Ex parte MUIRHEAD

Board of Patent Appeals and Interferences

Jul 21, 1997

07944561 (B.P.A.I. Jul. 21, 1997)

Application for patent filed September 14, 1992.1
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not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES O. MUIRHEAD
and GERALD E. HELD

_____________
Appeal No. 96-0750
Application 07/944,5611
______________
ON BRIEF
_______________
Before KRASS, JERRY SMITH and BARRETT, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0750
Application 07/944,561
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's final rejection of claims 1-7, 10-15 and
18-23. Claims 8 and 16 have been cancelled. The final rejec-
tion indicated that claims 9, 17, 24 and 25 were allowed. An
amendment after the final rejection was filed on July 25, 1994
and was entered by the examiner. In response to the appeal
brief, the examiner indicated that claims 11-15, 18, 19 and 23
were allowed [answer, page 1]. The examiner’s answer changed
the rejection of the claims by dropping one of the applied
references. Appellants filed an amendment concurrently with a
reply brief in response to the new ground of rejection in the
answer. In response to this amendment and the reply brief,
the examiner indicated that claims 3-7, 10 and 22 were allowed
[supplemental answer, page 1]. Consequently, only claims 1,
2, 20 and 21 remain rejected in this application and form the
basis of this appeal.
The claimed invention pertains to a method and appara-
tus for indicating the presence or absence of non-periodic RF
pulses.
Representative claim 1 is reproduced as follows:
1. A pulse signal level detector for detection of non-
Appeal No. 96-0750
Application 07/944,561
3
periodic RF pulses, comprising:
RF detection means for detecting the RF pulse and
providing an RF detector signal;
first means for receiving said RF detector signal
and
providing a second signal identical to said RF detector
signal and delayed relative thereto; and
second means for comparing the amplitude of said
delayed signal to the maximum amplitude of said RF detec-
tor
signal and providing a comparison signal indicating the
presence or absence of said RF pulse.
The examiner relies on the following reference:
Rhodes 4,803,701 Feb. 07, 1989
Claims 1, 2, 20 and 21 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers Rhodes
taken alone.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answers for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evi-
Appeal No. 96-0750
Application 07/944,561
4
dence 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 appellants'
arguments set forth in the briefs along with the examiner's
rationale in support of the rejection and arguments in rebut-
tal set forth in the examiner's answers.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 1, 2, 20 and 21. Accordingly, we reverse.
Appellants have indicated that for purposes of this
appeal claims 1, 2, 20 and 21 will stand or fall together as a
single group. Consistent with this indication appellants have
made no separate arguments with respect to any of these claims
on appeal. Accordingly, all the claims before us will stand
or fall together. Note In re King, 801 F.2d 1324, 1325, 231
USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989,
991, 217 USPQ 1, 3 (Fed. Cir. 1983). Accordingly, we will
Appeal No. 96-0750
Application 07/944,561
5
only consider the rejection against claim 1 as representative
of all the claims on appeal.
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 deter-
minations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (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.
Appeal No. 96-0750
Application 07/944,561
6
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 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).
As indicated by the cases just cited, the examiner has
at least two responsibilities in setting forth a rejection
under 35 U.S.C. § 103. First, the examiner must identify all
the differences between the claimed invention and the teach-
ings of the prior art. Second, the examiner must explain why
the identified differences would have resulted from an obvious
modification of the prior art. In our view, the examiner has
not properly identified all the differences between claim 1
and the teachings of Rhodes so that the rejection lacks an
explanation as to why at least one of the differences would
have been obvious.
Appellants’ initial argument is that the examiner has
failed to establish a prima facie case of obviousness. We
Appeal No. 96-0750
Application 07/944,561
7
note that the examiner asserts that Rhodes teaches the inven-
tion of claim 1 except for detecting pulses in an RF system.
The examiner concludes that it would have been obvious to the
artisan to apply the teachings of Rhodes to an RF pulse detec-
tor [answer, page 4]. Appellants argue that Rhodes does not
disclose any of the elements of claim 1. More particularly,
appellants argue not only that the Rhodes system will not work
on RF pulses, but also that the comparator in Rhodes does not
compare the delayed signal to a maximum value of the undelayed
signal as recited in claim 1.
In our view, appellants have properly identified two
differences between the invention of claim 1 and the teachings
of Rhodes. The first difference is the claimed detection of
RF pulses as opposed to Rhodes’ digital pulses. Although the
examiner has basically dismissed this difference as being
obvious, the examiner has failed to support this position with
any factual evidence on the record before us. The second
difference is the claimed comparison of delayed signals
against the maximum value of the undelayed signals. The
examiner never addresses the obviousness of this limitation in
Appeal No. 96-0750
Application 07/944,561
8
the rejection of claim 1 nor responds to any of appellants’
arguments regarding this limitation.
The pulse signal in Rhodes has a very different form
than the RF signal in the invention. The RF signal of the
invention reaches a maximum value and stays there as shown in
appellants’ FIG. 3. The delay in appellants’ invention is
maintained long enough to ensure that the undelayed signal
will have reached its maximum value for comparison. The
signals in Rhodes are repetitive as shown in FIGS. 1 and 2.
Rhodes is only interested in detecting the presence of a
signal by computing the initial slope of the signal.
According to appellants, the delay in Rhodes cannot be long
enough to permit the undelayed signal to reach its maximum
value before the subtraction takes place. The slope in Rhodes
must be determined before the signal begins to decrease in
value, that is, before the maximum value is reached.
According to appellants, the system of Rhodes would not
operate if the delay allowed the incoming signal to reach its
maximum value and start decreasing again. We agree.
Every argument appellants make with respect to the
differences in the delay and the maximum value of the
Appeal No. 96-0750
Application 07/944,561
9
undelayed signal between their invention and the teachings of
Rhodes is logical, thoughtful and unrebutted. Since the
examiner never addresses the limitation of claim 1 that the
comparison must be
between the delayed signal and the maximum value of the
undelayed signal, we have no prima facie case as to the
obviousness of this particular limitation of the claimed
invention.
In summary, the examiner’s failure to address a
particular feature of the claimed invention which has been
persuasively asserted by appellants amounts to a failure to
make a prima facie case of obviousness. Therefore, we do not
sustain the rejection of claims 1, 2, 20 and 21 as
unpatentable over the teachings of Rhodes. Accordingly, the
decision of the examiner rejecting claims 1, 2, 20 and 21 is
reversed.
REVERSED
Appeal No. 96-0750
Application 07/944,561
10
)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
S. E. Walters
Hughes Aircraft Co.
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