Ex Parte Sullivan

Board of Patent Appeals and Interferences

Dec 9, 2009

09477954 (B.P.A.I. Dec. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JONATHAN LEE SULLIVAN
____________

Appeal 2009-004845
Application 09/477,954
Technology Center 2600
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Decided: December 9, 2009
____________

Before ROBERT E. NAPPI, KARL D. EASTHOM, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE

Appellant appeals1 under 35 U.S.C. § 134(a) from the rejection of
claims 3-10 and 12-14. The Examiner objected to claim 11 as being
allowable if rewritten in independent form. No other claims are pending.
(Br. 1, 3.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant invented an internal 20 and external 22 antenna
combination for a wireless telephone handset 10. The internal antenna 20
comprises an antenna plastic mold or housing carrying a metal conductive
antenna such as a “meander line, micro–strip patch, or another antenna
design.” (Spec. 4:13-15.) The external antenna 22 slides into and out of the
internal antenna unit 20. An RF port 18 is attached to the internal antenna
20. (Spec. 4: 1-22; Figs. 1-2.)
Exemplary claim 5 follows:
5. A wireless communication device, comprising:

a housing;

a transceiver circuit disposed within said housing;

an internal antenna disposed within said housing; and
an external, retractable antenna movably mounted on said
internal antenna and being movable between a retracted
position and an extended position with respect thereto;

1 Appellant’s Brief (filed July 14, 2008) (“Br.”) and the Examiner’s Answer
(mailed Oct. 8, 2008) (“Ans.”), are referenced in this opinion.
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said internal antenna being in circuit with said transceiver
circuit when said external antenna is in its said retracted
position;

said internal antenna being out of circuit with said
transceiver circuit when said external antenna is in its
said extended position;

said external antenna being in circuit with said
transceiver circuit when in its said extended position;
and

said external antenna being out of circuit with said
transceiver circuit when in its said retracted position.

The Examiner relies on the following prior art references:
Egashira US 4,862,182 Aug. 29, 1989
Inubushi US 5,109,539 Apr. 28, 1992
Swope US 5,663,692 Sept. 2, 1997

The Examiner rejected claims 5-7 as anticipated under 35 U.S.C.
§ 102(b) based on Inubushi; claims 3, 4, 8, and 9 as obvious under 35 U.S.C.
§ 103(a) based on Inubushi, Egashira, and Swope; claims 10, 12, and 13 as
obvious under 35 U.S.C. § 103(a) based on Inubushi and known prior art;
and claim 14 as obvious under 35 U.S.C. § 103(a) based on Inubushi, known
prior art, Egashira, and Swope.
ISSUE
Appellant contends (Br. 10-11) that Swope does not disclose an
external antenna mounted on an internal antenna as claim 5 requires, raising
the following issue: Did Appellant show that the Examiner erred in finding
that Inubushi discloses an external antenna mounted on an internal antenna
as claim 5 requires?
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Appellant also contends (Br. 11-12) that Egashira does not disclose a
remote RF port as claims 3, 4, 8, and 9 require. The Examiner found (Ans.
5-6) that Inubushi, Egashira and Swope collectively teach the RF port
limitation. Appellant’s contention raises the following issue: Did Appellant
show that the Examiner erred in finding that the references collectively teach
an “RF port . . . mechanically connected to said internal antenna” as claims
3, 4, 8, and 9 require?
FINDINGS OF FACT (FF)
Appellant’s Disclosure
1. As indicated supra in the “STATEMENT OF THE CASE” 2
section, Appellant’s internal antenna 20 comprises an antenna plastic
housing carrying a metal plated internal antenna conductive portion – e.g.,
“meander line, micro–strip patch, or another antenna design.”
As also indicated supra, Appellant’s disclosed external antenna 22
slides into and out of the housing portion of internal antenna 20. (See Fig.
1.) Appellant does not describe the external antenna 22 as “mounted on” the
internal antenna 20 anywhere in the Specification as originally or currently
filed.
On the other hand, Appellant describes “[a]n external retractable
antenna . . . mounted on the housing . . . selectively movable between a
retracted position and an extended position. (Abstract (emphasis added).)
The housing referenced in the preceding sentence constitutes a “telephone
handset . . . housing” (having “[a]n internal antenna . . . disposed within the
housing . . . .”) (Abstract.) In other words, the term “housing” in this

2 These factual findings will hereinafter be included in any reference to “FF
1.”
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paragraph refers to the handset housing - not the housing portion of the
internal antenna 20 described supra.
Appellant also states that the “[i]nternal antenna 20 is provided or
mounted in the interior of the handset 10 . . . .” (Spec. 4:10-11 (emphasis
added).) Figure 3 shows an exploded view of antenna element 20 indicating
that internal antenna 20 is provided, or placed into, the handset housing 12,
14.
The external antenna and the conductive portion of the internal
antenna are attached to a switching mechanism which selects which antenna
to attach to a transceiver circuit depending on the external antenna position,
but the two antennas are electrically disconnected from each other. (Spec.
2:15-20, 4:23-25; Claims 6 and 7.)

