Ex parte Pesola

Board of Patent Appeals and Interferences

Sep 21, 2001

08330972 (B.P.A.I. Sep. 21, 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for publication and is not binding precedent of the Board.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 MIKKO PESOLA
____________
Appeal No. 1999-0859
Application No. 08/330,972
____________
ON BRIEF
____________
Before HAIRSTON, KRASS, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1, 3, 4, 6-8, and 10-16, which are the only claims
remaining in the application. Claims 2, 5, and 9 have been
canceled.
The claimed invention relates to a circuit arrangement for
switching the frequency range of a signal from a radio receiver
Appeal No. 1999-0859
Application No. 08/330,972
2
to a desired frequency band selected from a first frequency band
and a second frequency band. The received radio frequency
signal is phase shifted and mixed with signals from a divided
local oscillator, the frequency of the local oscillator being
selected to be in the middle of the two selected frequency
bands. The intermediate frequency signal produced as the output
of the mixing operation is phase shifted and filtered through
first and second bandpass filters having differing widths. The
desired intermediate frequency is selected from the outputs of
either the first or second bandpass filters through operation of
a switch. Appellant asserts at pages 3 and 4 of the
specification that the claimed circuit arrangement achieves the
desired result using a single selector switch, thereby avoiding
the problems associated with prior art multi-switch
arrangements.
Claim 1 is illustrative of the invention and reads as
follows:
1. A circuit arrangement for switching the frequency range of
a radio receiver, utilizing image frequency bands, to a
desired frequency band selected from between a first
frequency band having channels with a first bandwidth and a
second frequency band having channels with a second
bandwidth, whereby the frequency of a local oscillator is
adapted approximately to the middle of the two selected
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Application No. 08/330,972
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frequency bands, characterised in that the circuit
arrangement comprises:

- a mixer attenuating the image frequency comprising means
to phase-shift a received radio frequency signal, means
to mix said phase-shifted received radio signal and a
local oscillator signal, and means to phase-shift an
intermediate frequency signal resulting from the
mixing of said phase-shifted received radio signal and
said local oscillator signal, said mixer having at
least a first output and a second output with an
intermediate frequency corresponding to the first
frequency band being obtained from the first output of
the mixer, and an intermediate frequency corresponding
to the second frequency band being obtained from the
second output;
- a first bandpass filter, having a passsband [sic.
passband] with a width that substantially corresponds to the
bandwidth of the channels of the first frequency band, coupled
to said first output of said mixer;
- a second bandpass filter, having a passsband [sic.
passband] with a width that differs from said first bandpass
filter and susbstantially corresponds to the bandwidth of the
channels of the second frequency band, coupled to said second
output of said mixer; and
- a switch for selecting a desired intermediate frequency
corresponding to the desired frequency band either from the
output of said first bandpass filter or the output of said
second bandpass filter.
The Examiner relies on the following prior art:
Perlich 4,207,532 Jun. 10,
1980
Gorrie et al. (Gorrie) 5,214,796 May 25,
1993
Oto 5,437,051 Jul. 25,
1995
(filed Sep. 18, 1992)
Appeal No. 1999-0859
Application No. 08/330,972
The Appeal Brief was filed June 11, 1998 (Paper no. 18). In response1
to the Examiner’s Answer dated September 2, 1998 (Paper No. 19), a Reply Brief
was filed October 26, 1998 (Paper No. 20) , which was acknowledged and entered
by the Examiner as indicated in the communication dated December 21, 1998
(Paper No. 21).
4
Greg Magin (Magin), “A Robust Signaling Technique for Part 15 RF
Control Network Applications”, RF Design, No. 4, pages 29-38,
(April 1993).
Claims 1, 3, 4, 6-8, and 10-16 stand finally rejected under
35 U.S.C. § 103. As evidence of obviousness, the Examiner
offers Gorrie in view of Oto and Magin with respect to claims 1,
3, 4, 6, 7, and 10-16, and adds Perlich to the basic combination
with respect to claim 8.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answer for the1
respective details.
OPINION
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, 17-18, 148 USPQ
Appeal No. 1999-0859
Application No. 08/330,972
5
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,
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 Hospital Systems, Inc.
v. Montefiore Hospital, 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).
Appellant’s response to the Examiner’s obviousness
rejection asserts the Examiner’s failure to set forth a
prima facie case of obviousness since proper motivation for the
proposed combination of references has not been established. In
particular, Appellant argues (Brief, page 24) that the
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Examiner’s rejections “...are based on assembling a number of
prior art references and attempting to modify their teachings to
purportedly show that the combination of these teachings would
have rendered appellant’s combination of circuit elements
obvious.”
After careful review of the applied prior art references in
light of the arguments of record, we are in agreement with
Appellant’s position as stated in the Briefs. In our view, the
Examiner has combined the general teachings of three references
related to image attenuating mixers in some vague manner without
specifically describing how the teachings would be combined.
This does not persuade us that one of ordinary skill in the art
having the references before her or him, and using her or his
own knowledge of the art, would have been put in possession of
the claimed subject matter.
A review of the Examiner’s analysis in the Answer reveals
that the Examiner has never attempted to show how each of the
claimed limitations is suggested by the teachings of the applied
prior art. Further, other than the fact that the Gorrie and Oto
references are related to frequency selection, the Examiner’s
statement of the grounds of rejection is lacking in any
Appeal No. 1999-0859
Application No. 08/330,972
7
rationale as to why the skilled artisan would combine these
prior art references. Rather than pointing to specific
information in Gorrie and Oto that would suggest their
combination, the Examiner instead has described piecemeal
similarities between each of the references and the claimed
invention. Nowhere does the Examiner identify any suggestion,
teaching, or motivation to combine the Gorrie and Oto references
nor does the Examiner establish any findings as to the level of
ordinary skill in the art, the nature of the problem to be
solved, or any other factual findings that would support a
proper obviousness analysis. See, e.g., Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F. 3d 1568, 37 USPQ2d 1626 (Fed.
Cir. 1996).
Further, it is our view that the Examiner’s proposed
addition of Magin to the combination of Gorrie and Oto does not
cure the deficiencies of either reference, singly or in
combination. Even assuming arguendo that the recited
limitations of the independent claims are found in the various
references, we find no motivation for modifying any combination
of Gorrie and Oto in the manner suggested by the Examiner.
There is nothing in the disclosures of either Gorrie or Oto to
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indicate that signaling in spread spectrum operation, the
problem addressed by the structure of Magin, was ever a concern.
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). The only basis for applying
Magin’s teachings to Gorrie and Oto comes from an improper
attempt to reconstruct Appellant's invention in hindsight.
As to the 35 U.S.C. § 103 rejection of dependent claim 8
based on the combination of Gorrie, Oto, Magin, and Perlich, we
note that Perlich was applied solely to meet the different
bandwidth feature of the claim. Perlich, however, does not
overcome the innate deficiencies of Gorrie, Oto, Magin and,
therefore, we do not sustain the obviousness rejection of
dependent claim 8.
In conclusion we have not sustained the Examiner’s
obviousness rejection of any of the claims on appeal.
Therefore, the decision of the Examiner rejecting claims 1, 3,
4, 6-8, and 10-16 is reversed.
REVERSED
Appeal No. 1999-0859
Application No. 08/330,972
9
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR/lp
CLARENCE A GREEN
PERMAN & GREEN
425 POST ROAD
FAIRFIELD, CT 06430
Appeal No. 1999-0859
Application No. 08/330,972
10
Lettie
JUDGE RUGGIERO
APPEAL NO. 1999-0859
APPLICATION NO. 08/330,972
APJ RUGGIERO
APJ HAIRSTON
APJ KRASS
DECISION: REVERSED
PREPARED: Jun 13, 2002
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