Ex parte Coffin

Board of Patent Appeals and Interferences

Mar 19, 1998

07818162 (B.P.A.I. Mar. 19, 1998)

Application for patent filed January 8, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN COFFIN
_____________
Appeal No. 95-0125
Application 07/818,1621
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
COHEN and Meister, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 95-0125
Application 07/818,162
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 10 and 23 through 28. Claims 11 through 22 and 29
through 37, the only other claims in the application, stand
allowed (Paper No. 11).
Appellant’s invention pertains to an interferometer
and to a bearing for an interferometer. An understanding of
the invention can be derived from a reading of exemplary
claims 1 and 23, copies of which appear in the appendix to
appellant’s brief.
As evidence of obviousness, the examiner has applied
the documents listed below:
Auth 3,936,193 Feb. 3,
1976
Appeal No. 95-0125
Application 07/818,162
This document was submitted by appellant, listed on the2
“Informational Statement” (FORM PTO-1449) dated January 8,
1992 (Paper No. 2), and acknowledged to have been published
prior to 1992.
A copy of this document is attached to this decision.3
3
Airpot Catalog, “A brief look at Airpot,” pages 2 through 15,
published prior to 19922
A new reference made of record and applied by this
panel of the board in a new ground of rejection, infra, is:
IBM Technical Disclosure Bulletin (IBM Bulletin),
“INTERFEROMETER WITH MERCURY BEARINGS,” Vol. 31, No. 9, pages
244 through 246, February 1989.3
The following rejection is before us for review.
Claims 1 through 10 and 23 through 28 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Auth in view
of the Airpot Catalog.
The full text of the examiner's rejection and
response to the argument presented by appellant appears in the
Appeal No. 95-0125
Application 07/818,162
We note that claim 1 is drafted in a form consistent4
with that specified in 37 CFR § 1.75(e), wherein the claim
preamble sets forth a general description of all elements
which are conventional or known.
In our evaluation of the applied teachings, we have5
considered all of the disclosure of each teaching for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
4
answer (Paper No. 13), while the complete statement of
appellant’s argument can be found in the brief (Paper No. 12).
In the brief (page 3), appellant indicates that, as
to all of claims 1 through 10 and 23 through 28 on appeal,
they may be grouped together. Accordingly, we select claim 1
for review, and all remaining claims stand or fall therewith.
See 37 CFR 1.192(c)(7).4
OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims, the applied
prior art, and the respective viewpoints of appellant and 5
Appeal No. 95-0125
Application 07/818,162
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
5
the examiner. As a consequence of our review, we make the
determination which follows.
We reverse the examiner’s rejection of appellant’s
claims under 35 U.S.C. § 103.
We fully appreciate the examiner’s assessment of the
applied references and the manner in which it is proposed that
they be combined, as articulated in the body of the rejection.
However, when we consider the Auth and Airpot reference
teachings together, setting aside what appellant has informed
us of in the
present application, we do not perceive that one of ordinary
skill in the art would have derived therefrom a suggestion to
selectively alter the air bearing arrangement of Auth, as
proposed, based upon the disclosure within the Airpot
document.
Appeal No. 95-0125
Application 07/818,162
6
Therefore, the rejection of claim 1 is reversed, and the
rejection of claims 2 through 10 and 23 through 28, which
stand or fall therewith, is likewise reversed.
NEW GROUND OF REJECTION
Under the authority of 37 CFR § 1.196(b), this panel
of the board introduces the following new ground of rejection.
Claims 1 through 10 and 23 through 28 are rejected
under 35 U.S.C. § 103 as being unpatentable over the IBM
Bulletin in view of the Airpot document and Auth.
The IBM Bulletin discloses a typical Michelson
interferometer including, inter alia, a movable mirror
assembly comprising a piston-like slide 1 (Figures 1 and 2)
and a cylinder of glass (Figure 1), with the slide including
mercury bearings to effect virtually frictionless movement
(page 245) of the slide
Appeal No. 95-0125
Application 07/818,162
Contrary to appellant’s point of view (brief, pages 56
through 8), the Airpot document is considered to be
appropriately viewed as analogous prior art in the present
circumstance since its explicit teaching of slidably
interfaced bearing materials for wear-free operation is seen
to be reasonably pertinent to the bearing material problem
addressed by both appellant and the IBM disclosure.
7
within the cylinder. The mercury is forced into annuli 4 on
the periphery of the slide by a compression screw 2 (Figure
2).
The Auth patent is simply representative of typical
features of known Michelson interferometers.
The Airpot document teaches a glass cylinder and a
graphite piston for providing a precision fit therebetween,
without lubrication and seals, particularly for a dashpot,
snubber, and actuator. We perceive that one having ordinary
skill in the art would have understood that the relationship
between a piston and cylinder, as in the Airpot reference, may
fairly be denoted a bearing relationship. 6
Appeal No. 95-0125
Application 07/818,162
The test for obviousness is what the combined teachings7
of references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
8
In applying the test for obviousness, we reach the7
conclusion that it would have been obvious to one having
ordinary skill in the art, from a combined consideration of
the applied references, to replace the glass cylinder and
mercury bearing slide arrangement of the Michelson
interferometer taught by the IBM Bulletin, with a glass
cylinder and graphite slide arrangement; the interferometer of
the IBM Bulletin apparently having typical features as
represented by the Auth teaching, for example. In our
opinion, the incentive on the part of one having ordinary
skill in the art for making this modification would have
simply been to take advantage of an alternative, known (Airpot
reference) bearing arrangement (glass-graphite) for its
expected benefits. In light of the above, the content of
claims 1 and 23 would have been obvious. Considering each of
dependent claims 2 through 10 and 24 through 28, we consider
the knowledge and level of skill in the art, as revealed by
Appeal No. 95-0125
Application 07/818,162
9
the applied teachings con- sidered in their entirety, to
provide a reasonable basis for the conclusion that the choice
of a particular cylinder mount, piston configuration, and
propelling means would have been an obvious matter for one
having ordinary skill in the art.
In summary, this panel of the board has reversed
the rejection of claims 1 through 10 and 23 through 28 under
35 U.S.C. § 103 as being unpatentable over Auth in view of
the Airpot Catalog. Additionally, we have introduced a new
ground of rejection under 35 U.S.C. § 103.
The decision of the examiner is reversed.
This decision contains a new ground of rejection
pur- suant to 37 CFR § 1.196(b) (amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides that “[a] new
Appeal No. 95-0125
Application 07/818,162
10
ground of rejection shall not be considered final for purposes
of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
No time period for taking any subsequent action in
con-nection with this appeal may be extended under 37 CFR §
1.136(a).
Appeal No. 95-0125
Application 07/818,162
11
REVERSED
37 CFR 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF
PATENT
IRWIN CHARLES COHEN ) APPEALS
AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JAMES M. MEISTER )
Administrative Patent Judge )
Appeal No. 95-0125
Application 07/818,162
12
Foley & Lardner
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