Ex Parte McWilliams

Board of Patent Appeals and Interferences

Jul 26, 2007

11150806 (B.P.A.I. Jul. 26, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICK McWILLIAMS
____________________

Appeal 2007-1087
Application 11/150,806
Technology Center 2800
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Decided: July 26, 2007
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Before LANCE LEONARD BARRY, MAHSHID D. SAADAT, and JAY P.
LUCAS, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 9, 17, and 18. As the appeal is limited only to
these claims (Br. 3); claims 10-16, which are still pending and finally
rejected, are not before this panel. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appellant’s invention relates to an automatic telescope capable of
determining an orientation without requiring input from a user or an external
Appeal 2007-1087
Application 11/150,806

source (Specification 2). The user aligns the telescope with a first bright star
to initialize a motion signal (id.). After initializing the motion signal, the
telescope is directed to search for a second bright star after which the
processor stores the measured angles obtained from the motion signals. This
process is repeated until several measured angles provide a unique solution
for determining the orientation of the telescope (Specification 3).
Independent Claim 9 is exemplary and reads as follows:
9. A method of determining a telescope’s orientation, the method
comprising the steps of:
manually aligning the telescope with a first user-selected celestial
object;
manually aligning the telescope with a second user-selected celestial
object;
detecting a first measured angle between the first celestial object and
the second celestial object;
manually aligning the telescope with a third user-selected celestial
object;
detecting a second measured angle between the second celestial object
and the third celestial object;
using a computer processor to compare the measured angles with
angles stored in a database, thereby identifying the celestial objects; and
using the computer processor to determine the orientation of the
telescope by analyzing known locations of the celestial objects.
The Examiner relies on the following prior art in rejecting the claims:
van Bezooijen US 5,745,869 Apr. 28, 1998
Gagnon US 4,764,881 Aug. 16, 1988

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Appeal 2007-1087
Application 11/150,806

Claims 9, 17, and 18 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over Gagnon and Bezooijen.
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of Appellant and the
Examiner.
We reverse.
ISSUE
Appellant contends that Gagnon’s method of determining the
orientation of a telescope requires the user to know and submit the
coordinates of each of two known stars (Br. 5) which is different from
Bezooijen’s capturing an image of a group of stars and comparing the
angular separation as well as intensity of the stars appearing in that single
image (Br. 8-9). The Examiner argues that Bezooijen does not require a user
to input the coordinates of the celestial objects and instead allows using the
unique pattern of the objects to be used for matching the angular separation
between the objects (Answer 10). Therefore, the issue on appeal turns on
whether a preponderance of the evidence before us shows that the
combination of the prior art teaches or suggests the claimed subject matter
and specifically detecting first and second measured angles between three
celestial objects to be used in determining the orientation of the telescope.

FINDINGS OF FACT
Gagnon relates to a system for determining the orientation of a
telescope (col. 2, ll. 24-26) wherein the coordinates of two known points or
stars are inputted for calculating the zenith coordinates, which is used for
aligning the telescope to other desired coordinates (col. 2, ll. 31-42).
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Appeal 2007-1087
Application 11/150,806

Gagnon discloses that based on the coordinates of a reference star and
a target star, an angle of separation is determined and used in an iterative
calculation to orient the telescope without any other input (col. 6, ll. 17-33).
Tracking a new object after orienting the telescope requires entering
the new coordinates which are used by the processor for calculating the
altitude and azimuth angles to which the telescope should be moved to (col.
6, ll. 54-59).
Bezooijen determines the attitude of a spacecraft using the stars in a
starfield (col. 1, ll. 46-58).
Bezooijen measures the intensities of the observed stars within the
starfield (col. 7, ll. 21-22) and forms star pairs based on their intensity and
angular separation (col. 7, ll. 54-55). The angular separation is shown in
Figure 1 as the angle between the center lines connecting the stars with the
detector (col. 6, ll. 58-61).
Bezooijen determines the position of the spacecraft by forming a
matrix of the match group and matching the results with the positions of
guide stars within the match group (col. 7, ll. 45-48).

PRINCIPLES OF LAW
A claimed invention is unpatentable as obvious “if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” See 35 U.S.C. § 103(a) (2002); In re Dembiczak,
175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir. 1999).
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Appeal 2007-1087
Application 11/150,806

Further, a rejection based on section 103 must rest upon a factual
basis rather than conjecture, or speculation. “Where the legal conclusion [of
obviousness] is not supported by the facts it cannot stand.” In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967). See also In re Lee,
277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002) and In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).

ANALYSIS
The Examiner does not show where the prior art teaches or suggests
that two sets of angles between three stars are measured as the telescope is
aligned with each of these stars. While Gagnon indicates that the telescope
is oriented using two stars, as argued by Appellant (Br. 13), the user must
know the coordinates of the two stars, which is not required in Appellant’s
claimed invention.
In that regard, the Examiner’s assertion that Bezooijen provides for
the additional objects to be used for measuring the extra angle (Answer 6),
ignores the specific recited features of the claim. Bezooijen’s angular
separation is measured based on the detected angles between the stars in a
fixed starfield and not based on the angles when the telescope is aligned with
each star. Thus, one of ordinary skill in the art would not have used the
measurements from a starfield obtained by Bezooijen to be applied to the
additional stars in Gagnon since Gagnon only needs the coordinates of the
two stars (col. 6, ll. 30-33). Based on our findings above, we find that the
Examiner’s rejection is based on less than a preponderance of the evidence
and thus, fails to provide sufficient reasons for finding claims 9, 17, and 18,
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Appeal 2007-1087
Application 11/150,806

unpatentable for obviousness under 35 U.S.C. § 103(a) over Gagnon and
Bezooijen.

DECISION
The decision of the Examiner rejecting claims 9, 17, and 18 under
35 U.S.C. § 103 is reversed.

REVERSED

rwk

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