Ex Parte Silny

Patent Trial and Appeal Board

May 31, 2017

13489531 (P.T.A.B. May. 31, 2017)

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.
13/489,531 06/06/2012 John F. Silny R2057-704319(l 1-2429) 1013
84250 7590 06/02/2017
LANDO & ANASTASI, LLP
R2013
ONE MAIN STREET, SUITE 1100
CAMBRIDGE, MA 02142
EXAMINER
GUNBERG, EDWIN C
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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 JOHN F. SILNY1
Appeal 2016-003519
Application 13/489,531
Technology Center 2800
Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from an
Examiner’s decision finally rejecting claims 1—5, 8—16, and 18—23. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Representative claim 1 is reproduced below from the Claims
Appendix of the Appeal Brief. The limitation at issue is italicized.
1. A multi-band imaging spectrometer comprising:
1 According to the Appellant, the real party in interest is Raytheon
Company. Appeal Brief dated June 5, 2015 (“Br.”), at 3.
Appeal 2016-003519
Application 13/489,531
an objective optical system;
an optical spectrometer sub-system including a
diffraction grating, the optical spectrometer sub-system
configured to receive and collimate an input beam from the
objective optical system to provide a collimated beam at the
diffraction grating, the diffraction grating configured to disperse
the collimated beam into at least two discrete, spectrally
separated spectral bands, which are offset from one another in
the spectral dimension, using a corresponding at least two
different diffraction orders of diffraction grating, each spectral
band including a plurality of wavelengths;
a single entrance slit positioned between the objective
optical system and the optical spectrometer sub-system and
configured to direct the input beam from the objective optical
system to the optical spectrometer sub-system, the single
entrance slit providing spatial co-registration of the at least two
discrete, spectrally separated spectral bands; and
a single focal plane array optically coupled to the
diffraction grating and configured to simultaneously receive the
at least two discrete, spectrally separated spectral bands, offset
from one another in the spectral dimension, and to produce an
image from the at least two discrete, spectrally separated
spectral bands.
Br. 8.
The claims on appeal stand rejected as follows:
(1) claims 1 and 14 under 35 U.S.C. § 103(a) as unpatentable over
LeVan2 in view of Eismann;3
(2) claims 2—5, 8, and 20-23 under 35 U.S.C. § 103(a) as
unpatentable over LeVan in view of Eismann, and further in view of Cook;4
2 US 6,104,488, issued August 15, 2000 (“LeVan”).
3 US 5,760,899, issued June 2, 1998 (“Eismann”).
4 US 5,260,767, issued November 9, 1993 (“Cook”).
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Application 13/489,531
(3) claims 9—13, 15, 16, and 19 under 35 U.S.C. § 103(a) as
unpatentable over LeVan in view of Eismann and Baliga et al.;5 and
(4) claim 18 under 35 U.S.C. § 103(a) as unpatentable over LeVan
in view of Eismann and Baliga, and further in view of Cook.
B. DISCUSSION
1. Rejection (1)
The Examiner finds, and the Appellant does not dispute, that LeVan
discloses a multi-band imaging spectrometer as recited in claim 1 with the
exception of the claimed single focal plane array. Final 3.6 More
specifically, the Examiner finds LeVan does not expressly disclose that
single focal plane array 304 (LeVan Fig. 3) is configured to simultaneously
receive at least two discrete, spectrally separated spectral bands, offset from
one another in the spectral dimension, as recited in claim 1. Final 3.
Nonetheless, the Examiner finds, and the Appellant does not dispute, that
Eismann discloses a focal plane array configured as recited in claim 1. Final
3. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art “to use the spatially separated wavelength bands and
focal plane array of Eismann with the spectrometer of Le Van.” Final 4.
The Appellant argues that the proposed combination of LeVan and
Eismann would not have been obvious for several reasons. First, the
Appellant argues:
LeVan relies on the ability provided by the dual-band focal
plane array technology to simultaneously image overlapping
spectral bands. LeVan explicitly states that his invention is
5 US 2008/0251724 Al, published October 16, 2008 (“Baliga”).
6 Final Office Action dated December 26, 2014.
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Application 13/489,531
based on the use of the dual-band focal plane array technology,
and describes numerous benefits that are achieved as a result.
The dual-band focal plane array and ability to simultaneously
image overlapping spectral bands is at the very heart and
essence of LeVan’s invention, and is central to the principle of
operation of LeVan’s system. The modification proposed in the
Office Action would remove this fundamental basis of LeVan’s
invention, resulting both in the loss of the benefits disclosed by
LeVan and alteration of the principle of operation of LeVan.
