Ex parte Gordon

Board of Patent Appeals and Interferences

Feb 29, 2000

08397024 (B.P.A.I. Feb. 29, 2000)

1
Paper No. 30
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ELDON L. GORDON
______________
Appeal No. 1997-3164
Application 08/397,024
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING and DIXON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-4, 6-9, 13, 14
and 23-27. Claims 5, 10-12 and 15-22 had been cancelled. An
amendment after final rejection was filed on September 3, 1996
and was entered by the examiner. This amendment and a
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Application 08/397,024
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concurrently filed terminal disclaimer resulted in the
allowance
of claims 1-4, 6-9, 13, 14 and 25-27. Consequently, only
claims 23 and 24 remain rejected in this application and are
on appeal before us.
The disclosed invention pertains to the art of tuning
a dual frequency cavity backed slot antenna.
Representative claim 23 is reproduced as follows:
23. A method of tuning a dual frequency cavity backed
slot antenna comprising the steps of:
(a) providing a substrate with a surface, said surface
including thereon:
(i) a continuous slot;
(ii) first electrically conductive metallization
disposed internal of said slot and extending to said slot;
(iii) second electrically conductive metallization
disposed external to said slot and extending to said slot,
said first and second electrically conductive metallization
defining said slot; and
(iv) at least one pair of axially aligned
frequency adjusting means, aid pair comprising one of an
indentation or a tab in each of said first and second
electrically conductive metallization; and
(b) then altering the dimensions of at least one of
said tabs or indentations to adjust the frequency of said
antenna.
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Application 08/397,024
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The examiner relies on the following reference:
Schnetzer et al. (Schnetzer) 5,194,876 Mar. 16,
1993
Claims 23 and 24 stand rejected under 35 U.S.C. § 103.
As evidence of obviousness the examiner offers Schnetzer taken
alone.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answers for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answers.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
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Application 08/397,024
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ordinary skill in the art the obviousness of the invention as
set forth in claims 23 and 24. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. 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
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
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examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant 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 Id.; 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 (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 claim 23, the examiner points to the
substrate of Figure 8 of Schnetzer which is provided with 1) a
continuous slot 133, 2) first electrically conductive
metallization 131b, 3) second electrically conductive
metallization 131a, and 4) a pair of axially aligned frequency
adjusting means 137 [final rejection, Paper No. 16]. The
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examiner observes that Schnetzer teaches that the indentations
137 may be adjusted as needed. The examiner concludes that it
would have been obvious to adjust the dimensions of the
indentations 137 in Schnetzer in order to alter the frequency
characteristics of the antenna as taught by Schnetzer [id.].
Appellant argues that the claimed invention operates
to tune both frequencies of a dual frequency antenna.
Appellant also argues that the altering step of the invention
must take place after assembly of the antenna and that such
post-assembly alteration is not taught or suggested by
Schnetzer [main brief]. The examiner responds that all
antennas operate at two frequencies. The examiner also argues
that the claim does not require that the alteration of
dimensions take place after assembly of the antenna.
According to the examiner, adjustments made to the
indentations 137 in Schnetzer at the time of manufacture would
satisfy the language of the claims [initial answer].
Appellant responds that the claims are inherently
limited to an antenna that provides a dual frequency output.
Appellant also reiterates that the invention requires that the
slots be alterable after fabrication of the antenna.
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Additionally, appellant argues that a dual frequency cavity
backed slot antenna is defined in the specification as a
particular type of antenna which is not taught or suggested by
Schnetzer [first reply brief].
The examiner responds that the claims do not require
two frequency tuning or that the adjustment take place after
fabrication of the antenna. The examiner also asserts that
the preamble of claim 23 does not require that limitations
from the specification be read into the claim as asserted by
appellant [supplemental answer]. Appellant responds by
reiterating his position that the claimed invention relates to
a dual frequency cavity backed slot antenna as defined in the
specification [second reply brief].
It is clear that the propriety of the rejection in
this case hinges directly on the correct interpretation of the
scope of the claims. There is basically no dispute as to what
the patent to Schnetzer teaches. The dispute between the
examiner and appellant revolves around the question of whether
the claimed invention is broad enough to be suggested by the
teachings of Schnetzer within the meaning of 35 U.S.C. § 103.
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With respect to the question of whether claim 23
requires that the alteration step take place after fabrication
of the antenna, we agree with the examiner that claim 23 is
not so limited. The claim recites the steps of providing a
substrate of a certain type and altering dimensions of the
tabs on the substrate. We agree with the examiner that the
Schnetzer substrate shown in Figure 8 is initially provided
without the indentations which are etched after the slots have
been formed [column 8, lines 28-41]. As the indentations 137
are etched in Schnetzer at the time of fabrication, the step
of altering the dimensions of the indentations after the
substrate has been provided is satisfied as recited in claim
23.
With respect to the question of whether the claimed
invention requires that the method adjust two frequencies of a
dual frequency cavity backed slot antenna, we agree with
appellant. The preamble of claim 23 recites that the method
is for tuning a dual frequency cavity backed slot antenna.
Step (b) recites that the altering of dimensions adjusts “the
frequency” of “said antenna.” The phrase “the frequency” must
refer to the dual frequency of the preamble, and the phrase
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“said antenna” must refer to the dual frequency cavity backed
slot antenna of the preamble. Thus, the altering step of
claim 23 clearly applies the method to the specific antenna
set forth in the preamble of claim 23. Appellant argues that
this specific antenna is defined in the specification as an
antenna which operates at two frequencies which can be
simultaneously tuned.
The examiner finds obviousness based upon his
observation that “all antennas operate at two frequencies”
[answer, page 4], or that “all antennas may operate at more
than one frequency” [supplemental answer, page 2]. We do not
find anything of record in this application which provides
independent support for this broad assertion of the examiner.
Although antennas may be capable of operating at more than one
frequency through appropriate tuning, there is nothing in
Schnetzer which suggests that the dual frequencies of a dual
frequency cavity backed slot antenna can be adjusted by
altering the dimensions of the tabs or indentations as recited
in claim 23.
For reasons discussed above, we find that the examiner
has not properly given consideration to all the limitations
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Application 08/397,024
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set forth in the claims. Therefore, the examiner has failed
to
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establish a prima facie case of obviousness. Accordingly, the
decision of the examiner rejecting claims 23 and 24 is
reversed.
REVERSED
Jerry Smith )
Administrative Patent Judge )
)
)
)
Michael R. Fleming ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
Joseph L. Dixon )
Administrative Patent Judge )
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Application 08/397,024
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JS/cam
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Application 08/397,024
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Jerry W. Mills, Esq.
Baker & Botts, LLP
2001 Ross Avenue
Dallas, TX 75201