Ex Parte Woida-O

Patent Trial and Appeal Board

Dec 22, 2016

13604940 (P.T.A.B. Dec. 22, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/604,940 09/06/2012 Rigel Quinn Woida-O'Brien R2058-701219(11-1855B) 2059
84250 7590 12/27/2016
LANDO & ANASTASI, LLP
R2013
ONE MAIN STREET, SUITE 1100
CAMBRIDGE, MA 02142
EXAMINER
CHWASZ, JADE R
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
12/27/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DOCKETING@LALaw.COM
CKent@LALaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RIGEL QUINN WOIDA-O’BRIEN
Appeal 2015-007274
Application 13/604,9401
Technology Center 2800
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
BRIAN D. RANGE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1—4, 6—12, 15, 16, 18, and 19 in the above-
identified application.3 We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies Raytheon Company as the real party in interest.
Appeal Br. 3, Feb. 26, 2015.
2 Office Action, Sept. 5, 2014 [hereinafter Final Action],
3 Excluded from the appeal are claim 5, which the Examiner has allowed,
and claims 13, 14, and 17, which the Examiner has found to contain
allowable subject matter. See Appeal Br. 1; see also Final Action 10-11.
Appeal 2015-007274
Application 13/604,940
BACKGROUND
Appellant’s invention relates to “providing a lightweight and low cost
field boresighting apparatus and method of manufacturing and using the
same.” Spec. 7. Independent claim 1 is representative of the claims on
appeal:
1. An optical apparatus comprising:
a first laser source configured to generate a first laser
beam having a first wavelength in an infrared spectral range,
the infrared spectral range including at least one of the short
wavelength infrared (SWIR), mid wavelength infrared (MWIR),
and long wavelength infrared (LWIR) spectral ranges',
a holographic medium optically coupled to the laser
source and having a transmittance range including the first
wavelength; and
a diffraction pattern formed in the holographic medium
and which encodes an input image, the diffraction pattern
configured to diffract the first laser beam responsive to being
illuminated by the first laser beam so as to construct an image
in one of the short wavelength infrared (SWIR), mid
wavelength infrared (MWIR), and long wavelength infrared
(LWIR) spectral ranges, the image being a reconstruction of the
input image.
Appeal Br. 11 (emphasis added). Claim 8 is also independent, comprising
limitations similar to claim 1 with regard to the infrared spectral range. Id.
at 12-13.
The Specification does not explicitly define the SWIR, MWIR, and
LWIR spectral ranges referenced in claim 1. See Spec. 7. However,
Appellant does not dispute the Examiner’s definition of these ranges as
follows:
Short-wavelength infrared (SWIR) is generally defined as 1400-
3000 nm, mid-wavelength infrared (MWIR) is generally defined
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Appeal 2015-007274
Application 13/604,940
as 3000-8000 nm, and long-wavelength infrared (LWIR) is gen­
erally defined as 8000—15000 nm. It is commonly accepted in
the art that the wavelength ranges have touching, and in some
cases, overlapping ranges when defining wavelengths of visible
and infrared light bands.
Answer 3.
The Examiner maintains the following grounds of rejection:
1. Claims 1—4, 7, 8, 16, and 18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tai4 in view of Gerber.5 See Final
Action 3—7.
2. Claims 6, 9-12, 15, and 19 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tai in view of Gerber, and further in
view of Maehara.6 See Final Action 7—10.
Tai describes a holographic sight for a firearm, which uses a laser
source to produce a visible reticle pattern in the sight, for use in aiming.
See, e.g., 7:53—8:24 (claim 1).
Gerber describes a coded laser identification system for mounting on a
weapon, used to identity friendly soldiers. See Gerber 1:4—27. Gerber gives
an example of a laser that “emits light of a wavelength of 820 nm with
constant output (not pulsing),” id. 10:16—17, and teaches that “[t]he
employment of a laser emitting in the near infrared range, i.e., at a
wavelength of less than 1000 nm, provides several advantages,” including
that “semiconductor lasers emitting at these wavelength ranges can be
4 Anthony M. Tai & Eric J. Sieczka, U.S. Patent No. US 6,490,060 B1
