Ex parte Lubin et al.

Board of Patent Appeals and Interferences

Aug 15, 2001

08769036 (B.P.A.I. Aug. 15, 2001)

The examiner states under the heading "Status of Claims" that claims1
83, 84, 86, and 87 are allowed, but then includes claims 83, 84, and 87 in the
statement and discussion of the rejection. We assume from the prosecution
history that claims 83, 84, 86, and 87 contain allowable subject matter, that
claims 83, 84, and 87 were inadvertently included in the rejection, and that
none of claims 83, 84, 86, and 87 are before us on appeal.
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 55
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL L. LUBIN, SETON P. KASMIR, KATHRYN A. KUBASAK,
GREGORY A. HEIN, SURENDRA B. MANDAVA, CHANCHAI POONPOL, SHAHIN
HEDAYAT, and DONALD W. BURTIS
____________
Appeal No. 1999-2028
Application No. 08/769,036
____________
ON BRIEF
____________
Before JERRY SMITH, FLEMING, and GROSS, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 67 through 69, 71, 73 through 82, 88
through 93, and 95. Claims 70 and 94 have been indicated as
being allowable.1
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Application No. 08/769,036
2
Appellants' invention relates to a telephone handset that
includes circuitry that transceives both analog cellular
signals and also cellular digital packet data (CDPD) signals.
Claim 67 is illustrative of the claimed invention, and it
reads as follows:
67. A telephone handset that communicates with analog
cellular signals and with cellular digital packet data (CDPD)
signals over frequency channels, comprising:
analog cellular signal circuitry that transceives analog
cellular signals;
CDPD signal circuitry that transceives CDPD signals; and
a control processor, coupled to the discriminating
circuit, that controls the analog cellular signal circuitry
and the CDPD signal circuitry such that the CDPD signals are
transceived over the same frequency channels as the analog
cellular signals.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Braitberg et al. (Braitberg) 5,479,479 Dec.
26, 1995
Claims 67 through 69, 71, 73 through 84, 87 through 93,
and 95 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Braitberg.
Reference is made to the Examiner's Answer (Paper No. 51,
mailed April 14, 1998) for the examiner's complete reasoning
Appeal No. 1999-2028
Application No. 08/769,036
Regarding the issue raised in the Reply Brief concerning the2
examiner's references to willful false statements and fraud, the examiner is
reminded of the proper language to be used in rejecting claims, as set forth
in MPEP § 707.07(d).
Although appellants include claim 94 as part of Group I, we will not3
treat claim 94 as it has been indicated as containing allowable subject matter
and is, therefore, not before us on appeal.
3
in support of the rejection, and to appellants' Brief (Paper
No. 49, filed February 26, 1998) and Reply Brief (Paper No.2
52, filed June 15, 1998) for appellants' arguments
thereagainst.
OPINION
As a preliminary matter, we note that appellants indicate
on pages 4-5 that the claims are not to stand or fall
together. Appellants list claims 67, 76, 78 through 82, 88,
90, 92, and 94 together as Group I, claims 68, 73, and 93
together as Group II, and claims 69, 71, 74, 75, 77, 89, 91,
and 95, respectively, as Groups III through X, but does not
argue claim 77 separately. We will treat the claims
substantially according to appellants' groupings , with claim3
77 grouped with claim 67, from which it depends, and with
claims 67, 68, 69, 71, 74, 75, 89, 91, and 95 as
representative of Groups I through IX, respectively.
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Application No. 08/769,036
4
We have carefully considered the claims, the applied
prior art reference, and the respective positions articulated
by appellants and the examiner. As a consequence of our
review, we will affirm the obviousness rejection of claims 67,
68, 71, 73 through 82, 88, 90 through 93, and 95 and reverse
the obviousness rejection of claims 69 and 89.
Regarding Group I, appellants assert (Brief, page 6) that
Braitberg does not mention CDPD nor paging. Also, appellants
contend (Brief, page 11) that "nothing in Braitberg ...
permits handling of both analog cellular signals and CDPD
signals." As pointed out by the examiner (Answer, page 10),
paging is not recited in the claims, and, therefore, cannot be
relied upon as evidence of non-obviousness. Further, as the
examiner combines appellants' admissions as to the prior art
with Braitberg for the limitations concerning CDPD,
appellants' argument that Braitberg does not mention CDPD
fails to address the rejection.
Appellants argue (Brief, page 7) that their disclosure of
"the difficulty of integrating the features of AMPS voice
transmission with applications such as data transmission,
electronic mail, duplex paging, etc. ... teaches strongly away
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5
from any suggestion that it would be appropriate to combine
CDPD as disclosed, with Braitberg." We disagree.
We concede that appellants disclose that AMPS voice
transmission and data transmission are difficult to integrate.
However, Braitberg states (column 12, lines 22-34) that the
phone may be a conventional AMPS type phone, but that it "must
be modified to provide a data path for digital data through
connector 48." Braitberg continues that "it will be assumed
that cellular phone 10 contains circuitry to packetize and
depacketize digital data transmitted and received by the
cellular phone." Further, Braitberg indicates (column 12,
lines 58-61) that cellular phone 10 receives RF signals and
"decides internally whether the RF signals contain voiceband
or data/control information." Thus, Braitberg integrates AMPS
voice transmission with data transmission in a single
telephone handset, though Braitberg does not specify CDPD as
the type of data signals.
Appellants admit (specification, page 9, lines 1-6) that
CDPD was "developed to overcome some of the undesirable
effects of transmitting raw digital data over the AMPS
system," and (specification, page 12, lines 27-28) that "CDPD
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has been adopted as a national standard by the cellular
industry." In light of these admissions, it would have been
obvious to the skilled artisan to modify the handset of
Braitberg to accommodate CDPD type packet data signals to
conform with the national standard for such data transmission.
The level of the skilled artisan should not be underestimated.
See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed.
Cir. 1985). Accordingly, we will affirm the rejection of
claim 67, and of the claims grouped therewith, claims 76
through 82, 88, 90, and 92.
As to the second group of claims, appellants argue
(Brief, page 12) that Braitberg fails to show the analog
cellular signal circuitry and the CDPD signal circuitry
operatively coupled to a single, common radio frequency
transceiver, as recited in claim 68. However, as indicated
above, Braitberg discloses (column 12, lines 58-61) that RF
signals are received by the telephone via an RF air-link and
telephone 10 discriminates between voice and data information.
In other words, both types of signals are received by the same
RF air-link. Further, Braitberg discloses (column 11, lines
20-35) that the invention allows the cellular phone "to
Appeal No. 1999-2028
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transceive information using an external antenna," by coupling
the cellular phone to the external antenna. Thus, Braitberg
must operatively couple the signal circuitry to a common RF
antenna. Therefore, we will sustain the rejection of claim 68
and of claims 73 and 93, grouped therewith.
Regarding claim 69, appellants contend (Brief, page 12)
that nothing in Braitberg suggests a user control for
selecting modes. We agree. Braitberg indicates that the mode
is determined inside the telephone handset. Braitberg does
not contemplate giving the user any control of the modes.
Further, the inclusion of a user input is more than "broadly
providing a manual activity to replace mechanical or automatic
means which has accomplished the same result," as argued by
the examiner (Answer, page 7). Accordingly, we cannot sustain
the rejection of claim 69.
For claim 71, appellants argue (Brief, page 12) that the
prior art does not show "at least portions of the analog
cellular signal circuitry and the CDPD signal circuitry
[being] included in a single application specific integrated
circuit." However, it would have been obvious to include at
least a portion of each signal circuitry in a single
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integrated circuit to minimize the circuitry required.
Therefore, we will sustain the rejection of claim 71.
As to claims 74 and 75, the examiner (Answer, page 8)
takes Official Notice that "switch over circuitry for
compensating for multipath conditions and diversity receiving
antenna are all well known ... in cellular telephone [sic] and
it would have been obvious to incorporate such well known
elements in the cellular telephone of Braitberg, et al in
order to improve reception and transmission of the cellular
telephone." Appellants merely assert (Brief, page 12) that
Braitberg fails to disclose both the switch over circuitry and
the diversity receiving antenna. However, the rejection is
based on 35 U.S.C. § 103, and appellants do not challenge the
specific Official Notice nor the rationale for obviousness for
claims 74 and 75. Arguments that could have been made but
were not presented in the Brief are considered waived. See 37
CFR § 1.192(a). Therefore, we will affirm the rejection of
claims 74 and 75.
We note that appellants (Brief, pages 13-14) attack
generally the examiner's taking of official notice, arguing
that the examiner has failed to state the date on which his
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9
official notice was taken. Appellants do not point to the
specific Official Notice taken for claims 74 and 75. We
assume that the examiner's Official Notice that elements were
well-known and common are as of the effective filing date of
the present application. Thus, we do not consider this
general attack as particularly pointing out deficiencies in
the examiner's rejection as required by 37 CFR § 1.192(c)(7).
Claim 89 recites a "control processor ... for maintaining
operation only in the CDPD mode until receiving an indication
of analog cellular operation." Appellants argue (Brief, page
13) that this limitation is not shown by the references. We
agree that Braitberg does not disclose such a control
processor. Further, as the examiner has not addressed this
limitation, the examiner has failed to establish a prima facie
case of obviousness. Consequently, we must reverse the
rejection of claim 89.
For the limitation of claim 91, the examiner asserts
(Answer, page 9) that it would have been obvious to use two
processors instead of one for parallel processing of the
analog and CDPD signal circuitries. Appellants merely state
that the claim limitation "is not shown by the prior art."
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Appellants fail to address the rationale for obviousness.
Again, arguments that could have been made but were not
presented in the Brief are considered waived. See 37 CFR §
1.192(a). Therefore, we will affirm the rejection of claim
91.
Last, appellants (Brief, page 13) paraphrase the entirety
of claim 95 and contend that it "is not shown by the
references." Appellants do not specifically point out any
deficiencies in the rejection as required by 37 CFR §
1.192(c)(7). Accordingly, we will sustain the rejection of
claim 95.
In summary, we have sustained the rejection of claims 67,
68, 71, 73 through 82, 88, 90 through 93, and 95 and have not
sustained the rejection of claims 69 and 89 based on
Braitberg. Therefore, the decision of the examiner rejecting
claims 67 through 69, 71, 73 through 82, 88 through 93, and 95
is affirmed-in-part.
We make the following new ground of rejection under
37 CFR § 1.196(b). Claims 67 through 69, 71, 73 through 82,
and 88 through 93 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. In claim 67, line 7, the
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phrase "the discriminating circuit" lacks antecedent basis.
Accordingly, claim 67 and the claims which depend therefrom,
claims 68, 69, 71, 73 through 82, and 88 through 93, are vague
and indefinite.
CONCLUSION
The decision of the examiner rejecting claims 67 through
69, 71, 73 through 82, 88 through 93, and 95 under 35 U.S.C. §
103 is affirmed as to claims 67, 68, 71, 73 through 82, 88, 90
through 93, and 95 and reversed as to claims 69 and 89. A new
ground of rejection of claims 67 through 69, 71, 73 through
82, and 88 through 93 under 35 U.S.C. § 112, second paragraph,
has been added pursuant to provisions of 37 CFR § 1.196(b).
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, "A new
ground of rejection shall not be considered final for purposes
of judicial review."
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Application No. 08/769,036
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Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellants may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellants elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
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13
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellants elect prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
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14
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
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AG/RWK
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