Ex Parte Baharav et al

Board of Patent Appeals and Interferences

Mar 27, 2012

11089298 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte IZHAK BAHARAV, ROBERT C. TABER and
GREGORY S. LEE
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Appeal 2009-012837
Application 11/089,298
Technology Center 3600
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Before LINDA E. HORNER, STEVEN D.A. McCARTHY and
GAY ANN SPAHN, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 1-7, 10, 12-16, 19, 21-24 and 27. The 3
Examiner rejects under 35 U.S.C. § 103(a) claims 1-7, 12-16 and 21-24 4

1 The Appellants identify the real party in interest as Agilent
Technologies, Inc.
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as being unpatentable over Romanofsky (US 6,081,235, issued Jun. 27, 1
2000) and Proctor (US 6,518,920 B2, issued Feb. 11, 2003); and claims 10, 2
19 and 27 as being unpatentable over Romanofsky, Proctor and Hussain (US 3
5,515,060, issued May 7, 1996). The Examiner objects to claims 8, 9, 11, 4
17, 18, 20, 25, 26 and 28 as being dependent on rejected base claims. We 5
have jurisdiction under 35 U.S.C. § 6(b). 6
We AFFIRM. 7
Claim 1 recites: 8
1. An array for use in a microwave 9
imaging system to capture a microwave image of a 10
target, comprising: 11
a plurality of antenna elements, each capable 12
of being programmable with a respective phase 13
shift to direct a beam of microwave radiation 14
toward the target 15
such that the microwave 16
radiation from each of the plurality of 17
antenna elements arrives at the target 18
substantially in-phase; 19
wherein the phase shifts of selective ones of 20
the plurality of antenna elements are altered to 21
optimize a parameter of the microwave imaging 22
system. 23
24
ISSUES 25
The Appellants argue the patentability of claim 1 by contending that 26
one of ordinary skill in the art familiar with the teachings of Romanofsky 27
and Proctor would not have had reason to provide an “array for use in a 28
microwave imaging system to capture a microwave image of a target” as 29
recited in the preamble. (App. Br. 5.) In addition, the Appellants contend 30
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that one of ordinary skill in the art familiar with the teachings of 1
Romanofsky and Proctor would not have had reason to provide an array 2
including antenna elements capable of being programmable “such that the 3
microwave radiation from each of the . . . elements arrives at the target 4
substantially in-phase.” (App. Br. 6.) The Examiner reasons that these 5
recitations merely state intended uses of a claimed array. The Examiner 6
finds that one of ordinary skill in the art familiar with the teachings of 7
Romanofsky and Proctor would have had reason to provide an array capable 8
of use in a microwave imaging system. (Ans. 7.) The Appellants respond 9
that the recitation “for use in a microwave imaging system” in the preamble 10
is incorporated into the body of the claim, thereby limiting the array to an 11
array used in a microwave imaging system. (App. Br. 5; Reply Br. 3-4.) 12
In the Reply Brief, the Appellants further argue the preambles of 13
claims 12 and 21 “should be given patentable weight because the respective 14
preambles disclose [sic] fundamental characteristics of the claimed 15
invention.” (Reply Br. 5.) This argument does not appear in the Appeal 16
Brief. The argument does not appear under a separate subheading indicating 17
that the Appellants intended to argue the patentability of claims 12 and 21 18
separately from the patentability of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) 19
(2007). Furthermore, the argument does not explain how claim 12 or claim 20
21 might differ from that of claim 1 in such a way that the preamble of claim 21
12 or claim 21 might recite a limitation if the preamble of claim 1 does not. 22
Therefore, the Appellants’ arguments group claims 1, 12 and 21. Id. Since 23
the Appellants do not mention dependent claims 2-7, 13-16 and 22-24 other 24
than acknowledge that they are subject to the same rejection under 25
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§ 103(a) as independent claims 1, 12 and 21, the two are grouped with 1
claims 1, 12 and 21. Claim 1 is representative of these claims. 2
Claims 10, 19 and 27 are rejected over Romanofsky, Proctor and 3
Hussain rather than Romanofsky and Proctor alone. Nevertheless, the 4
Appellants argue their rejection solely on the basis that the teachings of 5
Hussain do not remedy perceived deficiencies in the teachings of 6
Romanofsky and Proctor as applied to claim 1. Since we conclude that no 7
such deficiencies exist, we do not address the rejection of claims 10, 19 and 8
27 separately from the rejection of claim 1. 9
Only issues and findings of fact contested by the Appellants will be 10
addressed. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 11
This appeal turns on two issues: 12
First, would one of ordinary skill in the art familiar with 13
the teachings of Romanofsky and Proctor have had reason to 14
provide an “array for use in a microwave imaging system to 15
capture a microwave image of a target” as recited in the 16
preamble of claim 1? 17
Second, would one of ordinary skill in the art familiar 18
with the teachings of Romanofsky and Proctor have had reason 19
to provide an array including antenna elements capable of being 20
programmable “such that the microwave radiation from each of 21
the plurality of antenna elements arrives at the target 22
