Ex Parte Sweeny et al

Board of Patent Appeals and Interferences

Jan 27, 2009

10137107 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte L. RAY SWEENY and MARY DOMINIQUE O’NEILL
____________

Appeal 2008-3303
Reissue Application 10/137,107
Patent 6,055,909
Technology Center 3600
____________

Decided: January 27, 2009
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and DAVID B. WALKER,
Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appeal stems from an application for reissue of U.S. Patent No.
6,055,909. The Appellants seek our review of the Examiner’s final rejection of
claims 1-7, 9-11, 14, 24-29, 32, 35-41, 43, 44, and 46-50 under 35 U.S.C. § 134
(2002). We have jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm-in-part.
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Appellants claim an infrared flare dispensing towed decoy that is
electronically configurable to vary its IR emissions and burn duration
(Specification col. 1, ll. 8-11). Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. An apparatus for defeating infrared (IR)-guided
missile attacks on an aircraft comprising:
a decoy towed behind the aircraft, said decoy
being capable of receiving commands transmitted from
said aircraft; and
means, disposed within said decoy, for dispensing
IR emitting flares carried on the decoy in solid form,
wherein the rate at which said flares are dispensed is
determined by said commands.

THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejection:
Feagle US 4,428,583 Jan. 31, 1984
Pelham US 5,585,594 Dec. 17,1996
Bill Gunston & Mike Spick, Modern Air Combat 57 (1983).
1. The Examiner rejected claims 35, 36, 38, and 40 under 35 U.S.C.
§ 102(b) as anticipated by Modern Air Combat.
2. The Examiner rejected claims 44 and 46 under 35 U.S.C. § 103(a) as
unpatentable over Modern Air Combat.
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3. The Examiner rejected claims 37, 39, 41, and 43 under 35 U.S.C.
§ 103(a) as unpatentable over Modern Air Combat in view of Pelham.
4. The Examiner rejected claims 1-3, 5, 6, 9-11, 24-26, 28, 29, 32, 47, 48,
and 50 under 35 U.S.C. § 103(a) as unpatentable over Feagle in view of
Modern Air Combat.
5. The Examiner rejected claims 4, 7, 14, 27, and 49 under 35 U.S.C.
§ 103(a) as unpatentable over Feagle in view of Modern Air Combat in
further view of Pelham.

ISSUES
The issue before us is whether the Examiner erred in rejecting (1) claims 35,
36, 38, and 40 under 35 U.S.C. § 102(b) as anticipated by Modern Air Combat; (2)
claims 44 and 46 under 35 U.S.C. § 103(a) as unpatentable over Modern Air
Combat; (3) claims 37, 39, 41, and 43 under 35 U.S.C. § 103(a) as unpatentable
over Modern Air Combat in view of Pelham.; (4) claims 1-3, 5, 6, 9-11, 24-26, 28,
29, 32, 47, 48, and 50 under 35 U.S.C. § 103(a) as unpatentable over Feagle in
view of Modern Air Combat; and (5) claims 4, 7, 14, 27, and 49 under 35 U.S.C.
§ 103(a) as unpatentable over Feagle in view of Modern Air Combat in further
view of Pelham.
The correctness of the anticipation rejection turns on whether Modern Air
Combat teaches (1) “a dispensed pattern of the infrared flare material is selected
responsive to a characteristic of a seeker of the infrared guided missile;” (2)
“dispensing the infrared flare material responsive to a countercountermeasure of
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the infrared guided missile;” (3) “the pattern includes spikes of different radiant
intensities, and wherein the more units of flare material dispensed per unit time
during each spike, the higher the radiant intensity of each spike;” and (4)
“dispensing the pattern of the infrared flare material to have approximately the
same infrared spectral characteristics as an exhaust plume of the engine of the
aircraft.”
The correctness of the rejection of claims 44 and 46 under 35 U.S.C.
§ 103(a) as unpatentable over Modern Air Combat turns on whether Modern Air
Combat teaches (1) “dispensing the pattern of the infrared flare material so as to
defeat an attacking infrared-guided missile;” and (2) “selecting a set of infrared-
emitting properties of the flare material responsive to a set of operating
characteristics of the aircraft.”
The correctness of the rejection of claims 37, 39, 41, and 43 under 35 U.S.C.
§ 103(a) as unpatentable over Modern Air Combat in view of Pelham turns on
whether the asserted references teach (1) the use of a pyrophoric material; (2)
“dispensing the pattern of the infrared flare material wherein a dispensed pattern
has a first spike having a first-spike radiant intensity, and a second spike having a
second-spike radiant intensity less than the first spike radiant intensity;” and (3) a
dispensing pattern that has a first spike radiant intensity greater than that of an
infrared signature of the aircraft engine and a second-spike radiant intensity less
than that of the infrared signature of the aircraft engine.
The correctness of the rejection of claims 1-3, 5, 6, 9-11, 24-26, 28, 29, 32,
47, 48, and 50 under 35 U.S.C. § 103(a) as unpatentable over Feagle in view of
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Modern Air Combat turns on whether (1) Feagle is analogous art; (2) the Examiner
has set forth an objective basis for combining the teaching of the references in the
manner used in this rejection; (3) there would be an expectation of success in
combining Feagle with Modern Air Combat; (4) Feagle or Modern Air Combat
teach away from the claimed approach; and (5) Modern Air Combat or Feagle
teaches certain limitations of the rejected claims as more fully described below.
The correctness of the rejection of claims 4, 7, 14, 27, and 49 under
35 U.S.C. § 103(a) as unpatentable over Feagle in view of Modern Air Combat in
further view of Pelham turns on whether (1) Pelham teaches the use of pyrophoric
material; and (2) any of the asserted references teaches a dispensing pattern of
flares with a spike with an IR radiation intensity above that of the aircraft’s exhaust
plume and another spike with an IR radiation intensity below that of the aircraft’s
exhaust plume.

