Ex Parte Greiner et al

Patent Trial and Appeal Board

Feb 27, 2017

13640682 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/640,682 10/11/2012 Bernard Greiner 1304-043.101 9546
22145 7590 03/01/2017
KLEIN, O'NEILL & SINGH, LLP
16755 VON KARMAN AVENUE
SUITE 275
IRVINE, CA 92606
EXAMINER
PASKO, NICHOLAS R
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
03/01/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KOS_Docketing@koslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARD GREINER and SYLVAIN BERTHIER
Appeal 2016-000501
Application 13/640,682
Technology Center 2800
Before JEFFREY T. SMITH, MONTE T. SQUIRE,
and LILAN REN, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s Final Rejection of claims 1—20.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this Decision, we refer to the Final Office Action appealed from, mailed
November 10, 2014 (“Final Act.”); the Appeal Brief dated April 20, 2015
(“App. Br.”); the Advisory Action dated April 20, 2015 (“Adv. Act.”); the
Examiner’s Answer to the Appeal Brief dated August 6, 2015 (“Ans.”); and
the Appellants’ Reply Brief dated October 5, 2015 (“Reply Br.”).
2 Appellants identify MBDA France as the Real Party in Interest.
App. Br. 2.
Appeal 2016-000501
Application 13/640,682
The Claimed Invention
Appellants’ disclosure relates to a process for correcting aberration
defects within an optical viewing device. Abstract; Spec. 12. Independent
claims 1 and 9 are illustrative of the claimed subject matter on appeal and
are reproduced below from the Claims Appendix to the Appeal Brief
(App. Br. 21, 22):
1. A process to correct aberration defects within an optical
viewing device for observing a field through a window with
substantially a dome shape, the process comprising:
providing optical conjugation means for the field being
observed with a viewing plane;
providing relative orientation means for the viewing plane
with respect to said field; and
providing optical correction means so as to correct said
aberration defects;
wherein said optical correction means are disposed
between said window and said relative orientation means so that
said optical correction means form together with said window an
at least substantially afocal optical system.
9. A method to correct aberration defects within an optical
viewing device comprising:
providing a housing;
providing a window with substantially a dome shape in the
housing;
placing a corrective lens behind the window;
providing relative orientation elements sized and shaped
to provide a viewing field behind the corrective lens; and
providing a plurality of lenses to optically conjugate the
field provided by the prisms;
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wherein said corrective lens is sized and shaped to correct
aberration defects created by the size and shape of the dome, and
the combination of the window, corrective lens, prisms, and
plurality of lenses creates an afocal optical system.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Sparrold et al., (hereinafter “Sparrold”) US 6,343,767 B1 Feb. 5, 2002
Pepin et al., (hereinafter “Pepin”) EP 1203978 Al May 8, 2002
Chen et al., (hereinafter “Chen”) US 2005/0249502 Al Nov. 10, 2005
Knapp US 7,042,654 B2 May 9,2006
The Rejections
On appeal, the Examiner maintains the following rejections:3
1. Claims 9—20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 2, 3; Final Act. 3.
2. Claim 13 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Ans. 2; Final
Act. 3.
3. Claims 1 and 4—8 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Knapp in view of Sparrold. Ans. 2; Final Act. 11.
4. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knapp in view of Sparrold, and further in view of Pepin.
Ans. 2; Final Act. 19.
3 The Examiner has withdrawn the rejection of claims 1 and 4 under
35 U.S.C. § 112, sixth paragraph. Adv. Act. 2.
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5. Claims 9-15, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Knapp in view of Chen. Ans. 2; Final Act. 21.
6. Claims 16—18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knapp in view of Chen, and further in view of Pepin.
Ans. 2; Final Act. 28.
