Ex Parte May

Patent Trial and Appeal Board

May 7, 2013

11261745 (P.T.A.B. May. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte RANDY DEAN MAY
____________

Appeal 2010-009904
Application 11/261,745
Technology Center 2800
____________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009904
Application 11/261,745

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-8, 11-17, and 20-23 (App. Br. 5). Claims 9-10 and 18-19 were
cancelled (id.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 1 follows:
1. A method comprising:

determining intensity measurements from an exterior
surface of a mobile platform characterizing at least two
absorption lines for a molecule of interest within at least one
sample of gas;

calculating at least one ratio based on the intensity
measurements for the at least two absorption lines; and

associating the at least one calculated ratio with a level of
an environmental parameter of interest;

the mobile platform being an aircraft; and

the determining comprising:

directing a light source operable to emit light at
wavelengths associated with the at least two absorption lines
from a first external surface of the aircraft in free space and
without the use of an absorption cell to a reflector mounted on a
second external surface of the aircraft through air outside of a
boundary layer associated with the aircraft, the reflector
reflecting light towards a receiver mounted on a third external
surface of the aircraft, the receiver directing the reflected light
to a detector; and
Appeal 2010-009904
Application 11/261,745

3

detecting the light directed to the detector.
The Rejections
Claim 23 stands rejected under 35 U.S.C. 112, first paragraph, as
failing to comply with the written description requirement (Ans. 4).
Claims 1-8, 11-17, 20, 22, and 23 stand rejected under 35 U.S.C.
103(a) as being unpatentable over Cooper (US 5,572,031) in view of Tulip
(US 2003/0213912 A1), and Webster (“Simultaneous in Situ Measurements
and Diurnal Variations of NO, NO2, O3, jNO2, CH4, H2O, and CO2 in the 40-
to 26km Region Using an open Path Tunable Diode Laser Spectrometer,”
October 20, 1987) (Ans. 4-13).
Claim 21 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Cooper, Tulip, Webster and Fineman (US 4,803,470)
(Ans. 13-14).

FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer
(Ans. 3, et seq.).

ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Does the specification provide support for the claim limitation
that “there is one detector for each light source, and wherein there are filters
corresponding to the different absorption doublets interposed between the
respective light sources and detectors", as recited in claim 23?
Appeal 2010-009904
Application 11/261,745

4
2. Would the combination of Cooper, Tulip, and Webster have
taught or suggested “directing a light source . . . from a first external surface
of the aircraft in free space and without the use of an absorption cell to a
reflector mounted on a second external surface of the aircraft through air
outside of a boundary layer associated with the aircraft,” as recited in
independent claim 1, and as similarly recited in independent claims 14, 16,
and 20?

ANALYSIS
Written Description Rejection of Claim 23
The Examiner rejected claim 23 for failing to meet the written
description requirement because “there is not [sic] support for one detector
for each light source; rather there is support for having multiple detectors
coupled to filters to detect certain wavelengths” (Ans. 14). Appellant
argues, however, that FIGs. 6 and 7 and the associated text of the
Specification provide support for one detector for each light source (App.
Br. 12). We agree with Appellant. The Specification states that “in some
variations, two separate lasers (e.g., DFB ofVCSEL lasers), may be used so
that each laser is configured to tune across one selected O2 doublet, such as
the doublets shown in FIGs. 6 and 7 (¶ [0046]). Accordingly, we find error
in the Examiner’s rejection of claim 23 as failing to meet the written
description requirement.
Obviousness Rejection of Claims 1-8, 11-17, and 20-23
Appellant contends that the Examiner erred in rejecting independent
claim 1 as obvious because the combination of Tulip, Cooper, and Webster
does not teach or suggest “an arrangement in which light is emitted outside a
Appeal 2010-009904
Application 11/261,745

5
boundary layer of an aircraft in free space and without the use of an
absorption cell as recited in the claims” (App. Br. 14). In support of their
contention, Appellant argues that “[a] boundary layer can be characterized as
a layer of fluid in the immediate vicinity of a bounding surface, in this case
an external surface of an aircraft” (id.). Appellant also contends that “[t]he
skilled artisan would not have been motivated to combine the Cooper, Tulip
and Webster / and in fact, the references lead away from each other” (id. at
15). Appellant argues that neither “Tulip or Cooper suggest that an open
path system could be used instead of an absorption cell nor does Webster
suggest that its weather balloon mounted system could be arranged on a
scale much smaller than 500 meters and on a fast moving platform such as
an aircraft” (id. at 16).
The Examiner concluded, however, that Cooper teaches determining
“a level of an environmental parameter of interest” (Ans. 5). In addition, the
Examiner concluded that “mounting a laser absorption cell on the exterior
surface of a mobile platform, such as an aircraft, if environmental
parameters outside the surface need to be determine is regarded as a
straightforward, standard design option, as taught by Tulip” (Ans. 15). The
Examiner also concluded that “Webster teaches directing a light source in
free space and without the use of an absorption cell to a reflector for
detecting stratospheric gas concentrations” (id. at 16).
We agree with the Examiner’s conclusion and underlying findings of
fact. Our reviewing court requires us to give a claim its broadest reasonable
meaning consistent with the Specification. In re Morris, 127 F.3d 1048,
Appeal 2010-009904
Application 11/261,745

6
1054 (Fed. Cir. 1997). Appellant’s Specification discloses directing a light
source to a reflector through air outside of an exterior surface of an aircraft:
a light source 520 may emit light from a central fuselage of the
aircraft 510 to an engine housing which has a reflector 530
mounted thereon. The reflector 530 reflects light to either a
detector 540 or a receiver which in turn directs the light to a
detector. With this configuration, the emitted light is directed
through a volume of air that is substantially out of the aircraft
boundary layer.
(FIG. 5B; ¶ [0044]). Accordingly, under the proper claim construction
standard, the claim term “boundary layer” means the exterior surface.
Cooper discloses that “the sample temperature T can be determined
from measurement of the signal ratio” (col. 8, ll. 60-62). Furthermore, Tulip
discloses a gas detector including “a photo-detector mounted with the laser
absorption cell exterior to the vehicle to detect light that has made at least
one pass of the laser absorption cell” ([0004]). In addition, Webster teaches
directing a light in free space without using an absorption cell for detecting
various stratospheric gas concentrations (Abstract). Therefore, we conclude
that in view of Appellant’s broad use of the term “boundary layer” in the
Specification, the claim limitation of directing a light source from an
external surface of an aircraft without the use of an absorption cell to a
reflector mounted on a second external surface of the aircraft through air
outside of the aircraft’s boundary layer is a combination of the familiar
elements taught by Cooper, Tulip and Webster that would have yielded
predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
We also note that a prior art reference does not teach away from the
claimed invention unless it criticizes, discredits or otherwise discourages the
claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appeal 2010-009904
Application 11/261,745

7
Appellant did not show that Tulip or Cooper criticizes a light detection
system without an absorption cell or to that Webster criticizes using a light
detection system on an aircraft (see App. Br. 18).
Thus, we find no error in the Examiner’s obviousness rejection of
independent claims 1, 14, 16, and 20 as well as the claims on appeal
dependent therefrom because Appellant did not set forth any separate
patentability arguments for those claims (see App. Br. 15-16).

DECISION
We reverse the Examiner’s decision rejecting claim 23 for failing to
meet the written description requirement. We affirm the Examiner’s
decision rejecting claims 1-8, 11-17, and 20-23 as being unpatentable under
35 U.S.C. § 103(a).
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

tkl