Ex parte Hatfield et al.

Board of Patent Appeals and Interferences

Jul 28, 1999

08262400 (B.P.A.I. Jul. 28, 1999)

Application for patent filed June 20, 1994. According to1
appellants, this is a continuation of Application No.
07/989,408, filed December 11, 1992, now abandoned.
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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DEAN HATFIELD and PAUL KIUNKE
____________
Appeal No. 96-0948
Application No. 08/262,4001
____________
ON BRIEF
____________
Before MEISTER, ABRAMS, and GONZALES, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1, 2, 4-12, 14-18 and 22-25. Claims
19 and 21 have been allowed, and claims 3 and 13 have been
Appeal No. 96-0948 Page 2
Application No. 08/262,400
indicated by the examiner as containing allowable subject
matter.
The appellants’ invention is directed to a multi-sensor
electro-optical boresight mechanism. The subject matter
before us on appeal is illustrated by reference to claim 1,
which reads as follows:
1. A multi-sensor, electro-optical boresight mechanism
comprising:
an optical bench;
a telescope, mounted to said optical bench, for receiving
a target signal;
first sensor means, mounted to said optical bench, for
sensing a first frequency component of said target signal and
generating an image therefrom;
second sensor means, mounted to said optical bench, for
sensing a second frequency component of said target signal and
generating an image therefrom;
boresight target generation means, mounted to said
optical bench, for internally generating a boresight target
signal along a first optical path; and
optical means, mounted to said optical bench, for
allowing said first and second sensor means to sense said
boresight target signal.
THE REFERENCE
Appeal No. 96-0948 Page 3
Application No. 08/262,400
Rejections of claims 4, 9, 10, 15 24 and 25 under 352
U.S.C. § 112, second paragraph, were cured by amendments
entered after the final rejection (see Paper No. 39).
The single reference relied upon by the examiner to
support the final rejection is:
Sud et al. (Sud) 4,811,061 Mar. 7, 1989
THE REJECTIONS
Claims 1, 2, 4, 8, 10-12, 14, 15 and 22-25 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Sud.
Claims 5-7, 9 and 16-18 stand rejected under 35 U.S.C. §
103 as being unpatentable over Sud.
The rejections are explained in the Examiner's Answers.2
The arguments of the appellants in opposition to the
positions taken by the examiner are set forth in the Briefs.
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
Appeal No. 96-0948 Page 4
Application No. 08/262,400
examiner and the appellants as set forth in the Answer and the
Brief.
The Rejection Under 35 U.S.C. § 102(b)
The guidance provided by our reviewing court with regard
to the matter of anticipation is as follows: Anticipation is
established only when a single prior art reference discloses,
either expressly or under the principles of inherency, each
and every element of the claimed invention. See In re
Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed.
Cir. 1994) and In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990). Anticipation by a prior art reference
does not require either the inventive concept of the claimed
subject matter or recognition of inherent properties that may
be possessed by the reference. See Verdegaal Brothers Inc. V.
Union Oil Co. Of California, 814 F.2d 628, 633, 2 USPQ2d 1051,
1054 (Fed. Cir. 1987). The law of anticipation does not
require that the
reference teach what the applicant is claiming, but only that
the claim on appeal "read on" something disclosed in the
reference, i.e., all limitations of the claim are found in the
Appeal No. 96-0948 Page 5
Application No. 08/262,400
reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465
U.S. 1026 (1984). It is only necessary that the reference
include structure capable of performing the recited function
in order to meet the functional limitations of the claim. See
In re Mott, 557 F.2d 266, 269, 194 USPQ 305, 307 (CCPA 1977).
Independent claims 1 and 12 both stand rejected as being
anticipated by Sud. Claim 1 is directed to a multi-sensor,
electro-optical boresight mechanism comprising an optical
bench, a telescope mounted to the optical bench for receiving
a target signal, first and second sensor means mounted on the
optical bench for sensing, respectively, first and second
frequency components of the target signal and generating an
image therefrom, boresight target generation means mounted to
the optical bench for “internally” generating a boresight
target signal along an optical path, and optical means mounted
to the optical bench for allowing the first and second means
to sense the boresight target signal.
