Ex parte KOGA

Board of Patent Appeals and Interferences

May 27, 1999

08048188 (B.P.A.I. May. 27, 1999)

Application for patent filed April 20, 1993, entitled1
"Wireless Telephone Equipment Operating As A Cordless And
Cellular Telephone."
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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journal and (2) is not binding precedent of the Board.
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Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte TOSHIHIRO KOGA

Appeal No. 95-5053
Application 08/048,1881

HEARD: May 5, 1999

Before BARRETT, DIXON, and BARRY, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
Appeal No. 95-5053
Application 08/048,188
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DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1-9.
We reverse.
BACKGROUND
The disclosed invention is directed to a wireless
telephone equipment operating as a cordless and cellular
telephone. The cordless frequency reception band and the
cellular frequency reception band are combined into a combined
cellular/cordless frequency band and a single demodulating
circuit is used for demodulating the received cordless or
cellular signal.
Claim 1 is reproduced below.
1. A wireless telephone equipment comprising:
signal generation means for generating a first
information signal of an outgoing call;
first transmitting means for modulating a first
carrier with the first information signal generated by
the signal generation means to produce a first modulated
signal, wherein a frequency of the first carrier is in a
first frequency band corresponding to a cellular
frequency band;
second transmitting means for modulating a second
carrier with the first information signal generated by
the signal generation means to produce a second modulated
signal, wherein a frequency of the second carrier is in a
Appeal No. 95-5053
Application 08/048,188
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second frequency band corresponding to a cordless
frequency band that is different from the first frequency
band of the first carrier;
antenna means for transmitting either the first
modulated signal produced in the first transmitting means
or the second modulated signal produced in the second
transmitting means and receiving a third modulated signal
in which a third carrier is modulated with a second
information signal of an incoming call, wherein a
frequency of the third carrier is in a third frequency
band corresponding to a combined cellular/cordless
frequency band that is different from both the first
frequency band of the first carrier and the second
frequency band of the second carrier;
a single demodulating circuit for demodulating the
third modulated signal received in the antenna means to
reproduce the second information signal of the incoming
call;
outputting means for outputting the second
information signal reproduced in the demodulating
circuit; and
control means for controlling the operation of the
first transmitting means, the second transmitting means,
and the demodulating circuit.
The examiner relies on the following prior art
references:
Imazeki et al. (Imazeki) 4,618,997 October 21,
1986
Ichikawa et al. (Ichikawa) 4,776,040 October 4,
1988
Gillig et al. (Gillig) 4,989,230 January 29,
1991
Nakanishi et al. (Nakanishi) 5,144,258 September 1,
1992
Appeal No. 95-5053
Application 08/048,188
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(filed July 15,
1991)
Ichihara 5,196,806 March 23,
1993
(filed October 21,
1991)
Rose et al. 5,297,203 March 22,
1994
(effective filing date May 29,
1991)
Claims 1-4 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Gillig and Rose.
Claims 5 and 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Gillig and Rose, further in view of
Imazeki.
Claim 6 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Gillig, Rose, and Imazeki, further in view
of either Ichihara or Nakanishi.
Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Gillig and Rose, further in view of Imazeki
and Ichikawa.
We refer to the Final Rejection (Paper No. 10) and the
Examiner's Answer (Paper No. 14) (pages referred to as "EA__")
for a statement of the examiner's position and to the Appeal
Appeal No. 95-5053
Application 08/048,188
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Brief (Paper No. 13) (pages referred to as "Br__") for a
statement of appellant's arguments thereagainst.
OPINION
Appellant states that the claims do not stand or fall
together (Br6). However, appellant does not separately argue
the patentability of the dependent claims as required for
claims to be treated as not standing or falling together. See
37 CFR § 1.192(c)(5) (1994) ("[I]t will be presumed that the
rejected claims stand or fall together unless a statement is
included that the rejected claims do not stand or fall
together, and in the appropriate part or parts of the argument
under subparagraph (c)(6) of this section appellant presents
reasons as to why appellant considers the rejected claims to
be separately patentable" (emphasis added)). The claims will
be presumed to stand or fall together with representative
independent claim 1.
Gillig teaches a cordless/cellular telephone
corresponding to the prior art discussed in the specification
at Section 2.1. Gillig discloses that "[i]n the U.S.A., the
cordless radio channels are in the frequency band from 46-49
mHz and the cellular radio channels are in the frequency band
Appeal No. 95-5053
Application 08/048,188
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from 824-894 mHz" (col. 2, lines 48-51). The admitted prior
art of appellant's figure 3 shows that the cellular handset
transmits in the frequency band of 824-849 MHz and receives in
the frequency band of 869-894 MHz.
Rose teaches that conventional prior art cordless
telephones used a radio frequency band usually in the 46 and
49 MHz bands and used Narrow-Band Frequency Modulation (NBFM)
(col. 1, lines 27-35), but that revised FCC regulations
authorized cordless radio channels in the frequency band of
902-928 MHz (col. 2, lines 55-61). Rose teaches a cordless
telephone where the handset and the base unit communicate
using frequency shift keying (FSK) in the 902-928 MHz band
where, for example, the base unit operates in the frequency
band of 905.6-907.5 MHz and the handset operates in the
frequency band of 925.5-927.4 MHz (col. 4, lines 50-54).
Thus, the handset in Rose transmits in the frequency band of
925.5-927.4 MHz and receives in the frequency band of
905.6-907.5 MHz.
The examiner concludes that it would have been obvious to
one of ordinary skill in the art to modify the
cordless/cellular telephone of Gillig to use the 900 MHz band
Appeal No. 95-5053
Application 08/048,188
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instead of the 45 MHz band for the performance advantages of,
for example, shorter antenna wavelength (EA5). Appellant does
not contest this conclusion and we agree that this
modification would have been suggested to one of ordinary
skill in the art by Rose.
The limitations at issue are: (1) "receiving a third
