Ex Parte Tiedemann et al

Board of Patent Appeals and Interferences

Mar 27, 2002

08588149 (B.P.A.I. Mar. 27, 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not written for publication and is not binding precedent of the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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte EDWARD G. TIEDEMANN, JR.,
LINDSAY A. WEAVER, JR., and ROBERTO PADOVANI
__________
Appeal No. 2000-1546
Application 08/588,149
___________
ON BRIEF
___________
Before JERRY SMITH, LALL and LEVY, 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 rejection of claims 16-41, which constitute
all the claims remaining in the application.
The disclosed invention pertains to a method and
Appeal No. 2000-1546
Application 08/588,149
Representative claim 16 is reproduced as follows:
16. A method for reducing interference in a
communication channel used by at least one of a plurality of
first transceivers to initiate communication with a second
transceiver, said method comprising the steps of:
transmitting from said at least one first transceiver an
access probe at a first level of power, said first level of power
being determined on the basis of signal power received from said
second transceiver;
determining whether said access probe has been received
at said second transceiver; and
retransmitting said access probe from said at least one
first transceiver at a level of power greater than said first
level of power until said access probe is received at said second
transceiver.
The examiner relies on the following references:
Gilhousen et al. (Gilhousen) 5,416,797 May 16, 1995
(filed on Jun. 25, 1990)
Seki et al. (Seki) JP 02-256331 Oct. 17, 1990
Imamura et al. (Imamura) JP 03-231523 Oct. 15, 1991
Claims 16-18, 22, 24, 32, 36-38 and 40 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by the disclosure
of Imamura. Claims 19-21, 23, 25-31 and 39 stand rejected under
35 U.S.C. § 103 as being unpatentable over the teachings of
Imamura and Gilhousen. Claims 33-35 and 41 stand rejected under
Appeal No. 2000-1546
Application 08/588,149
examiner’s answer [page 4].
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 supports the rejections as set
forth by the examiner. Accordingly, we affirm.
Appellants indicated in the main appeal brief that the
claims on appeal would stand or fall together as a single group
Appeal No. 2000-1546
Application 08/588,149
argued. Since the examiner is not permitted to respond to
arguments made in a reply brief, we do not have the position of
the examiner with regard to the separate patentability of claims
16 and 36 as argued by appellants. Therefore, we will not accept
a grouping of claims first proposed in a reply brief because the
examiner has not had an opportunity to properly respond to such
arguments. Permitting a new group of claims to be argued in a
reply brief would simply encourage an appellant to withhold
arguments until after the examiner’s answer has been received. We
do not intend to encourage such a practice. Therefore, for the
purpose of making the decision in this appeal, all claims will
stand or fall together in a single group as indicated in the main
brief. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137
(Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1,
3 (Fed. Cir. 1983). Accordingly, we will consider the rejection
against independent claim 16 as representative of all the claims
on appeal.
Representative independent claim 16 stands rejected under
Appeal No. 2000-1546
Application 08/588,149
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 claim
16 in the disclosure of Imamura [answer, pages 4-5]. Appellants
argue that in Imamura, the mobile station makes no estimation at
all, based on received power or anything else, as to what the
power level of its first transmission should be [brief, 5th
page]. The examiner responds that appellants’ argument is not
commensurate in scope with the claimed invention. The examiner
finds that the recitation “signal power received from said second
transceiver” in claim 16 reads on the minimum transmission power
information that the mobile station in Imamura receives from the
base station. Appellants respond that Imamura teaches
determining the power with which the access probe is to be
Appeal No. 2000-1546
Application 08/588,149
unit before the mobile unit sends an access probe to the base
unit [translation, page 8]. The only question is whether this
minimum transmission information constitutes “signal power
received from said second [base] transceiver.” Although
appellants argue that the examiner’s interpretation of the
claimed phrase is inconsistent with the specification, we do not
agree. The specification does not provide that “signal power
received from said second transceiver” must be interpreted in
only one way. We agree with the examiner that, broadly speaking,
the transmission of information related to what signal power to
use in Imamura means that the determination is based on signal
power received from the base unit. In other words, we find that
the phrase in question is met by a disclosure in which the signal
power of the base unit is detected or by a disclosure in which
the signal power of the mobile unit is assigned based on
information from the base unit. The claims on appeal could
easily be amended to prevent this second interpretation from
applying.
Appeal No. 2000-1546
Application 08/588,149
the claims stand or fall together as a single group, we also
sustain this rejection with respect to claims 17, 18, 22, 24, 32,
36-38 and 40. Although claims 19-21, 23, 25-31, 33-35, 39 and 41
are rejected under 35 U.S.C. § 103 using Imamura with an
additional reference, appellants have made no arguments with
respect to the rejections under 35 U.S.C. § 103. Since we find
that the examiner has established a prima facie case of
obviousness, and since appellants have presented no arguments in
opposition to this rejection, we also sustain the rejection of
claims 19-21, 23, 25-31, 33-35, 39 and 41.
In summary, we have sustained each of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 16-41 is affirmed.
Appeal No. 2000-1546
Application 08/588,149
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2000-1546
Application 08/588,149
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