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Inubushi
2. A reduced version of Inubushi’s Figures 4-6 appear below:

Inubushi’s Figures 4-6 above depict different views of a portable
telephone housing 1 having an “internal antenna unit 10,” external antenna
unit 8, mounting element 9, and switch 11 connecting the two antennas.
(Col. 1, ll. 28-39.)
Inubushi states that “element 9 is a member for mounting the external
antenna 8 to the housing and electrically connecting it thereto. Element 10
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is an internal antenna unit contained in the housing 1 and 11 is a change-
over switch for switching to and from the internal antenna 10 and the
external antenna 8.” (Col. 1, ll. 34-39.) Upon sliding the external antenna 8
into the housing 1, the switch 11 switches from the external antenna 8 to the
internal antenna 10. (Col. 1, ll. 41-49.)
Swope
3. Swope discloses an RF port 113 on a conductive switch assembly
100 for mounting an external antenna 103 to a portable two-way radio 101.
(Col. 1, ll. 55-57; col. 2, ll. 3-6; Fig. 1.)
Egashira
4. Egashira discloses a portable radio telephone having an external
sliding antenna 1 attached at its internal end to a cam 4 and sliding through a
conductive tube 9 within the telephone case. The tube 9 or cam 4 connects
to an internal sub-antenna unit 10 depending on the sliding position of the
antenna 1. (Figs. 1, 2a, 2b; Abstract, col. 3, ll. 19-43.)
PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellant has the burden
on appeal to show reversible error by the Examiner in maintaining the
rejection. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On
appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness.”) (citation
omitted).
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Under § 102, Appellant may sustain this burden by showing that the
prior art reference relied upon by the Examiner fails to disclose an element
of the claim. “It is axiomatic that anticipation of a claim under § 102 can be
found only if the prior art reference discloses every element of the claim.”
In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). “A reference anticipates a
claim if it discloses the claimed invention ‘such that a skilled artisan could
take its teachings in combination with his own knowledge of the particular
art and be in possession of the invention.’” In re Graves, 69 F.3d 1147,
1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA
1962) (emphasis omitted).
Under § 103, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known
elements in the fashion claimed . . . .” KSR Int’l. Co., v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
ANALYSIS
Anticipation
Claim 5
Claim 5 recites “an external, retractable antenna movably mounted on
said internal antenna.” Appellant provides no definition for the phrase
“mounted on.” Appellant’s disclosure does not describe any mounting
relationship between the external 22 and internal 20 antennas. On the other
hand, the disclosure describes the external antenna 22 as “mounted on” the
handset housing, with the external antenna sliding into and out of the
internal antenna 20. The disclosure also describes the internal antenna 20 as
“provided or mounted” in the handset housing. (FF 1.)
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Appellant’s disclosure indicates that the term “mounted on,” at least
as applied to the external antenna 22, reasonably means “provided in” the
handset housing 12, 14 . (FF 1, see Fig. 3.) Appellant’s disclosure also
indicates that the phrase “movably mounted on” in claim 5 requires the
external antenna to move, relative to the internal antenna housing (and/or the
conductive antenna portion therein), only by sliding into and out of the
internal antenna housing. (See FF 1.) This latter interpretation also
comports with Appellant’s use of the term “mounted on” to mean “provided
in,” because Appellant’s external antenna is “provided in” the internal
antenna housing (as the former slides into the latter).
Inubushi’s external antenna 8 and internal antenna 10 are respectively
mounted on and within the housing 1 at or near the top of the housing. The
external antenna 8 is attached to element 9 which is attached to the housing
1 within the periphery of the internal antenna unit 10. One wall of element 9
appears to co-extend with a wall of the internal antenna unit 10. Antennas 8
and 10 are electrically and physically connected via a switch 11. External
antenna 8 movably slides into internal antenna 10 without any other
movement relative to it. (FF 2; see also Ans. 3, 4, 9.) Therefore, similar to
Appellant’s disclosed mounting relationship, Inubushi’s, external antenna 8
is “mounted on” the internal antenna unit 10 by being securely “provided in”
it and moving only by sliding relative to it, thereby satisfying the disputed
phrase of claim 1.
In reading claim 5 on Inubushi’s Figures 4 and 5, the Examiner
reasoned as follows:
Even though Inubushi et al. state that element 9 is a member for
mounting the external antenna 8 to the housing and electrically
connecting it thereto, fig.4-5 of Inubushi et al. clearly show that
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element 9 is mounted or is part of the internal antenna 10 and
the external, retractable antenna 8 passes through (i.e.,
movable) element 9 and the internal antenna 10 during insertion
and extraction.
(Ans. 9.)
While Appellant states (Br. 12) that “the Examiner is reading too
much into the [Inubushi] Figures,” Appellant does not persuasively dispute
the Examiner’s particular finding (Ans. 9) that “element 9 is mounted or is
part of the internal antenna 10,” nor the Examiner’s reasoning that “passing
through” constitutes mounting. Element 9 directly attaches the external
antenna to the handset housing and appears to be co-extensive with a wall of
the internal antenna unit 10. (See FF 2.) In any case, even without the
Examiner’s additional finding as to element 9, according to the discussion
above, passing or sliding through so as to be provided securely within the
internal antenna without otherwise moving relative to it, reasonably satisfies
the claimed mounting arrangement.3 As such, based on the discussion
above, the relative persuasiveness of the arguments, the respective burdens
on appeal, and as buttressed by the Examiner’s unrebutted finding and
reasoning (Ans. 9 (quoted supra)), Inubushi satisfies the claimed mounting
arrangement as reasonably interpreted in light of Appellant’s disclosure.
“The problem in this case is that the appellants failed to make their
intended meaning explicitly clear.” In re Morris, 127 F.3d 1048, 1056 (Fed.
Cir. 1997). “It is the applicants’ burden to precisely define the invention,
not the PTO’s.” Id. (citation omitted). Accordingly, for the reasons
explained supra, Appellant has not demonstrated that the Examiner erred in

