Ex parte Nilssen

Board of Patent Appeals and Interferences

Jul 22, 1999

08004598 (B.P.A.I. Jul. 22, 1999)

Application for patent filed January 14, 1993,1
entitled "Combination Cordless-Cellular Telephone System,"
which is a continuation-in-part of Application 07/860,234,
filed March 27, 1992, now U.S. Patent 5,210,788, issued
May 11, 1993, which is a continuation of Application
07/627,189, filed December 13, 1990, now abandoned, which is a
continuation-in-part of Application 07/562,897, filed
August 6, 1990, now U.S. Patent 5,068,890, issued
November 26, 1991, which is a continuation-in-part of
Application 07/397,266, filed August 23, 1989, now U.S. Patent
5,070,522, issued December 3, 1991, which is a continuation-
in-part of Application 07/136,505, filed December 23, 1987,
now U.S. Patent 4,866,757, issued September 12, 1989, which is
a continuation of Application 06/921,381, filed
October 22, 1986, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte OLE K. NILSSEN, pro se

Appeal No. 96-3618
Application 08/004,5981

ON BRIEF

Appeal No. 96-3618
Application 08/004,598
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Before URYNOWICZ, BARRETT, and DIXON, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 5, 7, 9, 15, 27, 28, 30, 43-
47, 58-62, and 65-77. Claims 2-4, 6, 8, 10-14, 16-26, 29,
31-42, 48-57, 63, and 64 have been canceled. The amendment
received October 21, 1997 (Paper No. 22), has been entered as
noted in the Advisory Action (Paper No. 23).
We affirm-in-part.
BACKGROUND
The disclosed invention is directed to various
arrangements of cellular cordless telephones.
Claim 46 is reproduced below.
46. An arrangement comprising:
a cordless base-station operable to receive a
first incoming wireless telephonic signal as well as to
emit a first outgoing wireless telephonic signal; the
cordless base station being further characterized by
including two transceivers;
a cellular base-station operable to receive a
second incoming wireless telephonic signal as well as to
emit a second outgoing wireless telephonic signal; and
a portable wireless telephone instrument
operable controllably to provide for wireless telephonic
Appeal No. 96-3618
Application 08/004,598
The Examiner erroneously lists Sato et al., U.S.2
Patent 5,210,785, issued May 11, 1993, filed February 27,
1989, in the list of references relied on ([Third]
Supplemental Examiner's Answer, page 6).
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connection with both the cordless base-station and the
cellular base-station, thereby to permit effectuation of
telephone conversations between the portable wireless
telephone instrument and either the cordless base-station
or the cellular base-station.
THE PRIOR ART
The examiner relies on the following prior art
references:2
Yorita 4,768,218 August 30,
1988
(filed April 27,
1987)
Duffy 4,745,632 May 17,
1988
(filed December 27,
1985)
Kinoshita 4,790,000 December 6,
1988
(filed December 10,
1986)
Sakanishi et al. (Sakanishi) 4,939,769 July
3, 1990
(filed July 8,
1988)
Gillig et al. (Gillig) 4,989,230 January 29,
1991
(filed September 23,
1988)
Stoodley et al. (Stoodley) 5,103,474 April 7,
1992
Appeal No. 96-3618
Application 08/004,598
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(filed May 8,
1990)
Emmert et al. (Emmert) 5,151,643 September 29,
1992
(filed March 4,
1991)
Gilhousen et al. (Gilhousen) 5,257,283 October
26, 1993
(filed August 23,
1991)
Schellinger et al. (Schellinger) 5,260,988 November 9,
1993
(filed February 6,
1992)
Bartholomew et al. (Bartholomew) 5,319,634 June 7,
1994
(filed October 7,
1991)
Hong 5,396,538 March
7, 1995
(filed December 24,
1991)
Crane et al. (Crane) 5,533,097 July 2,
1996
(filed December 8,
1993)
Fujii et al. (Fujii) 5,551,060 August 27,
1996
(filed August 28,
1992)
Except for Crane, Appellant does not challenge that the
patents are prior art to the present application.
Appeal No. 96-3618
Application 08/004,598
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THE REJECTIONS
We refer to the Examiner's Answer (Paper No. 11) (pages
referred to as "EA__"), the [First] Supplemental Examiner's
Answer (Paper No. 15) (pages referred to as "SEA__"), the
[Second] Supplemental Examiner's Answer (Paper No. 17) (pages
referred to as "2dSEA"), and the [Third] Supplemental
Examiner's Answer (Paper No. 20) (pages referred to as
"3dSEA__") for a statement of the Examiner's rejections. We
refer to the Reply Brief (Paper No. 12) (pages referred to as
"RBr__"), the Second Reply Brief (Paper No. 16) (pages
referred to as "2dRBr__"), the Third Reply Brief (Paper
No. 19) (pages referred to as "3dRBr__"), and the Fourth Reply
Brief (Paper No. 21) (pages referred to as "4thRBr__") for a
statement of Appellant's arguments thereagainst. Since the
Examiner entered all new grounds of rejection in the
Examiner's Answer, it is not necessary to refer to the Final
Rejection (Paper No. 8) or the Appeal Brief (Paper No. 10).
Because of the new grounds of rejection added at various
points in the Examiner's Answer, [First] Supplemental
Examiner's Answers, and [Second] Supplemental Examiner's
Answer, we identify the first time the rejection was made in
Appeal No. 96-3618
Application 08/004,598
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the list of rejections below. Appellant's response is found
in the Reply Brief which immediately follows the new ground of
rejection. The list of rejections follow the order set forth
in the [Third] Supplemental Examiner's Answer.
1. Claims 1, 5, 7, 9, 30, 43-45, 58, 67-72, and 77 stand
rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which appellant regards as
his invention (new ground of rejection in 2dSEA).
2. Claim 9 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Hong (new ground of rejection in 2dSEA).
3. Claim 15 stands rejected under 35 U.S.C. § 102(e) as
being anticipated by Gillig (new ground of rejection in
2dSEA).
4. Claims 30 and 43-45 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Kinoshita (new ground of
rejection in 2dSEA).
