Ex Parte Nakama

Patent Trial and Appeal Board

Apr 14, 2014

11141819 (P.T.A.B. Apr. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HIDEKAZU NAKAMA
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Appeal 2011-011147
Application 11/141,819
Technology Center 2400
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Before JEFFREY S. SMITH, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011147
Application 11/141,819
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 4, 5, 7, 8, 10, 11, and 16 -20. Claims 2, 3, 6, 9 and 12-15 are withdrawn
from consideration. We have jurisdiction over the rejected claims under 35
U.S.C. § 6(b).
We affirm.
THE INVENTION

The claims are directed to a dual mode communication system. Claim
1, reproduced below, is representative of the claimed subject matter:
1. A communication system comprising:
a cordless handset;
a base unit for communicating with said cordless
handset;
a first transceiver within said base unit adapted to
communicate with said cordless handset;
an interface within said base unit for communicating with
a first network;
a second transceiver within said base unit adapted to
communicate with a second network;
a circuit within said base unit for routing signals between
said first transceiver and said interface in a first mode of
operation and for routing signals between said first transceiver
and said second transceiver in a second mode of operation; and
a central processing unit within said base unit for causing
said circuit to switch between said first mode and said second
mode in response to a control signal.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ha US 6,452,556 B1 Sept. 17, 2002
Uchiyama US 2003/0078071 A1 Apr. 24, 2003
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Application 11/141,819
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Janssen US 6,937,854 B2 Aug. 30, 2005 (filed Jan. 6, 2003)

REJECTIONS1
The Examiner made the following rejections:
Claims 1, 4, 5, 7, 8, 10, 11 and 20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Uchiyama. Ans. 3-7.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama and Ha. Ans. 7-8.
Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama and Janssen. Ans. 8-9.

APPELLANT’S CONTENTION
Uchiyama’s wireless telephone 6 is not part of or within the base unit
and therefore fails to disclose a second transceiver within the base unit as
required by claim 1. App. Br. 5-8.

ISSUE ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 5-8) the
issue presented on appeal is whether the Examiner erred in finding
Uchiyama’s wireless telephone 6 placed in cradle 16 of docking station 2
discloses a second transceiver within a base unit as required by claim 1.

1 Appellant argues the rejection of claim 1. Separate patentability is not
argued for claims 4, 5, 7, 8, 10, 11, and 16 -20. Therefore, we decide the
appeal of claims 1, 4, 5, 7, 8, 10, 11, and 16 -20 based on claim 1 alone. See
37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2011-011147
Application 11/141,819
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 3-9) and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellant’s Appeal Brief (Ans. 9-15) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
Appellant contends “the prior art does not teach or render obvious a
base unit for communicating with a cordless handset that includes an internal
transceiver for communicating with a cellular network.” App. Br. 6.
Appellant argues “[w]hile the wireless telephone is part of the overall
communication system of Uchiyama, it is not part of or within the base
unit.” Id. The Examiner responds “Uchiyama clearly illustrates wireless
telephone within the base unit placed in the wireless cradle on Fig[s]. 1-6
and [0026].” Ans. 10. The Examiner further finds the disputed limitation
within said base unit was added by later amendment and is not original
disclosure. Id. In the absence of any disclosure of particular locations of
modules with respect to the housing, the Examiner finds the “meaning of
‘within said base unit’ [includes] electrically or mechanically connected to
elements as illustrated on Fig. 1A.” Id. Therefore, the Examiner finds
Uchiyama discloses the disputed limitation and anticipates claim 1. Ans.
3-4.
We agree with the Examiner and find Appellant’s argument
unpersuasive of error. The Examiner has provided an exceedingly thorough
and exhaustive response to each of Appellant’s arguments (Ans. 9-15) which
responses we find persuasive and adopt herein. During examination of a
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Application 11/141,819
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patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). We find the Examiner’s interpretation of the disputed
limitation of a second transceiver within said based unit to include
Uchiyama’s wireless telephone 6 “electrically or mechanically connected to
elements as illustrated on Fig. 1A . . .” (Ans. 10) as both reasonable and
consistent with the Specification. In contrast, we find Appellant’s arguments
to the contrary unpersuasive for the reasons articulated by the Examiner.
For the reasons supra we find the Examiner did not err and sustain the
rejection of independent claim 1 and, for the same reasons, independent
claims 7 and 8 under 35 U.S.C. § 102(b) as being anticipated by Uchiyama
together with the rejection of dependent claims 4, 5, 10, 11 and 20 not
separately argued. For similar reasons we further sustain the rejections of
claim 16 under 35 U.S.C. § 103(a) over Uchiyama and Ha and claims 17-19
over Uchiyama and Janssen, because these dependent claims also are not
separately argued.

CONCLUSIONS
1. The Examiner did not err in finding Uchiyama’s wireless telephone 6
placed in cradle 16 of docking station 2 discloses a second transceiver
within a base unit as required by claim 1.
2. The Examiner did not err in rejecting claims 1, 4, 5, 7, 8, 10, 11 and
20 under 35 U.S.C. § 102(b) as being anticipated by Uchiyama.
3. The Examiner did not err in rejecting claim 16 under 35 U.S.C.
§ 103(a) over Uchiyama and Ha.
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4. The Examiner did not err in rejecting claims 17-19 under 35 U.S.C.
§ 103(a) over Uchiyama and Janssen.

DECISION
The Examiner’s decision to reject claims 1, 4, 5, 7, 8, 10, 11, and 16 -
20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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