Ex parte Meger

Board of Patent Appeals and Interferences

Mar 31, 1998

08252474 (B.P.A.I. Mar. 31, 1998)

Application for patent filed June 1, 1994.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT A. MEGER
__________
Appeal No. 96-3037
Application No. 08/252,4741
__________
ON BRIEF
__________
Before ABRAMS, STAAB and CRAWFORD, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1-3, 5-8 and 10-12. At this point, claim 4 had
been allowed and claim 9 indicated as containing allowable
subject matter. Subsequent to the final rejection, an amendment
was entered which resulted in claim 9 being allowed (Paper No.
13).
Appeal No. 96-3037
Application No. 08/252,474
2
The appellant's invention is directed to a railgun using a
composite insulator. The subject matter before us on appeal is
illustrated by reference to claim 1, which reads as follows:
1. A railgun comprised of:
a plurality of rails;
a laminated insulator comprised of laterally positioned
layers of insulation material separated by a conducting layer;
said insulator being located between the rails so as to form
a bore;
an armature located within the bore; and
means for generating a current to be applied to the armature
through the rails thereby causing a magnetic field to be
generated capable of accelerating the armature along the bore.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Creedon 4,681,015 Jul. 21, 1987
Bauer 5,375,504 Dec. 27, 1994
Thio et al. (Thio), “On Some Techniques To Achieve Ablation Free
Operation Of Electromagnetic Rail Launchers,” Conf. Proc., 6th
Symp. on Electromag. Launch Tech., Austin, TX (April 28-30,
1992).
THE REJECTIONS
Claims 1, 5, 7, 8 and 10-12 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Thio.
Appeal No. 96-3037
Application No. 08/252,474
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Claims 1, 2, 6-8 and 10-12 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bauer.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Bauer in view of Creedon.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Supplemental Brief.
OPINION
Two of the rejections are under 35 U.S.C. § 102, which means
that a single prior art reference must disclose, expressly or
under the principles of inherency, each and every element of the
claimed invention. See RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.), cert. dismissed sub nom., Hazeltine Corp. v. RCA Corp.,
468 U.S. 1228 (1984).
The Section 102 Rejection on the Basis of Thio
Claim 1 first stands rejected as being anticipated by Thio,
which also is directed to a railgun. As disclosed (see Figure
3), the appellant’s railgun incorporates a pair of laminated
composite insulators 32, each consisting of a plurality of flat,
rectangular alternating insulating and conducting layers. The
Appeal No. 96-3037
Application No. 08/252,474
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alternating layers are disposed parallel to the bottom and top
surfaces, respectively, of a pair of spaced rails 35a and 35b,
and are coextensive therewith. The spaced inner edges of the
insulators, together with the bottom and top surfaces of the
rails, define the bore of the railgun. However, the elements of
the device are not defined so precisely in claim 1, which merely
requires that the laminated insulator be “comprised of laterally
positioned layers of insulation material separated by a
conducting layer.” While no reference point is recited in the
claim from which the layers of insulation material are “laterally
positioned,” the appellant and the examiner appear to agree that
the claim should be interpreted such that this reference point is
the longitudinal axis of the bore, a conclusion with which we
agree.
Thio discloses a railgun in which the components are
arranged in a circular array. As shown in Figure 4.1(a) the
centrally located bore of the gun is defined by a pair of spaced
upper and lower arcuate rails and a pair of spaced arcuate
laminated insulators (Figure 4.1(b)) interposed at the sides, as
shown. It is the examiner’s position that Thio’s insulators are
“laterally positioned” within the common definition of this
phrase, and thus meet the terms of the claims, since the
Appeal No. 96-3037
Application No. 08/252,474
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appellant’s specification has not limited the interpretation to
be given thereto. The examiner points out by reference to the
dictionary that “lateral” means located at or on the side, which
is the case with the Thio railgun. The only argument advanced by
the appellant regarding this rejection is to this issue, and is
that the Thio insulators are not “laterally positioned” within
the meaning that should be given to this terminology. The
appellant points to the representation of the invention provided
in the specification and a definition of “lateral” which, it is
asserted, commonly is used by engineers, as well as the concept
that an appellant is entitled to be his own lexicographer, in
urging that the phrase must be interpreted in such a manner as to
include the orientation of the layers of the insulators shown in
the drawings (Supplemental Brief, pages 12 through 16).
We are not persuaded by the appellant’s arguments. We begin
by pointing out that during examination, the pending claims in an
application must be interpreted as broadly as their terms
reasonably allow, without reading any limitations from the
specification into the claims. See In re Zletz, 893 F.2d 319,
321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). If the limitations
in the specification were required to be read into the claims
there would be no need for claims and no basis for the
Appeal No. 96-3037
Application No. 08/252,474
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requirement of 35 U.S.C. § 112 that the specification conclude
with claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention. See
Sjolund v. Musland, 847 F.2d 1573, 1580, 6 USPQ2d 2020, 2027
(Fed. Cir. 1988). In the present case, nothing in the
specification establishes that an interpretation narrower than
the common one should be given to the phrase “laterally
positioned.” This being the case, although we admit that the
insulators disclosed by Thio are oriented to a different plane
than that of those disclosed by the appellant, they nevertheless
are “laterally positioned,” that is, located to the side, of the
axis of the bore of the gun.
For this reason, the rejection of independent claim 1 as
being anticipated by Thio is sustained. Since the appellant has
chosen to have all of the claims stand or fall together
(Supplemental Brief, page 5), the rejection of claims 5, 7, 8 and
10-12 on this same basis also is sustained.
The Section 102 Rejection on the Basis of Bauer
Bauer also is directed to a railgun. However, the structure
in Bauer differs substantially from that which is set forth in
independent claims 1 and 12. In the Bauer device (as pictured in
Figure 6), it is each of the rails 604 and 606 which comprise a
Appeal No. 96-3037
Application No. 08/252,474
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plurality of alternating conducting elements and insulating
elements, and not the insulator, as is required by the
appellant’s claims. As described in columns 6 and 7, the bore is
defined on its sides by rails 604 and 606, and on its top by
“insulation layer 636,” the details of which are not further
disclosed. Therefore, we do not agree with the examiner that
claims 1 and 12 read on the Bauer construction.
The rejection of independent claims 1 and 12, and dependent
claims 2, 6-8 and 10-12, as being anticipated by Bauer, is not
sustained.
The Rejection Under Section 103
Claim 3 stands rejected as being obvious in view of the
teachings of Bauer and Creedon. The test for obviousness is what
the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Claim 3 depends from
claim 1, adding the limitation that the conducting layer of the
insulator is a copper alloy. Creedon is cited for this teaching,
but it does not alleviate the deficiency in Bauer insofar as the
subject matter of claim 1 is concerned, which we have explained,
supra, with regard to the anticipation rejection. This being the
case, this rejection will not be sustained.
Appeal No. 96-3037
Application No. 08/252,474
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SUMMARY
The rejection of claims 1, 5, 7, 8 and 10-12 as being
anticipated by Thio is sustained.
The rejection of claims 1, 2, 6-8 and 10-12 as being
anticipated by Bauer is not sustained.
The rejection of claim 3 as being unpatentable over Bauer in
view of Creedon is not sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 96-3037
Application No. 08/252,474
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Associate Counsel
Code 3008.2
Naval Research Laboratory
Washington, DC 20375-5000