Appeal No. 96-3618
Application 08/004,598
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5. Claims 66-68 and 70-77 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Crane (new ground of
rejection in 2dSEA).
6. Claims 1, 5, and 46 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gillig and Fujii (new
ground of rejection in 2dSEA).
7. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gillig and Yorita (new ground of rejection
in 2dSEA).
8. Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gillig and Duffy (new ground of
rejection in 2dSEA).
9. Claim 47 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gillig, Fujii, and Duffy (new ground
of rejection in 2dSEA).
10. Claim 58 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hong and either Kinoshita or Gillig
(new ground of rejection in 2dSEA).
Appeal No. 96-3618
Application 08/004,598
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11. Claim 69 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Crane and Hong (new ground of
rejection in 2dSEA).
12. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gillig and Bartholomew (new ground of
rejection in EA).
13. Claims 58-60 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gillig and Hong (new ground of
rejection in EA).
14. Claim 27 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gillig, Sakanishi, and Stoodley (new
ground of rejection in EA).
15. Claims 30, 46, and 61 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gillig and Yorita (new
ground of rejection in EA).
16. Claims 43-45 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gillig and Gilhousen (new ground of
rejection in EA).
Appeal No. 96-3618
Application 08/004,598
The Examiner's rejection (SEA17) inadvertently omits3
mention of Stoodley, which is applied to the rejection of
claim 27 from which claim 28 depends.
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17. Claims 1, 5, 66, 67, 71-74, 76, and 77 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Gillig and
Schellinger (new ground of rejection in SEA).
18. Claim 28 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gillig, Stoodley , Sakanishi, and3
Schellinger (new ground of rejection in SEA).
19. Claim 47 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gillig, Yorita, and Schellinger (new
ground of rejection in SEA).
20. Claims 65, 68, 70, and 75 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gillig, Schellinger, and
Emmert (new ground of rejection in SEA).
21. Claim 69 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gillig, Schellinger, Emmert, and Hong
(new ground of rejection in SEA).
Appeal No. 96-3618
Application 08/004,598
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22. Claims 1, 5, 7, 9, 15, 27, 28, 30, 43-47, 58, and 65-77
stand rejected under the judicially created doctrine of double
patenting over claims 1-12 of Appellant's U.S. Patent
5,623,531 (new ground of rejection in 2dSEA).
The Examiner states that "[t]he rejection[s] of claims 9
and 15 under 35 U.S.C. § 103(a) have been withdrawn"
(3dSEA58). Apparently, this statement is a holdover from the
[Second] Supplemental Examiner's Answer, which withdrew the
previous § 103(a) rejection of claim 9 over Gillig and Hong
and the rejection of claim 15 over Gillig and Sakanishi,
because no rejection of claims 9 and 15 was contained in the
[Second] Supplemental Examiner's Answer.
It is noted that there is no rejection of claim 62.
OPINION
1. Claims 1, 5, 7, 9, 30, 43-45, 58, 67-72, and 77:
35 U.S.C. § 112, second paragraph
The Examiner considers the alternative term "and/or" in
claims 1, 7, 9, 30, 58, and 77 to be indefinite (2dSEA26). We
disagree. The term "and/or" is broad, not indefinite. For
example, in claim 1, which contains the phrase "transmit
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and/or receive," the claim would be infringed by a device
which transmits and receives, or by a device which only
transmits, or by a device which only receives. Therefore, the
alternative limitation is met by prior art which transmits and
receives, or by a device which only transmits, or by a device
which only receives. This indefiniteness ground of rejection
of claims 1, 7, 9, 30, and 77, and their dependent claims 5
and 43-45 is reversed.
The Examiner considers the term "substantially higher" in
claim 30 to be a relative term which renders the claim
indefinite (2dSEA26). We disagree. Relative claim language
does not automatically render a claim indefinite.
Acceptability of the claim language depends on whether one of
ordinary skill in the art would understand what is claimed, in
light of the specification. In this case, one of ordinary
skill in the art would have understood that "substantially
higher" means the power level allows cellular base stations to
transmit signals over a distance of several miles while the
power level of cordless base station transmits maybe 100 feet.
This indefiniteness ground of rejection of claim 30 and its
dependent claims 43-45 is reversed.
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Application 08/004,598
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The Examiner considers the terms "under certain
circumstances" and "appropriate" in claim 58 to be relative
terms which render the claim indefinite (2dSEA27). We
disagree. The term "under certain circumstances" qualifies
that the charging current is not always supplied to the
battery (e.g., when the handset is not in the base station
cradle), but that it must be capable of doing so. The term
"appropriate" merely qualifies that the control actions must
be of the right type to effectuate the claimed telephonic
connection. This indefiniteness ground of rejection of
claim 58 is reversed.
The Examiner considers the phrase "such manner as" in
claim 67 to render the claim indefinite because it is unclear
whether the limitations following the phrase are part of the
claimed invention (2dSEA27). We disagree. The phrase
indicates that the arrangement is operable in the way that
follows the phrase. This indefiniteness ground of rejection
of claim 67 and its dependent claims 68-72 is reversed.
2. Claim 9: § 102(e) over Hong
Claim 9 is directed to a conventional cordless telephone
having contactless power transfer to the handset battery when
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the handset is cradled in the base station. Hong shows a
cordless telephone in figure 1 which is connected to a
telephone utility company via telephone lines 14. The handset
18 has a built-in battery 38. The handset is adapted to fit
into the base unit 12 for charging (col. 4, lines 47-49).
Charging is contactless via an induction voltage produced by
power transmitter 32 (col. 4, lines 22-25): "A digital power
receiver 44 detects and rectifies the induction voltage from
the digital power transmitter 32 of the base unit 12 to charge
the battery 38 . . . ." Hong establishes a prima facie case
of anticipation of claim 9.
Appellant argues that "[a]ccording to Applicant's
specification, as well as in accordance with ordinary usage of
the term in the U.S.A., a 'cordless telephone system'
inherently includes various key features, such as a 'hand-set'
with a dial for dialing telephone numbers" (3dRBr4) and that
"Hong neither describes nor suggests a 'cordless telephone
system' in the sense expressly defined by Applicant" (3dRBr4).
