Ex parte Kuisma

Board of Patent Appeals and Interferences

Sep 10, 1999

08251014 (B.P.A.I. Sep. 10, 1999)

Application for patent filed May 31, 1994. According to1
appellant, this application is a continuation-in-part of
Application 07/887,079, filed May 22, 1992, now abandoned.
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(2) is not binding precedent of the Board.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 ERKKI KUISMA
__________
Appeal No. 97-3059
Application 08/251,0141
__________
ON BRIEF
__________
Before KRASS, JERRY SMITH, and FLEMING, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-3059
Application No. 08/251,014
2
This is a decision on appeal from the final rejection of
claims 1 through 7, 9 through 13 and 16 through 20, all of the
claims pending in the application.
The invention is directed to a radio telephone comprising
separate and distinct modules, each module is connected to a
basic module for operation of the telephone in different
modes.
Representative independent claim 1 is reproduced as
follows:
1. A radio telephone for operating in at least two signal
processing modes of operation, comprising:
a basic module (1) including basic circuitry consisting
of all circuitry which is common to the operation of the
telephone in both of the signal processing modes,
a discrete first supplementary module (2) including first
supplementary circuitry consisting of only non-common
circuitry for processing signals characteristic of a first one
of the modes of operation, and
a discrete second supplementary module (3) including
second supplementary circuitry consisting of only non-common
circuitry for processing signals characteristic of a second
one of the modes of operation,
wherein at least one of the first and second
supplementary modules are detachably coupled to the basic
module such that the telephone is operable in the first and
second modes according to which of the first and second
supplementary modules is coupled to the basic module.
Appeal No. 97-3059
Application No. 08/251,014
3
The examiner relies on the following references:
Mizikovsky 5,228,074 Jul. 13, 1993
(filed Apr. 15, 1991)
Tattari 5,265,158 Nov. 23, 1993
(filed May 11, 1992)
Claims 1 through 7, 9 through 13 and 16 through 20 stand
rejected under 35 U.S.C. § 103 as unpatentable over Mizikovsky
in view of Tattari.
Reference is made to the brief and answer for the
respective details of the positions of appellant and the
examiner.
OPINION
We reverse.
The instant claimed invention requires a radio telephone
which is operable in at least two modes. The telephone
comprises a plurality of modules. There is a basic module
which contains circuitry common to both modes of operation.
Then there are at least two discrete supplementary modules.
The first such supplementary module consists of non-common
circuitry necessary for operation in the first mode and the
second such supplementary module consists of non-common
circuitry necessary for operation in the second mode. Each
Appeal No. 97-3059
Application No. 08/251,014
4
supplementary module is connectable to the basic module in
order to operate in either the first or the second mode. This
describes independent claim 1.
Independent claim 11 allows for connecting both
supplemental modules to the basic module together.
Independent claim 16 describes the same invention as
independent claim 1 but in a somewhat different manner,
claiming “a primary supplemental module” to be connected to
the basic module and that the primary supplemental module is
selected from a group consisting of the first and second
supplemental modules.
Independent claim 20 recites the basic module and only a
first supplemental module detachably connected to the basic
module. This claim, however, makes it clear that the basic
module “is incapable of transmitting or receiving...unless the
first supplemental module or a second alternative supplemental
module is operably connected thereto.”
In applying the art to claim 20, the examiner contends
that Mizikovsky discloses everything but for the basic module
being “incapable of transmitting or receiving...” The
examiner then relies on Tattari for such a teaching and
Appeal No. 97-3059
Application No. 08/251,014
5
concludes that it would have been obvious to combine these
teachings. We disagree.
The “basic module” (analog phone 1) in Mizikovsky is
clearly capable of transmitting and receiving on its own
whether or not it is connected to the digital unit 5 (although
when so connected, it operates as a digital phone). Tattari
discloses the construction of a radio telephone from a
manufacturer’s standpoint. While it is true that one unit of
Tattari’s phone will be incapable of transmitting and
receiving until it is connected to another section, completing
the construction of the phone, we find no relevance to the
Mizikovsky device. Since the analog, or “basic,” unit of
Mizikovsky, is operative on its own, we fail to find any
reason for the artisan to have been led, from any teachings of
Tattari, to make unit 1 of Mizikovsky inoperable unless
connected to another unit. The examiner’s reasoning, i.e.,
“in order to have different modes of operation for the radio
telephone” [bottom of page 3 of the answer], is not persuasive
since Mizikovsky already discloses different modes of
operation without having to leave unit 1 inoperable unless
connected to another module. There would have been no reason,
Appeal No. 97-3059
Application No. 08/251,014
6
at least not for any articulated by the examiner, for the
artisan to modify Mizikovsky in such a manner as to make unit
1 inoperable unless connected to another module.
Looking at the proposed combination from the point of
view of Tattari, the radio telephone taught therein would not
be a reconfigurable modular multiple system radio telephone.
Once constructed, the radio telephone of Tattari is a
complete, finished product. There would be no module
interchange as in the instant claimed invention.
Moreover, each of the independent claims requires, in one
way or another, that the basic module contain circuitry common
to the operation of the telephone in both modes. Nothing in
either of the applied references suggests this claimed
limitation. Tattari is not directed to dual mode radio
telephones but, rather, to the construction of a radio
telephone. Once that telephone is constructed, it operates in
whatever signal mode for which it was designed. In
Mizikovsky, the “basic module,” 1, has circuitry which permits
complete operation by that unit alone. Not all of its
circuitry is common to both modes of operation, as required by
the instant claims. In response to this reasoning, the
Appeal No. 97-3059
Application No. 08/251,014
7
examiner argues [answer-page 7] that the language “all
circuitry which is common...” is indefinite. We do not find
the language indefinite. But, in any event, such a response
would be a ground for rejection under 35 U.S.C. 112, second
paragraph, a rejection which the examiner made earlier in the
prosecution and withdrew. It is not a persuasive rationale
for holding claimed subject matter obvious, within the meaning
of 35 U.S.C. § 103.
In our view, the examiner has failed to establish a prima
facie case of obviousness with regard to the instant claimed
subject matter.
Appeal No. 97-3059
Application No. 08/251,014
8
Accordingly, the examiner’s rejection of claims 1 through
7, 9 through 13 and 16 through 20 under 35 U.S.C. § 103 is
reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Michael R. Fleming ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jerry Smith )
Administrative Patent Judge )
tdc
Appeal No. 97-3059
Application No. 08/251,014
9
Mark F. Harrington
PERMAN & GREEN
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