This ruling relates to claim construction and permissible amendments.
Israel Aircraft Industries submitted Israel Patent Application Number 190197 titled “Method for Performing Exo-Atmospheric Missile’s Interception Trial” back in March 2008. The application was first filed in Israel and does not claim priority from foreign applications. On allowance, the application published for opposition purposes and Rafael Advanced Military Systems Ltd filed an opposition.
The independent Claims 1 and 15 of the application are as follows:
“1. A method for facilitating exo-atmospheric ground to ground (GTG) missile’s interception trial, comprising:
Launching a carrier accommodating at least one inflatable dummy target, said carrier being configured to release an inflatable dummy target therefrom; said dummy target or portion thereof is configured to be inflated and has characteristics that resemble a GTG missile characteristics; said dummy target is configured to re-route its flight trajectory during its release from the carrier for at least (i) facilitate sensing of interception during the END GAME, (ii) assuring that the carrier being substantially out of the field of view of the interceptor during the END-GAME, or assuring that the carrier being substantially in the field of view of the interceptor during the END-GAME at the pre-defined location relative to the dummy target;
Launching an interceptor for exo-atmospheric interception of the dummy target; and
Receiving communication of data sensed during the interception process.”
“15. A method for simplifying exo-atmospheric ground-to-ground (GTG) missile’s interception trial, comprising:
Providing at least one inflatable dummy target that is manufacturable in considerable simpler manufacturing process than a GTG missile, and capable of manifesting characteristics that resemble characteristics of the GTG missile and wherein use of said inflatable dummy target prevents near and far safety problems;
Providing a common carrier missile capable of accommodating at least one dummy target irrespective of the characteristics thereof;
Whereby said common carrier missile is capable of being launched and being configured to release the at least one inflatable dummy target at selected exo-atmospheric location, for testing the ability of an interceptor missile to intercept said dummy target at exo-atmospheric interception point, thereby testing the interceptor’s operational feasibility to destroy the GTG missile.”
Rafael based their Opposition on the following publications:
- Development of Coherent Laser Radar at Lincoln Laboratory, 2 Nov 2000
- An Internet page from The Federation of American Scientists (FAS) 22 Nov 2002
- Explanation of why the sensor in the exo-atmospheric kill vehicle (EKV) Cannot reliably discriminate decoys from warheads from 2000
- US 3,290,681 from 6 December 1966
- US 3,411,778 from 19 November 1968
- US 3,212,730 from 19 October 1965
- US 2002/0149996 from 17 October 2002
Rafael considered that the claimed invention lacked novelty contrary to Section 4, and lacked inventive step contrary to Section 5. Furthermore, the specification was allegedly not enabling contrary to Section 12a of the Law. Rafael further alleged that a major amendment during the Examination process required that the application be post-dated and thus the PCT application based on the Israel application anticipated the claims as issued.
The Opposer’s evidence was submitted on 23 February 2015 via an affidavit of Shlomo Zalman Shpund. The Applicant’s evidence was submitted on 21 April 2015 via an affidavit by Dr Yaakov Rubinsky on 20 January 2016.
On 4 February 2016, the Applicant requested permission to submit further evidence in response to the Opposer’s allegation of inequitable behavior. On 14 April 2016, then Commissioner Asa Kling allowed the additional submission which was submitted via an Affidavit by Liat Barzilai. On 10 August 2016, following a request by the Opposer, a further hearing was conducted during which Ms Barzilai was cross-examined by the Opposer.
Before relating to the main opposition, the Commissioner chose to relate to the allegation of inequitable behavior and to Applicant’s claims that the Opposer had abandoned these allegations in their summations, rendering them moot.
The Charge of Misleading the Examiner
The Application as first filed included hand-drawn figures that included the term decoy. In an Office Action of 28 October 2010 the Examiner raised various issues, including the need to amend the Figures. On 24 March 2011, the Applicant responded by amending the specification, the claims and the figures in accordance with the Examiner’s requests.
Examination of the new Figures indicated that the term “Decoy” was replaced with “Dummy Target”. The Applicant claimed that this was to clarify or to correct a scribal error. The Applicant did note a difference between the scope of the two terms but claimed that the cited art did not read on these.
