Ex Parte Pikus et al

Board of Patent Appeals and Interferences

Apr 16, 2010

10733499 (B.P.A.I. Apr. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EUGENE C. PIKUS and DAVID N. NOHRE
____________

Appeal 2009-005611
Application 10/733,499
Technology Center 3600
____________

Decided: April 16, 2010
____________

Before: LINDA E. HORNER, WILLIAM F. PATE III, and STEVEN D.A.
MCCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005611
Application 10/733,499

STATEMENT OF THE CASE
Eugene C. Pikus et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-18 and 21-26,
which are all of the claims on appeal. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
THE INVENTION
Appellants’ claimed invention is a “fuze setter capable of transmitting
a magnetic inductive power carrier signal and a separate high speed data
signal.” Spec. 1:5-8. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A system for programming a fuze comprising:
a fuze having a power receiver and a data receiver; and
a fuze setter having a power transmitter and a data
transmitter;
wherein operational power for the fuze is inductively
transmitted from the power transmitter to the power receiver;
and pre-launch fuze setting data is transmitted from the data
transmitter to the data receiver via an electromagnetic signal
selected from a group consisting of the infrared, RF, visible and
UV bands of the electromagnetic spectrum.
THE EVIDENCE
The Examiner relies upon the following evidence:
Cumming
Koerner
Keil
US 4,144,815
US 4,495,851
US 6,176,168 B1
Mar. 20, 1979
Jan. 29, 1985
Jan. 23, 2001

