Ex Parte Park

Board of Patent Appeals and Interferences

Mar 21, 2003

09131279 (B.P.A.I. Mar. 21, 2003)

1 The panel decided that a reversal of the examiner’s rejection was necessary based upon
the showing in the brief due to a lack of a prima facie case by the examiner and notified
appellant’s representative that an Oral Hearing was not necessary.
2 The examiner has withdrawn the rejection under 35 USC § 112, first paragraph.
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publication and is not binding precedent of the Board.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 JOO-SEUNG PARK
____________
Appeal No. 2002-1400
Application No. 09/131,279
____________
ON BRIEF1
____________
Before RUGGIERO, DIXON and BLANKENSHIP, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-15,
which are all of the claims pending in this application.2
We REVERSE.
Appeal No. 2002-1400
Application No. 09/131,279
2
BACKGROUND
Appellant's invention relates to a cordless facsimile system with telephone
answering function incorporated into the portable cordless unit. An understanding of
the invention can be derived from a reading of exemplary claim 1, which is reproduced
below.
1. A unitary, portable, wireless, cordless facsimile unit with a telephone answering
function, said facsimile unit adapted to communicate via a base unit connected to a
telephone network, said facsimile unit comprising a single housing in which is located:
a radio circuit for demodulating a reception signal received from the base unit via
an antenna, and for modulating a transmission signal for transmission to
the base unit via said antenna;
a voice processor for converting an analog voice signal output from the radio
circuit into digital voice data and converting the digital voice data into the
analog voice signal for transmission to the radio circuit;
a memory for storing voice data for an outgoing message and an incoming
message;
a controller having means for establishing a speech path with the telephone
network via the base unit upon receiving a ring signal reflecting an
incoming call from the base unit, means for reading the voice data for the
outgoing message stored in the memory to transmit the read voice data to
the base unit through the voice processor and the radio circuit, and means
for storing in the memory the voice data for the incoming message
received from the telephone network through the radio circuit and the
voice processor.
The prior art reference of record relied upon by the examiner in rejecting the
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appealed claims is:
Payne et al. (Payne) 5,854,694 Dec. 29, 1998
Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Payne.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 15, mailed Sep. 13, 2001) for the examiner's reasoning in support of
the rejections, and to appellant's brief (Paper No. 14, filed Jun. 21, 2001) and reply brief
(Paper No. 17, filed Nov. 13, 2001) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
Appeal No. 2002-1400
Application No. 09/131,279
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make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual to combine the relevant
teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on
§ 103 must rest on a factual basis with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The examiner may not, because of
doubt that the invention is patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual basis for the rejection. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against employing
hindsight by using the appellant's disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See, e.g., Grain Processing
Corp. v. American Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792
(Fed. Cir. 1988).
The examiner has continually maintained that Payne teaches a unitary portable,
wireless, cordless facsimile unit with a telephone answering function and that the
facsimile unit contains a voice processor for converting an analog voice signal output
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from the radio circuit into digital voice data and converting the digital voice data into the
analog voice signal for transmission to the radio circuit and the memory for storing voice
data for an outgoing message and an incoming message. (See answer at pages 3-5
and 12-17.) The examiner repeatedly cites to column 4, lines 48-54 and 57-67 along
with a select other few lines in Payne.
Appellant argues that Payne does not teach all the elements of the claimed
invention as recited in the independent claims and that the answering machine and
voice processor are not in the portable unit. (See brief at page 11 et seq.) We fully
agree with appellant. From our review of the express teachings of Payne and with
special attention to the portions cited by the examiner, we find no express or implicit
teaching or suggestion of incorporating the additional use of an answering machine
connected to the “base station” or “non-portable apparatus” (Payne at column 2, lines
20-33) into the integral hand held device. While the examiner repeatedly incorporates
citations to portions of Payne, we find that none of these portions teach or suggest the
use of an answering machine anywhere but in the base station which is not integral with
the portable unit. Additionally, we do not find any teaching that the answering machine
would have been a digital device which would have included a voice processor and
corresponding memory. While we do not preclude a finding that the use of a digital
answering machine may have been obvious, the examiner has not set this forth as a
rejection based upon obviousness and has not provided any teaching thereof in the
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stated rejection. Therefore, we find no evidence of record to support the rejection and
find that the examiner has not set forth a prima facie case of obviousness.
From the portions of Payne cited by the examiner, it appears that the examiner
may have misplaced the reliance on the image processing and data transmission as
also teaching the processing a transmission of voice data. We cannot agree with the
examiner’s correspondence of the teachings of Payne to the instant claimed invention.
Our reviewing Court has made it clear in In re Lee, 277 F.3d 1338, 1344-1345,
61 USPQ2d 1430, 1434-1435 (Fed. Cir, 2002) and In re Zurko, 258 F.3d 1379, 1386,
59 USPQ2d. 1693, 1697 (Fed. Cir. 2001) that rejections must be supported by the
administrative record and that where the record is lacking in evidence, this Board
cannot and should not resort to unsupported speculation. (See also In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967)). Therefore, we limit our decision
to the limited facts relied upon by the examiner in the rejection and the limited teachings
of the sole reference. We make no findings concerning the obviousness or
combinability of Payne with any other facsimile machine which may teach the well-
known incorporation within a non-portable facsimile machine of multiple functions within
a single unitary device such as facsimile, telephone and digital answering machine
functionalities since the examiner has not applied such a combination. As discussed
above, we find that the examiner has not set forth a prima facie case of obviousness
based solely upon the teachings of Payne, and we cannot sustain the rejection of
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independent claims 1, 6, and 11 and their corresponding dependent claims.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-15 under
35 U.S.C. § 103 is reversed.
REVERSED
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Application No. 09/131,279
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JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JD/RWK
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Application No. 09/131,279
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ROBERT E. BUSHNELL, ATTORNEY-AT-LAW
1522 K STREET, NW
SUITE 300
WASHINGTON, D.C. 20005-1202