Ex parte Gaskill

Board of Patent Appeals and Interferences

Nov 8, 2000

08569976 (B.P.A.I. Nov. 8, 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for publication in a law journal and is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GAROLD B. GASKILL
____________
Appeal No. 1998-2693
Application No. 08/569,976
____________
ON BRIEF
____________
Before HAIRSTON, BARRETT, 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 1 and 15-17. We reverse.
BACKGROUND
The invention at issue in this appeal relates to paging.
Paging systems identify messages sent to paging receivers,
commonly called "pagers," based on addresses stored therein.
Such a pager monitors transmitted signals for messages with a
Appeal No. 1998-2693 Page 2
Application No. 08/569,976
destination address matching an address of the pager. If the
destination address of a message matches a pager's address,
the pager processes and displays the message.
A pager can be shared by plural persons, e.g., a family.
Because every message transmitted to the pager is displayed,
the person currently having the pager receives all messages
sent to family members. That person, however, may not want to
be disrupted by messages for other family members.
The appellant's pager permits a user to select locally
and manually at least one of several stored addresses.
Accordingly, the pager can be set to respond to different
addresses at different times. At any given time, if the
destination address of a transmitted message matches at least
one of the selected addresses, the pager processes and
displays the message. Otherwise, the message in neither
processed nor displayed so that the user is undisturbed.

Claim 1, which is representative for our purposes,
follows:
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Application No. 08/569,976
1. A RF receiver for receiving wireless RF
transmission data including associated transmitted
receiver addresses, comprising:
an output device for supplying the transmission
data;
multiple storage locations containing stored
Selectable receiver addresses;
a manually operable selection means located on
said receiver for enabling and disabling stored
receiver addresses; and
a processor coupled to the output device,
storage locations and selection device, the
processor supplying data to the output device having
a data address matching at least one of the enabled
receiver addresses.
The references relied on in rejecting the claims follow:
Moore (Moore '121) 4,964,121 Oct. 16,
1990
Berry et al. (Berry) 5,117,460 May 26,
1992
Moore (Moore '021 5,398,021 Mar. 14, 1995.
Claims 1 and 15-17 stand rejected under 35 U.S.C. §
103(a) as obvious over Moore '021 in view of Moore '121
further in view of Berry. Rather than repeat the arguments of
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Application No. 08/569,976
the appellant or examiner in toto, we refer the reader to the
brief and answer for the respective details thereof.
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Application No. 08/569,976
OPINION
In deciding 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 1 and 15-17. Accordingly, we reverse.
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. § 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)).
With these principles and finding in mind, we consider the
examiner's rejection and appellant's argument.
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Application No. 08/569,976
The examiner alleges, "switch 44 in Berry et al. is
manually operable to provide full control of the receiver; one
skilled in the art would have recognized full control to
include 'enabling and disabling the receiver's stored
addresses.'" (Examiner's Answer at 7.) The appellant argues
that in Berry "there is no command to change the address to
which the receiver responds." (Appeal Br. at 4.)
Claims 1 and 15 specify in pertinent part the following
limitations: "multiple storage locations containing stored
Selectable receiver addresses; a manually operable selection
means located on said receiver for enabling and disabling
stored receiver addresses ...." Similarly, claims 16 and 17
specify in pertinent part the following limitations: "storing
multiple receiver addresses in each one of the receivers, each
stored receiver address associated with a different receiver
user;
receiving the signals with the RF receivers; ... and manually
selectively enabling and disabling at said receiver the stored
receiver addresses thereby selectively changing the data
supplied to the receivers for each user." Accordingly, claims
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Application No. 08/569,976
1 and 15-17 require manual, local enabling and disabling of a
receiver's addresses.
The examiner fails to show a suggestion of the
limitations in the prior art. “Obviousness may not be
established using hindsight or in view of 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), cert. denied, 519 U.S. 822 (1996)(citing
W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
1551, 1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (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.”
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed.
Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991)). “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.” Id. at 1266,
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23 USPQ2d at 1784 (citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984)).
The examiner admits that Moore '021 "fails to
specifically teach the enabling/disabling of the receiver
addresses is achieved by manually operating the selection
means ...." (Examiner's Answer at 5.) Rather than manual,
local enabling and disabling of the addresses to which a pager
responds, the reference discloses that the addresses are
controlled by signals sent from a central controller.
Specifically, "the paging system 106 will then verify if the
receiver is authorized to receive the subscription, at step
524. If not authorized, then the paging system 106 will send
the disable code at step 526." Col. 8, ll. 57-61.
Although Berry teaches that "voice commands may be used
in conjunction with manually entered commands (or vice versa)
to execute a desired function[,]" col. 5, ll. 23-26, the
reference does not mention a command or function for enabling
and disabling a pager's address. To the contrary, Berry
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Application No. 08/569,976
suggests that only a single address is stored in the pager.
Specifically, "pagers are typically provided with subscriber
specific information, such as, for example, an identification
code. However, this type of
information may be readily generated and stored within the
pager." Col. 1, ll. 43-47. Relying on Moore '121 only to
teach "transmission of RF signals ... in a time division
multiplexed format." (Examiner's Answer at 6), the examiner
fails to allege, let alone show, that Moore '121 cures the
deficiency of Moore '021 and Berry.
Because Berry does not teach a command or function for
enabling and disabling a pager's address, we are not persuaded
that teachings from the prior art would have suggested the
limitations of "multiple storage locations containing
stored Selectable receiver addresses; a manually operable
selection means located on said receiver for enabling and
disabling stored receiver addresses" or "storing multiple
receiver addresses in each one of the receivers, each stored
receiver address associated with a different receiver user;
receiving the signals with the RF receivers; ... and manually
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Application No. 08/569,976
selectively enabling and disabling at said receiver the stored
receiver addresses thereby selectively changing the data
supplied to the receivers for each user." Therefore, we
reverse the rejection of claims 1 and 15-17 as obvious over
Moore '021 in view of Moore '121 further in view of Berry.
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CONCLUSION
In summary, the rejection of claims 1 and 15-17 under
35 U.S.C. § 103(a) as obvious over Moore '021 in view of Moore
'121 further in view of Berry is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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Application No. 08/569,976
ELMER W. GALBI
SEIKO COMMUNICATION SYSTEMS INC.
1625 NW AMBER GLEN COURT SUITE 140
BEAVERTON, OR 97006
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