Ex Parte Katayama

Board of Patent Appeals and Interferences

Aug 20, 2002

08687039 (B.P.A.I. Aug. 20, 2002)

1 The examiner declined an invitation to explain the rejections at the oral hearing.
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for publication and is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIDEYUKI KATAYAMA
____________
Appeal No. 2001-1467
Application No. 08/687,039
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HEARD: July 9, 20021
____________
Before HAIRSTON, JERRY SMITH, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 2-15. The appellant appeals therefrom under
35 U.S.C. § 134(a). We reverse.
BACKGROUND
The appellant‘s invention is a radio pager that generate alert tones
corresponding to musical notes coded in a paging signal. A conventional paging signal
sent from a base station to a radio pager includes an address and a message. The
pager compares the address in the received signal with its own address; if the two
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Application No. 08/687,039
codes coincide, the pager alerts its user of the receipt of a message by outputting a
sound or vibration in a pattern stored in the pager. If different sound or vibration
patterns are stored in the pager, the base station adds a code designating one of the
patterns to the paging signal, and the pager selects and outputs the corresponding
pattern.
Because the fixed sound and vibration patterns must be stored in the pager, the
number of such patterns is limited by the storage capacity of the pager. Accordingly,
protests the appellant, conventional pagers requiring a large storage capacity and
having a limited choice of user alerts. (Spec. at 2).
In contrast, the message portion of the appellant’s paging signal includes
musical data. Based on melody start and end symbols therein, his radio pager
separates the message portion into textual data and the musical data. It then
generates melody frequencies corresponding to the musical data, modulates the
melody frequencies to output a melody, and drives a speaker therewith. With this
configuration, asserts the appellant, the pager can output alert tones in a variety of
patterns. (Id. at 13-14.) He adds that the pager does not require a memory to store
different patterns of alert tones. (Id. at 14.)
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A further understanding of the invention can be achieved by reading the following
claim:
4. A radio pager for receiving from a base station a paging signal
including an address code group and a message code group, said
message code group including message data and musical note data, and
displaying, upon a coincidence of an address code of said address code
group with an address code assigned to said radio pager, a message on
an LCD while causing a speaker to sound an alert tone, said radio pager
comprising:
a controller which separates the paging signal into the address
code group and the message code group, and separates the message
code group into the message data and the musical note data; and
a melody generator which generates said alert tone in response to
said coincidence, said alert tone corresponding to, and reproducing at
least a portion of the musical note data separated by said controller from
the message code group;
said controller further comprising a message conversion table for
storing a plurality of first frequencies, each corresponding to a respective
musical note data, and a plurality of first musical notes, said first musical
notes respectively corresponding to said plurality of said first frequencies.
Claims 2-6 stand rejected under 35 U.S.C. § 103(a) as obvious over International
Publication No. W0 96/06417 (“Dalvi”) in view of Thomas C. Bartee, Data
Communications, Networks, and Systems (1991) (“Bartee”) further in view of U.S.
Patent No. 4,713,808 (“Gaskill”) even further in view of either U.S. Patent No.
5,394,140 (“Wong”) or U.S. Patent No. 5,332,994 (“Kawashima”). Claims 7-15 stand
rejected under § 103(a) as obvious over Dalvi in view of Bartee further in view of Gaskill
Appeal No. 2001-1467 Page 4
Application No. 08/687,039
even further in view of either Wong or Kawashima and further in view of U.S. Patent
No. 4,885,577 (“Nelson”).
OPINION
Rather than reiterate the positions of the examiner or appellant in toto, we
address the main point of contention therebetween. The examiner makes the following
assertions.
The paging message of Dalvi includes "definable audio" (page 1 line 36).
The calling party in the Dalvi system composes not only the message but
also an audio compostition [sic] comprising a sequencd [sic] of audio
tones using the composer 105 which could be a keyboard or a musical
instrument (page 2 lines 30-35). The receiver 120 then sends the
message data to the display and communicates the audio composition to
th [sic] eaudio [sic] generator 220 which reproduces the audio composition
at step 425 (see page 4 lines 33-35). Clearly the received message is
responsible for the audio alert which is generated to indicate the message
is being displayed (see figure 4).
(Examiner's Answer at 6.) The appellant argues, "Dalvi does not teach or suggest ‘a
melody generator which generates said alert tone . . . , said alert tone corresponding to,
and reproducing at least a portion of the musical note data [contained within the
message being received]’, as required by Appellant's independent claim[s]. . . ."
(Appeal Br. at 6.)
“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.
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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.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
Here, independent claims 4, 7, and 8 specify in pertinent part the following
limitations: "[a] radio pager for receiving from a base station a paging signal including
an address code group and a message code group, said message code group including
message data and musical note data, . . . said radio pager comprising . . . a melody
generator which generates said alert tone in response to said coincidence, said alert
tone corresponding to, and reproducing at least a portion of the musical note data
separated by said controller from the message code group. . . ." Giving the
independent claims their broadest, reasonable construction, the limitations require
generating an alert tone reproduced from musical data coded in a paging signal.
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter is obvious. “In rejecting claims under 35 U.S.C. Section
103, the examiner bears the initial burden of presenting a prima facie case of
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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 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, Dalvi’s radio pager generates tones reproduced from musical data coded
in a paging signal. Specifically, “[t]he controller 210 . . . communicates the audio
composition to the audio generator 220 which reproduces 425 the audio composition.”
P. 4, ll. 33-35. The reference’s audio composition, however, is not an alert tone.
Rather than using the audio composition to alert a user of receipt of a selective call
message (“SCM”), Dalvi generates a separate alert tone. Specifically, “[u]pon
successfully storing the SCM in the memory 212, the controller provides an output to
the audio generator 220 causing the audio generator 220 to produce an audio alert.
The audio alert informs a subscriber that the SCM 30 has been received.” Id. at ll. 26-
30.
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Responsive to the audio alert, the user can then view the text of the SCM and
listen to its audio composition. Specifically, “[w]hen the subscriber initiates a read
message function, the controller 210 extracts the SCM from the memory 212, and
thereby obtains 415 the message data and the audio composition from the SCM. The
controller 210 sends the message data to the display 215, which displays the message
data, and communicates the audio composition to the audio generator 220 which
reproduces 425 the audio composition.” Id. at ll. 30-35.
The examiner fails to allege, let alone show, that the addition of Bartee, Gaskill,
Wong, Kawashima, or Nelson cures the deficiency of Dalvi. Absent a teaching or
suggestion of an alert tone reproduced from musical data coded in a paging signal, the
examiner fails to present a prima facie case of obviousness. Therefore, we reverse his
rejections of claim 4 and claims 2, 3, 5, 6, and 13, which fall therewith; of claim 7 and
claims 9, 10, and 14, which fall therewith; and of claim 8 and claims 11, 12, and 15,
which fall therewith.
CONCLUSION
In summary, the rejections of claims 2-15 under § 103(a) are reversed.
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Application No. 08/687,039
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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