Ex parte Rhoads

Board of Patent Appeals and Interferences

Feb 24, 2000

08154864 (B.P.A.I. Feb. 24, 2000)

A first amendment after final was filed [paper no. 12 ½]1
but was refused entry [paper no. 13]. A second amendment
after final was filed [paper no. 14] and its entry was
approved by the Examiner [paper no. 17]. The amendment was
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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journal and (2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GEOFFREY B. RHOADS
________________
Appeal No. 1996-3284
Application 08/154,864
________________
ON BRIEF
________________
Before THOMAS, HAIRSTON and LALL, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 3 to 9.1
Appeal No. 1996-3284
Application 08/154,864
directed to the specification and the drawings only.
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The invention is related to an apparatus and a method for
enabling a viewer to perceive a 3D image from a projection
panel. The screen of the invention is a 2D array of scanning
lasers or other collimated light sources that serve as active
light sources. In the preferred embodiment, each laser
produces a pencil-like beam that is raster-scanned across the
viewing auditorium. Each eye in the auditorium is illuminated
with light from a given point on the screen for only a brief
instant, as the laser’s beam scans across that eye in its
raster-scanning of the entire viewing auditorium. The eye
integrates these momentary flashes of light from different
points on the screen (i.e., from all of the hundreds or
thousands of lasers comprising the screen) to produce an
image. The invention is further illustrated by the following
claim. Representative claim 3 is reproduced as follows:
3. An apparatus for projecting a 3-dimensional image
into a viewing space, the apparatus comprising:
a 2-dimensional array of light producing elements;
means for modulating the light produced by the light
producing elements;
Appeal No. 1996-3284
Application 08/154,864
We consider here the brief filed as paper no. 15. Also,2
a reply brief was filed [paper no. 19] and was entered in the
record without any rebuttal from the Examiner [paper no. 20].
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means for collimating light produced by the light
producing elements; and
means for steering the collimated light through the
viewing space to pervade the viewing space with illumination;
wherein each element produces a collimated beam of light
which rasterizes a viewing space, and viewers at different
positions in the viewing space perceive differing, location-
dependent views of the 3-dimensional image.
The Examiner relies on the following references:
Bassett 3,335,217 Aug. 8, 1967
Ciongoli 4,692,878 Sep. 8, 1987
Garcia, Jr. (Garcia) 4,871,231 Oct. 3, 1989
Claims 3 to 9 stand rejected under 35 U.S.C. § 112, first
paragraph. Claims 3, 4 and 9 stand rejected under 35 U.S.C. §
112, second paragraph. Claims 3 to 9 stand rejected under 35
U.S.C. § 102 over Ciongoli. Claims 3 to 9 also stand rejected
under 35 U.S.C. § 103 over Ciongoli, Bassett and Garcia.
Rather than repeat the positions and the arguments of
Appellant or the Examiner, we make reference to the briefs2
and the answer for their respective positions.
OPINION
Appeal No. 1996-3284
Application 08/154,864
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We have considered the rejection advanced by the
Examiner. We have, likewise, reviewed Appellant's arguments
against the rejection as set forth in the brief.
It is our view, after consideration of the record before
us, that the rejection of claims 3 to 9 under 35 U.S.C. § 112,
first paragraph is not proper. The rejection under 35 U.S.C.
§ 112, second paragraph is proper with respect to claims 3 and
4, but improper with respect to claim 9. The rejection of
claims 3 to 9 under 35 U.S.C. § 102 is not sustained. Also,
the rejection of claims 3 to 9 under 35 U.S.C. § 103 is
improper. Accordingly, we affirm-in-part. In addition, under
37 CFR § 1.196(b), we reject claim 9 under 35 U.S.C. § 102/103
and claims 3 and 4 under 35 U.S.C. § 112, first paragraph.
Next, we treat the various rejections individually.
Rejection under 35 U.S.C. § 112, first paragraph
Claims 3 to 9 are rejected as failing to provide an
adequate written description of the invention [answer, pages 4
and 5].
The written description requirement serves "to ensure
that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
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Application 08/154,864
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claimed by him; how the specification accomplishes this is not
material." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90,
96 (CCPA 1976). In order to meet the written description
requirement, the appellants do not have to utilize any
particular form of disclosure to describe the subject matter
claimed, but "the description must clearly allow persons of
ordinary skill in the art to recognize that [he or she]
invented what is claimed." In re Gosteli, 872 F.2d 1008,
1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Put another way,
"the applicant must . . . convey with reasonable clarity to
those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention." Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117
(Fed. Cir. 1991). Finally, "[p]recisely how close the
original description must come to comply with the description
requirement of section 112 must be determined on a
case-by-case basis." Eiselstein v. Frank, 52 F.3d 1035, 1039,
34 USPQ2d 1467, 1470 (Fed. Cir. 1995) (quoting Vas-Cath, 935
F.2d at 1561, 19 USPQ2d at 1116).
