Ex Parte RE35449 et al

Board of Patent Appeals and Interferences

Oct 15, 2010

90008539 (B.P.A.I. Oct. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/008,539 03/20/2007 RE35449 04444-P0008A 3521
7590 10/15/2010
Frederick S. Burkhart
Van Dyke Gardner Linn & Burkhart
2851 Charlevoix Drive, S. E., Suite 207
Grand Rapids, MI 49546
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/15/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FLEETWOOD GROUP, INC.
____________

Appeal 2010-009555
Reexamination Control 90/008,539
United States Patent Re. 35,449
Technology Center 3900
____________

Before JAMESON LEE, KARL D. EASTHOM, and KEVIN F. TURNER,
Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.

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2
This proceeding arose from a third party request for ex parte
reexamination of the ‘449 reissue patent. Appellant appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 1-4, 9, 10, 13, 16, 21, 23,
26-28, 30, 35, 38, and 40-43.2 We have jurisdiction under 35 U.S.C. §§
134(b) and 306.
We affirm.

STATEMENT OF THE CASE
Appellant’s Brief indicates that claims 2-4, 16, 21, 23, 26, 27, 41, and
42 are subject to appeal while claims 5-8, 11, 12, 14, 15, 17-20, 22, 24, 25,
29, 31-34, 36, 37, and 39 were not subject to reexamination. (App. Br. 5.)
Appellant attempted to cancel claims 1, 9, 10, 13, 28, 30, 35, 38, 40, and 43
by an amendment which was filed and entered3 after the expiration date of
the original patent upon which the ‘449 reissue patent was based.4 As such,
none of Appellant’s proposed amendments during the reexamination
proceeding are effective. 37 C.F.R. § 1.530 (j) (“No amendment may be
proposed for entry in an expired patent.”)5

2 Appellant, Fleetwood Group, Inc. is the real party in interest for this appeal
and assignee of record of the patent under reexamination, U.S. Patent Re.
35,449, “Remote 2-Way Transmission Audience Polling and Response
System” (issued Feb. 11, 1997 to Harry G. Derks).
3 See Amendment After Appeal (filed Sept. 14, 2009) and Advisory Action
(mailed Oct. 9, 2009); accord App. Br. 6 (amendment filed concurrently
with Brief).
4 U.S. Patent Re 35,449 is a reissue of U.S. Patent 5,093,786 (issued Mar. 3,
1992, expired Mar. 3, 2009).
5 This rule includes claim cancellation as an amendment but treats
cancellations differently than other claim amendments. That is, the rule
indicates that had Appellant’s proposed cancellation been filed before the
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Further, Appellant’s Notice of Appeal (filed July 14, 2009) is “from
the last decision of the [E]xaminer.” The Examiner’s last decision, Office
Action (filed May 15, 2009), finally rejected claims 1-4, 9, 10, 13, 16, 21,
23, 26-28, 30, 35, 38, and 40-43. Hence, these claims are on appeal
according to Appellant’s Notice of Appeal despite the amendment
attempting to cancel some of these claims. In other words, under these
circumstances, i.e., where 37 C.F.R. § 1.530 precludes the Examiner from
cancelling claims in an expired patent and Appellant appealed from the final
decision without reference to particular claims, Ex parte Ghuman, 88
USPQ2d 1478, 1480 (BPAI 2008) (precedential) (remanding an appeal to
allow the Examiner to cancel impliedly withdrawn claims) does not apply.
Accordingly, claims 1-4, 9, 10, 13, 16, 21, 23, 26-28, 30, 35, 38, and
40-43 are on appeal as stated at the outset.
The ‘449 Patent
The ‘449 patent describes a remote response system including a
central control unit 12 and a plurality of response units (1, 2 . . . n) (Fig. 1)
having keypads for data entry by a user and transmitting means to transmit