THE REJECTIONS
Appellants seek review of the following rejections by the Examiner:
1. Rejection of claims 1-14, 16-18, and 21-24 under 35 U.S.C. § 103(a)
as unpatentable over Cumming and Keil.
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2. Rejection of claims 15, 25, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Cumming, Keil, and Koerner.
ISSUES
The Examiner concluded claims 1-14, 16-18, and 21-24 were
unpatentable over Cumming and Keil, because modification of Cumming’s
system to replace Cumming’s transmission of operational power for the fuze
via microwave with Keil’s transmission of operational power to the fuze via
induction was a simple substitution of one known equivalent element for
another to obtain a predictable result. Ans. 4-5, 7-8.
Appellants argue claims 1, 2, 5, 8-10, 12-14, 18, and 21-24 as a group.
App. Br. 6-13. We select claim 1 as the representative claim, and claims 2,
5, 8-20, 12-14, 18, and 21-24 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2009). Appellants do not contest the Examiner’s findings
that Cumming discloses a system that transmits both operational power and
setting data to a fuze via a microwave signal while the fuze is chambered in
a gun barrel, and that Keil discloses a system that uses inductive coils to
transmit both power and setting data to a fuze via an inductive signal.
Ans. 3-5; App. Br. 7. Appellants argue that the Examiner has not provided a
sufficient reason with a rational underpinning to explain why one having
ordinary skill in the art would have combined the references to reach the
claimed subject matter. App. Br. 6-13; Reply Br. 4-13.
Appellants present separate arguments for claims 3, 4, 6, 7, 11, 16,
and 17. App. Br. 13-16; Reply Br. 13-15.
The issues before us are:
Is the proposed rejection based upon a sufficient reason with a rational
underpinning to explain why one having ordinary skill in the art would have
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combined Cumming and Keil to reach the subject matter of independent
claim 1?
Would the combination of Cumming and Keil have led a person
having ordinary skill in the art to the subject matter of claims 3, 4, 6, 7, 11,
16, and 17?
The Examiner found that Koerner discloses a system for programming
a fuze that simultaneously transmits fuze setting data and operational power
to the fuze. Ans. 6. The Examiner concluded that it would have been
obvious to further modify the proposed combination of Cumming and Keil
to transmit operational power and setting data simultaneously as taught by
Koerner in order to provide the predictable result of faster programming.
Ans. 6-7.
Appellants argue claims 15, 25, and 26 as a group. App. Br. 17-18;
Reply Br. 16. We select claim 15 as the representative claim, and claims 25
and 26 stand or fall with claim 15. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend Koerner teaches simultaneous transmission of
operational power and setting data by a microwave signal, while in contrast,
claim 15 requires simultaneous transmission of operational power by
induction and data by electromagnetic signal (infrared, RF, visible and UV
bands of the electromagnetic spectrum). App. Br. 17-18, Reply Br. 16.
The issue before us is:
Is the rejection of claim 15 in error due to the fact that Cumming,
Keil, and Koerner, taken individually, do not discloses or suggest
simultaneous transmission of operational power via an inductive waveform
and data transmission by electromagnetic signal?
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ANALYSIS
Rejection of claims 1-14, 16-18, and 21-24 under 35 U.S.C. § 103(a) as
unpatentable over Cumming and Keil
Claims 1, 2, 5, 8-10, 12-14, 18, and 21-24
Appellants characterize the proposed combination as using both
microwave communication (Cumming) and inductive communication (Keil).
App. Br. 9. The Examiner attempted to correct this misinterpretation by
stating that “appellant mistakenly argues that the resulting device would
comprise a fuze setter having two operational power transmitters and two
data transmitters and [a] fuze having two power receivers and two data
receivers.” Ans. 9. The Examiner went on to explain that the proposed
combination uses Keil’s inductive transmission of operational power and
Cumming’s microwave transmission of data. Id.
Some of Appellants’ arguments are premised on this mistaken
characterization of the proposed combination. For example, Appellants
argue that using both types of communication for transmitting power and
data would transmit redundant data and therefore would not transfer more
information than the claimed device (App. Br. 10-11; Reply Br. 5-9).
Appellants also argue there is no reasonable expectation of success because
the prior art does not teach a structure capable of receiving and interpreting
dual signals (Reply Br. 4-5). Because these arguments are not directed to
the Examiner’s proposed combination, they are unconvincing.
Claim 1 is directed to a system for programming a fuze comprising a
fuze and a fuze setter. The fuze setter transmits operational power to the
fuze via induction, and transmits setting data to the fuze via an
electromagnetic signal from the group consisting of: infrared, RF, visible
and UV bands of the electromagnetic spectrum. In other words, the fuze
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receives power inductively and receives data by electromagnetic signal
(infrared, RF, visible and UV bands of the electromagnetic spectrum).
As stated in the Issues section, supra, Appellants do not contest that
Cumming discloses a system that transmits both operational power and
setting data to a fuze via a microwave signal, and that Keil discloses a
system that transmits both operational power and setting data to a fuze via
induction. Ans. 3-5; App. Br. 7. Thus, it was known in the art that
operational power and data can each be transmitted to a fuze by either
microwave or induction. Appellants have admitted as much, stating that “[a]
person of ordinary skill in the art would recognize that Cumming and Keil
teach alternative solutions for a similar problem – powering and setting a
fuze.” App. Br. 9.
Given this state of the art, replacing Cumming’s transmission of
operational power via microwave with Keil’s transmission of power via
induction involves only the simple substitution of one known method of
transmission of operational power for another. A prima facie conclusion of
obviousness may be supported by a showing that the claims are directed to a
process, machine, manufacture, or composition of matter already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, and such modification yields a predictable result.
See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United
States v. Adams, 383 U.S. 39, 40 (1966)). The rejection does not rely upon
impermissible hindsight, but rather relies on the knowledge of one of
ordinary skill in the art at the time of the invention that operational power
can be transmitted to a fuze via either microwave or induction, so that one
method may be substituted for another. U.S. Patent 5,343,795 to Ziemba,
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which is incorporated by reference in its entirety in Keil,1 supports this
conclusion by disclosing that data may be transmitted from a fuze setter to a
fuze by microwave or induction. Ziemba, col. 1, ll. 40-45
While, as Appellants correctly point out (App. Br. 11), adding Keil’s
teaching regarding transfer of operational power by induction would
undoubtedly require modification of Cumming’s device for the proposed
combination to be operational, that does not negate our conclusion of
obviousness. “[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR, 550 U.S. at 417.
Appellants have provided no evidence that such a modification produces an
unexpected result, or was uniquely challenging or difficult for one of
ordinary skill in the art.
Appellants present two arguments that are not commensurate with the
scope of claim 1. First, Appellants argue that neither Keil nor Cumming
discloses simultaneously transmitting the power and data signals. Reply Br.
13. Similarly, Appellants argue that the claimed device achieves faster
setting times than the proposed combination because the power and data
signals are simultaneously transmitted. App. Br. 11. Claim 1 contains no
limitations related to simultaneous transmission or setting time.
Appellants argue that a person of ordinary skill in the art, knowing the
disclosures of Keil and Cumming, would use the system of Keil because it is
superior to the system of Cumming. Reply Br. 11-13. We know of no rule

