Ex Parte DENT

Board of Patent Appeals and Interferences

Sep 9, 2002

08730670 (B.P.A.I. Sep. 9, 2002)

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not binding precedent of the Board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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte PAUL W. DENT
______________
Appeal No. 2000-2261
Application 08/730,670
_______________
ON BRIEF
_______________
Before THOMAS, FLEMING and SAADAT, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner's
final rejection of claims 1, 2, 6, 7, 26, 27 and 30. The
examiner has indicated the allowability of claims 13-25, and has
objected to claims 3-5, 8-12, 28, 29 and 31 indicating their
allowability if rewritten in independent form including all the
limitations of the base claim and any intervening claims.
Appeal No. 2000-2261
Application 08/730,670
2
Representative claim 1 is reproduced below:
1. A radio transmitter/receiver for selectively transmitted
digitally modulated signals in a digital mode or analog modulated
signals in an analog mod comprising:
digital signal processing means having an input for
receiving an information signal, a first output for supplying an
In-phase modulating signal I and a second output for supplying a
Quadrature modulating signal Q;
quadrature modulation means coupled to the first and second
outputs for digitally modulating a carrier frequency in the
digital mode to produce a digitally modulated signal; and
analog modulation means coupled to the first and second
output for generating an analog modulation of a carrier frequency
in the analog mode to produce an analog modulated signal, wherein
said In-phase modulating signal I and said Quadrature modulating
signal Q bypass said quadrature modulation means in order to
produce said analog modulated signal.
The following references are relied on by the examiner:
Nonami 5,251,232 Oct. 5, 1993
Denheyer et al.
(Denheyer) 5,642,378 June 24, 1997
(filing date Nov. 17, 1994)
As a result of more recent prosecution between the parties
in this application after the final rejection, the following
issues remain for our consideration. Claims 1, 7, 26, 27 and 30
stand rejected under 35 U.S.C. § 102(e) as being anticipated by
Denheyer. Lastly, claims 1, 2, 6 and 7 stand rejected under
35 U.S.C. § 103. As evidence of obviousness, the examiner relies
upon Nonami in view of Denheyer.
Appeal No. 2000-2261
Application 08/730,670
3
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answer for the
respective details thereof.
OPINION
We reverse the rejection of claims 1, 7, 26, 27 and 30 under
35 U.S.C. § 102 as being anticipated by Denheyer. We are in
general agreement with the positions set forth by appellant in
the brief and reply brief as to this issue. This reversal
applies to our consideration of both the Figure 1 and Figure 3
embodiments in Denheyer.
Moreover specifically, although prior art Figure 1 of
Denheyer shows a digital signal processor 10 and IQ or digital
modulator 12 along with an analog or FM modulator 26, all of
which are required by independent claim 1 on appeal, the claimed
requirement of the analog modulation means receiving the I and Q
outputs from the digital signal processor is not shown in Figure
1 and is also not taught with respect to the discussion of this
figure at column 1 of Denheyer. Figure 1 only shows that the DSP
10 sends the respective IQ signals to the IQ modulator 12 and not
Appeal No. 2000-2261
Application 08/730,670
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to the analog FM circuitry 22. This rejection of claim 1 must be
reversed even though it appears to us that the artisan would
understand the teaching at column 1, lines 25-28 that there is a
bypass operation performed in the circuitry of Figure 1 of
Denheyer in accordance with the requirement at the end of claim 1
on appeal.
The examiner appears to rely upon inherency (Answer, page 4)
that the DSP 10 in Figure 1 of Denheyer would propagate the I and
Q signals according to the unlabeled bidirectional connection to
the analog FM circuitry 22 in the same manner it does so with
respect to the I and Q modulator 12. This is simply not
necessarily the case. Therefore, to sustain the examiner's
rejection, we would need to resort to speculation or unfounded
assumptions to supply the factual deficiencies in the record
before us. This we decline to do. Note the guidance provided by
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968), reh'g denied, 390 U.S. 1000
(1968). Here, simply put, more evidence is needed to convince
us. To the extent the examiner's position my be viewed as being
based upon inherency, inherency may not be established by
Appeal No. 2000-2261
Application 08/730,670
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probabilities or possibilities since inherency requires a
teaching must be necessarily present in the applied prior art.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269,
20 USPQ2d 1746, 1749 (Fed. Cir. 1991) relying on In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). These findings
are consistent with a more recent case from our reviewing court,
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999).
For similar reasons we reverse the rejection of independent
claims 26 and 30. As noted in the discussion at pages 8 and 9 of
the principal brief on appeal, these claims are respective
apparatus and method claims setting forth essentially similar
subject matter. We must reverse the rejection of independent
claim 27 and corresponding independent claim 30 for the same
reasons as for our reversal of claim 1 according to the Figure 1
showing in Denheyer, since this figure also does not teach the
more specific recitation of the selecting unit operating in the
alternative with a combining unit to generate the "modulating
waveform" required by the analog modulator at the end of each of
these respective claims on appeal.
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Application 08/730,670
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At least with respect to the Figure 1, prior art embodiment,
in Denheyer we reverse the rejection of independent claim 1 and
its respective dependent claims 7 and 26, as well as the
rejection of the more specific features in independent claims 27
and 30.
In considering the Figure 3 embodiment, the actual
contribution of Denheyer to the art, we also reach a similar
conclusion. As noted by appellant at pages 9-12 of the principal
brief on appeal, the flow chart Figure 3 reflects the operation
of the circuit in Figure 2 of Denheyer. As is very clear from