‘786 patent expired (supra note 4), such an amendment would have become
effective upon (and considered entered properly prior to) the issuance and
publication of a subsequent reexamination certificate. However, such is not
the case here as noted. Appellant’s other (clarifying) proposed amendments
for claims 3, 13, 16, 18, 23, and 43 (Response in Ex Parte Re-Examination
(filed Dec. 5, 2008)), while proposed prior to the expiration of the original
‘786 patent, nonetheless “will [not] be incorporated into the patent by a
certificate issued after the expiration of the patent” 37 C.F.R. § 1.530 (j).
Because these amendments are “not . . . effective until [such] certificate,” id.
at (k), they will not be treated as entered. Accord Ex parte Papst-Motoren,
1 USPQ2d 1655, 1656 n.5 (BPAI 1986) (similarly construing predecessor
rule).
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an entered data word. The central control unit determines the validity of the
transmitted data word and transmits an acknowledgement back to the
response unit if the transmitted word is deemed valid by the control unit.
The acknowledgement triggers a power-down of the response unit which
sent the validated word. The central control unit also sequentially transmits
distinct address words corresponding to each response unit. (Abstract; col.
10, ll. 7-14.)
The Exemplary Claims, References, and Rejection
Exemplary claims 1, 2, and 23 read as follows:

1. A remote response system comprising:

a central control unit including address word transmitting means for
sequentially transmitting a plurality of distinct address words and data
word receiving means for receiving data words;

a plurality of response units located remote from said central control unit,
each of said response units including data entry means for receiving
an inputted data word, address word receiving means for receiving
said address words transmitted from said central control unit, circuit
means responsive to said address word receiving means for
identifying a particular one of said address words that have been
assigned to that particular one of said response units and data word
transmitting means responsive to said data entry means and said
circuit means for transmitting a data word from said data entry means
to said central control unit in response to identification of a particular
address word assigned to that particular remote unit; and

said central control unit further including acknowledging means for
examining data words received by said data word receiving means and
identifying that a data word received from one of said response units
is valid and for transmitting an acknowledge message to the one of
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said response units sending the valid data word.

2. The response system in claim 1 in which said data word transmitting
means includes a data word transmitter and energizing means for energizing
said data word transmitter, said energizing means being actuated in response
to the occurrence of both the receipt of a data word by said data entry means
and the identification of the one of said address words assigned to that
particular one of said response units, said energizing means being deactuated
in response to an acknowledge message being transmitted by said
acknowledging means.
23. A remote response system comprising:
a central control unit including means for transmitting a plurality of distinct
address words individually in a sequential manner, receiving means for
receiving data words, determining means responsive to said receiving means
for determining whether a received data word is valid and acknowledging
means responsive to a valid data word being received for transmitting an
acknowledge message;
a plurality of response units located remote from said central control unit,
each of said response units including:
data entry means for receiving input data;
means responsive to said data entry means receiving data for placing
said response unit in a first mode indicative of that particular
response unit having received data to be transmitted to
said central control unit;
receiving means for receiving said address words transmitted from
said central control unit and determining if an address word is a
predetermined address word assigned to that particular response
unit;
data word transmitting means responsive to said receiving means
receiving the address word assigned to that particular
response unit and to that particular response unit being in said
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first mode for transmitting a data word representative of
said data to said central control unit; and
means responsive to said acknowledge message for switching said
response unit from said first mode to a second mode
indicative of that particular response unit not having data to
be transmitted to said central control unit.
(‘449 patent, cols. 10-11, 14-15.)6

The Examiner employed the following prior art references:
Brocker US 3,776,523 Oct. 16, 1973
Lockhart US 4,247,908 Jan. 27, 1981
Moore US 4,251,865 Feb. 17, 1981
Komatsubara US 4,238,893 Dec. 16, 1980

Claims 2-4 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable based on the combination of Lockhart and Brocker.
Claims 16, 21, 23, 26, 27, 41, and 42 stand rejected under 35 U.S.C. §
103 (a) as being unpatentable based on the combination of Moore, Lockhart,
and Brocker.
Claims 16 and 23 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable based on the combination of Komatsubara and Lockhart.

