Ex Parte Murphy et al

Patent Trial and Appeal BoardNov 19, 2012

10521031 (P.T.A.B. Nov. 19, 2012)

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. 10/521,031 01/12/2005 Robert H Murphy 20020001-US 6558 22500 7590 11/20/2012 BAE SYSTEMS PO BOX 868 NHQ1-719 NASHUA, NH 03061-0868 EXAMINER NGUYEN, LUONG TRUNG ART UNIT PAPER NUMBER 2663 MAIL DATE DELIVERY MODE 11/20/2012 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 PATENT TRIALS AND APPEALS BOARD ____________________ Ex parte ROBERT H. MURPHY and CHRISTOPHER R. MILLER ____________________ Appeal 2011-005448 Application 10/521,031 Technology Center 2600 ____________________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005448 Application 10/521,031 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-4, 8-13, 15, 16, and 21-24. Claims 5-7, 14, and 17-20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. A. INVENTION According to Appellants, the invention is directed to imaging systems and, more particularly, to a shutter location technique for improved uniform correction (Spec. 1, ¶ [0002]). B. ILLUSTRATIVE CLAIMS Claim 1 is exemplary: 1. A thermal imaging based system adapted for imaging infra-red radiation that is emitted by a black body, the thermal imaging based system comprising: a focal plane array (FPA) having a plurality of pixels sensitive to infra-red radiation; a lens disposed between the black body and the FPA and adapted to focus the infra-red radiation emitted by the black body in front of the lens onto the FPA behind the lens, the plurality of pixels of the FPA having sufficient infra-red sensitivity so as to detect the infra-red radiation emitted by the black body as well as infra-red radiation emitted by the lens; a shutter located between the lens and the black body, the shutter having a closed state and an open state wherein the closed state prevents the infra-red radiation emitted by the black body from reaching the FPA while allowing the infra-red radiation emitted by the lens to by detected by the FPA as a Appeal 2011-005448 Application 10/521,031 3 reference image signal, and the open state allows both the infra- red radiation emitted by the black body and the infra-red radiation emitted by the lens to be detected by the FPA as an open state image signal; and a signal processing module operatively coupled to the FPA, and adapted to correct the open state image signal based on the reference image signal. C. REJECTION Claims 1-4, 8-13, 15, 16, and 21-24 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. ISSUE The dispositive issue before us is whether the Examiner has erred in finding that “infra-red radiation emitted by the lens” (claims 1, 10 and 15) is not supported by the Specification. III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Appellants’ Specification 1. Appellants’ Specification discloses a system including a shutter 110, a shutter controller 115, a lens 120, a focal plane array (FPA) 125, a signal processing module 130, and a system controller 135. Appellants’ Fig. 1 is reproduced below: Appeal 2011-005448 Application 10/521,031 4 In Fig. 1, the shutter is provided between the scene 105 and the lens 120 such that radiation emitted from the scene 105 is provided to the lens 120 when the shutter 110 is commanded to its open state, while radiation from the scene 105 is blocked from the lens 120 when the shutter 110 is commanded to its closed state (p. 6, ¶ [0025]). 2. Placing the shutter 110 in front of the lens allows internal camera flux to reach detectors of the FPA 125 during shutter calibration (p. 7, ¶ [0029]). 3. When the front lens mounted shutter is close, external scenes are blocked from being imaged and a closed state image signal that includes internal radiant flux of the system is generated, wherein the closed state image signal can be used to calibrate or otherwise compensate for pixel-to-pixel non-uniformities and offsets between open and closed states (p. 9, ¶ [0036]). IV. ANALYSIS As to independent claims 1, 10 and 15, the Examiner finds that “the newly added limitation that the FPA has sufficient sensitivity to detect Appeal 2011-005448 Application 10/521,031 5 ‘infrared rational emitted by the lens,’ … was not specifically described in the specification” (Ans. 4, emphasis omitted). Though the Examiner finds that “[t]he originally filed specification does disclose that the FPA can detect the internal flux of the system, i.e., the same of all flux being generated by all the internal components of the system,” the Examiner also finds that the Specification does not disclose “the lens itself emits infra-red radiation, i.e., ‘infra-red radiation emitted by the lens’” or “that the FPA has sufficient sensitivity to only detect infra-red radiation emitted by the lens” (Ans. 4-5, emphasis omitted). However, Appellants contend that “[t]he term ‘internal flux’ is a term of art that is well known to refer to black body infrared radiation given off by elements which are internal to the thermal imaging system, such as the lens and shutter” (App. Br. 9). Further, Appellants contend that “[t]he lens is specifically indicated in the specification as being an internal element of the imaging system” and thus “the infra-red radiation emitted by the lens is necessarily included in the internal flux” (id.). According to Appellants, “anyone of average skill, considering the specification as a whole, would immediately and unquestioningly understand that the infra-red radiation emitted by the lens itself must make a detectable contribution to the total internal flux which is detected by the FPA” (Reply Br. 6). Upon review of the record, we agree with Appellants. In particular, Appellants’ Specification discloses placing the lens between the shutter and the FPA (FF 1) so that, when the shutter is closed, internal camera flux is allowed to reach the FPA (FF 2). A closed state image signal that includes the internal radiant flux is then generated (FF 3). Appeal 2011-005448 Application 10/521,031 6 We agree with Appellants that “[t]he lens is specifically indicated in the specification as being an internal element of the imaging system” and thus “the infra-red radiation emitted by the lens is necessarily included in the internal flux” (App. Br. 9). That is, we agree that “the infra-red radiation emitted by the lens itself must make a detectable contribution to the total internal flux which is detected by the FPA” (Reply Br. 6). It is incumbent upon the Examiner to demonstrate that the application disclosure as originally filed does not provide written descriptive support for the concept of what is later claimed. In re Anderson, 471 F.2d 1237, 1242, (CCPA 1973); Ex parte Parks, 30 USPQ2d 1234 (BPAI 1993); Ex parte Grasselli, 231 USPQ 393 (BPAI 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). Here, we determine that the Examiner has not demonstrated that the “infra-red radiation emitted by the lens” recited in claim 1 introduces a new concept not provided in the application disclosure, as originally filed, in violation of the first paragraph of 35 U.S.C. § 112. In this regard, we note that the application disclosure, as originally filed, reasonably conveys to one of ordinary skill in the art that the inventors of the present invention had possession of a lens emitting infra-red radiation to be detected by the FPA. Since the Examiner has not made a clear showing that the added language “infra-red radiation emitted by the lens” recited in claims 1, 10 and 15 introduces a new concept not provided in the application disclosure, the Examiner has failed to meet the initial burden of proof required for the rejection pursuant to 35 U.S.C. § 112 first paragraph. Accordingly, we are constrained to reverse the Examiner’s rejection of independent claims 1, 10, Appeal 2011-005448 Application 10/521,031 7 and 15 and of claims 2-4, 8, 9, 11-13, 16, and 21-24 depending respectively therefrom which are rejected based solely on their dependency (Ans. 4). V. CONCLUSION AND DECISION The Examiner’s rejection of claims 1-4, 8-13, 15, 16, and 21-24 under 35 U.S.C. § 112, first paragraph is reversed. REVERSED peb