Ex Parte Woida-O

Patent Trial and Appeal BoardDec 22, 2016

13604940 (P.T.A.B. Dec. 22, 2016)

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. 13/604,940 09/06/2012 Rigel Quinn Woida-O'Brien R2058-701219(11-1855B) 2059 84250 7590 12/27/2016 LANDO & ANASTASI, LLP R2013 ONE MAIN STREET, SUITE 1100 CAMBRIDGE, MA 02142 EXAMINER CHWASZ, JADE R ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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 RIGEL QUINN WOIDA-O’BRIEN Appeal 2015-007274 Application 13/604,9401 Technology Center 2800 Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and BRIAN D. RANGE, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 1—4, 6—12, 15, 16, 18, and 19 in the above- identified application.3 We have jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies Raytheon Company as the real party in interest. Appeal Br. 3, Feb. 26, 2015. 2 Office Action, Sept. 5, 2014 [hereinafter Final Action], 3 Excluded from the appeal are claim 5, which the Examiner has allowed, and claims 13, 14, and 17, which the Examiner has found to contain allowable subject matter. See Appeal Br. 1; see also Final Action 10-11. Appeal 2015-007274 Application 13/604,940 BACKGROUND Appellant’s invention relates to “providing a lightweight and low cost field boresighting apparatus and method of manufacturing and using the same.” Spec. 7. Independent claim 1 is representative of the claims on appeal: 1. An optical apparatus comprising: a first laser source configured to generate a first laser beam having a first wavelength in an infrared spectral range, the infrared spectral range including at least one of the short wavelength infrared (SWIR), mid wavelength infrared (MWIR), and long wavelength infrared (LWIR) spectral ranges', a holographic medium optically coupled to the laser source and having a transmittance range including the first wavelength; and a diffraction pattern formed in the holographic medium and which encodes an input image, the diffraction pattern configured to diffract the first laser beam responsive to being illuminated by the first laser beam so as to construct an image in one of the short wavelength infrared (SWIR), mid wavelength infrared (MWIR), and long wavelength infrared (LWIR) spectral ranges, the image being a reconstruction of the input image. Appeal Br. 11 (emphasis added). Claim 8 is also independent, comprising limitations similar to claim 1 with regard to the infrared spectral range. Id. at 12-13. The Specification does not explicitly define the SWIR, MWIR, and LWIR spectral ranges referenced in claim 1. See Spec. 7. However, Appellant does not dispute the Examiner’s definition of these ranges as follows: Short-wavelength infrared (SWIR) is generally defined as 1400- 3000 nm, mid-wavelength infrared (MWIR) is generally defined 2 Appeal 2015-007274 Application 13/604,940 as 3000-8000 nm, and long-wavelength infrared (LWIR) is gen erally defined as 8000—15000 nm. It is commonly accepted in the art that the wavelength ranges have touching, and in some cases, overlapping ranges when defining wavelengths of visible and infrared light bands. Answer 3. The Examiner maintains the following grounds of rejection: 1. Claims 1—4, 7, 8, 16, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tai4 in view of Gerber.5 See Final Action 3—7. 2. Claims 6, 9-12, 15, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tai in view of Gerber, and further in view of Maehara.6 See Final Action 7—10. Tai describes a holographic sight for a firearm, which uses a laser source to produce a visible reticle pattern in the sight, for use in aiming. See, e.g., 7:53—8:24 (claim 1). Gerber describes a coded laser identification system for mounting on a weapon, used to identity friendly soldiers. See Gerber 1:4—27. Gerber gives an example of a laser that “emits light of a wavelength of 820 nm with constant output (not pulsing),” id. 10:16—17, and teaches that “[t]he employment of a laser emitting in the near infrared range, i.e., at a wavelength of less than 1000 nm, provides several advantages,” including that “semiconductor lasers emitting at these wavelength ranges can be 4 Anthony M. Tai & Eric J. Sieczka, U.S. Patent No. US 6,490,060 B1 (issued Dec. 3, 2002) [hereinafter Tai]. 