Ex Parte SHI

Board of Patent Appeals and Interferences

Apr 28, 2004

09026936 (B.P.A.I. Apr. 28, 2004)

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and is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HONG SHI
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Appeal No. 2002-1511
Application No. 09/026,936
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ON BRIEF
____________
Before KRASS, 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 1-16 and
24-30, which are all of the claims pending in this application. Claims 17-23 have been
canceled.
We REVERSE.
Appeal No. 2002-1511
Application No. 09/026,936
2
Appellant's invention relates to a multi-channel communication system for
wireless local loop communication. An understanding of the invention can be derived
from a reading of exemplary claim 1, which is reproduced below.
1. A method of conducting radio communication in a wireless
local loop communication system including a plurality of fixed access units
in radio communication with an array of radio fixed parts, comprising the
steps of:
utilizing a plurality of radio channels divided into a predetermined
number of synchronized time slots;
conducting radio communication between an activated fixed access
unit and an activated radio fixed part during a chosen time slot on an
assigned radio channel; and
denying radio communication on said assigned radio channel
during said chosen time slot in a controlled number of radio fixed parts
surrounding said activated radio fixed parts.
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Barratt et al. (Barratt) 5,592,490 Jan. 7, 1997
Przelomiec et al. (Przelomiec) 5,915,212 Jun. 22,1999
Appeal No. 2002-1511
Application No. 09/026,936
1 We note that the examiner made a rejection under 35 USC § 112, second paragraph in the
most recent non final rejection (Paper No. 13, mailed Nov. 3, 2000), but only inferentially mentions the
rejection at page 5 of the answer. While we do note that there appears to be a formal problem with the
structural limitation and a lack of antecedent basis, the examiner has not set forth a rejection in the answer
for our review. Therefore, we leave it to the examiner to consider this issue when the application is
returned to the examiner.
2 We note that the examiner reopened prosecution and modified the rejection to be over Barratt
rather than the Dent reference. Appellant reinstated the appeal after the new rejection. We note that the
supplemental brief does not meet all of the requirements of 37 CFR § 1.192, but we will consider the
combination of briefs as meeting the requirements. Therefore, we refer to the supplemental brief for the
arguments and only refer to the brief for the formal requirements.
3
Claims 1-5, 8-131, 16, and 24-30 stand rejected under 35 U.S.C. § 102 as being
anticipated by Barratt. Claims 6, 7, 14, and 15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Barratt in view of Przelomiec.
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. 16, mailed Apr. 10, 2001) for the examiner's reasoning in support of
the rejections, and to appellant's brief2 (Paper No. 12, filed Aug. 14, 2000), appellant's
supplemental brief (Paper No. 15, filed Feb. 7, 2001) and reply brief (Paper No. 17, filed
Jun. 6, 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 references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Appeal No. 2002-1511
Application No. 09/026,936
4
35 U.S.C. § 102
Appellant argues that Barratt has been misinterpreted by the examiner and that
Barratt does not teach or suggest the limitation “denying radio communication on said
assigned radio channel during said chosen time slot in a controlled number of radio
fixed parts surrounding said activated radio fixed parts.” Appellants argue that Barratt
teaches which terminals can communicate using a particular channel without
interference. (See supplemental brief at page 2.) The examiner maintains that Barratt
teaches the above denying limitation at page 3 of the answer and cites to 8 portions of
Barratt. We have reviewed those specific teachings of Barratt and do not find that
Barratt teaches “denying radio communication on said assigned radio channel during
said chosen time slot in a controlled number of radio fixed parts surrounding said
activated radio fixed parts” as recited in independent claim 1. We agree with appellant
that Barratt does not deny radio communication on an assigned radio channel, but
determines channel assignment. The examiner maintains that
[s]uch a channel assignment [each subscriber is communication with their
respective antenna element on the same channel and time slot as the
other subscribers] can be done if the system so desires to allocate the
channels in that manner. Therefore the Barratt system can assign
different subscribers (A-M) the same channel and time slot, but
communication with different antenna elements (A-M) . . . the system must
deny subscriber (A) access to that channel and time slot in the other
antenna elements (B-M).
To the extent that the rejection may be based on the principles of inherency, we note
that our reviewing court has set out clear standards for a showing of inherency, which
Appeal No. 2002-1511
Application No. 09/026,936
5
have not been attained in the instant case. 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." In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999) (citations omitted). We are not persuaded by the examiner that Barratt
necessarily must deny access. We are persuaded by appellant that the Section 102
rejection of each independent claim on appeal is in error. We thus do not sustain the
rejection of independent claims 1, 8, and 24 under 35 U.S.C. § 102 as anticipated by
Barratt.
35 U.S.C. § 103
“Deficiencies of the cited references cannot be remedied by the Board's general
conclusions about what is ‘basic knowledge’ or ‘common sense.’” In re Zurko, 258
F.3d 1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Furthermore, "the Board's
findings must extend to all material facts and must be documented on the record, lest
the ‘haze of so-called expertise’ acquire insulation from accountability.” In re Lee, 277
F.3d 1338, 1345, 61 USPQ2d 1430, 1435 (Fed. Cir. 2002). Here, we find the
Examiner's arguments to be supported merely by the Examiner's own expertise instead
of the evidence of record and the teachings of prior art which are required in order to
establish a prima facie case of obviousness. Appellant relies on the lack of a teaching
Appeal No. 2002-1511
Application No. 09/026,936
6
of “denying radio communication . . . ,” and the examiner has not identified how the
teachings of Przelomiec remedy that deficiency. Accordingly, we do not sustain the 35
U.S.C. § 103 rejection of any of the claims over Barratt in combination with Przelomiec.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-5, 8-13, 16, and
24-30 under 35 U.S.C. § 102 is reversed, and the decision of the examiner to reject
claims 6, 7, 14, and 15 under 35 U.S.C. § 103 is reversed.
REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JD/RWK
Appeal No. 2002-1511
Application No. 09/026,936
7
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