The Examiner’s cited references all relate to decoys and not to attempts to destroy missiles outside the earth’s atmosphere. Furthermore, the term used in the independent claims was ‘dummy target’. A short non-limiting explanation that presents some of the differences follows. A Dummy target is something to practice on, whereas a decoy attracts the missile in the manner of the citation.
The Opposer considered that this amendment by the Applicant amounts to non-equitable behavior since the Applicant was apparently trying to have his cake and eat it in that on the one hand he was replacing decoy with dummy target as they are the synonymous, noting that the amendment is by way of clarification, whilst on the other hand, the Applicant has explained that the amendment is significant in that it enables overcoming the office action.
In response, the Applicant stated that the Applicant always intended to use the term dummy target. There are similarities between dummy targets and decoys. However, the amendment to the figures does not add new material and in terms of the knowledge taught, is insignificant. Nevertheless, the applicant added that although dummy targets and decoys are similar; there are nevertheless, significant differences between the terms in how they operate and are used.
The Applicant stressed that the figure amendment was made long before the Office Action of October 2019, and refers to a decision of April 2016. The point is that the International Application PCT/IL2009/00030 that was filed on 17 March 2009 already included the amendments, and this was six months before the first Office Action in Israel. The Applicant added that the Examiner related to Dummy Target in the first office action as being the correct term.
The Commissioner did not consider the Applicant’s behavior as indicative of inequitable behavior or as warranting post-dating. It is established that the Applicant has the right to choose his terminology –345/87 Hughes Aircraft vs. State of Israel p.d. 44(4) 45, 65 (1990):
Since the work of explaining the patent requires attempting to understand the inventor’s intent, there is some flexibility in explaining the meaning of terms and phrases, and the specification can serve as a lexicon for the invention –
This flexibility, described in Hughes, relies on Catnic vs. Hii & Smith 1982 R.P.C. 183, and is derived from the principle of substantive rather than formalistic interpretation with which all documents should be interpreted, including patent applications. The purposeful explanation should be done in view of the context of the invention, including its parts (such as specification and drawings) and the prosecution history, whilst being attentive to the intention of the Applicant to the extent that it can be determined. The Catnic rule was endorsed and widened in Kirin-Amgen v. Hoechst Marion Roussel  R.P.C. 9, and Lord Hoffman’s words in Kirin-Amgen are pertinent:
One of the reasons why it will be unusual for the notional skilled man to conclude, after construing the claim purposively in the context of the specification and drawings, that the patentee must nevertheless have meant something different from what he appears to have meant, is that there are necessary gaps in our knowledge of the background which led him to express himself in that particular way … It is however frequently impossible to know without access, not merely to the file but to the private thought of the patentee and his advisors as well, what the reason was for some apparently inexplicable limitations in the extent of the monopoly claimed. One possible explanation is that it does represent what the patentee really meant to say. But another is that he did mean it, for reasons of his own; such as wanting to avoid arguments with the examiners over enablement or prior art and have his patent granted as soon as possible. This feature of the practical life of a patent agent reduces the scope for a conclusion that the patentee could not have meant what the words appear to be saying. It has been suggested that in the absence of any explanation for a restriction in the extent of protection claimed, it should be presumed that there was some good reason between the patentee and the patent office. I do not think that it is sensible to have presumptions about what people must be taken to have meant but a conclusion that they have departed from conventional usage obviously needs some rational basis.“
As to the purposeful interpretation of patent documents, see Terrell on the Law of Patents, 17th ed., , para 9-35 – 9-42.
As described below, in this instance, the Applicant has supplied a reasonable explanation as to how the Examination of the patent application proceeded and its connection with the described invention. It was the inventor who drew the originally filed figures by hand, who used both the term dummy target and the term decoy. It is not inconceivable that the inventor considered the words as being equivalent and was not differentiating between them, and in some contexts other than the present one, they are indeed synonymous. The Applicant’s expert witness even considers the terms to be used interchangeably in the field.
Patent Attorney Luzzatto: I think that this point is clarified, but tell me where I find the construction material that is appropriate for simulating the Shiabh missile. Your testimony implies that persons of the art wanting to create a dummy target that simulates a Shiabh missile knows which material to take from the shelf. Have I understood correctly?
