Ex parte KAY

Board of Patent Appeals and Interferences

May 12, 1998

07953320 (B.P.A.I. May. 12, 1998)

Application for patent filed September 25, 1992. According to appellant, this application is a1
continuation of Application 07/622,243, filed December 6, 1990.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STANLEY E. KAY
_____________
Appeal No. 95-3346
Application 07/953,3201
______________
ON BRIEF
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Before URYNOWICZ, KRASS and FLEMING, Administrative Patent Judges.
URYNOWICZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 5-27, all the claims pending in the application.
The invention pertains to a method of transmitting messages. Claims 5 and 12 are illustrative
and read as follows:
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Application 07/953,320
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5. A method for transmitting messages on any of a predetermined plurality of different carrier
frequencies comprising:
transmitting a particular message from one station to another station at a first power level, at a
first time and on a first carrier frequency; and
transmitting the particular message at a second different power level, at a second different time
and on a second different carrier frequency.
12. In a radio telephony system having a plurality of transmitting stations for transmitting
information packets to other stations, wherein each information packet is transmitted in one of a
plurality of carrier frequency channel slots and wherein some of the slots carry control messages
independently of the information packets for controlling the transmission of the information packets
between stations, a method for transmitting the control messages comprising:
transmitting a particular control message independently of any information packet from one
station to another station in a first slot at a first time and a first carrier frequency the particular control
message relating to a particular information packet; and
transmitting the particular control message independently of any information packet in a second
slot at a second different time and a second different carrier frequency; and
transmitting the particular information packet in a third slot.
The references relied upon by the examiner as evidence of obviousness are:
French 4,232,392 Nov. 04, 1980
Lee 4,616,364 Oct. 07, 1986
McRae et al. (McRae) 4,639,937 Jan. 27, 1987
Nazarenko et al. (Nazarenko) 4,835,731 May 30, 1989
The appealed claims stand rejected as follows:
Claims 5-10 are rejected under 35 U.S.C. § 103 as unpatentable over Lee in view of French.
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Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over Lee in view of French and
Nazarenko.
Claims 12, 13, 15, 16 and 18-27 are rejected under 35 U.S.C. § 103 as unpatentable over
Lee, McRae and Nazarenko.
Claims 14 and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Lee, McRae,
Nazarenko and French.
The respective positions of the examiner and the appellant with regard to the propriety of these
rejections are set forth in the final rejection (Paper No. 18), the examiner's answer (Paper No. 21), the
examiner’s answer to the reply brief (Paper No.26), and the appellant's brief (Paper No. 20) and reply
brief (Paper No. 22).
Appellant's Invention
Appellant’s invention relates to a mobile radio telephone system and involves a method for
transmitting a control message over a fading or shadowed, error-prone channel. Each time a message
for controlling an information packet is to be transmitted, the message is transmitted at different times, at
different power levels and on different frequencies. Preferably, three transmissions are made, each at a
different time, power level and frequency. Figure 6 is a chart illustrating subslots in a repeating frame
used for transmission of a control message. Each slot 1-
6 includes four subslots. Each slot is at a different frequency and each slot succeeds a previous slot in
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time. Figure 6 illustrates a reverse allocation request, that is, a request from a mobile station to allocate
a channel to the mobile station. The reverse allocation request is transmitted in the third subslot of slot
2, the fourth subslot of slot 4 and the second subslot of slot 5. In Figure 6 the request is transmitted at
three different times, in three different slots, and on three different frequencies.
The Rejection under 35 U.S.C. §103
Claims 5-10
After consideration of the positions and arguments presented by both the examiner and the
appellant, we will sustain the rejection of claims 5, 6 and 10 but will not sustain the rejection of claims
7-9. With respect to the rejection of claims 5, 6 and 10, we agree in general with the comments made
by the examiner; we add the following discussion for emphasis.
At page 5 of the reply brief, appellant contends that there is no suggestion in the references,
Lee and French, that they are combinable and urges that “…the environments in which they operate
and the solutions that they teach are very different.” Appellant urges that “…the Examiner has made no
showing that it would be obvious to combine them.”
Contrary to appellant’s position, the examiner has stated to the effect that the suggestion to
combine the teachings of Lee and French, each of which relates to radio transmission in mobile phone
environments, stems from the fact that the teachings of the references are to protect and preserve radio
telephone messages. We agree with the examiner’s position. Protection and preservation of the