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).
1. Modern Air Combat teaches that chaff can be dispensed on command by the
pilot or another crewman, or automatically by the EW suite, the dispenser
being programmed to fire any chosen arrangement. Modern Air Combat
discloses the Lundy ALE-44 supersonic compatible dispenser, which can
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release 1 or 2 payloads per burst, either 1, 2, 4, 8 or continuous bursts per
programme at the rate of ½, 1, 2 or 4 bursts per second. The payloads can
alternately be IR countermeasures, which can take the form of expendable
flares, or alternatively large pods resembling oddly shaped drop tanks, which
remain with the aircraft (Modern Air Combat, p. 57).
2. According to Modern Air Combat, the spurious or decoy IR source must
have stronger radiation than the aircraft. If dispensed, it must be fired in
such a direction that, when the flare burns out or has been struck by the
missile, the latter is no longer in position to reacquire the aircraft. Typical
40 mm flares have an output of 15 kW in the 3.5 microns wavelength,
burning for about three seconds (Id.). The short effective life of such flares
can be overcome by using a non-expendable IRCM, such as the ALQ-147
which burns JP fuel in a blast of ram air to heat a ceramic IR source whose
radiation is then mechanically modulated so that, while it cannot be seen
visually, even at night, it will transfer the IR seeker head of an AAM or a
SAM from the aircraft to the flare (Id.).
3. Pelham teaches a high intensity infra-red pyrotechnic decoy flare.
According to Pelham, decoy flares can only lure a seeker system from an
aircraft exhaust if the infra-red intensity of the burning pellet is greater than
that of the aircraft exhaust (Pelham, col. 1, ll. 30-32).
4. Pelham describes an aircraft-launched pyrotechnic decoy flare for luring an
incoming missile away from the aircraft’s exhaust, comprising at least one
pellet which is contained within an air-tight rupturable container. The pellet
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comprises a compactly clustered, substantially void free array of discrete
pieces of an infra-red emitting pyrotechnic composition. The container is
designed to rupture and dispense discrete pieces of pyrotechnic material
when subjected to a predetermined internal pressure generated by the
combustion of the gassy pyrotechnic composition (Pelham, col. 1, l. 57 –
col. 2, l. 8).
5. Pelham further teaches that the pyrotechnic material may optionally be
embedded in a matrix made of gassy infra-red emitting pyrotechnic material
(Pelham, col. 1, ll. 64-68). Using a matrix with the pyrotechnic material is
advantageous particularly if the discrete pieces are made of a pyrotechnic
composition which is difficult to ignite (Pelham, col. 2, ll. 24-38).
6. Pelham does not teach the use of pyrophoric material, which is defined as
“spontaneously igniting in air.” “pyrophoric.” The American Heritage®
Dictionary of the English Language, Fourth Edition. Houghton Mifflin
Company, 2004. 10 Nov. 2008. .
7. Figure 4 of Pelham displays the radiant intensity pattern of a two flare
sequence. An initial spike in radiant intensity is generated by a first flare.
While the first flare is burning, the aircraft can be maneuvered so that the
infrared intensity of the aircraft as seen from the direction of the seeker
system is reduced. The time delay between the initiation of the first and
second flares is chosen so that when the first flare burns out, the second flare
is burning and acting as an infra-red source. This corresponds to the second
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spike in infrared intensity shown in figure 4. If the aircraft is successfully
maneuvered, the second flare will be the brightest infra-red source the seeker
system sees, and so the seeker system will be lured towards the second flare
(Pelham, col. 7, l. 54 – col. 8, l. 3).
8. Pelham thus teaches that a second spike has a radiant intensity less than the
first spike, but does not teach that the second spike has a radiant intensity
less than that of the infrared signature of the aircraft engine.
9. Feagle teaches an airborne target for generating an exhaust plume simulating
that of a jet powered aircraft. The target produces an exhaust plume that
achieves substantially zero thrust while burning the same or similar
hydrocarbon fuel as conventional jet engines to produce infrared energy in
the same spectral bands as produced by the exhaust plume of a jet powered
aircraft (Feagle, col. 1, ll. 50-56).