Witness Rubinsky: I repeat, the choice of materials for decoys has been published.
In light of the above and as Rubinsky testified, there is a need to differentiate between a decoy and a dummy target when interception is considered, and there is a difference between the terms.
Witness Rubinsky: This application that related to a decoy included analyses that were done 304 years before the application for a dummy target was filed. The dummy target is different from a decoy in many respects which I will relate to individually to remove any doubt. A decoy is a body that diverts the interceptor from the target. A dummy target is a body that replaces a real target and the interception takes place with the dummy target.
Commissioner: The dummy target has all the Inertial properties of the real target?
Witness Rubinsky: This depends on the purpose of the test. With a dummy target, one derives the properties to achieve the test. With a decoy one derives properties to confuse the particular weapon system that is being operated. For example, with an S300 or S400 system one does not need to simulate the thermal footprint, but with an Arrow one does need to simulate the thermal footprint. A decoy has to simulate the penetrating part of the system one is trying to prevent. The decoy has to simulate the warhead of the missile it accompanies, but this can be any of a range of footprints. What is described here is the physics. All bodies launched into space…
Commissioner: Are there parameters that you can disguise?
Witness Rubinsky: Probably the specification will vary, but essentially the decoy has to be similar to the carrier – the aggressive missile that it is launched from. The dummy target is different, its behavior depends on the laws of physics, on dynamics, this is true of the decoy as well, but what is different is the relative positions of the thing during the interception, Citation 4 relates to decoys and explains that the decoy must be twice the interception radius from the target. Why? Because if the decoy is to close to the base from where it is launched, then it does not perform its function because in such a scenario both the decoy and the target will be destroyed, with respect to dummy targets, the parameters are completely different, it’s like Latin letters, it must be sufficiently far that it does not damage the metal body or the dummy target because otherwise you get into safety issues. The parameters are different, and that one uses the same metals, propellant gas, etc. does not make the products identical; they are different and their purpose is different.
The differences between a decoy and a dummy target were clarified in the figures of the PCT application. Consequently, and in light of Rubinsky’s explanation, the Commissioner concludes that the difference between the two was explained to the Examiner early in the examination of the application.
Widening the Front of Attack
The Opposer considers that the Application should be post-dated to the PCT filing date, which is after the priority date. This contention was not in the Statement of Case. Nor was it presented in the Evidence stage. This issue was first raised when the Expert witness was cross-examined during the Opposition and was based on the amendment to the specifications which was allegedly more than correcting a scribal error.
In light of the above discussion, relating to this challenge is superfluous. The difference is not significant enough to require post-dating. However, even if that was not the case, the Commissioner would not order post-dating for the following reasons:
- The PCT application with the formal figures was presumably before the Examiner when he examined the application. It was certainly before the Opposer and they could and should have raised their challenge in their statement of case.
- The Commissioner does not accept the Opposer’s contention that only after Mr Rubinsky’s cross-examination, they could understand the significance of the amendment and raise their claims regarding it. This is a change in terminology that comes to sharpen the term used originally with respect to the application in question. Mr Rubinsky’s cross-examination did not change anything.
- We are dealing with a challenge that could and should have been raised in the framework of the statement of case, but wasn’t. It is a basic rule that Opposers cannot go beyond the boundary of the statement of case unless the court allows a request to correct the statement of case, or the other party consents to the issues being raised, either explicitly or implicitly – see Appeal 9123/05 Admov Projects (89) ltd. vs. City State from Alfo group ltd. 35 October 2007. In this instance, there is no justification to widen the front.
Abandoning Prior Art
The Applicant claimed that the Opposer did not relate to documents 2, 3, 4, 5, 6, 7 and 8 in their summations and so their objections based on these should be considered withdrawn.
In Appeal 447/92 Rott vs. Intercontinental Credit Corporation p.d. 49(2) 102, 107 (1995) the court ruled that if something is not mentioned in the summation, it is indeed considered abandoned and the court should not read it into the summation. See also 3642/15 Shlomo Edri Electricity Services ltd. vs. Shimon Edri, 9 June 2015. There is indeed no reference to citations 6-8 and these may be considered as abandoned. However, references 2-4 were briefly mentioned and so will be considered below.
