Ex Parte Wiedeman et al

Board of Patent Appeals and Interferences

Sep 21, 2010

09751765 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/751,765 12/29/2000 Robert A. Wiedeman YR0-61 5071
71920 7590 09/22/2010
K&A ASSOCIATES
1407 FOOTHILL BLVD ., SUITE 233
LA VERNE, CA 91750
EXAMINER
PEREZ, JULIO R
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
09/22/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT A. WIEDEMAN, MICHAEL J. SITES,
and PAUL A. MONTE
____________

Appeal 2009-004869
Application 09/751,765
Technology Center 2600
____________

Before MAHSHID D. SAADAT, KARL D. EASTHOM,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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2
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 through 25. The remaining claim, claim 26, has been allowed. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to a method of operating a satellite
communication system, such as a satellite telephony system. The satellite
communication system comprises at least one gateway (GW) for
interconnecting the satellite communications system to other communication
services, such as the public switched telephone network, and for
communicating with a constellation of satellites and through the
constellation of satellites to at least one user terminal (UT), such as a
satellite telephone. Each UT has a determined location and an estimated
error (E) associated with the determined location. According to Appellants’
disclosure, a zone of interference or exclusion zone is defined by a
confidence polygon around a protected site. The confidence polygon has an
associated confidence limit (CL). Service is provided to the UT depending
on the determined location of the UT in conjunction with a comparison of E
to CL. Claim 1 is illustrative of the claims on appeal:
1. A method for operating a mobile satellite
communication system having at least one gateway (GW), at
least one user terminal (UT), and a constellation of satellites,
comprising steps of:
allowing access to said constellation of communication
satellites by specifying an exclusion zone having a confidence
limit (CL) associated therewith; and
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selectively providing service to a UT depending on a
determined location of the UT relative to the exclusion zone
and on an estimated error (E) of the determined UT location.

The Examiner relies on the following prior art in rejecting the claims:
Helm US 6,157,834 Dec. 5, 2000
Ishikawa US 6,166,687 Dec. 26, 2000
Maeda US 6,352,222 B1 Mar. 5, 2002
Steer US 6,643,517 B1 Nov. 4, 2003
Martti US 6,718,169 B1 Apr. 6, 2004
Claims 1, 7, and 19-25 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) over Steer in view of Helm and further in view of Martti.
Claims 2-6 and 8-12 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) over Steer in view of Helm and Martti and further in view of
Maeda.
Claims 13-18 stand rejected as unpatentable under 35 U.S.C. § 103(a)
over Steer in view of Helm, Martti, and Maeda and further in view of
Ishikawa.
We make reference to the Brief (filed Nov. 23, 2007) and the Answer
(mailed Feb. 26, 2008) for their respective details. Only those arguments
actually made by Appellants have been considered in this decision.
Arguments which Appellants did not make in the Brief have not been
considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
Claim 1 is the only independent claim at issue in this case. Appellants
have presented no arguments for the patentability of dependent claims 7, 11,
and 19-25, other than those presented for claim 1, from which they depend,
so claims 7, 11, and 19-25 stand or fall with claim 1.
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For each ground of rejection Appellants have argued that the
combination of the cited art is an exercise of impermissible hindsight or a
combination of unrelated art and have further argued that the combinations
do not meet the claims.
The issues are:
1. Is claim 1 properly rejected as obvious under 35 U.S.C. §
103(a) over Steer in view of Helm and further in view of Martti?
2. Are claims 2-6, 8-10, and 12 properly rejected as obvious under
35 U.S.C. § 103(a) over Steer in view of Helm and Martti and further in
view of Maeda?
3. Are claims 13-18 properly rejected as obvious under 35 U.S.C.
§ 103(a) over Steer in view of Helm, Martti, and Maeda and further in view
of Ishikawa?