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications “not solely on
the basis of the claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)). We must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is broader
than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be
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aided by explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”). The challenge
is to interpret claims in view of the specification without unnecessarily importing
limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
We remind Appellants that it is their burden to precisely define the
invention, not that of the Examiner. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Appellants always have the opportunity to amend the claims during
prosecution, and broad interpretation by the Examiner reduces the possibility that
the claim, once issued, will be interpreted more broadly than is justified. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). The prior art may anticipate a
claimed invention, and thereby render it non-novel, either expressly or inherently.
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Express
anticipation occurs when the prior art expressly discloses each limitation (i.e., each
element) of a claim. Id. In addition, “[i]t is well settled that a prior art reference
may anticipate when the claim limitations not expressly found in that reference are
nonetheless inherent in it.” Id.
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“To establish inherency, the extrinsic evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Inherency, however, may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is not
sufficient.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
omitted) (internal quotation marks omitted).
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S.Ct. 1727, 1734 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of ordinary skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 127 S.Ct. at 1734 (“While the sequence of these questions might be reordered
in any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
In KSR, the Supreme Court held that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. The Court explained:
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if 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.
Id. at 1740. The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements according to
their established functions.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984). Only if this initial burden is met does the burden of coming forward
with evidence or argument shift to the appellant. Id. at 1445. See also Piasecki,
745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445; Piasecki, 745 F.2d at 1472.
A reference is analogous art if the reference is 1) in the field of the
Appellant's endeavor or (2) reasonably pertinent to the problem with which the
Appellant was concerned. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
In KSR, the Supreme Court held that “any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
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for combining the elements in the manner claimed.” KSR, 127 S. Ct. at 1742
(emphasis added).
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the
reference, or would be led in a direction divergent from
the path that was taken by the applicant. The degree of
teaching away will of course depend on the particular
facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference's
disclosure is unlikely to be productive of the result
sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citations omitted).
“The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such disclosure
does not criticize, discredit, or otherwise discourage the solution claimed in the …
application.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). “The fact that
the motivating benefit comes at the expense of another benefit . . . should not
nullify its use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained, should be
weighed against one another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340,
1349, n.8 (Fed. Cir. 2000).
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

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ANALYSIS
As a preliminary matter, the Appellants moved to strike the Examiner’s
Answer for attempting to introduce new evidence and failing to conform to
portions of the MPEP (Reply Br. 1-5). These matters, however, are not directly
connected with the merits of issues involving a rejection of claims and therefore
are reviewable by petition to the Commissioner rather than by appeal to this Board.
See In re Hengehold, 440 F.2d 1395, 1403-1404 (CCPA 1971). Accordingly we
shall not decide or further discuss the Appellants' motion to strike.

