Ex parte ITO et al.

Board of Patent Appeals and Interferences

Jun 18, 1998

07978030 (B.P.A.I. Jun. 18, 1998)

Attorney docket no. P90.2775-B.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This opinion (1) was not written for publication and
(2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FUMIHIRO ITO,
KEIJI FUKUZAWA,
and SHINOBU TSURUMARU
____________
Appeal No. 95-3900
Application No. 07/978,0301
____________
ON BRIEF
____________
Before CALVERT, FLEMING, and TORCZON, Administrative Patent
Judges.
TORCZON, Administrative Patent Judge.
Appeal No. 95-3900 Page 2
Application No. 07/978,030
The notice of appeal excludes claims 5-7, but the2
arguments on appeal are directed to all claims.
DECISION ON APPEAL
BACKGROUND
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 2-7, 9 and 10, all of the pending claims. 2
We affirm in part and add new grounds of rejection.
Appeal No. 95-3900 Page 3
Application No. 07/978,030
The application on appeal was filed 18 November 1992.
Appellants claim the benefit of 07/606,901, filed 31 October
1990 (abandoned), pursuant to 35 U.S.C. § 120. They also
claim the benefit of Japanese patent application 290921/89,
filed 8 November 1989, pursuant to 35 U.S.C. § 119, but they
have not perfected their claim pursuant to 37 CFR § 1.55(a).
The subject matter of the invention is a planar-array
microwave antenna. Claim 9, the sole independent claim,
defines the subject matter of the invention as follows:
9. A planar array antenna comprising:
an upper plate having a plurality of holes;
a lower plate;
a single film substrate having resonance
type printed patterns of a plurality of array
elements sized in accordance with a predetermined
frequency, said predetermined frequency being
approximately the center of a frequency band;
a first spacer having a plurality of holes,
and being located between said upper plate and said
single film substrate; and
a second spacer having a plurality of
holes, and being located between said lower plate
and said single film substrate, wherein said lower
plate has integral concave regions formed at the
positions corresponding to the positions of said
plurality of holes of said upper plate, each of said
concave regions having a surface facing and parallel
to said substrate and said surface being spaced from
said patterns by a distance less than one quarter
wavelength at said frequency.
Appeal No. 95-3900 Page 4
Application No. 07/978,030
Our understanding of this reference depends on a3
translation prepared for the Office, a copy of which is
attached.
Appellants claim the benefit of a foreign priority4
date of 8 November 1989. They have not, however, challenged
the admissibility of the Wildey reference, nor perfected their
priority claim by filing a certified translation pursuant to
§ 1.55(a).
The examiner relied on the following references in
rejecting the claims:
Rammos (Rammos EP) EP 0 317 414 A1 pub'd. 24 May 19893
Wildey et al. (Wildey) EP 0 384 780 A2 pub'd. 29 Aug.
19904
Rammos (Rammos) US 5,061,943 29 Oct. 1991
filed 31 July 1989
All claims were rejected under 35 U.S.C. § 102 as anticipated
by Wildey. The examiner rejected claims 2, 5-7, 9, and 10
under 35 U.S.C. § 103 as having been obvious in view of
Rammos. Claims 3 and 4 were rejected under section 103 as
having been obvious in view of the combined teachings of
Rammos and Rammos EP.
DISCUSSION
Claim 9 requires a "lower plate [that] has integral
concave regions formed at the positions corresponding to the
positions of said plurality of holes of said upper plate".
The examiner relies on "[t]he tray 29 and lands 23 of Wildey
Appeal No. 95-3900 Page 5
Application No. 07/978,030
See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d5
1023, 1028 (Fed. Cir. 1997), for the breadth of the word
"integral" absent a positive showing by the appellant that
"integral" means "one-piece". Appellants have made no such
et al[. to] provide the structure for defining the 'integral
concave regions', shown in cross section in Figure 4." (Paper
24 at 7.) Although we must give claims their broadest
reasonable interpretation consistent with the specification,
we do not consider it reasonable to interpret "concave
regions" to include the structure shown in Wildey's Figure 3,
which is a single concavity at best. Consequently, we do not
find a preponderance of evidence supporting the examiner's
case for anticipation of claim 9. Dependent claims 2-7 and 10
are, likewise, not anticipated.