6 Compare the ‘449 Patent original claims with the Appeal Brief Claims
App’x (i.e., proposed amendments not entered, see supra note 5 and
corresponding discussion). The proposed amendments primarily appear to
correct or clarify the claims.
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ISSUES
Appellant’s arguments and the Examiner’s responses primarily
present the issues of whether the Examiner erred in finding and determining
that it would have been obvious to
1) modify Lockhart’s system by deactuating a response unit in
response to an acknowledge message being transmitted by an
acknowledging means in a central control unit as suggested, according to the
Examiner, by the combined teachings of Lockhart and Brocker, and as set
forth in claim 2;
2) modify a combination of Moore’s and Lockhart’s systems by
switching a response unit from a first mode to a second mode indicative of
that particular response unit not having data to be retrieved or transmitted, as
suggested, according to the Examiner, by the combined teachings of Moore,
Lockhart, and Brocker, and as set forth in claims 16 and 23; and
3) modify Komatsubara’s system by switching a response unit from a
first mode to a second mode indicative of that particular response unit not
having data to be retrieved or transmitted, as suggested, according to the
Examiner, by the combined teachings of Lockhart and Komatsubara, and as
set forth in claims 16 and 23.
FINDINGS OF FACT
Lockhart’s Teachings
L1. Lockhart’s message polling system comprises one or two
(redundant) control unit(s) 12 which accept(s) not more than one block of
data (less than 256 bytes) from portable response units (14-1, 14-2, . . . 14-
N) during a sequential polling thereof. The polling comprises sequentially
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sending the portable unit addresses and waiting for a (block) data response
therefrom. The controlling unit stores up to four successively transmitted
blocks from a particular portable unit as a single message. The control unit
verifies each block for correctness based on a word character check and a
block number (i.e. 1-4) check, and then responds with an acknowledgement
message (ACK) back to the specific portable unit which sent the verified
data block. (Col. 4, l. 55 to col. 5, l. 42; col. 6, l. 50; Fig. 1.)
L2. The portable units send an end of text bock signal (ETB) instead
of an end of text signal (ETX) if the data corresponding to one of the four
possible transmitted blocks are longer than 256 bytes. In other words, the
control unit determines, based on the ETX or ETB signals, if a particular
message is complete or if more blocks are to be sent from a specific portable
unit. Such blocks of a message are sent during the next control unit polling
cycle. At some point, after a final ACK from a specific portable unit, the
next polling cycle results in no response from a specific portable unit. In
other words, that portable unit has no more messages to send. (After five
minutes of such non-activity, the portable units are tagged as inactive and
polled less frequently.) (Col. 5, ll. 10-65.)
L3. Lockhart discloses “another possible application of the system”
(col. 7, l. 18) such as inventorying goods in a large warehouse. In this
application, portable units provide the option of using a light pen to read
black and white bar code inputs. (Col. 7, ll. 18-22.)
Brocker’s Teachings
B1. Brocker teaches putting a mobile (portable) unit into a rest state
after it receives an acknowledgement from a base station. The
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acknowledgment consists of a “complete message received from the base,
including the address” (col. 9, ll. 1-2) which is compared to a corresponding
message sent by and stored in the mobile unit.
The mobile unit uses this acknowledgement to inhibit further
transmission of a message and to put its transceiver into a rest decoding
mode. During the decoding rest mode, the transmitter oscillator is
deactivated via switch 104. The rest mode also corresponds to the resistor
circuit 108 being programmed by a rest state message which in turn
corresponds to a call to be received by that mobile unit. The particular
resistor circuit values control programmable active filter 102 which
determines which tones will be received (and transmitted). (Col. 7, ll. 30-
48; col. 8, l. 61 to col. 9, l. 27; col. 9, ll. 47-56; col. 10 ll. 34-39; Figs. 4, 5)
B2. Brocker partially describes the above-described process and rest
mode in the mobile units as follows:
When the acknowledgment is received, the output signal from
the shift register 114 is applied to the reset circuit 128 to inhibit
further retransmissions of the message, and the original rest
state message is reprogrammed into the resistor circuit 108 by
two data sources. If the acknowledgement is not received
within a predetermined time duration, the transmitted message
is retained in the internal and external data sources 110 and 112
and the [mobile/portable] unit is automatically switched into the
encoding mode for retransmission of the message.
(Col. 10, ll. 34-44.)
B3. In a preferred embodiment, the messages consist of pre-
determined messages of a series of seven tones. (Col 1, ll. 5-9, 61-63.)

