Ex parte Gjullin

Board of Patent Appeals and Interferences

May 4, 1999

08183531 (B.P.A.I. May. 4, 1999)

Application for patent filed January 18, 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journal and (2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT M. GJULLIN
_____________
Appeal No. 96-4005
Application 08/183,5311
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING and RUGGIERO, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1, 2, 4, and 5, all of the claims
pending in the present application. Claim 3 has been canceled. An amendment after final rejection was
Appeal No. 96-4005
Application 08/183,531
Although not expressly stated in the first sentence of the statement of the grounds of rejection2
in the Answer, the Examiner additionally relies on a description of the admitted prior art in Appellant's
specification.
2
filed December 26, 1995 which was denied entry by the Examiner.
The claimed invention is directed to a method of generating a terrain profile for an aircraft which
uses terrain following flight control. More particularly, Appellant discloses at page 5 of the specification
that terrain information along the aircraft's flight path is segmented into separate sample regions. The
sample regions are wider nearer the aircraft and become increasingly narrower at larger distances from
the aircraft as illustrated in Figure 1 of the drawings.
Claim 1 is illustrative of the invention and reads as follows:
1. A method of generating a terrain profile on an aircraft's flight mission computer system using
a sample region of digital terrain elevation data which corresponds to the aircraft's position and
predicted flight path, the method comprising the steps:
identifying a plurality of sample regions located directly under and along the predicted flight path
of the aircraft, said sample regions varying in dimension according to use criteria including possible short
range terrain following commands, potential flight path deviations, and long range terrain following
commands; and
transforming said sample regions into a terrain profile.
The Examiner relies on the following reference :2
Feuerstein et al. (Feuerstein) 4,805,108 Feb. 14, 1989
Claim 4 stands finally rejected under 35 U.S.C. § 112, third paragraph, as being improperly
Appeal No. 96-4005
Application 08/183,531
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dependent on a canceled claim. Claims 1, 2, 4, and 5 stand finally rejected under 35 U.S.C. § 103 as
being unpatentable over Feuerstein and the admitted prior art. Rather than reiterate the arguments of
Appellant and the Examiner, reference is made to the Brief and Answer for the respective details
thereof.
OPINION
We have carefully considered the subject matter on appeal, the rejections advanced by the
Examiner, the arguments in support of the rejections, and the evidence of obviousness relied upon by
the Examiner as support for the obviousness rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant's arguments set forth in the Brief along with the
Examiner’s rationale in support of the rejections and arguments in rebuttal set forth in the Examiner’s
Answer.
It is our view, after consideration of the record before us, that dependent claim 4 does not
comply with the third paragraph of 35 U.S.C. § 112. We are also of the view that the evidence relied
upon and the level of skill in the particular art would have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claim 1. We reach the opposite conclusion with respect to
claims 2, 4, and 5. Accordingly, we affirm-in-part.
Appellant has nominally indicated that the claims stand or fall together in a single group (Brief,
page 2). Consistent with this indication, Appellant, in presenting several arguments, has
Appeal No. 96-4005
Application 08/183,531
4
made no specific reference to particular claims to which certain arguments may apply. However, since
the Examiner has addressed all of the claims individually, we will consider the claims separately to the
extent that separate arguments are of record in this appeal.
With respect to the rejection of claim 4 under the third paragraph of 35 U.S.C. § 112, we
agree with the Examiner that this claim is improperly dependent on canceled claim 3. We note that
Appellant, while commenting on the failed attempt to correct the dependency problem at page 2 of the
Brief, does not contest the appropriateness of this rejection. Accordingly, the rejection of claim 4
under 35 U.S.C. § 112, third paragraph is sustained.
We now consider the 35 U.S.C. § 103 rejection of claims 1, 2, 4, and 5 as unpatentable over
Feuerstein and the admitted prior art. As a general proposition in an appeal involving a rejection under
35 U.S.C. § 103, an Examiner is under a burden to make out a prima facie case of obviousness. If that
burden is met, the burden of going forward then shifts to Appellant to overcome the prima facie case
with argument and/or evidence. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686
(Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In
re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
Appeal No. 96-4005
Application 08/183,531
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(CCPA 1976). Only those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to make in the Brief have not
been considered [see 37 CFR § 1.192(a)].
With respect to independent claim 1, the Examiner has pointed out the teachings of Feuerstein
and the admitted prior art, has pointed out the perceived differences between this prior art and the
claimed invention, and has reasonably indicated how and why Feuerstein and the admitted prior art
would have been modified and/or combined to arrive at the claimed invention. In our view, the
Examiner’s analysis is sufficiently reasonable that we find that the Examiner has satisfied the burden of
presenting a prima facie case of obviousness. That is, the Examiner’s analysis, if left unrebutted, would
