Ex Parte Young

Board of Patent Appeals and Interferences

Apr 11, 2011

11111279 (B.P.A.I. Apr. 11, 2011)

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.
11/111,279 04/21/2005 C. Gilbert Young 1202-012 4718
27820 7590 04/11/2011
WITHROW & TERRANOVA, P.L.L.C.
100 REGENCY FOREST DRIVE
SUITE 160
CARY, NC 27518
EXAMINER
VANDERPUYE, KENNETH N
ART UNIT PAPER NUMBER
2613
MAIL DATE DELIVERY MODE
04/11/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte C. GILBERT YOUNG
____________________

Appeal 2009-009701
Application 11/111,279
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, THOMAS S. HAHN and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-009701
Application 11/111,279

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A method of combat simulation comprising:
providing a first plurality of pulsed radiant energy transmitters
with each transmitter having a pulsed beam wavelength with
substantially zero atmospheric absorption due to water vapor;
providing a plurality of receivers having a bandwidth between
850 and 1050 nm;
moving the transmitters relative to, at least some of the
receivers in a simulated combat scenario;
directing pulsed beams of various transmitters toward selected
receivers,
generating electrical outputs, indicative of incident beams, from
each of those receivers which are sensing an incoming beam.

Rejections on Appeal
1. The Examiner rejected claims 1-16 and 20-31 under 35 U.S.C.
§ 102(b) as being anticipated by Gerber (US 5,788,500).
2. The Examiner rejected claims 17-19 as being unpatentable
under 35 U.S.C. § 103(a) over Gerber.
Appellant’s Contentions
1. At pages 8-15 of the Appeal Brief, Appellant presents a myriad
of arguments that the prior art does not support anticipation or obviousness
because the prior art does not teach a pulsed laser.
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2. Regarding claims 1 and 29-31, at pages 10 and 14 of the
Appeal Brief respectively, Appellant contends that the Examiner erred
because “Gerber does not intentionally operate with a wavelength on the
order of 990 nm.”
3. Regarding claim 2, at page 3 of the Reply Brief, Appellant
contends that the Examiner erred because “[t]he mere fact that the Gerber
CW laser could operate on 990 nm and could result in „substantially zero
atmospheric absorption due to water vapor‟ at that frequency is not sufficient
to establish inherency.”
1

4. Regarding claim 3, at page 10 of the Appeal Brief, Appellant
contends that the Examiner erred because “there is no selection of a
wavelength within a range that includes 970-1070 nm under Gerber.”
2

5. Regarding claims 23-28, at page 13 of the Appeal Brief,
Appellant contends that the Examiner erred because “[a] passband of 900-
1075 nm would exclude most of the Gerber wavelengths of from 780 nm to
2 µm, thereby rendering Gerber unfit for its intended purpose.”
6. Regarding claims 29-31, at page 14 of the Appeal Brief,
Appellant contends that the Examiner erred because “since Gerber uses a
wavelength of from 780 nm to 2 µm, a filter of 900 nm would reject most of
the Gerber wavelengths, thereby rendering Gerber unfit for its intended
purpose.”

1
Although the brief argues this limitation as to claim 1, the limitation is
found in claim 2. Therefor, we treat this as an argument directed to claim 2.
2
Although the brief argues this limitation as to claim 2, the limitation is
found in claim 3. Therefor, we treat this as an argument directed to claim 3.
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7. Regarding claims 17-19, at page 15 of the Appeal Brief,
Appellant contends that the Examiner erred because “[e]xcluding any radiant
energy below 900 nm would exclude any part of the Gerber spectrum from
780 to 900 nm, thereby rendering Gerber unfit for its intended purpose.”
8. Regarding the claims generally, at page 14 of the Appeal Brief,
Appellant contends that the Examiner erred because Gerber “teaches away
from the use of a relatively constant wavelength of 990 nm.”

ANALYSIS
We have reviewed the Examiners‟ rejections in light of Appellant‟s
contentions (App. Br. and Reply Br.) that the Examiner has erred. We
disagree with Appellant‟s conclusions.
Appellant’s “Pulsed Laser” Arguments
As we have already noted, Appellant has made a myriad of arguments
that the prior art does not teach a pulsed laser system. However, Appellant
explicitly admitted that pulsed laser systems are old and well known when
the claims were amended to add the “pulse” limitation throughout. At page
9 of the Amendment filed on March 17, 2008, the Appellant state:
Support for the amendments to these claims can be found
in the specification, such as for example on page 5 where use of
known MILES-type detectors is disclosed for use with a
plurality of laser transmitters. It is generally well-known that
laser transmitters used in connection with "Multiple Integrated
Laser Engagement System (MILES), emit an encoded pulse of
infrared radiation corresponding to the type of weapon system
employed." See U.S. Pat. No. 4,625,641 [sic 4,624,641] (Col.
1: Lines 40-44). Thus, amending above-identified claims to
recite that the beam or radiant energy referenced in the claims is
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pulsed is consistent with the claimed invention and properly
supported by the specification.
All Appellant‟s arguments to the effect that a pulsed laser distinguishes over
the prior art will not be considered given Appellant‟s explicit admission to
the contrary.
3

