Ex parte Minami

Board of Patent Appeals and Interferences

Apr 30, 2001

08502253 (B.P.A.I. Apr. 30, 2001)

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publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YOCHIRO MINAMI
____________
Appeal No. 1999-0297
Application No. 08/502,253
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HEARD: April 12, 2001
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Before HAIRSTON, GROSS, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1-27, which are all
of the claims pending in this application.
BACKGROUND
The appellant's invention relates to a selective call
system for reducing power consumption in remote pagers. An
understanding of the invention can be derived from a reading
of exemplary claim 1, which is reproduced as follows:
Appeal No. 1999-0297 Page 2
Application No. 08/502,253
1. A method for transmitting data from a transmitter to
a plurality of receivers, the method comprising the steps of:
at the transmitter,
(a) transmitting first signals each having a first time
period which is divided into a plurality of frames,
each of the frames comprising:
a synchronization field;
an address field comprising a plurality of addresses
associated with the receivers, respectively; and
a message field comprising a plurality of messages
corresponding to the addresses, respectively, each of the
messages comprising a message and a message header which
includes an address transmission number of an address
corresponding to the message, said address transmission number
indicating a transmission order of each of the addresses
within said address field, and
at each of the receivers,
(b) receiving a frame of at least one of the first
signals;
(c) sequentially searching the address field for an
address of the receiver itself while incrementing an address
count at each address searched;
(d) storing the address count when the address of the
receiver itself is found; and
(e) selecting a message addressed to the receiver itself
from the message field by comparing the address count stored
with the address transmission number included in the message
header.
Appeal No. 1999-0297 Page 3
Application No. 08/502,253
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
DeLuca et al. (DeLuca) 5,089,813 Feb. 18,
1992
Kane et al. (Kane) 5,315,635 May 24,
1994
Claims 1-27 stand rejected under 35 U.S.C. § 103 as being
unpatentable over DeLuca in view of Kane.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and appellant regarding the above-noted
rejection, we make reference to the examiner’s answer (Paper
No. 15, mailed July 17, 1998) for the examiner’s complete
reasoning in support of the rejection, and to appellant’s
brief (Paper No. 14, filed June 23, 1998) and reply brief
(Paper No. 17, filed September 17, 1998) for appellant’s
arguments thereagainst.
OPINION
Appeal No. 1999-0297 Page 4
Application No. 08/502,253
In reaching our decision in this appeal, we have
carefully considered the subject matter on appeal, the
rejection advanced by the examiner, and the evidence of
obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant's
arguments set forth in the briefs along with the examiner's
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the art would not have suggested to one of ordinary skill in
the art the invention as set forth in claims 1-27.
Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
Appeal No. 1999-0297 Page 5
Application No. 08/502,253
(1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole. See id.;
In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed.
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Application No. 08/502,253
Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052,
189 USPQ 143, 147 (CCPA 1976).
We begin with claim 1. The examiner takes the position
(answer, page 5) that DeLuca teaches all of the claim
limitations, with the exception of "a message header having a
message which includes an associated address transmission
number and comparing an address count with the address
transmission number." To overcome this deficiency of DeLuca,
the examiner relies upon Kane for a teaching (answer, page 6)
of "a message which includes an associated message sequence
number (address transmission number) and compare[s] such with
an address count." According to the examiner (answer,
paragraph bridging pages 5 and 6) "one skilled in the art
recognizes there must be some means of associating an address
count and a message sequence number. One such means would be
to compare the count with the number."
Appellant asserts (brief, page 4) that DeLuca and the
present invention are directed to a system which sends
multiple messages grouped in a frame, whereas Kane is directed
to an entirely different transmission system which sends and
Appeal No. 1999-0297 Page 7
Application No. 08/502,253
receives only one message at a time. Appellant notes (brief,
page 5) that in Kane, each of the sequence numbers represents
a single message addressed to a specific receiver. In
contrast to Kane, appellant's invention provides for each of
the address transmission numbers to correspond with a message
in a received frame of messages, which could be addressed to
any receiver. According to appellant (brief, page 4), because
of this fundamental difference of sending multiple messages in
a frame versus sending single messages, Kane does not suggest
the claimed feature missing from DeLuca.
We find that DeLuca discloses (col. 1, lines 6-9) a
selective call receiver, such as a pager. Messages are
grouped into corresponding address and information fields by
base station transmitter 50 (Figure 1 and col. 2, line 65 -
col. 3, line 10). Upon receiving a message having an address
matching the paging receiver, the message may be stored in
message memory 60 after being decoded by a microcomputer in
decoder 58. The message sequence of each data packet (Figure
3 and col. 3, lines 44-55) begins with a 2 digit format
signal. A "00" format signal reflects that no additional
information associated with the message follows. A "01"
Appeal No. 1999-0297 Page 8
Application No. 08/502,253
format signal reflects a continuation signal, indicating that
the following packet contains additional information
associated with the message. Figure 4a discloses a selective
call signal protocol received by a pager. It includes (col.
3, line 67 - col. 4, line 14) a synchronization signal, as
well as address and data fields. The address field has a
predetermined number of address slots. Additionally, the data
field contains a corresponding number of data packets. If the
pager receives the signal of Figure 4a and finds its own
address, i.e., A1, it receives the associated message
information only in the data packet D1, in the data field.
However, in DeLuca, a message is not selected by comparing an
address count with an address transmission number that is
stored in the message header by the transmitter. In DeLuca,
(Figure 5) the program sequentially increments through each
address searched (step 210). If the address of the selective
call receiver is found, step 208 is executed, setting the
program to receive the data packet corresponding to the
