Ex parte KRISL et al.

Board of Patent Appeals and Interferences

Oct 2, 1998

08249650 (B.P.A.I. Oct. 2, 1998)

Application for patent filed May 26, 1994. According1
to appellants, this application is a continuation of
Application 07/831,706, filed February 5, 1992, now abandoned;
which is a division of Application 07/708,825, filed May 29,
1991, now Patent No. 5,138,219; which is a continuation of
Application 07/382,153, filed July 19, 1989, now abandoned.
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(2) is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte M. ERIC KRISL and
ROBERT L. BATEMAN
__________
Appeal No. 96-1615
Application 08/249,6501
__________
ON BRIEF
__________
Before THOMAS, KRASS, and TORCZON, Administrative Patent
Judges.
Appeal No. 96-1615
Application 08/249,650
2
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 1 to 22 and 33 to 53, which
constitute all the claims remaining in the application.
Representative claim 1 is reproduced below:
1. An optical interference coating for reflecting
infrared radiation and transmitting visible light radiation
which comprises a plurality of alternating high and low
refractive index layers, said coating having a spectrally
broad high transmittance of at least about 90% average at a
normal angle of incidence between about 400 to 700 nm, a
spectrally broad high transmittance of at least about 90%
average at about a 30 degree angle of incidence between about
400 to 700 nm and a spectrally broad high reflectance of at
least about 70% average between about 800 and 1900 nm.
The following references are relied on by the examiner:
Rancourt et al. (Rancourt) 4,229,066 Oct. 21,
1980
Martin, Jr. et al. (Martin) 4,663,557 May 05,
1987
Brock et al. (Brock) 4,940,636 Jul. 10,
1990
(filed Jul. 21, 1988)
Appeal No. 96-1615
Application 08/249,650
3
Lotz, "Computer-Aided Multilayer Design of Optical Filters
with Wide Transmittance Bands Using SiO and TiO ," Applied2 2
Optics, vol. 26, no. 20, pp. 4487-90 (1987).
Claims 1 to 22 and 33 to 53 stand rejected under the
first paragraph of 35 U.S.C. § 112 as being based upon a
nonenabling disclosure. Independent claims 1, 10, 33, 34, and
43 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, as being obvious over
the teachings of Martin alone. Claims 2 to 9, 11 to 22, 35 to
42 and 44 to 50 stand rejected under 35 U.S.C. § 103 as being
obvious over the collective teachings of Martin, further in
view of Rancourt, Lotz, and "common knowledge in the art."
Finally, claims 51 to 53 stand rejected under 35 U.S.C. § 103
as being obvious over Martin in view of Brock, further in view
of admitted prior art.
Rather than repeat the positions of the appellants and
the examiner, reference is made to the briefs and the answer
for the respective details thereof.
OPINION
We reverse all rejections of the claims on appeal.
Appeal No. 96-1615
Application 08/249,650
4
As to the rejection under the first paragraph of 35
U.S.C.
§ 112, it appears that the statement at page 11 of the answer
best expresses the examiner’s view "whether there is enough
structural support in the claimed product in order to achieve
the functional limitations as claimed. Applicants are
claiming a product for what it does rather than for what the
product is."
We reverse this rejection since we are in general
agreement with the positions of appellants in the brief and
the reply brief. They properly rely upon In re Swinehart, 439
F.2d 210, 169 USPQ 226 (CCPA 1971) which appears to answer the
examiner’s just noted criticisms by indicating that there is
nothing intrinsically wrong in defining something by what it
does rather than by what it is. Note also In re Hallman, 655
F.2d 212, 210 USPQ 609 (CCPA 1981). The examiner’s position
appears to be requiring the appellants to structurally claim
the specific forty some layers of coating material in a
specific configuration as a basis of removal of the rejection.
This is not required. Each independent claim on appeal is,
Appeal No. 96-1615
Application 08/249,650
5
granted, somewhat structurally broad but, on the other hand,
functionally specific as to the recitations of the spectral
transmittance and reflectance properties of the coating
material. We do not regard each of the independent claims as
an overly broad recitation of an invention which clearly
details and justifies the functional recitations based upon a
relatively large number of alternating high and low refractive
index layers in three different stack configurations, the
details of which are set forth in the dependent claims. The
specification does not detail how such spectral properties as
recited in each independent claim would be achievable by any
means with a lesser number of layers than those disclosed.
Generally speaking, the bottom line is still that
"[t]he test of enablement is whether one reasonably skilled in