7. Claim 9 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
applicant regards as the invention.4 Ans. 3; Final Act. 9.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
Rejections 1, 2, and 7
Appellants do not dispute the Examiner’s § 112 rejections of claims
9-20 and claim 13 for lack of written description (Rejections 1 and 2) and
claim 9 for indefmiteness (Rejection 7). See App. Br. 5, 8 (“Appellant does
not dispute this portion of the rejection of independent claim 9.”); Reply Br.
4 The Examiner has withdrawn the rejection of claims 1 and 4 under
35 U.S.C. § 112, second paragraph for indefmiteness; the Examiner,
however, maintains the rejection for indefmiteness with respect to claim 9.
Ans. 3; Final Act. 9.
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3, 4 (“Appellant does not dispute this portion of the rejection [regarding
claim 13] and will amend the typographical error when appropriate”); see
also Ans. 3 (discussing “AQUIESCED REJECTIONS”) (emphasis in
original).
Accordingly, because the Examiner’s Rejections 1, 2, and 7 have not
been withdrawn and are not disputed by Appellants, we summarily affirm
each of these rejections. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008); Ex parte Frye, 94 U.S.P.Q.2d 1072, *4 (BPAI 2010) (“If an appellant
fails to present arguments on a particular issue — or, more broadly, on a
particular rejection — the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.”) (cited with approval in
In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
Rejection 3
Appellants argue claims 1 and 4—8 as a group. We select claim 1 as
representative and claims 4—8 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner determines that the combination of Knapp and Sparrold
suggests a process satisfying all of the limitations of claim 1 and would have
rendered claim 1 obvious. Final Act. 11—13 (citing Knapp, Figs. 1—9, col. 3,
11. 53-55, col. 4,11. 2AA2, 43^15, 43-60, 50-54, 55-57, col. 5,11. 48-52;
Sparrold, Figs. 1-11, col. 1,11. 2A-27, col. 2,11. 36—46, 59-63, col. 3,11. 44-
47).
Appellants argue that the Examiner has failed to make a prima facie
case of obviousness because the incorporation of the concepts disclosed by
Sparrold changes the principle of operation of Knapp. App. Br. 8. In
particular, Appellants argue that the incorporation of the prisms of Sparrold
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into the optical system of Knapp changes the principle of operation of
Knapp. Id. at 10. Appellants also argue that the Examiner’s proposed
combination of Knapp and Sparrold can only be the result of impermissible
hindsight and a person of ordinary skill in the art would not choose to make
such a combination since the addition of prisms makes an entire sub system
of Knapp redundant. Id. at 12, 13.
We are not persuaded by Appellants’ arguments. On the record
before us, we find that a preponderance of the evidence and sound technical
reasoning support the Examiner’s analysis and determination (Final Act. 11—
13; Ans. 2) that the combination of Knapp and Sparrold suggests all of the
limitations of claim 1 and would have rendered the claim obvious. Knapp,
Figs. 1-9, col. 3,11. 53-55, col. 4,11. 2A42, 43^15, 43-60, 50-54, 55-57,
col. 5,11. 48—52; Sparrold, Figs. 1—11, col. 1,11. 24—27, col. 2,11. 36-46, 59-
63, col. 3,11. 44-47.
The Examiner also provides a reasonable basis and identifies a
preponderance of the evidence in the record to evince why one of ordinary
skill would have combined the teachings of the references to arrive at
Appellants’ claimed invention. Final Act. 13 (explaining that one of
ordinary skill would have had reason to modify Knapp’s optical system with
the relative orientation means taught by Sparrold in order to provide a
“missile having an optical guidance system which allows for the dome to be
‘conformed’ for aerodynamic considerations”); Sparrold, col. 1,11. 24—27;
col. 3,11. 44-47. See also KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007) (explaining that any need or problem known in the art can provide a
reason for combining the elements in the manner claimed).
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Appellants fail to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellants’ argument that the Examiner’s proposed combination
changes the principle of operation of Knapp (App. Br. 8; Reply Br. 8, 9) is
not persuasive for the well-stated reasons provided by the Examiner at pages
5—7 of the Answer. In particular, on the record before us, we agree with the
Examiner’s determination (Ans. 6, 7) that the combination would not change
Knapp’s principle of operation and that both prior art systems share the same
principle of operation.
