Ex Parte Grayson

Board of Patent Appeals and Interferences

Jun 25, 2004

09234702 (B.P.A.I. Jun. 25, 2004)

1 The amendment filed subsequent to the final rejection (Paper No. 13,
filed February 11, 2002) has been entered by the examiner (Paper No. 14)
mailed February 19, 2002).
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publication and is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK GRAYSON
____________
Appeal No. 2003-0289
Application No. 09/234,702
____________
ON BRIEF
____________
Before THOMAS, GROSS, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection1 of claims 1-14, which are all of the
claims pending in this application.
BACKGROUND
Appellant's invention relates to a satellite communications
system and user terminal providing path diversity depending on
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Application No. 09/234,702
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path attenuation. An understanding of the invention can be
derived from a reading of exemplary claim 1, which is reproduced
as follows:
1. A satellite communications system wherein a user terminal
may be in radio contact with at least one earth station through
at least one radio path to at least two satellites and wherein
another satellite may potentially be included among said at least
two satellites, said system being characterized by said user
terminal being operable to assess which of said at least two
satellites presents the highest radio path attenuation to said
user terminal and to interrupt the radio path between said user
terminal and that one of said at least two satellites which
presents the highest path attenuation for said user terminal to
assess information related to synchronization and information
related to the signal quality of said another satellite.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Chennakeshu et al. (Chennakeshu) 5,661,724 Aug. 26, 1997
Sherman et al. (Sherman) 6,091,933 Jul. 18, 2000
(filed Jan. 3, 1997)
Diekelman 6,104,911 Aug. 15, 2000
(filed Nov. 14, 1997)
Claims 1-4 and 8-11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chennakeshu in view of Sherman.
Claims 5-7 and 12-14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chennakeshu in view of Sherman and
Diekelman.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
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Application No. 09/234,702
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we make reference to the examiner's answer (Paper No. 19, mailed
May 24, 2002) for the examiner's complete reasoning in support of
the rejections, and to appellant's brief (Paper No. 18, filed
April 11, 2002) for appellant's arguments thereagainst. Only
those arguments actually made by 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).
OPINION
In reaching our decision in this appeal, 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 for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
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. Upon
consideration of the record before us, we reverse, essentially
for the reasons set forth by appellant.
We begin with the rejection of claims 1-4 and 8-11 under
35 U.S.C. § 103(a) as being unpatentable over Chennakeshu in view
of Sherman. We turn first to independent claims 1 and 8.
Appeal No. 2003-0289
Application No. 09/234,702
Page 4
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, 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. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); 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
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2Examiner incorrectly refers to Fig. 4 (answer, page 4) whereas Fig. 1
coincides with description in the answer.
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; 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).
The examiner's position (answer, page 3-4) is that
Chennakeshu clearly discloses a satellite diversity scheme in
which a mobile unit (user terminal), in communication with at
least two satellites, interrupts communication with one of said
satellites with the highest attenuation to then establish a
communication link with a third satellite. Relying on Fig. 4 and
col. 5, lines 3-20, the examiner states the mobile unit then
assess information related to synchronization and signal quality
of said third satellite.
The examiner notes that Chennakeshu does not specifically
disclose that one or more radio paths include “one or more earth
stations” to select which radio path used by the mobile unit to
interrupt (answer, page 4). To overcome this deficiency in
Chennakeshu, the examiner turns to Sherman (Fig. 1 and col. 5,
lines 20-29)2 for a teaching of communication link optimization
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in a satellite communication system in which path diversity is
provided between a user terminal and at least two satellites
through gateways (earth stations). These gateways then determine
the diversity paths (e.g. selection of a radio path to
interrupt). In the examiner's opinion, it would have been
obvious to a person of ordinary skill in the art at the time the
invention was made to modify the system in Chennakeshu with the
teachings of Sherman to include “earth stations” to decide on
diversity paths (e.g. selection of a radio path to interrupt)
(answer, page 5).
Appellant asserts that both independent claims 1 and 8,
containing similar language, require the user terminal to assess
which of at least two satellites presents the highest radio path
attenuation and to interrupt that path to assess another
satellite (brief, page 5). Appellant further asserts (id.) that
Chennakeshu does not interrupt one link of a diversity pair of
links, rather it scans for an alternative satellite during “idle
time slots of the TDMA link” (col. 5, lines 6-7). If the signal
quality of one satellite connected to the user terminal falls
below a first threshold, and the signal quality of a second
satellite would be above a second threshold, the mobile unit will
then establish a communication link with the second satellite
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(brief, page 5). In contradiction to the examiner’s assertion,
appellant states that claims 1 and 8 do not require earth
stations to select which radio paths to interrupt (brief, page
6). Appellant further states that the claims require the user
terminal to independently interrupt a radio path between said
user terminal and one of at least two satellites without the
assistance of any other software/hardware (i.e. earth station).
Appellant concludes by stating (brief, page 7) that “Sherman et
al. describes ground station software for providing traffic
control for allocating traffic to satellites using gateways,” and
that neither modeling software nor the processor required could
reasonably fit in a commercial “user terminal,” which are
typically handheld units. The examiner responds (answer, page 8)