Under Section 4 of the Law of Patents 1967, to prove that an application lacks novelty it is necessary to show that the claimed invention was demonstrated or published to the public prior to the application date in sufficient detail for men of the art to be able to implement. In 345/87 Hughes Aircraft vs. State of Israel p.d. 44(4) 102-105 (1990) it was ruled that a general, non implemented publication is insufficient to anticipate an invention.
The case-law provides four general rules for examining novelty:
- The invention must be taught in one document and not taught in a mosaic of disparate documents
- Was the publication enabling?
- If the enabling merely requires that which is well known to persons of the art, it is still anticipated.
- If implementing that described in the cited art would infringe the claims of the application it anticipates it. (Hughes page 103).
The main citation brought by the Opposer is P1: Development of Coherent Laser Radar at Lincoln Laboratory, 2 Nov 2000. This reviews the development of coherent laser radar between 1967 and 1994 for tracking bodies in space. The Opposer considers that the P1 publication lists all the components of the independent claims and the difference between P1 and the invention is the interception – whereas the present invention relates to interception, P1 relates to radar identification of dummy missiles and is thus equivalent.
P1 relates to identifying bodies in space and differentiating between missiles and decoys, but does not relate to exo-atmopheric interception. P1 page 388:
“FIGURE 7. The FireFly CO2 imaging-laser-radar experiment. This experiment successfully demonstrated that an imaging laser radar could observe the deployment and inflation of a replica reentry-vehicle decoy at a range of over 700 km. The FireFly tests, held on 29 March and 20 October 1990, utilized a Terrier-Malemute sounding rocket equipped with inflatable conical balloon…”
The purpose of the tests detailed in P1 is also given in P2 which states:
“The FireFly is the most heavily instrumented inflatable target L’Garde has designed, tested and flown. It was built for Lincoln Laboratory’s FIREFLY experiment. This was designed to test the ability of a 100 Joule LWIR laser beam for discriminating a decoy from a re-entry vehicle on the basis of decoy dynamics…”
[MF – The following is an extract from the protocol. In addition to the confusion surrounding decoys and dummy targets, it seems that the Hebrew term translated above as intercept can also mean shoot down. I’ve translated as shot down. Where the term intercept is used in the following, the Commissioner uses the English term.]
The witness for the Opposer, Mr Shpund explained:
A: This publication does not relate to shooting down.
Commissioner: So you state that the laser beam does not shoot down?
Witness, Mr Shpund: No, the laser beam is intended – and it is written – to simply locate, not to shoot down, it is not a death ray.
Commissioner: There is no interception by the laser beam.
Witness, Mr Shpund: No
Commissioner: This despite the fact that a laser can destroy?
Witness, Mr Shpund: It depends on the intensity. This publication relates to coherent laser radar.
Protocol 20 January 2016, page 29 line 19.
However, independent claims 1 and 15 do include elements that are intended to intercept (i.e. shoot down) ground to ground ex—atmospheric missiles. So the claimed invention extends beyond the scope of P1.
Then Opposer, who was aware of this problem, considered that the claimed invention nevertheless lacked novelty over P1 despite the fact that the cited reference did not include shooting down, since the core of the invention was the dummy target and not the shooting down aspect which could be one of many options.
Indeed, the case-law does enable raising lack of novelty objections not only against publications that include all the elements, but also against publications that describe the core of the invention –see for example, Appeal 4867/92 Senitovsky vs. Tams Ltd. 22 April 1996. However, in light of the expert opinions, it is doubtful that this extends to what the Opposer considers the core of the invention. The invention also has other advantages over the prior art for example, one can control the course of the dummy target and of the carrier missile even after the intercepting missile is fired, safety issues are related to and the carrier missile can be used for tracking, etc. These advantages appear in the independent claim and are beyond the scope of P1.
Tracking the course of the dummy target
An additional element that is missing from P1 and P2 but is included in the application is the element that the dummy target is able to steer itself to a new trajectory after being launched from the carrier missile. It can sense the interception and can ensure that the carrier missile is not part of the end game by not being within the field of the intercepting missile or being at some predetermined location.
