Ex parte Profeta

Board of Patent Appeals and Interferences

Jan 9, 1998

08042719 (B.P.A.I. Jan. 9, 1998)

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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JOSEPH A. PROFETA
_________
Appeal No. 96-1290
Application 08/042,7191
_______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and BARRETT, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 34, all the claims pending in the application.
The invention pertains to a guided fire control system for a
manually aimed gun.
Representative independent claim 1 is reproduced as follows:
1. A fire control system comprising:
a manually aimed gun having a sighting device;

1 Application for patent filed April 5, 1993.
Appeal No. 96-1290
Application 08/042,719
2
means for acquiring a target, said acquiring means disposed
at a location remote from said gun; and
means for determining a trajectory of the target with
respect to the gun and providing information relating to the
target to the sighting device of the gun such that an operator of
the gun can aim the gun with respect to the sighting device to
hit the target when the gun is fired, said determining means
being in communication with said acquiring means and the sighting
device.
The examiner relies on the following references:
Voles 4,370,914 Feb. 1, 1983
Moore 4,531,052 Jul. 23, 1985
Boeck et al.(Boeck) 4,622,458 Nov. 11, 1986
Frohock, Jr. 4,787,291 Nov. 29, 1988
Jaquard et al. 4,922,801 May 8, 1990
(Jaquard)
Claims 1 through 34 stand rejected under 35 U.S.C.
' 103. As evidence of obviousness, the examiner cites Frohock,
Jaquard and Boeck with regard to claims 1 through 10 and 23
through 34, adding Moore with regard to claims 11 through 19 and
additionally adding Voles with regard to claims 20 through 22.
Reference is made to the brief2 and answer for the
respective positions of appellant and the examiner.
OPINION
We have carefully considered the evidence before us and,
based on that evidence, we will not sustain the rejection of
claims 1 through 34 under 35 U.S.C. ' 103.

2 Appellant also filed a FAX (Paper No. 12), which might be
considered a supplemental brief, indicating Contraves USA as the
real party in interest and that there are no known related
appeals or interferences. For purposes of our discussion and
reference to “the brief,” we consider the brief filed June 21,
1995 (Paper No. 10) to be the sole “brief” in the case.
Appeal No. 96-1290
Application 08/042,719
3
The claims all call for a manually aimed gun or guns and
acquiring a target, wherein the means for acquiring the target is
remote from the gun or guns. Frohock is clearly not directed to
manually aimed guns and Boeck does not mention guns at all.
Therefore, it would appear that any combination with Boeck, in
order to arrive at the claimed invention, could only have been
made through impermissible hindsight.
The most relevant reference appears to be that of Jaquard
which does appear to disclose a manually fired gun. The problem
with Jaquard, however, is that it does not disclose the claimed
“means for acquiring a target, said acquiring means disposed at a
location remote from said gun.”3
The examiner points to column 1, lines 57-59 of Jaquard,
which states:
Thus a function is provided equivalent to that of a
stabilized remote aiming control station operating as a
master station for a weapon system.
The examiner points to this section ostensibly to show that
Jaquard at least suggests that the acquiring means may be remote
from the gun. Appellant argues [principal brief, page 24] that
this section of Jaquard actually teaches away from the claimed
invention because Jaquard’s invention is taught for a remote
aiming control station which is no longer needed with Jaquard’s
gun because of Jaquard’s use of a camera.

3 This language is taken from independent claim 1 but the other
independent claims include comparable language.
Appeal No. 96-1290
Application 08/042,719
4
We do not agree with appellant’s assessment that Jaquard
“teaches away” from the claimed invention. While the invention
of Jaquard is taught to be a substitute for, or an alternative
to, a stabilized remote aiming control station, a reference is
good for all that it teaches and Jaquard clearly suggests that
remote aiming control stations were part of the prior art even if
Jaquard chose not to use them.
The problem with Jaquard is that the “remote” language
employed at the portion of the specification cited by the
examiner is speculative. While a control system may have been
known to be remote from the gun, there is no teaching or
suggestion that such a control system included a “means for
acquiring a target,” as claimed. The control system, or
“station,” cited by Jaquard is a “remote aiming control station.”
The instant claims call for “acquiring a target,” wherein the
acquiring means is at a location “remote” from the gun. A remote
aiming control station does not, necessarily, include a remote
means for acquiring a target. While it is possible that a remote
control means, mentioned as being known by Jaquard, may include a
means for acquiring a target, as recited in the instant claims,
such a conclusion would require a resort to speculation on our
part. We will not substitute speculation for a clear suggestion
by the prior art in order to sustain a rejection based on
35 U.S.C. ' 103.
Appeal No. 96-1290
Application 08/042,719
5
If the remote aiming control system of Jaquard was, in fact,
known to include a means for acquiring a target, as claimed, the
examiner should have found evidence of such a control system. In
any event, while Jaquard appears closely related to the claimed
subject matter, we will not speculate as to what Jaquard meant by
the disclosure of providing a function that is “equivalent to
that of a stabilized remote aiming control station operating as a
master station for a weapon system.” We do not find a clear
teaching or suggestion, in the applied references, of providing a
“means for acquiring a target, said acquiring means disposed at a
location remote from said gun,” as claimed.
The other applied references to Moore and Voles are not seen
to provide for the deficiencies noted supra with regard to
Frohock, Jaquard and Boeck.
Accordingly, the examiner’s decision rejecting claims 1
through 34 under 35 U.S.C. ' 103 is reversed.
REVERSED
Kenneth W. Hairston )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lee E. Barrett )
Administrative Patent Judge )
Appeal No. 96-1290
Application 08/042,719
6
Ansel M. Schwartz
425 N. Craig Street, Suite 301
Pittsburgh, PA 15213