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Moore’s Teachings
M1. Moore’s teachings are largely cumulative to those of Lockhart.
(Compare Moore Figs. 1 and 7 with Lockhart Figs. 1 and 2.) Moore cites
the patent to Lockhart (by reference to application number 967,805) as
disclosing a similar co-pending beneficial system providing efficiency in
communication between a master and multiple portable units. (Col. 1, ll. 57-
65.) Moore also cites the patent to Brocker (by reference to U.S. Patent
3,766,523) as background art and as an exemplary two-way data
communication system assigned to the same assignee (as Moore, and by
inference, Brocker, i.e., Motorola, Inc.). (Col. 1, ll. 13-24.)
M2. Moore discloses multiple control units (col. 2, ll. 66-67) and
portable response units 14 (Fig. 1).
ANALYSIS
Claims 2-4
Appellant’s arguments focus on claim 2, which depends from claim 1.
(App. Br. 16-19.) Accordingly, claim 2 is selected to represent claims 2-4.
See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that the Examiner failed to articulate a legally
sufficient rationale to modify Lockhart based on Brocker in part because the
systems, according to Appellant “are totally disparate,” and Lockhart’s
system would be “rendered inoperable.” (App. Br. 17-19.) With respect to
the first contention, Appellant does not address the Examiner’s rationale that
skilled artisans would have employed Broker’s system in Lockhart’s similar
message response system because turning off the portable unit transmitter
after an acknowledgement of correct transmission saves energy. (Ans. 9-10
(stating “power is conserved”); see B1, B2 (transmitter encoder and
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oscillator disengaged for further transmissions after acknowledgment).)
Appellant’s response also does not address the Examiner’s description of the
two systems showing their similarities including Lockhart’s desire for
“maximum channel efficiency” (Ans. 9). (See Ans. 7-10.) The record
supports the Examiner’s findings that the inventive systems are directed to
similar controller to portable unit communications systems (and assigned to
the same assignee). (See B1, B2, L1, L2, M1.)
With respect to the second contention, Appellant argues that
modifying Lockhart’s message acknowledgement system by implementing
Brocker’s (portable unit based) acknowledgement system would render
Lockhart’s system unable to perform its dual acknowledgment functions,
described as follows:
One is to send the data blocks (up to four) to the host computer
10 after it has received and checked the complete message
(column 4, lines 54-67). The second is to acknowledge to the
portable unit that the message was received correctly so that the
portable unit does not retransmit its last message (column 5,
lines 43-48).
(App. Br. 17.)
Appellant also submits that Brocker’s system performs the
acknowledgement function in the portable unit, as opposed to the control
unit – i.e., the exact opposite of Lockhart’s system. According to Appellant,
even if the acknowledgement function were kept in Lockhart’s control unit
but modified so as to put Lockhart’s portable unit to rest in response to an
acknowledgement signal as suggested by Brocker, such a modification
would render Lockhart’s system inoperable for its intended purpose. (App.
Br. 17-18.)
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Appellant correctly explains that Lockhart “is made up of multiple
modes of operation including those in which the message [from the portable
unit] can be divided up into second, third, or fourth messages if longer than
256 bytes.” (Reply Br. 3; accord L1, L2.) As such, Lockhart sends an
acknowledgment as the response unit correctly receives each one of (up to
four) of these blocks corresponding to a message. (L1, L2.) According to
Appellant, putting the portable unit to rest based on an acknowledgment
message would destroy Lockhart’s ability to provide the remaining blocks in
a longer messages. (Reply Br. 3.)
This argument is not persuasive for several reasons. First, as the
Examiner reasoned, Lockhart’s mode of sending shorter messages would
function entirely as intended. Appellant agrees with this finding as to the