To the extent certain features are inherent in a cordless
telephone, they are inherent in the cordless telephone of
Hong. When Hong discloses a cordless telephone handset 18 it
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conveys to one of ordinary skill in the art all the features
of a conventional cordless telephone handset. Hong is
directed to the inductive battery charging feature and it need
not describe what is well known in the art and not important
to the invention. See Paperless Accounting, Inc. v. Bay Area
Rapid Transit System, 804 F.2d 659, 664, 231 USPQ 649, 652
(Fed. Cir. 1986). Thus, Appellant's argument is not
persuasive.
Appellant argues that the Examiner improperly equated
Hong's element 40 to Appellant's handset. Appellant errs
because the Examiner clearly referred to "handset (#18) having
a handset transceiver (#40)" (2dSEA28). In any case, however,
Appellant should know what constitutes the handset in Hong.
Appellant has failed to rebut the prima facie case of
anticipation. Therefore, the rejection of claim 9 is
sustained.
3. Claim 15: § 102(e) over Gillig
Claim 15 is directed to the system shown in Appellant's
figure 17. However, the terms "first," "second," etc. do not
correspond to the description in the specification at page 32.
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Application 08/004,598
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We generally adopt the Examiner's reasons, but note that
the "telephone instrument" at "a third location" is better
read on the telephones known to be attached to the landlines
of the telephone company phone system (TELCO) in Gillig, but
not expressly shown in figure 1, rather than on the community
cordless base station 188 as found by the Examiner (EA31).
In Gillig, the TELCO corresponds to the claimed "public
telephone system" (shown as the central telephone exchange CTE
in Appellant's figure 17). The cordless base station 180 and
antenna 182 in home or office 181 correspond to the claimed
"first transceiver and a first antenna" at "a first location"
(shown as the dual function base transmitter station DFBSz at
location Z in Appellant's figure 17). The cellular base
station 190 and antennas 192, 194 correspond to the claimed
"second transceiver and a second antenna" at "a second
location" (shown as the cellular base station CBSy and
cellular antenna CAy in Appellant's figure 17). The TELCO is
known to those of ordinary skill in the art (indeed, to an
average person) to have other telephones attached to the
system than the ones shown in figure 1 of Gillig, which
telephones correspond to the claimed "telephone instrument" at
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Application 08/004,598
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"a third location" (shown as public telephone PTx at
location X in Appellant's figure 17). The cellular cordless
telephone 10 corresponds to the claimed "cordless-cellular
telephone" at "a fourth location" (shown as the dual function
hand-piece DFHPw in Appellant's figure 17). Gillig
establishes a prima facie case of anticipation of claim 15.
Appellant argues that the "Examiner has failed to show
clearly what element in Gillig's Fig. 1 corresponds to what
element of Applicant's claimed invention" (3dRBr4) and argues
that the Examiner has failed to make a prima facie showing.
This style of argument is totally unpersuasive and is not in
compliance with Patent and Trademark Office (PTO) rules. PTO
rules require that, in addressing a section 102 rejection, an
applicant specify "any specific limitations in the rejected
claims which are not described in the prior art relied upon in
the rejection." 37 CFR § 1.192(c)(8)(iii) (1997). Appellant
does not point out any errors in the rejection.
Appellant has failed to rebut the prima facie case of
anticipation. Therefore, the rejection of claim 15 is
sustained.
4. Claims 30 and 43-45: § 102(e) over Kinoshita
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Kinoshita discloses a portable radio telephone system
which "can be used both for an urban public cellular radio
telephone system and for a private radio telephone system
which is built inside a local area" (col. 1, lines 46-48).
The private radio telephone system attached to the private
branch exchange (PBX) in figure 3 corresponds to the claimed
"first wireless telephone base-station." The private system
has two transceivers (col. 3., lines 65-67): "The radio
telephone subscriber circuits are connected to
transmission/reception antennas 18, 19 through transceivers
(TRX) 16 . . . ." A base station of a cell of the public
cellular system corresponds to the claimed "second wireless
telephone base-station." The portable telephone set 20
corresponds to the claimed "portable wireless telephone
instrument" and can communicate with the private radio
telephone system or the public cellular radio telephone system
(e.g., col. 3, line 65, to col. 4, line 7). The power level
of the private radio telephone system is kept at a very low
intensity so as to not affect the public cellular radio
telephone system (col. 2, lines 10-18), and the cellular
system uses a high power level to cover a greater geographical
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area, which means the power level of the public cellular
system is substantially higher than the power level of the
private radio telephone system. Kinoshita establishes a prima
facie case of anticipation of claim 30.
Appellant argues that the "Examiner has failed to show,
at least with a clarity sufficient to permit a skilled artisan
to see and understand, exactly where Kinoshita describes that
particular structure" (3dRBr5). We consider the rejection to
be sufficiently clear. To the extent that the Examiner has
done things like refer to element 16 as the first wireless
base station, where the base station might be considered to
also include the antennas, this is good enough for anyone
reading the action to understand what was intended since there
is no single element number that could be used.
Appellant asks where Kinoshita describes "a first
wireless telephone base-station," "a second wireless telephone
base-station," and "a portable wireless telephone instrument"
(3dRBr5). These elements have been addressed supra.
Manifestly, Kinoshita does not need to use the same terms as
the claim.
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Appellant argues that "Kinoshita does not clearly
describe his 'telephone set' as being 'portable' or
'wireless'" (3dRBr6). Figure 3 of Kinoshita clearly shows a
person holding a portable or mobile telephone set 20.
Appellant argues that "Kinoshita does not describe his
'telephone set' as being 'operable controllably to provide for
wireless telephonic connection with the first and/or the
second base-station'" (3dRBr6). The operator in Kinoshita can
manually select between the public cellular system and the
private radio telephone system or the mode can be done
automatically (col. 6, lines 32-61), which satisfies the
limitation of "controllably." The term "and/or" is a broad
alternative term that is met by either "and" or "or";
Kinoshita clearly discloses the connection with the public
cellular "or" the private system.
Appellant has failed to rebut the prima facie case of
anticipation. Therefore, the rejection of claim 30 is
sustained. Appellant does not argue the separate
patentability of dependent claims 43-45; hence, these claims
fall with claim 30. Thus, the rejection of claims 43-45 is
also sustained.
