Ex parte Wagner

Board of Patent Appeals and Interferences

Feb 10, 2000

08407145 (B.P.A.I. Feb. 10, 2000)

Application for patent filed March 20, 1995. 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publication in a law journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HARVEY L. WAGNER
____________
Appeal No. 1997-1899
Application No. 08/407,1451
____________
ON BRIEF
____________
Before THOMAS, BARRETT, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-7, which
are all of the claims pending in this application.
We REVERSE.
Appeal No. 1997-1899
Application No. 08/407,145
The examiner withdrew the rejection of claims 5-7 in the supplemental answer at page 3 and2
objected to these claims as dependent on a rejected base claim.
2
BACKGROUND
The appellant's invention relates to a wavelength-tunable eye protection device to
protect a user’s eye from a laser light source. An understanding of the invention can be
derived from a reading of exemplary claim 1, which is reproduced below.
1. An eye protection device for protection against light from a source of light,
said device comprising:
a wavelength-tunable filter for passing at least one wavelength selected in response
to a control signal;
mounting means for mounting said filter before at least one eye of a user; and
control means coupled to said filter for setting said passing wavelength to a
wavelength other than a wavelength at which said light source emits.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Burbo et al. (Burbo) 4,202,601 May 13, 1980
Gunning, III et al. (Gunning, III) 4,508,964 Apr. 02, 1985
Claims 1-4 stand rejected under 35 U.S.C. § 103 as being unpatentable over2
Burbo in view of Gunning, III.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the examiner's
Appeal No. 1997-1899
Application No. 08/407,145
3
answer (Paper No. 7, mailed Dec. 24, 1996) and the supplemental examiner's answer
(Paper No. 9, mailed Feb. 5, 1997) for the examiner's reasoning in support of the
rejections, and to the appellant's brief (Paper No. 6, filed Dec. 6, 1996) and reply brief
(Paper No.8, filed Jan. 10, 1997) for the appellant's arguments thereagainst.
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. As a consequence of
our review, we make the determinations which follow.
As pointed out by our reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). We find that the examiner has not provided a
teaching or convincing line of reasoning why one skilled in the art would have desired to
use a wavelength-tunable filter in the system of Burbo. Burbo states:
This adjustable ring is coupled to the polarizer plate 21 associated with each
housing and hence, permits the operator or user to rotate the plate and
hence, the polarizer element 21 with respect to the elements 20 and 22.
It is important, as above indicated, to note that the purpose of the
blue-green filter 24 is to compensate for the deficiencies inherent in the
infrared transmission characteristics of the polaroid materials employed in
plates 20, 21 and 22.
Appeal No. 1997-1899
Application No. 08/407,145
4
As indicated above, present polarizers as commercially available, do
not transmit the infrared components of light in a linear manner as compared
to other frequency components contained in the light beam. Hence, the
blue-green filter serves to attenuate transmitted light components about the
near infra-red spectrum which are for example, emitted by foilage such as
grass, trees and so on. In this manner, the output light from the entire
arrangement depicted is indicative of nighttime conditions. By rotating the
plate 21 with respect to plates 20 and 22, one can thereby achieve a
variation in the light directed to the night vision device and hence, by such
rotation one can simulate various nighttime conditions as starlight, overcast
moonlight, or direct moonlight and one can do so in any particular daylight
condition as from early dusk to noon day sunlight.
(See Burbo at column 3, line 57 to column 4, line 13.) Burbo clearly compensates for the
variations in light for the entire day from dawn to dusk without the need for a variable filter
as the examiner maintains on page 6 of the answer. Burbo states that the blue-green filter
is to compensate for inherent problems induced by the use of the polarizers, therefore, in
our view, there would have been no motivation to vary this filter since this would negate the
needed compensation.
The examiner argues that the “combination of the static blue-green filter in addition
to the polarization plates makes a mechanically alterable (through attenuation by the
polarization plates) frequency filter (through the blue-green filter).”
(See supplemental answer at page 2.) We disagree with the examiner as discussed
above. The examiner relies upon the Burbo at column 3, lines 14-27 which states:
Appeal No. 1997-1899
Application No. 08/407,145
5
Referring to FIG. 2, there is shown a filter arrangement which can be
employed and included in each housing as 16 and 17 to provide night time
simulation during a daytime operation.
The filter shown includes a first polarizing plate 20, a second
polarizing plate 21 and a third polarizing plate 22. A fourth plate 24 is shown
and is positioned in the optical path as well. The plate 24 is a glass plate
which operates as a blue-green filter. The filter compensates for deficiencies
in the infrared transmission characteristics of the polaroid plates 20, 21 and
22 to avoid a contrast reversal effect. Essentially, contrast reversal is the
effect of the high reflectivity in the near infrared of most green foilage which
causes the foilage to appear white when viewed through the goggles.
Appellant argues that the polarization plates are not frequency/wavelength tunable
as required by the language of the claim 1. (See reply brief at pages 2-4.) We agree with
appellant. Furthermore, the polarization plates merely produce (plane) polarized light
which is further limited through the interaction of the three plates to limit the quantity of light
passing through the plates to the filter. The variation in the light is in the quantity rather than
the frequency/wavelength of the light which is varied.
Appellant argues that the examiner has not provided a nexus for the combination of
the tunable filter of Gunning III with the training aid of Burbo. (See brief at pages 5-10 and
reply brief at page 5.) We agree with appellant. In light of the deficiencies discussed
above, the examiner has not provided a convincing line of reasoning why it would have
been obvious to one of ordinary skill in the art at the time of the invention to incorporate a
wavelength-tunable filter into the training aid as taught by Burbo.
Appeal No. 1997-1899
Application No. 08/407,145
6
To reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness. See In re
Deuel, 51 F.3d 1552, 1557, 34 USPQ2d 1210, 1214 (Fed. Cir. 1995). In
the absence of a proper prima facie case of obviousness, an applicant who
complies with the other statutory requirements is entitled to a patent. See In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir. 1998). Here, we
find that appellant has overcome the prima facie case of obviousness by showing
insufficient evidence by the examiner of obviousness. Therefore, we will not sustain the
rejection of claim 1 nor the rejection of dependent claims 2 and 3. Similarly, claim 4
contains the same limitation concerning the wavelength-tunable filter.
CONCLUSION
Appeal No. 1997-1899
Application No. 08/407,145
7
To summarize, the decision of the examiner to reject claims 1-4 under 35 U.S.C. §
103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1997-1899
Application No. 08/407,145
8
WILLIAM H. MEISE
LOCKHEED MARTIN CORPORATION
314B - BUILDING 28
P.O. BOX 8048
PHILADELPHIA, PA 19101