Ex parte Matsumoto

Board of Patent Appeals and Interferences

Mar 31, 1998

08081426 (B.P.A.I. Mar. 31, 1998)

Application for patent filed June 22, 1993.1
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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARIKO MATSUMOTO
_____________
Appeal No. 96-1551
Application 08/081,4261
______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH, and CARMICHAEL, Administrative
Patent Judges.
HAIRSTON, Administrative Patent Judge.
Appeal No. 96-1551
Application No. 08/081,426
2
DECISION ON APPEAL
This appeal involves claims 4 and 5. As indicated in the
interview summary (paper number 13), the amendment (paper number
11) to claim 5 has been entered.
The disclosed invention relates to a mobile phone set that
includes at least a base unit, a fixed transmitting station, and
at least one handset. The base unit is in digital radio
communication with the fixed transmitting station, and the base
unit is in analog radio communication with the handset.
Claim 5 is the only independent claim on appeal, and it
reads as follows:
5. A mobile phone set comprising:
a base unit and at least one handset, said base unit being
for digital radio communication with a fixed transmitting station
and for analog radio communication with said handset said base
unit comprising:
a first receiving section for receiving a first modulated
digital wave transmitted from the fixed transmitting station and
for converting the first modulated wave to a first modulated
digital signal;
a first demodulating section for demodulating said first
modulated signal to create a first demodulated signal;
a first detecting section for detecting whether or not the
first demodulated signal is of a signal to the base unit;
a first modulating section for modulating said demodulated
signal to generate a second modulated analog signal for
transmission to the handset;
a first radio transmitting section for converting the second
Appeal No. 96-1551
Application No. 08/081,426
3
modulated analog signal to a second modulated analog wave and for
transmitting the second modulated analog wave to said handset;
a second receiving section for receiving a third modulated
analog wave transmitted from said handset and for converting the
third modulated analog wave to a third modulated analog signal;
a second demodulating section for demodulating said third
modulated signal to create a second demodulated signal;
a second detecting section for detecting whether or not the
second demodulated signal is of a signal of itself;
a controlling section for instructing radio transmission to
said handset after receiving a detection signal from said first
detecting section and for instructing radio transmission to said
fixed transmitting station after receiving a detecting signal
from said second detecting section;
a second modulating section for modulating the second
demodulated signal from said second demodulating section to
create a fourth modulated digital signal for transmission to said
fixed transmitting station; and
a second radio transmitting section for converting the
fourth modulated digital signal to a fourth modulated digital
wave and for transmitting the fourth modulated digital wave to
said fixed transmitting station.
The references relied on by the examiner are:
Mizikovsky 5,228,074 July 13, 1993
(filed Apr. 15, 1991)
Ito 5,276,686 Jan. 4, 1994
(filed Oct. 17, 1991)
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ito in view of Mizikovsky.
Appeal No. 96-1551
Application No. 08/081,426
4
Reference is made to the brief and the answer for the
respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse the obviousness rejection of claims 4 and 5.
The only contested limitation in the claims on appeal is
“said base unit being for digital radio communication with a
fixed transmitting station and for analog radio communication
with said handset.”
Appellant and the examiner both agree that in Ito
communication between the base station (BSS) and the mobile base
device (MSS) is effected digitally, and that communication
between the mobile base device (MSS) and the portable device
(PSS) is likewise “effected digitally” (Brief, page 4, and
Answer, page 3).
The examiner states (Answer, page 3), that Mizikovsky,
Figs. 1-2, teaches the dual mode cellular telephone wherein the
portable unit (1) is in an analog radio communication with the
base unit (5) and the base unit (5) is in a digital radio
communication with a fixed station.” According to the examiner
(Answer, pages 3 and 4):
Appeal No. 96-1551
Application No. 08/081,426
Radio is a form of wireless electrical communication.2
5
it would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify
the Ito telephone set by providing the teaching of the
Mizikovsky dual mode telephone system thereto in order
to have more flexibility so that the analog portable
unit can communicate with the digital communication
system.

Appellant argues (Brief, page 4) that:
Mizikovsky . . . does not disclose a system wherein the
portable unit (1) communicates with the base unit (5)
by means of wireless analog signals as set forth in
applicant’s claims. Instead, the portable unit (1) of
Mizikovsky only communicates wirelessly with the fixed
station. Communication between the portable unit (1)
and base unit (5) of the Mizikovsky system, however, is
via a multiconductor connector (42). . . . Thus, there
is no communication between the portable unit (1) of
Mizikovsky and its base unit (5) in the stand-alone
mode; in order for the portable unit (1) to communicate
with the base unit (5) there must be a physical
connection between the two.
We agree. Mizikovsky expressly states (column 6, lines 28
through 30) that analog voice signals from portable unit 1 “are
coupled via connector 42 to mobile unit 5.” The use of the
conductor 42 means that the analog signals are not “radio”2
signals as set forth in the claims on appeal. Thus, we also
agree with appellant (Brief, page 4) that “combining Ito and
Mizikovsky would not result in applicant’s unique system in which
wireless communication is effected by means of analog signals
between the base unit and the handset and digital signals are
Appeal No. 96-1551
Application No. 08/081,426
6
used to communicate between the base unit and the cellular
station.” The obviousness rejection is reversed.
DECISION
The decision of the examiner rejecting claims 4 and 5 under
35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 96-1551
Application No. 08/081,426
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