Ex Parte SilnyDownload PDFPatent Trial and Appeal BoardMay 31, 201713489531 (P.T.A.B. May. 31, 2017) Copy Citation 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”). 2 Appeal 2016-003519 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. 3 Appeal 2016-003519 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, 4 Appeal 2016-003519 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. 5 Appeal 2016-003519 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 6 Appeal 2016-003519 Application 13/489,531 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 7 Copy with citationCopy as parenthetical citation