Ex parte Kohler

Board of Patent Appeals and Interferences

Jun 29, 1998

08088397 (B.P.A.I. Jun. 29, 1998)

Application for patent filed July 7, 1993. According to appellant,1
this application is a continuation of application 07/782,875, filed October
17, 1991, which is a continuation of 07/570,239, filed August 17, 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(2) is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HANS E.P. KOHLER
__________
Appeal No. 95-1901
Application 08/088,3971
__________
ON BRIEF
__________
Before HAIRSTON, FLEMING and TORCZON, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 15 through 23. Claims 1 through 14 have been canceled.
Appeal No. 95-1901
Application 08/088,397
2
The invention relates to a remote control system for the
wireless transmission of operating commands using infrared light.
In particular, Appellant discloses that the remote control system
(transmitter 1 shown in Figure 1) transmits a biphase signal TD
to an apparatus (receiver 2 shown in Figure 1). Appellant
discloses on page 7 of the specification that Figure 4B shows a
time diagram of the biphase signal TD which is generated by the
encoding circuit 15 of transmitter 1 shown in Figure 1. Each
biphase bit comprises a first bit interval 40 in which the
biphase signal has the logic value of the corresponding bit
message and a second bit interval 41 in which the biphase signal
has the inverted value. The first and second bit intervals
combined constitute the bit period. The biphase signal TD shown
in Figure 4B comprises a biphase state bit 42 of the value "1" in
the form of a marking bit with bit period 2T. On page 8 of the
specification, Appellant discloses that the decoder 22 of the
receiver 2 shown in Figure 2 distinguishes the marking bit from
the other bits by detecting the second interval of the marking
bit which is equal to the bit period T of the other bits.
The independent claim 15 is reproduced as follows:
15. A transmitter for use in a remote control system, the
transmitter comprising:
Appeal No. 95-1901
Application 08/088,397
3
generating means for generating a series of
message bits constituting a message to be
transmitted and a start word preceding the message
bits;
an encoding circuit for converting the message
bits into biphase bits having a predetermined bit
period which comprises a first and a second bit
interval and whose logic value is represented by a
pulse during one of the first and second bit
intervals; and
means for transmitting a biphase signal thus
obtained to a receiver;
wherein the encoding circuit converts the start
word into a biphase start bit having the pulse
during the first interval, said start bit being
distinguished from the other biphase bits in that
the second bit interval of the biphase start bit
is equal to the bit period of the other biphase
bits.
The Examiner relies on the following references:
Aggers et al. (Aggers) 4,894,826 Jan. 16, 1990
Schwendeman et al. (Schwendeman) 4,914,649 Apr. 03, 1990
Milheiser 4,730,188 Mar. 08, 1988
Setoguchi et al. (Setoguchi) 4,748,643 May 31, 1988
Lichtenberger et al. (Lichtenberger) 4,310,922 Jan. 12, 1982
Claims 15, 16, 19, 20 and 22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Milheiser in view of Setoguchi.
Claims 15, 16, 19 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Milheiser and Setoguchi further in view
of Aggers. Claims 17, 18 and 21 stand rejected under 35 U.S.C.
Appeal No. 95-1901
Application 08/088,397
4
§ 103 as being unpatentable over Milheiser, Setoguchi and Aggers
further in view of Lichtenberger. Claim 23 stands rejected under
35 U.S.C. § 103 as being unpatentable over Milheiser, Setoguchi
and Aggers further in view of Schwendeman.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
We will not sustain the rejection of claims 15 through 23
under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case. It
is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining obviousness,
the claimed invention should be considered as a whole; there is
no legally recognizable 'heart' of the invention." Para-Ordnance
Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d
Appeal No. 95-1901
Application 08/088,397
5
1237, 1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
Appellants argue on pages 4 through 9 of the brief that
neither Milheiser, Setoguchi, Aggers, Lichtenberger nor
Schwendeman teaches or suggests a second bit interval of the
biphase state bit which is equal to the bit period of the other
biphase bits. We note that all of the independent claims, claims
15, 19 and 22, recite this limitation. In particular, claim 15
recites "said start bit being distinguished from the other
biphase bits in that the second bit interval of the biphase start
bit is equal to the bit period of the other biphase bits."
Furthermore, claims 19 and 22 recite "said biphase start bit
being distinguished from the other biphase bits in that the
second bit interval of the biphase start bit is equal to the bit
period of the other biphase bits."
Upon a careful review of the references, we fail to find
that these references teach or or would have suggested a start
bit being distinguished from the other biphase bits in that the
Appeal No. 95-1901
Application 08/088,397
6
second bit interval of the biphase start bit is equal to the bit
period of the other biphase bits. We agree that Milheiser
teaches in column 6, lines 16-42, that the sync consists of 4 bit
periods of preamble information followed by a low level for one
and a half bit periods, but we fail to find any suggestion of
providing a biphase start bit having a second bit interval that
is equal to the bit period of the other biphase bits. Similarly,
we fail to find that Setoguchi or Aggers supply any suggestion or
teaching to modify Milheiser to provide a biphase start bit
having a second bit interval that is equal to the bit period of
the other biphase bits.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984).
We agree that Milheiser teaches a synchronization word
having bits of different frequency than the other bits, but the
Appeal No. 95-1901
Application 08/088,397
7
Examiner has failed to show that the prior art suggested the
desirability of the Examiner's proposed modification. Further-
more, we cannot find that Appellants' invention is obvious just
because Milheiser could have been modified to provide Appellant's
invention. This hindsight view is not evidence that those
skilled in the art would have reason to make the modification.
We are not inclined to dispense with proof by evidence when the
proposition at issue is not supported by a teaching in a prior
art reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in
order to establish a prima facie case. In re Knapp-Monarch Co.,
296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354
F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
Furthermore, we find that neither Setoguchi, Aggers,
Lichtenberger nor Schwendeman supplies this missing teaching.
Therefore, we find that the Examiner has failed to establish why
one having ordinary skill in the art would have been led to the
claimed invention by teachings or suggestions found in the prior
art.
Appeal No. 95-1901
Application 08/088,397
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We have not sustained the rejection of claims 15 through 23
under 35 U.S.C. § 103. Accordingly, the Examiner's decision is
reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-1901
Application 08/088,397
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Corporate Patent Counsel
U.S. Philips Corporation
Patent Department
580 White Plains Road
Tarrytown, NY 10591