1 Keil, col. 1, ll. 24-26.

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of law suggesting that a person of ordinary skill in the art may only use the
“superior” system, ignoring alternative systems or their components. To the
contrary, rather than simply selecting the “superior” overall system, the law
of obviousness recognizes that a person of ordinary skill may piece
references together. KSR, 550 U.S. at 420 (“Common sense teaches,
however, that familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.”).
Appellants have failed to demonstrate error in the rejection of claim 1,
and claims 2, 5, 8-10, 12-14, 18, and 21-24 fall with claim 1.
Claim 3
Claim 3 depends from claim 1 and recites that “the fuze comprises a
data transmitter having an antenna; the fuze setter comprises a data receiver;
and the setting data received by the fuze is verified by a reverse transmission
from the fuze data transmitter to the fuze setter data receiver.”
Appellants contend the proposed combination does not meet the
limitations of claim 3 because Keil discloses transmitting setting data by an
inductive coil rather than an antenna. App. Br. 13-14; Reply Br. 13-14.
This argument is not commensurate with the scope of claim 3. As the
Examiner correctly points out (Ans. 9), the inductive coil of Keil functions
as an antenna, and claim 3 does not recite any particular type of antenna and
thus does not prohibit the claimed antenna from being an inductive coil.
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Claims 4 and 11
Claim 4 depends from independent claim 1, and claim 11 depends
from independent claim 5. Claims 4 and 11 each require that the data
transmitter is within 6 inches of the data receiver.
Appellants contend that the rejection of claims 4 and 11 is in error
because the references do not contain a teaching that the data transmitter is
within 6 inches of the data receiver. App. Br. 14-15; Reply Br. 14.
Appellants identify only one distinction between the prior art and claims 4
and 11, namely, that the data transmitter of Cummings “appears to be”
positioned farther than 6 inches from the fuze.2 App. Br. 14. Assuming,
arguendo, that Cummings discloses a data transmitter that is not within 6
inches of the data receiver, the Examiner determined (Ans. 10), and we
agree, that such a distinction (moving the data transmitter to within 6 inches
of the data receiver) is an obvious variation of the system of Cummings.
Appellants have made no showing that the particular range is critical. In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citations omitted) (“The
law is replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims.
… These cases have consistently held that in such a situation, the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.”).

2 We are mindful that Appellants’ draw their conclusion regarding the
spacing between the data transmitter and receiver based on a figure that is
not to scale. Hockerson-Halbertstadt, Inc. v. Avia Group Int'l, 222 F.3d 951,
956 (Fed. Cir. 2000) (citations omitted) (“[I]t is well established that patent
drawings do not define the precise proportions of the elements and may not
be relied on to show particular sizes if the specification is completely silent
on the issue.”).
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Appellants’ contend “there are practical problems with combining
Cumming and Keil as proposed by the Examiner,” such as a safety risk to
personnel from microwaves, and potentially negating Keil’s rapid firing rate.
Reply Br. 14. Appellants have not asserted that the proposed combination is
beyond the capability of a person of ordinary skill in the art. We see no
reason why a person of ordinary skill in the art could not modify the
proposed combination as needed to alleviate any safety concerns from
exposure of personnel to microwaves. See KSR, at 418 (it is proper to “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.”). See also id. at 421 (“[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.”). Further, the
Examiner’s proposed combination uses Keil’s teaching to inductively
transmit power to a fuze to modify Cumming’s system, so that loss Keil’s
rapid fire capability is not pertinent to the rejection before us for review.
Claims 6 and 7
Claim 7 depends from claim 6, which depends in turn from claim 5.
Claims 6 and 7 contain the limitation “the radio frequency data receiver of
the fuze comprises a radio frequency transceiver.” Claim 7 further recites
that a “talkback signal” is sent from the fuze transceiver to the fuze setter
transceiver.
We agree with Appellants’ contention (App. Br. 14-15; Reply Br. 14-
15) that neither reference discloses a radio frequency transceiver. However,
this contention fails to address the articulated rejection. The Examiner
found, and Appellants do not contest, that Cumming discloses a fuze having
a radio frequency receiver, and that Keil discloses a fuze having a
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transceiver that transmits data inductively (“talkback”)3. Ans. 3-4. The
proposed rejection uses Keil’s “talkback” feature to modify Cumming’s
radio frequency receiver into a transceiver so that it can transmit data back to
the fuze setter. Ans. 4, 10. Thus, while neither reference independently
discloses a radio frequency transceiver, the combined teachings of the
references meet this claim limitation. Appellants’ assertion that neither of
the references individually discloses this limitation fails to demonstrate error
in the rejection. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references).
Claim 16
Claim 16 depends indirectly from claim 1, and contains the limitation
that the reverse transmission of setting data received by the fuze is
comprised of a radio signal.
Appellants contend that the rejection of claim 16 is in error because
the references do not disclose or suggest the reverse transmission from the
fuze to the fuze setter comprising a radio signal. App. Br. 15-16; Reply Br.
15. The analysis of the rejection of claims 6 and 7, supra, applies equally
well here. Appellants’ individual attack on the references fails to address the
rejection or to persuade us of error.
Claim 17
Claim 17 depends from claim 5 and recites that “the operational
power and the pre-launch fuze setting data are transmitted simultaneously.”

