Ex Parte Ivtsenkov et al

Patent Trial and Appeal Board

Apr 9, 2015

11685682 (P.T.A.B. Apr. 9, 2015)

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.
11/685,682 03/14/2007 Gennadii Ivtsenkov 5055
7590 04/10/2015
Protective Arms Systems Inc.
693 Cumberland Avenue
Burlington, ON L7N 2X6
CANADA
EXAMINER
LEUNG, WAI LUN
ART UNIT PAPER NUMBER
2637
MAIL DATE DELIVERY MODE
04/10/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GENNADII IVTSENKOV, ALEXANDRE MANTSVETOV, and
EVGENY BERIK
____________

Appeal 2013-001493
Application 11/685,682
Technology Center 2600
____________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
BRETT C. MARTIN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–5.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Although Appellants indicate on page 1 of the Appeal Brief that they
appeal the Examiner’s decision in connection with three different Office
Actions, this appeal is limited solely to the Examiner’s decision to reject
claims 1–5 in the most recent Office Action mailed January 12, 2012 (“Non-
Final Act.”). See 35 U.S.C. § 134(a) (“An applicant for a patent, any of
whose claims has been twice rejected, may appeal from the decision of the
primary examiner to the Patent Trial and Appeal Board, having once paid
the fee for such appeal.”); see also 37 C.F.R. § 41.31(a)(1) (“Every
applicant, any of whose claims has been twice rejected, may appeal from the
decision of the examiner to the Board by filing a notice of appeal
accompanied by the [specified] fee . . . .”) (emphases added).

Appeal 2013-001493
Application 11/685,682

STATEMENT OF THE CASE
Appellants’ invention is a military friend-or-foe identification (IFF)
system to determine whether a selected target is friendly. To this end, an
optical interrogator is attached to a small arm, such as a rifle. A friendly
target is equipped with an optical transponder with an optical receiver and
source that emits an encrypted infrared signal that is detected by the shooter
to avoid friendly fire. See generally Abstract; Spec. ¶ 5. Claim 1 is
illustrative with our emphasis:
1. An identification friend or foe system for military small arms to
determine whether a target that has been selected is a friendly target
comprising:

• an optical-electronic interrogator attached to a small arm comprising an
optical transmitter mounted on a sight of said small arm equipped with an
optical lens that forms an infra-red beam directed to said friendly target and
having directional pattern covering area of a size of human body at all
applicable distances, which sends said encrypted infra-red signal to said
friendly target, an optical receiver equipped with an optical lens, which
observation field is matched with said directional pattern of said optical lens
of said optical transmitter; therefore said optical receiver receives encrypted
infrared response signal emitted by said target from the area covered by said
infra-red beam a visual alert sign mounted on the sight of said small arm and
a sound alert signal that are activated by said received response signal,

• an active optical-electronic transponder attached to said target comprising,
one or more optical receivers equipped with an optical lens, which
observation field covers 360-arc degrees area in horizontal plane that receive
encrypted infrared optical signal emitted by said interrogator, and one or
more optical transmitters equipped with an optical lens, which directional
pattern covers 360-arc degrees area in horizontal plane that, being activated
by said encrypted infrared optical signal emitted by said interrogator,
transmits the encrypted infrared response signal back to said interrogator;
therefore, because said infra-red beam covers area of a size of human body
at all applicable distances it can not miss said optical receiver installed on
said friendly target also providing security of operation; unlike to [sic]
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Application 11/685,682

passive system employing retrorefectors, said system can operates [sic] on a
distance of a few hundred meters using low-power optical transmitters.

THE REJECTIONS2
The Examiner rejected claims 1–5 under 35 U.S.C. § 112, second
paragraph as indefinite. Ans. 2–3.3
The Examiner rejected claims 1–5 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Ans. 3–4.

THE INDEFINITENESS REJECTION
Because Appellants do not contest the Examiner’s indefiniteness
rejection of claims 1–5 (see Br. 9–25; Ans. 6), we summarily sustain this
rejection. See MPEP § 1205.02 (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner’s answer.”).

THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that the original Specification does not describe
how the recited infra-red beam cannot miss an optical receiver installed on a
2 Because the Examiner withdrew earlier prior art rejections, only the
rejections under § 112 are before us. See Ans. 2, 6. Accord Non-Final Act.
4, 8 (noting that claims 1–5 would be allowable if rewritten or amended to
overcome the § 112 rejections).
3 Throughout this opinion, we refer to the Appeal Brief filed May 29, 2012
(“Br.”) and the Examiner’s Answer mailed August 1, 2012 (“Ans.”).
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Appeal 2013-001493
Application 11/685,682

friendly target also providing operation security as claimed. Ans. 3–6.
According to the Examiner, this incapability of missing the receiver is
lacking in Appellants’ original Specification because the receiver could be
blocked by a wall or be located in a different direction from the beam such
that it can be missed. Ans. 5–6.
Appellants argue that their Specification supports the recited infra-red
beam not missing the receiver on a friendly target because, among other
things, the optical transmitter’s zoom lenses enable the beam to cover the
area of a human body at operational (applicable) distances. Br. 14, 24.
According to Appellants, the beam’s size provides operation security that
would be diminished by wider beams. Br. 24.

ISSUE
Has the Examiner erred in rejecting claim 1 under § 112, first
paragraph by finding that the original disclosure does not convey with
reasonable clarity that Appellants possessed an infra-red beam that cannot
miss an optical receiver installed on said friendly target also providing
operation security because the beam covers area of a size of a human body at
all applicable distances (the “no-miss limitation”)?

ANALYSIS
As noted above, this appeal turns on whether Appellants’ original
disclosure satisfies the written description requirement under § 112, first
paragraph. We emphasize “original disclosure,” for it is this disclosure,
namely the disclosure filed on Appellants’ filing date of March 14, 2007,
that is critical to determining whether Appellants possessed the subject
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Application 11/685,682