Rejection of claims 35, 36, 38, and 40 under 35 U.S.C. § 102(b) as anticipated
by Modern Air Combat.
With respect to claim 35, the Appellants argue that Modern Air Combat does
not disclose that “a dispensed pattern of the infrared flare material is selected
responsive to a characteristic of a seeker of the infrared guided missile” (Br. 7).
The Examiner found that Modern Air Combat discloses a device and method
wherein the IRCM dispenser can be programmed to give any chosen arrangement
and the purpose of the IRCM is to create a signature that will attract the missile to
the IRCM rather than to the target (Answer 7). Modern Air Combat teaches that
the IR decoy must be fired in such a direction that, when the fire burns out or has
been struck by the missile, the missile is no longer in a position to re-acquire the
aircraft (Finding of Fact 2). This meets a broadest reasonable interpretation of
selecting a dispensed flare material pattern responsive to a characteristic of a
seeker of the infrared guided missile, specifically the missile’s ability to reacquire
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the target aircraft. Appellants thus have failed to show that the Examiner erred in
rejecting claim 35.
With respect to claim 36, Appellants argue that Modern Air Combat
does not teach “dispensing the infrared flare material responsive to a counter-
countermeasure of the infrared guided missile,” which the Appellants describe as
something that the attacking missile does to counteract the countermeasure of the
aircraft being attacked (Br. 8). The Examiner found that the IRCM may be
dispensed in such a direction that when the flare burns out or has been struck by
the missile, the latter is no longer in a position to re-acquire the aircraft (i.e.
counter countermeasure), and this may be done automatically by the EW suite
(Answer 7-8). We agree with Appellants that the Examiner erred in interpreting
the attacking missile’s inability to reacquire the target aircraft to be a counter-
countermeasure. It appears to be a description of an effective countermeasure of
the IRCM. An example of a counter-countermeasure would be something the
attacking missile does to reacquire the target aircraft despite the countermeasure of
the IRCM. No such teaching is present in Modern Air Combat. Appellants
therefore have shown the Examiner erred in rejecting claim 36 as anticipated by
Modern Air Combat.
With respect to claim 38, Appellants argue that Modern Air Combat does
not teach “the pattern includes spikes of different radiant intensities, and wherein
the more units of flare material dispensed per unit time during each spike, the
higher the radiant intensity of each spike” (Br. 8-9; Reply Br. 13). The Examiner
found that (1) Modern Air Combat discloses that the dispenser can release multiple
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payloads of flare material per burst (i.e. more flare material in a single burst); and
(2) the limitation of the claim “wherein the more units of flare material dispensed
per unit time during each spike, the higher the radiant intensity of each spike” is
merely an inherent property of flare material, and is not dependent on the type of
flare or “the relative amount of output” (Answer 8; citing Sweeny ’909, col. 4,
lines 30-31). Modern Air Combat teaches an IRCM dispenser that can release 1 or
2 payloads per burst, either 1, 2, 4, 8 or continuous bursts per programme, at the
rate of ½, 1, 2 or 4 bursts per second (Finding of Fact 1). This teaching meets the
disputed claim limitation. Appellants thus have failed to show that the Examiner
erred in rejecting claim 38.
With respect to claim 40, Appellants argue that Modern Air Combat does
not seek to match any characteristics of the flare material to the exhaust plume, but
instead seeks to have a “stronger” heat source (Br. 9). Claim 40 requires
“dispensing the pattern of the infrared flare material to have approximately the
same infrared spectral characteristics as an exhaust plume of the engine of the
aircraft.” The Examiner found that the term approximately in the claim is a
relative term that has not been defined or limited by the claim or the specification
and therefore must be interpreted in its broadest sense. According to the Examiner,
Modern Air Combat discloses IRCM having an output of 15 kW in the 3.5 micron
wavelength, which is approximately the same as an exhaust plume of an aircraft
(Answer 8). The Appellants argue that there is nothing of record to support the
Examiner’s finding that the output of the IRCM of Modern Air Combat is
approximately the same as an exhaust plume of an aircraft (Reply Br. 13). We
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agree with the Appellants. Modern Air Combat teaches only that the IRCM must
have stronger radiation than the aircraft. The Appellants therefore have shown that
the Examiner erred in rejecting claim 40 as anticipated by Modern Air Combat.

Rejection of claims 44 and 46 under 35 U.S.C. § 103(a) as unpatentable over
Modern Air Combat.
Claim 44 depends from claim 38 and adds the limitation “dispensing the
pattern of the infrared flare material so as to defeat an attacking infrared-guided
missile.” The Appellants argue that the Examiner improperly found this limitation
to be either inherent or a matter of design choice in the Final Rejection (Br. 10-
11). The Examiner found that Modern Air Combat teaches the flare being
dispensed in a pattern and that when the flare is “‘struck by the missile, the latter is
no longer in a position to re-acquire the aircraft.’” The Examiner further found
that, although Modern Air Combat does not specifically disclose that the missile is
an infrared guided missile, it is obvious that Modern Air Combat is directed to
such missiles, since the effect of the IRCM is to create an IR signature that would
distract the missile from the aircraft target (Answer 9). We agree with the
Examiner. The Appellants have not shown error in the rejection of claim 44.
Claim 46 depends from claim 35 and adds a requirement of “selecting a set
of infrared-emitting properties of the flare material responsive to a set of operating
characteristics of the aircraft.” The Appellants argue that Modern Air Combat
teaches a single type of flare material and never suggests that the flare material is
selected responsive to a set of operating characteristics of the aircraft (Br. 12). The
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Examiner found that Modern Air Combat discloses that the flare material may be
programmed to dispense to give any chosen arrangement and teaches that the
IRCMs create a signature that is similar to an aircraft radar cross-section or IR
source, but also more attractive than the signature of the aircraft. The Examiner
found that it therefore would have been obvious to select properties for the
intended use as a matter of obvious design choice, and the sole purpose of the
IRCM is to protect the target against attacking missiles (Answer 5). The Examiner
further found that Modern Air Combat discloses several types of payload IRCM
(chaff, aerosols, smoke, and active jammers) and also discloses that it is desirable
to create a signature that resembles that of the target aircraft, but is also more
desirable to the missile than the target aircraft (Answer 9).
The Appellants argue that neither of the passages cited by the Examiner
teaches the above quoted requirement and the Examiner concedes that the
limitation is not specifically mentioned by Modern Air Combat (Reply Br. 14).
The Appellants’ argument is not persuasive because Modern Air Combat teaches
that the IRCM must have stronger radiation than the aircraft, which meets the
limitation of selecting a set of infrared-emitting properties of the flare material
responsive to a set of operating characteristics of the aircraft. The Appellants have
not shown error in the rejection of claim 46.