3 See Webster’s II New Riverside University Dictionary 772-73 (1984)
(“[M]ount . . . 6a. To secure firmly to a support. b. To place or fix on or in a
secure place for display, study, or use.”).
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finding that Inubushi’s external antenna is “movably mounted on said
internal antenna” as required by claim 5.
Claims 6-7
Appellant does not present separate arguments (see Br. 12) for
dependent claims 6-7 rejected as anticipated by Inubushi and therefor also
has not demonstrated Examiner error in the rejection of these claims.
Obviousness
Claims 3, 4, 8, and 9
Appellant’s arguments (Br. 12) that Egashira “does not cure the defect
of” Inubushi and that Egashira’s “‘conductive tube 9’” does not satisfy the
“remote RF port [limitation] as recited in claims 3, 4, 8, and 9” do not
address the Examiner’s finding based on Inubushi, Egashira, and Swope. In
particular, the Examiner found (Ans. 5) that “Swope teaches a remote RF
port (fig. 1-2, remote RF port 113 or 213, col. 2, lines 3-29).”
Appellant does not address Swope’s teachings as outlined by the
Examiner. Swope discloses (FF 3) an RF port 113 for mounting an external
antenna 103 that is similar to Inubushi’s external antenna 8 (FF 2) and
Egashira’s external antenna 1 (FF 4).
Construed liberally, Appellant’s arguments (Br. 12-13) against
Egashira’s conductive tube (as modified by Swope’s remote RF port)
perhaps rely on the following recitation in claims 3, 4, 8, and 9: “wherein a
remote RF port is provided which is mechanically connected to said internal
antenna.” That is, Appellant argues (Br. 13) that Egashira’s “conductive
tube 9 is only mechanically connected to sub-assembly 10 when the main
antenna is in the retracted position.”
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However, Egashira’s conductive tube 9 is mechanically connected to
the internal antenna sub-assembly 10 at all times, either directly when the
antenna 1 is not in the extended position, or indirectly via the cam 4 when
the external antenna is in the extended position. Alternatively, an indirect
mechanical connection exits for all of Egashira’s antenna parts through the
telephone case or housing. (FF 4.)
Therefore, the record does not support Appellant’s argument (Br. 13).
Modifying Inubushi’s antenna to include Swope’s RF port and switch, and
Egashira’s dual antenna and conductive tube assembly, satisfies the claim
limitation of “wherein a remote RF port is provided which is mechanically
connected to said internal antenna.”
Accordingly, Appellant has not demonstrated Examiner error in the
rejection of claims 3, 4, 8, and 9.
Claims 10, 12, 13, and 14
Appellant’s arguments (App. Br. 13-14) against the obviousness
rejection of claims 10, 12, and 13 based on Inubushi and well known prior
art, and against the obviousness rejection of claim 14 based on the additional
references to Egashira and Swope, respectively rely on the arguments
presented for claim 5, and claims 3, 4, 8, 9, and 10. Accordingly, for the
reasons explained above, we will sustain the rejections of claims 10, 12, 13,
and 14. See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987); 37 C.F.R.
§ 41.37(c)(1)(vii).
CONCLUSION
Appellant did not show that the Examiner erred in finding that
Inubushi discloses an external antenna mounted on an internal antenna, as
claim 5 requires, and that the references collectively teach an “RF port . . .
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mechanically connected to said internal antenna,” as claims 3, 4, 8, and 9
require.
DECISION
We affirm the Examiner's decision rejecting claims 3-10 and 12-14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

ack
cc:

Brian Kinnear
Holland & Hart LLP
555 Seventeenth Street Suite 3200
Denver, CO 80202