Ex parte Christie

Board of Patent Appeals and Interferences

Jan 10, 2001

08337095 (B.P.A.I. Jan. 10, 2001)

Application for patent filed November 10, 1994.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte SCOTT CHRISTIE
__________________
Appeal No. 1998-1257
Application 08/337,0951
________________
ON BRIEF
________________
Before SCHAFER, LEE and MEDLEY, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s rejection of appellant’s claims 7-26. No claim
has been allowed. Claims 1-6 have been canceled. The real
party in interest is Audiovox Corporation.
References relied on by the Examiner
Tomoda et al. (Tomoda) 4,763,121 Aug. 9,
1988
Kurozu et al. (Kurozu) 5,157,389 Oct. 20,
Appeal No. 1998-1257
Application 08/337,095
2
1992
Lindmayer et al. (Lindmayer) 5,355,525 Oct.
11, 1994
Appeal No. 1998-1257
Application 08/337,095
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The Rejection on Appeal
Claims 7-20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lindmayer.
Claim 21 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Lindmayer and Kurozu.
Claims 22-26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Lindmayer, Kurozu, and Tomoda.
The Invention
The claimed invention is directed to an apparatus and
method for remotely controlling a vehicle security system.
Claims 7, 14, 18, 21 and 25 are independent claims, of which
claims 7, 18 and 21 are reproduced below:
7. An apparatus for remotely controlling a vehicle
security system, the apparatus comprising:
a transmitter for transmitting a first signal which
changes a security status of the vehicle security system and a
second signal which does not change the security status of the
vehicle security system, said transmitter transmitting said
first signal throughout a first range and transmitting said
second signal throughout a second range, said first range
being smaller than said second range.
18. A method for remotely controlling a security system,
the method comprising the steps of:
transmitting a first signal which changes a security
status of the security system throughout a first range; and
transmitting a second signal that does not change the
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security status of the security system throughout a second
range which is greater than the first range.
21. A control unit for controlling a security system
having an audible actuation indicator, the control unit
comprising:
a transmitter for transmitting signals to the security
system for controlling a disarming/arming operation of the
security system and for actuating the audible actuation
indicator to generate a sound; and
an actuator for actuating the transmitter to transmit the
signals to the security system, the actuator being adapted to
selectively prevent the audible actuation indicator from
sounding.
Opinion
We reverse the rejection of claims 7-20 and affirm the
rejection of claims 21-26.
A. The rejection of claims 7-20
A reversal of any rejection on appeal should not be
construed as an affirmative indication that the appellant's
claims are patentable over prior art. We address only the
sufficiency of the findings and rationale as set forth by the
examiner and on which the examiner’s rejection is based.
Claims 7-20 require the transmission of a first signal
which changes the security status of the vehicle security
system and a second signal which does not change the status of
the vehicle security system. Also, the claims require that
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Application 08/337,095
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the range of transmission of the first signal is smaller than
that of the
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Application 08/337,095
6
second signal. According to the appellant’s specification,
this differentiation in range of transmission combats and
deters unauthorized code-grabbing or interception of the
security code.
The examiner relied on Lindmayer for teaching the remote
transmission of two signals to a vehicle, one of which changes
the status of the vehicle security system. The problem,
however, is that according to Lindmayer, the range of
transmission of the signal changing the vehicle’s locking and
anti-theft security status is greater than that of the second
signal which does not affect the status of the vehicle’s
locking and anti-theft functions. In column 3, lines 39-44,
Lindmayer states:
Thereby, the receivable output power of the hand-
held transmitter and its range when controlling the
convenience function (KB) are clearly reduced
compared to its relatively large range for the
control of the locking (ZV) and the anti-theft (EDW)
functions.
The appellant is correct that Lindmayer teaches the exact
opposite of the appellant’s claimed feature concerning the
range of transmission of the control signals.
The examiner improperly ignored a critical difference
between the appellant’s claimed invention and the disclosure
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Application 08/337,095
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of Lindmayer. According to the examiner, it is sufficient
that Lindmayer discloses the concept of using two remotely
transmitted control signals one of which affects the security
status of the vehicle and the other one does not. As for
which signal should have a greater range of transmission, the
examiner simply concludes that “that would be a matter of
design choice by the artisan” (Answer at 7). To characterize
a feature as a design choice is not meaningful in a proper
analysis of obviousness under 35 U.S.C. § 103. Essentially,
every feature is a design choice. Some choices and selections
take the invention as a whole out of the scope of obviousness,
and some do not.
The mere fact that the prior art may be modified in the
manner suggested by the examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). Obviousness may not be established using
hindsight or in view of the teachings or suggestions of the
inventor. Para-Ordnance Mfg. Inc. v. SGS Importers Int’l
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Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir.
1995), cert. denied, 117 S.Ct. 80 (1996).
The examiner has articulated no motivation, based on the
teachings of the prior art, for making the range of
transmission of the control signal affecting the status of the
vehicle’s security system smaller than that of the other
control signal. That omission is especially troublesome here
when Lindmayer discloses just the opposite. The examiner
also states (Answer at 7): “using the signals for a different
function is not novel.” That statement is plainly erroneous.
The combination recited by the appellant’s claims is indeed
novel, on the record developed by the examiner. Lindmayer’s
remotely transmitted signal affecting the status of the
vehicle locking or anti-theft functions does not have a
smaller or shorter range than that of the other signal.
For the foregoing reasons, the rejection of appellant’s
claims 7-20 cannot be sustained.
B. The rejection of claims 21-26
The appellant’s arguments are not commensurate in scope
with independent claims 21 and 25, neither of which specify
any relationship between the range of transmission of the
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signal affecting the status of the vehicle’s security system
and the other remotely transmitted signal. Moreover, neither
claim 21 nor 25 recites a second remotely transmitted signal
which does not affect the status of the vehicle’s security
system. The same is true with respect to claims 22-24 which
depend from claim 21 and claim 26 which depends from claim 25.
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With respect to the features recited in claims 21-26
regarding the actuation or prevention of actuation of an
audible indicator, the appellant’s appeal brief does not
advance any pertinent argument to demonstrate that the
rejections should be overturned. Accordingly, the appellant
has shown no basis for a reversal of the rejection of claims
21-26. It is the appellant’s burden to demonstrate error in
the examiner’s rejection. That burden has not been met in the
case of claims 21-26. We sustain the rejection of claims 21-
26.
Conclusion
The rejection of claims 7-20 under 35 U.S.C. § 103 as
being unpatentable over Lindmayer is reversed.
The rejection of claim 21 under 35 U.S.C. § 103 as being
unpatentable over Lindmayer and Kurozu is affirmed.
The rejection of claims 22-26 under 35 U.S.C. § 103 as
being unpatentable over Lindmayer, Kurozu, and Tomoda is
affirmed.
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Application 08/337,095
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)
AFFIRMED-IN-PART
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
SALLY C. MEDLEY )
Administrative Patent Judge )
Appeal No. 1998-1257
Application 08/337,095
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