Ex parte Nella et al.

Board of Patent Appeals and Interferences

Nov 10, 1999

08740887 (B.P.A.I. Nov. 10, 1999)

Application for patent filed November 4, 1996.1
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(2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN NELLA,
JOSEPH W. AUSTIN, and PETER M. LIVINGSTON
__________
Appeal No. 1998-2753
Application 08/740,8871
__________
ON BRIEF
__________
Before CALVERT, ABRAMS, and NASE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-3 and 5-7, which constitute all of
the claims remaining of record in the application.
Appeal No. 1998-2753
Application No. 08/740,887
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The appellants’ invention is directed to a target
detection, seeking and guidance system for a missile and to a
method for detecting, seeking and intercepting a target with a
missile. The subject matter before us on appeal is
illustrated by reference to claim 1, which reads as follows:
1. A target detection, seeking and guidance system for an
air-to-air, air-to-ground and/or ground-to-air missile
comprising
a hyperspectral imaging system for detecting a target
having a predetermined hyperspectral signature;
means for enabling the missile to track the target
matching the predetermined hyperspectral signature; and
means including a missile controller for guiding the
flight path of the missile to intercept the flight path of the
target matching said predetermined hyperspectral signature.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Pinson 5,323,987 Jun. 28,
1994
Davies 5,329,595 Jul. 12,
1994
Cutts 5,379,065 Jan. 3,
1995
“A System for the Processing and Analysis of Multi- and
Hyperspectral Data,” Lurie et al., SIG Technology Review,
Winter 1994, pp. 43-58 (Lurie)
THE REJECTIONS
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Application No. 08/740,887
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The following rejections stand under 35 U.S.C. § 103:
(1) Claims 1-3 and 5-7 on the basis of Pinson and Cutts.
(2) Claims 1-3 and 5-7 on the basis of Pinson and Davies.
(3) Claims 1-3 and 5-7 on the basis of Pinson and Lurie.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellants regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 9) for the reasoning in support
of the rejections, and to the Appellants’ Briefs (Paper Nos. 8
and 10), for the arguments thereagainst.
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
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
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Application No. 08/740,887
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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, 1439 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
The appellants’ invention is directed to target
detection, seeking and guidance systems for missiles that are
launched against targets. According to the opening page of
the specification, prior systems have tracked targets either
in a single or a few spectral bands, thus opening the door to
the effective use of countermeasures that prevent such systems
from acquiring and/or tracking the target. The appellants
further point out that the powers of discrimination of these
prior art systems were such that they could inadvertently
target friendly targets. The appellants’ invention is based
upon the principle that targets have hyperspectral signatures
that are formed from literally hundreds of spectra, which the
inventive system determines and utilizes.
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Claim 1 is representative of all four of the independent
claims. It requires a hyperspectral imaging system for
detecting a target having a predetermined hyperspectral
signature, means for enabling the missile to track the target
matching this signature, and means including a missile
controller for guiding the missile to intercept a target
matching the predetermined hyperspectral signature. All
three of the rejections set out by the examiner utilize Pinson
as the primary reference. Pinson discloses an optical target
detection, seeking and guidance system that appears, at best,
to be an example of the prior art systems over which the
appellants believe their system to be an improvement. In any
event, the examiner concedes that Pinson “does not disclose a
hyperspectral imaging system for detecting and tracking a
target having a hyperspectral signature” (Answer, page 4). It
is the examiner’s position, however, that each of the three
secondary references discloses a hyperspectral imaging system
for flight vehicles “that detects and tracks targets” (with
regard to Cutts, Answer, page 4), and that it therefore would
have been obvious to modify Pinson by replacing the disclosed
system with a hyperspectral one. The appellants argue that
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one of ordinary skill in the art would not have been motivated
to combine the teachings in the manner proposed by the
examiner. We agree with the appellants.
We begin our analysis by focusing on the admonition of
our reviewing court that the mere fact that the prior art
could be modified does not make such a modification obvious
unless the prior art suggests the desirability of doing so.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). For the reasons hereinafter stated, it is our
view that the applied prior art fails to suggest the
desirability of the modification to Pinson that has been
proposed by the examiner. First of all, there is no mention
in any of the three secondary references of utilizing
hyperspectral imaging for a missile firing system. Cutts
teaches utilizing hyperspectral imaging from a vehicle in
space to scan the earth (column 3, lines 1-2 and 50) for the
purpose of identifying mineral or vegetative types (column 7,
lines 65-66). While the appellants have acknowledged that the
system disclosed in Davies would be “suitable for use” in the
claimed missile system (specification, page 4), the reference
does not mention such use, suggesting only that the system be
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used in “earth monitoring satellites” (column 1, lines 24-25),
such as oceanography, mapping and mineral exploration, for
example (column 1, lines 51-54). The only uses suggested in
the Lurie reference are in space borne cameras that monitor
environmental and agricultural situations (page 44). Thus,
the “targets” to which the examiner refers in the Answer as
being tracked by the hyperspectral systems of the three
secondary references are not the types of targets that are
defined in the appellants’ specification as being the focus of
missile systems. Second, the claims before us on appeal all
require that the system detect, track, and guide a missile
based upon the “predetermined hyperspectral signature of a
target of interest” which, as we understand the teachings of
the applied references, is not the manner in which these
systems operate. Third, none of the applied references
recognize the problems to which the appellants’ invention are
directed, namely, providing a target tracking system for
missiles that provides a high degree of recognition and is
immune to countermeasures.
We therefore fail to perceive any teaching, suggestion or
incentive in the applied references which would have led one
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of ordinary skill in the art to replace the imaging system
disclosed by Pinson with one that responds to the
predetermined hyperspectral signature of a target. It would
appear that the only suggestion for doing so is provided by
the luxury of the hindsight accorded one who first viewed the
appellants’ disclosure. This, of course, is not a proper
basis for a rejection under 35 U.S.C. § 103. See, for
example, In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992).
SUMMARY
The combined teachings of Pinson and each of the three
secondary references fail to establish a prima facie case of
obviousness with regard to the subject matter of the
appellants’ claims. This being the case:
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
Appeal No. 1998-2753
Application No. 08/740,887
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Ian A. Calvert )
Administrative Patent Judge )
)
)
)
Neal E. Abrams ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jeffrey V. Nase )
Administrative Patent Judge )
tdl
Appeal No. 1998-2753
Application No. 08/740,887
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Patent Counsel
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