matter of the claimed invention as of that date. See Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Our
references to the “original disclosure,” then, refer to the disclosure filed
March 14, 2007—not to the disclosure as later amended.
Appellants’ response to the Examiner’s written description rejection
of claim 1 is located on two non-consecutive pages of the Appeal Brief,
namely pages 14 and 24. On page 14 of the Brief, Appellants cite
paragraphs 9, 10, and 25 of what is said to constitute the original application
as support for amended subject matter of claim 1.4 On page 24 of the Brief,
Appellants cite paragraphs 18 and 20 and Figures 1 to 3 of the present
application as alleged support for the no-miss limitation. This disclosure,
however, falls short of conveying with reasonable clarity that Appellants
possessed the no-miss limitation when the present application was filed.
First, as the Examiner indicates (Ans. 6), Appellants’ original
Specification filed March 14, 2007 lacks paragraph 25: it ends with
paragraph 23. The quoted passage on page 14 of Appellants’ Brief actually
appears in paragraph 19 of the original Specification, but the passage does
not provide sufficient written description to support the recited no-miss
limitation. Even if a transmitting laser diode is an active light source and
would have been obvious to those of ordinary skill in optics as Appellants
assert (Br. 14), it is well settled that a description that merely renders the
invention obvious does not satisfy the written description requirement. See
4 Although Appellants present arguments regarding claims 3 and 5 in
connection with the Examiner’s written description rejection (Br. 14–15),
those claims were not rejected separately apart from their dependence on
claim 1 as the Examiner indicates. Ans. 6. Accordingly, we need not
address claims 3 and 5 here.
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Ariad, 598 F.3d at 1352. We also agree with the Examiner (Ans. 5) that the
description of the disadvantages of the prior art patent cited in paragraphs 9
and 10 of the original Specification fares no better in this regard.
Appellants’ reliance on paragraphs 18 and 20 and Figures 1 to 3 of the
present application as alleged support for the no-miss limitation on page 24
of the Brief is likewise unavailing. First, Appellants’ quoted passage
indicating that “a wider beam could illuminate a few targets simultaneously
causing false alert, and, also, diminishing security of this system” does not
appear in paragraph 18 of the original Specification as cited on page 24 of
the Brief, but rather paragraph 15. Second, although the zoom lenses cited
on page 24 of the Brief appear in Figure 2 of the original disclosure as
optional (see numeral 15), they are not discussed in paragraph 18 as cited in
the Brief (see Br. 16), but rather paragraphs 15 and 16.
We, therefore, presume that Appellants intended also to refer to
paragraphs 15 and 16 of the original disclosure as support for the no-miss
limitation.5 This presumption is consistent with Appellants’ arguments on
page 24 of the Brief, namely that the cited disclosure allegedly supports the
recited infra-red beam not missing the receiver on a friendly target because
the optical transmitter’s zoom lenses enable the beam to cover the area of a
human body at operational (applicable) distances—a beam size that is said to
provide operation security.
Despite this additional disclosure in view of our presumption, and
even if we consider Appellants’ errors harmless, we still find no error in the
Examiner’s position on the record before us. The original disclosure
5 See Br. 5 (referring to, among other things, paragraph 15 of the original
Specification for supporting the subject matter recited in claim 1).
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proposes a laser beam with a divergence that illuminates a circle with
(1) 2-meter diameter at a 500-meter distance, and (2) 0.2 meter diameter at a
50-meter distance. Spec. ¶ 15. This divergence is said to be close to
optimal, because a wider beam could illuminate a few targets simultaneously
causing a false alert and diminish system security. Id. A very narrow beam,
however, could miss the sensor, resulting in detection failure. Id. To
eliminate this problem completely, the lens 1 can be equipped with an
optional mechanical zoom containing a movable lens (position 14 in
Figure 2) that enlarges the light spot and receiving area size up to one meter
for small distances. Id.
Because the originally-disclosed invention eliminates completely a
problem where a beam could miss the sensor, this elimination arguably
means that the receiver is no longer missed under certain conditions, such as
a line of sight between the transmitter and receiver within a certain range.
But eliminating this problem does not mean necessarily that the beam cannot
miss the receiver under other conditions, including when the receiver is
blocked or disposed in a different direction from the transmitter as the
Examiner indicates. See Ans. 5.
In this respect, then, we see no error in the Examiner’s position that
Appellants’ original disclosure fails to provide adequate written description
support for the no-miss limitation. Although the Examiner’s § 112, first
paragraph rejection is based on inadequate written description, we leave to
the Examiner to consider the independent question of whether the original
disclosure satisfies the enablement requirement of that statute, namely
whether the original disclosure enables ordinarily skilled artisans to make
and use the claimed invention in light of its scope. See Ariad, 598 F.3d at
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1344-49 (noting that written description and enablement are distinct
requirements under § 112, first paragraph).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 under § 112, first paragraph, and claims 2–5 for similar reasons.

THE OBJECTION
Because the Examiner’s objection to the amendment filed May 18,
2010 and requirement to delete new matter introduced into the disclosure via
that amendment (Ans. 4–5) is a petitionable matter—not an appealable
matter—it is not before us. See MPEP 2163.06(II); see also MPEP § 706.01
(“[T]he Board will not hear or decide issues pertaining to objections and
formal matters which are not properly before the Board.”); MPEP § 1201
(“The Board will not ordinarily hear a question that should be decided by the
Director on petition . . . .”).
To be sure, new matter issues are appealable when both the claims
and specification contain new matter, and the Examiner enters an associated
rejection and objection. MPEP 2163.06(II). But that is not the case here,
where the Examiner’s objection to the amendment to the Specification
differs materially from the grounds articulated in the § 112, first paragraph
rejection. Compare Ans. 4–5 with Ans. 3–4.

CONCLUSION
The Examiner did not err in rejecting claims 1–5 under the first and
second paragraphs of § 112.

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Application 11/685,682

DECISION
The Examiner’s decision rejecting claims 1–5 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)(1)(iv).

AFFIRMED

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