Ex parte OHKI et al.

Board of Patent Appeals and Interferences

Sep 26, 2001

08363315 (B.P.A.I. Sep. 26, 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written for publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MASAHIRO OHKI and YUKITSUNA FURUYA
____________
Appeal No. 1999-1895
Application No. 08/363,315
____________
ON BRIEF
____________
Before THOMAS, GROSS, and BLANKENSHIP, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 15, which are all of the claims
pending in this application. In the Examiner's Answer, the
examiner withdraws the rejection of claims 9 through 12.
Accordingly, claims 1 through 8 and 13 through 15 remain
before us on appeal.
Appellants' invention relates to a radio data
communication system using a spread spectrum scheme.
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Application No. 08/363,315
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Appellants increase the speed of transmission without
increasing the bit error rate by dividing the incoming k-bit
signal into n k/n-bit signals. Claim 5 is illustrative of the
claimed invention, and it reads as follows:
5. A transmitting apparatus comprising:
converting means for converting a data signal to be
transmitted to a k-bit parallel signal, where k is a
predetermined integer equal to the value of 2 or greater;
encoding means for mapping each of k/n-bit signals to the
signal point locations of a predetermined modulation scheme to
output n encoded signals, the k/n-bit signals being obtained
by dividing the k-bit parallel signal into n parts, where n is
a predetermined integer equal to the value of 2 or greater;
first phase shifting means for causing a phase difference
of B/2 between any two encoded signals adjacent to onen
another among the n encoded signals;
spectrum spreading means for spreading each of the n
encoded signals having said phase difference to output n
spectrum spread signals;
combining means for combining the n spectrum spread
signals to generate a digital transmission signal; and
radio transmission means for transmitting a transmission
wave based on the digital transmission signal.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
De Gaudenzi et al. 5,327,455 Jul. 05, 1994
(De Gaudenzi)
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Application No. 08/363,315
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Claims 1 through 8 and 13 through 15 stand rejected under
35 U.S.C. § 103 as being unpatentable over De Gaudenzi.
Reference is made to the Final Rejection (Paper No. 7,
mailed September 3, 1996) and the Examiner's Answer (Paper
No. 15, mailed December 9, 1997) for the examiner's complete
reasoning in support of the rejection, and to appellants'
Brief (Paper No. 14, filed August 29, 1997) and Reply Brief
(Paper No. 16, filed February 9, 1998) for appellants'
arguments thereagainst.
OPINION
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by appellants and the examiner. As a consequence of our
review, we will reverse the obviousness rejection of claims 1
through 8 and 13 through 15.
First we note that claim 15 depends from claim 12, now
considered allowable by the examiner (Answer, page 8).
Accordingly, we reverse the obviousness rejection of claim 15.
Next, we note that the examiner indicates (Answer, page
7) that the rejection of claim 9 is withdrawn because the
examiner agrees with appellants that De Gaudenzi fails to
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Application No. 08/363,315
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disclose the second phase shifting means for canceling the
phase shift of the first phase shifting means. Independent
claim 1 recites, in pertinent part, "second phase shifting
means for causing the removal of said phase difference of B/2n
between any two reverse-spread digital signals adjacent to one
another among the n reverse-spread digital signals, thereby
cancelling said phase shift of the first phase shifting
means," which is word for word the same as the limitation of
claim 9 found lacking from De Gaudenzi. Since we agree with
both appellants and the examiner that De Gaudenzi fails to
disclose a second phase shifting means, as claimed, we will
reverse the rejection of claim 1 and its dependents, claims 2-
4, for the same reasons given by the examiner for indicating
the allowability of independent claim 9.
Similarly, claim 13 recites, in pertinent part, "phase
shifting the n reverse-spread digital signals in order to
remove said phase difference of B/2 between any two reverse-n
spread digital signals adjacent to one another among the n
reverse-spread digital signals, thereby cancelling the first
phase shift." Thus, claim 13 includes a step of phase
shifting a second time to cancel a first phase shift, which
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has been determined to be lacking from De Gaudenzi.
