Ex parte LE VAN SUU

Board of Patent Appeals and Interferences

Sep 18, 2000

08300599 (B.P.A.I. Sep. 18, 2000)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MAURICE GILBERT LE VAN SUU
____________
Appeal No. 1998-1105
Application No. 08/300,599
____________
ON BRIEF
____________
Before KRASS, FLEMING, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the rejection of claims 1-7 and 13-16. We reverse.
BACKGROUND
The invention at issue in this appeal relates to error
detection and correction of messages transmitted in a home
automation system. Such a system features controllers and
appliances to be controlled (e.g., televisions, refrigerators)
distributed over the power lines or mains of a home. Messages
Appeal No. 1998-1105 Page 2
Application No. 08/300,599
are transmitted from the controllers to the appliances over
the power mains.
Unfortunately, the power mains are the sites of the two
types of electrical disturbances that can affect the
transmission quality of a message. First, recursive parasitic
pulses deform the bits that form the messages. Second,
variations in the line impedance of an installation attenuate
the amplitude of the entire message. Either type of
disturbance prevents a receiver from understanding the
messages.
The invention aims to improve the accuracy of messages
transmitted on a transmission line supplied by the mains
system. More specifically, the cause of an error (viz.,
parasitic pulses or line attenuation) is first determined.
Once the cause is known, subsequent messages can be sent at
different transmission rates and, if necessary, synchronously
with the frequency of the mains.

