Ex Parte Friedlander et al

Patent Trial and Appeal Board

Mar 8, 2016

12344742 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/344,742 12/29/2008
37945 7590 03/10/2016
DUKEW. YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Robert R. Friedlander
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920080174US 1 6635
EXAMINER
COUGHLAN, PETER D
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
03/10/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT R. FRIEDLANDER and JAMES R. KRAEMER
Appeal2014-004415
Application 12/344,742
Technology Center 2100
Before JOHN A. EV ANS, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
A. "1"1 ,1 "1 "1 ,..,,,-TT#'l~ll"l,..,,Al/'-r'" ,"1 T"""i •., Appeuants' appeal unaer j) u.~.L. s U4~aJ rrom me bxammer s
rejection of claims 1-20, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. Br. 2.
Appeal2014-004415
Application 12/344,742
STATEMENT OF THE CASE
Introduction
Appellants' present patent application relates to a computerized
method for aiming a telescope. Spec. ,-i 4. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A computer implemented method for facilitating the more
natural aiming of an optical observation device, the computer
implemented method comprising:
measuring an azimuth of the optical observation device, an
elevation of the optical observation device, and a rotation of the
optical observation device relative to an observer, wherein a field
of view observed through a focuser of the observation device
appears with an optical translation relative to an observation of
the field of view with an unaided eye of the observer;
receiving input from the observer to move the field of view
in an optical view direction; wherein the optical view direction
is relative to the field of view;
converting the optical view direction to an optical
1 • ,.:]" • t. . t. . 1 1 • ,.:]" • • trans1atwn uifectwn, wuerem tue optica1 trans1atwn uifectwn iS
calculated based on a celestial coordinate system, and wherein
the celestial coordinate system is inherent in a design of a
mounting of the optical observation device; and
moving the optical observation device in the optical
translation direction, wherein the field of view moves in the
optical view direction, wherein the optical translation is a
rotation or an inversion of an optical pathway as seen by the
observer through the focuser of the optical observation device,
wherein the rotation or inversion is caused by an eyepiece, a
prism, or an internal mirror in the optical observation device
during a physical movement of the optical observation device,
and wherein the rotation or inversion is compensated for during
the physical movement so that the view perceived by the unaided
eye of the observer through the focuser of the optical observation
device appears in an orientation as though seen by the unaided
eye of the observer.
2
Appeal2014-004415
Application 12/344,742
The Examiner's Rejections
Claims 1--4, 6, 7, 9, 10, 12, 13, 15, 16, 18, and 19 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Meyers (US 2006/0103926 Al;
May 18, 2006) and Henry C. King, The History of the Telescope, 1955
("King"). See Ans. 2-18.
Claims 5, 8, 11, 14, 17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Meyers, King, and Baun (US 2008/0018995
Al; Jan. 24, 2008). See Ans. 18-23.
ANALYSIS
Appellants argue the Examiner erred in finding the combination of
Meyers and King teaches or suggests "wherein the rotation or inversion is
compensated for during the physical movement so that the view perceived
by the unaided eye of the observer through the focuser of the optical
observation device appears in an orientation as though seen by the unaided
eye of the observer." See Br. 8-13. In particular, Appellants argue the
Examiner erred in relying on King for the cited limitation because King
teaches a Galilean telescope where the eyepiece does not cause an inversion
and, therefore, King does not teach an inversion for which the focuser may
compensate. Br. 9, 12.
The Examiner acknowledges Meyers is silent as to the limitations
"wherein the optical translation is a rotation or an inversion of an optical
pathway," "wherein the rotation or inversion is caused by an eyepiece, a
prism, or an internal mirror," and "wherein the rotation or inversion is
compensated for during the physical movement." Final Act. 5. The
Examiner relies on King for these limitations, responding that King is used
in the combination to "address limitations pertaining to the claimed feature
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Appeal2014-004415
Application 12/344,742
that images are not inverted." Ans. 32. The Examiner finds King teaches a
telescope "that does not invert an image." Ans. 29. The Examiner interprets
King as "disclosing the rotation caused by telescope parts such as [an]
eyepiece, a prism, or an internal mirror during physical movement of the
telescope." Ans. 27.
We agree with Appellants that the Examiner erred in finding the
combination of Meyers and King teaches or suggests the cited limitations.
As found by the Examiner, King teaches a Gallilean telescope where the
eyepiece does not invert or rotate the image. Ans. 29; see also King Fig. 15.
Accordingly, King does not teach or suggest "a rotation or inversion" that is
"caused by an eyepiece," as recited in claim 1. Further, because King
teaches an image that is not inverted or rotated, King does not teach an
inversion or rotation that is "compensated for during the physical
movement," as recited in claim 1. We agree with Appellants that the
Examiner has not established that combining features of the telescope of
King (with an image that has not been inverted or rotated) with features of
the telescope of Meyers (which is silent as to inversion or rotation of the
image) would result in a telescope that has an inversion or rotation caused by
an eyepiece, a prism, or an internal mirror. Further, the Examiner has not
explained how such combination would compensate for the inversion or
rotation during physical movement of the telescope. Accordingly, we agree
with Appellants that the Examiner erred in finding the combination of
Meyers and King teaches or suggests the cited limitations.2
2 Because we are persuaded of error with regard to the identified issue,
which is dispositive of the rejection over Meyers and King, we do not reach
the additional issues raised by Appellants' arguments.
4
Appeal2014-004415
Application 12/344,742
CONCLUSIONS
On the record before us and in view of the analysis above, Appellants
have persuaded us that the Examiner erred in rejecting claim 1. Therefore,
we do not sustain the rejection of claim 1, independent claims 9 and 15
which recite similar limitations, and claims 2-8, 10-14, and 16-20
dependent therefrom.
DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
REVERSED
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