Ex parte Talbot

• Decision Date: 18 July 2003
• Docket Number: 286,Application 09/163,Appeal 2002-2169
• Parties: Ex parte NICHOLAS C. TALBOT and MICHAEL V. McCUSKER
• Court: Patent Trial and Appeal Board

Ex parte NICHOLAS C. TALBOT and MICHAEL V. McCUSKER

Appeal No. 2002-2169

Application No. 09/163, 286

United States Patent and Trademark Office, Patent Trial and Appeal Board

July 18, 2003

This Opinion is Not binding Precedent of the Board.

ON BRIEF

Before FLEMING, BARRY, and BLANKENSHIP, Administrative Patent Judges.

DECISION ON APPEAL

BARRY Administrative Patent Judge.

A patent examiner rejected claims 1-7 and 12. The appellants appeal therefrom under 35 U.S.C. § 134(a). We affirm-in-part.

BACKGROUND

The invention at issue on appeal relates to calibrating surveying instruments. According to the appellants, electronic distance measuring ("EDM") equipment became commercially available after World War-II and has since been used for surveying. (Spec. at 1-2.) Miniaturization lead to mounting EDM equipment on theodolites, which have telescopes for sighting angles to targets. Such electro-optical hybrids are called "total stations." (Id. at 2.)

An EDM equipment meter derives its accuracy from an internal frequency source such as a crystal oscillator. The frequency of the oscillator, however, can drift over time and with age. Exposure to extreme environments can also upset delicate calibrations of the frequency source. (Id. at 3.)

Accordingly the invention aims to calibrate a total station automatically and precisely. The total station includes a global positioning system ("GPS") receiver, an oscillator and an EDM meter. When the receiver is locked onto and tracking GPS satellites, cesium-rubidium clocks in the satellites are used to calibrate the oscillator, which drives the meter. The appellants assert that baseline measurements made by the meter are "not subject to mis-calibrations and drift as long as the satellite navigation receiver is locked onto and tracking the orbiting navigation satellites." (Id. at 5.)

A further understanding of the invention can be achieved by reading the following claim.

1. A surveying instrument, comprising:

a satellite navigation receiver with a pulse-per-second output derived from an atomic time standard used in a related orbiting navigation satellite;

a reference oscillator controlled by said pulse-per-second output and providing a reference frequency with a timing accuracy directly related to a timing accuracy of said atomic time standard;

an electronic distance meter having an EDM transmitter for launching an out-bound signal to a distant target and an EDM receiver for receiving a reflected signal from said distant target; and

a phase measurement device connected to the reference oscillator, said EDM transmitter and said EDM receiver, and providing for a time measurement of the difference between said out-bound signal and said reflected signal using said reference frequency;

wherein, a distance-to-target measurement is computed with an accuracy dependant on said timing accuracy of said atomic time standard.

Claims 5, 6, and 12 stand rejected under 35 U.S.C. § 112 ¶ 2, as indefinite. Claims 6 and 12 stand rejected under 35 U.S.C. § 112, ¶ 1, as lacking an adequate written description. Claims 6 and 12 also stand rejected under § 112, ¶ 1, as nonenabled. Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as obvious over U.S Patent No. 5, 430, 537 ("Liessner") and Using a New GPS Frequency Reference in Frequency Calibration Operations, 1993 IEEE Int'l Frequency Control Symp., pp. 33-39 ("Osterdock").

OPINION

When claims have been rejected under the first and second paragraphs of 35 U.S.C. § 112, analysis "should begin with the determination of whether the claims satisfy the requirements of the second paragraph." In re Moore, 439 F.2d 1232, 1235, 169 U.S.P.Q. 236, 238 (CCPA 1971). Accordingly, our opinion addresses the rejections in the following order:

• indefiniteness rejections of claims 5, 6, and 12

• written description rejections of claims 6 and 12

• nonenablement rejections of claims 6 and 12

• obviousness rejection of claims 1-7.

Indefiniteness Rejections of Claims 5, 6, and 12

Rather than reiterate the positions of the examiner or the appellants in toto, we address the three points of contention therebetween. First, the examiner asserts, "in claims 5 and 6, 'said time phase difference' is indefinite since (1) it lacks a proper antecedent basis and (2) it is unclear what meaning is attributed thereto." (Examiner's Answer at 4.) The appellants argue, "[t]he mentioning of 'said time phase differences, in claims 5 and 6 has antecedent basis in claim 4 with 'measuring a time difference.'" (Reply Br. at 3.)