3 The fuze repeats the message received from the fuze setter back to the fuze
setter, or “talks back” to the fuze setter.
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Appellants contend that the rejection of claim 17 is in error because a
person of ordinary skill would not be motivated to place an inductive coil
over the tip of the projectile fuze while the fuze is chambered in the gun
barrel. App. Br. 16. The Examiner found that Keil discloses a system
having an inductive coil in the fuze. Ans. 3-4. Appellants admit that Keil
discloses a “receiver coil 14 in the fuze”. App. Br. 8 (emphasis added).
Consequently, it is unclear why Appellants’ contention is premised upon
placing Keil’s inductive coil in front of, rather than in, the fuze of the
combined Keil and Cumming device. More importantly, the proper test is
what the combined teachings of the references would have suggested to a
person or ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.... Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.”).
Appellants have not asserted that such a proposed modification is beyond the
capabilities of a person of ordinary skill in the art.
Rejection of claims 15, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable
over Cumming, Keil, and Koerner
Appellants argue the Examiner erred in rejecting claims 15, 25, and
26 by repeating three arguments discussed above. First, Appellants repeat
the argument used against the rejection of claim 1, adding that Koerner does
not correct the deficiencies of Cumming and Keil. App. Br. 17. For the
reasons outlined in the analysis of the rejection of claim 1, supra, we find no
deficiencies for Koerner to correct, and those arguments are unpersuasive
here as well. Second, Appellants assert that the fuze could be confused by
the transmission of duplicate setting data. App. Br. 17. As explained in the
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analysis of claim 1, supra, this assertion is unconvincing because it is based
on the mischaracterization that the proposed combination transmits duplicate
data, when that is not the case. Third, Appellants repeat the argument used
against the rejection of claim 17 regarding the positioning of Keil’s coil
when the fuze is in the barrel (App. Br. 17-18), and for the reasons outlined
in the analysis of the rejection of claim 17, supra, those arguments are
unpersuasive here as well.
We agree with Appellants that claims 15, 25, and 26 require
simultaneously transmitting operational power by induction and setting data
by electromagnetic signal. We also agree with Appellants’ contention (App.
Br. 17-18, Reply Br. 16) that Koerner teaches simultaneous transmission of
operational power and setting data by a microwave signal. Koerner, col. 3,
ll. 15-17. However, we cannot agree that these two facts demonstrate error
in the rejection. The proposed rejection uses Koerner’s teaching to transmit
operational power and data simultaneously to further modify the Cumming
device, as modified by Keil, to transmit power via induction and setting data
by electromagnetic signal simultaneously. Appellants’ assertion that
Koerner alone does not meet this limitation is an individual attack that does
not address the rejection and therefore does not demonstrate error.
CONCLUSIONS
The proposed rejection is based upon a sufficient reason with a
rational underpinning to explain why one having ordinary skill in the art
would have combined Cumming and Keil to reach the subject matter of
independent claim 1.
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The combined teachings of Cumming and Keil would have led one
having ordinary skill in the art to the subject matter of claims 3, 4, 6, 7, 11,
16, and 17.
The rejection of claim 15 is not in error due to the fact that Cumming,
Keil, and Koerner, taken individually, do not disclose or suggest
simultaneous transmission of operational power via an inductive waveform
and data transmission by electromagnetic signal.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-18 and 21-26.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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