Ex parte Sanders et al.

Board of Patent Appeals and Interferences

Jun 30, 1998

08285219 (B.P.A.I. Jun. 30, 1998)

Application for patent filed August 3, 1994. According to appellant,1
this application is a divisional of application 07/912,903, filed July 13,
1992.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALVIN J. SANDERS, WILLIAM E. DEEDS
and MARK E. RUPRIGHT
_____________
Appeal No. 97-1119
Application 08/285,2191
______________
ON BRIEF
_______________
Before CALVERT, ABRAMS and FRANKFORT, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 16 to
22, all of the claims remaining in the application.
The subject matter in issue concerns a method for using
solar radiation to stabilize an orbital space-based platform.
Appeal No. 97-1119
Application 08/285,219
In reviewing the application, we note an apparent discrepancy between2
Fig. 3B and the specification. On page 22, lines 6 to 13, appellants indicate
that the platform is oriented to give a net forward thrust, but in Fig. 3B the
"net thrust" vector is shown as being in the opposite direction to the
platform's direction of travel. Also, the convex end cap recited in claim 21
is not shown in the drawings. 37 CFR 1.83(a).
2
The claims on appeal (except claim 22) are reproduced in the
appendix to appellants' brief. 2
The reference on which the rejection is based is:
Piening 4,262,867 Apr. 21, 1981
Claims 16 to 22 stand finally rejected as unpatentable over
Piening, under 35 USC § 103.
Rejection under 37 CFR 1.196(b)
Pursuant to 37 CFR 1.196(b), claims 16 to 22 are rejected
for failure to comply with the second paragraph of 35 USC § 112.
The purpose of § 112, second paragraph, is
to provide those who would endeavor, in future
enterprise, to approach the area circumscribed by the
claims of a patent, with the adequate notice demanded
by due process of law, so that they may more readily
and accurately determine the boundaries of protection
involved and evaluate the possibility of infringe-
ment and dominance.
In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA
1970). The test for compliance is
whether the claim language, when read by a person of
ordinary skill in the art in light of the specifica-
tion, describes the subject matter with sufficient
precision that the bounds of the claimed subject matter
are distinct.
Appeal No. 97-1119
Application 08/285,219
3
In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA 1975).
The problem in the present case arises from the recitation
"in the absence of solar sails which would substantially increase
the surface area of the platform" in independent claim 16. In
particular, if the recited method were performed by a platform
having solar sails, could one of ordinary skill, reading the
claim in light of the specification, readily and accurately
determine whether those sails were sails which "would
substantially increase the surface area of the platform", as
recited in the claim.
The use of a word of degree such as "substantially" in a
claim does not render the claim indefinite if the specification
provides some standard for measuring that degree. Seattle Box
Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818,
826, 221 USPQ 568, 573-74 (Fed. Cir. 1984). See also In re
Mattison, 509 F.2d 563, 564, 184 USPQ 484, 486 (CCPA 1975). In
the present case, appellants disclose the use of "small solar
sails" by which "is meant that the solar sails do not substan-
tially increase the surface area of the platform" (page 19, lines
1 to 3), and "small movable vanes or sails (that is, small vanes
that do not substantially increase the surface area of the
platform)" (page 21, lines 17 and 18). Having thus defined
Appeal No. 97-1119
Application 08/285,219
4
sails which would not substantially increase the surface area of
the platform as "small sails", appellants then state on page 24,
lines 2 to 12 (emphasis added);
In the context of our invention, "small" moveable vanes
or "sails" refers to the relationship between the
area(s) of the vane(s) or sail(s) and the total area of
the orbital platform. The total area available for
photon momentum transfer is the exterior of the
platform and the area(s) of the vane(s) or sail(s). In
the present invention, the addition of the surface area
of the vane(s) or sail(s) does not appreciably increase
the amount of area available for capturing photon
momentum. Rather, the addition of the surface area of
the vane(s) or sail(s) is useful in channeling the
photon momentum transfer in such a manner as to produce
a non-zero vector component in the desired direction.
We do not regard the above-quoted disclosure as sufficient
to provide a standard for measuring whether a solar sail would