be sufficient to support a rejection under 35 U.S.C. § 103. The burden is, therefore, upon Appellant to
come forward with evidence or arguments which persuasively rebut the Examiner’s prima facie case of
obviousness. Appellant has presented several substantive arguments in response to the Examiner’s
rejection. Therefore, we consider obviousness based upon the totality of the evidence and the relative
persuasiveness of the arguments.
We note at the outset that Appellant has not contested the Examiner's position concerning the
obviousness of transforming sample regions into a terrain profile. Rather, Appellant's arguments in the
brief center on an alleged deficiency in Feuerstein in disclosing the decreasing of the size of the sample
Appeal No. 96-4005
Application 08/183,531
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regions farthest from the aircraft once a large sample region related to potential course deviations is
identified. In Appellant's view, Feuerstein's disclosure actually teaches away from the present invention
since, in contrast to the presently claimed decreasing sample region size, the sample regions in
Feuerstein increase in size with increasing distance from the aircraft.
After careful review of Appellant's arguments, it is our opinion that such arguments are not
commensurate with the scope of independent claim 1. It is axiomatic that, in proceedings before the
PTO, claims in an application are to be given their broadest reasonable interpretation consistent with
the specification, and that claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385,
388 (Fed. Cir. 1983). Moreover, limitations are not to be read into the claims from the specification.
In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re Zletz,
893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). The present claim 1 does not recite
the decreasing sample region size feature as argued by Appellant. Rather, claim 1 recites only
"...sample regions varying in dimension according to use...". In our view, Feuerstein provides an explicit
teaching of this recited feature. As can be seen from the illustration in Figure 1 of Feuerstein, the rough
analyzer fan shaped sample region F varies in dimension from the fine analyzer sample region f . We1 1
further note that there are no reasons on the record before us, and Appellant has provided none, to
question the Examiner’s assertion (Answer, page 3) that short and long range terrain following
Appeal No. 96-4005
Application 08/183,531
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commands and potential flight deviations are inherent in any flight path. For all of the above reasons,
the Examiner's rejection of claim 1 under 35 U.S.C. § 103 is sustained.
We now consider dependent claims 2 and 5 and refer to our earlier discussion of Appellant's
arguments concerning the decreasing sample region size feature. While we found Appellant's arguments
to be unpersuasive with respect to claim 1, we reach the opposite conclusion with respect to dependent
claims 2 and 5. In contrast to claim 1, each of dependent claims 2 and 5 recite such decreasing sample
region size feature. The relevant portion of claim 2 recites:
and the third region being a least
volume and most distant from the aircraft;
Similarly, claim 5 recites:
a fourth sample region located furthest
from said aircraft in relation to said
first, second, and third sample regions,
said fourth sample region having a
minimum width dimension relative to the
width dimensions of said first, second
and third sample regions.
The Examiner has cited passages at lines 16-21 and 40-53 of column 4 of Feuerstein
in support of the position that the above claimed features are disclosed in Feuerstein.
However, these excerpts from Feuerstein are concerned merely with sampling rate and
flight computation variability, respectively, and, in our view, fall well short of describing the claimed
decreasing sample region size as distance from the aircraft increases. In view of the above, we agree
Appeal No. 96-4005
Application 08/183,531
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with Appellant that the Examiner has not established a prima facie case of obviousness and, therefore,
we can not sustain the 35 U.S.C. § 103 rejection of claims 2 and 5.
With respect to dependent claim 4, the Examiner has included this claim in the 35 U.S.C. § 103
rejection despite the fact that its dependency from a canceled claim makes it impossible to make a
comparison between what is claimed and the prior art. Were we to consider this claim on the merits it
would fall with claim 1 since Appellant has provided no separate argument with respect to the claim
limitations. However, we will summarily reverse this rejection since a claim which can not be
completely understood cannot, logically, have prior art applied against it. By making this technical
reversal of the prior art based rejection of claim 4, it should not be implied that the art relied on by the
examiner would not be relevant relative to a claim of the present scope containing clear dependency. In
re Steele, 305 F.2d 859, 862-863, 134 USPQ 292, 295 (CCPA 1962).
In summary, the rejection of claim 4 under 35 U.S.C. § 112 is sustained. The 35 U.S.C
§ 103 rejection is sustained with respect to claim 1 but is not sustained with respect to claims 2, 4, and
5. Accordingly, the decision of the Examiner rejecting claims 1, 2, 4, and 5 is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may be
Appeal No. 96-4005
Application 08/183,531
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extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS AND
MICHAEL R. FLEMING ) INTERFERENCES
Administrative Patent Judge )
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR/dal
Appeal No. 96-4005
Application 08/183,531
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RONALD E. CHAMPION
HONEYWELL INC.
0FFICE OF GENERAL COUNSEL NM75-C10
9201 SAN MATEO BLVD., N.E.
ALBUQUERQUE, NM 87113