Ex parte Nagakura

Board of Patent Appeals and Interferences

Jan 3, 2000

08370222 (B.P.A.I. Jan. 3, 2000)

Application for patent filed January 9, 1995. According to appellant, this application is a1
continuation of serial number 07/835,328, filed February 14, 1992.
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publication in a law journal and (2) is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TOMIO NAGAKURA
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Appeal No. 1997-1880
Application No. 08/370,2221
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HEARD: DECEMBER 6, 1999
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Before HAIRSTON, BARRETT, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner's final rejection of claims 1-4, 8 and
10-12, which are all of the claims pending in this application.
We REVERSE.
Appeal No. 1997-1880
Application No. 08/370,222
2
BACKGROUND
The appellant's invention relates to a radio pager and a method of writing
information in the ROM of the radio pager. An understanding of the invention can be
derived from a reading of exemplary claim 1, which is reproduced below.
1 . A method of writing information necessary for communication in a ROM of a
radio pager to which a particular type code is assigned by using a ROM writer,
comprising the steps of:
(a) storing in said ROM writer a single writing program for each of a plurality of
types of radio pagers;
(b) electrically connecting said radio pager and said ROM writer;
(c) confirming the connection of said radio pager and said ROM writer;
(d) sending a type code request signal from said ROM writer to said radio
pager via said electrical connection;
(e) sending, in response to said type code request signal, a type code signal
representative of said particular type code from said radio pager to said ROM
writer via said electrical connection;
(f) causing said ROM writer to identify the type of said radio pager connected
thereto on the basis of said type code signal;
(g) causing said ROM writer to initiate said writing program corresponding to
said type of said radio pager; and
(h) sending said information from said ROM writer to said ROM of said radio
pager to thereby write said information in said ROM.
Appeal No. 1997-1880
Application No. 08/370,222
Although the APA is not listed as being prior art relied upon in the Examiner's Answer, it is2
nonetheless applied in rejecting the appealed claims.
3
The prior art references of record relied upon by the Examiner in rejecting the
appealed claims are:
Webb et al. (Webb) 4,577,060 Mar. 18, 1986
Jasinaki 5,070,329 Dec. 03, 1991
Admitted Prior Art (APA) in specification at figure 1.2
Claims 1-4, 8 and 10-12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over APA in view of Jasinaki and Webb.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and the
appellant regarding the above-noted rejections, we make reference to the Examiner's
Answer (Paper No. 28, mailed Oct. 17, 1996) for the Examiner's reasoning in support of
the rejections, and to the appellant's brief (Paper No. 27, filed Aug. 7, 1996) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the Examiner. As a consequence of
our review, we make the determinations which follow.
Appeal No. 1997-1880
Application No. 08/370,222
4
Appellant argues that “the references commonly fail to teach the claimed
features of sending a type code request signal from a ROM writer to a radio pager, and
sending, in response to the type code request signal, a type code signal representative of
a particular type code from the radio pager to the ROM writer.” (See brief at page 4.) We
agree with appellant. While the APA teaches general interaction between the radio pager
and the ROM writer, the APA does not teach or suggest the interactive request and
response between the two units.
The Examiner relies on Jasinaki to teach that a “stationary local unit can interrogate
(send a request to) the pager to receive the pager[']s identity instead of having a user
manually input the identity of the pager." (See answer at page 3.) We disagree with the
Examiner. We find that Jasinaki merely teaches a system for automatically identifying
communication receivers, including acknowledge back capability for delivering messages
to the communication receivers on-site. While Jasinaki teaches interactive signaling
between two units to identify the receiver, the reference does not explicitly teach that the
pager type information is included nor does Jasinaki suggest the claimed interactive
signaling with a ROM writer. Furthermore, Jasinaki only teaches this interaction between
the on-site communication system and the radio pager, not the claimed interactive
signaling with the ROM writer.
Appeal No. 1997-1880
Application No. 08/370,222
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The Examiner relies on Webb to teach the transmission of pager type information in
an interregional communication network for pagers. (See answer at page 3.) The
Examiner has directed attention to columns 8 and 9 of Webb. We note that this portion of
Webb pertains to the paging terminal rather than the radio pager
and that the pager type information included in figures 4A and 4B also pertain to the
paging terminal rather than the radio pager. We agree with appellant that Webb does not
teach or suggest the claimed interaction of “sending a type code request signal from said
ROM writer to said radio pager via said electrical connection” and “sending, in response to
said type code request signal, a type code signal representative of said particular type
code from said radio pager to said ROM writer via said electrical connection”, as set forth
in claim 1.
Furthermore, appellant argues that there is no suggestion for combining the three
teachings to achieve appellant's claimed invention. (See brief at pages 5 and 6.) We
agree with appellant. Appellant further argues that if the teachings were combined, the
manner in which the combination of the teachings would automatically interrogate the
pager would be “entirely different” than the claimed invention. (See brief at pages 5 and
6.) We agree with appellant.
Appellant also argues the claimed invention “obviates the need for correlating the
identity of the pager to its type, as well as the need for the additional circuitry
Appeal No. 1997-1880
Application No. 08/370,222
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associated with this correlation.” (See brief at page 7.) Again, we agree with appellant.
Therefore, we will not sustain the rejection of independent claim 1, nor its
dependent claims 2-4, 8 and 12. Similarly, independent claim 10 includes a limitation that
the pager type is determined from a message sent by the radio page. Therefore, we will
also not sustain the rejection of claim 10 or its dependent claim 11.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-4, 8 and 10-12 under
35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1997-1880
Application No. 08/370,222
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