A claim is indefinite "where the language 'said lever' appears in a dependent claim where no such 'lever' has been previously recited in a parent claim to that dependent claim . . . ." Ex parte Moelands, 3 U.S.P.Q.2d 1474, 1476 (Bd. Pat. App. & Int. 1987).

Here, dependent claims 5 and 6 include the language "said time phase difference. . . ." No such "time phase difference" has been previously recited in parent claim 4. To the contrary, claim 4 merely specifies "a time difference. . . ." Therefore, we affirm the indefiniteness rejection of claims 5 and 6.

Second, the examiner asserts, "[i]n claim 12, the language 'a reference oscillator with a frequency offset' is not clear. An oscillator outputs a frequency signal; what is the offset and to what does it refer?" (Examiner's Answer at 4.) The appellants argue, "[t]he claim itself explains the frequency offset 'is determined by the use of satellite transmissions received by the satellite navigation receiver, and wherein a determination of said frequency offset is used later in software to correct for frequency errors'." (Appeal Br.^[1] at 5.)

"For each rejection under 35 U.S.C. 112, second paragraph, the argument shall specify the errors in the rejection and how the claims particularly point out and distinctly claim the subject matter which applicant regards as the invention." 37 C.F.R. § 1.192(c)(8)(ii) (2002).

Here, the appellants' argument is not responsive to the examiner's rejection. More specifically, although the examiner asserts that the meaning of the claim's "frequency offset" is unclear, the appellants argue that the claim specifies how the offset is determined and how it is used. The argument does not allege, let alone show, that the meaning of "frequency offset" is clear.

Third, the examiner asserts that in claim 12, "[i]t is unclear to what the language 'provide a calibration signal' refers. Is the calibration signal related to the frequency offset?" (Examiner's Answer at 4.) The appellants argue, "[a] free running local oscillator can either be phase locked to a sub-harmonic of the atomic clock based satellite carrier transmissions, or those transmissions can be used to measure the local clock errors." (Reply Br. at 3.)

Again, the appellants' argument is not responsive to the examiner's rejection. More specifically, although the examiner asserts that the claimed providing of a calibration signal is unclear, the appellants argue that a local oscillator can either be phase locked to a sub-harmonic of an atomic clock based satellite carrier transmissions, or those transmissions can be used to measure the local clock's errors. The argument does not allege, let alone show, that the meaning of "provide a calibration signal" is clear. Therefore, we affirm the indefiniteness rejection of claim 12.

Written Description Rejections of Claims 6 and 12

Regarding claim 6, the examiner asserts, "the specification does not make clear how the 'observations of a plurality of phase differences . . . at a plurality of . . . signal frequencies' provides a limitation to 'measuring a time difference . . . using a reference time base obtained from said local reference clock'." (Examiner's Answer at 3.) He further asserts, "[r]egarding claim 12, the specification does not sufficiently describe how a phase measurement device operates on the time difference from which a distance to target measurement can be computed after correcting for frequency offset determined in software." (Id.)

"The claims as filed are part of the specification, and may provide or contribute to compliance with Section 112." Hyatt v. Boone, 146 F.3d 1348, 1352, 47 U.S.P.Q.2d 1128, 1130 (Fed. Cir. 1998) (citing Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 938, 15 U.S.P.Q.2d 1321, 1326 (Fed. Cir. 1990); In re Benno, 768 F.2d 1340, 1346, 226 U.S.P.Q. 683, 686-87 (Fed. Cir. 1985); In re Frey, 166 F.2d 572, 575, 77 U.S.P.Q. 116, 119 (CCPA 1948)). More specifically, "disclosure in an originally filed claim satisfies the written description requirement." Union Oil Co. of California v. Atlantic Richfield Co., 208 F.3d 989, 998 n.4, 54 U.S.P.Q.2d 1227, 1234 n.4 (Fed. Cir. 2000) (citing In re Gardner, 480 F.2d 879, 880, 178 U.S.P.Q. 149 (CCPA 1973)).

Here, the originally filed claims disclose the limitations at issue. More specifically, originally filed claim 6 discloses that "the step of measuring said time phase difference includes observations of a plurality of phase differences observed by said electronic distance meter at a plurality of out-bound and in-bound signal frequencies." For its part, originally filed claim 12 discloses "a phase measurement device . . . providing for a measurement of the difference in time between said out-bound signal and said reflected signal from which a distance-to-target measurement can be computed after using said determination of said frequency offset in software to correct for errors. . . ." Therefore, we reverse the written description rejection of claims 6 and 12.

Nonenablement Rejections of Claims 6 and 12

We address the two points of contention between the examiner and the appellants. First, the examiner asserts "[r]egarding claim 6, the specification is non- enabling with respect...