As Mr Shpund testified, P1 does not allow programming the dummy target’s trajectory on its separation for the carrier missile to ensure that the carrier missile is not in the field of view of the intercepting missile:
Q. Now, the publication does not describe in the aspect of the release of the replica from its carrier any action to ensure that the carrier will be outside the field of view of this hypothetical laser beam?
A. It seems that the coherent laser radar has to seek a different digital signature in order to differentiate between the target and the replica. Which is the target and which the carrier.
Q. I understand that you are telling me and I am only clarifying that to ensure that in P1 the carrier will be outside the field of view of the laser beam, one has to use a laser that can differentiate between them, and if one takes the laser out of the equation, the release of the replica can’t ensure this?
From here it is clear that P1 does not teach that the dummy target follows a programmed path after release from the carrier as required by the present invention.
The Opposer alleges that P2 teaches a decoy that is able to make corrections and changes in its path, based on the following section:
“The FireFly was instrumented to detect and change its state of motion through an on-board microprocessor and L’Garde-developed light-weight coning control system”
However, as Rubinsky testifies, this movement relates to things other than a change of flight-path:
Commissioner: so what I am trying to understand is the term ‘change of motion’ or ‘change state of motion about center of gravity as opposed to trajectory.
A. Certainly not, the only way to change the flight path is by reactive forces, this isn’t talking about anything beyond the decoy, it needs to exude gases, to release a mass, because Newton’s laws work in space as well.
So it appears that P2 does not teach that the dummy target follows a programmed release after deployment from the carrier missile, as required by the present invention.
Dealing with near and far safety issues
One of the safety problems which occurs with exo-atmospheric interceptions is the creation of fragments of both the target and of the intercepting missile, which pose a hazard to occupied areas.
From Rubinsky’s words, in the present invention, this issue is dealt with by the dummy target being destroyed after interception and its parts are burned up on entering the atmosphere. The carrier missile and the intercepting missile are under control and can be guided or destroyed above non-inhabited areas.
From Shpund’s cross-examination, it transpires that P1 does not relate to these safety issues. The Opposer alleges that these safety issues are dealt with in all interception systems, whether laser systems or incoming missile systems. The Commissioner does not think that using an inflatable dummy target and controlling the missiles can be considered equivalent to the prior art.
In summary, neither P1 nor P2 anticipate the claims in a novelty destroying way as they do not include all the elements, so the invention is novel over the cited art.
In accordance with Section 5 of the Israel Patent Law, to obtain patent protection, the Applicant has to show an inventive step. The case-law states that the inventive step may be examined via a number of secondary tests, one of which is known as the spark of invention – see Appeal 7623/10 Hydro Na (non-registered partnership) vs. San Hi-tech Ltd 12 April 2014.
It will be noted that inventive step does not necessarily have to be large, and in Hughes Aircraft page 112 it is stated that a mere scintilla of invention is adequate. See also Appeal 2972/95 Joseph, Wolf and Partners Ltd vs. Beeri Printers, p.d. 53 (3) 472, 478 and 2625-05 Kleiman Meteor Ltd vs. Hadar Dror paragraph 63, 4 March 2012.
According to the Applicant, prior to the invention, the target was the carrier missile, and the dummy target was a decoy to confuse the incoming missile. In contradistinction, in the present invention, the dummy target is the target that the incoming missile is trained on.
In contrast to a decoy, when practicing interception, a dummy target is used. The purpose of the dummy target is not to be a decoy but to be the actual target. This is an important distinction since the purpose of the decoy is to prevent the intercepting missile from damaging the real target (either by damaging the decoy or by convincing the incoming missile that the decoy is the real target – either way, not damaging the real target. In contrasdistinction, when using a dummy target, the intercepting missile does collide with the dummy target for the test to be considered a success). In other words, in real time, when a real target is released, the intercepting missile will successfully intercept. (see page 3 of the response to the office action of 24 March 2011).
What transpires from the Opposer’s summary is that the Opposer alleges that the invention lacks inventive step due to the combination of P1 and P2, and in light of P3 and P4. As described above, the other publications cited in the statement of case were not relied upon in the summary and may be considered as withdrawn and the Commissioner thus does not relate to them.