shorter message mode not being destroyed by the combination (Reply Br. 3),
but disputes the rationale as follows:
By analogy, the Examiner’s position is similar to arguing that a
combination of references does not render a steering
mechanism of a vehicle inoperative if the steering mechanism
can operate to make a left-hand turn even though the
combination renders the steering mechanism inoperative to
make a right-hand turn.
(Id.)
Appellant’s analogy is not apt. While skilled artisans would divorce a
right-hand turn from a left-hand turn function in a steering wheel as
Appellant argues, it does not follow that they would not divorce modes in
“multiple modes of operation” (id.) - i.e., different message length modes.
Hence, while Appellant characterizes Lockhart’s system as “one
embodiment,” id., Appellant’s “multiple modes of operation”
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characterization shows why the analogy is not apt. In other words,
following Appellant’s analogy, skilled artisans would not refer to left- and
right-hand turns as different modes.
In order to save power/energy (Ans. 10, 43), skilled artisans would
have modified Lockhart’s multiple message length mode system using
Brocker’s shorter length system (see App. Br. 16 (describing Brocker’s
system as sending and acknowledging a “sequence of seven tones”’; accord
B3)), by employing Brocker’s modification only during a shorter message
mode or by ensuring that even the longer message modes would function
properly. Skilled artisans would have known how to modify the system so
as not to preclude longer messages. See KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 424 (2007) (“[T]he interaction of multiple components means that
changing one component often requires the others to be modified as well.”).
In addition to the modes described by Appellant, Lockhart also
discloses one application involving the reading of bar code data- i.e., at least
suggesting a separate short data message mode. (L3.) As to longer
messages, Appellant acknowledges that Brocker’s system verifies that after
a complete message has been retransmitted back to the portable unit from the
control unit, the portable unit turns the off the transmitter. (App. Br. 16.)
Also, while Appellant characterizes Brocker’s portable unit as controlling
the acknowledgment (App. Br. 17), this characterization is not entirely
accurate. That is, Brocker’s control unit sends the acknowledgement by way
of a re-transmitted message which the portable unit then uses to trigger the
rest cycle in its transmitter. (B1.) And in a similar fashion to Brocker’s
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system, as Appellant also notes, Lockhart’s system also verifies a “complete
message.” (App. Br. 17; accord L1, L2.)
In other words, even if separating the system into separate shorter and
longer length modes would not have been obvious, the combination suggests
putting the portable units to rest if, and only if, a complete message has been
acknowledged. Lockhart’s system distinguishes between different message
lengths and determines if a message is complete by using ETX or ETB
signals sent by the portable units in conjunction with the ACK signal sent
back to the portable unit from the control unit. (L1, L2.) Claim 2, reciting
“said energizing means being deactuated in response to an acknowledge
message being transmitted by said acknowledging means” (emphasis
supplied), is broad enough to read on message systems which respond in the
manner suggested by the combined teachings of Lockhart and Broker – i.e.,
only to “an acknowledge message” responding to a complete message as
signified by an ETX signal (as distinguished by the system from
acknowledgements or similar signals responding to an ETB signal which
indicates further blocks to come).
Notwithstanding Appellant’s arguments, the Examiner’s rationale
constitutes “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006). Based on the foregoing discussion, in light of the
arguments presented, the Examiner did not err in rejecting claims 2-4. As
such, the rejection of claims 2-4 based on the combination of Lockhart and
Broker is sustained.