Accordingly, we will reverse the rejection of claim 13 and its
dependent, claim 14, for the same reasons given by the
examiner for indicating the allowability of independent claim
9.
The claims remaining, claims 5 through 8, do not include
a second phase shifting step or means. However, independent
claim 5 does recite, in pertinent part, "first phase shifting
means for causing a phase difference of B/2 between any twon
encoded signals adjacent to one another among the n encoded
signals."
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The examiner asserts (Answer, page 5) that:
De Gaudenzi recites (Col. 3, lines 39-44), "The way
in which coded symbols are associated to the PSK
constellation points is properly selected to
optimize system performance. The target is to
maximize the Euclidean distance between the
transmitted signals (signal points)." The Euclidean
distance is the distance between the signal points
in the constellation. It is clear from this passage
that inherent in the De Gaudenzi reference is the
use of Gray coding. This allow [sic, allows] the
maximum distance between signal points to be
determined in such a way to order to lower the BER
(optimize system performance) in the system in
comparison to other systems in which no mapping was
used. And the Gray coding system maps k information
bits to the M=2 possible phases. Therefore, tok
design the system to have a distance between B/2k
between any two adjacent bits is inherent in the De
Gaudenzi reference. The recitation set forth in the
De Gaudenzi reference indicates, which out [sic,
without] using the exact phrase, that Gray coding is
being implemented in the system.
However, appellants state (Brief, page 7) that the claimed
phase shifting cannot be inherent because there are other
coding schemes which are available as alternatives to the use
of Gray Coding. Further, appellants contend (Brief, page 10)
that in De Gaudenzi, the phase shift of B/2 is introduced for
well-known quadrature modulation, whereas the claim calls for
a phase shift of B/2 , where n must be greater than or equaln
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to 2. In other words, the claimed phase shift must be B/4 or
B/8 or B/16, etc., but can never be B/2.
The Court held in In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1950-51 (Fed. Cir. 1999) that:
To establish inherency, the extrinsic evidence "must
make clear that the missing descriptive matter is
necessarily present in the thing described in the
reference, and that it would be so recognized by
persons of ordinary skill." Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d
1746, 1749 (Fed. Cir. 1991). "Inherency, however,
may not be established by probabilities or
possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not
sufficient." Id. at 1269, 20 U.S.P.Q.2d at 1749
(quoting In re Oelrich, 666 F.2d 578, 581, 212
U.S.P.Q. 323, 326 (C.C.P.A. 1981).
Thus, to prove that the claimed phase shifting is, in fact,
inherent to De Gaudenzi's method and system, the examiner
needs to provide extrinsic evidence showing that the claimed
phase shifting is necessarily present. However, the examiner
provides no such evidence. Further, the examiner fails to
respond to appellants' argument that a phase shift of B/2,
rather than the claimed phase shift, is introduced by De
Gaudenzi. Consequently, we cannot accept the examiner's bald
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assertion that the claimed phase shifting is, in fact,
inherent to De Gaudenzi's method and system.
In addition, the Court recently held that "[w]ith respect
to core factual findings in a determination of patentability,
however, the Board cannot simply reach conclusions based on
its own understanding or experience -- or on its assessment of
what would be basic knowledge or common sense." In re Zurko,
No. 96-1258 (Fed. Cir. August 2, 2001). Thus, as the examiner
has provided no reference or evidence of the obviousness of
the claimed phase shifting, we decline to find that it would
have been obvious. Since the examiner has failed to show with
appropriate evidence that De Gaudenzi meets the claimed phase
shifting, the examiner has failed to establish a prima facie
case of obviousness. Accordingly, we cannot sustain the
obviousness rejection of claim 5 nor of its dependents, claims
6 through 8.
CONCLUSION
The decision of the examiner rejecting claims 1 through 8
and 13 through 15 under 35 U.S.C. § 103 is reversed.
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Application No. 08/363,315
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REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
APG:clm
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Application No. 08/363,315
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