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5. Claims 66-68 and 70-77: § 102(e) over Crane
Claim 66 calls for "an antenna; and a first and a second
transceiver, each connected with . . . the antenna," where the
first transceiver is for cordless communication and the second
transceiver is for cellular communication. Crane discloses an
antenna 229 for local-area (i.e., cordless) communications and
a separate antenna 231 for wide-area (e.g., cellular)
communications (col. 3, lines 61-65). Thus, Crane does not
disclose a single antenna connected with both transceivers as
we believe the claim must be interpreted. While the use of a
common antenna might very well be obvious (e.g., see Gillig,
col. 2, lines 58-63), the rejection before us is based on
anticipation. The rejection of claim 66 is reversed.
Claim 67 recites "antenna means" and we find that the two
antennas 229 and 230 in Crane are equivalent to a single
antenna which can transmit two different signals. Crane has a
"large-capacity, rechargeable battery 223" (col. 3, line 51),
which corresponds to the claimed "battery means." Crane has a
cordless telephone handset 105 in communication with a
local-area communications system in the briefcase 101 (col. 2,
lines 43-45), which correspond to the "cordless portable
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telephone instrument" and the "cordless telephone base
station." Crane has a cellular phone unit which plugs into
one of the slots 215, 217, 219 for a wide-area communication
system (col. 3, lines 29-38), which corresponds to the claimed
"cellular telephone instrument." As shown in figure 1, a
person can communicate from the cordless handset 105 to the
cordless base station in briefcase 101 in the local-area
communications system, from the local-area communications
system to the cellular phone unit within the briefcase 101,
and then to cellular system 115. Crane establishes a prima
facie case of anticipation of claim 67.
Appellant argues that the arrangement of claim 67 is not
described by Crane (3dRBr8), but Appellant fails to address
the teachings of Crane and, so, does not rebut the prima facie
case. Appellant does not argue the separate patentability of
dependent claims 70-72; hence, these claims fall together with
claim 67. The anticipation rejection of claims 67 and 70-72
is sustained.
Claim 68 recites a housing means including a cradle for
holding the portable cordless telephone instrument. The
briefcase 101 in Crane is a housing and includes a
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compartment 207 for storing the handset 105; this compartment
is broadly considered to be a cradle. Appellant merely argues
that Crane does not disclose a cradle (3dRBr8), without
addressing the teachings of Crane. The rejection of claim 68
is sustained.
Claim 73 is similar to claim 67 and is anticipated for
the reasons stated in that analysis. Appellant does not argue
the separate patentability of dependent claims 74-76; hence,
these claims fall together with claim 73. The anticipation
rejection of claims 73-76 is sustained.
Appellant's only argument with respect to claim 77 is
that the subject matter of claim 77 is fully disclosed in
grandparent Application 07/627,189 ('189 application), filed
December 13, 1990, and therefore Crane is inapplicable as a
reference against claim 77 (3dRBr9). The Examiner states that
the claimed "cordless base station including a cellular
telephone instrument" was not disclosed in the '189
application and, so, the claim is not entitled to the earlier
date (3dSEA76). Appellant does not rebut the Examiner's
statement in his Fourth Reply Brief; hence, the correctness of
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the Examiner's position is taken as admitted. The rejection
of claim 77 is sustained.
6. Claims 1, 5, and 46: § 103(a) over Gillig and Fujii
Gillig discloses the limitations of claim 1 except for
the limitation of "a second base transceiver functional to
provide telephonic connection with a cellular telephone system
independent of the first base transceiver." The Examiner
finds that Fujii "teaches the use of a base telephone
apparatus [referring to figure 5A] . . . in a cordless
telephone system for the purpose of increasing the spectrum
efficiency in the cordless telephone system" (2dSEA49) and
concludes that it would have been obvious "to incorporate the
use of a base telephone apparatus includes [sic] the second
base transceiver as taught by Fujii, et al in the cordless
telephone system of Gilling, et al for the purpose of
increasing the spectrum efficiency in the cordless telephone
system in order [to] form in one piece an article which has
formerly been formed in two pieces and put together" (2SEA50).
We will not sustain this rejection. Figure 5A of Fujii
shows an inner base station of a cellular system having a
plurality of transceivers and an outer base station having a
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plurality of transceivers. The transceivers of a cellular
base station connect with portable cellular telephone sets,
they do not connect with other cellular base stations as
recited by claim 1 (or, at least, the Examiner has not
established this fact). Moreover, we do not find the
motivation in Fujii to do what the Examiner proposes.
Accordingly, the rejection of claims 1 and 5 is reversed.
Gillig is considered to disclose the limitations of
claim 46. The only possible difference is the cordless base
station "including two transceivers." One of ordinary skill
in the art would have appreciated that the cordless base
station 180 in Gillig must have two transceivers: one for
transmitting and receiving over the telephone line to the
telephone company and one for transmitting and receiving over
the wireless channel to the handset. Since claim 46 would
have been obvious over Gillig, it would have been obvious over
Gillig and Fujii. In any case, however, Appellant does not
argue the rejection of claim 46. The rejection of claim 46 is
sustained.
7. Claim 7: § 103(a) Gillig and Yorita
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Gillig discloses the limitations of claim 7 except for
the "base telephone apparatus connected with at least two
separate telephone lines of a telephone utility company,
thereby to permit making an outgoing telephone call via one of
the two telephone lines while a conversation is being
carried-on via the other one of the two telephone lines." The
Examiner finds that it was "well known in the art to have
multiple line base telephone apparatuses" (2dSEA51) as
evidenced by Yorita. The Examiner also states that "[i]t has
been held that mere duplication of the essential working parts
of a device involves only routine skill in the art" (2dSEA51).
We agree that it was well known in the telephone art to have
telephone sets, commonly business telephone sets such as those
used by receptionists, connected to multiple telephone lines
so that the user may switch between calls. Yorita shows a
cordless telephone base station connected through N telephone
lines to a telephone utility company. Numerous cordless sets
are associated with the base station, but this is not
precluded by the claim language of claim 7. The prior art
teachings would have motivated one of ordinary skill in the
art to provide multiple telephone lines to a cordless
Appeal No. 96-3618
Application 08/004,598
- 26 -
telephone base station for the purpose of allowing the user to
handle more than one call. Thus, the Examiner has established
a prima facie case of obviousness.