Here, the Examiner raises [answer, pages 3 to 4] the
“first”, the “second” and the “third” points to support the
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rejection. Appellant argues [brief, page 20] against an
enablement requirement instead of the written description
requirement used in the rejection. However, we, on our own,
have reviewed the substitute drawings and the added character
numerals [whose entry has been approved by the Examiner] for
the written description requirement and find that there is an
adequate written description for the claimed invention.
Therefore, we do not sustain the rejection of claims 3 to 9
under 35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 112, Second Paragraph
Claims 3, 4 and 9 have been rejected as being indefinite.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
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Application 08/154,864
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by one possessing the ordinary level of skill in the pertinent
art. [Id].
The Examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
precise as the Examiner might desire. If the scope of the
invention sought to be patented cannot be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate.
Thus, for example, the failure to provide explicit
antecedent basis for terms does not always render a claim
indefinite. As stated above, if the scope of a claim would be
reasonably ascertainable by those skilled in the art, then the
claim is not indefinite. See Ex parte Porter, 25 USPQ2d 1144,
1146 (Bd. Pat. App. & Int. 1992).
Furthermore, Appellant may use functional language,
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Application 08/154,864
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alternative expressions, negative limitations, or any style of
expression or format of claim which makes clear the boundaries
of the subject matter for which protection is sought. As
noted by the court in In re Swinehart, 439 F.2d 210, 160 USPQ
226 (CCPA 1971), a claim may not be rejected solely because of
the type of language used to define the subject matter for
which patent protection is sought.
With this as background, we analyze the specific
rejection under 35 U.S.C. § 112, second paragraph, made by the
Examiner of the claims on appeal. The Examiner contends
[answer, page 4] that “[c]laims 3, 4, and 9 are inaccurate
because the 'elements' do not produce collimated beams.”
Appellant argues [brief, pages 19 to 20] that “[in] some
embodiments of applicant’s invention, the light sources,
themselves, produce collimated light ... . In other
embodiments, non-collimated sources (e.g. LEDs) are used in
conjunction with collimating optics (e.g. lenslets). The term
'elements' may be read on ... laser sources, and may be read
on ... collimating optics.”
We do appreciate the Appellant’s arguments. However,
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Application 08/154,864
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regarding claim 3 or claim 4, we are persuaded by the Examiner
[answer, page 4] that “[t]he collimating means [and, not each
element] produce collimated beams.” We also find, by the
Appellant’s own argument above, that if there were, in the
system, separate collimating means, the light source does not
need to produce a collimated beam. Yet, that is what the
limitation “wherein each element produces a collimated light
...” (claim 3 or 4, last three lines) implies. We find this
vague and indefinite. Therefore, we sustain the rejection of
claims 3 and 4 under 35 U.S.C. § 112, second paragraph.
However, we find no such recitation involving “each element”
in claim 9. Therefore, we do not sustain the Section 112,
second paragraph rejection of claim 9.
Rejection under 35 U.S.C. § 102
The Examiner has rejected claims 3 to 9 as being
anticipated by Ciongoli.
At the outset, we note that we have sustained the Section
112, second paragraph rejection of claims 3 and 4 above. We
emphasize here that claims 3 and 4 each contains unclear
language which renders the subject matter thereof indefinite
for the reasons stated supra under our discussion of the
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rejection under 35 U.S.C. § 112, second paragraph. We find
that it is not possible to apply the prior art to claims 3 and
4 in deciding the question of anticipation under 35 U.S.C. §
102 without resorting to speculation and conjecture as to the
meaning of the questioned limitation in claim 3 or claim 4.
This being the case, we are therefore constrained to reverse
the examiner's rejection of claims 3 and 4 under 35 U.S.C. §
102 in light of the holding in In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962). This reversal of the
Examiner's rejection is based only on the procedural ground
relating to the indefiniteness of these claims and therefore
is not a reversal based on the merits of the rejection.
As to claims 5 to 9, we treat them on the merits of the
applied prior art.
We note that a prior art reference anticipates the
subject of a claim when the reference discloses every feature
of the claimed invention, either explicitly or inherently (see
Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d
1358, 1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital
Data Sys, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)).
Appeal No. 1996-3284
Application 08/154,864
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We have reviewed the positions of the Examiner [answer,
pages 3, 5 and 6] and Appellant [brief, pages 10 to 14]. We
are convinced by the Appellant’s arguments. We find that
Ciongoli’s system operates on a totally different principle of
optics than the claimed invention.
For example, lens 15 in Ciongoli focuses the beam to form
images such as D’ or D”. We find no collimating of a beam
which will achieve the “rasterizing the viewing space with a
collimated beam” (claim 9, lines 3 to 4). Claim 9 is the
broadest claim on appeal. Since Ciongoli cannot meet claim 9,
it also cannot anticipate claims 5 to 8. Therefore, we do not
sustain the anticipation rejection of claims 5 to 9 over
Ciongoli.
