Ex Parte Graham

Board of Patent Appeals and Interferences

Sep 14, 2006

09221291 (B.P.A.I. Sep. 14, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARTIN H. GRAHAM
__________

Appeal No. 2006-2122
Application No. 09/221,291
__________

ON BRIEF
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Before HAIRSTON, BARRY, and HOMERE, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 19 through 25.
The disclosed invention relates to a method of encoding data bits in the
period of time between the lagging end of a first biphasic pulse and the leading
end of a second biphasic pulse. The lagging end of the first biphasic pulse and
the leading end of the second biphasic pulse are of the same polarity.
Claim 19 is illustrative of the claimed invention, and it reads as follows:
19. A method for encoding data bits for transmission comprising:
generating a first biphasic pulse having a first portion of a
first polarity followed by a second portion of a second polarity;

waiting a period of time following the second portion of the first
biphasic pulse during which period of time no amplitude dependent data

Appeal No. 2006-2122
Application No. 09/221,291

bits are encoding, the duration of the period of time being selected to
represent a plurality of data bits; and

generating a second biphasic pulse following the period of time, the
second biphasic pulse having a third portion of the second polarity
followed by a fourth portion of the first polarity.

The references relied on by the examiner are:
Vanderpool et al. (Vanderpool) 5,654,978 Aug. 5, 1997
Pernyeszi 5,969,547 Oct. 19, 1999
(filed Oct. 24, 1997)
Gord et al. (Gord) 5,999,848 Dec. 7, 1999
(filed Sept. 12, 1997)

Claims 19 through 22, 24 and 25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gord in view of Vanderpool.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gord in view of Vanderpool and Pernyeszi.
Reference is made to the briefs and the answer for the respective
positions of the appellant and the examiner.
OPINION

We have carefully considered the entire record before us, and we will
reverse the obviousness rejections of claims 19 through 25.
Gord describes a method of encoding input data bits with biphasic pulses
per se (Figures 6 and 8). Although Gord shows a biphasic pulse (i.e., input data
bit 1) with a lagging end that has the same polarity as the leading end of the next
biphasic pulse (i.e., input data bit 0), the period of time between the biphasic
pulses is not used for encoding purposes.
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Appeal No. 2006-2122
Application No. 09/221,291
Vanderpool recognizes (column 1, lines 10 through 17) that the time delay
between two successive pulses may be used to encode data. Vanderpool shows
a time delay between two biphasic pulses, but the polarity of the lagging end of
the first biphasic pulse is not the same as the polarity of the leading end of the
second biphasic pulse (Figure 4).
Appellant argues (reply brief, page 2) that “[m]erely taking two consecutive
pulses from one patent and combining it with another without some justification
for this combination is inconsistent with an obvious[ness] rejection.” The only
justification for the proposed combination of teachings is appellant’s disclosed
and claimed invention, and such teachings are not available to the examiner in
an obviousness determination. “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). Thus, the obviousness
rejection of claims 19 through 22, 24 and 25 is reversed because “[o]ne cannot
use hindsight reconstruction to pick and choose among isolated disclosures in
the prior art to deprecate the claimed invention.” In re Fine, 837 F.2d 1071,
1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988).
The obviousness rejection of claim 23 is reversed because the teachings
of Pernyeszi fail to cure the noted shortcomings in the teachings of Gord and
Vanderpool.

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Appeal No. 2006-2122
Application No. 09/221,291
DECISION

The decision of the examiner rejecting claims 19 through 25 under 35
U.S.C. § 103(a) is reversed.

REVERSED

)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEAN R. HOMERE )
Administrative Patent Judge )

KH/gw

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Appeal No. 2006-2122
Application No. 09/221,291

EDWIN H. TAYLOR
BLAKELY, SOKOLOFF, TAYLOR, & ZAFMAN LLP
12400 WILSHIRE BOULEVARD SEVENTH FLOOR
LOS ANGELES, CA 90025

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Application No. 09/221,291

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