Ex parte Talwar

Board of Patent Appeals and Interferences

Jun 24, 1999

08001825 (B.P.A.I. Jun. 24, 1999)

Application for patent filed January 8, 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(2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ASHOK K. TALWAR
_____________
Appeal No. 96-2546
Application 08/001,8251
______________
HEARD: June 10, 1999
_______________
Before URYNOWICZ, FLEMING, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
Appeal No. 96-2546
Application No. 08/001,825
2
claims 1-15, all of the claims pending in the present
application. An amendment after final rejection was filed
February 6, 1995 and was entered by the Examiner.
The claimed invention relates to an apparatus and a
method for detecting the direction of propagation in which an
electromagnetic wave is traveling along a metallic surface.
Claim 1 is illustrative of the invention and reads as
follows:
1. A surface wave directional detection system for
determining the direction in which an electromagnetic wave
propagating along a metallic surface is travelling,
comprising:
at least a first loop probe disposed in close proximity
to the metallic surface;
at least a second loop probe disposed in close proximity
to the metallic surface and spaced apart from the first loop
probe a first predetermined distance, wherein an
electromagnetic wave travelling along the metallic surface
induces a signal in the first and second loop probes;
a transmission line having a first probe connection point
and a second probe connection point, the first and second loop
probes being electrically coupled to the transmission line at
the first probe connection point and the second probe
connection point, respectively, the first probe connection
point and the second probe connection point being separated by
a second predetermined distance;
at least a portion of the signal induced in the first
loop probe being transmitted on the transmission line from the
first probe connection point to the second probe connection
Appeal No. 96-2546
Application No. 08/001,825
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point, and at least a portion of the signal induced in the
second loop probe being transmitted on the transmission line
from the second probe connection point to the first probe
connection point, the induced signal portions of the first and
second loop probes combining to form a first composite signal
at the first probe connection point and a second composite
signal at the second probe connection point; and
means for comparing the first composite signal and the
second composite signal, the comparing means being responsive
to the first and second composite signals and generating an
output signal in response to the comparison thereof, the
output signal being indicative of the direction of travel of
the electromagnetic wave.
The Examiner relies on the following references:
Fenwick 4,063,250 Dec. 13,
1977
Lee 4,611,212 Sep. 09,
1986
The rejections of the appealed claims are set forth by
the Examiner as follows:
1. Claims 1, 3-5, 7, and 10-14 stand finally rejected
under 35 U.S.C. § 102(b) as being anticipated by Lee.
2. Claims 1-15 stand finally rejected under 35 U.S.C.
§ 103 as being unpatentable over Lee in view of Fenwick.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief and Answer for the
respective details thereof.
OPINION
Appeal No. 96-2546
Application No. 08/001,825
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We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner, the arguments
in support of the rejections and the evidence of anticipation
and obviousness relied upon by the Examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Brief along with the Examiner’s rationale in
support of the rejections and arguments in rebuttal set forth
in the Examiner’s Answer.
It is our view, after consideration of the record before
us, that the disclosure of Lee does not fully meet the
invention as recited in claims 1, 3-5, 7, and 10-14. We are
also of the view that the evidence relied upon and the level
of skill in the particular art would not have suggested to one
of ordinary skill in the art the obviousness of the invention
set forth in claims 1-15. Accordingly, we reverse.
We consider first the rejection of claims 1, 3-5, 7, and
10-14 under 35 U.S.C. § 102(b) as anticipated by Lee.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
Appeal No. 96-2546
Application No. 08/001,825
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well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore & Assocs.
Appeal No. 96-2546
Application No. 08/001,825
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v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to independent claim 1, the Examiner
attempts to read the various limitations on the Lee reference
(Answer, page 3 which references the prior Office action, the
final rejection, designated as paper number 9). In response,
Appellant argues several alleged distinctions over Lee
including the contention (Brief, pages 24-26) that the
diversity combiner in Lee does not perform a comparing
operation on composite signals which provides an indication of
the direction of travel of a surface wave which would meet the
“means for comparing . . .” limitation of independent claim 1.
Appellant points to a passage (column 2, lines 7-9) in the Lee
reference which describes the operation of Lee’s diversity
combiner as combining the first and second output signals from
a hybrid circuit. In Appellant’s view, Lee’s diversity
combiner cannot reasonably be considered to be a comparator
which produces an output which indicates the direction of
travel of a surface wave as claimed.
Upon careful review of the Lee reference and the
arguments of record, we are in agreement with Appellant’s
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Application No. 08/001,825
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stated position in the Brief with regard to the present
claimed comparing and direction indicating limitations. We
can find no teaching in Lee, either attributed to the
diversity combiner or any other circuit, that would perform a
comparison operation to produce a surface wave direction
indication output.
We note that, in the responsive arguments portion at page
7 of the Answer, the Examiner offers a much broader
interpretation of the term “comparator” than what is asserted
by Appellant. Initially, the Examiner suggests that simply
because Lee’s diversity combiner has inputs for two composite
signals, a comparison operation of the two signals takes
place. Further, the Examiner attributes a comparator function
to Lee’s summer 24 which subtracts two signals to provide a
resultant H signal. It is our view, however, that, to the
extent the Examiner’s general observation as to comparing
operations is correct, the Lee reference remains deficient in
providing any wave direction indication as a result of any
such comparison. The Examiner’s conclusion (Answer, page 7)
that a direction indicator output is necessary since Lee’s
antenna arrangement would need to be rotated to provide an
Appeal No. 96-2546
Application No. 08/001,825
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optimum signal is not supported by any evidence of record. We
are not inclined to dispense with proof by evidence when the
proposition at issue is not supported by a teaching in a prior
art reference, common knowledge or capable of unquestionable
demonstration. Our reviewing court requires this evidence in
order to establish a prima facie case. In re Knapp-Monarch
Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re
Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
In view of the above, it is our opinion that, since the
comparison operation with attendant surface wave direction
indication which appears in all of the rejected independent
claims 1, 7, 12, and 14 is not suggested in the prior art of
record, the Examiner has not established a prima facie case of
anticipation. Accordingly, we can not sustain the 35 U.S.C.
§ 102(b) rejection of independent claims 1, 7, 12 and 14 nor
claims 3-5, 10, 11, and 13 which depend therefrom.
We now consider the rejection of claims 1-15 under 35
U.S.C. § 103 as being unpatentable over Fenwick in view of
Lee. From the Examiner’s statement of the rejection (Answer,
page 3 which again references the prior Office action, the
Appeal No. 96-2546
Application No. 08/001,825
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final rejection, designated as paper number 9), it is apparent
that Fenwick was applied for the sole purpose of meeting the
claimed limitations relating to the particular wavelength
separation between the loop probes and the particular
transmission lime length between connection points. However,
we can find no teaching in Fenwick relating to the comparison
of signals to produce an indication of surface wave direction
of travel which we found lacking in our earlier discussion of
the Lee reference. Accordingly, since the teachings of
Fenwick do not cure the innate deficiencies of Lee, it is our
view that the Examiner has not established a prima facie case
of obviousness with respect to claims 1-15. Therefore, we do
not sustain the Examiner’s 35 U.S.C. § 103 rejection of claims
1-15.
In summary, we have not sustained either of the
Examiner’s rejections of the claims on appeal. Therefore, the
decision of the Examiner rejecting claims 1-15 is reversed.
REVERSED
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
Appeal No. 96-2546
Application No. 08/001,825
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)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )

JFR:svt
Appeal No. 96-2546
Application No. 08/001,825
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