Ex Parte Persson et al

Board of Patent Appeals and Interferences

Mar 28, 2002

08384456 (B.P.A.I. Mar. 28, 2002)

1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BENGT Y. PERSSON, BJORN GUDMUNDSON and PAUL W. DENT
__________
Appeal No. 2000-1557
Application 08/384,456
___________
ON BRIEF
___________
Before HAIRSTON, KRASS, and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-52, which
constituted all the claims in the application. The brief on
appeal withdrew the appeal with respect to claims 23-48 and these
claims were cancelled. In response to the filing of the appeal
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Application 08/384,456
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brief, the examiner has withdrawn the rejection of claims 2, 5,
16, 49 and 51. Therefore, this appeal is now directed to the
rejection of claims 1, 3, 4, 6-15, 17-22, 50 and 52.
The disclosed invention pertains to the field of cellular
mobile communications systems. Specifically, the invention
relates to a method and apparatus for controlling communications
between at least one mobile station and at least two base
stations.
Representative claim 1 is reproduced as follows:
1. In a cellular mobile radio communications system including at
least one mobile station and at least two base stations, a method
of communicating with said mobile station from a first and a
second of said base stations comprising the step of:
transmitting a signal on a first frequency from said first
base station to said mobile station using a waveform encoded with
a first code;
sending a transfer indication from said first base station
to said second base station which commands the second base
station to begin communicating with said mobile station;
after receiving said transfer indication, transmitting a
signal on said first frequency from said second base station to
said mobile station using a waveform encoded with a second code
which is different from said first code; and
receiving at said mobile station said signals transmitted on
said first frequency from said first and second base stations and
decoding said signals using said first and second codes to
produce a first and a second demodulated signal.
Appeal No. 2000-1557
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The examiner relies on the following references:
Gilhousen et al. (Gilhousen) 5,109,390 Apr. 28, 1992
Falconer et al. (Falconer) 5,159,608 Oct. 27, 1992
Blakeney, II et al. (Blakeney) 5,267,261 Nov. 30, 1993
Gudmundson 5,295,153 Mar. 15, 1994
The following rejections remain on appeal before us:
1. Claims 50 and 52 stand rejected under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not
described in the specification in such a manner as to reasonably
convey to the artisan that the inventors, at the time this
application was filed, had possession of the claimed invention.
2. Claims 14, 15 and 52 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by the disclosure of Blakeney.
3. Claims 7-9 and 17 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the teachings of Blakeney and
Falconer.
4. Claims 1, 3, 4, 6, 10-13 and 50 stand rejected under
35 U.S.C. § 103 as being unpatentable over the teachings of
Blakeney.
5. Claims 18-22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Blakeney and Gudmundson.
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Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the prior art rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
the appellants’ arguments set forth in the brief along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the disclosure does not support the invention now
recited in claims 50 and 52. We are also of the view that the
prior art evidence relied upon by the examiner supports the
rejection of claims 1, 3, 4, 6-15, 17-19, 50 and 52. We reach
the opposite conclusion with respect to claims 20-22.
Accordingly, we affirm-in-part.
We consider first the rejection of claims 50 and 52 as
being based on an inadequate disclosure. The examiner finds that
the original specification fails to disclose the error correcting
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step including combination of the first and second demodulated
signals within or subsequent to the determination by the error
correction decoding process of the data most likely transmitted
[answer, page 3]. Appellants simply respond that the claimed
phrase is fully supported by the disclosure and original claim 6
[brief, page 6]. The examiner responds that the portion of the
disclosure relied on by appellants and original claim 6 are
totally silent about the phrase in question [answer, pages 10-
11].
We agree with the position argued by the examiner. The
rejection is based on the written description requirement of
35 U.S.C. § 112. The purpose of the written description
requirement is to ensure that the applicants convey with
reasonable clarity to those skilled in the art that they were in
possession of the invention as of the filing date of the
application. For the purposes of the written description
requirement, the invention is "whatever is now claimed."
