Ex parte Lesko et al.

Board of Patent Appeals and Interferences

Feb 12, 1999

08370153 (B.P.A.I. Feb. 12, 1999)

Application for patent filed January 9, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUB LICATION
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publication in a law journal and (2) is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JON M. LESKO and TIMOTHY M. SAMARAS
__________
Appeal No. 96-2893
Application 08/370,1531
___________
ON BRIEF
___________
Before THOMAS, JERRY SMITH and LALL, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s final
rejection of claims 1 through 24. Claims 1-24 were rejected in the final rejection mailed on
September 11, 1995. No amendments after final rejection were made. Accordingly,
claims 1-24 remain pending in this application, and the rejection of all of these claims is on
Appeal No. 1996-2893
Application 08/370,153
2
appeal before us.
The disclosed invention pertains to an apparatus for obtaining thermographic images
of surfaces within a combustion chamber in an internal combustion engine during its
operating state. The apparatus uses the conventional spark plug hole for fitting an image
sensing assembly to obtain a picture of the temperature distribution on various surfaces
within the combustion chamber. Claims 1, 6, 11 and 19 are the independent claims.
Claims 2-5, 7-10, 12-18 and 20-24 respectively depend from these independent claims.
Claim 1 is the broadest claim.
Representative claim 1 is reproduced as follows:
1. A thermal imaging system for use in an internal combustion engine having a
cylinder with a head and a hole extending through said head into said cylinder, said
thermal imaging system comprising:
a lens;
a spark plug having a housing, said spark plug being inserted in said hole in said
cylinder head;
an optical housing extending through said spark plug housing, said optical housing
having an internal passageway with a distal portion for supporting said lens to
provide a field of view within said cylinder and project an image of said field of view
through said internal passageway; and
camera means for receiving and recording said image provided by said optical
housing.
The examiner relies on the following references:
A complete list is as follows:
Appeal No. 1996-2893
Application 08/370,153
3
[The examiner has left out Boning et al., he has added Damson et al., Laurenz and
Szilagyi in his listing of the references. They are not used in the rejection before us. Also,
the Zhao et al. publication which was used as an alternate to Compton in the final rejection
was not listed in the examiner’s answer].
Harbert 2,841,979 July 8, 1958
Compton et al. (Compton) 3,584,509 Jun 15, 1971
Metz 3,759,151 Sep.18, 1973
Burkel et al. (Burkel) 4,409,815 Oct. 18, 1983
Dietz et al. (Dietz) 4,419,212 Dec. 6, 1983
Boning et al. (Boning) 4,446,723 May 8, 1984
SAE publication entitled "The Cylinder Head Temperature Measurement by Thermal
Imaging Technique" by Zhao et al., October 7-10, 1991.
Claims 1, 4-6, and 9-14 stand rejected under 35 U.S.C. § 103 as being unpatentable
over the basic combination of Boning, Dietz and Metz. Claims 2, 7, 15, 17, 19-20, 22, and
24 stand rejected under 35 U.S.C. § 103 as being unpatentable over the basic
combination considered further with Burkel. Claims 3, 8, 16, 18, 21 and 23 stand rejected
under 35 U.S.C. § 103 as being unpatentable over the basic combination considered
further with Compton or Zhao. [Note that the examiner’s reliance on the mere basic
combination in the above rejection of claims 21 and 23 is misplaced. He also needs
Burkel as he did for the rejection of claim 19 in the final rejection. As it turns out, this is
inconsequential].
The examiner further rejected claims 1, 3-6, 8, 10-11, and 16 as being obvious
Appeal No. 1996-2893
Application 08/370,153
4
under 35 U.S.C. § 103 over Harbert. He also rejected claims 2, 7, 15, 19, 21 and 24 as
being unpatentable over Harbert in view of Burkel. All these rejections are enumerated in
the answer and incorporated from the final rejection.
Rather than repeat the arguments of appellants or the examiner, we make reference
to the brief and the answer for the respective details thereof.
