Ex parte Hirai et al.

Board of Patent Appeals and Interferences

Apr 30, 2001

08515900 (B.P.A.I. Apr. 30, 2001)

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for publication and is not binding precedent of the Board.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 KOUTAROU HIRAI
and MASAKI HOSHINO
____________
Appeal No. 1999-0395
Application No. 08/515,900
____________
HEARD: April 12, 2001
____________
Before HAIRSTON, GROSS, and LEVY, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 7. After submission of the brief, the examiner
allowed claims 2 through 7 (answer, pages 2 and 5).
Accordingly, claim 1 is the only claim before us on appeal.
The disclosed invention relates to a radio system.
Appeal No. 1999-0395
Application No. 08/515,900
2
Claim 1 reads as follows:
1. A radio system comprising:
clock oscillation means, comprising a variable
capacitance diode, for generating a reference clock;
memory means;
frequency switching means; and
means for controlling said frequency switching means on
the basis of the contents stored in said memory means,
wherein the oscillation frequency of said reference clock
generated by said clock oscillation means is switched in
accordance with a state of an output of said frequency
switching means.
The references relied on by the examiner are:
Smith 4,550,292 Oct. 29, 1985
Garner et al. (Garner) 4,870,699 Sept. 26, 1989
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over acknowledged prior art Figure 8 of the
drawing in view of Garner and Smith.
Reference is made to the briefs and the answer for the
respective positions of the appellants and the examiner.
OPINION
The obviousness rejection of claim 1 is sustained.
Appellants and the examiner both agree that acknowledged
prior art Figure 8 does not disclose frequency switching means
Appeal No. 1999-0395
Application No. 08/515,900
3
4000 being controlled in response to contents stored in a
memory (brief, page 8; answer, page 5). According to the
examiner (answer, page 5), Garner discloses a radio system
(Figure 2) in which microprocessor 28 controls frequency
switching of oscillator 30 in response to contents stored in
memory 32. The control output from microprocessor 28 to
oscillator 30 is labeled SEL. The examiner contends (answer,
page 5) that it would have been obvious to one of ordinary
skill in the art to apply the memory technique of Garner to
the system of prior art Figure 8 “for the simple purpose of
obtaining a more accurate technique through the use of
previously stored information,” and that the modified
teachings of prior art Figure 8 would lack a variable
capacitance diode in the clock oscillation means.
Based upon the examiner’s description of the teachings of
Garner, we find that claim 1 reads on Figure 2 of Garner. For
example: the radio system is described in Garner at column 1,
lines 9 through 13; the memory means is described in Garner at
column 10, lines 50 through 65, column 14, lines 11 through
19, column 15, lines 37 through 42, and column 16, lines 62
through 66; the frequency switching means is the
Appeal No. 1999-0395
Application No. 08/515,900
4
microprocessor 28, and it is described in Garner at column 7,
lines 40 through 45, column 8, lines 47 through 55, column 13,
lines 14 through 25, column 14, lines 11 through 14, and
column 15, lines 37 through 44. The oscillation frequency of
the reference clock generated by oscillator 30 in Garner is
switched in accordance with a state of output SEL from
microprocessor 28. The only difference between Figure 2 of
Garner and claim 1 is that Garner does not use a variable
capacitance diode in the oscillator 30. Thus, it appears that
the clock oscillator circuit, frequency switching circuit, and
control circuit teachings of admitted prior art Figure 8 are
merely cumulative to the teachings found in Garner.
For a teaching of the use of a variable capacitance diode
66 in a clock oscillator circuit, the examiner turns to the
teachings of Smith (Figure 1; column 5, line 60 through column
6, line 33). In view of Smith’s teaching that it is well
known in the art to use a variable capacitance diode in a
clock oscillation circuit, we agree with the examiner that it
would have been obvious to one of ordinary skill in the art to
use such a circuit component in the oscillator disclosed by
Garner.
Appeal No. 1999-0395
Application No. 08/515,900
5
Appellants’ argument (brief, page 10) that “if RAM
circuit 32 of Garner . . . were combined with the teachings of
the other references, it would have been necessary to provide
a digital-to-analog converter as a frequency synthesizer, as
opposed to a clock oscillation means including a variable
capacitance diode” is without merit since the examiner is not
relying on the frequency synthesizer 16 in Garner (Figure 2)
to demonstrate the obviousness of the claim 1 subject matter.
As indicated supra, the examiner’s proposed modification is to
the oscillator, and not to the frequency synthesizer. In the
absence of evidence, appellants’ argument (brief, page 11)
that the proposed modification would not work is likewise
without merit. Appellants’ argument (brief, page 11) that
“the frequency of the oscillator circuit is changed in a
digital manner” in Smith is not understood in light of the use
of digital-to-analog converters 62 in Smith (Figure 1).
Based upon the foregoing, the obviousness rejection of
claim 1 is sustained in view of the teachings of Garner and
Smith. In affirming a multiple reference rejection under 35
U.S.C. § 103, the Board may rely on less than the total number
of references relied on by the examiner. In re Bush, 296 F.2d
Appeal No. 1999-0395
Application No. 08/515,900
6
491, 496, 131 USPQ 263, 266-67 (CCPA 1961); In re Boyer, 363
F.2d 455, 458, n.2, 150 USPQ 441, 444, n.2 (CCPA 1966).
DECISION
The decision of the examiner rejecting claim 1 under 35
U.S.C. § 103(a) is affirmed.
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 1999-0395
Application No. 08/515,900
7
lp
Appeal No. 1999-0395
Application No. 08/515,900
8
JAMES E. LEDBETTER, ESQ.
STEVENS, DAVIS, MILLER & MOSHER
L.L.P.
1615 L. STREET, NW, SUITE 850
P.O. BOX 34387
WASHINGTON, DC 20043-4387
Leticia
Appeal No. 1999-0395
Application No. 08/515,900
APJ HAIRSTON
APJ LEVY
APJ GROSS
DECISION: AFFIRMED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: March 25, 2002
Draft Final
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