Ex Parte Cashman

Board of Patent Appeals and Interferences

Apr 8, 2002

09163412 (B.P.A.I. Apr. 8, 2002)

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written for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RUSSELL P. CASHMAN
____________
Appeal No. 2001-0905
Application No. 09/163,412
____________
ON BRIEF
____________
Before JERRY SMITH, FLEMING, and GROSS, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 16 through 25, which are all of the claims
pending in this application.
Appellant's invention relates to a method for communicating
between a wireless subscriber station and both an analog cellular
voice communication system and a Cellular Digital Packet Data
(CDPD) communication system. Claim 16 is illustrative of the
claimed invention, and it reads as follows:
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Application No. 09/163,412
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16. A method for communicating between a wireless subscriber
station and both an analog cellular voice communication system
and a Cellular Digital Packet Data (CDPD) communication system,
said subscriber station being arranged to monitor both incoming
analog cellular voice communications and incoming CDPD
communications, said method of communication comprising the steps
of:
(A) registering said subscriber station with an analog
cellular voice communication system;
(B) registering said subscriber station with said CDPD
system, wherein said registration with said CDPD system,
comprises:
(1) synchronizing the timing of a first time interval
between said subscriber station and said CDPD system, said first
time interval defining when said subscriber station is expected
to be on a CDPD channel;
(2) switching said subscriber station from said CDPD
channel to an analog cellular voice control channel to monitor
incoming analog cellular voice communications directed to said
subscriber station; and
(3) switching said subscriber station back to said CDPD
channel before the end of said first time interval.
No prior art reference of record has been relied upon by the
examiner in rejecting the appealed claims. The examiner relies
only upon the following application:
Application No. 09/107,025 to Cashman filed June 29, 1998
Claims 16 through 25 stand provisionally rejected under the
judicially created doctrine of obviousness-type double patenting
Appeal No. 2001-0905
Application No. 09/163,412
3
as being unpatentable over claims 16 through 23 and 25 through 34
of copending Application No. 09/107,025.
The examiner states on page 2 of the Answer that the
rejection of claims 16 through 25 under the judicially created
doctrine of double patenting over claims 1 through 16 of U.S.
Patent No. 5,819,184 and the provisional rejection of claims 16
through 25 under the judicially created doctrine of double
patenting over claims of copending Application Nos. 08/487,043,
08/766,223, 09/151,580, 09/163,410, or 09/107,025 have been
withdrawn. Accordingly, these rejections are not before us.
Reference is made to the Examiner's Answer (Paper No. 14,
mailed September 7, 2000) for the examiner's complete reasoning
in support of the rejection, and to appellant's Brief (Paper No.
12, filed August 14, 2000) for appellant's arguments
thereagainst.
OPINION
As a preliminary matter, we note that appellant indicates on
page 4 of the Brief that "each of the independent claims stands
or falls independently of any other independent claim," and the
dependent claims stand or fall with the independent claims from
which they depend. However, appellant argues independent claims
Appeal No. 2001-0905
Application No. 09/163,412
4
16 and 17 together, referring to the same limitations for both
claims. 37 C.F.R. § 1.192(c)(7) states:
For each ground of rejection which appellant
contests and which applies to a group of two or
more claims, the Board shall select a single claim
from the group and shall decide the appeal as to
the ground of rejection on the basis of that claim
alone unless a statement is included that the
claims of the group do not stand or fall together
and, in the argument under paragraph (c)(8) of
this section, appellant explains why the claims of
the group are believed to be separately
patentable.
As appellant has failed to argue any claims separately, we
will treat all of the claims as a single group with claim 16
as representative.
We have carefully considered the claims, the applied
application, and the respective positions articulated by
appellant and the examiner. As a consequence of our review,
we will affirm the obviousness-type double patenting
rejection of claims 16 through 25.
Appellant states (Brief, page 9) that "[e]ven a cursory
analysis of the claims of this application vis-à-vis the
claims of the application utilized in this rejection will
show that the claims are patentably distinct." Appellant
Appeal No. 2001-0905
Application No. 09/163,412
5
supports this conclusion (Brief, page 10) by quoting step
(B) of claim 16, stating that independent claims 16 and 17
require such step and that Application No. 09/107,025 does
not contain these limitations. Appellant then quotes steps
(A) and (B) of independent claim 16 of Application No.
09/107,025 and asserts that these limitations are not found
in the claims under rejection. Appellant concludes (Brief,
pages 12 and 13) that there is two way distinctness between
the two applications.
Our careful comparison of claim 16 of the present
application and claim 16 of Application No. 09/107,025
reveals that the two claims are word-for-word identical
except for a portion of part (1) of step (B). Specifically,
the portion in question in the present application reads
"synchronizing a duration of a first time interval related
to a first parameter (T204)" whereas the corresponding
portion of Application No. 09/107,025 reads "synchronizing
the timing of a first time interval" (underlining added to
emphasize the actual language that differs). The words
"duration" and "timing" mean the same thing, and a mere
difference in linguistics, rather than substance, does not
Appeal No. 2001-0905
Application No. 09/163,412
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give rise to a different invention for purposes of double
patenting. See In re White, 405 F.2d 904, 906, 160 USPQ
417, 418 (CCPA 1969). As to the additional language of
"related to a first parameter (T204)" in Application No.
09/107,025, the phrase merely describes in slightly greater
detail the same time interval referenced in both claims. If
anything the present claim is broader by eliminating such
language and would read upon claim 16 of Application No.
09/107,025. However, the steps and the time intervals
referenced in both claims are the same, with or without the
extra descriptive language in claim 16 of Application No.
09/107,025. Accordingly, we find no patentable distinction
between the two claims, and certainly no two way distinct-
ness as asserted by appellant. Therefore, we will sustain
the obviousness-type double patenting rejection of claim 16,
and of claims 17 through 25 grouped therewith, over the
claims of Application
No. 09/107,025.
CONCLUSION
Appeal No. 2001-0905
Application No. 09/163,412
7
The decision of the examiner rejecting claims 16
through 25 under obviousness-type double patenting is
affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
apg/vsh
Appeal No. 2001-0905
Application No. 09/163,412
8
CIRRUS LOGIC, INC.
ATTN: LEGAL DEPARTMENT
4210 S. INDUSTRIAL DRIVE
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