Rejection under 35 U.S.C. § 103
Claims 3 to 9 have been rejected over Ciongoli in view of
Garcia and Bassett.
At the outset, we again note that we have sustained the
Section 112, second paragraph rejection of claims 3 and 4
above. We emphasize once again that claims 3 and 4 each
contains unclear language which renders the subject matter
thereof indefinite for the reasons stated supra under our
Appeal No. 1996-3284
Application 08/154,864
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discussion of the rejection under 35 U.S.C. § 112, second
paragraph. We find that it is not possible to apply the prior
art to claims 3 and 4 in deciding the question of obviousness
under 35 U.S.C. § 103 without resorting to speculation and
conjecture as to the meaning of the questioned limitation in
claim 3 or claim 4. This being the case, we are therefore
constrained to reverse the Examiner's rejection of claims 3
and 4 under 35 U.S.C. § 103 in light of the holding in In re
Steele, 305 F.2d at 862, 134 USPQ at 295 (CCPA 1962). This
reversal of the Examiner's rejection is based only on the
procedural ground relating to the indefiniteness of these
claims and therefore is not a reversal based on the merits of
the rejection.
As to claims 5 to 9, we treat them on the merits of the
applied prior art.
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
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Application 08/154,864
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of the evidence as a whole and the relative persuasiveness of
the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
The Examiner contends [answer, page 3] that “[o]ne ...
would have been motivated to substitute one light modulating
means in Garcia for each light element of Ciongoli to obtain a
more realistic image.” Furthermore, the Examiner employs
Bassett [answer, pages 3 to 4] to show that “a large number of
fiber optics could transmit a 2-D image.” Appellant argues
[brief, pages 15 to 17] that the Examiner has failed to
establish a prima facie case, that there is no suggestion to
combine, and that the proposed combination fails to yield the
claimed invention.
We are convinced by the Appellant’s arguments. The
Examiner has not tackled the main problem in Ciongoli, i.e.,
as claimed, the collimating means are used to create an image
instead of the focussing lens 15 in Ciongoli. It is true that
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Garcia does show a collimating lens 23, however, the Examiner
has not shown how such a collimating lens of Garcia can be
used in Ciongoli, or why an artisan would use it to replace
lens 15 of Ciongoli. The additional use of Bassett does not
add any thing to cure the deficiency of Ciongoli. Therefore,
we do not sustain the obviousness rejection of claims 5 to 9
over Ciongoli in view of Garcia and Bassett.
In conclusion, we reverse the Examiner’s final rejection
of claim 3 to 9 under 35 U.S.C. § 112, first paragraph. We
also reverse the final rejection under 35 U.S.C. § 112, second
paragraph with respect to claim 9, but affirm with respect to
claims 3 and 4. We also reverse the final rejection of claims
5 to 9 under 35 U.S.C. § 102 over Ciongoli. Furthermore, we
reverse the obviousness rejection under 35 U.S.C. § 103 of
claim claims 5 to 9 over Ciongoli, Garcia and Bassett. Also,
we have pro forma reversed the rejection of the Examiner under
35 U.S.C. § 102 as well as under § 103 as to claims 3 and 4.
NEW GROUND OF REJECTION UNDER 37 37 CFR § 1. 196(b)
We make the following new grounds of rejection.
Claims 3 and 4 are rejected under 35 U.S.C. § 112, first
paragraph for lack of adequate written description. Each of
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these claims covers the elements from two embodiments [brief,
pages 19 to 20] in a single claim. However, such a composite
embodiment is neither shown in a figure nor described in the
original disclosure. The disclosure [page 5, lines 5 to 8]
only briefly mentions the two separate possible embodiments.
But, it is not disclosed how a composite embodiment composed
of the two separate possible embodiments would operate, or
what arrangement
of various elements would comprise it.
Claim 9 is rejected under 35 U.S.C. § 102/103 over
Garcia. Garcia shows a plurality of pixels, 1, 5 and 9.
Collimating lens 23 collimates the light beam. The scanner 25
receives the collimated beam and rasterizes the viewing space
with the collimated beam as the scanner 25 reflects (or
steers) the collimated beam onto display screen 29, [column 3,
lines 40 to 46]. We must point out that one might misread
Garcia by looking at column 2, lines 37 to 41 where the term
“focused” is used to form an image on the scanner 25.
However, clearly, the collimating lens 23 is used to collimate
the beam, not "focus" it, and the collimated image is received
by the scanner 25. This is verified at column 3, lines 40 to
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46 of Garcia, as noted above.
The Examiner's decision is affirmed-in-part. New grounds
of rejection, in accordance with 37 CFR 1.196(b) are entered.
In addition to affirming the Examiner’s rejection of one
or more claims, this decision contains new grounds of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
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CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should Appellant elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or
145 with respect to the affirmed rejection, the effective date
of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to
the limited prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and
this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
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§ 1.136(a).
AFFIRMED-IN-PART, 37 CFR § 1. 196(b)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 1996-3284
Application 08/154,864
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