modulated signal in which a third carrier is modulated with a
second information signal of an incoming call, wherein a
frequency of the third carrier is in a third frequency band
corresponding to a combined cellular/cordless frequency band
that is different from both the first frequency band of the
first carrier and the second frequency band of the second
carrier"; and (2) "a single demodulating circuit for
demodulating the third modulated signal received in the
antenna means to reproduce the second information signal of
the incoming call."
The examiner's position is (EA6):
Therefore, given the close [frequency] transmission
ranges between which the cordless telephone and cellular
telephone base stations transmit, it would have been
obvious to one of ordinary skill in the art, at the time
of invention, to have provided a common passband
filter/receiving means, thus receiving both frequency
ranges transmitted by either type of base station. The
motivation for implementing a common passband
Appeal No. 95-5053
Application 08/048,188
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filter/receiver means would have been to reduce redundant
operation by two different passband/receiver means whose
passband operation is within close proximity to each
other, and hence reducing the number of components, cost,
etc.
Appellant argues that the prior art does not suggest
providing a single demodulating circuit for both cordless
telephone and cellular telephone frequency ranges (Br7) and
"[i]ndeed, the prior art exclusively uses separate
demodulating circuits for cellular and cordless frequency
bands" (Br8). Appellant further argues that "[m]erely the
inherent proximity of the bands does not suggest to the
artisan use of a common demodulating circuit" (Br7).
Appellant still further argues that the examiner's motivation,
"to reduce redundant operation," is misplaced and not
supported by the art of record (Br8).
While the examiner has set forth a plausible explanation
why one of ordinary skill in the art would have sought to
provide a single demodulating circuit for demodulating
received signals in a combined frequency band including both
cellular and cordless received signals, the examiner has
presented no factual evidence of motivation that we can rely
Appeal No. 95-5053
Application 08/048,188
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on. Consequently, the examiner has failed to establish a
prima facie case of obviousness.
As recently stated by our reviewing court, the Court of
Appeals for the Federal Circuit in In re Dembiczak,
No. 98-1498 (Fed. Cir. April 28, 1999) (slip op. at 10): "Our
case law makes clear that the best defense against the subtle
but powerful attraction of hindsight-based obviousness
analysis is rigorous application of the requirement for a
showing of the teaching or motivation to combine prior art
references." A suggestion to combine or modify "may come
expressly from the references themselves. It may come from
knowledge of those skilled in the art that certain references,
or disclosures in the references, are known to be of special
interest or importance in the particular field. It may also
come from the nature of a problem to be solved, leading
inventors to look to references relating to possible solutions
to that problem." (Citations omitted.) Pro-Mold and Tool Co.
v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1630 (Fed. Cir. 1996). Of these three sources
of motivation (the nature of the problem to be solved,
teachings of the prior art, and the knowledge of persons of
Appeal No. 95-5053
Application 08/048,188
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ordinary skill in the art), the examiner relies on the
knowledge of persons of ordinary skill in the art because
neither Gillig nor Rose discloses the contested limitations of
combining two adjacent frequency bands into a single band or
using a single demodulating circuit. However, the knowledge
attributed to one of ordinary skill in the art must be
supported by evidence, not just plausible explanations of why
something might have been done or statements that it was
within the level of skill in the art. Cf. In re Rouffet,
149 F.3d 1350, 1358, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998)
("Because the Board did not explain the specific understanding
or principle within the knowledge of a skilled artisan that
would motivate one with no knowledge of Rouffet's invention to
make the combination, this court infers that the examiner
selected these references with the assistance of hindsight.").
Here, the examiner got to the point of proving that it would
have been obvious for the received frequency bands of cordless
and cellular telephones to be adjacent and then, at the very
limitations which constitute appellant's invention, used
hindsight rationale based on appellant's disclosure to supply
the motivation to use a common frequency band and a single
Appeal No. 95-5053
Application 08/048,188
It is noted that appellant describes different2
modulation schemes for cellular and cordless transmission. It
is stated that "[t]he modulation of the carrier in PLL
frequency synthesizer 61 [in the cellular transmitter 52] is
performed according to a frequency shift keying"
(specification, page 26, lines 17-19) and "[t]he modulation of
the carrier in the PLL frequency synthesizer 67 [in the
cordless transmitter 53] is performed according to a pulse
modulation" (specification, page 27, lines 11-12). This
implies a frequency shift keying demodulation scheme for
receiving cellular transmissions and a pulse modulation
demodulation scheme for receiving cordless transmissions,
which is seemingly inconsistent with providing a single
demodulation circuit. The specification does not describe the
demodulation scheme. We believe appellant should explain for
the record how a single demodulation circuit is used for two
different modulation schemes.
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demodulating circuit. The examiner could have, but did not
show examples of combining frequency bands that are adjacent,
but separated from each other, and/or a single demodulation
circuit for diverse communication schemes in other pieces of
equipment, which would have objectively demonstrated the
knowledge of a person of ordinary skill. We note also that
the examiner has not shown that cellular telephones and
900 MHz cordless telephones use the same
modulation/demodulation scheme, which would permit a single
demodulation circuit.2
Appeal No. 95-5053
Application 08/048,188
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For the reasons stated above, the examiner has failed to
establish a prima facie case of obviousness over Gillig and
Rose. The patents to Imazeki, Ichikawa, Nakanishi, and
Ichihara do not cure the deficiencies as to the rejection of
claim 1. The rejection of claims 1-9 is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 95-5053
Application 08/048,188
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ROSSI & ASSOCIATES
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