Ex Parte McNeish et al

Patent Trial and Appeal Board

Feb 9, 2017

13591251 (P.T.A.B. Feb. 9, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/591,251 08/22/2012 AT .T.TSTF.R MCNEISH BAEP-1344US1 2509
22500 7590 02/13/2017
RAF SYSTRMS
EXAMINER
PO BOX 868 CHEN, CHIA WEI A
NHQ1-719
NASHUA, NH 03061-0868 ART UNIT PAPER NUMBER
2664
NOTIFICATION DATE DELIVERY MODE
02/13/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail@baesystems.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLISTER MCNEISH and WILL R. GRIGSBY
Appeal 2016-003957
Application 13/591,251
Technology Center 2600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
JOHN P. PINKERTON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—7, which are all the claims remaining in the
application. Claim 8 is cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We Affirm.
Appeal 2016-003957
Application 13/591,251
Invention
The disclosed and claimed invention on appeal “relates to field of
view elevation selection and more particularly to a system for electronically
selecting the field of view.” (Spec. 12).
Representative Claim
1. An uncooled thermal imaging long wave infrared
periscope assembly in a combat vehicle for enhancing driver’s
vision, comprising:
a lens assembly configured to focus radiation coming
from an external field of view on to a fixed focal plane
assembly;
the fixed focal plane assembly that is oversized to
substantially cover an entire vertical field of regard and
configured to receive the focused radiation from the lens
assembly and to output a signal based on a desired vertical field
of view that is electronically selected over the entire vertical
field of regard; and
a video controller electronically coupled to the signal
from the fixed focal plane assembly and to generate an image
based on the desired vertical field of view for enhancing the
driver’s vision in the combat vehicle.
Rejections
A. Claims 1—3, 6, and 7 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Rabbani (US 2006/0274156
Al; Pub. Date Dec. 7, 2006) and Wrobel (US 6,563,102 Bl).
B. Claims 4 and 5 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Rabbani, Wrobel, and Shamir (US
2006/0291849 Al; Dec. 28, 2006).
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Application 13/591,251
Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative claim 1. We
address rejection B separately, infra. To the extent Appellants have not
advanced separate, substantive arguments for particular rejected claims or
issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We find Appellants’ arguments unpersuasive for the reasons
discussed infra. We adopt as our own: (1) the findings and legal conclusions
set forth by the Examiner in the Final Office Action from which this appeal
is taken (Final Act. 5—9), and (2) the findings, legal conclusions, and
explanations set forth in the Answer in response to Appellant’s arguments
(Ans. 7—12). We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection A of Representative Claim 1
In reviewing the Brief for contested claim limitations, we note
Appellants merely recite the claim language (Br. 4), and reproduce the
Examiner’s findings (Br. 5—7). 1 However, we find Appellants fail to
substantively contest specific limitations with persuasive argument and/or
evidence.2 3Our reviewing court guides that mere conclusory statements
1 See 37 C.F.R. § 41.37(c)(l)(iv)(“A statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim.”).
2 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
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Application 13/591,251
which are unsupported by factual evidence are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
However, Appellants further contend (Br. 9):
Rabbani’s problems are about providing cameras and methods,
which provide improved digital stabilization of image
sequences with limited computational resources. Rabbani’s
teachings are aimed at addressing these problems. But there is
no teaching or suggestion in Rabbani about any problems
related to [an] uncooled thermal imaging long wave infrared
periscope assembly in a combat vehicle for enhancing driver’s
vision.
We find Appellants are attacking Rabbani in isolation {id.), because
the Examiner relies on Wrobel for teaching the contested preamble
limitations of claim 1: “An uncooled thermal imaging long wave infrared
periscope assembly in a combat vehicle for enhancing driver’s vision . . . .”
See Final Act. 6—7; Ans. 9 (citing Wrobel col. 1,11. 18—38).
Our reviewing court guides that one cannot show nonobviousness
by attacking references individually where the rejections are based on
combinations of references. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Moreover, “the question under 35 U.S.C. § 103 is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Accord Ex parte Belinne, No. 2009-004693, 2009 WL 2477843,
at *4 (BPAI Aug. 10, 2009) (Informative) (“Appellants’ argument. . .
repeatedly restates elements of the claim language [] and simply argues that
the elements are missing from the reference.”)
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Application 13/591,251
made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F. 2d 804,
807—808 (Fed. Cir. 1989) (citation omitted); see also MPEP § 2123.
Therefore, for the aforementioned reasons, and to the extent
Appellants contest specific claim limitations, we find Appellants’
contentions are not supported by a preponderance of the evidence.
Combinability of the Cited References under §103
Issue: Under 35 U.S.C. § 103, did the Examiner err by improperly
combining the Rabbani and Wrobel references?
Appellants (Br. 7—8) focus their arguments on the combinability of the
references under § 103. In particular, Appellants contend Rabbani flflf 1, 20)
is non-analogous art directed to a different field of endeavor (i.e., image
sequence stabilization in a digital camera) from the claimed invention, inter
alia, because “[tjhere is no mention or suggestion of [a] periscope assembly
in Rabbani.” (Br. 8). Appellants additionally urge that Rabbani is not
reasonably pertinent to the problem faced by the inventor because, inter
alia:
[Appellants’] specification addresses the problem in existing
techniques of selecting an elevational field of view in the
