Ex Parte Kianush et al

Board of Patent Appeals and Interferences

Oct 19, 2005

09822473 (B.P.A.I. Oct. 19, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte Kaveh Kianush, Oswald Josef Moonen, and
Jan Geert Prummel
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Appeal No. 2005-2151
Application No. 09/822,473
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ON BRIEF
____________
Before KRASS, DIXON, and NAPPI, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-3,
which are all of the claims pending in this application.
We AFFIRM.
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BACKGROUND
Appellants’ invention relates to a narrow band AM front end receiver. An
understanding of the invention can be derived from a reading of exemplary claim 1,
which is reproduced below.
1. Receiver comprising an RF stage for receiving an antenna signal from
an inductive antenna, a processing stage for processing the output signals
of the RF stage and an output for supplying an audio signal, characterized
in that the RF stage comprises electronically switched capacitors,
controlled by a switch control circuit, for adjusting front-end selectivity of
the RF stage to correspond to an established tuning frequency.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
MacDonald 2,148,633 Feb. 28, 1939
Yasooka Tadashi (Yasooka) JP 06-125280 Jun. 5, 1994
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejections, we make reference to the answer
(mailed Feb. 24, 2005) for the examiner's reasoning in support of the rejections, and to
the brief (filed Dec. 6, 2004) for appellants’ arguments thereagainst.
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OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
Only those arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants could have made but chose not to make in the brief
have not been considered. We deem such arguments to be waived by Appellants [see
37 CFR § 41.37(c)(1)(vii) effective September 13, 2004 replacing 37 CFR
§ 1.192(a)]. From our review of appellants’ brief, we find that appellants have included
headings for claims 1 and 3 as a grouping and claim 2 as a separate grouping.
35 U.S.C. § 102
Initially we note that anticipation by a prior art reference does not require either
the inventive concept of the claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference. See Verdegaal Bros. Inc.
v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied,
484 U.S. 827 (1987). A prior art reference anticipates the subject of a claim when the
reference discloses every feature of the claimed invention, either explicitly or inherently
(see Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361
(Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
Appeal No. 2005-2151
Application No. 09/822,473
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1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)); however, the law of anticipation
does not require that the reference teach what the appellants are claiming, but only that
the claims on appeal "read on" something disclosed in the reference (see Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984)).
From our review of the examiner’s rejection, responsive arguments and the
teachings of Yasooka, we find that the examiner has at least established a prima facie
case of anticipation of independent claim 1. We find that in the examiner’s responsive
arguments, the examiner has further elaborated upon the grounds of (new) rejection
made in the final rejection, and we find that appellants have not filed a reply brief to
further address the examiner’s further clarification of the grounds of rejection.
Therefore, we will accept the examiner’s statement of the grounds of rejection as
correct since it has not been rebutted by appellants. The totality of appellants’
argument in the brief is as follows:
there is no switching of capacitors under electronic control in Yasooka.
Rather, the switch 12c is, from all indications, manually switched.
Furthermore, the “frequency changing circuit” 3 of Yasooka is simply a
well known downconverter, i.e., RF mixer. It does not in any way affect the
capacitors12a and 12b. Note the description on the bottom third of page 2
of the translation of Yasooka, which describes the received frequency f1
being downconverted to an intermediate frequency f3 using a local
oscillator signal of frequency f2, where f3=f2=f1.
While the examiner repeats the statement of the rejection from the final rejection which
states “switch control circuit 3 for adjusting front tend selectivity of the RF stage,” the
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examiner clarifies in the responsive arguments that time 6 of Yasooka is the switch
control circuit used for controlling the switching 12c of electronically switching capacitors
12a and 12b and further directs attention to paragraph [0020]. We agree with the
examiner that Yasooka teaches an electronic formula frequency complement means 6
to select the appropriate frequency by adjusting the capacitance. (See also Yasooka
paragraph [0013].) We find no indication in the file that appellants filed a Reply Brief to
address the above teachings of Yasooka or the examiner’s reliance thereon. Therefore,
we find that appellants have not shown error in or rebutted the examiner’s prima facie
case of anticipation. Therefore, we will sustain the examiner’s rejection of independent
claim 1 and dependent claim 3.
35 U.S.C. § 103
Appellants argue that the teachings of MacDonald do not remedy the deficiencies
of Yasooka as argued with respect to the rejection under 35 U.S.C. § 102. We do not
find this argument to be specific with respect to the limitations of dependent claim 2.
Therefore, we do not find the argument persuasive, and we will sustain the rejection of
dependent claim 2.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-3 under 35 U.S.C.
§ 103 is AFFIRMED.
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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).
AFFIRM
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
JD/rwk
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