address count. After incrementing through each address to see
if the address corresponds to the pager, the messages are
sequentially incremented in a similar fashion (steps 218, 220,
Appeal No. 1999-0297 Page 9
Application No. 08/502,253
222, and 226). The incremented number of the packet is
compared with the incremented number of the address, i.e., if
the third address corresponds to the address of the pager, the
third data packet is received. From these teachings of
DeLuca, we find that DeLuca selects a data packet
corresponding to the pager address by incrementing
sequentially through each of the messages until the packet to
be received is reached.
We find that in Kane, central terminal 102 stores
messages for transmission to a selective call receiver. The
messages are sent and received sequentially (col. 2, lines 45-
48). Each message 200 includes identification and control
information 202, as well as data information 204. The
identification and control information includes, inter alia,
address information 206, message sequence number 208, and
message repetition count 210 (Figure 2). Each of the messages
for a selected call receiver are given a message sequence
number which identifies the relative sequence of the message
in the transmission sequence (col. 8, lines 39-44). The
message sequence numbers for the received messages are put
into a linked list (Figure 3) and are ordered according to
Appeal No. 1999-0297 Page 10
Application No. 08/502,253
their transmission sequence number (col. 10, lines 2-11 and
24-28). To ensure that all of the messages sent by the
central terminal have been received, the messages may be
resent. Upon receiving a message corresponding to the
selective call receiver, 130, the message is stored in memory
140 (col. 8, lines 20-23). If, after a predetermined period
of time, a message in the sequence has not been received, a
message reconciliation request is sent to central terminal 102
through path 152 (col. 7, lines 28-35) and the message is
resent (Figure 10 and col. 13, line 58 - col. 14, line 33).
From these teachings of Kane, we find that because Kane
sequentially transmits and receives each message, Kane does
not select a message by comparing an address count with an
address transmission number that is stored in the message
header. In Kane, if the address of the message corresponds to
the address of the selective call receiver, the message is
stored. We find that Kane uses message sequence numbers
because the messages are sequentially transmitted. The
message sequence numbers ensure that all of the messages have
been received and are properly ordered. Because DeLuca
transmits messages that are grouped together, we see no
Appeal No. 1999-0297 Page 11
Application No. 08/502,253
teaching or suggestion, nor has any persuasive line of
reasoning been provided by the examiner, for utilizing
transmission sequence numbers in DeLuca and then comparing the
address count with the transmission sequence number in order
to select a message. We find that DeLuca and Kane teach away
from the proposed combination advanced by the examiner because
of their different methods of transmission, i.e., grouped
messages versus single messages sent sequentially. We
additionally find that DeLuca and Kane teach away from the
claimed invention because Kane teaches providing a separate
sequence for each selective call receiver, whereas in DeLuca,
each signal received, as shown in Figure 4a, includes
addresses and message data intended for more that one
selective call receiver.
The examiner asserts (answer, page 9) that "one skilled
in the art recognizes including a means for associating an
address count with address transmission number would be to
compare the two for the purpose indicating a transmission
order of each addresses within the message field." Our
reviewing court has stated that "[o]bviousness may not be
established using hindsight or in view of the teachings or
Appeal No. 1999-0297 Page 12
Application No. 08/502,253
suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1087, 37 USPQ 2d at 1239 (Fed. Cir.
1995), citing W. L. Gore & Assocs., v. Garlock, Inc., 721 F.2d
at 1551, 1553, 220 USPQ at 311, 312-13 (Fed. Cir. 1983). We
find the examiner's assertion of what is known by one of
ordinary skill in the art to be conclusionary and unsupported
by evidence. From our review of the record, we find no
suggestion, other than from appellant's disclosure, of
replacing the incremental sequencing of the messages with a
message sequence in a message header, and then comparing the
address count with the transmission number stored in the
message header. Accordingly, we conclude that the examiner
has failed to establish a prima facie case of obviousness with
respect to claim 1.
With respect to the other independent claims 9, 12, 17,
and 22, we note that appellant asserts (brief, page 4) that
all of the independent claims include selecting a message by
comparing an address count with an address transmission number
that is stored in the message header by the transmitter. We
find that independent claims 12, 17, and 22 contain language
similar to claim 1. Accordingly, we find that the examiner
Appeal No. 1999-0297 Page 13
Application No. 08/502,253
has failed to establish a prima facie case of obviousness with
regard to independent claims 12, 17, and 22. Upon review of
claim 9, we find that the claim 9 is directed toward a method
of signal transmission from a transmitter to a plurality of
receivers, and therefore does not recite comparing a stored
address count with the address transmission number included in
the message header, as the "comparing" takes place in the
selective call receiver. Turning to claim 9, we find that
even though the claim does not recite comparing a stored
address count with the address transmission number included in
the message header, we find that claim 9 contains language
regarding the message frame that is neither taught nor would
have been suggested by the combined teachings of DeLuca and
Kane. For the reasons discussed, supra, we find that the
limitation of claim 9 that the message header "includes the
address transmission count of an address signal corresponding
to the message signal, said address transmission count
indicating a transmission order of each of the addresses
within said address field" is not taught or suggested by
DeLuca considered with Kane. We therefore conclude that the
examiner has failed to establish a prima facie case of
Appeal No. 1999-0297 Page 14
Application No. 08/502,253
obviousness of independent claim 9. As the rejection of each
of the independent claims has been reversed, the rejection of
each of the claims dependent upon independent claims 1, 9, 12,
17, and 22 is also reversed. Accordingly, the decision of the
examiner to reject claims 1-27 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of DeLuca and Kane is
reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-27 under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Appeal No. 1999-0297 Page 15
Application No. 08/502,253
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
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