substantially increase the platform's surface area. One could
not experiment to determine the limits of the claims (cf. Seattle
Box, 731 F.2d at 826, 221 USPQ at 574) because the disclosure
that the small sails do not "appreciably increase" the amount of
area available is no more definite than the "substantially
increase" language of claim 16. Nor do we find in the
specification any numerical examples from which the bounds of
"substantially increase" might be inferred (cf. In re Mattison,
id.). Accordingly, claim 16, and claims 17 to 22 dependent
Appeal No. 97-1119
Application 08/285,219
5
thereon, do not comply with the second paragraph of § 112.
Claim 19 (and its dependent claim 20) are also not in
compliance with § 112, second paragraph, in that the recitation
in claim 19 that the space-based platform has a large aspect
ratio is a double recitation of a limitation already specified in
claim 16 (line 3), which is the parent of claim 19's parent
claim, claim 18. Since 35 USC § 112, fourth paragraph, requires
that a dependent claim "specify a further limitation of the
subject matter claimed", claim 19's failure to recite any
limitation not already included in parent claim 18 renders it
indefinite.
Rejection Under 35 USC § 103
Although in some circumstances claims which do not comply
with 35 USC § 112, second paragraph, should not be rejected under
§ 103, see In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962), we believe that in the present case the indefinite-
ness of claims 16 to 22 is not such that the rejection under
§ 103 may not still be considered on its merits. Cf. Ex parte
Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993).
The examiner states the basis for the rejection as (answer,
pages 3 to 4):
Appeal No. 97-1119
Application 08/285,219
6
Piening in col. 4, lines 26-42 notes that the basis for
his finding comes from observing spacecraft in general
being moved by solar pressure. Consequently it would
appear clear to one of ordinary skill in the art that
the use of solar sails is only a more efficient use of
the solar pressure and the principles expressed by
Piening can be applied to any spacecraft surface
whether it is a solar sail or merely a cylindrical
surface of a satellite. The principles are very
fundamental and are merely the application of vectored
forces which Piening has observed and therefore It
[sic] would have been obvious to one having ordinary
skill in the art at the time the invention was made to
apply the principles expressed by Piening to any shaped
satellite including cylindrical. Consequently the
moving of the surface of the satellite in numerous
directions to take advantage of the solar pressure like
that of the wind on a sailboat or an aircraft are
obvious steps. Piening teaches moving his solar
surfaces in any direction to take advantage of the
solar pressure to take advantage of [sic] thereof and
to consequently reorient the satellite.
We do not consider this rejection to be well taken. While
Piening recognizes, in the part of col. 4 cited by the examiner,
that solar radiation pressure can "disturb the orbit" of
spacecraft, particularly of balloon satellites, Piening does not
disclose using this pressure on the spacecraft per se to produce
thrust, but discloses the use of movable panels and vanes upon
which the solar radiation can exert a force to rotate the
satellite about its axes. The reference does not teach, nor do
we consider that it would suggest to one of ordinary skill in the
Appeal No. 97-1119
Application 08/285,219
7
art, that the spacecraft itself be oriented to obtain the desired
thrust from the solar radiation; instead, in Piening, it is the
panels and vanes on the spacecraft which are oriented. Moreover,
claim 16 requires a space-based platform "having a large aspect
ratio", which is not disclosed or taught by Piening; this
limitation is not addressed by the examiner, although referred to
in appellants' brief.
Accordingly, the rejection of claims 16 to 22 under 35 USC
§ 103 will not be sustained.
Conclusion
The examiner's decision to reject claims 16 to 22 is
reversed. Claims 16-22 are are rejected pursuant to 37 CFR
1.196(b).
This decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
Appeal No. 97-1119
Application 08/285,219
8
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 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. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Reversed
37 CFR 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
Appeal No. 97-1119
Application 08/285,219
9
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
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