Ex parte CONKLIN et al.

Board of Patent Appeals and Interferences

Sep 26, 2001

08665755 (B.P.A.I. Sep. 26, 2001)

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and is not binding precedent of the Board.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. 17

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KENNETH F. CONKLIN, DAVID B. GIGUERE and JAMES C. CHEN
_____________
Appeal No. 1999-1110
Application No. 08/665,755
______________
ON BRIEF
_______________
Before KRASS, JERRY SMITH and RUGGIERO, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-20, all of the claims
pending in the application.
The invention is directed to an integrated point-to-point microwave radio frequency
unit/antenna best illustrated by reference to representative independent claim 1,
reproduced as follows:
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1. An integrated point-to-point microwave radio frequency unit/antenna,
comprising:
a housing having an exterior wall;
a microwave radio frequency transceiver electronics package within
the housing, the microwave radio frequency transceiver electronics package
comprising
a baseband signal processing unit having an input/output, and
being operable to process information selected from the group consisting of
voice, video, and data link information,
a microwave transceiver having a low-frequency side with a
baseband signal connection to the baseband signal processing unit and a
high frequency side including an antenna connection;
a flat antenna integral with the exterior wall of the housing; and
a microwave radio frequency feed communicating between the flat
antenna and the antenna connection of the microwave transceiver
electronics package.
The examiner relies on the following references:
Braun et al. [Braun] 5,160,936 Nov. 03, 1992
Caille et al. [Caille] 5,206,655 Apr. 27, 1993
Claims 1-12 stand rejected under 35 U.S.C. § 102(b) as anticipated by either one
of Braun or Caille. In addition, claims 1-20 stand rejected under 35 U.S.C. § 103 as
unpatentable over either one of Braun or Caille.
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Reference is made to the briefs and answer for the respective positions of
appellant and the examiner.
OPINION
We REVERSE.
In order to anticipate under 35 U.S.C. § 102(b), a reference must disclose, either
directly, or by way of inherency, each and every claimed element. One may not speculate
as to what a reference may or may not teach in applying a rejection under this statutory
section.
The examiner applies Braun and Caille, alternatively, against the subject matter of
instant claims 1-12. In applying these references, at page 2 of the final rejection, the
examiner cites Braun as disclosing an integrated transceiver antenna, with transverse stub
antennas 10 mounted as a flat array upon a wall 14 including a housing, transceiver,
electronics package 42, 44, 46 with high and low transceivers having a baseband signal
connection, controller, power supply and RF coupler, etc. coaxial feeder 28 and support
fixing means 62. It is the examiner’s position that Braun’s transceiver “is deemed to
include the circuitry as now recited.” [final rejection, page 2.]
While it is not entirely clear to us how the specific elements of Braun, identified by
the examiner, correspond to the claimed elements, it is clear to us that “deeming” is
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not a recognized substitute for providing evidence. The examiner may not “deem” that any
transceiver electronics package of Braun includes the specific circuitry recited. The
examiner should be aware that “deeming” does not discharge him from the burden of
providing the requisite factual basis and establishing the requisite motivation to support a
conclusion of obviousness. The examiner’s reference to unidentified phantom prior art
falls far short of the mark. Ex parte Stern, 13 USPQ2d 1379, 1381. The examiner must
show where such circuitry is taught by Braun or why such circuitry would be inherent in the
Braun disclosure.
The statement of rejection does not address the claimed limitation of processing
information “selected from the group consisting of voice, video, and data link information.”
Because the instant invention is interested in communication by point-to-point microwave
radio frequency, voice, video and/or data link information is processed. The airborne
radar system of Braun clearly is not interested in voice or video information and it is
arguable as to whether the radar information provided in Braun may be considered “data
link information.” The examiner’s contention that a transceiver includes a detector and
modulator that extracts voice or data frequencies or
impresses upon a carrier such voice or data frequencies and that these are “essential and
inherent components of a transceiver” [answer-page 4] is unsupported. We find no
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such “voice or data frequencies” in the radar system of Braun and it would not appear
to be inherent at all to employ voice signals in an airborne radar system such as that taught
by Braun.
With regard to Caille, the examiner is even less straightforward in identifying
corresponding elements between Caille and the subject matter of the claims, stating only,
at page 2 of the final rejection, that Caille shows “similar transceiver structure, including the
newly added circuitry, identifying Figures 3-9.” It is unclear how Caille is being applied by
the examiner against the instant claims. Similar to the reasoning with regard to Braun, the
examiner identifies the satellite 20 of Caille and declares that the “specific claimed
electronics package is inherent and implied in the satellite housing 20" [answer-page 5].
We disagree. Even in response to a challenge by appellant, the examiner has been
unable to identify any evidence tending to show that the satellite of Caille “inherently”
includes the baseband signal processing unit and microwave transceiver set forth in the
instant claims. Speculation on the part of the examiner simply does not cut it with respect
to making a showing of anticipation under 35 U.S.C. § 102(b).
Part of the examiner’s problem may be in declaring, at page 6 of the answer, that
the instant “claims are nothing more than a combination of antenna and communication
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electronics in a single package.” Clearly, the instant claims recite more, specifically
claiming elements within a microwave radio frequency transceiver electronics package.
The examiner has not persuasively shown these elements within the teachings of the
applied references.
Accordingly, the rejection of claims 1-12 under 35 U.S.C. § 102(b) as anticipated
by either one of Braun or Caille is reversed.
Turning to the rejection of claims 1-20 under 35 U.S.C. § 103 as alternatively
unpatentable over either Braun or Caille, we will also reverse this rejection since much of
the examiner’s reasoning is similar to that applied in the 35 U.S.C. § 102(b) rejection.
With regard to Braun, the examiner again says that the transceiver is “deemed” to
include the circuitry claimed because the circuitry “is well known and common knowledge
in transceivers” [final rejection-page 3]. The examiner says the transceiver is “deemed” to
have a baseband signal processor with input/output and a microwave transceiver with low
and high side connections, that such circuitry “is taken for granted and found to be obvious”
[final rejection-page 3]. Regarding claims 13-20, the
examiner contends that the specific size of the array and band of operation “is an obvious
design choice.”
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Upon challenge by appellant to provide evidence of these things that the examiner
claims are ”well known and common knowledge,” that are “deemed” to include certain
circuitry and are “taken for granted” or “obvious design choices,” the
examiner has responded by citing no evidence of these allegations even though the
burden was shifted to the examiner, once challenged by appellant, to establish that which
is considered to be well known and common knowledge, etc. When an examiner judicially
notices a feature as being old in the art and such is challenged, there is reversible error
when the examiner fails to cite the well known thing on which he relies. Ex parte Nouel, 158
USPQ 237 ( Bd. of App. 1967).
Deficiencies in the factual basis cannot be supplied by resorting to speculation or
unsupported generalities. In re Freed, 425 F.2d 785, 787, 165 USPQ 570, 571 (CCPA
1970); In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
Accordingly, the examiner has failed to present a prima facie case of obviousness
with regard to the subject matter of instant claims 1-20.
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The examiner’s decision rejecting claims 1-12 under 35 U.S.C. § 102(b) and claims
1-20 under 35 U.S.C. § 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
eak/vsh
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LEONARD A. ALKOV , ESQ
RAYTHEON COMPANY
P.O. BOX 902 (E1/E150)
EL SEGUNDO , CA 90245-0902