As the Examiner correctly points out (Ans. 5), Knapp explicitly
teaches the use of Sparrold’s optical train as the optical train for steering
light in Knapp’s system. Knapp, col. 5,11. 31—36 (disclosing Knapp as one
of “such optical trains . . . known in the art” and incorporating by reference
Knapp’s disclosures). Moreover, as the Examiner finds (Ans. 6, 7), both
Knapp and Sparrold suggest the mechanical movement of optical elements
to direct optical rays to a sensor and their optical systems both operate using
the principle of refraction to steer incoming light rays to an optical sensor.
Knapp, col. 4,11. 55—57 (disclosing that “the optical train 36 directs incident
optical rays, which previously passed first through the window 24 and then
through the optical corrector 34, to a sensor 40”); Sparrold, col. 3,11. 2—7
(disclosing a combination of prisms and lenses to direct incoming light rays
by refraction), Fig. 3.
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Appellants’ contention that the Examiner’s proposed combination of
Knapp and Sparrold can only be the result of impermissible hindsight (App.
Br. 13, 14) is not persuasive because it is conclusory and, without more,
insufficient to rebut or otherwise establish reversible error in the Examiner’s
findings and analysis. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants’ contentions that a person of ordinary skill in the art would
not choose to make such a combination and the addition of prisms makes an
entire sub system of Knapp redundant (App. Br. 12, 13) are equally
unpersuasive because Appellants do not direct us to sufficient evidence in
the record or provide an adequate technical explanation to support them, De
Blauwe, 736 F.2d 699 at 705; and these contentions rest principally on
Appellants’ same flawed argument that the Examiner’s prior art combination
would change Knapp’s the principle of operation.
Moreover, as previously discussed above, we are persuaded that the
Examiner’s findings regarding the teachings of the prior art and stated
rationale for why one of ordinary skill would have combined the teachings
of the references to arrive at Appellants’ claimed invention are supported by
a preponderance of the evidence and based upon sound technical reasoning.
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring that the
Examiner’s rejections based on obviousness be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”).
Appellants argue for the first time in the Reply Brief that the cited
prior art does not teach nor suggest “an at least substantially afocal optical
system” or “said optical correction means are disposed between said window
and said relative orientation means” (Reply Br. 7, 8), as recited in the claims.
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Appellants, however, do not explain or offer any reason why these
arguments were not timely raised in the Appeal Brief. We, therefore,
decline to consider them at this juncture. 37 C.F.R. § 41.41(b)(2).
Accordingly, we affirm the Examiner’s rejection of claims 1 and 4—8
under 35 U.S.C. § 103(a) as obvious over the combination of Knapp and
Sparrold.
Rejection 4
Appellants do not present argument for the separate patentability of
claims 2 and 3. App. Br. 15. We select claim 2 as representative and claim
3 stands or falls with claim 2. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 2 depends from claim 1 and adds the limitation “wherein the
optical correction means present the shape of a lens, the power of which is
substantially equal in magnitude and opposite in sign to that of the window.”
App. Br. 21 (Claims App’x).
The Examiner finds that the combination of Knapp, Sparrold, and
Pepin suggests a process satisfying all of the limitations of claim 2, and
concludes that the combination would have rendered claim 2 obvious. Final
Act. 19-21.
Appellants do not present any additional substantive argument in
response to this rejection. Rather, Appellants rely on the same arguments
previously presented above in response to Rejection 3. App. Br. 15 (seeking
reversal because “Claims 2 and 3 depend from claim 1 ” and the additional
Pepin reference does “nothing to cure the defects of the combination of
Knapp and Sparrold”).
We do not find these arguments persuasive for the same reasons
discussed above in affirming the Examiner’s Rejection 3.
