RAYTHEON COMPANY

Patent Trials and Appeals Board

Sep 22, 2021

2021000466 (P.T.A.B. Sep. 22, 2021)

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.
14/603,877 01/23/2015 Philip T. Shimon R2057-708619(14-5787) 1068
84250 7590 09/22/2021
LANDO & ANASTASI, LLP
Raytheon
60 STATE STREET, 23RD FLOOR
BOSTON, MA 02109
EXAMINER
FIN, CAROLYN
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
09/22/2021 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):
CKent@LALaw.com
DOCKETING@LALaw.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP T. SHIMON
____________

Appeal 2021-000466
Application 14/603,877
Technology Center 2800
____________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3, 5, 7, 11–13, 15, and 22–26.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Raytheon Company as the real party
in interest. Appeal Brief, filed June 12, 2020 (“Appeal Br.”) 3.
2 Final Office Action, mailed September 13, 2019 (“Final Act.”).
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STATEMENT OF THE CASE
Background
The subject matter on appeal relates “to a controllable optical phased
array having continuous adjustable focus and defocus capabilities.”
Specification, filed January 23, 2015 (“Spec.”) 1:28–30. According to the
Specification, optical systems can be used for range finding, target
designation, and active illumination. Id. at 1:5–6. The Specification
explains that target designation involves illuminating a target with a system
that typically has a narrow laser field of view in order to maximize the
system’s range. Id. at 1:11–14. Active illumination systems, however,
typically require a wide field of view to image a scene, such as with short
wave infrared light. Id. at 1:15–19. Light from an active illumination
system is reflected from the target and its surrounding environment,
collected, and used to make a visual representation of the target and
surrounding area. Id. at 1:19–23.
According to the Specification, a tactical laser having a narrow field
of view for designating a target may not provide sufficient illumination of a
target and its surrounding area for active illumination operations. Id. at
4:29–5:2. Also, fixed narrow field of view systems experience beam
divergence as the distance to a target dramatically increases, which increases
a target indicator’s size at the target and disrupts the indicator’s accuracy
and secrecy. Id. at 5:2–6. The Specification describes attempts to remedy
this issue using mechanically interchangeable lenses, but notes that such
optical systems have increased weight and require fine tuning and precision
control that is time consuming and impractical when an optical system is in
motion. Id. at 5:6–11. In view of this, the Specification describes “a
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controllable optical phased array having continuous adjustable focus and
defocus abilities to switch between optical system operations or maintain a
target indicator size.” Id. at 5:13–16.
Of the appealed claims, claims 1 and 12 are independent. We
reproduce below claim 1, which is representative of the subject matter on
appeal.
1. An electro-optical sighting system comprising:
a short wave infrared active illumination laser configured
to emit a first infrared beam along an optical path toward a target
within a viewed scene;
a target designation laser configured to emit a second
infrared beam along the optical path toward the target to direct
an infrared beam target indicator onto the target;
a beam director positioned in the optical path and having
a plurality of optical elements configured to direct at least one of
the first infrared beam and the second infrared beam, and to
collect reflected infrared radiation from reflection of the at least
one of the first infrared beam and the second infrared beam from
the target;
a focal plane array detector configured to receive collected
reflected infrared radiation from the beam director;
an optical phased array positioned in the optical path
between the short wave infrared active illumination laser and the
beam director, the optical phased array being further positioned
in the optical path between the target designation laser and the
beam director; and
a controller operatively coupled to the optical phased array
and configured to direct the optical phased array to defocus the
first infrared beam to broaden a field of view of the short wave
infrared active illumination laser for active illumination, and to
generate an image of the scene including the target, and
wherein the controller is further configured to direct the
optical phased array to focus the second infrared beam to narrow
a field of view of the target designation laser for target
