Ex parte Walsh

Board of Patent Appeals and Interferences

Mar 13, 2001

07955768 (B.P.A.I. Mar. 13, 2001)

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publication and is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM J. WALSH
_____________
Appeal No. 1998-2672
Application No. 07/955,768
______________
ON BRIEF
_______________
Before BARRETT, RUGGIERO, and LEVY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-3, 8-12, and 17-26. Claims 14-16 have been
allowed by the Examiner while claims 4-7 and 13 have been
canceled.
The disclosed invention relates to a method and apparatus
for synchronizing base-stations in a global positioning system
(GPS) based communication system. In the event of GPS
Appeal No. 1998-2672
Application No. 07/955,768
2
failure, an alternate signal, such as a Long Range Navigation
(LORAN) signal, is used to provide redundant synchronization.
In order to achieve the degree of accuracy provided by the GPS
signal when using the alternate signal, the alternate signal
is characterized by utilizing the GPS signal during times when
the GPS signal is present.
Claim 1 is illustrative of the invention and reads as
follows:
1. An apparatus for providing synchronization for a
base-station in a communication system, the apparatus
comprising:
means for receiving a first clocking signal from
a source external to the base station, the first clocking
signal having a first frequency with a first stability
and utilized for synchronization when available;
means for providing a second clocking signal
having
a second frequency with a second stability, the second
stability being less than the first stability;
means for characterizing the second stability of
the second clocking signal utilizing said first clocking
signal to produce characterization information; and
means, coupled to said means for characterizing,
for employing said second clocking signal and said
characterization information for synchronization when
said first clocking signal is absent.
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3
The Examiner relies on the following prior art:
Ernst et al. (Ernst) 5,052,030 Sep. 24, 1991
Averbuch 5,245,634 Sep. 14, 1993
(filed Mar. 23, 1992)
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4
Claims 1-3, 8-12, and 17-26 stand finally rejected under
35 U.S.C. § 103 as being unpatentable over Averbuch in view of
Ernst.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (paper no. 27) and
Answer (paper no. 28) for the respective details.
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, Appellant’s arguments
set forth in the Brief 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 1-3, 8-12, and 17-26. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
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Application No. 07/955,768
5
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837
F.2d 1071, 1074, 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,
Appeal No. 1998-2672
Application No. 07/955,768
6
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).
With respect to independent claims 1, 9, 17, 20, 21, and
24, the Examiner, as the basis for the obviousness rejection,
proposes to modify the synchronization system disclosure of
Averbuch. In the Examiner’s view, Averbuch discloses a backup
clocking system for establishing synchronization as claimed
except for the feature of improving the accuracy of a second
clocking signal used for synchronization when a first clocking
signal is absent. To address this deficiency, the Examiner
turns to Ernst and concludes that:
Therefore, it would have been obvious
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to one of ordinary skill in the art at
the time the invention was made to modify
the Averbuch system by providing the
teaching of the Ernst backup clock system
in order to maintain a faultless synchronization
of a backup clock to a reference clock as
taught by Ernst (Col. 2, lines 3-5). [Answer,
pages 3 and 4.]
After reviewing the Averbuch and Ernst references, in
light of the arguments of record, we are in agreement with
Appellant that proper motivation has not been set forth for
the Examiner’s proposed combination so as to establish a prima
facie case of obviousness. In making this determination, our
interpretation of the disclosure of Ernst coincides with that
of Appellant. Rather than suggesting the improvement of the
stability of a backup clocking source by utilizing a primary
clocking source signal as in the appealed claims, the problem
addressed by Ernst is the elimination of glitches such as
phase shifts on switching from active to backup central clock
generators. Ernst attacks this problem by providing a
technique for synchronizing the generated clock signal within
each of the active and backup central clock generator circuits
with an external reference signal during certain window
periods tied to the generated clock signal (Ernst, Figs. 2 and
Appeal No. 1998-2672
Application No. 07/955,768
Although not considered by the Examiner according to the record, we have1
undertaken a consideration of an alternative interpretation of Averbuch in which the
signal from central site 100 is interpreted as Appellant’s claimed higher stability
first clocking signal from an external source while the local clock signal in each of
Averbuch’s base stations 102, 103 is interpreted as the claimed lower stability second
clocking signal. This interpretation of Averbuch, however, also fails to meet the
claimed requirements since the lower stability clocking signal is not used for
synchronization when the higher stability clocking signal is absent or unavailable.
8
3). Given this disclosure of Ernst, it is unclear how and in
what manner the Examiner would combine Ernst with Averbuch to
arrive at Appellant's claimed invention.
We further agree with Appellant's argument (Brief, page
8) that, even assuming arguendo that Averbuch and Ernst could
be combined, the resulting structure would fall short of
meeting the requirements of the appealed claims. In our view,
as also asserted by Appellant, the combination of Averbuch and
Ernst at best would result in a system in which the primary
and backup clocking systems would each be synchronized in
operation permitting a glitchless transfer between the primary
and backup clocking systems. Such a system, however, would be
lacking in any provision for improving the stability of the
backup clocking system by generating characterization
information related to the backup clocking signal by utilizing
the primary clocking signal.1
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Application No. 07/955,768
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Accordingly, since the Examiner has not established a
prima facie case of obviousness, the 35 U.S.C. § 103 rejection
of independent claims 1, 9, 17, 20, 21, and 24, and claims 2,
3, 8, 10-12, 18, 19, 22, 23, 25, and 26 dependent thereon,
cannot be sustained. Therefore, the decision of the Examiner
rejecting claims 1-3, 8-12, and 17-26 is reversed.
REVERSED
)
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART S. LEVY )
Administrative Patent Judge )
JFR:hh
Appeal No. 1998-2672
Application No. 07/955,768
10
RICHARD A. SONNENTAG
MOTOROLA, INC.
1303 East Algonquin Rd.
Schaumburg, IL 60196