Ex parte Fukuda

Board of Patent Appeals and Interferences

Jul 10, 2000

08265000 (B.P.A.I. Jul. 10, 2000)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KUNIO FUKUDA
____________
Appeal No. 1998-0219
Application No. 08/265,000
____________
ON BRIEF
____________
Before HAIRSTON, KRASS, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the rejection of claims 4 and 9. We reverse.
BACKGROUND
The invention at issue in this appeal relates to cordless
telephone systems. Specifically, a cordless telephone system
comprises a master station, sub-master stations, and remote
stations. The master station periodically transmits a master
control signal, which has a leading edge and trailing edge. A
Appeal No. 1998-0219 Page 2
Application No. 08/265,000
predefined time after receiving the master control signal,
each
sub-master station transmits a sub-master control signal,
which also has a leading edge and trailing edge. Together,
the master control and the sub-master control signals define a
transmission interval. More specifically, the transmission
interval extends from the leading edge of the master control
signal to the trailing edge of the last sub-master control
signal.
After determining the periodicity of the transmission
interval, each remote station de-energizes its receiver
between transmission intervals. Such de-energizing reduces
the power consumed by each remote station, thereby extending
the life of its battery. During transmission intervals,
conversely, each remote station energizes its receiver so that
the master and sub-master control signals can be received.

