Ex parte JAIN

Board of Patent Appeals and Interferences

Nov 4, 1999

08047238 (B.P.A.I. Nov. 4, 1999)

Application for patent filed April 13, 1993. 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written for publication in a law journal and (2) is not binding
precedent of the Board.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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KANTI JAIN
____________
Appeal No. 1997-0689
Application No. 08/047,2381
____________
HEARD: October 20, 1999
____________
Before HAIRSTON, LALL, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 12, 14, 18, and 23 through 27. Claims
2 through 11, 13, 15 through 17, 19 through 22, 28 through 30,
and 32 are allowed. Claim 31 is objected to for an
informality. Appellant has submitted a proposed correction to
claim 31 which the examiner (Answer, page 3) has agreed to
Appeal No. 1997-0689
Application No. 08/047,238
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enter by Examiner's Amendment upon resolution of the appeal to
place claim 31 in condition for allowance.
The appellant's invention relates to a window system
which uses diffraction gratings and spectrally selective
coatings to control entry of heat and light into a room.
Claim 1 is illustrative of the claimed invention, and it reads
as follows:
1. A transmissively controllable energy efficient window
system for controlling radiation entering an interior space,
comprising:
a) a fixed diffraction grating windowpane (10) capable
of deflecting the infra-red spectral component of an input
radiation beam by a certain range of angles;
b) a movable diffraction grating windowpane (14)
capable of deflecting the infra-red spectral component of an
input radiation beam by a certain range of angles, and
selectively juxtaposable in or out of optical series with said
fixed diffraction grating windowpane (10) so as to either
permit at least some of said infra-red spectral components of
the beam deflected from said fixed windowpane to enter the
interior space or to deflect the beam further so as to prevent
said infra-red spectral components from entering the interior
space; and
(c) a window frame for holding said fixed diffraction
grating windowpane and said movable diffraction grating
windowpane in adjacent parallel planes.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
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Application No. 08/047,238
3
Tietig 2,280,358 Apr. 21, 1942
Lueder 3,236,290 Feb. 22, 1966
Gerritsen (Gerritsen I) 5,009,484 Apr. 23,
1991
Gerritsen et al. 5,048,925 Sep. 17, 1991
(Gerritsen II)
Zhang et al. (Zhang) 5,164,856 Nov. 17, 1992
Claim 23 stands rejected under 35 U.S.C. § 112, first
paragraph, as being non-enabled by the specification.
Claims 1, 12, 14, 18, 23 through 27 stand rejected under
35 U.S.C. § 103 as being unpatentable over Zhang in view of
Gerritsen II, further in view of Gerritsen I (for clam 14),
Tietig (for claim 18), or Lueder (for claim 25).
Reference is made to the Examiner's Answer (Paper No. 25,
mailed February 1, 1996) for the examiner's complete reasoning
in support of the rejections, and to the appellant's Brief
(Paper No. 24, filed November 20, 1995) and Reply Brief (Paper
No. 28, filed March 20, 1996) for the appellant's arguments
thereagainst.
OPINION
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by the appellant and the examiner. As a consequence of our
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Application No. 08/047,238
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review, we will affirm the enablement rejection of claim 23
and reverse the obviousness rejection of claims 1, 12, 14, 18,
and 23 through 27.
Claim 23 requires mounting the movable diffraction
grating windowpane for "rotational repositioning with respect
to said fixed diffraction grating windowpane." The examiner
asserts (Answer, page 5) that there is no enabling disclosure
for such rotational repositioning. Appellant (Brief, page 10)
points only to original claim 23 for enablement, stating that
"round
windowpanes presented in various forms as Figure 13 properly
reflect the language of original claim 23." (It should be
noted that Figure 13, to which appellant refers, is not part
of the original disclosure and has not been entered by the
examiner.)
We agree with the examiner that the specification as
originally filed does not provide enablement for claim 23.
Nowhere in the specification is there any mention of
rotational repositioning, and all figures are directed to
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Application No. 08/047,238
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windowpanes that move vertically, not rotationally. We
believe that round windows are old and well-known, and that
one of ordinary skill in the art would recognize that round
windows would be easier to rotate than square or rectangular
ones. However, we do not believe that the mounting of such a
window for "rotational repositioning with respect to said
fixed diffraction grating windowpane" such that it is
"selectively juxtaposable in or out of optical series with
said fixed diffraction grating windowpane" (as required by
claim 1, from which claim 23 depends) would be quite as clear
to the skilled artisan as appellant asserts.
To "rotate" is defined in The Random House College
