Ex Parte Montfort et al

Board of Patent Appeals and Interferences

Sep 28, 2009

10687585 (B.P.A.I. Sep. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERIC MONTFORT, CEDRIC SALENC,
XAVIER ROSER and LOIC GAUDIC
__________

Appeal 2009-003764
Application 10/687,585
Technology Center 3600
__________

Decided: January 13, 2010
__________

Before LINDA E. HORNER, JOHN C. KERINS, and STEVEN D.A.
MCCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants request rehearing of the decision entered September 29,
2009 (“Decision”). In that Decision, rejections of claims 8, 10, 12, and 13
under 35 U.S.C. § 102(b), and of claims 4-7, 9, 11 and 14-16 under 35
U.S.C. § 103(a) were affirmed.
Requests for Rehearing are limited to matters misapprehended or
Appeal 2009-003764
Application 10/687,585

2
overlooked by the Panel in rendering the original decision. 37 C.F.R.
§ 41.52(a)(1). Appellants’ Request asserts that, in affirming the rejections of
the claims on appeal, the Panel misapprehended the disclosure of the
Heiberg patent (US 5,944,761, issued Aug. 31, 1999), and overlooked
evidence in the form of the previously-cited Markley reference that
Appellants contend supports their position with respect to the Heiberg
patent.
The issue presented initially on appeal and now in Appellants’
Request is whether the Heiberg patent inherently discloses the claim element
of “an attitude regulation loop including a corrector such that the bandwidth
of said loop contains the lowest and most energetic frequencies of the
flexible modes” of elongated members disposed on a geostationary satellite.
(Appeal Br., Claims Appendix)(emphasis added).
Appellants’ first contention is that the Decision focused on language
found in Heiberg to the effect that the corrector therein operates to null
disturbance frequencies which are “known and constant”, and that simply
establishing that a frequency is known and constant is not sufficient to
establish that the claimed corrector of the attitude correction loop having the
recited bandwidth is disclosed by Heiberg. (Request 2). The focus or
emphasis of the paragraph in the Decision in which the “known and
constant” discussion appears was primarily that Heiberg discloses that its
system is intended to null or damp frequencies of disturbances [plural],
whereas Appellants contended that the Heiberg system “only discloses that
the control loop would include the frequency [singular] ωd, which does not
include the lowest and most energetic frequency.” (Appeal Br. 12).
Similarly, Appellants contended that “Heiberg discloses the frequency
Appeal 2009-003764
Application 10/687,585

3
rejection system 10 in FIG. 1 as an example for compensation disturbances
of a fixed frequency [singular] . . . . With respect to such a fixed frequency
rejection system, Heiberg does not even address the issue of operating such a
system in different frequency bands.” (Reply Br. 5).
The Decision further emphasized that Heiberg disclosed that those
frequencies were “known and constant” to indicate: (1) that the Panel did not
agree with Appellants’ further contention that, “Heiberg is concerned only
with dealing with vibrations which change frequency with time” (Appeal Br.
12); and (2) that Heiberg discloses the correction circuit to be operable to
null the known and constant disturbance frequencies. In combination with
the disclosure elsewhere in Heiberg evidencing that flexible modes of
elongated members were disturbances of the type to be corrected by the
circuit, the latter point was found to support the Examiner’s contention that
the lowest and most energetic frequencies of the flexible modes would
necessarily be included in the bandwidth of the corrector, otherwise it would
not function as intended.
Appellants’ above contentions directed to the alleged disclosure of
correcting for disturbances of only a single frequency, and to the alleged
disclosure of correcting only for vibrations that change frequency over time,
were Appellants’ main contentions purporting to evidence that Heiberg
could not be construed as inherently disclosing the claimed element
involving a bandwidth including the lowest and most energetic frequencies.
Finding the contentions to be unsupported by, and even contradicted by, the
portions of the Heiberg disclosure relied on by the Examiner, we were not
persuaded that the Examiner erred in finding that Heiberg inherently
discloses the claimed subject matter at issue.
Appeal 2009-003764
Application 10/687,585

4
Appellants’ second contention is that the statement at page 12 of the
Decision that, “in order to function properly in its bandwidth, Heiberg needs
only to make sure that the compensator recognizes frequencies in its
bandwidth” (Decision 12), misapprehends the point at issue and “has
nothing to do with the question of whether the frequencies are the lowest and
most energetic frequencies, as claimed.” (Request 2-3). This is essentially
the point being made in the Decision. The statement quoted above from
page 12 of the Decision initially appeared as a contention in Appellants’
Reply Brief (Reply Br. 8), and was identified in the Decision as Appellants’
contention. The Decision simply noted that this characterization of Heiberg
was not inconsistent with the Examiner’s finding that the Heiberg device
necessarily includes the lowest and most energetic frequencies in its
corrector bandwidth, and the characterization was thus (impliedly) not
persuasive of error in the Examiner’s position. Appellants’ more direct
statement in the Request that one has nothing to do with the other further
reinforces that the argument fails to show error in the Examiner’s position.
Appellants’ third contention is directed to Judge McCarthy’s
concurring opinion, in which Judge McCarthy found that the Examiner had
adequately established that the Heiberg patent was sufficiently similar from
a structural standpoint to the claimed invention so as to shift the burden to
Appellants to establish that the claim element at issue, noted as being recited
in the claims in functional form, was not inherent in the Heiberg patent.
(Request 3). Appellants argue that while Judge McCarthy’s statement of the
law is correct, it presumes a fact not in evidence, namely that Heiberg does
not describe, expressly or inherently, the claim element at issue. (Id.).
Appellants’ argument misses the mark. Judge McCarthy’s concurring
Appeal 2009-003764
Application 10/687,585

