Ex Parte Karabinis

Board of Patent Appeals and Interferences

Sep 11, 2002

08798137 (B.P.A.I. Sep. 11, 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for publication and is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PETER D. KARABINIS
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Appeal No. 2000-2253
Application No. 08/798,137
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ON BRIEF
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Before JERRY SMITH, GROSS, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1-18. The appellant appeals therefrom under
35 U.S.C. § 134(a). We reverse.
BACKGROUND
The appellant’s invention is a satellite communication (“SATCOM”) system
operating in a "mobile-to-mobile" mode in which mobile telephones communicate via a
satellite. In a typical SATCOM system operating in a mobile-to-mobile mode, mobile
telephones transmit communication signals at a first carrier bandwidth (e.g., 50 kHz)
and receive communication signals at a second carrier bandwidth (e.g., 200 kHz).
Appeal No. 2000-2253 Page 2
Application No. 08/798,137
A rate converter in a satellite converts signals between the carrier bandwidths. (Spec.
at 2.) The converter, however, adds weight, cost, and complexity to the satellite. (Id.)
In contrast, the appellant’s mobile telephone features two receiver paths and a
switch. In a Public Switched Telephone Network-to-mobile mode, the switch selects the
first receiver path to receive signals at a first carrier bandwidth (e.g., 200 kHz). In a
mobile-to-mobile mode, the switch selects the second receiver path to receive
unconverted signals at second carrier bandwidth (e.g., 50 kHz), without requiring
conversion to the first bandwidth. Because the mobile telephone can receive signals at
different carrier bandwidths, the appellant asserts that the associated satellite need not
include a rate converter. (Id. at 5.)
A further understanding of the invention can be achieved by reading the following
claim:
14. A communication device, comprising:
a first receiver path for receiving communication signals from a
satellite at a first carrier bandwidth in a first mode;
a second receiver path for receiving communication signals from
the satellite at a second carrier bandwidth in a second mode;
means for selecting between the first mode and the second mode
in response to control information.
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Application No. 08/798,137
Claims 1, 2, 5, 6, 8-11, 14, 16, 18 stand rejected under 35 U.S.C. § 102(e) as
anticipated by U.S. Patent No. 5,619,525 (“Wiedeman”). Claims 3, 4, 7, 12, and 17
stand rejected under 35 U.S.C. § 103(a) as obvious over Wiedeman in view of U.S.
Patent No. 5,579,319 (“Daniel”). Claims 13 and 15 stand rejected under § 103(a) as
obvious over Wiedeman in view of U.S. Patent No. 5,539,730 (“Dent”).
OPINION
Rather than reiterate the positions of the examiner or appellant in toto, we
address the main point of contention therebetween. The examiner asserts, "Wiedeman
teaches mobile terminals may be dual use devices (capable of operating in full duplex
mode, i.e., L-band RF links and S-band RF links)." (Examiner's Answer at 6.) The
appellant argues, "[t]he bandwidths of the S and L band links . . . encompass the same
bandwidth of 16.5MHz and not different bandwidths as claimed." (Reply Br. at 3.)
“Analysis begins with a key legal question -- what is the invention claimed?”
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, “the Board must give claims their broadest
reasonable construction. . . .” In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1668 (Fed. Cir. 2000). “Moreover, limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
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Application No. 08/798,137
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
Here, independent claim 1 specifies in pertinent part the following limitations:
"the system operates in a first mode, in which each device transmits signals to the
satellite at a first carrier bandwidth and receives signals from the satellite at a second
carrier bandwidth, and selectively operates in a second mode, in which each device
transmits signals to the satellite and receives signals from the satellite at the first carrier
bandwidth." Similarly, independent claim 8 specifies in pertinent part the following
limitations: "establishing, in a first mode of operation, a first communication link
between a first communication device, a satellite, a control station associated with the
satellite, and a second communication device, the first communication device
transmitting signals to the satellite at a first carrier bandwidth and the second
communication device receiving signals at a second carrier bandwidth; [and]
establishing, in a second mode of operation, a second communication link between the
first communication device, the satellite, and a second communication device, the first
communication device transmitting signals to the satellite at the first carrier bandwidth
and the second communication device receiving signals from the satellite at the first
carrier bandwidth.” Similarly, independent claim 14 specifies in pertinent part the
following limitations: "a first receiver path for receiving communication signals from a
Appeal No. 2000-2253 Page 5
Application No. 08/798,137
satellite at a first carrier bandwidth in a first mode; [and] a second receiver path for
receiving communication signals from the satellite at a second carrier bandwidth in a
second mode. . . .” Giving the independent claims their broadest, reasonable
construction, the limitations require that a device receive communication signals from a
satellite at different carrier bandwidths in different modes.
“[H]aving ascertained exactly what subject matter is being claimed, the next
inquiry must be into whether such subject matter is novel.” In re Wilder, 429 F2d 447,
450, 166 USPQ 545, 548 (CCPA 1970). “A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently described, in a
single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing Structural Rubber Prods. Co. v. Park
Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264, 1270 (Fed. Cir. 1984); Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983);
Kalman v. Kimberly-Clark Corp., 713 F.2d760, 771, 218 USPQ 781, 789 (Fed. Cir.
1983)). "[A]bsence from the reference of any claimed element negates anticipation."
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed.
Cir. 1986).
Appeal No. 2000-2253 Page 6
Application No. 08/798,137
Here, Wiedeman “permit[s] low-powered fixed or mobile user terminals 13 to
communicate via . . . satellites 12. . . .” Col. 4, ll. 19-20. “[T]he user terminals 13 may
be capable of operating in a full duplex mode and communicate via, by example,
L-band RF links (uplink or return link 17b) and S-band RF links (downlink or forward
link 17a) through return and forward satellite transponders 12a and 12b, respectively.”
Id. at ll. 57-62. The examiner fails to show, however, that the user terminals receive
communication signals from the satellites at different carrier bandwidths. To the
contrary, the reference teaches that the S-bank link, via which the user terminals
receive communication signals from the satellites, features a single, fixed bandwidth.
Specifically, “[t]he forward S band RF links 17a may operate within . . . a bandwidth of
16.5 MHZ.” Col. 4, l. 67 - col. 5, l. 1. The absence of such a showing negates
anticipation. Therefore, we reverse the anticipation rejection of claim 1 and claims 2, 5,
and 6, which fall therewith; of claim 8 and claims 9-11, which fall therewith; and of
claim 14 and claims 16 and 18, which fall therewith.
“In rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness.” In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)(citing 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
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Application No. 08/798,137
the claimed subject matter to a person of ordinary skill in the art.’" In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, the examiner fails to allege, let alone show, that the addition of Daniel or
Dent cures the deficiency of Wiedeman. Absent a teaching or suggestion that a device
receives communication signals from a satellite at different carrier bandwidths in
different modes, the examiner fails to present a prima facie case of obviousness.
Therefore, we reverse the obviousness rejection of claim 3, 4, 7, 12, 13, 15, and 17.
CONCLUSION
In summary, the rejections of claims 1, 2, 5, 6, 8-11, 14, 16, 18 under § 102(e)
and of claims 3, 4, 7, 12, 13, 15, and 17 under § 103(a) are reversed.
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Application No. 08/798,137
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
BURNS DOANE SWECKER & MATHIS L L P
POST OFFICE BOX 1404
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Application No. 08/798,137
ALEXANDRIA, VA 22313-1404