The only argument advanced by the appellants against the
rejection of claim 1 is found on page 3 of the Brief, and is
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Application No. 08/262,400
that both of Sud’s boresight target signals (red light 34 and
near infrared 38) are externally generated, rather than
internally generated, as required by claim 1. We do not
agree. According to Sud, Figure 1 shows a polychromatic
boresighting device and Figure 2 shows “a possible arrangement
of the different elements of a sighting apparatus including a
device such as shown in FIG. 1" (column 2, lines 39-44,
emphasis added). As we understand the Sud disclosure, a
boresighting device that generates three signals of different
wavelengths (10) is shown in detail in Figure 1, and in
combination with the actual fire control system in Figure 2
(where it clearly has erroneously been labeled with the
numeral 12). From our perspective, the Sud boresighting
component is a boresight target generation means, and it is
“internal” in the same sense as the appellants’ invention in
that it does not rely upon signals generated from outside the
fire control system, such as beams aimed down the telescope
from an externally positioned source. This being the case, we
are not persuaded by the appellants’ argument that the subject
matter recited in claim 1 is not anticipated by Sud, and we
will sustain the rejection.
Appeal No. 96-0948 Page 7
Application No. 08/262,400
In view of the fact that the appellants have chosen not
to challenge with any reasonable specificity before this Board
the rejection of dependent claims 2, 4, 8, 10, 11 and 22, they
are grouped with independent claim 1, from which they depend,
and fall therewith. See In re Nielson, 816 F.2d 1567, 2
USPQ2d 1525 (Fed. Cir. 1987).
The appellants have advanced two arguments with regard to
the rejection of independent claim 12. The first of these is
the same as was discussed above with regard to claim 1, that
is, that the Sud boresight target generator is not internal.
We do not agree, for the reasons discussed above. The second
argument is that Sud is not a “common aperture” system, as
required by claim 12 (Brief, page 4). Be begin our evaluation
of this issue by pointing out that the definition of a ”common
aperture” system has not explicitly been set forth in the
appellants’ specification, nor has any component of the system
been identified as the “common aperture.” Two clues are
provided, however, that lead us to believe that the “common
aperture” is the telescope, in which case the Sud device meets
the terms of the claim. The first clue is found on page 2 of
the specification, where it is explained that most current
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Application No. 08/262,400
systems employ multiple apertures “to allow each sensor to
view the targets simultaneously.” This would suggest that an
“aperture” is an opening through which a sensor views the
target in the fire control mode, and that in the prior art
each sensor was provided with a separate aperture. Such a
conclusion appears to be confirmed on page 9, where it is
stated that the present invention “provides a boresight
mechanism that utilizes fixed optical components and a common
aperture telescope to reduce boresight error buildup”
(emphasis added). Therefore, in the absence of any direction
otherwise in the appellants’ specification, it is our opinion
that the telescope is the “common aperture” recited in the
preamble of claim 12. Although a telescope is not shown in
the Sud drawings, it is described in column 4 as being part of
the system, receiving the beams from mirror 42 (line 22 et
seq.), and is “common” in that all of the beams projected and
returned from the device when in the fire control mode pass
through it.
We therefore conclude that the subject matter of claim 12
is anticipated by Sud, and we will sustain this rejection. In
Appeal No. 96-0948 Page 9
Application No. 08/262,400
See, for example, Merriam Webster’s Collegiate3
Dictionary, Tenth Edition, 1996, page 20.
the absence of arguments regarding the separate patentability
of dependent claims 14, 15 and 23, they fall with claim 12.
Claims 24 and 25 add to each of claims 1 and 12 the
requirement that the optical means be “affixed to said optical
bench.” The appellants argue that this feature is not present
in Sud, in that prisms 56 and 68, and corner cubes 62 and 66,
are moved in and out of position with respect to the optical
bench. However, we believe this to be too narrow an
interpretation of the term “affixed,” the common definition of
which is “to attach physically . . . in any way.” The claims3
do not specify that the optical means be immovable - but
merely affixed - and therefore it is our opinion that the
optical means of Sud meets the terms of these claims.
