light along an optical path directed
to a transmitting portion of the Schlierin optical device. The
light passes through to Schlierin's optical device onto a viewing
screen (Col. 4, lines 33-41). Each mirror may have
more than one deformed state so that the viewing screen can be
illuminated with different intensities so as to provide gray
scale (Col. 5, lines 7-12). According to the examiner, Ott does
not teach that the device can be used in a vehicle display system
or that gray scale can be used to reduce the perception of a
double image.
Iino discloses an optical projector for a head up
display for a vehicle (Fig. 1A, Col. 3, lines 8-11).
Lasher discloses a method of reducing the usual
perception of jagged or stepped edges produced by bilevel
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sampling of an image in a telecommunication system (Col. 2, lines
7-9). Video data is first compressed and sent over a low
bandwidth channel (Col. 1, lines 60-64). The data is first
digitized by assigning a binary value to each picture element or
pel. (Col. 1, lines 66-67). As depicted in Figure 4, this
assignment of a binary value to each element known as bilevel
sampling produces a stepped appearance when the video data is
reproduced. To reduce the visual impact of the stepped edges,
Lasher teaches that gray-scale pels are selectively introduced
before the image is displayed (Col. 2, lines 50-53).
The examiner is of the opinion that:
...Iino teaches that an optical
projector apparatus is conventionally
used in automotive vehicles for head up
displayed-signals (see fig. 1). Thus,
it would have been obvious to use the
optical instrumentation system taught by
Ott in the head up display environment
as taught by Iino...
...it would have been obvious to use the
teaching of Lasher in the device of Ott
as
modified to use gray scale to soften the
edges of the image so that the optical
quality of the perceived image could
have been improved. ...since Ott
already had the idea of modulating the
deformable mirrors to upgrade the
perceived image, it would have been
certainly obvious ...to have been
motivated to have modulated the
deformable mirrors of [O]tt as modified
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to achieve gray scale to soften the
edges of the image for the same desired
purpose of improve [sic:improving] the
quality of the perceived image as
suggested by Lasher. [Examiner's Answer
at pages 6-7]
Appellants argue that there is no motivation to combine
the teachings of Lasher with Ott and Iino and that Lasher is
nonanalogous art.
We will not sustain the rejection of claims 10, 29 and
33 under 35 U.S.C. § 103.
The examiner has failed to set forth a prima facie case
of obviousness. 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 or implied suggestions found in
the prior art. See In re Sernaker, 702 F.2d 989, 994, 217 USPQ
1, 5 (Fed. Cir. 1983).
Even if Lasher is analogous art, we agree with the
appellants that there is no teaching or suggestion to combine the
teachings of Lasher and Ott. Lasher discloses a method whereby
video data is sent from a first location to a second location
utilizing bilevel sampling. The appearance of the stepped edges
which are produced by the bilevel sampling is reduced by
selectively introducing gray scale pels before the image is
produced. Lasher does not suggest utilizing gray scale in a
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Application 07/960,148
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projection display system as disclosed in Ott because Lasher is
concerned with problems associated with bilevel sampling not the
problems associated with projection display systems. There is
simply nothing in either Ott or Lasher to motivate a person of
ordinary skill in the art to combine the disparate teachings of
Ott and Lasher. In our view the only suggestion for such a
combination would have been hindsight knowledge impermissibly
derived from appellant's disclosure. See In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992). We have
reviewed the Iino reference but find nothing there to cure the
deficiencies in the rejection.
The decision of the examiner is reversed.
REVERSED
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Application 07/960,148
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IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Anthony L. Simon
General Motors Corporation
Legal Staff
P.O. Box 33114
Detroit, MI 48232
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