(issued Dec. 3, 2002) [hereinafter Tai].
5 Peter Gerber, U.S. Patent No. US 6,450,816 (issued Sept. 17, 2002)
[hereinafter Gerber],
6 Hiroshi Maehara, U.S. Patent Application Pub. No. US 2006/0092517 A1
(published May 4, 2006).
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Appeal 2015-007274
Application 13/604,940
operated to emit continuously. By means of this the emitted light can be
precisely modulated in a simple manner (pulse code modulation/chopper),
wherein the signal-to-noise ratio in the emanating lightbeam is improved.”
Gerber 10:26-34.
DISCUSSION
The Examiner finds that Tai teaches the limitations of claim 1, except
that it “does not explicitly disclose that the wavelength is in an infrared
spectral range.” Final Action 4. However, the Examiner finds that Gerber
teaches “a device which utilizes light sources producing an infrared
spectrum and a visible spectrum.” Id. (citing Gerber 10:4—60, 15:40-49,
claims 1—3, Figs. 15, 16). The Examiner finds that Gerber teaches the use of
a laser that “emits light of a wavelength of 820 nm with constant output (not
pulsing), or of any arbitrary other wavelength, preferably in the range
between 780 and 1000 nm.” Answer 4 (citing Gerber 10:16—20). The
Examiner finds that this benefit would extend beyond the 780 nm to 1000
nm range, because “the statement of Gerber is written in the alternative.”
Answer 5. Thus, the Examiner concludes that
[I]t would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify the light source
of Tai et al., as taught by Gerber, in order to provide a device in
which a laser can be configured to emit continuously.
Final Action 4. The Examiner makes substantially the same findings and
conclusions regarding independent claim 8. See id. at 5—6.
The Examiner’s rationale for combining Tai with Gerber in support of
the conclusion of obvious is not persuasive. Gerber’s statement regarding
continuous emission, cited by the Examiner, must be read in the context of
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Appeal 2015-007274
Application 13/604,940
Gerber’s further explanation that an advantage of using a “laser emitting in
the near infrared range, i.e. at a wavelength of less than 1000 nm” is that it
“can be operated to emit continuously.” Gerber 10:27—30. This teaching
establishes a benefit for using lasers in the near infrared spectral range (i.e.,
less than about 1000 nm). However, Gerber cannot reasonably be
interpreted as teaching that this benefit extends to higher wavelengths, such
as the SWIR, MWIR, or LWIR spectral ranges required by claims 1 and 8.
Although the Examiner correctly notes that Gerber does not limit the
wavelength exclusively to the preferred range of 780-1000 nm, see Answer
3—4, the evidence on this record does not support the Examiner’s stated
reason for why a person of ordinary skill in the art would have used a
wavelength of about 1400 nm or higher in the context of forming a reticle as
in Tai.
The Examiner also concludes that a prima facie case of obviousness
exists because the ranges in the claim and in the prior art are “close enough
that one skilled in the art would have expected them to have the same
properties.” Answer 4 (citing Titanium Metals Corp. of America v. Nabber,
778 F.3d 775 (Fed. Cir. 1985)). However, the Examiner has not pointed to
any factual evidence or technical reasoning that the spectral ranges are so
close that a person of ordinary skill in the art would have expected the use of
the near infrared spectral range to be substantially equivalent to the use of
SWIR or higher wavelengths. We note, to the contrary, that Gerber makes a
functional distinction between near infrared and higher wavelengths:
according to Gerber, the use of a near-infrared laser with a wavelength less
than 1000 nm allows for continuous emission, presumably unlike a laser
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Appeal 2015-007274
Application 13/604,940
operating at higher wavelengths that would include SWIR, MWIR, and
LWIR. See Gerber 10:16-20, 26-34.
For the above reasons, the Examiner reversibly erred in rejecting
independent claims 1 and 8. The rejections of dependent claims 2—4, 6, 7,
9—12, 15, 16, 18, and 19 do not remedy this error. Thus, we reverse the
Examiner’s decision to reject claims 1—4, 6—12, 15, 16, 18, and 19.
DECISION
The Examiner’s decision is reversed.
REVERSED
6