In rejecting claim 9 as obvious in view of Rammos, the
examiner relies on the embodiment of
Rammos' Figure 17 and Figure 18 (right)
for the basic structural elements of the
claim. This embodiment includes a lower
plate or housing 66 with
concavities 65, a printed 5
Appeal No. 95-3900 Page 6
Application No. 07/978,030
showing on the record before us.
circuit substrate 23, and spacers 63 and 64. The examiner
identifies foam layer 62 as the upper plate with holes.
Appellants never specifically challenge this finding (see
Paper 23 (App. Br.) at 3). We agree with the examiner's
rejection subject to the following amplification. Rammos'
claim 11 (with its antecedents) teaches the use of an upper
plate ("layer of conductive material formed on and supported
by said sheet of dielectric material", claim 1) in conjunction
with "means ... for forming cavities" (claim 11) and the use
of apertures in the spacer dielectric materials (claims 4
and 10). Moreover, Rammos contemplates a cavity depth
measured from the upper conductive layer of approximately one
quarter wavelength (Claim 1). See In re Geisler, 116 F.3d
1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (A
claimed range may be obvious in view of a close prior art
value absent unexpected results or a teaching away.) Even if
Rammos used exactly one-quarter wavelength, once the thickness
of the sheet of dielectric material is factored in, the depth
of the cavity from the printed patterns will be less than one-
quarter wavelength. Consequently, we affirm the rejection of
Appeal No. 95-3900 Page 7
Application No. 07/978,030
claim 9 as unpatentable under section 103 in view of the
teachings of Rammos taken as a whole.
Appellants argue "the individual elements of the
dependent claims are not taught as being combined with the
subject matter as specified in Claim 9". (Paper 23 at 4.)
They have not, however, argued any of the individual claim
elements with the degree of specificity required under our
rules. 37 CFR § 1.192(c)(5) (1988); 37 CFR § 1.192(c)(7)
(1997). Moreover, such nominal arguments run the risk of
being non-responsive in the face of more specific findings
presented by the examiner. For instance, the examiner posits
that the plate thicknesses recited in claims 2 and 5 are
design expedients within the skill of the art. This finding,
while unsupported, is quite plausible. Appellants' argument
that these limitations "are not taught" in the reference
misses the point of the rejection. Consequently, we affirm
the section 103 rejection for claims 2 and 5 because the
preponderance of evidence (i.e., the examiner's unchallenged
finding) supports the rejection.
Claims 6 and 7 require patterns of a plurality of array
element connected to each other to form a specific direction
of circular polarization. The examiner contends that Rammos'
"film substrate 23 has printed patterns of resonance array
Appeal No. 95-3900 Page 8
Application No. 07/978,030
elements, all arranged as claimed." (Paper 21 at 3.) This
finding is consistent with Rammos' subarrays. (5:44-58;
Figs. 9-11.) Consequently, the preponderance of evidence
supports the examiner's rejection of these claims.
Claim 10 recites a frequency ("approximately 12 GHz") and
a specific concavity spacing (5 mm). One-quarter wavelength
at 12 GHz is 6.25 mm. (Rammos 5:12-13.) Rammos discloses
only a 12 GHz array. Thus, a person having ordinary skill in
the art would have been motivated to apply any of Rammos'
embodiments to a 12 GHz array. Rammos teaches the use of a
spacing distance between the printed circuit and the ground
plane, H (4:4-6), such that H is at least 1 mm andL L
"about /", which at 12 GHz is 6.25 mm. (5:7-17.) The8 4
teaching of about is sufficient to motivate a person having
ordinary skill in the art to optimize H starting at 6.25 mm. L
Since thickness is a matter of concern in the art, the artisan
would have been motivated to find an effective value below
6.25 mm. To the extent there is any criticality associated
Appeal No. 95-3900 Page 9
Application No. 07/978,030
Criticality of a particular value is best6
established with reference to the closest prior art. In re
Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991). The closest prior art at 12 GHz would be HL
. 6.25 mm. (Rammos at 5:7-17.) Appellants only compare their
claimed value, 5 mm, to 1 mm. (Paper 1 at 11.) Rammos
indicates that 1 mm is the lowest possible value, not the best
value. (5:7-17.) Hence, Appellants have not established that
5 mm is anything more than an arbitrarily selected value in a
known range.
Appellants' specification suggests that optimization7
of parameters is well within the ordinary level of skill.