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designation, and configured to direct the optical phased array to
maintain an indicator size of the infrared beam target indicator
on the target, based on the generated image.
Appeal Br. 13 (Claims App’x).
The Rejection
The Examiner maintains, and Appellant requests review of, the
rejection of claims 1–3, 5, 7, 11–13, 15, and 22–26 under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement. Final Act. 4–
6.
OPINION
The Examiner provides reasons for rejecting claims 1–3, 5, 7, 11–13,
15, and 22–26 based on the limitations of independent claims 1 and 12, and
also provides separate reasons for rejecting claim 5. Id. We address these
different bases of rejection below.
Claims 1–3, 5, 7, 11–13, 15, and 22–26
The Examiner finds that claims 1–3, 5, 7, 11–13, 15, and 22 “cover
any and all ways of ascertaining an infrared beam target indicator size and
maintaining the infrared beam target indicator size,” but that Appellant’s
Specification does not disclose “any particular way of ascertaining an
infrared beam target indicator size or maintaining the infrared beam target
indicator size.” Id. at 5–6. Therefore, the Examiner finds that claims 1–3, 5,
7, 11–13, 15, and 22 fail to comply with the written description requirement.
Id. at 6. The Examiner cites the Supplemental Examination Guidelines for
Determining Compliance with 35 U.S.C. 112 and for Treatment of Related
Issues in Patent Application, 76 Fed. Reg. 7162 (Feb. 9, 2011) (“2011
Examination Guidelines”) to support the rejection. Id. at 5.
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Citing the 2011 Examination Guidelines, Appellant argues that
Figure 2 and several passages of the Specification provide written
description support for claim 1. Appeal Br. 5–7. Appellant contends that an
optical phased array (“OPA”) “is a well-known component” and
“[p]rogramming a controller to cause an OPA to broaden or narrow its field
of view based on specific inputs (e.g., an image or reflected radiation) is
within the skill set of one of ordinary skill in the art.” Id. at 8. Appellant
also argues that the Examiner’s comments in the Advisory Action dated
March 6, 2020 implicate §§ 112(b) and 112(f), not written description under
§ 112(a). Id. at 9.
Before analyzing the rejection and Appellant’s arguments, we note
that the Office has issued new guidance since the 2011 Examination
Guidelines, specifically, Examining Computer-Implemented Functional
Claim Limitations for Compliance with 35 U.S.C. 112, 84 Fed. Reg. 57 (Jan.
7, 2019) (“2019 Examination Guidelines”). Like the 2011 Examination
Guidelines, the 2019 Examination Guidelines state that, in order to satisfy
the written description requirement, a specification must describe a claimed
invention in sufficient detail such that one of ordinary skill in the art can
reasonably conclude that the inventor had possession of the claimed
invention at the time of filing. 2011 Examination Guidelines 7170;
2019 Examination Guidelines 61. These statements are similar to the basic
requirement that “[t]he disclosure must “reasonably convey[ ] to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date,” as set forth in Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
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The 2019 Examination Guidelines further state that “[i]nformation
that is well known in the art need not be described in detail in the
specification,” but “sufficient information must be provided to show that the
inventor had possession of the invention as claimed.” 2019 Examination
Guidelines 61. “For computer-implemented functional claims, the
determination of the sufficiency of the disclosure will require an inquiry into
the sufficiency of both the disclosed hardware and the disclosed software
(i.e., “how [the claimed function] is achieved . . .), due to the
interrelationship and interdependence of computer hardware and software.”
Id. (quoting Vasudevan Software, Inc. v. Microstrategy, Inc., 782 F.3d 671,
683 (Fed. Cir. 2015) (first alteration in original)). “It is not enough that one
skilled in the art could theoretically write a program to achieve the claimed
function, rather the specification itself must explain how the claimed
function is achieved to demonstrate that the applicant had possession of it.”
Id. at 62 (citing Vasudevan, 782 F.3d at 682–83).3 We, therefore, consider
whether Appellant’s disclosure reasonably conveys possession of the
claimed invention to one of ordinary skill in the art. The Examiner responds
to Appellant’s arguments, finding that the Specification passages Appellant
cites are insufficient to satisfy the written description requirement because