The Commissioner does not accept the Opposer’s allegation that the combination of P1 and P2 make the invention self-evident to persons of the art. Firstly these publications do not relate to interception and certainly not to ex-atmospheric interception. From this, it is doubtful that persons of the art that were interested in overcoming the problems of ex—atmospheric interception would have turned to these publications. In addition, were a person of the art to have turned to these documents, in light of the above discussion on novelty, it is clear that key elements are missing.
Similarly, P3 does not deal with interception, but with the sensor of the intercepting missile, to differentiate between the real target (missile) and the decoy, called a ‘mock warhead’ in this publication. As can be seen, this publication only deals with differentiating between real targets and dummy targets and there is no reference to additional elements such as choosing the dummy target specifically; the ability to direct the dummy target and prevent safety hazards. The mere fact that P3 also relates to an inflatable body does not indicate that the publication relates to inventions that are not related. The combination of P1, P2 and P3, to the extent that is claimed, also does not teach all the elements of the invention.
As to P4, this publication relates to confusing the detection of a ballistic missile by a laser and to confusing the interception by the target missile releasing a decoy It does not describe an attempted interception or using an interception method, and does not even hint at using a dummy target in an interception test. There is no teaching of rerouting the target dummy and using an inflatable dummy to address near and far safety issues. Consequently, this publication does not render the invention obvious and nor does the combination of P1, P2 and P4, to the extent that they can be combined.
In conclusion, the present invention is inventive over P2, P2, P3 and P4.
Sufficiency of the Disclosure
In the statement of case, the Opposer claims that the specification is deficient and persons of the art cannot implement. The inflatable dummy target is not detailed, nor is how it is loaded into the carrier missile or detached from the carrier missile in the exo-atmosphere. In their summary, the Opposers widened this claim and noted additional lacuna such as how the flight path of the dummy missile is determined and how the dummy target can be brought to a stop to set a flight path mimicking that of a ballistic missile.
The commissioner accepts applicants’ contention that this is an illegitimate widening of the opposition. Regulation 59a requires the Opposer to list his factual and legal arguments in the Statement of Case. See 47387-01-11 Bromium Compounds vs. Albermarle Corporation USA, 8 August 2011. The allegation of inadequate description is a legal and factual allegation that requires detailing in the Statement of Case. By not detailing the allegation, the Applicant cannot relate to it, so it cannot be referred to in the Summation.
Furthermore, with regard to this, it seems that this allegation is incompatible with other allegations raised. When claiming lack of novelty and inventive step, the Opposer considers the lacuna of the prior art irrelevant since use of inflatable targets is something known at the time of application. So it is difficult to accept this claim with regard to this issue.
The existence of adequate description is tested against the general professional knowledge in the field at the time of the application. The inventor is NOT required to detail the prior art. It is sufficient if the application is clear to persons of the art in the field (see Hughes page 119).
In this instance, the Opposer’s witness noted that using an inflatable dummy target was known (see Shpund’s testimony).Similarly Shpund added under cross-examination, that ex-atmospheric dummy targets were known and persons of the art knew how to launch these.
The Opposition is thrown out. Parties may submit requests for costs based on Commissioner Circular MN 80.
The original application uses Dummy target in the claims and the word Decoy in the figures. On balance, it makes sense to allow the figures that were clearly rough drawings, to be amended to conform to the terminology of the specification. This is particularly the case as the description describes what can correctly be considered a dummy target, but not a decoy.
That said, I disagree with the Commissioner’s decision that even if the Opposer was substantively correct, they’d missed the boat by only raising this issue after cross-examination. There is a principle that during oppositions, the public interest should be considered. Although ballistic missile defense systems are not something that members of the public may be expected to develop in their garden sheds, there is a public interest not to allow patents to issue if they are indeed substantively subject to post-dating. The Opposer who is tardy can have costs awarded against him, but issues raised should be considered on their merits.
However, although I think the Examiner was correct to allow the change, the dummy target is designed to simulate a missile, and so is a decoy. The dummy target is, if you like, a decoy of the launch missile. Both are designed to make the incoming defensive missile believe that they are offensive missiles.
I was less than impressed with this ruling, both stylistically and substantively and note that the out-going commissioner was trying to clear his desk before leaving and I think it shows.