Ex parte Woods et al.

Board of Patent Appeals and Interferences

Jun 29, 2000

08319143 (B.P.A.I. Jun. 29, 2000)

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journal and (2) is not binding precedent of the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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHARLES L. WOODS, JEHAD KHOURY
and JACK FU
____________
Appeal No. 1998-0818
Application No. 08/319,143
____________
ON BRIEF
____________
Before HAIRSTON, FLEMING, and LALL, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 3, 4, 6, 7 and 11 through 14. Claims 1, 2, 5, 8
through 10 were canceled.
Appeal No. 1998-0818
Application No. 08/319,143
2
The invention relates to recovering a distorted optical
image. On page 2 of the specification, Appellants identify
that the method of recovering the optical image involves
optically performing a pseudo deconvolution of the image. The
device to perform the optical pseudo deconvolution of the
image is shown in Appellants’ figure 4, and described in the
specification on pages 8 through 11. On page 8 of the
specification, Appellants identify that the distorted or
blurred image is captured by a vidicon and the image is
inserted into a Spatial Light Modulator (SLM). On page 9 of
the specification, Appellants describe how a Fourier transform
image is created by illuminating the image on the SLM with a
laser. The image then passes through a lens,
item 30, to create a Fourier transform of the blurred image.
The Fourier transform image is acted on by two computer
generated optical filters, items 22 and 22', to create a
filtered image. One of the filters is a phase encoded filter
and the other is an amplitude encoded filter. On page 10 of
the specification, Appellants identify that the filtered image
is projected on an output plane through a second lens, item
36, which performs a Fourier transform on the filtered image.
Appeal No. 1998-0818
Application No. 08/319,143
3
On page 9 of the specification, Appellants describe the
amplitude encoded filter as having "a transmissivity which
increases along radial lines extending from a central portion
of the filter." On page 12 of the specification, Appellants
identify that the phase encoded filter can be either a binary
phase filter, a ternary filter or a amplitude encoded binary
phase filter. The coding of these three filter types is
described on page 15 of Appellants’ specification.
Independent claims 11 and 13 are representative of the
invention and read as follows:
11. A pseudo deconvolving method for
recovering an optical image, which has been
distorted by its convolution with a distortion
function, by the convolution of the Fourier
transformed distorted image with a filter
approximating the reciprocal of the Fourier
transformed distortion function comprising the
steps of:
(a) producing a Fourier transform of a
wavefront distorted optical image at a Fourier
transform plan;
(b) approximating the exact phase portion
of the reciprocal Fourier transform of the
distortion function with a phase encoded filter
having the form selected from the group
consisting essentially of a binary phase coded
filter, a ternary phase coded filter, and an
amplitude coded filter having a shifted
distortion function;
Appeal No. 1998-0818
Application No. 08/319,143
4
(c) providing said phase encoded filter at
said Fourier transform plane;
(d) approximating the amplitude portion of
the reciprocal Fourier transform of the
distortion function with an amplitude encoded
filter having a transmittance function which is
statistically similar to the reciprocal spatial
frequency spectrum of the Fourier transform of
the distortion function;
(e) providing said amplitude encoded filter
at said Fourier transform plane to produce an
intermediate signal at the Fourier transform
plane; and
(f) Fourier transforming said intermediate
signal in order to recover the optical image
having a substantially reduced degree of
distortion.
13. A pseudo deconvolving apparatus for
recovering an optical image, which has been
distorted by its convolution with a distortion
function, by the convolution of the Fourier
transformed distorted image with a filter
approximating the reciprocal of the Fourier
transformed distortion function comprising:
(a) means for producing a Fourier transform
of a wavefront distorted optical image at a
Fourier transform plane;
(b) computer means for approximating the
exact phase portion of the reciprocal Fourier
transform of the distortion function with a non-
continuous phase encoded filter and for
providing said non-continous phase encoded
filter at said Fourier transform plane;
(c) computer means for approximating the
amplitude portion of the reciprocal Fourier
transform of the distortion function with an
amplitude encoded filter having a transmittance
function which is statistically similar to the
reciprocal spatial frequency spectrum of the
Fourier transform of the distortion function and
Appeal No. 1998-0818
Application No. 08/319,143
Appellants filed an Appeal Brief on September 8, 1997. 1
On December 22, 1997 Appellants filed a Reply Brief. On
January 13, 1998, the Examiner mailed a communication stating
that the reply brief had been considered and entered.
