Ex parte Power

Board of Patent Appeals and Interferences

Sep 22, 1997

08026797 (B.P.A.I. Sep. 22, 1997)

Application for patent filed March 5, 1993.1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GARY D. POWER
_____________
Appeal No. 96-0107
Application 08/026,7971
______________
ON BRIEF
_______________
Before SOFOCLEOUS, HANLON and PAK, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-20, all of the claims pending in the
application. Claims 1, 5 and 12 are illustrative of the subject
matter on appeal and read as follows:
1. In a microchannel plate, the improvement
comprising:
Appeal No. 96-0107
Application 08/026,797
2
a layer of dielectric material on the ground plane
of the microchannel plate;
said layer of dielectric material being provided
with openings which align with, without covering, holes in the
microchannel plate.
5. In an image intensifier including a microchannel
plate and a phosphor screen positioned in spaced relation with
said plate, the improvement comprising:
a layer of electrically insulating material
positioned adjacent a ground plane of said microchannel plate and
having openings therein which align with but do not cover holes
in said microchannel plate.
12. A method for improving the spatial resolution of
proximity focused image intensifiers which includes a micro-
channel plate and a phosphor screen spaced therefrom to form a
gap therebetween, including the steps of:
positioning a layer of dielectric material
intermediate the microchannel plate and the phosphor screen and
adjacent to the microchannel plate; and
forming openings in the layer of dielectric
material which align with but do not cover holes in the
microchannel plate.
The references relied upon by the examiner are:
Warde et al. (Warde) 4,481,531 Nov. 6, 1984
Aebi et al. (Aebi) 5,268,612 Dec. 7, 1993
Appeal No. 96-0107
Application 08/026,797
Claims 12-20 were rejected under 35 U.S.C. § 101 in the final Office2
action dated October 28, 1994. This rejection has been withdrawn by the examiner
(Answer, p.2).
3
The following rejections are at issue in this appeal:2
(1) Claims 1-9 and 11 are rejected under 35 U.S.C. § 103 as
being unpatentable over Aebi et al.
(2) Claim 10 is rejected under 35 U.S.C. § 103 as being
unpatentable over Aebi et al. in view of Warde et al.
(3) Claims 1-20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
The claimed invention
The claimed invention is directed to a microchannel plate
comprising a layer of dielectric material on or adjacent to the
ground plane of the microchannel plate. The layer of dielectric
material is provided with openings which "align with, without
covering holes in the microchannel plate" (claim 1). See also
claim 5 (a layer of electrically insulating material has openings
which "align with but do not cover holes in said microchannel
plate"); claim 12 (openings are formed in a layer of dielectric
material which "align with but do not cover holes in the
microchannel plate"). According to appellant, this layer of
dielectric material on or adjacent to the ground plane of the
Appeal No. 96-0107
Application 08/026,797
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microchannel plate (MCP) improves the spatial resolution of
proximity focused image intensifiers.
One of the prior approaches for improving the resolution of
proximity focused image intensifiers (Specification, p.2):
[I]nvolves the use of microchannel plates
wherein the ground plane thereof is located
in closely spaced relation to the phosphor
screen having a positive potential applied
thereto. If a high voltage is applied to
improve to [sic] resolution of the image
intensifying device, there is a breakdown,
thereby requiring such devices to operate a
[sic] lower than desired voltages.
According to appellant, the spatial resolution of these devices
can be improved without creating a breakdown (Specification, p.8;
see also Figure 3):
[B]y coating the ground plane of an MCP so as
not to obstruct the holes in MCP, the
phosphor screen can be located closer to the
MCP and the voltage can be significantly
increased, thus greatly improving spatial
resolution [emphasis added].
Rejection under 35 U.S.C. § 112, second paragraph
Claims 1-20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant
Appeal No. 96-0107
Application 08/026,797
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regards as the invention. According to the examiner (Answer,
p.4):
In claims 1, 5, and 12, although the
openings in the layer of dielectric (or
electrically insulating) material align with
the holes in the microchannel plate as
claimed, the Examiner believes that the
Appellant intended that the openings in the
layer of dielectric material cover (not "do
not cover") the holes in the microchannel
plate. If the openings in the layer of
dielectric material do not cover the holes in
the microchannel plate as claimed, then what
do the openings in the layer of dielectric
material cover?
At the outset, we note that there is some dispute as to
whether the rejection of claims 1-11 under 35 U.S.C. § 112,
second paragraph, is properly an issue in this appeal. Appellant
argues that (Reply, p.3):
. . . Claims 1-11 have not been rejected
under 35 USC 112, second paragraph, prior to
the Examiner's Answer. If Claims 1-11 are
now being rejected on this basis, then this
constitutes a new grounds of rejection raised
in the Examiner's Answer, and an amendment
directed to the new ground of rejection is
entitled to entry (MPEP 1208.03(2)).
There is no dispute that the examiner failed to include
claims 1-11 in the introductory statement setting forth the
rejection under 35 U.S.C. § 112, second paragraph, in the final
Appeal No. 96-0107
Application 08/026,797
The examiner properly points out that (Answer, p.7):3
[I]f the Appellant was confused with the finality of the
office action mailed 10/28/94, they should have
petitioned the Office that the final was premature.
An examination of the record reveals that no petition has been filed.
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Office action (paragraph 3, paper no. 5). However, the comments
following the introductory statement clearly explain the alleged
indefiniteness of claims 1, 5 and 12. Manifestly, appellant
addresses the rejection of claims 1, 5 and 12 set forth in the
paragraph bridging pages 2 and 3 of the final Office action and