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Claims 16, 21, 23, 26, 27, 41, and 42 – Rejected
Based on a Combination of Moore, Lockhart and Brocker
Appellant does not direct arguments specifically to any one of the
above claims but appears to focus on limitations in claim 16 and similar
limitations in claim 23. (See App. Br. 20-22.) As such, claims 16 and 23 are
selected to represent the claims listed under this sub-heading.7 Appellant
asserts that the combination of Moore and Lockhart does not disclose or
suggest “the claim limitation of placing a response unit that is in a first mode
in a second mode in response to receipt of an acknowledge message
transmitted by the central control unit, the second mode being indicative of
that response unit not having a data word to be retrieved.”8 (App. Br. 20-
21.) Appellant asserts that the Examiner relies on Brocker for this
limitation. (App. Br. 21.)
Appellant relies on arguments presented against Lockhart in the
rejection of claim 2. (Id. at 20-21.) In other words, Appellant asserts that
Moore and Lockhart both involve sending blocks of data so that modifying
Moore by using Brocker’s teachings would have allowed Moore only to
“operate in a limited fashion.” (Id. at 21.) Based on the discussion of claim
2 supra, this argument is unavailing. Further, Moore cites Lockhart and
Brocker in a discussion of related systems, further suggesting the mutual

7 The final clause in method claim 16 differs slightly from that in apparatus
claim 23, even though Appellant argued the claims without distinction. Any
difference is addressed below.
8 This limitation more closely tracks the final clause of claim 16; however,
original claim 16 has more “grammatical” problems than claim 23, so that
claim 23 is repeated supra as exemplary. As also indicated (supra note 6),
Appellant’s (unentered) amendments reveal an attempt to clarify these
grammatical problems.
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operability and combination of beneficial portions of each system. (See
discussion supra and M1.) And as Appellant notes, Moore and Lockhart
include two common inventors and have “significant overlapping
disclosure.” (App. Br. 20; accord M1.)
Appellant’s reliance on arguments presented against the rejection of
claim 2 indicates that Appellant deems the disputed clauses in claims 16, 23
and claim 2 to be similar in scope – at least insofar as the arguments
presented are concerned.9 Claim 2 requires putting the transmitter to rest
after an acknowledgment, while the claim 23 involves transitioning from a
first mode to a second mode in response to an acknowledgement, with the
second mode indicating no further data is to be sent. Brocker at least
suggests that these two situations go hand-in-hand since the second mode is
a rest mode in which no further data is to be sent. (See B1, B2; accord Ans.
18.) The rest mode corresponds to a situation in which, after an
acknowledgment, the resistor circuit 108 is programmed by a rest state
message corresponding to a call to be received by a mobile unit and with the
transmitter disengaged via switch 104, thereby precluding a data word from
being sent. (B1, B2.)
Brocker also discloses that the data words from data sources 110 and
112 are preserved if there is no acknowledgement, implying or at least
suggesting that they are not saved if there is an acknowledgement. (See B1,
B2.) This situation also reasonably corresponds to the recited similar

9 See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If
an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”)
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limitation in claim 16 of the acknowledgment being “indicative of that
response unit not having a data word to be retrieved.” As just discussed
supra with respect to claim 23, the previously transmitted words in 110 and
112 not only will not be retrieved again (for transmission) after such an
acknowledgement (because a portable rest mode word programs the resistor
circuit for tone reception), but as indicated, Brocker also implies or suggests
that the previously transmitted words also will not be saved. (See B2.)10
In any event, the ‘449 Patent indicates that the “second mode being
indicative” phrases in claims 16 and 23 merely correspond to a power down
mode. (See supra at 4 (describing “The ‘449 Patent”).) Appellant’s Brief
bolsters this claim construction by pointing to block 94 (“Turn Unit off”) in
Figure 3 to support these two “indicative” phrases. (App. Br. 9, 10.)
Accordingly, in light of the ‘449 patent disclosure and the arguments
presented, simply disengaging the portable unit transmitter in response to an
acknowledgment of a complete message as Brocker teaches reasonably
corresponds to and suggests both of the similarly argued “second mode
being indicative” phrases in claims 16 and 23.
In another section of the Brief directed to the rejection based on the
combination of Lockhart and Komatsubara, Appellant asserts that “[a]s
previously set forth, Lockhart does not disclose or suggest a plurality of

