Ex parte LI

Board of Patent Appeals and Interferences

Aug 27, 1998

08439284 (B.P.A.I. Aug. 27, 1998)

Application for patent filed May 11, 1995. According to1
the appellant, the application is a continuation of
Application No. 08/018,388, filed February 17, 1993.
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journal and (2) is not binding precedent of the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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MING-CHIANG LI
____________
Appeal No. 96-3023
Application No. 08/439,2841
____________
ON BRIEF
____________
Before URYNOWICZ, HAIRSTON and LEE, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 20.
The disclosed invention relates to a radar system that
stores initially transmitted RF signals, and that uses the
Appeal No. 96-3023
Application No. 08/439,284
All of the other Supplemental Briefs were not entered by2
the examiner.
2
stored RF signals as a reference for comparison with reflected
RF signals.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A radar system comprises:
a transmitter;
an antenna subsystem;
an optical fiber RF storage subsystem;
a coherent RF receiver;
wherein the transmitter comprises means for generating RF
signals; wherein the antenna subsystem comprises means for
transmission of generated RF signals and for receiving
reflection of RF signals; wherein the optical fiber RF storage
subsystem comprises means for storing a portion of generated
RF signals from the transmitter; wherein the coherent RF
receiver comprises means for processing the reflected RF
signals from the antenna subsystem by using the stored RF
signals from the optical fiber RF storage subsystem as a
reference.
All of the claims on appeal stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1 through 20 of
appellant’s U.S. Patent No. 5,294,930.
Reference is made to the briefs (paper numbers 11, 13 and
19 ), the final rejection, and the answers for the respective2
positions of the appellant and the examiner.
Appeal No. 96-3023
Application No. 08/439,284
3
OPINION
The obviousness-type double patenting rejection is
reversed because the claims on appeal are not unpatentable
over claims 1 through 20 in U.S. Patent No. 5,294,930.
The examiner indicates (final rejection, page 3) that
“[a]lthough the conflicting claims are not identical, they are
not patentably distinct from each other because while not
exactly claimed the optical fiber RF storage is disclosed in
the ‘930 patent.” The disclosure of an optical fiber RF
storage in the patent is of no import in an obviousness-type
double patenting rejection because “the patent disclosure may
not be used as prior art.” In re Vogel, 422 F.2d 438, 441,
164 USPQ 619, 622 (CCPA 1970).
We agree with appellant (paper number 13, pages 3 and 4)
that the claimed invention is concerned with using a stored RF
signal as a “reference” for comparing or “processing”
reflected RF signals or sequential RF signals, and that no
such operation occurs in the claimed invention in U. S. Patent
No. 5,294,930.
A detailed analysis of the two sets of claims reveals
that the claims on appeal are not concerned with “two antenna
Appeal No. 96-3023
Application No. 08/439,284
4
subsystems,” a “processing center,” “optical RF link systems”
that link the “two antenna subsystems” to the “processing
center, and an “object” that forms a “triangle” with the “two
antenna subsystems.”
Appellant concludes (paper number 13, page 4) that:
The apparatus as defined by the claims of the
instant invention is different in structure from
that defined by the claims of the invention No.
5,294,930. Appellant respectful [sic, respectfully]
submits that Examiner . . . did not see explicit
differences in the claimed structure of the instant
invention from that of invention No. 5,294,930.
Appellant further submits that Examiner did not
examine the independent claims as [a] whole.
Instead he picks only common pieces and throws away
many distinct parts.
We agree. In summary, the rejection is reversed because the
examiner has not provided a prima facie case to support the
conclusion that the claimed invention is an obvious variation
of the patented invention.
Appeal No. 96-3023
Application No. 08/439,284
5
DECISION
The decision of the examiner rejecting claims 1 through
20 under the judicially created doctrine of obviousness-type
double patenting is reversed.
REVERSED
STANLEY M. URYNOWICZ, Jr. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 96-3023
Application No. 08/439,284
6
Ming-Chiang Li
11415 Bayard Drive
Mitchellville, MD 20721
Appeal No. 96-3023
Application No. 08/439,284
7
KWH/jrg
JENINE GILLIS
Appeal No. 96-3023
Serial No. 08/439,284
Judge HAIRSTON

Judge URYNOWICZ

Judge LEE
Received: 19 Aug 98
Typed: 19 Aug 98
DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
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