Claims 1 and 29-31 - Wavelength Substantially Equal to 990 nm
Appellant contends that the Examiner erred in rejecting claims 1 and
29-31 because “Gerber does not intentionally operate with a wavelength on
the order of 990 nm.” We do not agree as the 990 nm limitation is not
recited in these claims.
Claim 2 – Inherency of 990 nm
Appellant contends that the Examiner erred because “[t]he mere fact
that the Gerber CW laser could operate on 990 nm and could result in
„substantially zero atmospheric absorption due to water vapor‟ at that
frequency is not sufficient to establish inherency.” We disagree. Gerber
says that the laser is operable in the 780 nm to 2 µm range, which includes
990 nm. (Gerber 8:45-47).
Appellant has presented no evidence that the Gerber laser, which is
identical to the claimed laser, fails to possess the claimed property of
substantially zero atmospheric absorption due to water vapor. Where the
claimed and prior art products are identical or substantially identical in

3
Should there be further prosecution of the present claims, we also note that
claims 1-31 should be rejected under 35 U.S.C. § 112, first paragraph, as
lacking written description support. Contrary to Appellant‟s argument, the
mere fact that it was known in the art to use pulsed lasers is not sufficient
support for adding such to Appellant‟s claimed invention where Appellant‟s
Specification is otherwise silent as to the use of a pulsed laser.
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structure or composition, or are produced by identical or substantially
identical processes, a prima facie case of either anticipation or obviousness
has been established. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
“[W]hen the PTO shows a sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990).
Therefore, the prima facie case can be rebutted by evidence showing that the
prior art products do not necessarily possess the characteristics of the
claimed product. In re Best, 562 F.2d at 1255. See also Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).
Claim 3 – Range includes 970-1070
Appellant contends that the Examiner erred because “there is no
selection of a wavelength within a range that includes 970-1070 nm under
Gerber.” We do not agree as Gerber says that the laser operates at 780 nm to
2 µm, and this range includes the range from 970-1070 nm.
Claims 23-28 – Passband Renders Gerber Unfit
Appellant contends that the Examiner erred because “[a] passband of
900-1075 nm would exclude most of the Gerber wavelengths of from 780
nm to 2 µm, thereby rendering Gerber unfit for its intended purpose.” We
do not agree that putting a passband filter on the detector of Gerber would
render Gerber unfit for its intended purpose. To the contrary, at column 13,
lines 13-21, Gerber explicitly states (emphasis added):
If direct light 134 from the laser beam 133 is incident on
a detector 40, 92, 93, the detector will first filter out any beam
frequencies outside a designated carrier band width, and then
outside a designated modulation frequency bandwidth. Any
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signal within a designated carrier band width and modulation
frequency bandwidth will be decoded and passed to the
detector's microprocessor to determine if the pulse packet
contained in the laser beam 133 meets certain specified code
criteria.
Claims 29-31 – Filter Renders Gerber Unfit
Appellant contends that the Examiner erred because “since Gerber
uses a wavelength of from 780 nm to 2 µm, a filter of 900 nm would reject
most of the Gerber wavelengths, thereby rendering Gerber unfit for its
intended purpose.” We do not agree for the above reason.
Claims 17-19 – Excluding Renders Gerber Unfit
Appellant contends that the Examiner erred because “[e]xcluding any
radiant energy below 900 nm would exclude any part of the Gerber spectrum
from 780 to 900 nm, thereby rendering Gerber unfit for its intended
purpose.” We do not agree for the above reason.
Claims Generally – Gerber Teaches Away
Appellant contends that the Examiner erred because Gerber “teaches
away from the use of a relatively constant wavelength of 990 nm.” We do
not agree as “a constant wavelength of 990 nm” limitation is not recited in
these claims. Appellant has not pointed to claim language and we do not
find language where the claimed invention is expressly “limited” to a
constant wavelength of 990 nm.
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-16 and 20-31 as
being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 17-19 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-31 are not patentable.

DECISION
The Examiner‟s rejections of claims 1-31 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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