Ex parte Gibson

Board of Patent Appeals and Interferences

Feb 14, 2001

08512239 (B.P.A.I. Feb. 14, 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not written for publication and is not binding precedent of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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RODNEY W. GIBSON
__________
Appeal No. 1998-2692
Application 08/512,239
___________
ON BRIEF
___________
Before KRASS, JERRY SMITH, and DIXON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 3, 8-11 and 15-
21. Claims 1, 2 and 7 have been canceled. Claims 4-6 and
12-14 have been indicated by the examiner to contain allowable
subject matter. An amendment after final rejection was filed
Appeal No. 1998-2692
Application 08/512,239
2
on October 17, 1997 and was entered by the examiner.
The disclosed invention pertains to the field of
transferring data between a remote controller and a user
apparatus in a secure manner. The remote controller is
operable in a high output power level and a low output power
level. Operational commands from the remote controller are
sent at the high output power level, whereas secure data from
the remote controller is sent at the low output power level.
Representative claim 19 is reproduced as follows:
19. A method of transferring secure data between a
remote controller and a user apparatus in a secure manner, the
remote controller having means for storing the secure data,
transmitting means, and means for controlling the output power
of the transmitting means to have at least a low output power
level and a high output power level, the user apparatus having
receiving means and means to store secure data received by
said receiving means, wherein the remote controller transmits
operational commands for effecting operation of the user
apparatus across an air interface using a communications link
while said controlling means controls said transmitting means
to transmit at said high output power level, characterized in
that said method comprises the steps:
storing said secure data in said storing means in said
remote controller;
placing the remote controller in a position closer to the
user apparatus than a position used when said remote
controller is transmitting said operational commands; and
transmitting said secure data across said air interface
Appeal No. 1998-2692
Application 08/512,239
3
using said communications link from said remote controller to
said user apparatus using said transmitting means at said low
output power level.
The examiner relies on the following references:
Lambropoulos et al. 4,881,148 Nov. 14, 1989
(Lambropoulos)
Shiota 5,572,194 Nov. 05, 1996
(filed Sep. 02,
1994)
Boyles et al. (Boyles) 5,602,535 Feb. 11, 1997
(filed July 15,
1994)
Claims 3, 8-11 and 15-21 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers
Lambropoulos in view of Boyles with respect to claims 3, 8,
10, 11 and 16-21, and the examiner adds Shiota with respect to
claims 9 and 15.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
Appeal No. 1998-2692
Application 08/512,239
4
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 3, 8, 19 and 21. We reach the opposite conclusion
with respect to claims 9-11, 15-18 and 20. Accordingly, we
affirm-in-part.
We consider first the rejection of claims 3, 8, 10, 11
and 16-21 based on the teachings of Lambropoulos and Boyles.
Appellant has indicated that for purposes of this appeal these
claims will stand or fall together in the following three
groups: Group I has claims 3, 8, 19 and 21, Group II has
claims 11 and 20, and Group III has claims 10 and 16-18
[brief, page 4]. Consistent with this indication appellant
has made no separate arguments with respect to any of the
Appeal No. 1998-2692
Application 08/512,239
5
claims within each group. Accordingly, all the claims within
each group will stand or fall together. Note In re King, 801
F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Therefore, we will consider the rejection against claims 19,
20 and 10 as representative of all the claims on appeal
subject to this rejection.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
Appeal No. 1998-2692
Application 08/512,239
6
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See, In re Hedges,
783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976). Only those arguments actually made by
Appeal No. 1998-2692
Application 08/512,239
7
appellant have been considered in this decision. Arguments
which appellant could have made but chose not to make in the
brief have not been considered [see 37 CFR § 1.192(a)].
We first consider Group I (claims 3, 8, 19 and 21) with
independent claim 19 as the representative claim. The
examiner asserts that Lambropoulos teaches all the limitations
of claim 19 except for the transmitting means having a low
output power level and a high output power level. The
examiner cites Boyles as teaching a remote control transmitter
which has both a high output power level and a low output
power level. The examiner then indicates why the invention of
claim 19 would have been obvious within the meaning of 35
U.S.C. § 103 [answer, pages 4-6].
