Ex parte Palmiter et al.

Board of Patent Appeals and Interferences

Apr 29, 1999

08126439 (B.P.A.I. Apr. 29, 1999)

Application for patent filed September 24, 1993. According to appellants, the1
application is a continuation of Application 07/687,660, filed April 19, 1991, now
abandoned.
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not binding precedent of the Board.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. 44
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PAUL S. PALMITER
and
LAWRENCE H. WESTERLUND
__________
Appeal No. 96-0423
Application 08/126,4391
__________
HEARD: April 7, 1999
__________
Before THOMAS, DIXON, and FRAHM, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0423
Application 08/126,439
2
Appellants have appealed to the Board from the examiner’s
final rejection of claims 3, 10, 11 and 15 through 18, which
constitute all the claims remaining in the application.
The sole independent claim 3 is reproduced below:
3. An apparatus for tracking satellite motion at an
antenna, said antenna having a pointing axis with associated
hour angle and declination, said apparatus comprising:
oscillation means for automatically imparting a periodic
oscillation to the hour angle and the declination of said
antenna.
The following references are relied on by the examiner:
Longhurst et al. (Longhurst) 4,126,865 Nov.
21, 1978
Crean 4,628,323 Dec. 9,
1986
Rothbarth et al. (Rothbarth) 4,692,771 Sep.
8, 1987
Gorton et al. (Gorton) 5,077,561 Dec. 31,
1991
(filed May 8,
1990)
Claims 3, 10, 11, and 15 through 17 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Longhurst. These
same claims also stand rejected under 35 U.S.C. § 102(e) as
Appeal No. 96-0423
Application 08/126,439
3
being anticipated by Gorton. Finally, all claims on appeal,
claims 3, 10, 11 and 15 through 18 stand rejected under 35
U.S.C. § 103. As evidence of obviousness, the examiner
presents Longhurst in view of Rothbarth and Crean.
Rather than repeat the positions of the appellants and
the examiner, reference is made to the briefs and the answer
for the respective details thereof.
OPINION
We reverse each of the respective rejections of the
claims on appeal.
As to the rejection under 35 U.S.C. § 102 for the
majority of the pending claims on appeal in view of Longhurst,
we agree with the appellants’ position at pages 5 and 6 of the
brief that Longhurst within 35 U.S.C. § 102 does not teach
periodic oscillation of his dish antenna 1 about the hour
angle axis. This hour angle axis is initially set and then
fixed as disclosed within this reference. This understanding,
though expressed throughout the disclosure of Longhurst, is
most succinctly stated in the abstract of the disclosure.
Longhurst explicitly teaches that declination changes may be
Appeal No. 96-0423
Application 08/126,439
4
automatically imparted on a periodic oscillatory basis, to the
extent claimed, by means of the motorized arrangement 12
through 17 in the Figures 1 and 5 embodiments. In contrast,
the corresponding teachings and showings with respect to these
two embodiments and the written description portion of the
specification of Longhurst makes clear that any changeability
of the so-called hour angle of the antenna 1 about the polar
axis of shaft 6 is done in an initial setting environment
which remains fixed for any given satellite. Thus, there
could be no periodic oscillation by any means according to the
common, normal meanings of these terms to the extent claimed
of the hour angle of the antenna 1 in Longhurst. Stated
differently, there is no teaching in Longhurst that any
movement of the antenna about the polar axis 6 occurs on a
periodic or recurring and regular interval basis. Similarly,
there is no oscillatory action of the antenna about the polar
axis of shaft 6 such as to cause the antenna to swing backward
and forward like a pendulum or backward and forward between
two extremes on a periodic or regular basis. As disclosed,
there can be no automatic imparting of such periodic
oscillation of the hour angle in Longhurst as well.
Appeal No. 96-0423
Application 08/126,439
5
The examiner’s position is simply misplaced as to this
aspect of the requirement of claim 3 on appeal. The adjust-
ability of the hour angle in Figure 1 of Longhurst by means of
the locking screw 8 about the polar axis of shaft 6 and by
means of the hand crank arrangement 34 through 36 about the
same axis in the Figure 5 embodiment, contrary to the
examiner’s assertions, is not automatic and not periodic and
not oscillatory as taught in Longhurst. In the context of the
rejection under
35 U.S.C. § 103, the examiner’s position at page 5 of the
answer appears to recognize that the manual oscillatory
adjustability of the antenna structure in Longhurst is not
automatic to the extent
claimed anyway. In view of the foregoing, the decision of the
examiner rejecting claims 3, 10, 11 and 15 through 17 under
35 U.S.C. § 102 as anticipated by Longhurst is reversed.
Turning next to the rejection under 35 U.S.C. § 102 of
the same claims in view of Gorton, we also reverse this
rejection. Contrary to the assertions of the examiner at page
4 of the answer, there is no periodic oscillation let alone an
automatic periodic oscillation to both the hour angle and the
Appeal No. 96-0423
Application 08/126,439
6
declination adjustments in the antenna structure in Gorton. We
do, however, recognize that Gorton does explicitly teach a
periodic oscillatory motion of the antenna to follow a
satellite on a sidereal day basis only for the declination
adjustability of his antenna in this reference. To the
extent, for example, the abstract of Gorton expresses that the
antenna may automatically adjust the declination angle of the
antenna as a function of time, it would necessarily do it on a
periodic oscillatory basis for a given sidereal day in an
effort to maximize the signal strength received in the antenna
from the satellite. This aspect is brought out among the
various flow chart figures and the written description of
Gorton relating to the computerized control of the motor
arrangement 80 by the computer 20 in Figure 1.
We make reference on our own to the initializing flow
chart Figure 4 of Gorton and its flow chart steps 112 through
116 as well as column 7, lines 29 through 36. It appears that
the reference as a whole teaches that the so-called North-
South movability of the antenna corresponds to declination
angle changes, whereas the discussion at this location appears
Appeal No. 96-0423
Application 08/126,439
7
to suggest an East-West changeability of the antenna, thus
suggesting an ability to perhaps move the antenna with respect
to hour angle changes. This teaching and showing have not
been relied upon by the examiner and there is no clear
teaching anyway in this portion of Gorton that any East-West
movement of the antenna would be on a periodic, oscillatory
basis as required by claim 3 on appeal for the hour angle
feature recited.
Therefore, the rejection of claims 3, 10, 11 and 15
through 17 under 35 U.S.C. § 102 as being anticipated by
Gorton is also reversed.
Finally, we turn to the rejection of claims 3, 10, 11,
and 15 through 18 under 35 U.S.C. § 103. As noted earlier,
Longhurst specifically and explicitly indicates that there is
a periodic declination oscillatory action of the antenna while
it generally remains fixed with a constant hour angle. The
discussion at columns 1 and 2 of Longhurst suggests that this
action is tolerable for an antenna arrangement of small size
to adequately sense signals from geostationary satellites.
However, the teaching at column 2, beginning at line 10 by
inference would have indicated to the artisan that an entirely
Appeal No. 96-0423
Application 08/126,439
8
different situation would exist for large earth station
satellite antennas. At least with respect to the initial
paragraphs of the background and summary of the invention at
column 1 of Rothbarth, similar assessments are made. Indeed,
it is indicated that on the one hand that while larger dish
sizes of antennas adds to performance, these sizes create
problems of focussing the dish on individual satellites,
keeping them focussed on the desired satellite and also moving
them from satellite to the satellite.
In view of the foregoing, in particular the combined
teachings of the assessment of both of these references of the
prior art, there is a strong suggestibility in our view that
for larger antenna structures there is a need for
automatically changing on a similar periodic basis as done in
Longhurst both the hour angle and the declination. Thus, in
accordance with
the teaching in Rothbarth that the hour angle changes may be
motorized, in conjunction with a similar teaching in Crean,
the artisan clearly would have come to the conclusion that in
order maintain and follow the Figure 8 path of a
Appeal No. 96-0423
Application 08/126,439
9
geosynchronous satellite as discussed in the paragraph
bridging columns 1 and
2 of Longhurst, the artisan would have needed to perform an
automatic periodic oscillatory tracking arrangement for both
the hour angle and declination to maximize signal strength by
utilizing the motorized arrangement of Longhurst, especially
in view of the teachings of motorizing the hour angle changes
of satellites from Rothbarth and Crean. At a minimum,
therefore, it appears to us that the examiner has presented a
prima facie case of obviousness of independent claim 3 on
appeal. The collective teachings of the three references also
would have indicated to the artisan the desirability of the
combination since the ability to track utilizing the combined
structure more than one satellite would have been clearly an
obvious advantage to the combination as well.