Appeal No. 1998-1105 Page 3
Application No. 08/300,599
Claim 13, which is representative for our purposes,
follows:
13. A method for communicating over mains power
lines
which carry AC power at a known power line
frequency, comprising the steps of:
(a) initially transmitting a message over the
mains power lines at a first bit rate,
without synchronization to the power line
frequency; and
(b) if no acknowledgment is received after said
step (a), then retransmitting at least
part of the message, at a second bit
rate which is lower than said first
bit rate, with error correction coding
and with synchronization to the power
line frequency.
The references relied on in rejecting the claims follow:
Baker 4,479,215 Oct. 23, 1984
Clark et al. (Clark) 4,829,526 May 9, 1989
Sargeant et al. (Sargeant) 5,491,463 Feb. 13, 1996.
Claims 1-7 and 13-16 stand rejected under 35 U.S.C. § 103(a)
as obvious over Baker in view of Clark further in view of
Sargeant. Rather than repeat the arguments of the appellant
Appeal No. 1998-1105 Page 4
Application No. 08/300,599
As an aside, we observe the appellant's incorporation by1
reference of details of a recognition circuit. Specifically,
"[t]his circuit, which is indispensable for devices working at
several transmission rates, is described in detail in the
European patent application No. 93 40123.1, which is hereby
incorporated by reference." (Spec. at 13.) "In any
application which is to issue as a U.S. patent, essential
material may not be incorporated by reference to (1) patents
or applications published by foreign countries or a regional
patent office ... or (4) a foreign application." M.P.E.P.
§ 608.01(p). So as not to offend this prohibition, the
appellant may amend the specification to include the material
incorporated by reference. Id.
or examiner in toto, we refer the reader to the briefs and
answer for the respective details thereof.1
OPINION
In deciding this appeal, we considered the subject matter
on appeal and the rejection advanced by the examiner.
Furthermore, we duly considered the arguments and evidence of
the appellant and examiner. After considering the totality of
the record, we are persuaded that the examiner erred in
rejecting claims 1-7 and 13-16. Accordingly, we reverse.
Appeal No. 1998-1105 Page 5
Application No. 08/300,599
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. § 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
If the examiner fails to establish a prima facie
case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these principles in mind, we address the appellant's
argument and the examiner's response.
The appellant argues, "Baker does NOT appear to disclose
or suggest varying the transmission (baud) rate of the
messages to ensure that messages are received." (Appeal Br.
at 7.) The examiner responds, "'frequency' and 'rate' are
essentially the same ...." (Examiner's Answer at 7.)
Appeal No. 1998-1105 Page 6
Application No. 08/300,599
“Claims are not interpreted in a vacuum, but are part of
and are read in light of the specification.” Slimfold Mfg.
Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116, 1 USPQ2d
1563, 1566 (Fed. Cir. 1987) (citing Hybritech Inc. v.
Monoclonal Anti-bodies, Inc., 802 F.2d 1367, 1385, 231 USPQ
81, 94-95 (Fed. Cir. 1986); In re Mattison, 509 F.2d 563, 565,
184 USPQ 484, 486 (CCPA 1975)). Here, claims 1 and 4 each
specifies in pertinent part the following limitations:
a) the sending, by the transmitter, at a first
transmission rate, of the message to be transmitted
with a request for acknowledgment from the receiver,
b) when there is no acknowledgment owing to said
disturbances, the sending, by the transmitter,
at another transmission rate, of a correction
message ....
Similarly, claims 2, 3, 5, and 6 each specifies in pertinent
part the following limitations:
a) the transmission, by the transmitter, at a first
transmission rate, of the message to be
transmitted with a request for acknowledgment
from the receiver;
b) when there is no acknowledgment because of said
disturbances, the transmission, by the
transmitter, at another transmission rate, of a
correction message ....
Appeal No. 1998-1105 Page 7
Application No. 08/300,599
Also similarly, claim 7 specifies in pertinent part the
following limitations:
a) a transmitter sends a control message at a first
transmission rate, requesting acknowledgment of
said control message;
b) if no acknowledgment is received, said
transmitter
sends a new correction message ... at a new
transmission rate ....
Further similarly, claims 13 and 14 each specifies in
pertinent part the following limitations:
(a) initially transmitting a message over the mains
power lines at a first bit rate, without
synchronization to the power line frequency; and
(b) if no acknowledgment is received after said
step (a), then retransmitting at least part of
the message, at a second bit rate which is lower
than said first bit rate ....
Similarly, claims 15 and 16 each specifies in pertinent part
the following limitations:
(a) initially transmitting a message over the mains
power lines at a first carrier frequency and at
a first bit rate, without synchronization to the
power line frequency; and
(b) if no acknowledgment is received after said
step (a), then retransmitting at least part of
the message, at a second carrier frequency which
is different from said first carrier frequency
and at a second bit rate which is lower than
said first bit rate ....
Appeal No. 1998-1105 Page 8
Application No. 08/300,599
The specification expresses the claimed transmission rate in
"baud." (Spec. at 2.) In the appeal brief, furthermore, the
appellant uses the terms "transmission rate" and "baud rate"
interchangeably, (Appeal Br. at 7 ("Baker does NOT appear to
disclose or suggest varying the transmission (baud) rate of
the messages ...."), and offers to amend the claims to recite
"baud rate" rather than "transmission rate." (Id. ) Reading
the claims in light of the specification, the limitations of
claims 1-7 and 13-16 each requires sending messages at
different baud rates.
The examiner fails to show a suggestion of the
limitations in the prior art. “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 1085, 1087, 37 USPQ2d 1237, 1239
(Fed. Cir. 1995)(citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
(Fed. Cir. 1983)). “The 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
Appeal No. 1998-1105 Page 9
Application No. 08/300,599
desirability of the modification.” In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992) (citing
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984)). “It is impermissible to use the claimed
invention as an instruction manual or ‘template’ to piece
together the teachings of the prior art so that the claimed
invention is rendered obvious.” Id. at 1266, 23 USPQ2d at
1784, (citing In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991)).
Here, the examiner admits that Baker teaches sending
messages at different carrier frequencies. He specifically
admits, "Baker teaches a power-line-carrier communications
system; wherein, a message to be sent is transmitted on a
plurality of frequencies." (Examiner's Answer at 6.) The
reference confirms the admission by disclosing "a power-line-
carrier (PLC) communications system which dynamically avoids
bands of interference, by slow frequency hopping of the
carrier signal ...." Col. 2, ll. 54-57.
Appeal No. 1998-1105 Page 10
Application No. 08/300,599
Despite this teaching, the examiner alleges, "'frequency'
and 'rate' are essentially the same ...." (Examiner's Answer
at 7.) The prior art belies the allegation. A frequency is a
"rate of signal oscillation in hertz." Jerry M. Rosenberg,
Dictionary of Computers, Information Processing, and
Telecommunications 249 (2d ed. 1987) (copy attached).
In contrast, a baud is "a unit of signaling speed equal
to the number of discrete conditions or signal events per
second," Rosenberg, at 50 (copy attached); a baud rate is
"the transmission rate that is in effect synonymous with
signal events, usually bits per second." (Id.) Accordingly,
the claimed transmission or baud rate is a rate of signal
events per second. Comparison of these definitions evidences
that the carrier frequency varied in Baker is distinct from
the transmission rate varied in the claims. Baker evidences
the distinction by referring to the turning on or off of the
carrier frequency during a bit time interval, col. 3, ll. 50-
54, which are discrete signal events. The examiner fails to
allege, let alone show, that Clark and Sargeant remedy the
defects of Baker.
Appeal No. 1998-1105 Page 11
Application No. 08/300,599
Because Baker teaches varying a carrier frequency rather
than varying a baud rate, we are not persuaded that teachings
from the prior art would have suggested the limitations of
"the sending, by the transmitter, at another transmission
rate, of a correction message"; "the transmission, by the
transmitter, at another transmission rate, of a correction
message"; "said transmitter sends a new correction message ...
at a new transmission rate"; "retransmitting at least part of
the message, at a second bit rate which is lower than said
first bit rate"; or "retransmitting at least part of the
message ... at a second bit rate which is lower than said
first bit rate ...." The examiner fails to establish a prima
facie case of obviousness. Therefore, we reverse the
rejections of claims 1-7 and 13-16 as obvious over Baker in
view of Clark further in view of Sargeant.
CONCLUSION
In summary, the rejection of claims 1-7 and 13-16 under
35 U.S.C. § 103(a) as obvious over Baker in view of Clark
further in view of Sargeant.
Appeal No. 1998-1105 Page 12
Application No. 08/300,599
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1998-1105 Page 13
Application No. 08/300,599
Christopher F. Regan
Allen, Dyer, Doppelt, Milbrath & Gilchrist
P.A., P.O. Box 3791
Orlando, Florida 32802-3791