Ex Parte Vogeleisen

Board of Patent Appeals and Interferences

Mar 22, 2004

08970883 (B.P.A.I. Mar. 22, 2004)

-1-
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today was not written for publication and is not
binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MARC VOGELEISEN
________________
Appeal No. 2002-1328
Application 08/970,883
________________
ON BRIEF
________________
Before JERRY SMITH, LEVY, and BLANKENSHIP, 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 7 and 9, which constitute
the only claims remaining in the application.

Appeal No. 2002-1328
Application 08/970,883
-2-
The disclosed invention pertains to a communication
device of the type comprising a personal device and a base
station. The personal device has a transceiver, a microphone, a
speaker and a keyboard. The invention uses an emergency key on
the keyboard which dials a pre-stored number, activates the
microphone and speaker of the personal device, and activates a
speaker in the base unit.
Representative claim 7 is reproduced as follows:
7. A communication system comprising:

a personal device having a transceiver, a microphone, a
speaker and a keyboard;
a base station connectable to said personal device by a
radio link, said base station being connected to a switched
network;
said keyboard including an emergency key which dials a pre-
stored number and activates said microphone and said speaker for
hands-free operation of said personal device; wherein said base
station includes a base speaker which is activated by said
emergency key.
The examiner relies on the following references:
Lewo 4,870,676 Sep. 26, 1989
Nakajima et al. (Nakajima) 5,802,476 Sep. 01, 1998
(filed Dec. 29, 1995)
Kim 5,960,357 Sep. 28, 1999
(filed Aug. 23, 1996)
Appeal No. 2002-1328
Application 08/970,883
-3-
Claims 7 and 9 stand rejected under 35 U.S.C. § 103(a).
As evidence of obviousness the examiner offers Kim in view of
Lewo and Nakajima.
Rather than repeat the arguments of appellant 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 rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection 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 and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 7 and 9. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
Appeal No. 2002-1328
Application 08/970,883
-4-
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 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
Appeal No. 2002-1328
Application 08/970,883
-5-
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 appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
[see 37 CFR § 1.192(a)].
The examiner has indicated how he finds the claimed
invention to be obvious over the teachings of the applied prior
art. Specifically, the examiner finds that Kim teaches the
claimed invention except that Kim does not teach activating the
speaker and microphone of the handset in response to a single
key. The examiner cites Lewo as teaching this feature and
asserts that it would have been obvious to the artisan to add
this feature to the telephone system of Kim. The examiner
acknowledges that the combination of Kim and Lewo still does not
teach an emergency key that also activates a base station
speaker. The examiner cites Nakajima as teaching this feature
and asserts that it would have been obvious to the artisan to
Appeal No. 2002-1328
Application 08/970,883
-6-
modify the system of Kim and Lewo with this feature from Nakajima
for added convenience [answer, pages 4-5].
Appellant argues that the combined teachings of Kim, Lewo
and Nakajima fail to teach or suggest a single button that
activates the base speaker as well as the speaker and microphone
of the handset. Appellant notes that different keys are used to
activate the same functions in the applied prior art. Appellant
argues that the motivation of convenience as asserted by the
examiner does not support the rejection because the prior art
does not disclose the emergency key as claimed [brief, pages 7-
10].
The examiner responds that each of the three references
teach telephone functions that are activated by a single key
press. The examiner repeats his assertion that the claimed
invention would have been obvious in view of the combined
teachings of the applied prior art [answer, pages 5-7].
Appellant responds that the applied prior art fails to
teach that a single emergency key dials a pre-stored number,
activates the microphone and speaker of the personal device and
activates the speaker of the base device [reply brief].
We will not sustain the examiner’s rejection of claims 7
and 9. The claimed invention recites a system and method in
Appeal No. 2002-1328
Application 08/970,883
-7-
which the depression of a single emergency key dials a pre-stored
telephone number, activates the speaker and microphone of a
personal device and activates the speaker of a base unit. The
examiner has found a first reference which teaches that a single
key can cause a pre-stored telephone number to be dialed, a
second reference which teaches that a single key can cause the
speaker and microphone of a personal device to be activated, and
a third reference which teaches that a single key can cause the
speaker of the base unit to be activated. Although the applied
prior art teaches that the three functions of the claims can each
be individually activated by depression of a single key, there is
no teaching or suggestion of using a single emergency key to
activate all three functions. Appellant’s disclosure explains
the need for activating the three functions at the same time in
an expeditious manner using a single emergency key. The applied
prior art does not recognize the need for the claimed three
functions to be activated at the same time. Since the need is
not recognized, the applied prior art makes no suggestion that
the same key should be used to activate all three functions in
the event of an emergency. The only suggestion to use a single
emergency key to activate all three functions at the same time
comes from appellant’s specification. The examiner has provided
Appeal No. 2002-1328
Application 08/970,883
-8-
no reasonable suggestion, based on the teachings of the
references only, as to why the artisan would have been motivated
to implement the three claimed functions based on a single
emergency key as claimed. As far as the applied references are
concerned, there is no interrelationship between the three
functions. There would, therefore, appear to be no reason to use
the same emergency key to activate all three functions when they
have no apparent relationship within the applied prior art.
In summary, the decision of the examiner rejecting claims
7 and 9 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
STUART S. LEVY ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JS/dal
Appeal No. 2002-1328
Application 08/970,883
-9-
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR NY 10510