Goodrich Corporation

Patent Trials and Appeals Board

May 26, 2021

2020000624 (P.T.A.B. May. 26, 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.
15/173,807 06/06/2016 Richard Norris Lane 1510801.575US1 3859
61654 7590 05/26/2021
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
CHANG, DANIEL
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
05/26/2021 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD NORRIS LANE and IAN PETER HUMPHREY
____________

Appeal 2020-000624
Application 15/173,807
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JASON V. MORGAN, and
JEREMY J. CURCURI, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–9, and 11–13. Claims 2 and 10 are
canceled. See Appeal Br. 5. We have jurisdiction over the appeal 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(a). Appellant identifies the real party in interest as Goodrich
Corporation. Appeal Br. 3.
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Application 15/173,807

2
The present invention relates generally to determining a distance to a
target area. See Spec., Abstr.
Claim 1 is illustrative:
1. An apparatus for determining a distance to a target area,
comprising:
at least one imaging system configured to provide at least
two images of a target area, wherein the images are associated
with different imaging axes for forming a stereo image of the
target area; and
a Lidar system including at least one laser configured to
direct an optical beam to the target area and an optical detection
system configured to receive a portion of the optical beam from
the target area and establish a distance to the target area based
on the received portion, wherein the imaging system acquires a
first one of the at least two images of the target area, then
acquires a second one of the at least two images of the target
area, and wherein the at least one laser emits one and only one
Lidar pulse to the target area during a span of time while the
imaging system acquires the first and second images of the
target area, and wherein the Lidar system initiates once and
only once a return timer for a return of the Lidar pulse for range
finding during the span of time.

Appellant appeals the following rejections:
R1. Claims 1, 3–9, and 11–13 are rejected under 35 U.S.C. § 112(b)
or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. Final
Act. 6.
R2. Claims 1, 3–9, and 11–13 are rejected under 35 U.S.C. § 112(a)
or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Final Act. 7.
R3. Claims 1, 3, 4, 6–9, 11, and 12 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Robertson (US
2013/0342657 A1, published Dec. 26, 2013), Li (US 5,684,531, issued Nov.
Appeal 2020-000624
Application 15/173,807

3
4, 1997), and Wike (US 2010/0228517 A1, published Sept. 9, 2010). Final
Act. 8–16.
R4. Claims 5 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Robertson, Li, Wike, and Cameron
(US 2010/0238272 A1, published Sept. 23, 2010). Final Act. 16–18.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 112, second paragraph
Claims 1, 3–9, and 11–13
Regarding claim 1, the Examiner concludes that “it is unclear and
indefinite as to what is encompassed within the terminology, ‘span of time,’”
because “[t]he term, ‘span of time,’ is not defined by the claim.” Final Act.
6.
In response, Appellant contends that “both claims 1 and 9 do in fact
define and particularly point out what is encompassed by ‘span of time[]’
[because] Claims 1 and 9 recite in pertinent part, ‘. . . during a span of time
while the imaging system acquires the first and second images.’” Appeal
Br. 9–10. We agree with Appellant.
As highlighted by Appellant, independent claims 1 and 9 both
explicitly define the claimed “span of time” in the claim itself, i.e., as the
span during which a first and second image are captured. See Claims 1, 9.
As a result, we find that the claimed “span of time” is not indefinite because
the claim language itself ascribes a definite meaning to the phrase.
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Application 15/173,807

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Accordingly, we reverse the Examiner’s rejection under 35 U.S.C. §
112, second paragraph.

Rejection under § 112, first paragraph
Claims 1, 3–9, and 11–13
Also regarding claim 1, the Examiner finds that “the claims recite,
‘wherein the Lidar system initiates once and only once a return timer for a
return of the Lidar pulse for range finding during the span of time.’
However, the Examiner has not found any support for these claim features in
the Specification.” Final Act. 7.
In response, Appellant fails to direct our attention to specific parts of
the disclosure that persuasively support the above noted claim language. See
Appeal Br. 10.
For example, Appellant contends that the following portions of the
Specification, i.e., pages 1 and 5, support the aforementioned claim
language:
An apparatus for determining a distance to a target area
includes at least one imaging system configured to provide at
least two images of a target area, the images being associated
with different imaging axes for forming a stereo image of the
target area. The apparatus also includes a Lidar system
including at least one laser configured to direct an optical beam
to the target area and an optical detection system configured to
receive a portion of the optical beam from the target area and
establish a distance to the target area based on the received
portion.
Specification 1.
Referring to the figures, FIG. 1 is a schematic view of an
apparatus 100 that includes an imaging system and a Lidar
system. The apparatus can be used, for example, on an aircraft
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Application 15/173,807