The Examiner mailed an Examiner’s Answer on November 25,2
1997. On April 14, 2000 the Examiner mailed a Supplemental
Examiner’s Answer in response to a Remand from the Board of
Appeals and Interferences.
5
for providing said amplitude encoded filter at
said Fourier transform plane to produce an
intermediate signal at the Fourier transform
plane; and
(d) means for Fourier transforming said
intermediate signal in order to recover the
optical image having a substantially reduced
degree of distortion.
The Examiner relies upon the following reference:
Chen et al. (Chen) 5,426,521 Jun. 20,
1995
(filed Dec. 22, 1992)

Claim 13 stands rejected under 35 U.S.C. § 102 as being
anticipated by Chen et al.
Claims 3, 4, 6, 7, 11, 12 and 14 stand rejected under
35 U.S.C. § 103 as being unpatentable over Chen et al.
Rather then reiterate the arguments of the Appellants and
the Examiner, reference is made to the Briefs and Answers for1 2
the respective details thereof.
Appeal No. 1998-0818
Application No. 08/319,143
6
Opinion
After careful review of the evidence before us, we agree
with the Examiner’s rejection of claim 13 under 35 U.S.C. §
102. However, we disagree with the Examiner’s rejection of
claims 3, 4, 6, 7, 11, 12 and 14 under 35 U.S.C. § 103.
We first consider the rejection of claim 13 under 35
U.S.C. § 102. 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 well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Sys. Inc., 730 F2d 1440, 1444, 221 USPQ
385,388 (Fed. Cir. 1984), cert. dismissed, 468 U.S. 1228
(1984); W. L. Gore & Assocs., Inc. v. Garlock Inc., 721 F.2d
1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984). A reference anticipates a claim if it
discloses the claimed invention "such that a skilled artisan
could take it’s teachings in combination with his own
knowledge of the particular art and be in possession of the
invention." In re Graves 69 F.3d 1147, 1152, 36 USPQ2d 1697,
Appeal No. 1998-0818
Application No. 08/319,143
7
1701 (Fed. Cir. 1995) (citing In re LeGrice 301 F.2d 292, 293,
133 USPQ 365,372 (CCPA 1962)).
Appellants argue on page 5 of the Brief that the encoded
filter used in paragraph, (b) of claim 13 in combination with
the amplitude encoded filter of paragraph, (c) of claim 13 is
not suggested by the references. Further, Appellants argue
that Chen teaches away from using "an inexpensive SLM
incapable of exact phase compensation," stating that Chen
"seeks to approach exact phase compensation employing
iteration." On pages 1 and 2 of the Brief, Appellants assert
that the claim 13 limitation of a "non-continuous phase
encoded filter" precludes Chen’s filter which is iteratively
adjusted.
On page 4 of the Answer, the Examiner asserts that Chen
teaches an image recovery apparatus which uses a phase encoded
filter and an amplitude encoded filter. On page 6 of the
Answer, the Examiner asserts that Chen teaches "the phase
encoded filter of claim 13 with the specificity recited in
paragraph (b)."
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
Appeal No. 1998-0818
Application No. 08/319,143
8
the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). Claims will be given their
broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification
are not to be read into the claims. In re Etter, 756 F.2d
852, 858, 225 USPQ 1,
5 (Fed. Cir. 1985).
We find that the scope of claim 13 includes a non-
continuous phase encoded filter and an amplitude encoded
filter having a transmittance function which is statistically
similar to the reciprocal spatial frequency spectrum of the
Fourier transform of the distortion function. This scope is
shown in the following limitations of claim 13: "(b) computer
means for . . . providing said non-continuous phase encoded
filter at said Fourier transform plane" and "(c) computer
means for approximating the amplitude portion of the
reciprocal Fourier transform of the distortion function with
an amplitude encoded filter having a transmittance function
which is statistically similar to the reciprocal spatial
frequency spectrum of the Fourier transform of the distortion
Appeal No. 1998-0818
Application No. 08/319,143
9
function . . ." The term "non-continuous phase encoded
filter" is not defined in the Appellants’ specification.
However, on page 15 of the specification, the coding of the
three phase encoded filters is described. These filters code
frequency in the range of -B to B into either one of two
values, or one of three values (e.g., the frequency is encoded
into either a two or three-value discrete scale). Thus, we
find that the term "non-continuous phase encoded filter",
means a filter which has discrete phase encoding, i.e., the
filter does not have phase encoding across a continuous
spectrum.
We consider Appellants’ assertions on page 5 of the Brief
that "Chen teaches away from Appellants’ pseudo deconvolution
method of employing an inexpensive SLM incapable of exact
phase compensation and a simple encoded amplitude filter" to
be unsupported by the claims. Appellants have not provided
any showing of claim language which differentiates Appellants’
method of using "inexpensive SLM incapable of exact
compensation" from Chen. Further, we find that claim 13
contains no limitations related to an SLM or the abilities of
it’s phase compensation.
Appeal No. 1998-0818
Application No. 08/319,143
10
We find that Chen teaches a system to remove aberrations
from an image. See column 8, lines 19 through 21. We find
that Chen teaches using both a "non-continuous phase encoded
filter" and an amplitude encoded filter which is statistically
similar to the reciprocal spatial frequency spectrum of
Fourier transform of the distortion function. Chen teaches
that the phase filter is controlled by the computer and that
the control data output from the computer is digital. See
column 5, lines 33 through 40. Accordingly, we find that the
values which can be taken on by the phase filter are discrete
and non-continuous. Chen teaches that the amplitude filter is
in the Fourier transform plane. See
column 3, lines 62 through 63. Further, Chen teaches that the
amplitude encoded filter is controlled to have an amplitude
corresponding to the reciprocal of the optical transfer
function of the system which created the image distortion.
See column 8, lines 50 through 57. Thus, we find that Chen
teaches that the amplitude encoded filter is statistically
similar to the reciprocal spatial frequency spectrum of
Fourier transform of the distortion function.
Appeal No. 1998-0818
Application No. 08/319,143
11
We note that with respect to the rejection of claim 13 as
being anticipated by Chen, Appellants have chosen not to argue
any other specific limitations of claim 13 as a basis for
patentability. We are not required to raise and/or consider
such issues. As stated by our reviewing court in In re Baxter
Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed.
Cir. 1991), "[i]t is not the function of this court to examine
the claims in greater detail than argued by an appellant,
looking for nonobvious distinctions over the prior art."
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Application No. 08/319,143
12
37 CFR § 1.192(a) as amended at 60 Fed. Reg. § 14518 (March
17, 1995), which was controlling at the time of Appellants'
filing the Brief, states as follows:
The Brief . . . must set forth the authorities and
arguments on which the appellant will rely to
maintain the appeal. Any arguments or authorities
not included in the brief may be refused
consideration by the Board of Patent Appeals and
Interferences.
Also, 37 CFR § 1.192(c)(8)(iii) states:
For each rejection under 35 U.S.C. § 102, the
argument shall specify the errors in the rejection
and why the rejected claims are patentable under 35
U.S.C. § 102, including any specific limitations in
the rejected claims which are not described in the
prior art relied upon in the rejection.
Thus, 37 CFR § 1.192 provides that just as the court is not
under any burden to raise and/or consider such issues, this
board is also not under any greater burden. For the foregoing
reasons, we sustain the Examiner’s rejection of claim 13 under
35 U.S.C.
§ 102.
We next consider the rejection of claims 3, 4, 6, 7, 11,
12 and 14 under 35 U.S.C. § 103. It is the burden of the
Examiner to establish why one having ordinary skill in the art
Appeal No. 1998-0818
Application No. 08/319,143
13
would have been led to the claimed invention by the express
teachings or suggestions found in the prior art or by the
implications contained in such teachings or suggestions. In
re Sernaker,
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable ‘heart’ of the invention." Para-Ordnance Mfg. V
SGS Importers Int’l Inc., 73 F3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995) (citing W. L. Gore & Assocs., Inc.v.
Garlock Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), Cert. denied, 469 U.S. 851 (1984)).
Appellants’ arguments on pages 4 and 5 of the Brief
addressed above were also applied to the rejection of
independent claims 11, 12 and 14 based upon 35 U.S.C. § 103.
Further, Appellants argue on page 5 of the Brief that the
Examiner used improper hindsight by taking the Official Notice
of using various known filters in combination with Chen.
Appellants assert on page 6 of the Brief that Chen provides no
Appeal No. 1998-0818
Application No. 08/319,143
14
suggestion to use the specific filters of paragraphs (b) and
(d) of the claims.
