Ex Parte Mandel

Board of Patent Appeals and Interferences

Mar 13, 2012

10367027 (B.P.A.I. Mar. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/367,027 02/19/2003 Yaron Nahum Mandel 3239
7590 03/13/2012
Yaron Nahum Mandel
14 Nottinghill Road
Thornhill, ON L3T 4X9
CANADA
EXAMINER
LOBO, IAN J
ART UNIT PAPER NUMBER
3662
MAIL DATE DELIVERY MODE
03/13/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YARON NAHUM MANDEL
____________

Appeal 2010-007438
Application 10/367,027
Technology Center 3600
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
WILLIAM V. SAINDON, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Yaron Nahum Mandel (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 9-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s claimed invention relates to underwater communication
devices. Spec. 1. Claim 9, reproduced below, is the sole independent claim
and is representative of the subject matter on appeal.
9. Text communication system for communicating among
divers, or among divers and a submarine or an ocean rig or a
ship, comprising a plurality of diver communication units
linked by wire means;
each of said diver communication units comprising a
keyboard, a display, electronics, housing that is water proof and
pressure proof to diving depths, and a data communication
interface for wire-based data communication;
said text communication system uses solely wire-borne
data communication among said diver communication units
throughout said text communication system.
THE EVIDENCE
The Examiner relies upon the following evidence:
James US 5,592,156 Jan. 7, 1997
Nehemiah US 5,956,291 Sep. 21, 1999
Sonnenschein US 6,125,080 Sep. 26, 2000
Watt US 6,390,012 B1 May 21, 2002
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 9-11 and 17-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sonnenschein, Watt, and James.
2. Claims 12-16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sonnenschein, Watt, James, and Nehemiah.
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ISSUES
The issues presented by this appeal are:
Is Watt analogous art to Appellant’s invention?
Would the combined teachings of Sonnenschein, Watt, and James
have rendered obvious the text communication system of claim 9 to one of
ordinary skill in the art?
ANALYSIS
Appellant argues claims 9-11 and 17-20 as a group for the first ground
of rejection. App. Br. 2. We select claim 9 as representative, and claims 10,
11, and 17-20 stand or fall with claim 9. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Appellant also relies on the arguments made in support of claim 9 as
the basis for patentability of claims 12-16, under the second ground of
rejection. As such, the patentability of claims 9-20 turns on our review of
the Examiner’s decision to reject claim 9.
We begin our analysis with a review of the scope of claim 9. “Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims. . . . The
second step in the analyses requires a comparison of the properly construed
claim to the prior art.” Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933
(Fed. Cir. 2003) (citations omitted). Claim 9 is directed to a “[t]ext
communication system for communicating among divers, or among divers
and a submarine or an ocean rig or a ship, comprising a plurality of diver
communication units linked by wire means.” The preamble of claim 9 is
written in the alternative, so that the broadest reasonable interpretation of the
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claim encompasses a text communication system that uses diver
communication units solely below the surface of the water for
communication among divers. This interpretation is consistent with the
Specification, which describes that the units enable “diver communication
with a ship, a submarine or an ocean rig over a wire,” and “can also be used
for communication between two divers or two groups of divers that are
located at a distance.” Spec. 6, ll. 1-6. See In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (During examination, claims are to be
given their broadest reasonable interpretation consistent with the
specification, and claim language should be read in light of the specification
as it would be interpreted by one of ordinary skill in the art.).
We agree with the Examiner that the sole difference between claim 9
and the system disclosed in Sonnenschein is that Sonnenschein uses acoustic
communication instead of “solely wire-borne data communications” as
called for in claim 9. Ans. 4. Appellant does not contest the Examiner’s
findings as to the scope and content of Sonnenschein or the difference
between Sonnenschein and the claimed invention, and we adopt them as our
own.
We also agree with the Examiner that Watt shows that it was known
in the art at the time of Appellant’s invention that acoustic modem
communications do not convey data as rapidly or accurately as wire-borne
systems. Ans. 4. Appellant does not contest this finding. App. Br. 5 (“The
comment states a true fact (that wire-borne communication is superior)”).
Rather, Appellant argues that Watt is not analogous art. Id.
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“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant’s endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). The
“field of endeavor” test asks if the structure and function of the prior art is
such that it would be considered by a person of ordinary skill in the art
because of the similarity to the structure and function of the claimed
invention as disclosed in the application. In re Bigio, 381 F.3d 1320, 1325-7
(Fed. Cir. 2004).
Appellant identifies the field of the endeavor as “underwater
communication devices,” and more particularly, “devices which enable
divers to communicate visually and over a wire by text message with other
divers, with ships, with submarines and with ocean rigs.” Spec. 1, ll. 5-7.
The structure and function of the claimed invention includes a text
communication unit that has a serial port or network interface or telephone
modem which is used to send text messages over a wire to another unit.
Spec. 2, ll. 18-20. Watt relates to a system for underwater communication
with an autonomous underwater vehicle (AUV). Col. 1, ll. 19-21. Watt
teaches that typically AUVs are not physically linked to a surface vessel
during underwater operations and thus communication between the AUV
and an operator aboard the surface vessel employs an acoustic modem.
Col. 2, ll. 18-23. Watt teaches that communication via underwater acoustic
modem is inefficient and does not convey data as rapidly or accurately as
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electrical wires or fiber optics. Col. 2, ll. 23-28. Watt discloses a linelatch
system that can be used to connect the AUV to the surface vessel for wired
data communication. Col. 12, ll. 1-5; 22-24. We agree with the Examiner
(Ans. 7) that both Watt and Appellant’s invention relate to underwater
communication systems. Both Watt and Appellant’s invention relate to
systems which enable underwater communication of data over wire between
communication units. We find that the structure and function of Watt is
such that it would be considered by a person of ordinary skill in the art
because of the similarity to the structure and function of the claimed
invention. Thus, we agree with the Examiner that Watt is in the field of
Appellant’s endeavor and is analogous art.
We also agree with the Examiner that James teaches that a diver
communication system using a wire-borne link was known in the art at the
time of Appellant’s invention. Ans. 4. We acknowledge, as did the
Examiner, that the wire-borne link in James is not system-wide. Id. In
James, the diver’s underwater transceiver is connected to a floating antenna
via a cable, i.e., wire-borne link, and communication to the vessel is then
sent by the floating antenna via radio communication through the air.
Col. 3, ll. 23-24; col. 6, ll. 5-7. Thus, James suggests using a wire-borne
link for underwater communication.
The teaching in James of a system for effecting an underwater wire-
borne link, in combination with the acknowledgement in Watt that wire-
borne links are more efficient than underwater communications via acoustic
means, such as those used in Sonnenschein’s system, would have suggested
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to one of ordinary skill to replace the acoustic communication means of
Sonnenschein’s system with wire-borne links, at least for effecting
underwater communications among divers. As determined supra, claim 9
broadly calls for underwater communications among divers via diver
communication units linked by wire means.
Even if claim 9 were interpreted to call for both underwater
communication among divers and communication between a diver below the
surface and a surface vessel, the combined prior art would still render such a
system obvious. James discloses that it was known in the prior art to use “a
cable directly linking the vessel to the diver” for “transmission of
alphabetical and numerical (alpha numeric) data to an underwater diver.”
Col. 1, ll. 39-42. While James teaches that “[t]his method has limitations
due to the volatility of the ocean,” a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine. Col. 1, ll. 43-44; Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (citing Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)) (“The fact that
the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”). While wire-borne communication
between a vessel and a diver may have disadvantages, such a means of
communication also has the advantages of providing more rapid and more
accurate communication of data than acoustic communication systems. See
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Watt, col. 2, ll. 18-25. As such, the prior art does not teach away from a
wire-borne communication between a diver and a vessel.
Appellant argues that the cited references “lack any suggestion that
they should be modified” and that each reference “is complete and
functional in itself, so there would be no reason to use parts from or add or
substitute parts to any reference.” App. Br. 6. For the reasons provided
supra, we agree with the Examiner that Watt provides the suggestion to
modify the acoustic communication system of Sonnenschein. As such, the
Examiner’s articulation of a reason to modify Sonnenschein is based on
rational underpinnings.
Appellant also argues that the invention of claim 9 provides “a
superior solution to the problem of diver communication, because it is
simpler than existing solutions and it provides a more robust communication
capability to the diver” and “[i]t is also inexpensive.” App. Br. 7. While
these may be advantages of Appellant’s system, the Examiner provided
evidence that at least one of these advantages, i.e., more robust
communication capability, was known to those of ordinary skill in the art at
the time of Appellant’s invention. See Watt, col. 2, ll. 18-25. Appellant has
not provided any evidence that such advantages were unexpected or would
have been unpredictable to one of ordinary skill in the art.
Finally, Appellant asserts that “[a] considerable technological leap is
required to move from [Sonnenschein’s acoustic water-borne
communication system] to [Appellant’s wire-borne communication system]”
and the necessary changes “go way beyond what can be characterized as
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mere modifications or substitutions.” Reply Br. 4. James shows that an
underwater wire-borne communication system was within the level of skill
of one of ordinary skill in the art at the time of Appellant’s invention, and
Appellant has not provided evidence that the necessary “technological leap”
for the proposed modification of Sonnenschein would have been beyond the
level of skill of one of ordinary skill in the art. Thus, Appellant has not
persuaded us that the Examiner’s rejection, which is based on rational
underpinnings, should be reversed.
CONCLUSIONS
Watt is analogous art to Appellant’s invention.
The combined teachings of Sonnenschein, Watt, and James would
have rendered obvious the text communication system of claim 9 to one of
ordinary skill in the art.
DECISION
We AFFRIM the decision of the Examiner to reject claims 9-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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