Ex parte Lewis et al.

Board of Patent Appeals and Interferences

Sep 22, 2000

07991013 (B.P.A.I. Sep. 22, 2000)

1
The opinion in support of the decision being entered today was
not written for publication is not binding precedent of the
Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RUSSELL F. LEWIS, MARK B. SHADOWENS,
GERHARD P. H. DEFFNER and GERALD G. BIRDWELL
__________
Appeal No. 1997-1014
Application 07/991,013
___________
ON BRIEF
___________
Before KRASS, JERRY SMITH, and LALL, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 1, 2, 11 and 12. Claims 3-10 and 13-24
Appeal No. 1997-1014
Application 07/991,013
2
have been indicated by the examiner as being directed to
allowable subject matter.
The invention pertains to a multiple purpose
communication system as set forth in representative
independent claim 1, reproduced as follows:
1. Apparatus for integrating communication functions,
information storage and processing functions, and control
functions, comprising:
a plurality of electrical circuits for communicating
information, including a processor and an associated memory
for executing communication, control, and information programs
and applications with the electrical circuits;
a microphone for entering information into the apparatus;
a speaker for receiving information from the apparatus;
an interactive visual display for providing an interface
between the apparatus and a user of the apparatus;
a receptacle for installing at least one of a plurality
of interchangeable application modules into the apparatus;
each application module having an electrical circuit for
executing communication programs and applications in
cooperation with the electrical circuits of the apparatus; and
voice recognition means for activating selected
communication programs and applications.
The examiner relies on the following references:
Appeal No. 1997-1014
Application 07/991,013
3
Schnars et al (Schnars) 4,797,924 Jan. 10,
1989
Takagi et al (Takagi) 5,335,273 Aug. 2,
1994
Thompson et al (Thompson) 5,335,276 Aug. 2,
1994
Sharp Electronics, “Wizard, The Gift of Organization” (1992)
Claims 1 and 2 stand rejected under 35 U.S.C. 103 as
unpatentable over Takagi in view of Sharp and Schnars. Claims
11 and 12 stand rejected under 35 U.S.C. 103 as unpatentable
over Takagi in view of Sharp.
An obviousness-type double patenting rejection against
claims 1-24, entered as a new ground in the answer, was later
withdrawn by the examiner in response to a terminal disclaimer
filed by appellants.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
Among other things, each of independent claims 1 and 11
requires “each application module having an electrical circuit
Appeal No. 1997-1014
Application 07/991,013
4
for executing communication programs and applications in
cooperation with the electrical circuits” of either the
apparatus [claim 1] or the communication device [claim 11].
The examiner finds this claim limitation to be met by the
separate calculator or clock modules of Takagi. We disagree.
There is no teaching in Takagi to suggest that the
disclosed clock and calculator modules are anything but
separate units merely placed in a compartment on the telephone
apparatus to give the telephone extra functional capabilities.
Takagi does not
suggest that these modules are interconnected with any
electrical circuits in the main body of the telephone in any
manner. To suggest that the modules are anything but wholly
contained units in and of themselves which are merely placed,
alternatively, in a compartment of the larger device amounts
to mere speculation.
Now it should be noted, and appellants recognize, that
while the calculator and clock modules of Takagi are not
interconnected to any circuitry in the body of the telephone,
Appeal No. 1997-1014
Application 07/991,013
5
there is a third embodiment which includes an optical
connection whereby data from a telephone module is transferred
to the main body. This, however, does not necessarily suggest
electrical circuits of the module being “in cooperation” with
electrical circuits of the apparatus. But, Takagi also
discloses a fourth embodiment whereby a telephone memorandum
module 76 has a male connector 82 adapted to engage a female
connector 74 of member 72. Now, appellants contend that
“nowhere does Takagi teach or suggest that female connector 74
and male connector 82 are electrical connectors” and
appellants conclude that Takagi’s disclosure relates only to
“structural connectors” [reply brief-page 5]. We disagree
with that assessment because Figure 20 of Takagi, taken
together with the description, at column 7, lines 32-39, that
female connector 74 on mounting member 72 is connected through
a
flexible printed wiring board 94 to the printed wiring board
provided in the body 2, so that data can be transmitted from
the telephone memorandum module to the body 2, is a clear
Appeal No. 1997-1014
Application 07/991,013
6
indication, to us, that there is an electrical connection
between the module and the main body.
However, even though Takagi may show an electrical
connection between the main body and the module, the instant
claims still require that the electrical circuit of the module
execute communication programs and applications in cooperation
with the electrical circuits of the apparatus. The examiner’s
rejection provides no showing of this limitation in any of the
applied references nor does the examiner come to grips with
the question as to why it would have been obvious to modify
the applied references.
Since the module must be capable of executing
communication programs and applications, the module must have
a processor. There is no indication that the telephone
memorandum module of Takagi has such a processor nor is it
seen that such a memorandum module for merely passing data
would require such a processor. It is likely that the
calculator module of Takagi has its own processor but this
module is not disclosed as being, in any way, electrically
connected to the apparatus. But even if the module of Takagi
Appeal No. 1997-1014
Application 07/991,013
7
had its own processor and was electrically connected to
the apparatus, the claims still require that the module’s
electrical circuit execute communication programs and
applications (a function not suggested by Takagi or any other
applied reference) and, moreover, that it do so “in
cooperation with the electrical circuits” of the apparatus, or
communication device. The electrical circuits of the
apparatus must also have a processor. There is clearly no
indication in Takagi that both the main body of the telephone
and the module have processors nor does it seem even likely
that Takagi would even need a processor in each of the main
body and the module in view of the rather simple and mundane
functions described by Takagi, i.e., transfer of data from a
telephone memorandum module to the main body. In any event,
there clearly is no disclosure or suggestion in Takagi, or in
any other applied reference, for processing circuitry in each
of the main body apparatus and the module whereby there is
interaction between the two such that an electrical circuit in
the module executes communication programs and applications in
Appeal No. 1997-1014
Application 07/991,013
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cooperation with the electrical circuits of the apparatus or
communication device.
Accordingly, we hold that the examiner has not
established a prima facie case of obviousness of the instant
claimed subject matter and we will not sustain the rejection
of claims 1, 2, 11 and 12 under 35 U.S.C. 103.
The examiner’s decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 1997-1014
Application 07/991,013
9
EAK:pgg
Robby T. Holland
Texas Instruments Incorporated
P.O. Box 655474, M/S 219
Dallas, TX 75265