5
opinion noted that, with the burden having been shifted to Appellants to
establish by evidence that the claim element was not inherent, Appellants
had presented no such evidence and had thus not carried their burden of
showing that the claim element at issue was not inherent.
Appellants’ final contention is that the Decision overlooked an
argument made by Appellants directed to the Markley reference1,2, to the
effect that Markley evidences that not including the lowest and most
energetic frequencies in a control loop bandwidth is a possibility, thus
negating any finding of inherency. (Appeal Br. 14). Notwithstanding the
omission of a discussion of this argument in the Decision, the argument was
considered, but was found to not be persuasive.
Appellants contend that the Markley reference teaches a bandwidth in
which the lowest and most energetic frequencies are avoided. (Request 3;
Appeal Br. 14). In their Appeal Brief, this was argued as evidencing that a
control system did not necessarily need to include the lowest and most
energetic frequencies, and thus a finding of inherency was improper.
(Appeal Br. 14). Appellants attempt to go one step farther in the Request,
asserting that the avoidance of the lowest and most energetic frequencies
evidences that those frequencies would not have been used by a person of
ordinary skill in the art, and that the person of ordinary skill in the art would
have excluded the lowest and most energetic frequencies from the

1 F.L. Markley et al., Attitude Control System Conceptual Design for
Geostationary Operational Environmental Satellite Spacecraft Series,
Journal of Guidance, Control, and Dynamics, Vol. 18, No. 2, March-April
1995.

2 The Markley reference is not presently relied upon in any rejection of the
claims.
Appeal 2009-003764
Application 10/687,585

6
bandwidth. (Request 3). We need not entertain these belated contentions, as
they were not raised in the Appeal Brief or the Reply Brief. 37 CFR
41.52(a)(1) (2009).
Appellants’ characterization of the Markley disclosure fails to tell the
whole story. Markley indeed teaches a bandwidth in which the lowest and
most energetic frequencies of the flexible modes are avoided, as Appellants
contend. Markley, however, also teaches a bandwidth provided expressly to
encompass the lowest and most energetic frequencies, and to correct for
disturbances occurring at these frequencies. More specifically, Markley
discloses a spacecraft controller system having a bandwidth of 0.1 Hz,
whereas the first significant flexible mode of the solar array is disclosed as
being expected to be between 0.5 and 1.0 Hz. (Markley, p. 250, col. 2, ll.
10-11 and ll. 18-20). Markley further discloses “a spacecraft motion
compensation system to attenuate disturbances of frequencies between the
[spacecraft] controller bandwidth and 5 Hz, since they would cause
spacecraft jitter if unattenuated.” (Id. at p. 250, l. 46-p. 251, l. 2). The
former maintains spacecraft pointing by reaction wheel control, while the
latter repoints the instrument mirrors to compensate for attitude errors
brought about by the disturbance frequencies in its bandwidth (0.1-5 Hz),
which include the frequency (0.5-1 Hz) of at least the expected first (lowest
frequency) significant flexible mode of the solar array. (Id. at p. 247, ll. 20-
26).
Thus, Appellants’ contention is limited to what Markley calls the
spacecraft controller or pointer system. That system is not concerned with,
and specifically avoids, attempting to correct for disturbances at the lowest
and most energetic frequencies of the flexible modes of the elongated
Appeal 2009-003764
Application 10/687,585

7
members. Inasmuch as the Heiberg control system relied upon by the
Examiner operates to compensate for disturbances such as those resulting
from vibrations of flexible elongated members, so as to maintain a fixed
pointing direction of a spacecraft (Heiberg, col. 1, ll. 11-29; col. 2, ll. 31-64),
the relevance of the Markley spacecraft controller or pointer system as
evidencing anything regarding a lack of inherency in the Heiberg control
system, has not been established by Appellants.
To the extent that Appellants are contending that the bandwidth of the
Markley spacecraft controller is relevant to what Heiberg inherently
discloses because both involve pointing the spacecraft, as noted above,
Markley avoids contending with the frequencies of the flexible modes,
leaving that to a mirror repointing system. Heiberg, in contrast, directly and
expressly accounts for the flexible modes of the elongated members in its
control system. (Id.). Again, Appellants have failed to establish how the
bandwidth of the Markley spacecraft controller evidences that Heiberg might
not or would not include a bandwidth as claimed by Appellants. Markley
addresses the problem of disturbances caused by flexible modes in a
completely different manner than does Heiberg. If anything, Markley’s
mirror repointing system evidences that it was known to those of ordinary
skill in the art that compensation for disturbances in a frequency bandwidth
that encompasses the lowest and most energetic frequencies of the flexible
modes should be undertaken. This buttresses the Examiner’s contention that
the Heiberg control system must necessarily have a bandwidth
encompassing these frequencies, lest it would not perform its intended
function.
We have carefully reviewed Appellants’ Request for Rehearing. We
Appeal 2009-003764
Application 10/687,585

8
have granted the Request to the extent that Appellants’ arguments have been
considered, and to the extent that we have introduced an analysis of
Appellants’ argument directed to the Markley reference, but we deny the
Request with respect to making any changes in the decision to affirm the
extant rejections of the pending claims.
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) (2007).

REHEARING DENIED

mls

SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, D.C. 20037