substantially in-phase” as recited in claim 1? 23
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FINDINGS OF FACT 1
We adopt and incorporate by reference as being supported by a 2
preponderance of the evidence the Examiner’s findings at page 4, lines 1-16 3
of the Answer (starting at “Regarding claims 1, 3-4, 12-13, and 21 . . .” and 4
ending at “. . . until the parameter is optimized.”); and the Examiner’s 5
findings at page 8, line 15 through page 9, line 2 (starting at “However, 6
Romanofsky does require . . .” and ending at “. . . and there would be no 7
beam.”). 8
9
ANALYSIS 10
The preamble of claim 1 recites an “array for use in a microwave 11
imaging system to capture a microwave image of a target.” The Examiner 12
and the Appellants dispute whether this recitation merely states an intended 13
use for the claimed structure, namely, the claimed array. (Compare App. Br. 14
5 with Ans. 7.) Claim 1also recites “a plurality of antenna elements, each 15
capable of being programmable with a respective phase shift to direct a 16
beam of microwave radiation toward the target such that the microwave 17
radiation from each of the plurality of antenna elements arrives at the target 18
substantially in-phase.” Even assuming for purposes of this appeal only that 19
the two recitations limit the claim, each of the two limitations defines the 20
claimed structure in terms of function (that is, in terms of a use to be made 21
of the array or its capability of being programmable) rather than in terms of 22
structure. 23
A claim reciting an apparatus may be anticipated by a reference 24
disclosing a device which includes each and every structural limitation in the 25
claim and which is capable of performing each and every functional 26
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limitation in the claim. E.g., In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. 1
Cir. 1997) (upholding the Board’s affirmance of a rejection under section 2
102(b) on the basis of a finding that a device disclosed in a prior art 3
reference was capable of performing a function which the appellant alleged 4
to distinguish the appellant’s apparatus from the device). Furthermore, if a 5
prior art apparatus is structurally identical or substantially structurally 6
identical to the claimed apparatus, an examiner may presume that the two 7
structures have the same properties and characteristics including similar 8
susceptibility for use in the same environment. Where such a presumption 9
arises, the applicant bears the burden to produce evidence to rebut the 10
presumption. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations 11
omitted). 12
The Appellants do not appear to contest that the array described by 13
Romanofsky, when modified in view of the teachings of Proctor, would have 14
included each structural limitation of the claim. In particular, the Appellants 15
do not appear to contest the Examiner’s finding that the phase shifts of the 16
array elements of Romanofsky’s antenna are at least capable of being 17
programmable by varying the voltage bias across the coupled lines of each 18
element. (Ans. 4, citing Romanofsky, col. 5, ll. 45-54.) This gives rise to a 19
reasonable presumption that the array described by Romanofsky, when 20
modified in view of the teachings of Proctor, would have had a capacity for 21
use in a microwave imaging system similar to the capacity of the claimed 22
array for use in a microwave imaging system. Likewise, the Examiner’s 23
findings give rise to a reasonable presumption that the array described by 24
Romanofsky, when modified in view of the teachings of Proctor, would have 25
had a capacity of being programmable in the same manner as the claimed 26
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array, including programmability such that microwave radiation from each 1
of the plurality of antenna elements arrived at a target substantially in-phase. 2
The Appellants present no evidence calling these presumptions into 3
question. While the Appellants present attorney argument attacking the 4
Examiner’s findings and conclusions, attorney arguments will not take the 5
place of evidence where evidence is required. In re Geisler, 116 F.3d 1465, 6
1470 (Fed. Cir. 1997). The Examiner correctly concludes that one of 7
ordinary skill in the art familiar with the teachings of Romanofsky and 8
Proctor would have had reason to provide an “array for use in a microwave 9
imaging system to capture a microwave image of a target” including antenna 10
elements capable of being programmable “such that the microwave radiation 11
from each of the plurality of antenna elements arrives at the target 12
substantially in-phase” as recited in claim 1. We sustain the rejection of 13
claims 1-7, 12-16 and 21-24 under § 103(a) as being unpatentable over 14
Romanofsky and Proctor. 15
The Appellants have not identified any deficiency in the teachings of 16
Romanofsky and Proctor as applied to parent claims 1, 12 and 21. Since the 17
Appellants’ sole argument contesting the rejection of claims 10, 19 and 27 18
under § 103(a) as being unpatentable over Romanofsky, Proctor and Hussain 19
is that Hussain fails to remedy such a deficiency, we sustain the latter 20
rejection as well. 21
22
DECISION 23
We AFFIRM the Examiner’s decision rejecting claims 1-7, 10, 12-16, 24
19, 21-24 and 27. 25
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 2
3
AFFIRMED 4
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Klh 8