On the other hand, we must reverse the rejection because
the examiner has not come to grips with the full meaning of
the "oscillation means" recitation in the body of claim 3 on
appeal. The combined teachings of the references for this
rejection under 35 U.S.C. § 103 would have indicated to the
artisan separate motorized arrangements for automatically
Appeal No. 96-0423
Application 08/126,439
10
imparting a periodic oscillation to the antenna structure of
the combined teachings to
the hour angle and to the declination of the antenna. We are
persuaded by appellants’ reasoning at the following portions
of the brief and reply brief respectively:
Furthermore, if the references were combined in
the manner suggested by the Examiner, the resulting
device would have first means (i.e., the motor 40 in
Rothbarth et al. or the motorized jack 94 in Crean)
for imparting movement about the hour angle axis,
and second means (i.e., the motor 11 in Longhurst et
al.) for imparting movement about the declination
axis. By way of contrast, the oscillation means
recited in claim 3 is a single drive mechanism for
automatically imparting periodic oscillation of the
antenna about the hour angle axis and the
declination axis. [Brief, bottom page 14.]
It is respectfully submitted that the Examiner is
misapplying § 112, sixth paragraph, and the relevant
case law (i.e., In re Donaldson) which requires
"means plus function" limitations to be construed as
corresponding to the structure disclosed in the
specification and equivalent structure for
performing the same function. The specification
clearly discloses a single drive mechanism (see Fig.
5) for imparting periodic oscillation to the hour
angle and the declination of the antenna, and thus
the Examiner must construe claim 3 to cover the
disclosed structure and equivalents thereof for
performing the recited function. None of the cited
references teach or suggest a single drive mechanism
or its structural equivalent for imparting a
periodic oscillation to the hour angle and the
declination of the antenna.
Appeal No. 96-0423
Application 08/126,439
11
The Examiner is correct that a "means" may be a
singular or plural. Whether the "means" is singular
or plural is determined based on the structure
disclosed in the specification. In the instant
application, the specification discloses a single
drive mechanism for imparting periodic oscillation
to the hour angle and declination of the antenna.
Thus, in the instant claims, the "means" refers to a
single drive mechanism (comprising a plurality of
parts). Clearly, the specification does not
disclose separate drive mechanisms, each
corresponding to a respective axis of the antenna
for imparting periodic oscillation about that axis.
[Reply brief, pages 3-4.]
Page 2 of the principal brief on appeal indicates in the
summary of the invention portion that the presently appealed
claims are directed to the second embodiment set forth at
Figures 4 through 7 of the disclosed invention where a single
drive means imparts to the antenna periodic oscillatory
movement of the declination and hour angle axis as well as the
pointing axis. This second embodiment is described at page 4,
line 30 through page 9 of the specification as filed. The
antenna tracking apparatus described in this second embodiment
and shown in Figures 4 through 7 relies upon a single electric
motor and the appropriate mechanical hardware (including the
gear reducer 68, the radius arm 66, the CVJ/cone arm
combination in Figure 5) to provide the basis for the
Appeal No. 96-0423
Application 08/126,439
The claimed "apparatus" of claim 3 does not "comprise" a single means, that is,2
an oscillation means only since the body of the claim recites this means and the antenna
initially set forth in the preamble.
12
oscillation means imparting an automatic periodic oscillation
to the hour angle and declination of the antenna as claimed.
The examiner’s basic position in this rejection under 35
U.S.C. § 103, as amplified and embellished upon by our
reasoning as set forth earlier, simply would not have led the
artisan to the identical disclosed structure nor to the
structural equivalent thereto in the manner claimed within the
sixth paragraph of 35 U.S.C. § 112. Therefore, the decision
of the examiner rejecting all the pending claims on appeal
under
35 U.S.C. § 103 must be reversed.2
In view of the foregoing, the decisions of the examiner
rejecting various claims under 35 U.S.C. § 102 and all claims
on appeal under 35 U.S.C. § 103 are reversed.
REVERSED
Appeal No. 96-0423
Application 08/126,439
13
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC S. FRAHM )
Administrative Patent Judge )
JDS/dem
Appeal No. 96-0423
Application 08/126,439
14
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