FINDINGS OF FACT (FF)
Steer
1. Steer discloses a mobile radio (e.g., cellular phone) system
having a plurality of base stations interconnected through a mobile
communications network in which mobile radio units communicate through
the base stations with the mobile communications network (col. 4, ll. 46-51;
Fig. 1).
2. Steer discloses determining mobile radio unit locations and
defining a protected region within a service region of a radio
communications network so that when a mobile radio unit is within the
protected region its operation is constrained in order to avoid safety concerns
due to interference (col. 1, ll. 12-15; col. 3, ll. 59-67) or to avoid nuisance
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operation (col. 3, ll. 4-15, 64-67) and to insure that its operation is not
constrained when it is outside the protected region (col. 3, ll. 32-60).
3. Steer discloses that one form of constraint of a mobile radio
unit within a protected region is to turn off the mobile radio unit’s
transmitter (col. 3, ll. 23-25; col. 6, ll. 38-41).
4. Steer discloses that there may be inaccuracies in the location of
the mobile radio unit and the definition of the protected region, and that one
or more accuracy limits may be defined for each protected region and that
location accuracy information and accuracy limits may be used in
accommodating partial penetration of a protected region (col. 3, ll. 23-25;
col. 9, ll. 23-35).
5. Steer discloses defining a protected region as a volume of space
within geographic boundaries which may be defined by latitudes and
longitudes (col. 5, ll. 3-16).
6. Steer discloses that mobile radio units may determine their
locations at the mobile radio units, that they may do so by reference to
information transmitted to them from the base stations, and that they do not
broadcast their location information (col. 5, ll. 41-43; col. 8, ll. 44-60; col. 9,
ll. 1-11).
7. Steer discloses that protected regions may move (col. 4, ll. 53-
56; col. 10, ll. 25-32).
Helm
8. Helm discloses interoperable terrestrial and satellite cellular
systems having a plurality of base stations, interface and regional GWs, and
a satellite network, in which a subscriber unit communicates with a GW
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through a base station or through one of the satellites (col. 2, ll. 20-34; Fig.
1).
Martti
9. Martti discloses a telecommunication network, such as a mobile
telephone network, in which a CL threshold value is set for an indicator of
fault in a network element, an indicator value is compared to the CL
threshold value and system notifications are initiated based on the
comparison (col. 1, ll. 60-67; col. 2, ll. 1-45).
Maeda
10. Maeda discloses a satellite communication system in which
regions on the ground are defined by polygons specified in terms of latitudes
and longitudes (Fig. 7; col. 10, ll. 32-39).
11. Maeda discloses that the region on the ground may be defined
in part by an elevation (col. 10, ll. 34-39).
Ishikawa
12. Ishikawa discloses a satellite communication system in which
mobile earth stations communicate with a terrestrial (land) earth station
through a non-geostationary satellite (col. 5, ll. 26-50).
13. Ishikawa discloses a satellite communication system in which
the location of a mobile earth station is determined in part by estimating Es
in location information due to mobile earth station position instability,
mobile earth station clock instability, and mobile earth station frequency
oscillator instability (col. 6, ll. 11-21; col. 14, ll. 14-19).
14. Ishikawa discloses determining mobile earth station position
information at the mobile earth station and transmitting that information to a
land earth station through a satellite (col. 3, ll. 38-44).
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PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. . . . [I]f a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417.
“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.” Id. at 419.
[T]he problem motivating the patentee may be only one of
many addressed by the patent's subject matter. The question is
not whether the combination was obvious to the patentee but
whether the combination was obvious to a person with ordinary
skill in the art. Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
Id. at 420.
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” Id. at 421.
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“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
1. Claims 1, 7, 11, and 19-25
Appellants argue for each of the rejected claims that the Examiner’s
proposed combination of references is improper because the references do
not contain a teaching, suggestion, or motivation (TSM) to prompt the
combination (see, e.g., Br. 8). However, the use of TSM is not a rigid
formula, KSR, 550 U.S. at 419. Based on the discussion below, the
Examiner’s articulated reasoning contains a sufficient rationale underpinning
to support the combination and conclusion of obviousness. See Kahn, 441
F.3d at 988. Appellants argue that “the Steer patent has nothing to do with a
mobile satellite communication system” (Br. 9) and that to “modify the Steer
system [by the addition of Helm] . . . would cause interference in areas that
would not normally cause interference” (Br. 8). Appellants further argue
that Martti “discloses a confidence limit for a telecommunication network
element that is completely non-analogous to the system of the instant
invention” (Br. 10).
The Examiner responds that Steer contemplates that its invention is
applicable to “all types of mobile radio devices capable of communicating
with base stations in a mobile communications system” (Steer, col. 10, ll.
47-50) (Ans. 9). Further, Examiner points out (Ans. 10) that Steer states at
column 9, lines 23-34:
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It is obvious that there will be some uncertainty involved
in both the definition of the protected region and the measured
location of the mobile. As part of the broadcast transmission
defining the protected region, additional information may also
be included to define the accuracy needed for establishing
measurements and for comparison with the boundaries of the
protected region. There may not be the same accuracy limits on
all sides and in all directions. Many protected regions may be
less sensitive to interference at their edges and, so, may be able