Appellant argues that the Examiner erred in relying on
mere duplication of parts (3dRBr11). It is not necessary to
rely on this alternative reasoning by the Examiner.
Appellant argues that the "Examiner has utterly failed to
provide evidence to the effect that a skilled artisan would
have found it obvious to seek to provide two hardwire
telephone connections to a single base telephone apparatus"
(3dRBr12). This argument ignores and does not deny the
Examiner's finding that it was well known in the telephone art
to provide multiple lines to a single telephone set. Further,
Appellant has failed to address the teachings of Yorita.
The prima facie case has not been rebutted. The
rejection of claim 7 is sustained.
8. Claims 27 and 28: § 103(a) over Gillig and Duffy
Claim 27 depends on claim 15 and calls for a "cordless
base station for the cordless-cellular telephone."
Presumably, this refers to the cordless base station DFBS1 in
Appellant's figure 14. The Examiner relies on Duffy. Duffy
Appeal No. 96-3618
Application 08/004,598
- 27 -
discloses a wireless telephone unit attached to a conventional
mobile telephone unit. The mobile telephone unit may be of
the cellular type (col. 3, lines 61-66) and is connected to a
battery power supply 156, as shown in figure 2; the mobile
telephone unit comprises a "cordless base station." Since the
mobile telephone unit is cellular, it has a transceiver to
communicate with a cellular telephone system, as recited in
claim 28; in this respect we disagree with the Examiner's
reference to element 210 in Gillig (2dSEA53), because element
210 is part of the cellular cordless telephone, not part of
the first receiver as claimed. The wireless telephone unit
"may comprise any of the well-known commercially available
units which are intended for wireless operation" (col. 3,
line 66, to col. 4, line 1). It would have been obvious to
combine the cellular cordless telephone of Gillig with a
mobile telephone unit as taught in Duffy to obtain the
wireless advantages of Duffy (e.g., col. 1, lines 6-21), and
because Duffy states that any commercially available telephone
unit can be used (col. 3, line 66, to col. 4, line 1) (which
would include a cellular cordless set as taught by Gillig),
and because Gillig teaches that the cellular cordless
Appeal No. 96-3618
Application 08/004,598
- 28 -
telephone may be a mobile unit installed in a vehicle (col. 2,
line 41). The combination of Gillig and Duffy establishes a
prima facie case of obviousness.
Appellant argues that the "Examiner utterly failed to
provide an explanation of why it would be obvious for a
skilled artisan to seek to make the proposed modifications to
Gillig" (3dRBr12). The motivation is set forth in the
preceding paragraph.
The prima facie case has not been rebutted. The
rejection of claims 27 and 28 is sustained.
9. Claim 47: § 103(a) over Gillig, Fujii, and Duffy
Duffy discloses a wireless telephone unit attached to a
conventional mobile telephone unit. As addressed in the
rejection of claims 27 and 28 in the preceding section, it
would have been obvious to combine the cellular cordless
telephone of Gillig with a mobile telephone unit as taught in
Duffy: (1) to provide the wireless advantages taught by Duffy
(e.g., col. 1, lines 6-21); (2) because Duffy states that any
commercially available telephone unit can be used (col. 3,
line 66, to col. 4, line 1) (which would include a cellular
cordless set as taught by Gillig); and (3) because Gillig
Appeal No. 96-3618
Application 08/004,598
- 29 -
teaches that the cellular cordless telephone may be a mobile
unit installed in a vehicle (col. 2, line 41). The
arrangement of Duffy permits communication between the
wireless telephone unit and a person in hardwired connection
with the public telephone system without a hardwired telephone
line. Appellant has not argued the separate patentability of
claim 47, but relies on the argued patentability of claim 46
(3dRBr12). The rejection of claim 47 is sustained.
10. Claim 58: § 103(a) over Hong and Kinoshita or Gillig
Kinoshita teaches a portable wireless telephone set 20
which carries out communication between an urban public
cellular radio telephone system or a private radio telephone
system, but does not teach inductive battery charging. Gillig
teaches a portable cellular cordless telephone, but does not
teach inductive battery charging. Hong teaches that cordless
telephones use a rechargeable battery which is normally
recharged by mechanically contacting a voltage output end of a
charger with a charging end of the handset (e.g., col. 1,
lines 25-39). This is said to have problems because the
mechanical contacts may oxidize or become contaminated with
alien substances (e.g., col. 1, lines 40-46). Hong provides
Appeal No. 96-3618
Application 08/004,598
- 30 -
inductive charging between the base unit 12 and the handset 18
(col. 3, line 29, to col. 4, line 27). Hong does not disclose
a combined cellular cordless telephone instrument.
The Examiner concludes that it would have been obvious to
incorporate the cellular cordless feature of Kinoshita or
Gillig in the rechargeable handset of Hong to provide the
advantages of a cellular cordless telephone instrument
(2dSEA57). Stated differently, it would have been obvious to
provide inductive battery charging as taught by Hong in the
cellular cordless telephone system of Gillig or Kinoshita to
overcome the problem of contamination of mechanical contacts
which exist in any mechanical contact charger. In our
opinion, the Examiner has established a prima facie case of
obviousness.
Appellant argues that the rejection fails to point out
where Hong teaches a "portable wireless telephone instrument"
as defined on page 47 of the specification (3dRBr13). Hong
expressly teaches that the inductive recharging structure is
applicable to a charging a portable radio telephone (col. 2,
lines 8-11) and radio telephone includes a cordless telephone
(col. 1, lines 21-24). In figure 1, the portable handset 18
Appeal No. 96-3618
Application 08/004,598
- 31 -
is clearly identified. A cordless telephone meets the
definition of a "portable wireless telephone instrument."