10 In the Reply Brief, Appellant asserts that Lockhart does not disclose a
second mode “indicative of that response unit not having a data word to be
retrieved.” (Reply Br. 4.) This argument, focusing on what Lockhart
discloses, does not address the Examiner’s separate finding that Brocker at
least suggests this limitation, nor the Examiner’s finding that the combined
teachings of Moore, Lockhart, and Brocker suggest the disputed limitation.
(See Ans. 17-19, 23.)
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remote response units, nor determining if each received data word is a valid
data word.” (App. Br. 22.) Notwithstanding the “previously set forth”
assertion, the underlying assertion, does not appear clearly set forth as a
patentability argument in the section of the Brief at issue here. In any event,
Lockhart and Moore each clearly teach multiple response units 14. (L1,
M2.) Lockhart also teaches determining if data words are valid. (L1.)
Based on the foregoing discussion of claim 2 and the further
discussion here of claims 16 and 23, Appellant’s arguments are unpersuasive
and the Examiner did not err in the rejection of claims 16, 21, 23, 26, 27, 41,
and 42. As such, the obviousness rejection of these claims, based on the
combination of Moore, Lockhart, and Brocker, is sustained.
Claims 16 and 23 – Rejected Based on a
Combination of Komatsubara and Lockhart
Appellant argues that the Examiner relies on Brocker to teach the
disputed limitation in claims 16 and 23 discussed supra and without Broker,
the proposed combination fails to meet the same (second mode indicative)
disputed phrases in claims 16 and 23 discussed supra. (App. Br. 22.) In the
rejection at issue here, the Examiner maintains that Komatsubara “more
explicitly” teaches placing a response unit into a second mode, wherein the
second mode is indicative of the response unit not having a data word to be
retrieved. (Ans. 36.) The Examiner takes the position that a student can
listen in a second mode, and then provide a response in a first mode. In the
response to Appellant’s arguments, the Examiner also maintains that various
portions of Lockhart also teach alternating between distinct “filling and
emptying a remote unit with data,” thereby teaching the disputed limitations
of claims 16 and 23. (Ans. 48.)
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19
Appellant’s argument is more persuasive. The portions of
Komatsubara relied upon by the Examiner do not indicate or suggest
whether or not answer data words are available for transmission while a
student is listening. Such data words may be present for retrieval and/or
transmission in the listening (i.e., claimed second) mode. Also, as Appellant
notes, Komatsubara does not teach an acknowledgement signal, let alone
one to switch the response unit into a second mode. (App. Br. 22.)
While Lockhart does disclose emptying and filling data as the
Examiner found, the Examiner’s rationale does not clearly set forth how
Lockhart, or the proposed combination, corresponds to a situation in which
an ACK message is indicative of a response unit not having words to be
transmitted or retrieved (e.g., upon a further polling by Lockhart’s
controller). As implied by the discussion supra, and in light of the ‘449
patent disclosure, absent Brocker’s disclosure and suggestion to
rest/disengage a transmitter to thereby preclude data word transmissions and
retrievals after an ACK response to a complete message, the Examiner’s
rationale is deficient in showing that the combined teachings of Lockhart
and Komatsubara render claims 16 and 23 obvious.
Based on the foregoing discussion, Appellant’s arguments
demonstrate that the Examiner erred in rejecting claims 16 and 23 based on
the combined teachings of Komatsubara and Lockhart. As such, this
rejection is not sustained.
Remaining Claims on Appeal
Appellant does not separately argue claims 1, 9, 10, 13, 28, 30, 35, 38,
40 and 43 on appeal. Appellant’s failure to separately argue these appealed
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20
claims constitutes waiver. (See supra notes 5, 8.) Consequently, the
Examiner’s decision to reject claims 1, 9, 10, 13, 28, 30, 35, 38, 40, and 43
is summarily sustained.
CONCLUSION
The Examiner did not err in finding and determining that it would
have been obvious to
1) modify Lockhart’s system by deactuating a response unit in
response to an acknowledge message being transmitted by an
acknowledging means as suggested, according to the Examiner, by the
combined teachings of Lockhart and Brocker, and as set forth in claim 2;
and,
2) modify a combination of Moore’s and Lockhart’s systems by
switching a response unit from a first mode to a second mode indicative of
that particular response unit not having data to be retrieved or transmitted, as
suggested, according to the Examiner, by the combined teachings of Moore,
Lockhart, and Brocker, and as set forth in claims 16 and 23.
The Examiner did err in finding and determining that it would have
been obvious to modify Komatsubara’s system by switching a response unit
from a first mode to a second mode indicative of that particular response unit
not having data to be retrieved or transmitted, as suggested, according to the
Examiner, by the combined teachings of Lockhart and Komatsubara, and as
set forth in claims 16 and 23.
DECISION
The Examiner’s decision to reject appealed claims 1-4, 9, 10, 13, 16,
21, 23, 26-28, 30, 35, 38, and 40-43 is affirmed. Requests for extensions of
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21
time in this ex parte reexamination proceeding are governed by 37 C.F.R. §
1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

KMF

Frederick S. Burkhart
Van Dyke Gardner Linn & Burkhart
2851 Charlevoix Drive, S. E., Suite 207
Grand Rapids, MI 49546

Third-Party Requester
Wesley W. Whitmeyer, Jr.
St. Onge Steward Johnston & Reens, LLC
986 Bedford Street
Stamford, CT 06905