3 In Vasudevan, the district court granted summary judgment finding the
claims of the involved patent invalid for lack of written description support.
782 F.3d at 681. The Federal Circuit reversed that determination on appeal
after concluding that genuine issues of material fact existed regarding
whether the specification and an original claim showed possession of the
claimed invention. Id. at 682–683. In so doing, the court also found that
expert testimony raised a genuine issue of material fact about whether the
patent’s specification showed how to achieve a claimed functionality. Id. at
683.
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they do “not provide any particular way of how the target indicator size is
actually determined nor how the target size is maintained” and lack “the
description of any algorithm(s), calculation(s), or process(es) to achieve the
results.” Ans. 5–6.4 Thus, our analysis focuses on support for claim 1’s
limitation of a controller being “configured to direct the optical phased array
to maintain an indicator size of the infrared beam target indicator on the
target, based on the generated image.”
For the following reasons, Appellant’s arguments are unpersuasive.
Appellant argues that the Specification provides a method, including the
steps in Figure 2 and a controller feedback loop for adjusting the field of
view to perform range finding, target designation, and active illumination.
Appeal Br. 6, 10. With regard to claim 1’s limitation of a controller being

4 The Examiner also finds that the claims limit the short wave infrared
illumination laser and the target designation laser to emit their beams along
the same optical path and that the same optical array is controlled to both
defocus the short wave infrared illumination laser and focus the target
designation laser. Ans. 4. The Examiner further finds that Appellant’s
disclosure does not discuss the same focal plane array being controlled to
both defocus a first infrared beam and to focus a second infrared beam to
ascertain an infrared beam target indicator size and maintain the infrared
beam target indicator size. Id. at 5–8. The Specification, however, explains
how an optical phased array may include multiple optical phased arrays
having a metallic compound that changes the refractive qualities of the
optical phased array in response to an electrical signal, such as from a
controller, to focus or defocus an infrared beam. Spec. 9:8–20. Therefore,
the Specification provides support for focusing or defocusing an infrared
beam. Also, the claims do not require that an optical phased array defocuses
the first infrared beam and focuses the second infrared beam at the same
time. To the extent the Examiner is considering whether one of ordinary
skill in the art would be able to practice the claimed invention in light of
Appellant’s description without undue experimentation, the Examiner does
not reject the claims for lack of enablement.
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“configured to direct the optical phased array to maintain an indicator size of
the infrared beam target indicator on the target, based on the generated
image,” Figure 2 merely shows step P208, labeled “Analyzing Received
Reflected Infrared Radiation.” This alone provides insufficient detail to
reasonably convey possession to one of ordinary skill in the art for this
computer-implemented function. See 2019 Examination Guidelines 61–62
(explaining that for a computer-implemented, software related claim, an
applicant must provide an algorithm, e.g., a mathematical formula, prose, a
flow chart, or “in any other manner that provides sufficient structure”).
Appellant also cites to page 13, lines 10–20,5 of the Specification as
describing step P208. Id. at 7. This paragraph states:
In one embodiment, receiving reflected infrared radiation from
reflection of the beam from the target at a focal plane array
further includes analyzing the collected reflected infrared
radiation (shown optionally as ghost box P208). In various
embodiments, analyzing the reflected infrared radiation can
include generating images of a scene including the target from
the reflected infrared radiation directed onto the focal plane
array. For example, as discussed above, in response to receiving
reflected infrared radiation, the controller may generate images
of the scene and objects the infrared beam is reflected from and
review those images to determine whether the field of view
should be increased or decreased. For example, based on the
image(s) generated, the controller can be configured to determine
whether the optical phased array should focus or defocus the
beam to maintain the desired size of the infrared beam target
indicator.
Spec. 13:10–20. Unlike the patent at issue in Vasudevan, this disclosure
does not provide sufficient detail, specifically of a controller maintaining an

