Ex Parte Ballai

Board of Patent Appeals and Interferences

Dec 27, 2011

10235073 (B.P.A.I. Dec. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIP N. BALLAI
____________

Appeal 2009-010134
Application 10/235,073
Technology Center 2600
____________

Before MAHSHID D. SAADAT, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-010134
Application 10/235,073

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-24. Appeal Brief 2. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We reverse.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A system, comprising:
an arrangement including an internal wireless communication antenna; and
a wireless communication device couplable to one of an external wireless
communication antenna and the arrangement,
wherein, when the arrangement is attached to the device, the device utilizes
one of at least one first wireless channel and at least one second wireless
channel, and
wherein, when the arrangement is not attached to the device, the device
utilizes the at least second channel and prevents transmission using the at
least first channel.

Rejections on Appeal
1. Claims 1-3, 5, 6, 8-11, 13, 14, 16-19, 21, 22 and 24 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Nokkonen (U.S. Patent
Application Publication Number 2001/0041541 A1; Nov. 15, 2001) in view
of Tom (U.S. Patent Application Publication Number 2004/0121801 A1;
June 24, 2004). Answer 3-6.
2. Claims 4, 12, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nokkonen, Tom, and Bouet (U.S. Patent
Appeal 2009-010134
Application 10/235,073

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Application Publication Number 2002/0080866 A1; June 27, 2002).
Answer 6-7.
3. Claims 7, 15, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nokkonen, Tom, and Layson (U.S. Patent Number
5,731,757; Mar. 24, 1998). Answer 7.

Issue
Does Tom disclose an arrangement that when the arrangement is not
attached to the wireless device, the device utilizes a second channel and
prevents transmission using a first channel?

ANALYSIS
The claimed invention is a system and method within a wireless
communication device directed to an arrangement wherein when the
arrangement is attached to the device, the device utilizes one of the first
wireless channel and one of the second wireless channel. Appeal Brief 3.
When the arrangement is not attached to the device, the device utilizes a
second channel while preventing transmission by the device via a first
channel. Id.
The Examiner finds Nokkonen does not disclose when the
arrangement is not attached to the device; the device utilizes the at least
second channel and prevents transmission using the at least first channel.
Answer 4. However, the Examiner relies upon Tom to address Nokkonen’s
deficiency, “Tom discloses an arrangement including an internal wireless
communication antenna; and wherein, when the arrangement is not attached
Appeal 2009-010134
Application 10/235,073

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to the device, the device utilizes the at least second channel and prevents
transmission using the at least first channel ([0045], [0061] and [0067]).” Id.
Appellant argues that:
Nowhere does Tom disclose that the telephone has the
capability of operating in a wireless system without being
connected to a cartridge. Thus, the telephone does not have the
capability itself to operate in a particular wireless network, but
requires the components within the cartridges to enable the
apparatus to operate in a particular wireless system. It is
obvious to one of skill in the art that the device referred to by
claim 1 contains all of the components necessary for
transmitting over multiple channels and when the device is
connected to an arrangement it prevents itself from transmitting
over at least a certain channel. Thus, Tom does not teach or
suggest, “when the arrangement is not attached to the device,
the device utilizes the at least second channel and prevents
transmission using the at least first channel.”
Appeal Brief 6.
In response, the Examiner maintains that Tom discloses in paragraph
[0067] and Figure 8 that a wireless communication device operates in a
cellular telephone system if a cartridge is inserted into the device. Answer
9. Further, the Examiner contends, Appellant admitted that Tom’s wireless
communication handset included a first modular cartridge that operated in a
first frequency range and the wireless communication handset that operated
in a second frequency range if the second modular cartridge connects to the
first modular cartridge. Id. “In other words, the first modular cartridge is
also an adapter or a conversion unit for connecting or converting between
the wireless communication handset and the second modular cartridge.” Id.
The Examiner concludes that Tom’s wireless communication handset is able
to operate one of the frequency ranges at a time. Answer 9-10.
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“Appellant maintains that nowhere within the Tom disclosure is it
described that the telephone has the capability of operating in a wireless
system without being connected to a cartridge.” Reply Brief 3. Appellant
argues that Tom’s paragraph [0067] explicitly states that the PDA unit
requires the use of a removable wireless communication cartridge in order to
be configured as a mobile telecommunication device. Reply Brief 4.
Appellant concludes that if Tom’s device without a connected cartridge is
unable to communicate, then there is no communicative ability for it to
prevent while utilizing one channel. Reply Brief 5. Therefore, “[i]f the Tom
device has no communicative ability for it to prevent when it is disconnected
from a cartridge, then it does not meet the claim. It makes no sense to
prevent what cannot be performed.” Id.
We find Appellant’s arguments to be persuasive. The Examiner cites
to Tom’s entire paragraph [0067] without any specificity to support his
position that Tom discloses an arrangement that when the arrangement is not
attached to the wireless device, the device utilizes a second channel and
prevents transmission using a first channel. We are left to speculate where
the support for the Examiner’s position can be found because, after
reviewing the paragraph, it is not readily apparent to us how Tom discloses
the claimed arrangement.
Therefore, we will not sustain the Examiner obviousness rejection of
independent claims 1, 9, and 17, each of which recites that transmission
from the first channel is prevented when the arrangement is not attached to
the device. We likewise do not sustain the obviousness rejection of
dependent claims 2, 3, 5, 6, 8, 10, 11, 13, 14, 16, 18, 19, 21, 22 and 24,
which depend from independent claims 1, 19 or 17.
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With respect to the rejections that are further based upon Bouet and
Layson, neither of these additional references cited by the Examiner
addresses the deficiency of Nokkonen and Tom. We therefore do not sustain
the rejections of dependent claims 4, 7, 12, 15, 20, and 23.

DECISION
The Examiner erred in rejecting claims 1-24 under the various 35
U.S.C. § 103(a) rejections.

REVERSED

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