Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE GORDON GOULD
Appeal No. 677-49
February 26, 1988
Requests filed September 29, 1982, Control No. 90/000263, and November 17, 1982, Control No. 90/000289, for the Reexamination of Patent 4,161,436, based on application Serial No. 840,050 filed October 6, 1977. Method of Energizing a Material.
Lerner, David, Littenberg, Krumholz & Mentlik for appellant
Appeal from Final Rejection of Patent Examiner Harvey E. Behrend.
By the Board:
It has come to our attention that the United States District Court for the Middle District of Florida, Orlando Division, ruled recently that two documents that we had found on the record before us at the time of our September 26, 1986 decision, reported at 231 USPQ 949, not to be publications were publications. In our previous opinion, there was no need to review on the merits a 35 U.S.C. § 103 rejection wherein those documents were used as the primary references since we held on the record then before us that the documents were not publications under 35 U.S.C. § 102(b). The documents are (1) a preprint of an article by Arthur L. Schawlow and Charles H. Townes appearing in Physical Review, Vol. 112, No. 6, pp. 1940-49 (December 15, 1958) and (2) a technical memorandum by the same authors containing much of the same discussion as in the preprint and the published article. We will refer to these documents as the "Schawlow preprint" and the "Schawlow memorandum" hereafter. In order to make this record complete in the light of the above court ruling, we now consider anew the 35 U.S.C. § 103 rejection involving the Schawlow preprint and the Schawlow memorandum.
The court ruling to which we refer above is that in Gordon Gould et al. v. Control Laser Corp. et al., Case No. 78-344(a)-CIV-ORL-19 (final judgment filed November 5, 1987 following a jury trial and a denial of a motion by plaintiffs for judgment notwithstanding the jury verdict) and the portion thereof that prompted this paper is verdict questions 10 and 11 and the answers thereto. In the special verdict, the jury answered affirmatively that the Schawlow preprint and the Schawlow memorandum were proven by clear and convincing evidence to be printed publications on or before August 28, 1958.
In our previous decision, we reversed the rejection denominated THE FOURTH REJECTION because it had not been established on that record that the Schawlow preprint or the Schawlow memorandum qualified as publications under 35 U.S.C. § 102(b). More particularly, the rejection there reviewed was one under 35 U.S.C. § 103 based upon the Schawlow preprint or Schawlow memorandum in view of what was referred to as the "use prior art" alone or in view of Dicke, U.S. Patent No. 2,851,652. The reader's familiarity with the earlier opinion is assumed and one is referred there for a fuller understanding of that rejection.
*2 We have undertaken a thorough review of the Schawlow preprint. We find that the only discussion that might possibly be regarded as pertinent to the subject matter of claims 1 to 3 is found at the paragraph bridging pages 25 and 26. There, the authors discuss a property associated with the directional selection of an optical maser, the property being passage of a light beam "through an ensemble of excited states with resulting amplification, but no important change in the wavefront or phase." The authors continue,
Suppose, for example, that parallel light is focused by a lens. If an amplifying medium of excited gas is interposed between the lens and its focal point, the image will be intensified, but not otherwise changed except for some more or less normal effects which may be attributed to the dielectric constant of the gas.
The disclosure of the Schawlow preprint is at best cumulative to the Schawlow and Townes patent, which we found to be insufficient to support a rejection under 35 U.S.C. § 103 of any of the pending claims. Accordingly, even if we had deemed the Schawlow preprint to be a publication available for citation against Gould's claims, we would not have affirmed the rejection.
We also have undertaken a thorough review of the Schawlow memorandum and find, in the paragraph bridging pages 22 and 23, the identical discussion quoted above from the Schawlow preprint. Likewise, the Schawlow memorandum is at best cumulative to the Schawlow and Townes patent. Therefore, we also note that, even if we had deemed the Schawlow memorandum to be a publication available for citation against Gould's claims, we would have reversed the rejection.
We hold, therefore, that the rejections based upon the Schawlow preprint and the Schawlow memorandum are reversed because those references, considered with the "use prior art" or Dicke, do not teach or suggest the claimed invention.
BOARD OF PATENT APPEALS AND INTERFERENCES
Saul I. Serota
Ian A. Calvert
Paul J. Henon