Appellant argues that the Examiner has failed to provide
any explanation why one of ordinary skill in the art would
have been motivated to modify Hong and "a skilled artisan
would have to see a resulting benefit whose value would
clearly outweigh all the obvious drawbacks associated with so
modifying Hong, drawbacks such as: increased size, weight,
power drain, structural and functional complexities, cost,
spectrum requirements, etc." (3dRBr14). One skilled in the
art would have been motivated to modify Hong to achieve the
benefits of a telephone set that could also operate with a
cellular system, which benefits are evident from Gillig or
Kinoshita. One skilled in the art would also have been
motivated to modify either Gillig or Kinoshita to have
inductive recharging to provide more reliable charging as
taught in Hong. The fact that the modification may require
tradeoffs or have disadvantages evident to one of ordinary
skill in the art does not teach away from the modification
itself.
Appeal No. 96-3618
Application 08/004,598
- 32 -
The prima facie case has not been rebutted. The
rejection of claim 58 is sustained.
11. Claim 69: § 103(a) over Crane and Hong
Claim 69 adds the limitations that the portable cordless
telephone instrument is held in a cradle where it can be
recharged by a noncontacting charging means. Hong teaches a
contactless recharger for a cordless telephone when the
handset is mounted in the cradle. It would have been obvious
to add the noncontacting recharger of Hong to any cordless
telephone set, such as Crane, to provide more reliable
charging. The combination of Crane and Hong establishes a
prima facie case of obviousness.
Appellant refers to the arguments presented in connection
with claim 68 (3dRBr14). As we noted in the discussion of
claim 68, Appellant merely argues that Crane does not disclose
a cradle (3dRBr8), without addressing the teachings of Crane.
The rejection of claim 68 was sustained.
Appellant argues that "Claim 69 includes a feature by
which: 'to permit a person to use the telephone instrument
for carrying out telephone conversations with cordless base
station as well as with a cellular base station'" (3dRBr14)
Appeal No. 96-3618
Application 08/004,598
- 33 -
and that this feature is taught by neither Crane nor Hong.
The quoted language is actually contained in parent claim 67,
which we found to be anticipated by Crane as discussed in
section 5.
The prima facie case has not been rebutted. The
rejection of claim 69 is sustained.
12. Claim 7: § 103(a) over Gillig and Bartholomew
Gillig discloses the limitations of claim 7 except for
the "base telephone apparatus connected with at least two
separate telephone lines of a telephone utility company,
thereby to permit making an outgoing telephone call via one of
the two telephone lines while a conversation is being
carried-on via the other one of the two telephone lines." The
Examiner finds that it was "well known in the art to have
multiple line base telephone apparatuses" (EA8) as evidenced
by Bartholomew. We agree that it was well known in the
telephone art to have telephone sets, commonly business
telephone sets such as those used by receptionists, connected
to multiple telephone lines so that the user may switch
between calls. Bartholomew, figure 1, shows a multiline phone
set 13 having N lines 12. Such prior art teachings would have
Appeal No. 96-3618
Application 08/004,598
- 34 -
motivated one of ordinary skill in the art to provide multiple
telephone lines to a cordless telephone base station for the
purpose of allowing the user to handle more than one call.
The combination of Gillig and Bartholomew establishes a prima
facie case of obviousness.
Appellant argues that Bartholomew does not describe a
telephone apparatus permitting two telephone calls,
"especially not in combination with, or in the context of, the
particular 'cordless telephone system' defined by claim 7"
(RBr8). One of ordinary skill in the telephone art would have
had sufficient skill to apply multiple lines known in
conventional telephone sets to cordless telephone sets.
The prima facie case has not been rebutted. The
rejection of claim 7 is sustained.
13. Claims 58-60: § 103(a) over Gillig and Hong
We refer to the discussion in section 10, supra, for a
discussion of the prima facie case over the combination of
Gillig and Hong.
Appellant argues (RBr8) that the Examiner erred in
stating that "it would have been obvious . . . to use the
inductive charging technique taught by Hong in the system
Appeal No. 96-3618
Application 08/004,598
- 35 -
taught by Gillig '230 in order to isolate the hand set from
the power source so as to avoid an accidental power surge"
(EA9). Appellant argues that there is no general reason to
believe that Gillig's cellular cordless telephone is
susceptible to power surges (RBr8). We are not sure where the
Examiner got the motivation about avoiding power surges;
however, Hong provides express motivation to use an inductive
charging circuit to overcome the problems of mechanical
contacts. The references clearly suggest the combination.
The prima facie case has not been rebutted. The
rejection of claims 58-60 is sustained.
14. Claim 27: § 103(a) over Gillig, Sakanishi, and Stoodley
Claim 27 depends from claim 15. In the [Second]
Supplemental Examiner's Answer, the Examiner withdrew the
rejection of claim 15 under 35 U.S.C. § 103 over Gilling and
Sakanishi (2dSEA25) and entered a new ground of rejection
under § 102(e) over Gillig; thus, Sakanishi is not required
for the rejection. We have sustained the § 102 rejection of
claim 15 over Gillig.
Claim 27 recites that "the first transceiver and the
first antenna are combined with a first battery and integrated
Appeal No. 96-3618
Application 08/004,598
- 36 -
into an [sic] portable cordless entity operable to function as
a cordless base station for the cordless-cellular telephone."
It is noted that claim 27 only requires the base station to be
"cordless" in the sense of having no attached power cord,
there are no limitations that would require it to be cordless
in the sense of having no hardwire connection to a telephone
line.
Stoodley discloses that a cordless telephone base unit
has a power supply and "[t]he power supply may be arranged to
draw power from a utility outlet, and may optionally be
provided with a battery backup" (col. 7, lines 30-32).
Manifestly, with a battery backup, the base unit can be
operated without a cord. We agree with the Examiner that it
would have been obvious to provide a battery in the base
station of Gillig "in order to provide power to the base
station in the event of a [sic] electrical outage of the power
company" (EA12) and also because a battery would allow the
base station to be moved around without the restriction of a
cord. We do not find where Appellant traversed this rejection
of claim 27. The rejection of claim 27 is sustained.
15. Claims 30, 46, and 61: § 103(a) over Gillig and Yorita
Appeal No. 96-3618
Application 08/004,598
- 37 -
Gillig teaches a portable cellular cordless telephone.