OPINION
We have carefully considered the subject matter on appeal, the rejections advanced
by the examiner and the evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken into consideration, in reaching
our decision, the appellants’ argument set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in rebuttal set forth in the examiner’s
answer.
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in claims 1-24. Accordingly, we
reverse.
We now consider the rejections under 35 U.S.C. § 103 in view of the evidence
presented in the record. In rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the examiner to establish a factual basis to support the legal conclusion of obviousness.
Appeal No. 1996-2893
Application 08/370,153
5
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual determinations set forth in Graham v.
John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (CCPA 1966), and to provide a
reason why one having ordinary skill in the pertinent art would have been led to modify the
prior art or to combine prior art references to arrive at the claimed invention. Such reason
must stem from some teaching, suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776
F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986);
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). These showings by the examiner are an essential part of complying with
the burden of presenting a prima facie case of obviousness. Note In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
A: Regarding Rejection of Claims 1, 4-6, 9-14
The examiner has rejected these claims over Boning in view of Dietz and Metz.
We take claim 1 as the exemplary claim. The examiner states that Boning shows the
spark plug structure having a light guide in the center. Dietz is used to supply the lens to
replace the pick up tip 13 in Boning. Still further, the examiner uses Metz to supply to the
Appeal No. 1996-2893
Application 08/370,153
6
above modified Boning structure the claimed camera means [answer, page 3, final
rejection, pages 2-4].
The appellants argue that the claimed invention is fundamentally different from the
prior art. The base reference, Boning, is related to a knock sensor. It measures the overall
temperature within the combustion chamber. It could not be used to provide images from
within the combustion chamber. Boning provides only the overall luminosity within the
combustion chamber [brief, page 5]. The appellants further argue that Dietz also is
concerned with a knock sensor device and the disc 6 in figure 1c is not a lens but a plain
disc to merely pass the light through. Dietz only senses the light from combustion, whereas
the claimed invention has a lens that gathers and transmits coherent light from the cylinder
"to provide" an "image" of the "field of view" [ brief, page 6]. Appellants further state that
the use of the camera of Metz in Boning is inappropriate as the Metz camera is used for
inspecting surfaces within the combustion chamber while the engine is not operating [brief,
page 7].
The examiner responds that the probe in Boning does transmit the "image" of
thermal variation in the combustion chamber, and disc 6 of Dietz can be ground to form a
lens [col. 4, lines 10-25] to focus light from the combustion chamber. The examiner further
responds that Metz is used simply to show that a camera can be used to record images of
the inside of a combustion chamber in an internal combustion engine. The examiner
Appeal No. 1996-2893
Application 08/370,153
7
justifies the combination of Boning, Dietz and Metz by asserting that both Boning and Dietz
are related to recording signals of light or thermal variations in a combustion chamber, and
Metz’s camera can replace simply the optical evaluation stage or unit in the above
combination for the thermographic image of the combustion process of an internal
combustion engine [answer, pages 7 and 8].
The appellants have made it abundantly clear that the invention is concerned with taking
thermographic or visual images while the engine is operating. A lens is needed to focus
the optical or thermal radiation to yield a coherent image of the radiating body, not just one
point or event. The claimed device provides a field of view within the cylinder and projects
an image of the same onto a camera film. This yields a thermographic image of the
surfaces within the cylinder. It is this interpretation of the claim that we have considered in
our ruling. A knock sensor device which is pretty typical of the prior art is concerned with
an event sensing, or an overall state of combustion in the combustion chamber. Neither
Boning nor Dietz relates to the subject of the invention as interpreted above. Both are
event sensors and record the overall luminosity or combustion. Metz does not cure this
deficiency.
The other independent claims 6 and 11 both have further limitations than claim 1. Since
the above combination does not support the rejection of claim 1, it cannot support the
rejection of claims 6 and 11 either. Claims 4, 5, 9, 10, 12, 13 and 14 which depend on
Appeal No. 1996-2893
Application 08/370,153
8
these independent claims cannot likewise be rejected on the above evidence.