Moreover, we agree with the examiner that once the various
prisms and cubes of Sud are in position to allow the first and
second sensing means to sense the boresight target signal,
they are affixed in that position for so long as that mode is
in operation. Finally, although not explicitly stated, one of
ordinary skill in the art would recognize that all of the
Appeal No. 96-0948 Page 10
Application No. 08/262,400
optical components of the Sud system, whether movable or
immovable, must be attached in some way to an “optical bench”
in order for the device to be functional.
The Section 102 rejection of claims 24 and 25 is
affirmed.
The Rejection Under 35 U.S.C. § 103
It is axiomatic that the test for obviousness is what the
combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
establishing a prima facie case of obviousness, it is
incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a
prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the
requisite motivation must stem from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and
not from the appellant's disclosure. See, for example,
Appeal No. 96-0948 Page 11
Application No. 08/262,400
Uniroyal ,Inc. V. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
Claims 5 and 16 depend from claims 1 and 12,
respectively, and require the presence of a pre-expander means
interposed between the boresight target generation means and
the telescope for magnifying a signal transmitted along the
first optical path. In the Sud device, beams are emitted from
sources and then are passed through holes to impinge directly
upon mirrors that are shown as being of flat configuration.
There is no explicit teaching in Sud for expanding these
beams, and the examiner’s conclusion that such action takes
place is, at best, conjecture. It therefore is our view that
Sud fails to establish a prima facie case of obviousness with
regard to these two claims, and we will not sustain the
rejection.
We reach the same conclusion with regard to the shutter
means recited in claims 6, 7, 17 and 18. In the Sud
apparatus, control of the path of beams between alternative
routes is accomplished by deflecting them with movable prisms.
Appeal No. 96-0948 Page 12
Application No. 08/262,400
The examiner’s conclusion that this would have suggested that
shutters be used to block the beams is not supported by any
evidence. In addition, in view of the fact that the prisms
are used to transmit these beams as well as alter their
direction, it would appear that shutters could not be
substituted for the prisms without a wholesale redesign of the
Sud system, which would operate as a disincentive to the
proposed modification. In any event, we fail to perceive any
teaching, suggestion or incentive which would have led one of
ordinary skill in the art to modify the Sud system in the
manner here proposed by the examiner. A prima facie case of
obviousness therefore is not established, and the rejection of
these claims cannot be sustained.
Claim 9 adds to the invention described by claims 1 and 8
“beam splitter means disposed adjacent to the laser source for
reflecting the laser designation signal therefrom and
transmitting the boresignt target signal along the same path.”
In the appellants’ disclosure, a “beam splitter” is defined as
a device, such as a mirror, that reflects certain frequencies
while allowing others to pass through. Three such elements
are present in the Sud system. The first two are mirrors 28
Appeal No. 96-0948 Page 13
Application No. 08/262,400
and 40, located inside the boresighting device 10, which pass
or reflect beams from several sources in order to combine them
into a single beam. Not only are these mirrors not adjacent
to the laser source, but they do not reflect the laser signal.
The third disclosed by Sud is mirror 54, which is located
outside of the boresighting device. Even if considered to be
“adjacent” to the laser source, mirror 54 acts upon the laser
return signal, and not the laser “designation signal,” which
the appellant has defined in the specification as the laser
signal that is projected out to the target (pages 5-6). We
therefore cannot agree with the examiner that the subject
matter of this claim is rendered obvious by the teachings of
Sud, and we will not sustain the rejection of this claim.
SUMMARY
The rejection of claims 1, 2, 4, 8, 10-12, 14, 15 and 22-
25 as being anticipated by Sud is sustained.
The rejection of claims 5-7, 9 and 16-18 as being
unpatentable over Sud is not sustained.
The decision of the examiner is affirmed-in-part.
Appeal No. 96-0948 Page 14
Application No. 08/262,400
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
NEA/jlb
Appeal No. 96-0948 Page 15
Application No. 08/262,400
PATENT DOCKET ADMINISTRATION
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