the art could make or [sic and] use the invention from the
disclosures in the patent coupled with information known in
the art without undue experimentation." United States v.
Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988), citing Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed.
Appeal No. 96-1615
Application 08/249,650
6
Cir. 1986). The examiner has presented to us no rationale
that would lead us to conclude that the artisan would have
required undue experimentation to have made and used the
presently claimed invention. Therefore, the rejection of
claims 1 to 22 and 33 to 53 under 35 U.S.C. § 112, first
paragraph, is reversed.
Turning next to the rejection of the independent claims
on appeal under 35 U.S.C. § 102 or, in the alternative, under
35 U.S.C. § 103 in light of Martin alone, we reverse both
rejections.
As to the anticipation rationale, the examiner’s position
is misplaced simply because the examiner gives little weight
to the limitation of the range of up to 770 nm as claimed, as
opposed to 700 nm which is clearly the outer range as set
forth in Figure 4 of Martin, because it is generally in the
same range as taught by Martin, that is, the visible range, as
expressed at page 5 of the answer. Basically, there can
clearly be no anticipation without some manner of deriving
this value from the reference. The examiner’s position that
the limitation would have alternatively been functionally
Appeal No. 96-1615
Application 08/249,650
7
inherent has been addressed by appellants in the submission of
the two declarations by declarant Parham.
Again, at page 6 of the Answer, the examiner asserts that
the claims generally are given little weight because they do
not differentiate from the reference structurally. This
rationale is additionally developed in the responsive
arguments portion of the answer in an effort to force in some
way appellants to structurally recite the basis for the
functional recitations of the claims on appeal. Without
providing any other evidence as to this rejection or
persuasive line of reasoning, the examiner asserts that the
wider claimed window of transmittance of about 400-770 nm
would have been clearly a consequence of the suggested
construction [of Martin, we presume] well within ordinary
experimentation to the artisan. This is purely speculative
and conclusory.
The "about" language of the independent claims on appeal
aptly describes the features disclosed in the written
description portion as well as the drawings as originally
filed, particularly Figures 3 and 4. The examiner cannot
Appeal No. 96-1615
Application 08/249,650
8
ignore the functional limitations of the claims on appeal in
their consideration within prior art rejections either. The
range of transmittance in Figure 4 of Martin is from 400 to
700 nm, whereas the spectrally wider high transmittance range
of claim 1 is from 400 to 770 nms. This 300 nanometer range
of Figure 4 of Martin has been extended by 70 nanometers
which, as appellants assert at the top of page 10 of the
principal brief on appeal, results in a 25% increase. The
examiner has not explained to us how this is an inherent
property within Martin within 35 U.S.C. § 102 or § 103 and has
not provided a basis or evidence or rationale to justify how
this extension would have been obvious to the artisan within
35 U.S.C. § 103.
In any event, the weight of the evidence provided by the
two declarations confirms the teachings of appellants’ own
specification as well as providing comparisons with the best
available prior art, Martin. Thus, we find ourselves in
general agreement with the conclusion reached by declarant
Parham at paragraph 18 of the second declaration filed on
April 29, 1994 that Martin "does not show at least about 90%
Appeal No. 96-1615
Application 08/249,650
9
transmittance from about 400 to 770nm. on average and at least
about 90% transmittance at about a 30E angle between about 400
to 700nm." Finally, we note that each independent claim on
appeal recites this 30E angle, whereas Martin appears silent
as to any angular representation other then what the artisan
may be able to perceive as a normal 90E representation.
In view of the foregoing, we have reversed the rejection
of all claims on appeal under the first paragraph of 35 U.S.C.
§ 112. Additionally, we have reversed the alternative
rejections of each independent claim on appeal under 35 U.S.C.
§ 102 and 35 U.S.C. § 103. It follows then that we cannot
sustain the
rejection of the remaining dependent claims under 35 U.S.C. §
103 in light of additional prior art. Therefore, the decision
of the examiner rejecting the claims on appeal is reversed.
REVERSED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
Appeal No. 96-1615
Application 08/249,650
10
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
sd
Stanley C. Corwin
General Electric Company
Nela Park
Cleveland, OH 44112