Ex parte SIEP et al.

Board of Patent Appeals and Interferences

May 30, 2002

08706123 (B.P.A.I. May. 30, 2002)

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for publication and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS M. SIEP and RONALD E. STAFFORD
____________
Appeal No. 2000-1699
Application No. 08/706,123
____________
ON BRIEF
____________
Before JERRY SMITH, RUGGIERO and LALL, 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 3, 4, 6-9, 11, 12,
14-16 and 20-27, which constitute all the claims remaining in
the application. An amendment after final rejection was filed
on April 2, 1999 and was entered by the examiner.
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Application No. 08/706,123
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The disclosed invention pertains to a wireless network
for communicating between processing devices.
Representative claim 25 is reproduced as follows:
25. A wireless network comprising:
a master processing device for generating information and
broadcasting said information through wireless transmission of
signals;
a plurality of individually identifiable and addressable
client processing devices having circuitry for receiving said
information from said master processing device and transmitting
other information to said master processing device, said master
processing device broadcasting data to all of said client
processing devices and selecting one and only one of said client
processing devices to acknowledge receipt of each bit of data
said master processing device broadcasts to all of said client
processing devices.
The examiner relies on the following references:
Tejima et al. (Tejima) 4,809,268 Feb. 28, 1989
The admitted prior art.
Claims 25, 27, 3, 4, 6-9 and 20-24 stand rejected under
35 U.S.C. § 102(b) as being anticipated by the disclosure of
Tejima. Claims 26, 11, 12 and 14-16 stand rejected under 35
U.S.C. § 103. As evidence of obviousness the examiner offers
Tejima in view of the admitted prior art.
Appeal No. 2000-1699
Application No. 08/706,123
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Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs 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 rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the briefs 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 evidence relied upon does not support either of the
rejections set forth by the examiner. Accordingly, we reverse.
We consider first the rejection of claims 25, 27, 3, 4,
6-9 and 20-24 under 35 U.S.C. § 102(b) as being anticipated by
the disclosure of Tejima. Anticipation is established only when
a single prior art reference discloses, expressly or under the
Appeal No. 2000-1699
Application No. 08/706,123
4
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 anticipation of
these claims on pages 3-6 of the examiner’s answer. Appellants
argue that Tejima does not disclose the recitation in each of
independent claims 25 and 27 that “said master processing device
broadcasting data to all of said client processing devices and
selecting one and only one of said client processing devices to
acknowledge receipt of each bit of data said master processing
device broadcasts to all of said client processing devices.”
Specifically, appellants argue that since Tejima teaches that
each of the remote stations is periodically interrogated by the
central station to return a supervisory acknowledgment packet
for monitoring purposes, Tejima does not teach that “one and
only one” of the client devices acknowledge receipt of each bit
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Application No. 08/706,123
5
of data as recited in claims 25 and 27 [brief, pages 6-8]. The
examiner responds that the fact that Tejima suggests
“sequentially” and “polls” client devices, by definition one and
only one device is selected at any given time [answer, pages 9-
10]. Appellants respond that the sequential selection disclosed
by Tejima does not meet the recitation of one and only one as
set forth in claims 25 and 27 [reply brief].
We agree with the position argued by appellants. The
recitation of “one and only one” in appellants’ claims requires
that only one client device in total acknowledge receipt of each
bit broadcast by the master device. This precludes a plurality
of client devices acknowledging receipt, even if the client
devices acknowledge receipt in sequence. In other words, one
and only one means one total, not one at a time. Since the
sequential polling arrangement of Tejima does not meet the “one
and only one” recitation of independent claims 25 and 27, we do
not sustain the examiner’s anticipation rejection of independent
claims 25 and 27 or of any of the claims which depend therefrom.

Appeal No. 2000-1699
Application No. 08/706,123
6
We now consider the rejection of claims 26, 11, 12 and 14-
16 under 35 U.S.C. § 103 based on the teachings of Tejima and
the admitted prior art. 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, 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
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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)].
The examiner applies Tejima in the same manner as
discussed above. The examiner notes that wired network
calculators are known from the admitted prior art. The examiner
finds that it would have been obvious to the artisan to create a
calculator network as set forth in independent claim 26 [answer,
pages 7-8]. Appellants make the same arguments discussed above
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as well as arguing that the admitted wired connections of the
prior art do not suggest the recitation of independent claim 26
[brief, pages 11-14].
As noted above, Tejima does not disclose the receipt
acknowledgment as set forth in the independent claims on appeal.
We also agree with appellants that the admitted prior art of
wired calculator networks does not teach or suggest selecting
one and only one client calculator for acknowledgment as recited
in independent claim 26. The admitted prior art does not say
anything about how a wired client calculator would acknowledge
receipt to the master calculator or even if such acknowledgment
would have been necessary. Since the record in this case does
not support the examiner’s finding of obviousness, we do not
sustain the examiner’s rejection of independent claim 26 or of
any of the claims which depend therefrom.
In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 3, 4, 6-9, 11, 12, 14-
16 and 20-27 is reversed.
REVERSED
Appeal No. 2000-1699
Application No. 08/706,123
9

JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
JS/ki
Appeal No. 2000-1699
Application No. 08/706,123
James C. Kesterson
Texas Instruments Incorporated
P.O. Box 655474
MS 3999
Dallas, TX 75265