urges that the rejection under 35 U.S.C. § 112, second paragraph,
be reversed (Brief, pp.9-10). Furthermore, in an effort to
resolve the indefiniteness issue, appellant proposed to amend
claims 1 and 5 in at least one amendment filed under 37 CFR
§ 1.116 (Brief, pp.10-11; see also paper nos. 6 and 7).
Appellant is exalting form over substance. Therefore, for
purposes of this appeal we will consider the rejection of claims
1-20 under 35 U.S.C. § 112, second paragraph.3
We reverse the rejection. One of ordinary skill in the art
reading claims 1, 5 and 12 would understand that the openings
provided in the layer of dielectric material (1) align with and
(2) do not cover or obstruct, or in other words, are coextensive
with the holes in the microchannel plate. Compare In re
Mattison, 509 F.2d 563, 565, 184 USPQ 484, 486 (CCPA 1975) (use
Appeal No. 96-0107
Application 08/026,797
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of "substantially increase" in the claims does not render them
indefinite under 35 U.S.C. § 112, second paragraph, since the
phrase does not stand in a vacuum but must be read in light of
the specification, and when so read, one skilled in the art can
determine the scope of the claimed invention).
To the extent that the examiner interprets the claims as
reciting that the openings provided in the layer of dielectric
material "cover" another element of the invention, the claims
recite the additional limitation that the openings are aligned
with the holes in the microchannel plate. Therefore, one of
ordinary skill in the art would reasonably understand that the
openings provided in the layer of dielectric material are
coextensive with the holes in the microchannel plate.
Claims 12-20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for the additional reason that
(Answer, p.4):
. . . claim 12 recites "[A] method for
improving the spatial resolution of proximity
focused image intensifiers", the rest of
claim 12, along with claims 13-20 recite
steps for manufacturing the device. It is
unclear how the steps for making the device
would improve the spatial resolution of the
proximity focused image.
We disagree. One of ordinary skill in the art reading
Appeal No. 96-0107
Application 08/026,797
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claims 12-20 would understand that performing the steps recited
in these claims improves the spatial resolution of proximity
focused image intensifiers. See also Specification, p.3 (the
invention involves providing the ground plane of a microchannel
plate with a thin layer of a dielectric without covering the
holes in the plate for improving the spatial resolution of an
image intensifying device); see also Brief, p.9 ("Applicant has
discovered that positioning a dielectric layer with aligned holes
adjacent the MCP improves resolution, and that is what is claimed
. . . ."). The fact that the examiner may be of the opinion that
there is more suitable language to define the claimed invention
is not a proper basis for a rejection under 35 U.S.C. § 112,
second paragraph. Therefore, the rejection of claims 1-20 under
35 U.S.C. § 112, second paragraph, is reversed.
Rejection under 35 U.S.C. § 103
Claims 1-9 and 11 are rejected under 35 U.S.C. § 103 as
being unpatentable over Aebi. We reverse this rejection.
The invention disclosed in Aebi is directed to a
microchannel plate which limits feedback of photons, ions or
neutral particles from the output side of the plate (col. 6,
lines 62-65; see also Figure 12).
Appeal No. 96-0107
Application 08/026,797
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The added noise due to feedback effects from
the screen to the MCP will be reduced
proportional to the reduction in output open
area of the MCP. Reduction of the output
open area by less than 10% would be
ineffective in producing a significant
reduction in noise factor. The maximum
reduction in output open area must be less
than 100%, which would completely close off
the channels, as some opening must remain to
allow the electrons to escape the MCP. A
reduction in the range from about 10% to
about 85% has resulted in a useful compromise
between the two extremes described above. In
general, a reduction at the higher end of
this range is most effective in carrying out
this invention [col. 7, lines 6-19].
Appellant further points out that (Brief, p.13):
A reading of Aebi et al establishes that the
purpose of this reference is directly
opposite to the purpose of the claimed
subject matter. For example, Col. 8, lines
32-37 state: "an output electrode 126,
preferably aluminum, is deposited on the
output surface of the microchannel plate 116
to substantially close off the open area of
the channels 128 formed by the channel walls
130"; and lines 54-59 of Col. 8 state that
"the output channel area of the MCP is
reduced by at least 10% and preferably
reduced by substantially 75 to 85 percent by
applying a much thicker metalization layer"
(underlining added).
In contrast, appellant's claimed invention comprises a layer
Appeal No. 96-0107
Application 08/026,797
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of dielectric material provided with openings which align with
and do not cover or obstruct the holes in the microchannel plate.
Therefore, we agree with appellant that the Aebi reference
teaches away from the claimed invention and fails to render the
claimed invention obvious under 35 U.S.C. § 103. See Gillette
Co. v. S.C. Johnson & Son, Inc., 919 F.2d 720, 724, 16 USPQ2d
1923, 1927 (Fed. Cir. 1990) (the closest prior art reference
"would likely discourage the art worker from attempting the
substitution suggested").
Claim 10 is rejected under 35 U.S.C. § 103 as being
unpatentable over Aebi in view of Warde. Since claim 10 is
dependent on claim 5, and the rejection of claim 5 has been
reversed, the rejection of claim 10 is also reversed. See 37 CFR
§ 1.75(c) ("Claims in dependent form shall be construed to
include all the limitations of the claim incorporated by
reference into the dependent claim.").
The decision of the examiner is reversed.
REVERSED
)
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
Appeal No. 96-0107
Application 08/026,797
11
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CHUNG K. PAK )
Administrative Patent Judge )
Richard E. Constant
Asst. Gen. Counsel for Intellectual Prop.
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