Ex parte Komoda

Board of Patent Appeals and Interferences

Aug 8, 2000

08364000 (B.P.A.I. Aug. 8, 2000)

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not binding precedent of the Board.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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MOTOYOSHI KOMODA
__________
Appeal No. 1998-0493
Application 08/364,000
___________
ON BRIEF
___________
Before JERRY SMITH, BARRETT, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 1 through 6, all claims pending in this
Appeal No. 1998-0493
Application 08/364,000
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application. The invention relates to a cellular
telephone feature which reduces unused channel time. In
particular, when the battery voltage drops below an operable
level, it takes several seconds for the base station to
recognize that the cellular unit has stopped communication.
The invention minimizes these wasted seconds by informing the
user and initiating a timer count when the battery voltage
falls below a certain level. After the timer has reached a
certain count, and the battery voltage is still low, the unit
forcibly terminates communication after notifying the user.
When terminating, the unit executes a conversation ending
procedure, signaling the base station that it may release the
channel. This conversation ending procedure saves the base
station several seconds in realizing the unit has stopped
communication.
Representative independent claim 1 is reproduced as
follows:
1. A radio telephone apparatus comprising:
a power source;
a voltage measuring means for measuring an output
Appeal No. 1998-0493
Application 08/364,000
Kerr and Lee did not appear in the final rejection. The1
Examiner has introduced them for the sole purpose of
3
voltage of said power source;
decision means for determining whether the voltage
measured by said voltage measuring means is lower than a
predetermined voltage;
a radio section for transmitting signals to and
receiving signals from a fixed telephone network and other
radio telephone apparatuses, via a base station, connected to
said radio telephone apparatuses, occupying a channel of
communication;
control means for controlling said radio section,
said control means comprising time counting means started in
response to an output of said decision means for counting a
predetermined period of time, and conversation ending means
responsive to an output of said time counting means for
executing a conversation ending procedure when a conversation
is under way, to signal said base station to release said
channel of communication.
The Examiner relies on the following references:
Sato et al. 4,933,963 Jun. 12, 1990
(filed Nov. 23, 1988)
Hewitt 5,095,308 Mar. 10, 1992
(filed Jan. 9, 1990)
Saito EP 0 280 501 Aug. 31, 1988
Kerr, Cellular Telephone Technology and Practice, George
Washington University CEEP course, 1986, 1994, page 4-16.1
Appeal No. 1998-0493
Application 08/364,000
substantiating the “Official Notice” portion of the final
rejection. Appellant has considered them in the reply brief.
Although no publication date appears, Appellant has not2
contested its use as prior art.
4
Lee, Mobile Cellular Telecommunications Systems, McGraw-Hill
Book Company, pages 77, 84 and 85.2

Claim 1 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Saito in view of Kerr or Lee.
Claim 2 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Saito in view of Kerr or Lee and
further in view of Hewitt.
Claims 3 through 6 stand rejected under 35 U.S.C. §
103 as being unpatentable over Saito in view of Kerr or Lee
and further in view of Hewitt and Sato.
Rather than reiterate the arguments of Appellant and
the Examiner, reference is made to the brief, reply brief and
answer for the respective details thereof.
OPINION
Appeal No. 1998-0493
Application 08/364,000
5
After a careful review of the evidence before us, we
will not sustain the rejection of claims 1 through 6 under
35 U.S.C. § 103.
At the outset, we note that Appellant has indicated
on page 4 of the brief all claims stand or fall together with
claim 1.
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 reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan 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 1237,
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Application 08/364,000
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1239 (Fed. Cir. 1995) (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)).
With regard to the rejection of claim 1, the
Examiner takes the position that Saito teaches all the
limitations of the claim except signaling the base station to
release the channel. The Examiner then takes Official Notice
that it is well known to signal the base station to release
the channel, and evidences this notice via Kerr and Lee. The
Examiner indicates
that it would have been obvious to one of ordinary skill in
the art to combine the well known channel release with Saito.
(Answer-pages 3 and 4.)
Appellant does not contest that Saito teaches the
basic radio telephone limitations recited in claim 1.
Appellant even acknowledges that Saito provides for
conversation ending. However, Appellant argues that Saito’s
conversation ending places the unit in a waiting state until
such time that operating voltage is restored, and then resumes
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Application 08/364,000
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communication. (Brief-pages 5 and 6.) Appellant states
“Thus, the channel is maintained, presumably in the hope that
operating voltage level would be restored and communication
resumed. This is contrary to the claimed invention wherein
the base station is signalled to drop the channel, and
communication is forcibly terminated.” (Brief-pages 6 and 7.)
We acknowledge the Examiner’s evidence, and we
believe Appellant agrees, that it is well known to terminate a
conversation and signal the base station to drop the channel
(evidenced by Kerr and Lee). However, we agree with
Appellant. Although Saito terminates conversation upon
detection of a low voltage, it then goes into a “waiting
state”. There is nothing in the record to indicate Saito’s
“waiting state” is the same as terminating a conversation and
relinquishing the channel. Saito’s “waiting state” appears to
be a non relinquishing of the channel. This is indicated by
Saito wherein it states:
Unless the normal voltage level in restored even
after the lapse of three seconds from the voltage
drop, the mobile radiotelephone stays in an
inoperable state. (Emphasis added.)(Column 1, lines
23-26.)
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Even if it were obvious to combine Kerr or Lee with
Saito to perform a conventional conversation ending procedure,
wherein the base station is signaled to release the channel,
we find no teaching or suggestion to apply this procedure to
Saito’s “waiting state”. As argued by Appellant (brief-page
4), such a conclusion could only come from impermissible
hindsight.
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). "Obviousness may
not be established using hindsight or in view of the teachings
or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
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As pointed out above, Appellant uses a conventional
conversation ending procedure (e.g., Kerr or Lee) to signal a
base station for a release of channel when battery voltage
becomes low. Saito ends conversation when battery voltage
becomes low, but goes into a “waiting state”. We are
unconvinced that Saito’s “waiting state” is meant to release
the channel. Thus we find no motivation to combine Kerr or
Lee with Saito for use when battery voltage becomes low.
Accordingly, we will not sustain the Examiner’s rejection of
claim 1, and likewise claims 2 through 6 which depend from
claim 1 and include the same unmet limitations.
We have not sustained the rejection of claims 1
through 6 under 35 U.S.C. § 103. Accordingly, the Examiner's
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Application 08/364,000
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decision is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART N. HECKER )
Administrative Patent Judge )
SNH:pgg
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Appeal No. 1998-0493
Application 08/364,000
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Washington, DC 20037-3202