Rejection of claims 37, 39, 41, and 43 under 35 U.S.C. § 103(a) as
unpatentable over Modern Air Combat in view of Pelham.
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Appellants restate the arguments against the rejection of claim 35, from
which claim 37 depends. Appellants restate the arguments against the rejection of
claim 38, from which claims 39, 41, and 43 depend, either directly or indirectly.
Those arguments are equally unpersuasive here.
Appellants argue that neither Modern Air Combat nor Pelham have any
teaching of a pyrophoric material (Br. 13). The Examiner found that Modern Air
Combat doesn’t specifically mention that the flares are pyrophoric material, but
Pelham teaches the use of pyrophoric material. According to the Examiner, it
therefore would have been obvious to one skilled in the art at the time of the
invention to use pyrophoric material as the IRCM flares taught in Modern Air
Combat. We agree that the Examiner has misapprehended Pelham. Pelham
actually refers only to pyrotechnic material, which does not spontaneously ignite,
as does pyrophoric material (Finding of Fact 6). The Examiner therefore has failed
to establish a prima facie case of obviousness with respect to claims 37 and 39,
which require pyrophoric material.
Claim 41 requires “dispensing the pattern of the infrared flare material
wherein a dispensed pattern has a first spike having a first-spike radiant intensity,
and a second spike having a second-spike radiant intensity less than the first spike
radiant intensity.” The Examiner found that Modern Air Combat teaches a
controlled dispensing pattern and Pelham in Figure 4 shows that it is well known in
the art to deploy IRCM flares in a spiked pattern wherein the second spike is less
intense than the first. The Examiner therefore found that it would have been
obvious to one of ordinary skill in the art at the time of the invention to program
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Modern Air Combat for a deployment in two bursts, wherein the second burst is
less intense than the first (Answer 5). The Appellants argue that neither reference
teaches the cited limitation and Figure 4 of Pelham is based on a single flare, not a
plurality of flares (Reply Br. 15-16, citing Pelham col. 5, ll. 58-60; col. 7, l. 54 –
col. 8, l. 3). The claim does not require multiple flares, merely first and second
spikes, and, in any case, the Appellants are incorrect. The cited portion of Pelham
clearly teaches the use of two flares (Finding of Fact 7). Because Figure 4 of
Pelham shows two spikes, with the second less than the first, the Appellants have
not shown that Examiner erred in rejecting claim 41.
Claim 43 further limits the dispensing pattern to a first spike radiant
intensity greater than that of an infrared signature of the aircraft engine and a
second spike radiant intensity less than that of the infrared signature of the aircraft
engine. The Appellants argue that neither of the references is even argued to teach
this claim limitation (Br. 14-15). The Examiner made the same findings as to
claim 43 as for claim 41 (Answer 5). We agree with the Appellants, because
Pelham actually teaches that if the aircraft is successfully maneuvered, the second
flare will be the brightest infra-red source the seeker system sees and so the seeker
system will be lured towards the second flare (Findings of Fact 7 & 8). The
Examiner therefore has failed to establish a prima facie case of obviousness with
respect to claims 43.