On page 5 of the Answer, the Examiner takes the Official
Notice, "that synthesis of a complex-valued inverse filter by
the tandem arrangement of an amplitude-encoded transparency
with a binary-phase encoded transparency has been known for
decades. Notably, restriction of the phase levels to values
of 0 and B radians causes the complex filter variables to be
real-valued everywhere during the computation." Further, with
respect to claim 14, the Examiner states "the selection of any
particular transmissivity would have been a rather obvious
matter of adapting the amplitude-encoded mask to the
distortion of the particular optical channel in use."
We find that the scope of claims 11 and 12 includes that
the phase encoded filter is only one of a binary coded filter,
ternary phase coded filter, and an amplitude coded filter
having a shifted distortion function. This scope is shown in
the following language common to claims 11 and 13, paragraph
(b): "a phase encoded filter having the form selected from the
group consisting essentially of a binary coded filter, a
ternary phase coded filter, and an amplitude coded filter
Appeal No. 1998-0818
Application No. 08/319,143
15
having a shifted distortion function." We find that the
coding of these three filter types is defined on page 15 of
Appellants’ specification. Thus, we find that the scope of
claims 11 and 12 includes that the phase encoded filter is
only one of the three types of encoded filters defined on page
15 of the Appellants’ specification.
We find that the scope of independent claim 14 and
dependent claim 6 includes that the amplitude encoded filter
has a transmissivity which increases along radial lines. This
scope is shown in the following language common to claim 13
and claim 6: "wherein said amplitude encoded filter has a
transmissivity which increases along radial lines extending
from a central portion of said amplitude encoded filter."
We note that the Examiner’s use of the Official Notice
and statements of what is obvious on page 5 of the Brief are
unsupported by evidence on the record. Upon challenge of the
assertions by the Appellants, the Examiner should have
supplemented the stated rejection with a reference providing
evidence of noticed assertions. 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 or
Appeal No. 1998-0818
Application No. 08/319,143
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shown to be common knowledge of unquestionable demonstration.
Our reviewing court requires this evidence in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468,
1471-72, 223 USPQ 785,
787-88 (Fed. Cir. 1984); 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). Furthermore, our
reviewing court states in In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984) the following:
The Supreme Court in Graham v. John Deere Co., 383
U.S. 1 (1966), focused on the procedural and
evidentiary processes in reaching a conclusion under
Section 103. As adapted to ex parte procedure,
Graham is interpreted as continuing to place the
"burden of proof on the Patent Office which requires
it to produce the factual basis for its rejection of
an application under section 102 and 103". Citing
In re Warner, 379 F.2d 1011, 1020, 154 USPQ 173, 177
(CCPA 1967).
Nonetheless, we find that Chen fails to teach or suggest
using any one of the specifically defined coded phase filters
defined on page 15 of the specification or that the amplitude
filter has a transmissivity which increases along radial lines
from a central portion. As stated above, we find that Chen
teaches a system to remove aberrations from an image which
Appeal No. 1998-0818
Application No. 08/319,143
17
uses an amplitude encoded 3 filter and a phase encoded filter
in a Fourier transform plane. We find that Chen teaches that
the phase encoded filter is iteratively adjusted. See column
9, lines 5 to 15. We find that iterative adjustment of the
phase encoded filter does not meet the definition of either a
binary phase coded filter, a ternary coded filter or an
amplitude coded filter. Further, we find that Chen teaches
that the filters are adjusted on a pixel-by-pixel basis.
Column 5, lines 40 through 46. Thus, we find that Chen does
not teach that the amplitude encoded filter has a
transmissivity which increases along radial lines extending
from a central portion of said amplitude. Accordingly, we
will not sustain the rejection of claims 3, 4, 6, 7, 11, 12
and 14 under 35 U.S.C. § 103.
Appeal No. 1998-0818
Application No. 08/319,143
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For the foregoing reasons we affirm the rejection of
claim 13 under 35 U.S.C. § 102 and we reverse the rejection of
claims 3, 4, 6, 7, 11, 12 and 14 under 35 U.S.C. § 103.
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
MRF/sld
Appeal No. 1998-0818
Application No. 08/319,143
19
ROBERT L. NATHANS
ESC/JAZ
40 WRIGHT STREET
HANSCOM AFB, MA 01731-2903
Shereece
Appeal No. 1998-0818
Application No. 08/319,143
APJ FLEMING
APJ HAIRSTON
APJ KIMLIN
REVERSED
Prepared: June 25, 2001