the corresponding teachings of these figures at columns 3-5, we
note the specific discussion in the first half of column 5 that
only a single modulator 64 shown in Figure 2 is provided to
modulate both analog and digital input signals. Thus, we agree
with appellant's arguments in the noted pages of the principal
brief on appeal that Figure 3 does not disclose an analog
modulation means separate from the claimed quadrature modulating
means of independent claim 1 on appeal. Correspondingly, there
can therefore be no teaching of the required bypass operation set
forth in independent claim 1 on appeal according to the Figures 2
and 3 showings in Denheyer.
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Application 08/730,670
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We must also reverse the rejection of independent claims 27
and 30 on appeal for similar reasons since each of these claims
also require both a quadrature modulator and an analog modulator.
Additionally, there is no showing in Figures 2 and 3 and no
teaching or suggestion at columns 3 through 5 of Denheyer of the
claimed selecting unit operating in the alternative to the
claimed combining unit, both of which respectively produce "a
modulating waveform" feeding the analog modulator at the end of
each these respective independent claims.
Therefore, since we reverse the rejection of independent
claim 1 on appeal, we must also reverse the rejection of its
respective dependent claims 7 and 26, as well as independent
claims 27 and 30 according to the Figure 3 embodiment of
Denheyer. As such, we have reversed the rejection of all these
claims based upon our consideration of the Figures 1 through 3
embodiments in Denheyer.
Lastly, we turn to the rejection of claims 1, 2, 6 and 7
under 35 U.S.C. § 103 as being obvious over Nonami in view of
Denheyer. We also reverse the rejection of independent claim 1
and therefore its dependent claims 2, 6 and 7.
Appeal No. 2000-2261
Application 08/730,670
8
Our first reason for this reversal is that the examiner's
statement of the rejection expressed at pages 4 and 5 of the
answer fails to set forth a prima facie of obviousness. The
examiner's reasoning that it would have been obvious for the
artisan to have replaced the DSP in Nonami with a corresponding
structure in Denheyer "since it does not show any new or
unexpected result" essentially begs the question within 35 U.S.C.
§ 103. The examiner has provided no motivation or reason for the
combinability but only a presumptuous, conclusory result. The
responsive arguments portion of the answer at pages 5 and 6
thereof fails to address in any manner appellant's arguments as
to this rejection set forth beginning at page 12 of the principal
brief on appeal.
We also reverse this rejection even if we were to assume the
best position of the examiner based upon the actual teachings and
suggestions of Nonami and Denheyer. First, as to the Figures 2-3
embodiment of Denheyer, our earlier discussion in this opinion
indicates that only one modulator and not the required separate
quadrature and analog modulation means required of claim 1 on
appeal are taught in Figures 2-3. As to Nonami, the prior art
Appeal No. 2000-2261
Application 08/730,670
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Figure 3 showing does not indicate that the DSP 4 feeds the
analog or FM modulator 10, even though two modulators, this one
and the digital modulator 6, are shown in this figure. On the
other hand, Nonami's embodiments in Figures 1 and 2 show a common
DSP processor 4 feeding in a parallel manner a digital modulator
6 and the analog modulator 10.
According to the teachings of Nonami, the DSP 4 feeds
various types of signal outputs to these respective modulators.
The details of these signals fed to modulators 6 and 10 are not
set forth in Nonami as recognized by the examiner's reasoning for
the rejection at the top of page 5 of the answer. Because Nonami
does not detail the nature of the signals outputted from the DSP
signal processor 4, it would have been prima facie obvious to the
artisan to look to the teachings of Denheyer to ascertain the
nature of the types of signals outputted from DSP processors.
Notwithstanding the specific showings in Figures 2-3 of Denheyer
that the DSP processor outputs I and Q signals respectively, such
is well known in the art anyway because of appellant's
recognition thereof at pages 1 and 2 of the specification as
filed. Similarly, because the details of the Figures 1 and 2
embodiments of Nonami indicate that the common DSP processor 4
Appeal No. 2000-2261
Application 08/730,670
10
feeds both modulators 6 and 10, it would have been obvious to do
so according to the common teachings of both references, even
though, as indicated earlier in this opinion with respect to the
rejection of the claims under 35 U.S.C. § 102, the DSP processor
10 in the prior art Figure 1 of Denheyer does not specifically
teach feeding the I and Q signals to the analog processor 22.
Nevertheless, the rejection of independent claim 1 under
35 U.S.C. § 103 must be reversed because the combination of
Nonami and Denheyer does not provide the features of the wherein
clause stating "said In-phase modulating signal I and said
Quadrature modulating signal Q bypass said quadrature modulation
means in order to produce said analog modulated signal" set forth
at the end of independent claim 1 on appeal. This feature is
derived from specification page 8, lines 9-12 as to the showing
in Figure 1 of appellant's disclosed invention and the
corresponding explicit teaching at page 11, lines 3-5 relative to
the Figure 2 embodiment. Because the Figures 1 and 2 embodiments
of Nonami specifically teach the DSP signal processor 4 feeding
the respective modulators 6 and 10 in parallel, there is no
teaching of any bypass operation in Nonami. (Column 4, lines
65-68). Correspondingly, Figures 2-3 of Denheyer also do not
indicate this bypass feature.
Appeal No. 2000-2261
Application 08/730,670
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Since we have reversed the rejection of various claims
under 35 U.S.C. § 102 and the rejection of certain claims under
35 U.S.C. § 103, the decision of the examiner is reversed.
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Michael R. Fleming ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Mahshid D. Saadat )
Administrative Patent Judge )

JDT/cam
Appeal No. 2000-2261
Application 08/730,670
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BURNS, DOANE, SWECKER & MATHIS
P. O. Box 1404
Alexandria, VA 22313-1404