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Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 3, we affirm the Examiner’s rejection of claims 2 and 3 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Knapp,
Sparrold, and Pepin.
Rejection 5
Claims 9—15, 19, and 20. Appellants argue claims 9-15, 19, and 20 as
a group. We select claim 9 as representative and the remaining claims stand
or fall with claim 9. 37 C.F.R. § 41.37(c)(l)(iv). Claim 9 recites language
similar to claim 1. Compare claim 9 (App. Br. 22) with claim 1 (App. Br.
21).
The Examiner finds that the combination of Knapp and Chen suggests
all of the limitations of claim 9 and concludes that the combination would
have rendered claim 9 obvious. Final Act. 21—24.
Appellants argue that this rejection should be reversed for essentially
the same reasons previously presented above in response to Rejection 3 and
the combination of Knapp and Sparrold. In particular, Appellants argue that
because Chen teaches using prisms to align the incoming light rays to a fixed
optical train “nearly identical to that of Sparrold . . . when combined with
Knapp, Chen changes the principle of operation of Knapp.” App. Br. 16.
We do not find Appellants’ argument in this regard persuasive for the
same reasons discussed above in affirming the Examiner’s Rejection 3.
Appellants further argue that the Examiner fails to offer any
articulated reason with a rational underpinning which would explain why
one of ordinary skill in the art would combine the teachings of Knapp and
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Chen to arrive at the claimed invention and that the Examiner’s articulated
reason for rejecting the claims is defective. App. Br. 18.
We do not find this argument persuasive. Contrary to what
Appellants argue, the Examiner does provide a reasonable basis and
identifies a preponderance of the evidence in the record to evince why one of
ordinary skill would have combined the teachings of the references to arrive
at Appellants’ claimed invention. Ans. 14—16 (explaining that one of
ordinary skill would have had reason to modify “the system of Knapp with
the prisms as explicitly suggested by Chen to increase the ease by which the
system directs incoming light and to decrease the size of the entire system,
as suggested by Chen”); Knapp, col. 4,11. 45—52, col. 5,11. 31—36; Chen ||
29, 42. See also KSR, 550 U.S. 398 at 420.
Claim 19. Claim 19 depends from claim 9 and adds the limitation
“wherein the window and the corrective lens are integrally formed.” App.
Br. 23 (Claims App’x).
Appellants present an additional argument for the patentability of
dependent claim 19. App. Br. 19. In particular, Appellants argue that the
combination of Knapp and Chen does not disclose or suggest the limitation
“wherein the window and the corrective lens are integrally formed.” Id. at
19.
We do not find this argument persuasive for the well-stated reasons
provided by the Examiner at pages 16—18 of the Answer. In particular, on
the record before us, we find that a preponderance of the evidence and sound
technical reasoning supports the Examiner’s findings (Ans. 17, 18) that
Figure 2 of Knapp shows the corrective lens 34 formed on the window 24
and the window and corrective lens are “integrally formed,” as claimed,
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because they are formed as a single part and are not separated. Knapp, Fig.
2, col. 5,11. 6—12. Appellants’ argument exposes no reversible error in the
Examiner’s analysis and findings in this regard.
Accordingly, we affirm the Examiner’s rejection of claims 9—15, 19,
and 20 under 35 U.S.C. § 103(a) as obvious over the combination of Knapp
and Chen.
Rejection 6
Appellants do not present any additional substantive argument in
response to this rejection and rely on the same arguments previously
presented above in response to Rejection 5. App. Br. 19 (seeking reversal
because “Claims 16—18 depend from claim 9” and the additional Pepin
reference does “nothing to cure the defects of the combination of Knapp and
Chen”). We do not find this argument persuasive for the same reasons
discussed above in affirming the Examiner’s Rejection 5.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 3, we affirm the Examiner’s rejection of claims 16—18 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Knapp,
Chen, and Pepin.
DECISION/ORDER
The Examiner’s rejections of claims 1—20 are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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