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Rejection of claims 1-3, 5, 6, 9-11, 24-26, 28, 29, 32, 47, 48, and 50 under
35 U.S.C. § 103(a) as unpatentable over Feagle in view of Modern Air
Combat.
Appellants argue that Feagle is nonanalogous art. According to Appellants,
Feagle is not an apparatus for defeating infrared (IR)-guided missile attacks or a
decoy, and instead is a towed target used for practice (Br. 15). The Examiner did
not give the phrase “an apparatus for defeating infrared (IR)-guided missile attacks
on an aircraft” patentable weight because it appears in the preamble and merely
recites the intended use of the claimed invention without resulting in a structural
difference (Answer 10). According to the Examiner, the apparatus of Feagle
works by attracting an attacking missile to the decoy, the same as the present
invention, and Feagle and Modern Air Combat are all in the related art of infrared
emitting airborne targets (Id.). The Appellants have not shown that the Examiner
erred in finding that Feagle is analogous art.
The Appellants further argue that the Examiner has set forth no objective
basis for combining the teaching of the references in the manner used in this
rejection (Br. 17-18). Specifically, the Examiner found that the substitution of the
flares taught by Modern Air Combat for the heat creating system taught by Feagle
would have been obvious to one having ordinary skill in the art at the time the
invention was made, since they are known equivalents for their capabilities to
create IR signatures that mimic the output of aircraft (Answer 5). The Appellants
argue that Feagle teaches why they are not known equivalents (Br. 19, citing
Feagle, col. 1, l. 7 – col. 2, l. 29). We find no such teaching in the cited passage,
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which is the entire Background of the Invention and Summary of the Invention.
Moreover, Modern Air Combat teaches that the short effective life of the flares
disclosed therein can be overcome by using a non-expendable IRCM. The ALQ-
147, for example, burns JP fuel in a blast of ram air to heat a ceramic IR source
whose radiation is then mechanically modulated so that, while it cannot be seen
visually, even at night, it will transfer the IR seeker head of an AAM or a SAM
from the aircraft to the flare (Finding of Fact 2).
The Appellants also argue that there would be no expectation of success in
combining Feagle with Modern Air Combat because Feagle cannot produce the
“bursts” taught by Modern Air Combat (Br. 19). The Appellants’ argument is not
persuasive because the Examiner does not rely on Feagle to teach such bursts, and
the Appellants are attacking the references individually rather than the combination
asserted by the Examiner.
With respect to claim 1, the Appellants argue that Feagle and Modern Air
Combat both teach away from the claimed approach (Br. 20-21). The Appellants
argue that Feagle teaches away because (1) it does not teach the use of flares; (2)
the jet fuel of Feagle is not in solid form; and (3) it distinguishes the prior approach
on the basis of the wavelengths produced (Br. 21). The Examiner relies on
Modern Air Combat to teach the first two features; the Appellants again are
attacking the references individually and not addressing the combination asserted
in the rejection. As for the third teaching, the Appellants provide no specific
reference to Feagle, and we find no discussion that would teach away from
substituting flares for jet fuel as proposed by the Examiner. The Appellants argue
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that Modern Air Combat teaches away from the combination, because it teaches
dispensers that “remain with the aircraft” and are not towed (Br. 21). The
Examiner relies on Feagle for the teaching of towing the dispenser, and the
Appellants have pointed to no portion of Modern Air Combat that teaches away
from towing the flare dispenser. The Appellants again are attacking the references
individually and not addressing the combination asserted in the rejection.
The Appellants also argue that neither reference teaches that the rate at
which the flares are dispensed is determined by commands transmitted from the
aircraft as required by claim 1 (Br. 21). The Examiner found that Modern Air
Combat does teach that the flares can be dispensed on command by the pilot or
automatically by the EW suite, the dispenser being programmed to give any chosen
arrangement (Answer 12). The Examiner is correct (Finding of Fact 1). The
Appellants have not shown that the Examiner erred in rejecting claim 1.
Claim 2 depends from claim 1 and adds the limitation that
the decoy is towed at a distance behind the aircraft that
places it close enough to an exhaust plume of the aircraft
that both IR emissions from the aircraft's exhaust plume
and IR emissions of at least some of the flares dispensed
from the towed decoy are in a field of view of a seeker of
an IR guided missile, but far enough behind the aircraft's
exhaust plume that the seeker of the missile miscalculates
a location of the aircraft.
The Appellants argue that Feagle has no discussion of how closely its decoy is
towed behind the aircraft, and Modern Air Combat has no disclosure of towed
decoys at all (Br. 23). The Examiner found that claim 2 requires only that the
decoy be towed at a single optimum distance, and determining an optimal distance
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is a technique that is recognized as part of the ordinary capabilities of one skilled in
the art. According to the Examiner, it would have been obvious to one of ordinary
skill in the art to apply the known technique of optimizing a towed distance for the
predictable result of making the towed decoy its most effective (Answer 12).
The Appellants argue that the error is to assume that it is known to optimize
based on the parameters of “close enough to an exhaust plume of the aircraft that
both IR emissions from the aircraft’s exhaust plume and IR emissions of at least
some of the flares dispensed from the towed decoy are in a field of view of a
seeker of an IR guided missile” and “far enough behind the aircraft’s exhaust
plume that the seeker of the missile miscalculates a location of the aircraft.” (Br.
23). We find no teaching of using the above parameters to set the towing distance
of the decoy. The Examiner thus has failed to establish a prima facie case of
obviousness as to claim 2.
Similar to claim 2, claim 3 requires “said means continuously dispenses
flares at a distance behind the aircraft that ensures both IR emissions from an
exhaust plume of the aircraft and IR emissions of at least some of the flares
dispensed from said decoy are in a field of view of a seeker of the IR guided
missile.” For the same reasons as for claim 2, neither Feagle nor Modern Air
Combat teaches the above limitation. The Examiner thus has failed to establish a