5 Appellant cites to the published Specification. Appeal Br. 3. We refer to
corresponding passages in the Specification filed January 23, 2015.
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indicator size based on a generated image, as claim 1 recites. Instead, this
paragraph generically describes analyzing an image created from reflected
infrared radiation and includes the statements that images can be reviewed
“to determine whether the field of view should be increased or decreased”
and that “based on the image(s) generated, the controller can be configured
to determine whether the optical phased array should focus or defocus the
beam to maintain the desired size of the infrared beam target indicator.”
Such statements merely describe a result without sufficient detail for
achieving the result, which is insufficient. “The written description
requirement is not met if the specification merely describes a ‘desired
result.’” Vasudevan, 782 F.3d at 682 (citing Ariad, 598 F.3d at 1349).
The other portions of the Specification that Appellant cites regard the
structure and functioning of the optical phased array to focus or defocus a
beam, the control of this operation by the controller (which appears to be a
generic, general purpose computer), and generating an image. Appeal Br. 7–
9 (citing Spec. 7:8–23, 9:17–10:2, 10:3–15, 11:6–19, 12:23–13:7, 13:8–9).
These passages do not describe sufficient detail regarding how one of
ordinary skill in the art could program a controller “to direct the optical
phased array to maintain an indicator size of the infrared beam target
indicator on the target, based on the generated image,” as claim 1 recites,
such as by describing an algorithm (e.g., for software) that can be used to
implement the claimed invention on a generic controller. Appellant also
cites page 14, line 10, to page 15, line 2, of the Specification, but this
regards an embodiment in which indicator size is changed based upon
manual input, not the function of a controller based on a generated image, as
claim 1 recites. Id. at 9.
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In response to the Examiner’s Answer, Appellant further asserts that
the “claimed invention is not directed to particular image processing
techniques to ascertain infrared beam target size, as image processing
techniques for determining the amount of pixel values in an image being a
particular value or within a range of values (i.e., corresponding to reflected
radiation) are well known” and “[a] POSITA would readily understand that
there is a plurality of known image processing techniques for determining
the amount of reflected radiation impacting the focal plane array detector
106 to maintain a desired indicator size.” Reply Br. 2–3. Appellant
however, does not cite evidence to support these arguments, such as
references demonstrating the knowledge of one of ordinary skill in the art or
supportive expert testimony, such as in Vasudevan. See Vasudevan, 782
F.3d at 683.
As a result, Appellant appears to argue what would have been obvious
to one of ordinary skill in the art in view of Appellant’s disclosure, which is
not a proper basis for showing written description support. Ariad, 598 F.3d
at 1352 (“[A] description that merely renders the invention obvious does not
satisfy the [written description] requirement.”). Further, “[i]t is not enough
that one skilled in the art could theoretically write a program to achieve the
claimed function, rather the specification itself must explain how the
claimed function is achieved to demonstrate that the applicant had
possession of it.” 2019 Examination Guidance 62 (citing Vasudevan, 782
F.3d at 682–83). And here, Appellant’s Specification does not explain how
to achieve or maintain an indicator size based on a generated image.
For these reasons, Appellant’s arguments do not identify a reversible
error in the Examiner’s rejection of claim 1. Appellant does not argue
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claims 2, 3, 7, 11–13, 15, and 22–26 separately from claim 1. Appeal Br.
10. Thus, we affirm the Examiner’s rejection of those claims for the same
reasons we affirm the Examiner’s rejection of claim 1. Although Appellant
argues claim 5’s limitations separately, because claim 5 depends from claim
1 and, therefore, includes the limitations of claim 1, we also affirm the
Examiner’s rejection of claim 5 based on the limitations of claim 1.
Claim 5
Claim 5 ultimately depends from claim 1 and recites “wherein the
controller is further configured to direct the optical phased array to defocus
the first infrared beam to broaden the field of view of the short wave infrared
active illumination laser based on at least one of altitude, location, and
directional information received from one or more sensors.” Appeal Br. 14
(Claims App’x).
The Examiner finds that “[c]laim 5 is directed to any and all ways of
broadening the field of view based on at least one of altitude, location and
directional information received from one or more sensors.” Final Act. 5.
Appellant contends that page 10, line 28, to page 11, line 5, of the
Specification and Figure 2 provide sufficient support for claim 5, with the
latter serving as an algorithm. Appeal Br. 10–12. With regard to claim 5,
Figure 2 merely depicts step P212, which is called “Receiving External
Input.” This essentially serves as a title for the step without providing any
detail regarding how a controller would carry it out.
The cited Specification paragraph states the following:
In one embodiment, the controller 110 can be further configured
to direct the optical phased array 108 to defocus the infrared
beam 120 to broaden the field of view, and/or focus the infrared
beam 120 to narrow the field of view in response to receiving
external input 126 from one or more external sources. In
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particular, the controller 110 can be configured to receive
information such as altitude, location, and directional
information from one or more sensors. For example, using
Digital Terrain Elevation Data (“DTED”) information, such as
target position and system position, target range can be estimated
without use a range finding laser.
Spec. 10:28–11:5. Similar to the passage describing step P208 in Figure 2,
this paragraph merely describes the desired result of a controller’s
functioning without sufficient detail describing how the controller would
achieve the result (e.g., an algorithm how the controller would use the
external information to broaden a field of view, as claim 5 recites).
Appellant also argues that “[p]rogramming a controller to cause an
OPA to broaden its field of view based on altitude, location, and/or
directional information is within the skill set of one of ordinary skill in the
art.” Appeal Br. 11. Similar to the argument set forth in Appellant’s Reply
Brief for the rejection of claim 1, this argument lacks any supporting
evidence to demonstrate the knowledge of one of ordinary skill in the art or
the ordinary artisan’s capability to create such a program. Thus, Appellant
appears to rely upon what would have been obvious to one of ordinary skill
in the art, based upon the Specification’s disclosure (e.g., the ability to
program a general purpose computer to carry out the claimed function) and
the theoretical possibility of writing a computer program, which are not
proper bases for showing written description support.
For these reasons, Appellant’s arguments do not identify a reversible
error in the Examiner’s additional basis for rejecting claim 5.
CONCLUSION
The Examiner’s rejection of claims 1–3, 5, 7, 11–13, 15, and 22–26
under 35 U.S.C. § 112(a) is affirmed.
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In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–3, 5, 7,
11–13, 15,
22–26
112(a) Written
Description
1–3, 5, 7,
11–13, 15,
22–26

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED