Ex parte Lee et al.

Board of Patent Appeals and Interferences

May 31, 2000

08199304 (B.P.A.I. May. 31, 2000)

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not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PETER R. LEE and FRANCIS S. BAKER
__________
Appeal No. 1998-1296
Application 08/199,304
___________
HEARD: May 17, 2000
___________
Before ABRAMS, McQUADE and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-4, 12-17, 19-24 and 26-28 (Paper
No. 21). At that point in the prosecution, claims 5-11, 18
Appeal No. 1998-1296
Application 08/199,304
The rejection of claims 1-4, 12-15 and 22 as being1
unpatentable over Tahara in view of General Dynamics.
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and 25 had been allowed. However, the examiner subsequently
withdrew one of the rejections under 35 U.S.C. § 103 and1
indicated that claims 3, 4, 12, 14, 17, 20, 21, 24 and 27
contained allowable subject matter (Answer, page 2). As a
result, only claims 1, 2, 13, 15, 16, 19, 22, 23, 26 and 28
remain before us on appeal.
The claims on appeal are directed to an apparatus for the
initiation of a propellant (claims 1, 2, 13, 15, 16 and 19)
and a method for the initiation of a propellant (claims 22,
23, 26 and 28). These claims have been reproduced in an
appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Christianson 3,601,054 Aug. 24,
1971
Microwave Resonant Absorption of Potential Exothermic
Compounds, Final Report (General Dynamics) Dec.
22, 1989
Appeal No. 1998-1296
Application 08/199,304
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THE REJECTION
Claims 1, 2, 13, 15, 16, 19, 22, 23, 26 and 28 stand
rejected under 35 U.S.C. §103 as being unpatentable over
Christianson in view of General Dynamics.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejection and the
conflicting viewpoints advanced by the examiner and the
appellants regarding the rejection, we make reference to the
Examiner’s Answer (Paper No. 24) and the Appellants’ Briefs
(Papers No. 23 and 25).
OPINION
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
Appeal No. 1998-1296
Application 08/199,304
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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, Uniroyal ,Inc. V. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
The appellants’ invention deals with the initiation of
propellants by the use of microwave energy. As manifested in
claim 1, the invention comprises a combustion chamber, a
charge of propellant in the chamber and means for igniting the
propellant by microwave heating, with the means for igniting
the propellant in turn comprising a source of microwave
energy, a microwave transparent window in a wall of the
chamber, means for applying microwaves from the source, and
Appeal No. 1998-1296
Application 08/199,304
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microwave sensitive material for absorbing microwave energy to
heat and ignite the propellant. The claim also requires that
at least a portion of the combustion chamber be “a
substantially resonant cavity having a fixed size for the
microwaves.” Similar presentations of the invention appear in
independent apparatus claim 13 and in independent method claim
22.
Christianson is directed to igniting propellant by the
use of electromagnetic radiation. In the structure disclosed,
the propellant chamber is provided with a parabolic surface to
reflect the microwave energy and focus it upon clusters of
microwave sensitive material imbedded in the propellant.
While there are some similarities between the Christianson
system and the appellants’ invention, as the examiner
acknowledges in the rejection, Christianson does not disclose
providing the propellant chamber with a resonant cavity having
a fixed size for the microwaves. For this feature, the
examiner looks to General Dynamics, concluding that the
teachings of General Dynamics would have motivated one of
ordinary skill in the art to incorporate a resonant cavity in
Appeal No. 1998-1296
Application 08/199,304
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the Christianson ignitor. We do not agree.
General Dynamics is a report on investigation into “the
microwave resonant absorption of ten energetic compounds” over
a particular frequency range (Executive Summary). The
objective of the tests was to determine if significant
resonant absorption occurred in the selected materials, and
whether the radiation could be used to detonate the compounds
(page 1). No detonation, deflagration or decomposition of any
of the samples was observed (page 21), so it is clear that the
means utilized did not constitute an apparatus or method for
the initiation of a propellant. More important to our
analysis of the obviousness of the subject matter recited in
the appellants’ claims, however, is
that even giving the text of this reference its most
charitable interpretation, it is clear to us that it does not
teach utilizing a resonant cavity at all, much less a resonant
cavity positioned within the combustion chamber.
The mere fact that the prior art structure could be
modified does not make such a modification obvious unless the
Appeal No. 1998-1296
Application 08/199,304
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prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). In the present case, we fail to perceive any teaching,
suggestion or incentive in the applied references which would
have led one of ordinary skill in the art to modify or augment
the structure disclosed by Christianson in such a manner as to
meet the terms of independent claims 1, 13 and 22. We are not
persuaded otherwise by examiner’s opinion on page 4 of the
Answer that the “sharp peaks” in resonance observed in the
General Dynamics tests would have provided the requisite
suggestion to the artisan “because . . . [such] would promote
a faster and more energetic ignition.” In this regard, it is
notable that the examiner has provided no evidence in support
of this conclusion. Moreover, even if that were the case, the
requirement for a “resonant cavity” has not been reached, and
that is what the claims require.
It therefore is our opinion that the combined teachings
of Christianson and General Dynamics fail to establish a prima
facie case of obviousness with respect to the subject matter
recited in the claims, and we will not sustain the rejection.
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Application 08/199,304
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The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NEA:pgg
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Application 08/199,304
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