Ex parte Staron

Board of Patent Appeals and Interferences

Sep 21, 2001

08035969 (B.P.A.I. Sep. 21, 2001)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PHILIPPE STARON
____________
Appeal No. 1997-1188
Application No. 08/035,969
____________
HEARD: September 13, 2001
____________
Before COHEN, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 17 to 38, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
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Application No. 08/035,969
The appellant's invention relates to a seismic
exploration system (claims 17 to 29) and a method of seismic
exploration (claims 30 to 38). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Miller 3,863,200 Jan. 28, 1975
Read et al. (Read) 4,885,724 Dec. 5, 1989
McNatt EP 0226366 June 24, 1987
Claims 17 to 38 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Read or McNatt when taken with Miller.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 20,
mailed August 27, 1996) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 19,
filed May 7, 1996) and reply brief (Paper No. 28, filed
February 8, 2001) for the appellant's arguments thereagainst.
Appeal No. 1997-1188 Page 3
Application No. 08/035,969
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Application No. 08/035,969
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 17 to 38 under
35 U.S.C. § 103. Our reasoning for this determination
follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
Appeal No. 1997-1188 Page 5
Application No. 08/035,969
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Evidence of a suggestion, teaching, or motivation to
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), although "the suggestion more
often comes from the teachings of the pertinent references,"
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. That is, the
showing must be clear and particular. See, e.g., C.R. Bard
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225,
1232 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1804 (1999).
A broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence." See
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Application No. 08/035,969
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
The teachings of the applied prior art relied upon by the
examiner are set forth on pages 4-5 of the answer. After the
scope and content of the prior art are determined, the
differences between the prior art and the claims at issue are
to be ascertained. Graham v. John Deere Co., 383 U.S. 1,
17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Read and McNatt and
claim 17, it is our opinion that the differences are (1) a
controlled element, coupled to each of the seismic sensors,
for modifying the seismic signal produced by each seismic
sensor;
(2) a control, coupled to each controlled element, for
controlling the modifying of the seismic signal produced by at
least one set of a plurality of seismic sensors; and (3) at
least one combining element, each combining element being
coupled to an output of each of a plurality of the controlled
elements coupled to one of the plurality of sets of seismic
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Application No. 08/035,969
sensors for combining the seismic signals to produce at least
one seismic trace.
Based on our assessment of Read and McNatt and claim 30,
it is our opinion that the differences are (1) each seismic
trace being produced with a seismic receiver by combining a
selected group of received seismic signals; and (2) the
combining of each selected group of received seismic signals
to produce each of the seismic traces is controlled by
transmission of control signals from the recording and control
station to a plurality of controlled elements to modify each
selected group to change the received seismic signals in each
selected group or to modify which of the received seismic
signals in each selected group are combined to produce each
seismic trace.
The examiner determined (answer, p. 7) that it would have
been obvious to one skilled in the art to combine the
teachings of Miller with either Read or McNatt. While we
agree with that determination, we fail to see how the
modification of either Read or McNatt based on the cited
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Application No. 08/035,969
teachings of Miller arrives at the claimed invention. In that
regard, we note that the examiner never determined that the
actual differences between the claimed subject matter and Read
or McNatt would have been obvious at the time the invention
was made to a person of ordinary skill in the art. In the
rejection before us in this appeal, the examiner has not
determined that the applied prior art teaches or suggests a
combining element being coupled to an output of each of a
plurality of the controlled elements coupled to one of the
plurality of sets of seismic sensors for combining the seismic
signals to produce at least one seismic trace as set forth in
claim 17 or the combining of each selected group of received
seismic signals to produce each seismic trace as recited in
claim 30.
Thus, in the rejection before us in this appeal, the
examiner has not established a prima facie case of
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Application No. 08/035,969
If the examiner is aware that it was known in the prior1
art to combine the seismic signals from the set of seismic
sensors of each seismic receiver to produce a seismic trace,
the examiner should cite a reference in support thereof (see
for example the references referred to in column 3, lines 33-
52, of Miller) and consider whether the pending claims are
patentable under 35 U.S.C. § 103 over those references when
considered with the prior art applied in the rejection before
us in this appeal.
obviousness. Accordingly, the decision of the examiner to1
reject claims 17 to 38 under 35 U.S.C. § 103 is reversed.
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Application No. 08/035,969
CONCLUSION
To summarize, the decision of the examiner to reject
claims 17 to 38 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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Application No. 08/035,969
ANTONELLI TERRY STOUT AND KRAUS
SUITE 1800
1300 NORTH SEVENTEENTH STREET
ARLINGTON, VA 22209
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