Vas-cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991). We have considered the record, and we
cannot find clear support for the recitation that the error
correcting step includes combination of said first and second
demodulated signals “within or subsequent to” the determination
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by the error correction decoding process of the data most likely
transmitted. Therefore, we sustain this rejection of claims 50
and 52.
We now consider the rejection of claims 14, 15 and 52
under 35 U.S.C. § 102(e) as being anticipated by the disclosure
of Blakeney. Anticipation is established only when a single
prior art reference discloses, expressly or under the principles
of inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner indicates how he finds the invention of
these claims to be fully met by the disclosure of Blakeney
[answer, page 4]. With respect to claim 14, appellants argue
that Blakeney does not describe a post-detect combining wherein
the first and second signals are decoded to produce first and
second demodulated signals [brief, pages 7-8]. The examiner
explains that the signal received at a mobile station is
demodulated by receivers 40 and 42 and then decoding is performed
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in the decoder 48. Thus, the examiner reads the first and second
demodulated signals on the outputs of the receivers 40 and 42
[answer, pages 12-13].
We agree with the examiner for the reasons given in the
response to arguments section of the answer. Since receivers 40
and 42 correlate the IF samples with the proper PN sequence, we
find that this operation constitutes a demodulation of the
incoming signals. Therefore, we sustain this rejection of claim
14.
With respect to claim 15, appellants argue that the cited
portion of Blakeney does not indicate that the base station
identifications are used in the same manner as the claimed first
and second codes. The examiner responds by further explaining
how he finds anticipation in the disclosure of Blakeney [answer,
pages 13-14]. We agree with the examiner that this further
explanation of the rejection indicates that the invention of
claim 15 is fully met by the disclosure of Blakeney. Since
appellants have not pointed out the flaw, if any, in this further
explanation, we sustain this rejection of claim 15.
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With respect to claim 52, appellants argue that Blakeney
operates in the opposite manner from the claimed invention
[brief, page 9]. The examiner responds that Blakeney meets the
within portion of the claimed phrase “within or subsequent to”
[answer, pages 14-15]. We again agree with this interpretation
of the examiner. Since appellants have not responded to this
particular finding of the examiner, we sustain this rejection of
claim 52.
We now consider the rejections of the claims under
35 U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it
is incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
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1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered [see 37 CFR
§ 1.192(a)].
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We consider first the rejection of claims 7-9 and 17
based on the teachings of Blakeney and Falconer. These claims
stand or fall together as a single group [brief, page 5]. The
examiner finds that Blakeney teaches the claimed invention except
for the encoding of each of the transmitted signals with a
different scrambling code. The examiner cites Falconer as
teaching the use of unique scrambling codes to eliminate cross
talk and make it difficult to eavesdrop or track calls. The
examiner finds that it would have been obvious to the artisan to
use the scrambling codes of Falconer in the communications system
of Blakeney [answer, pages 5-6].
Appellants argue that there is no indication that
problems exist in Blakeney which could be solved by use of
different scrambling codes as claimed. Appellants also argue
that Blakeney does not teach the use of signal strengths as
claimed [brief, pages 10-12]. The examiner responds that
different scrambling codes enhance the security of a
communications system as taught by Falconer. The examiner also
responds that the recitations of claim 7 are broad enough to read
on the transmission of signal strengths as disclosed by Blakeney
[answer, pages 15-16].
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We agree with the position of the examiner as set forth
in the response to arguments section of the answer. Since
appellants have not addressed these specific findings of the
examiner, we sustain this rejection of claims 7-9 and 17.