5 Peter Gerber, U.S. Patent No. US 6,450,816 (issued Sept. 17, 2002) [hereinafter Gerber], 6 Hiroshi Maehara, U.S. Patent Application Pub. No. US 2006/0092517 A1 (published May 4, 2006). 3 Appeal 2015-007274 Application 13/604,940 operated to emit continuously. By means of this the emitted light can be precisely modulated in a simple manner (pulse code modulation/chopper), wherein the signal-to-noise ratio in the emanating lightbeam is improved.” Gerber 10:26-34. DISCUSSION The Examiner finds that Tai teaches the limitations of claim 1, except that it “does not explicitly disclose that the wavelength is in an infrared spectral range.” Final Action 4. However, the Examiner finds that Gerber teaches “a device which utilizes light sources producing an infrared spectrum and a visible spectrum.” Id. (citing Gerber 10:4—60, 15:40-49, claims 1—3, Figs. 15, 16). The Examiner finds that Gerber teaches the use of a laser that “emits light of a wavelength of 820 nm with constant output (not pulsing), or of any arbitrary other wavelength, preferably in the range between 780 and 1000 nm.” Answer 4 (citing Gerber 10:16—20). The Examiner finds that this benefit would extend beyond the 780 nm to 1000 nm range, because “the statement of Gerber is written in the alternative.” Answer 5. Thus, the Examiner concludes that [I]t would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify the light source of Tai et al., as taught by Gerber, in order to provide a device in which a laser can be configured to emit continuously. Final Action 4. The Examiner makes substantially the same findings and conclusions regarding independent claim 8. See id. at 5—6. The Examiner’s rationale for combining Tai with Gerber in support of the conclusion of obvious is not persuasive. Gerber’s statement regarding continuous emission, cited by the Examiner, must be read in the context of 4 Appeal 2015-007274 Application 13/604,940 Gerber’s further explanation that an advantage of using a “laser emitting in the near infrared range, i.e. at a wavelength of less than 1000 nm” is that it “can be operated to emit continuously.” Gerber 10:27—30. This teaching establishes a benefit for using lasers in the near infrared spectral range (i.e., less than about 1000 nm). However, Gerber cannot reasonably be interpreted as teaching that this benefit extends to higher wavelengths, such as the SWIR, MWIR, or LWIR spectral ranges required by claims 1 and 8. Although the Examiner correctly notes that Gerber does not limit the wavelength exclusively to the preferred range of 780-1000 nm, see Answer 3—4, the evidence on this record does not support the Examiner’s stated reason for why a person of ordinary skill in the art would have used a wavelength of about 1400 nm or higher in the context of forming a reticle as in Tai. The Examiner also concludes that a prima facie case of obviousness exists because the ranges in the claim and in the prior art are “close enough that one skilled in the art would have expected them to have the same properties.” Answer 4 (citing Titanium Metals Corp. of America v. Nabber, 778 F.3d 775 (Fed. Cir. 1985)). However, the Examiner has not pointed to any factual evidence or technical reasoning that the spectral ranges are so close that a person of ordinary skill in the art would have expected the use of the near infrared spectral range to be substantially equivalent to the use of SWIR or higher wavelengths. We note, to the contrary, that Gerber makes a functional distinction between near infrared and higher wavelengths: according to Gerber, the use of a near-infrared laser with a wavelength less than 1000 nm allows for continuous emission, presumably unlike a laser 5 Appeal 2015-007274 Application 13/604,940 operating at higher wavelengths that would include SWIR, MWIR, and LWIR. See Gerber 10:16-20, 26-34. For the above reasons, the Examiner reversibly erred in rejecting independent claims 1 and 8. The rejections of dependent claims 2—4, 6, 7, 9—12, 15, 16, 18, and 19 do not remedy this error. Thus, we reverse the Examiner’s decision to reject claims 1—4, 6—12, 15, 16, 18, and 19. DECISION The Examiner’s decision is reversed. REVERSED 6