Claim 9, which is representative for our purposes,
follows:
Appeal No. 1998-0219 Page 3
Application No. 08/265,000
9. A digital cordless telephone apparatus
comprising:
a master station that periodically transmits a
master control signal over a channel, the master
control signal having a leading edge and a trailing
edge;
a plurality of sub-master stations, each sub-
master station transmitting a sub-master control
signal in response to each received master control
signal a predefined time after receiving the
trailing edge of each master control signal so that
none of the sub-master control signals are output at
the same time, each sub-master control signal having
a leading edge and a trailing edge, a transmission
interval being defined from the leading edge of one
of the master control signals to the trailing edge
of the sub-master control signal that is last to be
transmitted in response to said one of the master
control signals; and
a plurality of remote stations, each remote
station receiving the master and sub-master control
signals, determining the periodicity of the
transmission interval, de-energizing a reception
unit after the periodicity of the transmission
interval has been determined, and energizing the
reception unit only during every n transmission
intervals to receive the master and sub-master
control signals over the channel, where n is an
integer.
The references relied on in rejecting the claims follow:
Natarajan et al. (Natarajan) 5,241,542 Aug.
31, 1993
(filed Aug. 23, 1991)
Mock et al. (Mock) 5,382,949 Jan.
17, 1995
(filed Feb. 1, 1993)
Appeal No. 1998-0219 Page 4
Application No. 08/265,000
Schuermann 5,455,575 Oct. 3,
1995
(filed Sept. 23,
1994).
Claims 4 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Schuermann in view of Natarajan or
Mock. (Paper No. 16 at 4.) Rather than repeat the arguments
of the appellant or examiner in toto, we refer the reader to
the briefs and answers for the respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejection advanced by
the examiner. Furthermore, we duly considered the arguments
and evidence of the appellant and examiner. After considering
the totality of the record, we are persuaded that the examiner
erred in rejecting claims 4 and 9. Accordingly, we reverse.
Appeal No. 1998-0219 Page 5
Application No. 08/265,000
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
If the examiner fails to establish a prima facie
case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these in mind, we consider the appellant’s argument and
the examiner’s reply.
The appellant argues, “since the Schuermann reference
fails to teach or suggest sub-master stations that output
signals such that ‘none of the sub-master control signals are
output at the same time’, claims 4 and 9 are patentable over
Schuermann in view of Natarajan or Mock.” (Second Reply Br.
at 3) The examiner replies, “Schuermann implicitly discloses
Appeal No. 1998-0219 Page 6
Application No. 08/265,000
that the sub-master stations transmit a predetermined time
after the master station, because time delays in
communications due to air interface interference/propagation
are well known in the art (Col. 7;12-16).” (Paper No. 21 at
4.) He explains, ”even a microsecond delay, no matter how
infinitesimal, would cause transmissions to happen at
different times.” (Id. at 6-7.) The examiner also alleges,
“Schuermann discloses the use of CSMA protocols, which prevent
all sub-masters from transmitting at the same time, because a
collision would result and both sub-masters would transmit at
a later time.” (Id. a 7.)
“‘[T]he main purpose of the examination, to which every
application is subjected, is to try to make sure that what
each claim defines is patentable. [T]he name of the game is
the claim ....’” In re Hiniker Co., 150 F.3d 1362, 1369,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (quoting Giles S. Rich,
The Extent of the Protection and Interpretation of Claims --
American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright
L. 497, 499, 501 (1990)). Here, claim 4 specifies in
pertinent part the following limitations:
Appeal No. 1998-0219 Page 7
Application No. 08/265,000
transmitting a plurality of sub-master control
signals from the sub-master stations to the remote
stations in response to each master control signal a
predefined time after the trailing edge of each
master control signal is transmitted so that none of
the sub-master control signals are output at the
same time ....
Similarly, claim 9 specifies in pertinent part the following
limitations:
a plurality of sub-master stations, each sub-
master station transmitting a sub-master control
signal in response to each received master control
signal a predefined time after receiving the
trailing edge of each master control signal so that
none of the sub-master control signals are output at
the same time ....
Accordingly, claims 4 and 9 each require that none of a
plurality of sub-master control signals is output at the same
time. To accomplish this, each sub-master station must be
allowed to start and complete its transmission without any
other sub-master station beginning to transmit.
The examiner fails to show a suggestion of the
limitations. “Obviousness may not be established using
hindsight or in view of
Appeal No. 1998-0219 Page 8
Application No. 08/265,000
the teachings or suggestions of the inventor.” Para-Ordnance
Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1087, 37 USPQ2d
1237, 1239 (Fed. Cir. 1995)(citing W.L. Gore & Assocs., Inc.
v. Garlock, Inc., 721 F.2d 1540, 1551-53, 220 USPQ 303, 311-13
(Fed. Cir. 1983)). “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, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (citing In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)). “It is impermissible to use the claimed invention as
an instruction manual or ‘template’ to piece together the
teachings of the prior art so that the claimed invention is
rendered obvious.” Id. at 1266, 23 USPQ2d at 1784, (citing In
re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991)).
Here, Schuermann does teach a plurality of sub-master
stations, each of which transmits a sub-master control signal
in response to a received master control signal.
Appeal No. 1998-0219 Page 9
Application No. 08/265,000
Specifically, the reference includes the following disclosure.
If within a certain amount of time the first
interrogation unit 10 did not receive a response
from
the addressed responder unit, the first
interrogation unit 10 might request that the second
interrogation unit 16 and/or additional
interrogation units 16a send a second or an
additional RF interrogation signal addressed towards
this specific responder unit. Should one or
additional of these other interrogation units 16,
16a receive a response from the addressed responder
unit, they might then relay this information back to
first interrogation unit 10. In this manner, a
network of interrogation units might be used to
detect as regards to the presence or to locate a set
of objects containing responder units having known
addresses.
Col. 9, ll. 17-26. Schuermann lacks a suggestion, however,
that the second interrogation unit 16 and additional
interrogation units 16a cannot send their second or additional
RF interrogation signals, respectively, at the same time. In
other words, there is no suggestion that each of the
interrogation units be allowed to start and complete its
transmission of an RF interrogation signal without any of the
other units beginning to transmit.
Appeal No. 1998-0219 Page 10
Application No. 08/265,000
The ALOHA protocol is also subject to simultaneous1
transmissions. See Stallings at 296 (copy attached)(“The
packet may be invalid ... because another station transmitted
a frame at about the same time.”)
We appreciate the examiner’s observation that even a
slight difference in the propagation delays seen by the second
interrogation unit 16 and the additional interrogation units
16a could allow the units to begin their respective
transmissions at different times. The examiner does not show,
however, that beginning transmissions at different times
ensures that each of
the interrogation units would be allowed to complete its
transmission without any of the other units beginning to
transmit.
To the contrary, the carrier sense multiple access (CSMA)
protocol, used by the interrogator units and referenced by the
examiner, is subject to simultaneous transmissions.
Specifically, “it may happen that two or more stations attempt
to transmit at about the same time. If this happens, there
will be a collision.” William Stallings, Data and Computer
Communications 303 (2d ed. 1988) (copy attached). The1
Appeal No. 1998-0219 Page 11
Application No. 08/265,000
examiner implies as much by recognizing that “a collision
would result” in Schuermann. (Paper No. 21 at 7.) Each
interrogation unit of the reference accounts for such a
collision, moreover, by listening for an acknowledgment to
ensure that its transmission was properly received and, if no
such acknowledgment is received, resending the transmission.
Col. 6, ll. 58-65.
The examiner fails to allege, let alone show, that
Natarajan or Mock remedies the defects of Schuermann. Because
the CSMA and ALOHA protocols used by Schuermann is subject to
simultaneous transmissions, we are not persuaded that
teachings from the prior art would appear to have suggested
the claimed limitation of “none of the sub-master control
signals are output at the same time ....” The examiner has
impermissibly relied on the appellants’ teachings or
suggestions. He has not established a prima facie case of
obviousness. Therefore, we reverse the rejection of claims 4
and 9 under 35 U.S.C. § 103(a).

Appeal No. 1998-0219 Page 12
Application No. 08/265,000
CONCLUSION
In summary, the rejection of claim s 4 and 9 under 35
U.S.C. § 103(a) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Appeal No. 1998-0219 Page 13
Application No. 08/265,000
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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