We now consider the rejection of claims 1, 3, 4, 6, 10-13
and 50 based on the teachings of Blakeney taken alone. The
examiner indicates how he finds obviousness on pages 6-8 of the
answer. With respect to claim 1, appellants argue that Blakeney
does not use first and second codes as claimed. Specifically,
appellants argue that using different phase offsets of a single
code is not the same as using different codes. Appellants also
argue that first and second demodulated signals are not generated
by the receiver [brief, pages 12-14]. With respect to the first
argument, the examiner responds that the different phase offsets
in Blakeney result in different codes as broadly recited in claim
1. We agree with this position for the reasons indicated by the
examiner [answer, pages 17-18]. With respect to the second
argument, the examiner notes that this is the same argument
discussed above with respect to claim 14. For reasons discussed
above with respect to claim 14, this argument is also not
persuasive of error in this rejection. Therefore, we sustain
this rejection of claims 1, 3 and 4.
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With respect to claim 6, appellants argue that Blakeney
does not teach or suggest combining symbols from demodulated
signals as claimed. The examiner points to portions of Blakeney
which suggest combining symbols as claimed. Since the examiner’s
position in the response to arguments section of the answer is
persuasive, and since appellants have not specifically addressed
this response, we sustain this rejection of claim 6.
With respect to claim 10, appellants argue that Blakeney
does not teach the three different codes of claim 10. The
examiner responds by indicating how he reads the three codes on
the disclosure of Blakeney [answer, page 19]. Since this reading
of the examiner establishes a prima facie case of obviousness,
and since appellants do not respond to this specific reading of
the examiner, we sustain this rejection of claim 10.
With respect to claims 11-13, appellants argue that the
claimed combination of codes is not taught or suggested by
Blakeney. The examiner responds by explaining how the
combination of codes is specifically met by Blakeney [answer,
page 19-20]. Once again, this specific explanation by the
examiner establishes a prima facie case of obviousness which has
not been persuasively rebutted by appellants. Therefore, we
sustain this rejection of claims 11-13. With respect to claim
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52, appellants make the same arguments we considered above with
respect to claim 52. Therefore, we also sustain this rejection
of claim 50.
We now consider the rejection of claims 18-22 based on
Blakeney and Gudmundson. The examiner indicates how he finds
obviousness on pages 8-10 of the answer. With respect to claims
18 and 19, appellants argue that the soft handoff techniques of
Blakeney are different from those claimed for reasons discussed
above with respect to claim 1. Appellants also argue that only
their own disclosure teaches using subtractive demodulation
during soft handoff. The examiner notes the arguments discussed
above with respect to claim 1 and responds that Gudmundson
teaches the use of subtractive demodulation during handoff
[answer, pages 21-22]. We agree with the examiner for reasons
discussed above and for the reasons given by the examiner in the
answer. Therefore, we sustain this rejection of claims 18 and
19.
With respect to claims 20-22, appellants argue that the
examiner has improperly relied on appellants’ own disclosure to
support the rejection [brief, page 17]. The examiner responds
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that the conventional power control disclosed by appellants in
combination with the desire to reduce interference would have
suggested the invention of claims 20-22.
We will not sustain the rejection of claims 20-22. We
agree with appellants that the examiner’s reliance on appellants’
own disclosure as providing prior art to support the rejection is
improper.
In summary, the examiner’s rejection of claims 50 and 52
under 35 U.S.C. § 112 is sustained. The examiner’s rejection of
claims 14, 15 and 52 under 35 U.S.C. § 102 is sustained. The
examiner’s rejection of claims 1, 3, 4, 6-13, 17-22 and 50 is
sustained with respect to claims 1, 3, 4, 6-13, 17-19 and 50 but
is not sustained with respect to claims 20-22. Accordingly, the
decision of the examiner rejecting claims 1, 3, 4, 6-15, 17-22,
50 and 52 is affirmed-in-part.
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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
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JERRY SMITH )
Administrative Patent Judge )
JS:pgg
Appeal No. 2000-1557
Application 08/384,456
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Ronald L. Grudziecki
Burns Doane Swecker and Mathis
P.O. Box 1404
Alexandria, VA 22313-1404