Ex parte TERRY et al.

Board of Patent Appeals and Interferences

May 14, 1998

07975908 (B.P.A.I. May. 14, 1998)

Application for patent filed November 13, 1992.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID H. TERRY, WILLIAM A. CHRISTENS-BERRY
BRADLEY G. BOONE
_____________
Appeal No. 96-0215
Application 07/975,9081
______________
ON BRIEF
_______________
Before KRASS, FLEMING and CARMICHAEL, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 2 through 5 and 10 through 17. Claims 6 through 9 have
been withdrawn from consideration. Claims 1 has been canceled.
Appeal No. 96-0215
Application 07/975,908
2
The invention relates to an optical feature extractor for
symbolically encoding DNA bases to permit detection of a class of
DNA sequences based on their symmetry.
The independent claim 10 is reproduced as follows:
10. An optical feature extraction apparatus for detecting
data comprising:
a filter for decoding the data to be detected
comprising a plurality of opaque and transparent
regions;
a display means for displaying the filter, the
displayed filter spatially modulating the light
from the display means and creating an intensity
distribution of light;
a means for replicating the light intensity
distribution received from the display means;
a mask encoded with the data to be
classified, the mask receiving and further
modulating the light intensity distribution;
and
a means for detecting the further modulated light
intensity distribution received from the mask.
The Examiner relies on the following references:
Shelton, Jr. 3,064,519 Nov. 20, 1962
Tsujiuchi et al. (Tsujiuchi) 5,148,502 Sep. 15, 1992
Claims 2 through 5 and 10 through 17 stand rejected under 35
U.S.C. § 112, second paragraph, for failing to particularly point
out and distinctly claim the subject matter which Appellants
regard as their invention. Claims 10 through 17 stand rejected
Appeal No. 96-0215
Application 07/975,908
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under 35 U.S.C. § 103 as being unpatentable over Shelton, Jr.
Claims 2 through 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Shelton, Jr. and Tsujiuchi.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
We will not sustain the rejection of claims 2 through 5 and
10 through 17 under 35 U.S.C. §§ 103 or 112.
Analysis of 35 U.S.C. § 112, second paragraph, should
begin with the determination of whether claims set out and
circumscribe a particular area with a reasonable degree of
precision and particularity; it is here where definiteness of the
language must be analyzed, not in a vacuum, but always in light
of teachings of the disclosure as it would be interpreted by one
possessing ordinary skill in the art. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
The Examiner argues that the language, "a filter for
decoding the data to be detected" in claim 10 is vague and
indefinite because it is not clear how a filter performs a
function of decoding the data. The Examiner argues that the
Appeal No. 96-0215
Application 07/975,908
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remaining claims are indefinite because they depend from
claim 10.
Appellants argue on page 6 that it is clear how the filter
functions to decode the data to be detected. Appellants point to
the specification, page 5, lines 30-32, which disclose that the
filter is designed to extract the features of the data. Appel-
lants argue that in light of the specification, it is clear that
the filter decodes the data through feature extraction by spati-
ally modulating light which is directed to a mask encoded with
the data to be classified.
In view of the Appellants' arguments and in light of the
teaching of Appellants' disclosure as it would be interpreted by
one possessing ordinary skill in the art, we find that the
language "a filter for decoding the data to be detected" sets out
and circumscribes a particular area with a reasonable degree of
precision and particularity. Therefore, we will not sustain the
rejection on the basis of 35 U.S.C. § 112 second paragraph.
In regard to the 35 U.S.C. § 103 rejection, the Examiner has
failed to set forth a prima facie case. It is the burden of the
Examiner to establish why one having ordinary skill in the art
would have been led to the claimed invention by the express
Appeal No. 96-0215
Application 07/975,908
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teachings or suggestions found in the prior art, or by
implications contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996) citing
W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548,
220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The Examiner notes on page 4 of the answer that Shelton, Jr.
fails to teach the claimed position of the filter and encoded
mask as set forth in claim 10. On the same page of the answer,
the Examiner states that it would have been obvious to one of
ordinary skill in the art to adapt commutativity of projection
which is an inherent property in optics to change the positions
of different elements in the Shelton's optical feature extraction
apparatus. We note that the Examiner did not provide any reason
for making this modification or any evidence in the prior art to
support the Examiner's conclusion.
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Appellants argue on page 8 of the brief that Appellants
disclose on pages 3 and 4 of the specification that the notable
feature of their invention is to exchange positions of input
scenery and the filter set. The specification further teaches
that unlike the prior art which provides a display of the input
scene on a monitor for projection onto a set of feature extrac-
tion vectors realized as amplitude modulated LCTC devices or
lithographically prepared masks, the Appellants' invention
provides the filter set as input to the system and correspond-
ingly places the sequence data in the filter plane of the system,
relying on the commutativity of projection to allow this role
reversal. Appellants argue that the prior art is dealing with
providing capabilities for filtering a freely varying input scene
while their invention is designed to facilitate flexible queries
of a large, but unchanging, database of data, e.g. DNA sequences.
Appellants argue that placing the filter bank in the input plane
provides a relatively low space-bandwidth product, but can be
reconfigured to present a variety of filters in accordance with
investigators needs and as indicated by the results of earlier
queries. Appellants further state that this configuration allows
Appeal No. 96-0215
Application 07/975,908
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for a hierarchical set of filtering operations and thus retains
great flexibility in the types of queries that can be carried
out.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984).
We agree that Shelton, Jr. teaches a filter and encoded
mask, but the Examiner has failed to show that the prior art
suggested the desirability of the Examiner's proposed modifi-
cation. Furthermore, we cannot find that Appellants' invention
is obvious just because the laws of physics allow for the
Appellants' invention. This hindsight view is not evidence that
those skilled in the art would have reason to make the
modification. We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference or shown to be common knowledge
of unquestionable demonstration. Our reviewing court requires
Appeal No. 96-0215
Application 07/975,908
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this evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961);
In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
Furthermore, we find that Tsujiuchi fails to supply this missing
teaching. Therefore, we find that the Examiner has failed to
establish why one having ordinary skill in the art would have
been led to the claimed invention by teachings or suggestions
found in the prior art.
We have not sustained the rejection of claims 2 through 5
and 10 through 17 under 35 U.S.C. §§ 103 or 112. Accordingly,
the Examiner's decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 96-0215
Application 07/975,908
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Appeal No. 96-0215
Application 07/975,908
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Francis A. Cooch
The Johns Hopkins University
Applied Physics Laboratory
Johns Hopkins Rd.
Laurel, MD 20723-6099