combat vehicle uncooled thermal imaging long wave infrared
periscope assembly that use either a tilting periscope mirror or a
vertically sliding focal plane assembly. Each of these
techniques is used extensively and has moving mechanical parts
that either tilt the mirror or slide the focal plane assembly.
Such moving parts may increase the complexity of the design
and may result in reduced reliability over time.
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Application 13/591,251
In support, Appellants again point out that “Rabbani, on the other
hand, addresses the problems in digital stabilization of image sequences in
digital cameras or video cameras.” (Br. 8).
Regarding Appellants’ contention that Rabbani is non-analogous art,
the Examiner disagrees on both points:
[The] Examiner respectfully disagrees with the assessment that
Rabbani is not from the same field of endeavor as the claimed
invention. Rabbani teaches that "the stabilized image
sequence is available for viewing during capture," see
paragraph 0142 so that a user can capture and view video
without undesirable camera jitter, see paragraph 0139. Thus,
improving user experience in viewing a video without
undesirable camera jitter by using an oversized imager is
analogous to "enhancing driver vision" in a combat vehicle
using an oversized fixed focal plane assembly. As to the
periscope assembly, this limitation is addressed in the Wrobel
reference, described above.
(Ans. 11) (emphasis added).
Rabbani teaches that image stabilization (i.e.,
enhancement of viewing experience) is performed using
software techniques without mechanical moving parts, see
paragraphs 0003-0004: "Optical stabilization is effective, but at
the cost of additional camera weight, extra components, and
required power. These requirements go against the general
trend of miniaturization in cameras. Stabilization can also be
accomplished by determining camera motion either
electronically or digitally, and compensating for this motion
by selecting an appropriately offset image region from an
oversized electronic imager or image sensor, such as a CCD or
CMOS imager," (emphasis added). Thus, Rabbani is
reasonably pertinent to the problem of the instant invention of
reducing mechanical moving parts that increase the
compatibility and design of the system.
(Ans. 11—12) (underline in original, italics added for emphasis).
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Our reviewing court guides that “[a] reference is reasonably pertinent
if, even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992). The Supreme Court further guides that “familiar items may have
obvious uses beyond their primary purposes.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 402 (2007).
Here, we find a preponderance of the evidence supports the
Examiner’s finding that Rabbani’s description (H 3 4) of improving the
“user experience in viewing a video without undesirable camera jitter by
using an oversized imager is analogous to [Appellants’ claimed invention
regarding] ‘enhancing driver vision’ in a combat vehicle using an oversized
fixed focal plane assembly.'” (Ans. 11; claim 1) (emphasis added).
In particular, we find Rabbani’s teaching of using an “oversized
imager (1 115) to facilitate image stabilization logically would have
commended itself to the inventor’s attention, because the invention on
appeal describes using a “fixed focal plane assembly, that is oversized to
substantially cover an entire field of regard, [that] is configured to receive
the focused radiation from the lens assembly and to output a signal.” (Spec.
15) (emphasis added). Thus, we find the portions of Rabbani (e.g., H 3, 4,
115) relied on by the Examiner (Ans. 8, 11) are directed to essentially the
same problem, purpose, and goal as addressed by the inventors of the
claimed invention on appeal. See Innovention Toys, LLC v. MCA
Entertainment, Inc., 637 F.3d 1314, 1322 (2011).
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We further find a preponderance of the evidence supports the
Examiner’s finding (Ans. 11) that Rabbani’s approach (| 3) of using
software techniques without the “additional camera weight [of] extra
components” is reasonably pertinent to the described problem of the
instant invention of reducing mechanical moving parts which increase the
compatibility and design of the system. See Spec. |4: “Such moving parts
may increase the complexity of the design and may result in reduced
reliability over time.” We additionally note Appellants do not further rebut
the Examiner’s findings by filing a Reply Brief.
For essentially the same reasons articulated by the Examiner in the
Answer (7—12), we find the combined teachings of Rabbani and Wrobel
teach or suggest all that is contested by Appellants. Therefore, on this
record, and given the evidence relied on by the Examiner (Final Act. 5—7;
Ans. 7—12), as further discussed above, we find Appellants’ arguments
unavailing. Accordingly, we sustain rejection A of representative claim 1.
The associated grouped claims, which were rejected under rejection A, fall
with claim 1. See “Grouping of Claims’ '' supra.
Rejection B of Claims 4 and 5
Appellants do not separately contest the patentability of the remaining
claims 4 and 5 on appeal. Instead, Appellants rely on arguments previously
advanced for independent claim 1, and urge the additionally cited Shamir
secondary reference fails to overcome the purported deficiencies of the base
combination of Rabbani and Wrobel. (App. Br. 10).
However, for the same reasons discussed above regarding claim 1, we
find these arguments unpersuasive. Accordingly, we sustain the Examiner’s
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Application 13/591,251
rejection B of remaining claims 4 and 5, over the cited combination of
Rabbani, Wrobel, and Shamir.
Conclusion
For at least the aforementioned reasons, and on this record, Appellants
have not persuaded us the Examiner erred. We find a preponderance of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness for all contested claims on appeal.
DECISION
We affirm the Examiner’s decision rejecting claims 1—7 under
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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