prima facie case of obviousness as to claim 3.
Claim 5 depends from claim 1 and further requires “said means dispenses
the IR emitting flares at rates which create IR energy levels behind the decoy
which cannot be effectively distinguished from that of the aircraft's exhaust plume,
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thereby defeating said intensity CCMs.” The Appellants argue that neither
reference has such a teaching, and the Examiner’s Answer does not assert that they
do (Reply Br. 21). The Examiner found that Modern Air Combat teaches the IR
flares are dispensed in such a way that the missile is no longer in a position to re-
acquire the aircraft (Answer 13). In fact, Modern Air Combat teaches that decoy
IR source must have stronger radiation than the aircraft (Finding of Fact 2). The
Examiner thus has failed to establish a prima facie case of obviousness as to claim
5 and claim 6, which depends therefrom.
Claim 9 depends from claim 1, and further requires “said means dispenses
IR emitting flares from the decoy at rates that prevent average IR emissions
associated with the decoy's flares from decreasing in intensity over time, thereby
defeating said temporal CCMs.” The Examiner found that Modern Air Combat
teaches the IR flares may be dispensed in any chosen arrangement (Answer 13).
The Appellants argue that neither reference mentions this limitation or teaches it in
any way (Br. 26). The Examiner has failed to show where either reference
discloses the disputed claim limitation. The Examiner thus has failed to establish a
prima facie case of obviousness as to claim 9.
Claim 10 depends from claim 1, and further requires in part “a motor
disposed within the housing” and “a motor controller disposed within the housing
and connected to the motor, said controller being capable of controlling a speed of
the motor.” The Examiner found that Modern Air Combat teaches a device that
controls the dispensing of the flares in a controlled manner and Feagle discloses a
device for converting the electrical commands into mechanical action (i.e. a motor)
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(Answer 13). The Appellants argue that (1) Feagle teaches no such device; (2) the
explanation of the rejection does not point to any structure of Feagle which “can be
interpreted as a motor;” and (3) the structure of Feagle does not teach “controlling
a speed of the motor” as recited in the claim (Br. 27). The Appellants also argue
that Feagle teaches only a solenoid valve that turns the flow of liquid fuel on or off
(Reply Br. 22, citing Feagle, col. 4, l. 28). We find no relevant disclosure other
than the solenoid valve, which would not meet the plain meaning of a motor.
Modern Air Combat refers to firing the flares and using a small charge to pop the
dispensed payload out, but does not describe a motor or a motor controller capable
of controlling the speed of the motor. The Examiner therefore has failed to
establish a prima facie case with respect to claim 10 and claim 11, which depends
therefrom.
Claim 24 largely mirrors the limitations of claim 1. The Appellants restate
arguments made with respect to claim 1 that (1) neither reference teaches towing
an IR flare dispensing decoy behind the aircraft, wherein IR-emitting flares are
carried on the decoy in solid form; (2) the applied references teach away from the
combination by teaching igniting of liquid jet fuel dispensed from a towed decoy;
and (3) Modern Air Combat has no teaching that the rate of dispensing can be
varied under command from the aircraft to a dispenser, whether in the aircraft or in
a decoy as claimed (Br. 29-30). These arguments are equally unpersuasive here as
they are with respect to claim 1. The Appellant thus have not shown the Examiner
erred in rejecting claim 24.
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Claim 25 depends from claim 24 and adds substantially the same limitation
as claim 2. For the same reasons as discussed for claim 2 above, the Examiner
failed to establish a prima facie case of obviousness as to claim 25. Claim 26
depends from claim 24 and adds essentially the same limitation as claim 3. For the
same reasons as discussed for claim 3 above, the Examiner failed to establish a
prima facie case of obviousness as to claim 26. Claim 28 depends from claim 24,
and adds essentially the same limitation as claim 5. For the same reasons as stated
with respect to claim 5, the Examiner failed to establish a prima facie case of
obviousness as to claim 28 and claim 29, which depends therefrom.
Like claim 9, claim 32 requires “wherein the temporal CCMs are defeated
by a step of dispensing IR emitting flares from the decoy at rates that prevent [the]
average IR emissions associated with the decoy's flares from decreasing in
intensity over time, and dispensing the flares from the decoy for a longer period of
time relative to [the] dispensing of aircraft-launched flares.” The Examiner
referred back to his response to claim 9 (Answer 14). The Appellants argue that
neither reference mentions this limitation or teaches it in any way (Br. 34). For the
same reasons as described above with respect to claim 9, the Examiner has failed
to establish a prima facie case of obviousness as to claim 32.
With respect to claim 47, the Appellants restate the arguments made against
the combination of Feagle and Modern Air Combat with respect to claim 1 (Br. 34-
35). Those arguments are equally unpersuasive as to claim 47. The Appellants
also restate the argument made with respect to claim 46, that the references do not
teach “selecting a set of infrared-emitting properties of the flare material
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responsive to a set of operating characteristics of the aircraft.” As described above
with respect to claim 46, the Appellants have not shown that the Examiner erred in
finding that Modern Air Combat teaches the disputed limitation.
Claim 48 depends from claim 47 and adds the limitation of “dispensing the
infrared flare material responsive to a counter-countermeasure of the infrared
guided missile.” The Appellants argue that neither reference teaches this limitation
(Br. 36). The Examiner refers back to his response to claim 36 (Answer 14). As
discussed in connection with claim 36 above, Modern Air Combat does not teach
this limitation. Feagle does not correct the deficiencies of Modern Air Combat.
The Examiner thus has failed to establish a prima facie case of obviousness as to
claim 48.
Claim 50 depends from claim 47 and further requires “dispensing a
dispensed pattern of the infrared flare material responsive to a characteristic of a
seeker of the infrared guided missile.” As discussed above with respect to claim
35, Modern Air Combat discloses this limitation when given its broadest
reasonable interpretation. Appellants thus have not shown that the Examiner erred
in rejecting claim 50.