The cordless base station 180 or the community cordless base
station 188 correspond to the claimed "first wireless
telephone base-station" of claim 30, the "cordless
base-station" of claim 46, and the "first wireless
base-station" of claim 61. The cellular base station 190
corresponds to the claimed "second wireless telephone
base-station" of claim 30, the "cellular base-station" of
claim 46, and the "second wireless base-station" of claim 61.
The cellular cordless telephone 10 corresponds to the
"portable wireless telephone instrument" of claims 30, 46,
and 61. Gillig can effectuate connections between the
cordless base station, the cellular base station, or both at
the same time (col. 3, lines 35-37). The TELCO in Gillig is
known to be connected to many other telephone sets, one of
which is the "first telephone instrument" of claim 61. Since
the cordless connection has a very limited range (maybe 100
feet) and the cellular connection has a much greater range (on
the order of miles), it would have been apparent to one of
ordinary skill in the art that the cellular base station has a
Appeal No. 96-3618
Application 08/004,598
- 38 -
power level "substantially higher" than the cordless base
station.
The Examiner finds that Gillig does not expressly teach
that the cordless base station contains two transceivers. The
Examiner finds that the community cordless base station 188
must have multiple transceivers or a multiplexing scheme. The
Examiner states that it was "well known in the art to have
multiple transceivers within a base station as evidenced by
Yorita and therefore, it would have been obvious to one of
ordinary skill in the art at the time of the invention to use
multiple transceivers in the base station in order to service
more than one party at a given time" (EA13-14). We agree with
the Examiner's rationale, which is also unchallenged by
Appellant. It is also noted that the cordless base station
180 must have two transceivers: one for transmitting and
receiving over the telephone line to the telephone company and
one for transmitting and receiving over the wireless channel
to the handset. The combination of Gillig and Yorita
establishes a prima facie case of obviousness.
Appellant argues with respect to claim 30 that the
feature of the second wireless telephone base station having a
Appeal No. 96-3618
Application 08/004,598
- 39 -
power level "substantially higher than the first power level
[of the first base station]" is not described or suggested
(RBr9). Obviousness is determined through the eyes of one of
ordinary skill in the art. 35 U.S.C. § 103(a). Persons of
ordinary skill in the art must be presumed to know something
about the art apart from what the references expressly
disclose. In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319
(CCPA 1962). One of ordinary skill would have known that a
cellular base station transmits at a substantially higher
power level than a cordless base station because the cellular
transmitted signal must cover a greater distance.
Appellant's arguments (RBr10) do not clearly point out
what feature of claim 46 is not taught by the references. It
is argued that the "cordless base-station" of claim 46 must be
a private base station and cannot reasonably be equated with
Gillig's "community cordless base station." We find no such
limitation, expressly or impliedly, in claim 46.
Nevertheless, we have noted that the cordless base station 180
in Gillig must have two transceivers and also meets claim 46.
The prima facie case has not been rebutted. The
rejection of claims 30, 46, and 61 is sustained.
Appeal No. 96-3618
Application 08/004,598
- 40 -
16. Claims 43-45: § 103(a) over Gillig and Gilhousen
Claims 43-45 recite that the portable wireless telephone
instrument emits a third outgoing wireless telephonic signal
at a third power level and the first power level (of the
cordless base station) is adjusted in response to the third
outgoing telephonic signal (claim 43) or the third power level
(of the handset) is adjusted in response to information
conveyed by either the first outgoing wireless telephonic
signal (of the cordless base station, claim 44) or the second
outgoing wireless telephonic signal (of the cellular base
station, claim 45). The Examiner finds that "[i]t [wa]s well
known in the art to adjust both base station transmit levels
as well as handset transmit power levels as the signal is
determined to be at varying strengths" (EA14), as evidenced by
Gilhousen. Gilhousen discloses adjusting the mobile unit
transmitter power and the base station transmitter power.
Appellant acknowledges, but does not respond to the rejection
in the Reply Brief; thus, we presume that Appellant admits the
Examiner's finding of what was well known in the art and in
the teachings of Gilhousen. The rejection of claims 43-45 is
sustained.
Appeal No. 96-3618
Application 08/004,598
- 41 -
17. Claims 1, 5, 66, 67, 71-74, 76, and 77:
§ 103(a) over Gillig and Schellinger
Gillig discloses the limitations of claim 1 except for
the limitation of "a second base transceiver functional to
provide telephonic connection with a cellular telephone system
independent of the first base transceiver." The Examiner
relies on Schellinger, figure 1. Figure 1 shows a cellular
cordless portable telephone 101 may be in communication with a
cordless base station 115 in a home or office, one of several
cellular base stations 105, 107 in a cellular telephone system
103, or "a microcellular base station 113, which is a cellular
adjunct cell having lower power and limited capabilities but
providing public radiotelephone service to distinct areas such
as shopping malls, airports, etc." (col. 3, lines 14-17). The
Examiner states that the placement of the microcellular base
station is arbitrary and concludes that "it would have been
obvious . . . to include both the microcellular base station
and the cordless base station within the same housing . . .
because it would allow the two base stations to share common
elements (and space) and reduce the cost and use of materials
of the two base stations" (SEA16).
Appeal No. 96-3618
Application 08/004,598
- 42 -
We disagree with the Examiner's reasoning. The
microcellular system is intended to cover a much wider area
than the home or office area covered by a cordless system and,
moreover, is part of a cellular telephone company service, not
a (normally) private cordless system. There is no motivation,
express or implied, to combine the two types of systems. "The
mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992), citing In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
However, even if there was motivation for the combination, we
do not see how the combination meets the limitation of claim 1
for the second transceiver to communicate with a cellular
telephone system, unless the Examiner is relying on some
unstated interpretation of the claim. The microcellular
system communicates with the TELCO over hardwire telephone
lines, not with a cellular telephone system like 103.
Therefore, the rejection of claims 1 and 5 is reversed.
Appeal No. 96-3618
Application 08/004,598
- 43 -
Claim 66 recites a battery operated portable structure
having two transceivers. Neither Gillig nor Schellinger
discloses a battery operated structure and we do not find
where the Examiner addresses this limitation. Claim 66
further recites that the structure effectuates communication
between a cellular base station and the structure, and between
the structure and a portable cordless telephone instrument.