Dictionary as "to cause to turn around an axis or center
point; revolve" or "to turn around on or as on an axis." Thus
rotational repositioning must involve turning around an axis
or
center point. Since the repositioning is "with respect to
said fixed diffraction grating windowpane," the axis about
which the movable windowpane must rotate appears to be the
fixed diffraction grating windowpane. However, it is unclear
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Application No. 08/047,238
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how the movable windowpane would be mounted to rotate in this
manner. Further, Figure 13, which was proposed to illustrate
claim 23, seems to suggest that the rotation is actually about
the center of the movable windowpane. Yet, it is unclear how
such a rotation would make the movable windowpane "selectively
juxtaposable in or out of optical series with said fixed
diffraction grating windowpane." In addition, the examiner
has identified other possible meanings for "rotational
repositioning" (Answer, pages 5-6), thereby further suggesting
a need for an explicit disclosure of what is meant by
"rotational repositioning." Since there is no such
disclosure, we must affirm the rejection of claim 23 as being
nonenabled.
As to the obviousness rejections, Zhang is directed to a
window using two polarizers, one fixed and one movable. The
polarizers create an optical shade by passing or blocking
incoming light depending on the relative positions of the two
polarizers. Gerritsen II uses diffraction gratings in a
window
to focus light in a particular direction regardless of the
angle of incidence. The examiner states (Answer, page 8) that
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[i]t would have been obvious to one of ordinary
skill to substitute the diffraction grating patterns
of Gerritsen, et al ('925) for the polarizing
patterns of Zhang, et al in the interest of not only
controlling the amount of light entering the room,
but rather, [the] range of entrance angles, the
range of exit angles, and the particular spectrum
manipulated, as taught by Gerritsen, et al ('925).
It is unclear to us how one would substitute Gerritsen II's
diffraction gratings for the polarizers of Zhang such that
moving one diffraction grating relative to the other would
vary the amount of light transmitted (the purpose of Zhang)
and still maintain a constant direction of transmitted light
(the purpose of Gerritsen II). "[A] proposed modification
[is] inappropriate for an obviousness inquiry when the
modification render[s] the prior art reference inoperable for
its intended purpose. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984)." In re Fritch, 972 F.2d
1260, 1265-1266 n. 12, 23 USPQ2d 1780, 1783 n. 12 (Fed. Cir.
1992).
The examiner contends (Answer, pages 13-14) that
"mobility of the respective planes in and out of optical
series . . . is fairly suggested by Zhang, et al, who, in the
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same field of endeavor, disposed optical elements in series to
control light
entering the room." Zhang does use multiple elements that
move in and out of optical series to control the amount of
light
entering the room. However, the diffraction gratings of
Gerritsen II are for focusing light rather than for varying
the amount of light entering. As Zhang's polarizers and
Gerritsen II's diffraction gratings do not have similar
functions, substitution of the diffraction gratings for the
polarizers is akin to comparing apples to oranges.
Furthermore, neither Zhang nor Gerritsen II is concerned
with controlling infrared light, or rather, the amount of heat
that is generated by the incoming light. The examiner states
that "[t]he particular selection of an infrared component for
control would have offered only advantages well-known and
obvious to those skilled in the art, and is not considered to
represent a patentable advance." (Answer, page 8). The
examiner, however, provides no explanation how one would
select controlling only the infrared light without defeating
the purpose of Zhang, to vary the brightness in the room.
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Additionally, the examiner has pointed to no teachings from
the prior art suggesting a desire for the ability to transmit
infrared radiation during one period and reflect, deflect, or
absorb infrared radiation during another
period, as required by claim 1. Therefore, we must reverse
the obviousness rejection of claims 1, 12, 23, 24, 26, and 27.
With respect to claims 14, 18, and 25, Gerritsen I,
Tietig, and Lueder do not cure the deficiencies in the
combination of
Zhang and Gerritsen II. Accordingly, we will reverse the
rejections of claims 14, 18, and 25.
CONCLUSION
We have affirmed the rejection of claim 23 under 35
U.S.C. § 112, first paragraph. We have reversed the
rejection of claims 1, 12, 14, 18, and 23 through 27 under 35
U.S.C. § 103. As a result, the decision of the examiner is
affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 1997-0689
Application No. 08/047,238
10
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
vsh
Appeal No. 1997-0689
Application No. 08/047,238
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CARL C. KLING
ANVIK CORP.
6 SKYLINE DRIVE
HAWTHORNE, NY 10532-2165