that the use of earth stations to select which radio path to
interrupt is in claims 3 and 10.
We note at the outset that the examiner’s assertions that
limitations regarding earth stations selecting which radio path
to interrupt are present in claims 3 and 10 does not address the
limitations of independent claims 1 and 8. A review of
Chennakeshu reveals that the reference relates to a diversity
scheme in a “satellite mobile communication method and system in
which a mobile unit can selectively exchange signals with
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3
Time Division Multiple Access - Users share the radio spectrum in the
time domain. This invention also applies to FDMA (Frequency Division Multiple
Access), and CDMA (Code Division Multiple Access). See (col. 3, lines 26-27).
multiple satellites” (col. 1, lines 7-9). “Transmission of
signals in a TDMA system3 occurs in a buffer-and-burst, or
discontinuous-transmission, mode.” The mobile unit in
Chennakeshu communicates with the first satellite during the
active time slots, while scanning for a second satellite during
the idle time slots (col. 5, lines 4-6). If the signal quality
of the first satellite falls below a predefined threshold, and
the signal quality of the second satellite is above a second
threshold, the mobile unit establishes a communication link with
the second satellite [emphasis added](Fig. 4 and col. 5, lines
11-17).
Because in Chennakeshu thresholds are used to both determine
when to establish communication with a new satellite, and when to
discontinue service with a different satellite, we find that
Chennakeshu does not interrupt the radio path between the user
terminal and the satellite with the highest radio path
attenuation, and then connect with the other satellite. What
Chennakeshu discloses is that the mobile unit will only connect
to the second satellite if the two threshold tests are met, a
part of which is assessing the second satellite before dropping
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the first. Chennakeshu does allow for the mobile unit to be
connected to two satellites “substantially” simultaneously,
either during transition between two satellites or if both
satellites offer sufficient signal quality (col. 7, lines 50-54).
In this alternate embodiment of Chennakeshu, the mobile unit will
communicate with one satellite on each even-numbered TDMA frame,
and communicate with the other satellite on every odd-numbered
TDMA frame (col. 7, lines 55-60). These two separate
transmissions will then be integrated into a singular
communication at an earth station to increase the effective
signal margin (col. 7, lines 60-65). Thus, we find that in
Chennakeshu, the user terminal uses two threshold tests and does
not interrupt the radio path of one satellite before accessing
the next satellite.
From our review of Sherman, we find that the reference
relates to a multiple satellite communication system, in
particular, related to “traffic control in a satellite network
for optimizing link allocation” (col. 1, lines 7-9). A traffic
controller allocates traffic to the satellites using gateways for
power allocation reasons designed to meet a desired quality of
service (col. 3, lines 65-67, and col. 4, lines 51-54). The user
in Fig. 1 can be served by a gateway using “one” of three
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possible transmission paths (col. 5, lines 19-20). In diversity,
the user may be serviced from multiple satellites redundantly to
increase the signal quality of reception by the user as decided
by the operations control center (OCC), not the user terminal
itself (col. 5, lines 49-55). Likewise, the gateway, without the
user terminal, may independently determine the radio path to be
used or interrupted (col. 6, lines 5-10).
Sherman specifically discloses that either the OCC or a
gateway actively determines the radio path to be used by the
mobile unit. Sherman was introduced by the examiner for the
purpose of introducing “earth stations” and their integral role
in the decision process (e.g. interrupting the radio path of the
satellite with the highest attenuation and accessing the other
satellite). This argument, however, is misplaced, as independent
claims 1 and 8 do not require that “one of at least two earth
stations providing said paths is operable to select which of said
radio paths between said user terminal and said at least two
satellites to interrupt” as recited in claims 3 and 10. Because
Chennakeshu discloses the use of two thresholds before
establishing communication with the second satellite, and does
not interrupt the radio path between the user terminal and the
satellite with the highest attenuation before accessing the next
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or other satellite, and Sherman does not disclose that the
terminal interrupts the radio path between the user terminal and
the satellite, we find no teaching or suggestion to combine the
teachings of Chennakeshu and Sherman.
Assuming, arguendo, that an artisan were to combine the
teachings of Chennakeshu and Sherman, the language of claims 1
and 8 would still not be met. Because Sherman discloses the use
of ground station software for providing traffic control, if the
teachings of Chennakeshu and Sherman were combined, the result
would be that the user terminal of Chennakeshu would be carrying
out the traffic control of Sherman. However, as asserted by
appellant (brief, page 7) the modeling software and processor
size required to execute the modeling software could not
reasonably fit in a portable user terminal. Thus, we find that
the combined teachings of Chennakeshu and Sherman would not have
suggested the language of independent claim 1, and similarly
recited in independent claim 8.
From all of the above, we find that the examiner has failed
to establish a prima facie case of obviousness of independent
claims 1 and 8. Accordingly, the rejection of claims 1 and 8,
and claims 2-4 and 9-11 dependent therefrom, is reversed.
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We turn next to the rejection of claims 5-7 and 12-14 under
35 U.S.C. § 103 as being unpatentable over Chennakeshu in view of
Sherman and Diekelman. However, the addition of Diekelman
provides no teaching or suggestion to overcome the deficiencies
of Chennakeshu and Sherman with respect to the independent claims
1 and 8 as discussed, supra. We therefore find that the
teachings of Chennakeshu, Sherman and Diekelman fail to establish
a prima facie case of obviousness of claims 5-7 and 12-14.
Accordingly, the rejection of claims 5-7 and 12-14 under 35
U.S.C. § 103(a) is reversed.
CONCLUSION
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To summarize, the decision of the examiner to reject claims 1-14
under 35 U.S.C. § 103(a) is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
SSL/kis
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