Assuming, arguendo, that the combination of Gillig and
Schellinger is proper, the microcellular system would
communicate with the TELCO over hardwired telephone lines, not
a cellular base station as claimed. For these two reasons,
the rejection of claim 66 is reversed.
Claims 67 is are similar to claim 66 and the rejection of
claim 67 and its dependent claims 71 and 72 is reversed for
the same two reasons.
Claims 73 and 77 recite connect means to effectuate
communication between a cordless telephone instrument, the
cordless base station, a cellular telephone instrument, and a
cellular base station, which is similar to the cellular
cordless scheme in claim 66. Assuming, arguendo, that the
combination of Gillig and Schellinger is proper, it does not
Appeal No. 96-3618
Application 08/004,598
- 44 -
suggest the microcellular system communicating with the
cellular base station. The rejection of claims 73 and 77, and
dependent claims 74 and 76, is reversed.
18. Claim 28: § 103(a) over Gillig,
Sakanishi, Stoodley, and Schellinger
Claim 28 requires the "portable entity" corresponding to
a cordless base station to have an auxiliary transceiver for
communication with a cellular telephone system. As discussed
in the preceding section 17, Schellinger does not suggest
putting a cellular transceiver in the cordless base station
that would communicate with a cellular telephone system. The
rejection of claim 28 is therefore reversed.
19. Claim 47: § 103(a) over
Gillig, Yorita, and Schellinger
Claim 47 requires the cordless base station to be
operable to convey a conversation "without having connection
with a hard-wired telephone line." Schellinger does not
suggest putting a cellular transceiver in the cordless base
station that would communicate with a cellular telephone
system and, therefore, does not suggest a non-hardwired
Appeal No. 96-3618
Application 08/004,598
- 45 -
connection with the TELCO. The rejection of claim 47 is
reversed.
20. Claims 65, 68, 70, and 75:
§ 103(a) over Gillig, Schellinger, and Emmert
Claim 65 recites a "structure" corresponding to a
cordless base station having a rechargeable battery. The
Examiner applies Emmert. Emmert teaches a rechargeable
battery in the handset 101, not in the cordless base station
as required by the claim. Nevertheless, this limitation is
not argued by Appellant.
Claim 65 further recites "a first and second transceiver"
"the arrangement being further characterized by being
functional, even if not being connected with said at least one
hardwired telephone line, to effectuate telephonic connection
between a portable cordless telephone instrument and a
cellular telephone base station." Schellinger does not
suggest putting a cellular transceiver in the cordless base
station that would communicate with a cellular telephone
system and, therefore, does not suggest a non-hardwired
connection with the TELCO. Emmert does not cure this
Appeal No. 96-3618
Application 08/004,598
- 46 -
deficiency. The rejection of claim 65 and its dependent
claims 68 and 70 is reversed.
With respect to the rejection of claim 75, Emmert does
not cure the deficiency in the combination of Gillig and
Schellinger with respect to claim 73. Therefore, the
rejection of claim 75 is reversed.
21. Claim 69: § 103(a) over Gillig,
Schellinger, Emmert, and Hong
Hong is applied to teach contactless battery recharging
of a battery in the handset. Hong does not supply the missing
teaching of a cellular telephone instrument in the cordless
base station to provide communication with a cellular
telephone base station in claim 67. Accordingly, the
rejection of claim 69 is reversed.
22. Claims 1, 5, 7, 9, 15, 27, 28, 30, 43-47, 58,
and 65-77: judicially created double patenting
The Examiner relies on In re Schneller, 397 F.2d 350,
158 USPQ 210 (CCPA 1968) (so-called Schneller-type double
patenting). Schneller is an obviousness-type double patenting
case with a special fact situation. Schneller applies to
those situations where: (1) the subject matter recited in the
Appeal No. 96-3618
Application 08/004,598
- 47 -
claims of the application is fully disclosed and covered by a
claim in the patent (i.e., there has been no improvement or
modification invented after filing and the application claim
reads on subject matter which has been protected by a patent
claim); and (2) there is no reason why appellant was prevented
from presenting the same claims for examination in the issued
patent (i.e., there is no justification for extending the
protection, such as the existence of a restriction
requirement). Obviousness-type double patenting rejections
can usually be overcome with a terminal disclaimer.
Appellant only argues that the "Examiner has utterly
failed to provide clear prima facie evidence in support of his
rejections" (3dRBr15). Merely denying that a prima facie case
has been made is a non-helpful and nonpersuasive style of
argument because it does not address the merits by pointing
out the errors in the Examiner's position. In an
obviousness-type double patenting rejection, Appellant is in
the best position to distinguish the claims of the application
from the claims of the patent. Although we could technically
sustain the rejection based on a lack of argument by
Appeal No. 96-3618
Application 08/004,598
- 48 -
Appellant, in this situation, a cursory review shows that the
Examiner mistakenly applied the principle in Schneller.
Patent 5,623,531 (the '531 patent) is said to be a
continuation-in-part of Application 181,833, filed
January 8, 1994, which is said to be a continuation of the
instant application. The '531 patent discloses the subject
matter covered by the claims of this application. However,
the Examiner errs in stating that the "the patent and the
application are claiming common subject matter" (2dSEA60).
The claims of the '531 patent are directed to a telephone and
auxiliary power distribution system, not to the features of a
cordless or cellular cordless telephone. Because the subject
matter of the present claims do not fall within the claims of
the '531 patent and because the Examiner has not otherwise
established that the subject matter of the present claims
would have been obvious over the claims of the '531 patent,
the rejection of claims 1, 5, 7, 9, 15, 27, 28, 30, 43-47, 58,
and 65-77 is reversed.
Appeal No. 96-3618
Application 08/004,598
- 49 -
CONCLUSION
One or more of the rejections of claims 7, 9, 15, 27, 28,
30, 43-47, 58-61, 67-69, and 73-77 are sustained.
The rejections of claims 1, 5, 62, 65, 66, and 70-72 are
reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 96-3618
Application 08/004,598
- 50 -
Ole K. Nilssen
408 Caesar Drive
Barrington, IL 60010