(Paper 1 at 12:17-19.)
with 5 mm at all, routine optimization would have revealed6
it.7
Claim 3 requires the concave regions to be made by press
forming of the lower plate. The examiner finds that for
analogous arrays Rammos EP teaches press forming (stamping) of
the ground plate. (Paper 21 at 4; Rammos EP (trans.) at 5-6.)
Appellants counter that the Rammos EP cavities are located
differently, which misses the point of the rejection. We
agree that Rammos and Rammos EP in combination would provide
motivation to form the cavities of Rammos using the method of
Rammos EP. The press-forming process of Rammos EP is a
simpler and cheaper way to form the cavities of Rammos.
Claim 4 depends from claim 3 and requires that the
concave regions be formed by machining, presumably in addition
to the press forming required by claim 3. It is not clear to
Appeal No. 95-3900 Page 10
Application No. 07/978,030
us what Appellants intend by this method of making. The
specification teaches a cutting process (Paper 1 at 13;
Fig. 5) and a press-molding process (Paper 1 at 13; Fig. 8),
but it does not teach the use of both together. We suspect
that Appellants did not intend for claim 4 to depend from
claim 3, but it has done so since it was originally filed and
we must take the claims as we find them. Consequently, we
will reverse the rejection of claim 4 pro forma, not because
it is necessarily wrong, but because the claim is so unclear
as to make a proper application of art impossible. In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962);
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970).
NEW GROUND OF REJECTION
We reject claim 4 as indefinite under 35 U.S.C. § 112[2].
As noted above, claim 4 requires both press forming and
machining to form the cavities on the lower plate. The
specification does not teach this combination of process steps
except in original claim 4, nor can we discern how these steps
are related. The cutting process of Figure 5 and the press
forming of Figure 8 (Paper 1 at 13) appear to be incompatible.
Appellants bear the burden of claiming as precisely as
Appeal No. 95-3900 Page 11
Application No. 07/978,030
possible. In re Morris, 127 F.3d at 1056, 44 USPQ2d at 1029.
In the present case, they have not met that burden.
We also reject claims 3 and 9 under section 103 in view
of Wildey's admitted prior art (Figure 1), which appears to
show the structure of claim 9. The "comprising" language of
claim 9 would not exclude Wildey's additional plate 14.
Wildey reports that the spacers are not shown for simplicity.
(3:54-58.) The cavities 17 are "quarter-wave cavities" (3:49-
53), which is sufficiently near the claimed range for
concavities to require explanation or distinction. See
Geisler, 116 F.3d at 1469, 43 USPQ2d at 1365 (A close value
may shift the burden of going forward.). As we have
previously indicated, a person having ordinary skill in the
art would want to reduce thickness and would, thus, have been
motivated to seek optimal values at or below a quarter-wave.
(See also Wildey at 4:33-36 (reducing stretch, which is a
linear function of cavity depth d, is desirable).) Since the
cavities are formed by pressing (4:28-31), the method
limitation of claim 3 would have been obvious as well.
DECISION
We reverse the section 102 rejection of all claims. We
reverse the section 103 rejection of claim 4 pro forma in view
Appeal No. 95-3900 Page 12
Application No. 07/978,030
of our new rejection for indefiniteness. We affirm the
section 103 rejections of claims 2, 3, 5-7, 9, and 10.
With respect to the affirmed rejections, Appellants may
file a single request for rehearing within two months from the
date of the original decision. 37 CFR § 1.197(b).
We enter new grounds of rejection for claim 4 under
112[2] (indefiniteness) and for claims 3 and 9 under
section 103. A new ground of rejection is not final for
purposes of judicial review.
With respect to the new rejections, Appellants must
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION exercise 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. . . .
37 CFR § 1.196(b). If Appellants elect further prosecution
before the examiner pursuant to 37 CFR § 1.196(b)(1), the
effective date of the affirmance will be deferred until
conclusion of the prosecution before the examiner in order to
Appeal No. 95-3900 Page 13
Application No. 07/978,030
preserve their right to review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejections unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If Appellants elect prosecution before the examiner and
this does not result in allowance of the application,
abandonment, or a second appeal, this case should be returned
to the Board for final action on the affirmed rejection,
including any timely request for rehearing.
Appeal No. 95-3900 Page 14
Application No. 07/978,030
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a). 37 CFR § 1.136(b).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-3900 Page 15
Application No. 07/978,030
HILL, STEADMAN & SIMPSON
85TH FLR SEARS TOWER
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