Br. 5 (original emphasis omitted).
We recognize that LeVan’s focal plane array is configured to image
simultaneously in two wavebands whereas Eismann’s focal plane array is
configured to simultaneously receive at least two discrete, spectrally
separated spectral bands. However, the Examiner finds, and the Appellant
does not dispute, that both focal plane arrays detect multiple spectral bands.
See Final 4. Thus, it is unclear on this record why substituting one known
focal plane array for another known focal plane array “would require a
substantial reconstruction and redesign of the elements shown in [LeVan] as
well as a change in the basic principles under which [LeVan’s spectrometer]
was designed to operate.”7,8 In re Ratti, 270 F.2d 810, 813 (CCPA 1959);
7 We note LeVan discloses that an obvious variation of the invention
includes the following example:
[S]pectroscopy in the wavelength regions from 2 to 4 and 8 to
16 microns could be realized with a dualband FPA [focal plane
array] having its first wavelength cutoff between 4 and 8
microns, and its second cutoff beyond 16 microns. In this case .
. . the two spectral orders are non-contiguous.
LeVan, col. 3,11. 56—62.
8 We note the Appellant relies on MPEP § 2143.01(V) to support his
argument. Br. 5. That section of the MPEP is entitled “THE PROPOSED
MODIFICATION CANNOT RENDER THE PRIOR ART
UNSATISFACTORY FOR ITS INTENDED PURPOSE.” On this record,
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Application 13/489,531
see also KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Second, the Appellant argues that LeVan “discloses several
disadvantages associated with the ‘conventional’ spectrometers, such as that
disclosed in Eismann,” and “provides improvements over the approach
disclosed in Eismann.” Br. 6 (citing LeVan, col. 1,1. 55—col. 2,1. 11). The
Appellant argues that the disadvantages disclosed in LeVan include “limited
spectral bandwidth for non-degraded performance and higher cooling
requirements.” Br. 6.
Significantly, the Appellant has failed to show that the disadvantages
disclosed in LeVan are directed to Eismann’s spectrometer. In that regard,
we note Eismann discloses similar disadvantages in the discussion of the
prior art dispersive imaging spectrometer. See Eismann, col. 2,11. 4—29.
However, Eismann discloses that “[t]he instant invention improves upon the
dispersive approach by allowing TDI [time-delay-integrate] operation.”
Eismann, col. 4,11. 49—50.
Moreover, “a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006). In this case, the Appellant has failed to show that any
disadvantages associated with Eismann’s focal plane array substantially
outweigh the advantages.
the Appellant has also failed to show that the proposed modification renders
LeVan’s spectrometer inoperable for its intended purpose, i.e., creating
spectral images.
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Application 13/489,531
Finally, the Appellant argues:
The only rationale or motivation set forth in the Office
Action as the basis for the proposed modification/combination
is speculation regarding the potential absence or unavailability
of the multi-band focal plane arrays used by LeVan. However,
the Final Office Action has provided no evidence that would
suggest that the dual-band focal plane arrays used in LeVan
would have been unavailable at the time of Applicant’s
invention.
Br. 6.
The Appellant’s argument is not persuasive of reversible error. The
Examiner finds the focal plane arrays disclosed in LeVan and Eismann both
detect multiple spectral bands. See Final 4. Thus, we understand the
Examiner to find that the focal plane array disclosed in Eismann would have
been a suitable substitute for the focal plane array disclosed in LeVan. See
In re Font, 675 F.2d 291, 301 (CCPA 1982) (“Express suggestion to
substitute one equivalent for another need not be present to render such
substitution obvious.”). The Appellant has failed to establish otherwise.
In sum, a preponderance of the evidence supports the Examiner’s
conclusion of obviousness. Thus, for the reasons stated above and in the
Examiner’s Answer dated December 10, 2015, the § 103(a) rejection of
claim 1 is sustained.
The Appellant does not present arguments in support of the separate
patentability of claim 14. Br. 7. Therefore, the § 103(a) rejection of claim
14 is also sustained.
2. Rejections (2)—(4)
The Appellant argues that “none of the tertiary references [i.e., Baliga
and Cook] cures the deficiencies in the proposed combination of LeVan and
Eismann.” Br. 7. For the reasons set forth above, there are no deficiencies
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in the combination of LeVan and Eismann that require curing by the
remaining prior art of record. Therefore, the § 103(a) rejections of claims 2—
5, 8—13, 15, 16, and 18—23 are also sustained.
C. DECISION
The Examiner’s decision is 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).
AFFIRMED
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