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transmitted signal in Lee is accomplished by providing time and frequency
diversity of the signal and in French the same is accomplished by providing time and power diversity of
the signal. One of ordinary skill in the art at the time the invention was made would have recognized
that the power diversity teaching of French with respect to transmitted signals was applicable to
transmitted signals of Lee to aid in the protection and preservation of Lee’s transmitted signals and, in
the reverse sense, that the frequency diversity teaching of Lee with respect to transmitted signals was
applicable to transmitted signals of French to aid in the protection and preservation of French’s
transmitted signals. Section 103 requires us to presume that the artisan has full knowledge of the prior
art in his field of endeavor and the ability to select and utilize knowledge therefrom. In re Deminski,
796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986).
Appellant has argued that the prior art does not teach random selection of frequencies, times or
power. At page 10 of his specification, appellant discloses that random selection increases the
probability of successful signal transmission. Dependent claims 7-9 include random selection. The
examiner’s position, stated without any basis in his answer, is that Lee selects times and frequencies
“substantially at random”. In his reply brief at pages 1 and 2, appellant has analyzed Lee’s relevant
disclosure to show that Lee does not provide random selection. The examiner’s answer to the reply
brief does not address appellant’s analysis of Lee.
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We find appellant’s analysis of the relevant portion of Lee to be reasonable and factual.
Whereas random selection has not been shown to be taught by Lee or the other prior art, and further in
view of the fact that the examiner does not contend random selection would have been an obvious
modification of the prior art, we hold that the examiner has not made a prima facie showing of
obviousness of claims 7-9. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-1784 (Fed.
Cir. 1992).
The Rejection under 35 U.S.C. § 103
Claims 11-27
In setting forth the rejections of these claims, the examiner has taken the position that
Nazarenko teaches transmitting control messages independently of information packets. The examiner
relies on the disclosure of Nazarenko at column 26, lines 10-45, in support of his position.
In opposition to the rejection of claims 11-27, appellant argues, inter alia, that although the
two types of messages taught by the reference and relied upon by the examiner, “control channel
messages” and “working channel messages”, are transmitted independently, they are not analogous to
the control messages and information packets of the claims. At page 4 of the reply
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brief, appellant discusses Nazarenko’s disclosure at columns 10 and 16 to show that this is the case
because the “control channel messages” of Nazarenko do not control the transmission of “working
channel messages” between stations. In the answer to the reply brief, the above position of appellant is
not addressed by the examiner.
At column 26, lines 10-45, the reference discloses that “control channel messages” and
“working channel messages” are transmitted independently. However, there is no teaching in the above
disclosure that the “control channel messages” control the transmission of “working channel messages”.
Furthermore, we agree with appellant’s unrebutted analysis of Nazarenko concerning columns 10 and
16 and, accordingly, will not sustain the rejection of claims 11-27. The examiner has not established
where in Nazarenko it is taught that (1) slots carry control messages independently of information
packets for controlling the transmission of information packets between stations, as in independent
claim 12, or (2) a radio channel assignment (control message) is transmitted to a controlled station for
indicating to the controlled station the channel (slot) upon which the burst (information packet) will be
transmitted, and the burst is transmitted on the indicated channel between stations, as in independent
claims 18 and 24, and dependent
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claim 11. In view of the above discussion, it is clear that the examiner has not made out a prima facie
case of obviousness utilizing Nazarenko and the art with which it has been combined, and we will not
sustain the rejections of claims 11-27.
Summary
In summary:
a) the decision of the examiner to reject claims 5, 6 and 10 under 35 U.S.C. § 103 as
unpatentable over Lee in view of French is affirmed.
b) the decision of the examiner to reject claims 7-9 under 35 U.S.C. § 103 as unpatentable
over Lee in view of French is reversed.
c) the decision of the examiner to reject claim 11 under 35 U.S.C. § 103 as unpatentable over
Lee in view of French and Nazarenko is reversed.
d) the decision of the examiner to reject claims 12, 13, 15, 16, and 18-27 under 35 U.S.C. §
103 as unpatentable over Lee, McRae and Nazarenko is reversed.
e) the decision of the examiner to reject claims 14 and 17 under 35 U.S.C. § 103 as
unpatentable over Lee, McRae, Nazarenko and French is reversed.
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No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-3346
Application 07/953,320
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S.E. WALTERS
HUGHES AIRCRAFT COMPANY
BLDG. C1, MAIL STATION A126
P.O. BOX 80028
LOS ANGELES, CA 90080-0028