Rejection of claims 4, 7, 14, 27, and 49 under 35 U.S.C. § 103(a) as
unpatentable over Feagle in view of Modern Air Combat in further view of
Pelham.
With respect to claims 4, 14, 27, and 49, Appellants restate the argument
made with respect to claim 37 that Pelham does not teach the use of pyrophoric
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material (Br. 37-40). As stated above, the Appellants are correct. Feagle does not
overcome the deficiencies of Pelham. The Examiner thus has failed to establish a
prima facie case of obviousness as to claims 4, 14, 27, and 49.
Claim 7, similar to claim 43, requires a spike with an IR radiation intensity
above that of the aircraft’s exhaust plume and another spike with an IR radiation
intensity below that of the aircraft’s exhaust plume. As discussed above with
respect to claim 43, Pelham does not teach such a sequence. Feagle does not
overcome the deficiencies of Pelham. The Examiner thus has failed to establish a
prima facie case of obviousness as to claim 43.

CONCLUSIONS
We conclude that the Appellants have not shown that the Examiner erred in
rejecting claims 35 and 38 under 35 U.S.C. § 102(b) and claims 1, 24, 41, 44, 46,
47, and 50 under 35 U.S.C. § 103(a). We conclude that the Appellants have shown
that the Examiner erred in rejecting claims 36 and 40 under 35 U.S.C. § 102(b) and
claims 2-7, 9-11, 14, 25-29, 32, 37, 39, 40, 43, 48, and 49 under 35 U.S.C.
§ 103(a).

DECISION
The decision of the Examiner to reject claims 35 and 38 under 35 U.S.C.
§ 102(b) is affirmed. The decision of the Examiner to reject claims 36 and 40
under 35 U.S.C. § 102(b) is reversed. The decision of the Examiner to reject
claims 1, 24, 41, 44, 46, 47, and 50 under 35 U.S.C. § 103(a) is affirmed. The
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decision of the Examiner to reject claims 2-7, 9-11, 14, 25-29, 32, 37, 39, 40, 43,
48, and 49 under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED-IN-PART

JRG

Raytheon Company
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El Segundo, CA 90245