Ex Parte Borland

Board of Patent Appeals and Interferences

May 12, 2004

08874005 (B.P.A.I. May. 12, 2004)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DAVID JAMES BORLAND
__________
Appeal No. 2002-2045
Application 08/874,005
__________
ON BRIEF
__________
Before KRASS, JERRY SMITH, and FLEMING, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 1-20, which constitute all the
claims in the application. An amendment after final rejection
was filed on July 11, 2001 but was denied entry by the examiner.
Appeal No. 2002-2045
Application No. 08/874,005
2
The disclosed invention pertains to a cordless
communication device, such as a telephone, which is operative in
both a communication mode and a message mode. One feature of the
invention is that a digitized cordless communication compression
scheme is used to code and decode signals in the communication
mode and to code signals received from a calling party in the
message mode.
Representative claim 1 is reproduced as follows:
1. A cordless communication device operative in a
communication mode and a message mode, the communication device
comprising:
a speaker;
a receiver provided to receive signals of a call received
from a calling party;
a memory arrangement for storing messages; and
a processor coupled to the memory arrangement, the processor
being configured to code and decode signals in accordance with a
digitized cordless communication compression scheme used for
cordless communication when in the communication mode, and, when
in the message mode, to code signals received from the calling
party using the digitized cordless communication compression
scheme and store the coded signals as a coded message in the
memory arrangement.
The examiner relies on the following references:
Horimoto 5,327,481 July 05, 1994
Heidari 5,790,957 Aug. 04, 1998
(filed Sep. 12, 1995)
Appeal No. 2002-2045
Application No. 08/874,005
1 Claim 13 is improperly included in this rejection since
it depends from claim 8, and claim 8 has not been rejected as
anticipated by Heidari or Horimoto.
3
The following rejections are on appeal before us:
1. Claims 1, 2, 5, 6 and 131 stand rejected under
35 U.S.C. § 102(e) as being anticipated by the disclosure of
Heidari.
2. Claims 1, 2, 5, 6 and 131 stand rejected under
35 U.S.C. § 102(b) as being anticipated by the disclosure of
Horimoto.
3. Claims 3, 4, 7, 9-12, 14 and 16-20 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the teachings
of Horimoto or Heidari.
4. Claims 8 and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the teachings of Horimoto in
view of Heidari.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
Appeal No. 2002-2045
Application No. 08/874,005
4
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon does not support any of the
rejections made by the examiner. Accordingly, we reverse.
We consider first the rejections made under 35 U.S.C.
§ 102 that the claimed invention is anticipated by the prior art.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W. L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to the anticipation rejection based on
Heidari, the examiner has indicated how these claims are deemed
Appeal No. 2002-2045
Application No. 08/874,005
5
to be fully met by the disclosure of Heidari [answer, pages 3-4].
Appellant argues that Heidari teaches the use of cellular-phone
compression protocols rather than the use of a digitized cordless
communications compression scheme as claimed. Specifically,
appellant argues that the CDMA/TDMA protocols used in cellular
phones are not cordless communication compression schemes as
claimed [brief, pages 9-10]. The examiner responds that the
Heidari processor can be used for other types of phones and the
compression technique is the same regardless of whether the phone
is cordless or cellular. The examiner notes Horimoto and asserts
that it would have been obvious to use the Heidari processor in
cordless communication [answer, page 7]. Appellant responds that
the examiner has improperly relied on teachings from Horimoto to
support the anticipation rejection based on Heidari. Appellant
also argues that there is no disclosure that cellular-phone
compression schemes can be employed in cordless communications
[reply brief].
We will not sustain the examiner’s rejection of claims 1,
2, 5, 6 (and 13) as anticipated by Heidari for essentially the
reasons argued by appellant in the briefs. The examiner has
failed to respond to appellant’s argument that the cellular-phone
compression schemes of Heidari are not a digitized cordless
Appeal No. 2002-2045
Application No. 08/874,005
6
communication compression scheme as claimed. The examiner only
notes that the processor of Heidari could also perform such a