Appellant makes the following argument with respect to
claim 19:
Boyles et al. system contemplates
sending operational commands at both a
standard power and a reduced power.
However, Boyles et al. only discloses
transmitting the secure data (i.e.,
the security code) from the
Appeal No. 1998-2692
Application 08/512,239
8
transmitter to the receiver at
standard power (col. 7, lines 50-60).
This is the opposite from that of the
subject invention. In fact, there is
no incentive for the Boyles et al.
system to transmit the secure data at
a reduced power. [brief, page 6].
We do not agree that the teachings of Boyles are as limited as
argued by appellant.
Boyles teaches one embodiment in which a remote control
transmitter can be adjusted to a substandard or a standard
range of transmission by adjusting the output power level of
the transmitter [column 7, lines 40+]. Boyles further teaches
that this transmitter can be tuned down (power lowered) and
the vehicle armed by standing proximate to the vehicle so that
the [arming] signal does not reach the intercepting equipment
of a thief [column 8, lines 5-9]. In our view, the artisan
would have understood these passages of Boyles to suggest the
obviousness of transmitting either secure data or operational
commands at either a high output power level or a low output
power level depending on the level of security desired by the
user. Thus, we do not agree with appellant’s argument that
there is no incentive in Boyles to transmit secure data at a
Appeal No. 1998-2692
Application 08/512,239
9
reduced power level. Boyles provides essentially the same
incentive as set forth in appellant’s own specification. For
these reasons, we sustain the rejection of claims 3, 8, 19 and
21 as set forth by the examiner.
We now consider Group II (claims 11 and 20) with claim 20
as the representative claim. The examiner’s rejection
indicates that Lambropoulos teaches the pseudo-random code
recitations of claim 20 [answer, pages 4-5]. Appellant argues
that Lambropoulos only loads a pseudo-random number into the
transmitter and transfers this number to the receiver and does
not teach the generation and the changing of the pseudo-
random code in both the remote controller and the user
apparatus as recited in claim 20 [brief, page 8].
We agree with appellant that Lambropoulos does not teach
or suggest the generation and update of the pseudo-random
codes in both the transmitter and the receiver as recited in
claim 20. Therefore, we do not sustain the examiner’s
rejection of claims 11 and 20.
Appeal No. 1998-2692
Application 08/512,239
10
We now consider Group III (claims 10 and 16-18) with
claim 10 as the representative claim. The examiner’s
rejection does not initially address the particular limitation
of claim 10. Appellant argues that the claimed transmission
of data from the user apparatus back to the remote controller
is neither shown nor suggested by the applied prior art
[brief, page 10]. The examiner responds that
this transmission and reception of
data in a direction reverse to the
“normal” direction, as argued, has not
solved any stated problem or is for
any particular purpose; therefore, the
[examiner] maintains Lambropoulos et
al. in view of Boyles et al.’s
teaching of securely transferring data
is at least fully functionally
equivalent to Appellant’s claimed
invention [answer, page 9].
We agree with the position argued by appellant. The
examiner’s rejection fails to establish a prima facie case of
obviousness. Functional equivalence and the solution of
specific problems are not, per se, the appropriate
determinants of obviousness. The examiner has failed to
properly address the obviousness of the differences between
the claimed invention and the applied prior art. Therefore,
Appeal No. 1998-2692
Application 08/512,239
11
we do not sustain the examiner’s rejection of claims 10 and
16-18.
We now consider the rejection of claims 9 and 15 based on
the teachings of Lambropoulos, Boyles and Shiota. These
claims stand or fall together [brief, page 4]. The examiner
discusses this rejection on pages 6-8 of the answer.
Appellant argues that the PIN of Shiota is completely
different from the PIN of these claims and that the PIN in
Shiota is not transmitted to other components nor stored by
the other components as claimed [brief, page 9]. The examiner
responds that the PIN of Shiota is alternatively equivalent to
the claimed PIN [answer, page 9].
We agree with the position of appellant for the reasons
noted by appellant in the brief. Therefore, we do not sustain
the examiner’s rejection of claims 9 and 15.
In summary, we have sustained the examiner’s rejection of
claims 3, 8, 19 and 21, but we have not sustained the
examiner’s rejection of claims 9-11, 15-18 and 20. Therefore,
the decision of the examiner rejecting claims 3, 8-11 and 15-
Appeal No. 1998-2692
Application 08/512,239
12
21 is affirmed-in-part.
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
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Appeal No. 1998-2692
Application 08/512,239
13
Administrative Patent Judge )
JS:pgg
Corporate Patent Counsel
US Philips Corporation
580 White Plains Road
Tarrytown, NY 10591