B. Regarding Rejection of Claims 2, 7, 15, 19-20, 22 and 24
These claims are rejected on the combination of Boning, Dietz and Metz as
discussed above, and further in view of Burkel. Since Burkel does not overcome the
deficiencies noted in the combination of Boning, Dietz and Metz, the examiner’s rejection
of these claims fails for the same reasons discussed above in section A.
C. Regarding Rejection of Claims 3, 8, 16, 18, 21 and 23
These claims are rejected on the combination of Boning, Dietz and Metz as
discussed above, and further in view of Compton or the Zhao publication. [Note that the
examiner really needs Burkel as well for the rejection of claims 21 and 23 because they
depend on claim 19, for which Burkel was used. However, for this decision this omission
is unimportant]. Again since neither Compton nor Zhao can cure the shortcomings of the
combination of Boning, Dietz and Metz, the examiner’s rejection of these claims falls for
the reasons advanced in section A.
D. Regarding Rejection of Claims 1,3-6,8,10-11, and 16.
The examiner has rejected these claims as being obvious over Harbert alone. We
again take the broadest claim, claim 1, as the exemplary claim. The examiner states that
Harbert discloses a combustion study device which observes and records combustion
Appeal No. 1996-2893
Application 08/370,153
9
within an internal combustion engine. According to the examiner, Harbert has everything
except a lens. The examiner asserts that since Harbert discloses the use of a camera, it
would have been obvious to form a lens from the machining or polishing of the quartz or
sapphire rod in Harbert, for the purpose of focusing the light onto the photoelectric element
or camera [answer, page 4, final rejection, pages 9,10].
The appellants argue that Harbert, also, only discloses the sensor to study the
overall luminosity from the combustion phenomena in the cylinder. It does not contemplate
taking the thermal images from within the combustion chamber. Even though Harbert
mentions a camera to record the luminosity within the combustion chamber, it is only a
picture or image of a point in the chamber [brief, pages 11 and 12].
The examiner responds by basically repeating his contention in the final rejection
that the presence of the camera in the Harbert device suggests the modifying of Harbert’s
quartz rod into a lens which will then produce a thermographic image [answer, page 10].
We again deal with the fundamental difference between prior art such as Harbert
and the invention of claim 1. The difference is that the invention contemplates taking a
thermographic image of a field of view rather than an overall image of a point.
As we discussed in section A above, we rely on the applicants’ specification on the
explanation of this difference. As such, we find that Harbert does not teach or disclose the
invention of claim 1. We agree with the appellants that the examiner’s position is
Appeal No. 1996-2893
Application 08/370,153
10
unsupported by the record in this case.
Since claim 1 is the broadest claim and other claims contain further limitations,
Harbert also cannot meet the other claims. Accordingly, the examiner’s rejection of the
other above listed claims over Harbert also fails.
E. Regarding rejection of Claims 2, 7, 15, 19, 21, 24
The examiner has rejected these claims as being obvious over the combination of
Harbert as applied above and Burkel. The additional reference, Burkel, is used to teach
the use of spinel as the material for the making of the lens [answer, page 4, final rejection,
pages 10 and 11].
Since Burkel does not overcome the deficiencies of Harbert noted above, the
examiner’s rejection of these claims fails for the same reasons discussed above in section
D.
Since we are of the view that the prior art applied by the examiner does not support
the examiner’s rejection, we do not sustain the rejection of independent claims 1, 6, 11
and 19. Therefore, we also do not sustain the rejection of dependent claims
2-5, 7-10, 12-18 and 20-24.
In summary, we have not sustained any of the examiner’s rejections of the claims on
appeal. Therefore, the decision of the examiner rejecting claims 1 through 24 is reversed.
Appeal No. 1996-2893
Application 08/370,153
11
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PARSHOTAM LALL )
Administrative Patent Judge )
Dorr, Carson, Sloan & Peterson
3010 E 6th Avenue
Denver, CO 80206