compression scheme, but there is no disclosure within Heidari to
use a digitized cordless communication compression scheme as
claimed. Appellant is also correct that the examiner has
improperly referred to the teachings of Horimoto and has relied
on an obviousness rationale in supporting this rejection. These
considerations, of course, are improper in supporting an
anticipation rejection under 35 U.S.C. § 102.
With respect to the anticipation rejection based on
Horimoto, the examiner has indicated how these claims are deemed
to be fully met by the disclosure of Horimoto [answer, pages 4-
5]. Appellant argues that Horimoto teaches compressing and
expanding analog signals rather than the digitized cordless
communications compression scheme as claimed [brief, pages 8-9].
The examiner has not responded to this argument.
We will not sustain the examiner’s rejection of claims 1,
2, 5, 6 (and 13) as anticipated by Horimoto for essentially the
reasons argued by appellant in the main brief. The examiner has
failed to rebut appellant’s argument that the compression scheme
of Horimoto is an analog compression scheme and, therefore,
cannot anticipate the claimed invention. Since appellant’s
Appeal No. 2002-2045
Application No. 08/874,005
7
argument appears to be correct on its face, the examiner’s
findings of anticipation appear to be erroneous. In view of
these erroneous findings, the examiner has failed to establish a
prima facie case of anticipation.
We now consider the examiner’s rejections under 35 U.S.C.
§ 103. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17 (1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior art
or to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227
USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
Appeal No. 2002-2045
Application No. 08/874,005
8
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
[see 37 CFR § 1.192(a)].
With respect to the rejection of claims 3, 4, 7, 9-12, 14
and 16-20 based on the teachings of Heidari or Horimoto, the
examiner finds that Heidari and Horimoto teach the claimed
invention except for the use of the ADPCM compression scheme.
The examiner notes that ADPCM is a well known compression
technique and that its use in Heidari or Horimoto would have been
Appeal No. 2002-2045
Application No. 08/874,005
9
obvious to the artisan [answer, pages 5-6]. Appellant argues
that the examiner has cited no prior art to support the
obviousness of the ADPCM compression scheme. Appellant also
argues that the examiner has provided no motivation for modifying
Heidari or Horimoto [brief, pages 10-11]. The examiner responds
that prior art which taught ADPCM was cited in previous Office
actions [answer, pages 7-8].
We will not sustain the examiner’s rejection of claims 3,
4, 7, 9-12, 14 and 16-20 based on either of the applied
references. Not only are appellant’s arguments with respect to
these dependent claims correct, but the examiner’s rejection of
these claims under 35 U.S.C. § 103 fails to overcome the
deficiencies of the references discussed above in the
consideration of the rejections under 35 U.S.C. § 102. Thus, the
examiner’s obviousness rejections are based on the same erroneous
findings that we considered above.
With respect to the rejection of claims 8 and 15 based on
Heidari and Horimoto, the examiner proposes to use the processor
from Heidari’s handset in Horimoto’s telephone. Appellant argues
that the cellular compression techniques, such as taught by
Heidari, may not be compatible with a cordless phone as disclosed
by Horimoto. Appellant also argues that there is no motivation
Appeal No. 2002-2045
Application No. 08/874,005
10
to make the modification proposed by the examiner [brief, pages
11-12]. The examiner responds that Horimoto suggests that the
techniques disclosed therein can be applied to other
communication devices [answer, pages 7-8].
We will not sustain the examiner’s rejection of claims 8
and 15 for essentially the reasons argued by appellant in the
briefs. The examiner’s position that the same processor used by
Heidari could be used in Horimoto fails to address the
obviousness of using the claimed digitized wireless transmission
compression scheme. As discussed above, the examiner has failed
to rebut appellant’s argument that neither reference teaches use
of a digitized wireless transmission compression scheme.
Appeal No. 2002-2045
Application No. 08/874,005
11
In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1-20 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
JS:svt
Appeal No. 2002-2045
Application No. 08/874,005
12
J. Mike Amerson
WILLIAMS MORGAN & AMERSON P.C.
7676 Hillmont, Suite 250
Houston, TX 77040