5
or a spacecraft designed to scan a target area while in motion
relative to the target area. The Lidar system includes a laser 114
configured to deliver a laser/optical beam, e.g., a single pulse
optical beam, to a target area and an optical detection system
116 configured to receive a portion of the single pulse optical
beam from the target area.
Id. at 5.
However, we find that the above noted portions of Appellant’s
Specification fail to adequately support the claimed “wherein the Lidar
system initiates once and only once a return timer for a return of the Lidar
pulse for range finding during the span of time,” at least in part because
there is no disclosure regarding during the span of time while the imaging
system acquires the first and second images.
To satisfy the written description requirement, the original disclosure
must reasonably convey to skilled artisans that the patentee possessed the
claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Id. (citations
omitted). One shows possession “by such descriptive means as words,
structure, figures, diagrams, formulas, etc. that fully set forth the claimed
invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997).
Appellant fails to specifically identify any words, structures, figures,
diagrams, etc. in the disclosure that would fully set forth the claimed
“wherein the Lidar system initiates once and only once a return timer for a
return of the Lidar pulse for range finding during the span of time.” See
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Appeal Br. 10–11; see also claim 1 (emphasis added). Thus, we agree with
the Examiner that Appellant has not shown where Appellant’s Specification
discloses the argued limitations. See Ans. 19.
Accordingly, the rejection of claims 1, 3–9, and 11–13 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is affirmed.

Rejections under § 103(a)
Appellant contends that in Wike “there is certainly no disclosure or
suggestion to limit the number of pulses of the range finder to one and only
one pulse during the span of time the images are being acquired.” Appeal
Br. 11–12. Specifically, claim recites, inter alia, “wherein the at least one
laser emits one and only one Lidar pulse to the target area during a span of
time while the imaging system acquires the first and second images of the
target area.” See claim 1; see also similar limitations in claim 9.
For the above claimed limitation, the Examiner gives the following
broadest reasonable interpretation:
Appellant’s claim is directed to an apparatus that comprises at
least one imaging system and a Lidar system, . . . the apparatus
comprising two separate systems, wherein the Lidar system
includes a single pulse laser that takes a span of time necessary
to emit a pulse laser beam while, or whereas, the at least one
imaging system is acquiring the first and second images of the
target area.
Ans. 23. In other words, the Examiner interprets the claims as including a
laser that takes a span of time necessary to emit a pulse, separate from an
imaging system that acquires first and second images of a target. We
disagree with the Examiner’s interpretation of the claims.
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Contrary to the Examiner’s conclusions, we find that independent
claims 1 and 9 require emitting one and only one Lidar pulse during a span
of time while the imaging system acquires the first and second images, i.e., a
temporal nexus between emitting a single pulse and acquiring the first/
second images. See claims 1 and 9.
To the extent that the Examiner is ignoring these limitations because it
may be considered “new matter,” we note that it violates the mandate that
new matter must be considered as part of the claimed subject matter for
associated prior art rejections. See MPEP § 706.03(o) (Examiner Note 3 in
connection with Form Paragraph 7.28) (“As to any other appropriate prior
art. . . rejection, the new matter must be considered as part of the claimed
subject matter and cannot be ignored.” (Emphases added)).
Because the Examiner’s findings dismiss and thus fail to illustrate a
temporal nexus between the emitted pulse and the acquiring of the first/
second images (see Ans. 23–24), we disagree with such findings. Since we
agree with at least one of the arguments advanced by Appellant, we need not
reach the merits of Appellant’s other arguments. Accordingly, we do not
sustain the Examiner’s obviousness rejection of claims 1, 3–9, and 11–13.

CONCLUSION
The Examiner’s rejections of claims 1, 3–9, and 11–13 under
35 U.S.C. § 112, second paragraph is reversed.
The Examiner’s rejections of claims 1, 3–9, and 11–13 under
35 U.S.C. § 112, first paragraph is affirmed.
The Examiner’s rejections of claims 1, 3–9, and 11–13 as being
unpatentable under 35 U.S.C. § 103 is reversed.
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Application 15/173,807

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In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–9, 11–
13
112(b) Indefiniteness 1, 3–9,
11–13
1, 3–9, 11–
13
112(a) Written
Description
1, 3–9,
11–13

1, 3, 4, 6–9,
11, 12
103 Robertson, Li,
Wike
1, 3, 4,
6–9, 11, 12
5, 13 103 Robertson, Li,
Wike, Cameron
5, 13
Overall
Outcome
1, 3–9,
11–13

Because at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED