Ex parte McGirr et al.

Board of Patent Appeals and Interferences

Sep 29, 1997

07983145 (B.P.A.I. Sep. 29, 1997)

Application for patent filed November 30, 1992. 1
According to applicants, the application is a continuation of
Application 07/725,213, filed June 25, 1991, which is a
continuation of Application 07/339,573, filed April 18, 1989.
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ANDREW E. McGIRR,
PAUL L. CAMWELL
and
JOHN G. McRORY
_____________
Appeal No. 96-0365
Application 07/983,1451
______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH, and BARRETT, Administrative
Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0365
Application 07/983,145
According to the examiner (Answer, page 1), the2
amendment to claim 28 obviated the indefiniteness rejection.
2
This is an appeal from the final rejection of claims 27
through 29. In an Amendment After Final (paper number 10),
claim 28 was amended.2
The disclosed invention relates to antenna structure for
a hand-held cellular telephone. The antenna includes at least
two parallel, co-planar patch radiating elements that are
elevated above a ground reference plane by a conductive
pedestal mounted on the ground reference plane. A feedpoint
on one of the patches is connected to the output of a
transmitter via a cable, and a feedpoint on the other patch is
connected to the input of a receiver via a separate cable.
According to the claimed invention, the two cables are not
connected to one another.
Claim 27 is the only independent claim on appeal, and it
reads as follows:
27. An antenna for use with a hand-held cellular
telephone which is held to the head of a user when in use, the
cellular telephone including a radio frequency transmitter
having a transmitter output terminal and a radio frequency
receiver having a receiver input terminal, the antenna
comprising:
Appeal No. 96-0365
Application 07/983,145
3
A. a receive radiating element having a receiver
feedpoint, the receiver feedpoint directly connected to the
receiver input of the receiver via a receiver input cable, the
receive radiating element formed as a first patch having a
major axis;
B. a transmit radiating element having a transmitter
feedpoint, the transmitter feedpoint being directly connected
to the transmitter output via a transmitter output cable, the
transmitter and receiver cables being separate from one
another and not connected to one another, the transmit
radiating element formed as a second patch having a major
axis, the transmit radiating element disposed in the same
plane as the receive radiating element, and such that the
major axis of the transmit radiating element is parallel to
the major axis of the receive radiating element;
C. a ground reference plane, disposed adjacent the
receive and transmit radiating elements and positioned such
that the ground reference plane is between said radiating
elements and the head of a user when the telephone is in use;
and
D. spacing means for spacing the ground plane from the
receive and transmit radiating elements, said spacing means
connecting electrically to the ground reference plane and
including at least one conductive outer surface, said spacing
means being positioned to isolate the receive radiating
element from the transmit radiating element.
The references relied on by the examiner are:
Dodington 2,947,987 Aug. 2,
1960
Yokoyama et al. (Yokoyama) 4,641,366 Feb. 3,
1987
Zakman 4,876,552 Oct. 24,
1989
McGirr et al. (McGirr) 5,231,407 July 27,
1993
Appeal No. 96-0365
Application 07/983,145
The subject application and McGirr both originated from 3
Application 07/339,573 filed on April 18, 1989.
Although Dodington may not be listed under the prior art4
of record (Answer, page 3), the rejection of record (Final
rejection, pages 4 and 5; Answer, pages 5 and 6; Brief, pages
12 and 13) clearly states that Dodington is used in the
rejection of claim 29. Thus, the omission of Dodington from
the list of prior art of record is treated as harmless error.
4
(filed Apr. 18,
1989)
Claims 27 through 29 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being
unpatentable over claims 1 through 20 of McGirr.3
Claims 27 and 28 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Zakman or Yokoyama.
Claim 29 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Zakman or Yokoyama in view of Dodington.4
Reference is made to the final rejection, briefs, and the
answer for the respective positions of the appellants and the
examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse all of the rejections.
Appeal No. 96-0365
Application 07/983,145
5
Turning first to the obviousness-type double patenting
rejection, the examiner indicates (Final rejection, pages 5
and 6) that:
Although the conflicting claims are not identical,
they are not patentably distinct from each other
because at least claims 7, 9, 19 and 20 thereof
recite the three basic elements of patches as
radiating elements, ground reference and pedestal in
specific terms and arrangements, broadly recited in
this application as claims 27-29. The recitation of
electrically connected in the patent claims
implies/include capacitive coupling. The broader
claims 27-29 define the same antenna arrangement of
the patented claims.
Appellants respond (Brief, pages 13 and 14) that:
While, admittedly, the stated elements are found in
the claims of the present application, the "separate
feedline" structure is not found in the claims of
U.S. Patent 5,231,407. As explained above, the
claims define a novel combination of receive patch
element having a receiver feedpoint, a transmit
patch element having a transmitter feedpoint, with
separate cables connected between the receiver and
the receive patch feedpoint, and the transmitter and
the transmit patch feedpoint. This separate
feedline structure is not recited in the claims of
the issued patent, and is not obvious in view of the
prior art, . . . .
The obviousness-type double patenting rejection of claims 27
through 29 is reversed because none of the claims in McGirr
recites appellants' claimed separate cables for the two patch
Appeal No. 96-0365
Application 07/983,145
6
feedpoints, and because the examiner has not addressed the
lack of such "separate feedline" structure in McGirr's claims.
Turning next to the obviousness rejection of claims 27
and 28 based upon the teachings of Zakman or Yokoyama, there
is no dispute between appellants and the examiner that both
Zakman and Yokoyama disclose all of the antenna structure set
forth in claims 27 and 28, except for the noted "separate
feedline" cable structure. In Figure 5 of Zakman, the two
patches 503 and 505 are fed signals at feedpoints 519 and 521,
respectively. Zakman discloses that "a signal source 513
(having an internal resistance 515 and a feedline inductance
517) is connected to appropriate two-point connection points
519 and 521 on either side of notch 511" (column 4, lines 15
through 19). It is clear from this disclosure in Zakman that
the cables leading from the two feedpoints 519 and 521 are
connected together. In Figure 6 of Yokoyama, cables 61 and 62
are connected to feedpoints 53 and 54, respectively, and the
opposite ends of the two cables are tied together at point 64.
The claimed "cables being separate from one another and not
connected to one another" is likewise not taught by Yokoyama.
Appeal No. 96-0365
Application 07/983,145
7
Appellants argue that neither Zakman nor Yokoyama teaches
or would have suggested the claimed separateness of the cables
(Brief, pages 5 through 12). The examiner's line of reasoning
for finding claims 27 and 28 obvious is as follows:
[I]t is recognized by the antenna artisan that at
some point along the receiver path and transmitter
path, there exists separate signal feeders to
respectively connect thereto. Thus, it would have
been obvious to a skilled artisan to separately
feed, by providing separate feed cables, to the
receiver and from the transmitter, when connecting
respective antennas in Zakman (Answer, pages 4 and
5).
. . . .
. . . The [Yokoyama] feedlines 61, 62 feed a common
line 63. [sic] however, it would have been obvious
to a skilled artisan to provide separate feedlines to
the transmitter and receiver (Answer, page 5).
. . . .
. . . [T]he suggestion of feeding separate receive
signals to feedpoint 521 and separate transmit signals to
feedpoint 519 to the receiver/from the transmitter had
been made and recognized by the skilled artisan as well
within the common knowledge thereof. In other words, it is
always obvious and taken for granted by the antenna
engineer that separate antennas, shown by Zakman or
Yokoyama et al and designed for separate transmit and
receive frequencies, may be separately fed or connected to
the transmitter or receiver. The mere history of
the communications arts leads the skilled artisan to
separate feeding because separate transmitters and
separate receivers were built before transceivers were.
. . The reference (i.e., either Zakman or Yokoyama et al)
Appeal No. 96-0365
Application 07/983,145
8
does not have to specifically suggest to the skilled
artisan that separate feeding cables may be used to feed
the separate patch antennas disclosed therein. Such
separate feedline cables are taken for granted and are
certainly common knowledge of the antenna/RF engineer
(Answer, pages 8 and 9).
Without the benefit of at least a scintilla of evidence
in the record to support the examiner's extensive line of
reasoning, we are inclined to agree with appellants' argument
that the examiner's reasoning is nothing more than
"conclusionary statements which are impermissibly motivated by
the teaching of the present invention, rather than the prior
art, and therefore are based upon hindsight" (Reply Brief,
page 2). The obviousness rejection of claims 27 and 28 is
reversed.
In the obviousness rejection of claim 29, Dodington was
cited by the examiner (Answer, page 5) to show that the use of
a third patch in an antenna was well known in the art. The
obviousness rejection of claim 29 is reversed because
Dodington does not cure the cable separateness shortcoming in
the teachings of both Zakman and Yokoyama.
DECISION
Appeal No. 96-0365
Application 07/983,145
9
All of the rejections of record have been reversed. The
decision of the examiner is, therefore, reversed.
REVERSED
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 96-0365
Application 07/983,145
10
Patricia A. Sheehan
CESARI & McKENNA
30 Rowes Wharf
Boston, MA 02110