to accommodate some penetration of the edges as long as the
core region is protected.
Therefore, Steer teaches an uncertainty or estimated E associated with
mobile unit location and definition of the protected region and an accuracy
limit or CL associated with the protected region boundaries (FF 4). Martti
teaches a CL for an indicator value and deviations of the indicator value that
may be greater or less than the CL (FF 9). Appellants concede that Martti
discloses a CL, but assert that “Steer does not address access control to the
network based upon exclusion zone and a confidence limit, and does not
selectively provide service to a radio depending on the determined location
of the radio relative to the exclusion zone and on an estimated error (E) of
the determined radio location” (Br. 10). Appellants make a similar argument
later (Br. 12-13). In both cases, apart from merely asserting the absence of
these elements, Appellants do not explain why the combination of Steer and
Martti does not suggest comparing this estimated error to a CL. Therefore,
we find the Examiner’s explanation (Ans. 4, 10) that the combination
suggests comparing CL and E to be reasonable because a deviation of an
indicator value from a confidence limit reasonably corresponds to error
estimation.
We also agree with the Examiner that the terrestrial and satellite
mobile radio communication arts are very closely related (see, e.g., Helm,
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title (“Terrestrial and Satellite Cellular Network Interoperability”)), the
relevant difference being that in Steer the mobile radios or UTs
communicate with the mobile communication network or GW through a
base station (FF 1), and in Helm the subscriber unit or UT communicates
with an interface or regional GW alternatively through a base station and
mobile switching center or through a satellite network or constellation of
satellites (FF 8). We also agree with the Examiner (Ans. 9) that it was well
known to a person skilled in the mobile radio art at the time the invention
was made that a mobile communications network, such as the network
shown in Figure 1 of Steer, includes GWs to interconnect the mobile radio
communication system to other communications networks such as a public
switched telephone network or the internet. As such, a person of ordinary
skill in either of these intimately related arts, faced with a problem to solve,
would look to the other for solutions, KSR, 550 U.S. at 417. Additionally, as
asserted by the Examiner (Ans. 9), Martti is in the same field of endeavor
and a person having ordinary skill in the art would look to Martti for
comparing E estimations (or similar deviations) to CLs for network elements
(see FF 9) since Steele also teaches that network elements typically deviate
from the norm. Accordingly, we agree with the Examiner that Steer, Helm,
and Martti are properly combinable and that such combination is reasonable
and does not represent impermissible hindsight reconstruction.
Appellants further argue that Steer’s “protected region” does not
relate to the “exclusion zone” of claim 1 (Br. 7). Nothing in the claim
differentiates a region or zone where mobile radio unit usage must be
inhibited because of RF interference from one where it must be inhibited
because of safety, legal, or nuisance concerns. Indeed, Steer’s safety
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concerns are known to be the result of potential RF interference (FF 2).
Further, Appellants argue that Steer’s purpose is not to control access (Br.
9). However, Steer states that “[i]f no transmissions are allowed, the
Protection Control Process may switch the Power Control Switch to disable
the transmitter” (col. 6, ll. 38-41 (reference numbers omitted)). In other
words, disabling the transmitter will “control access.”
In combining the teaching of Steer and Helm, a person of ordinary
skill would not combine them indiscriminately, but would exercise ordinary
creativity and judgment, KSR, 550 U.S. at 421. Accordingly, we find that in
combining Steer, Helms, and Martti, a person of ordinary skill would not do
so in a way that causes the very problem he intends to avoid, but would
instead apply the protected region teachings of Steer to Helm’s entire
network as needed. Still further, Appellants argue that Steer contemplates
absolute confidence as to whether the mobile unit is within the protected
region, but, as discussed supra, this argument is contradicted by Steer at
column 9, lines 23-35 (FF 4). After consideration of Appellants’ other
arguments relative to claim 1, we find that Examiner correctly read the
elements of the claim on the cited art.
Accordingly, we find that it would have been obvious to a person of
ordinary skill in the mobile telecommunications art to apply Steer’s
teachings related to protected regions and mobile radio unit locations (FF 2)
to Helm’s satellite cellular system (FF 8). In doing so, the skilled artisan
would take into account Steer’s recognition of the inaccuracy inherent in
determining mobile radio unit locations and establishment of accuracy limits
for the protected region (FF 4) by comparing the estimated location
inaccuracies to the accuracy limits, as taught by Martti (FF 9), to control
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access to the system within the protected region (FF 3). Therefore, we
conclude that claim 1 is properly rejected, as are claims 7, 11, and 19-25,
which depend from claim 1 and are argued together therewith (Br. 13).
2. Claims 2-6, 8-10, and 12
Appellants argue that the Examiner exercised impermissible
piecemeal hindsight reconstruction and improperly combined Maeda with
the art applied to claim 1, as discussed supra, and that Maeda’s polygons do
not define exclusion zones (Br. 14-15). The Examiner responds that Maeda,
in the same field of endeavor as Appellants’ invention, teaches that a zone or
area on the ground relevant to a satellite communication system can be
defined as a polygon (Ans. 5) (Maeda, Fig. 7; col. 10, ll. 32-39). We agree
with the Examiner that a person of ordinary skill in the art would look to
Maeda for this teaching without being limited to whether the teaching
related to service areas or exclusion zones.
As to claims 2 and 8, Steer teaches that a protected region on the
ground defines protected volume of space (FF 5), and the Examiner has
argued that a volume of space is inherently bounded by a side (Ans. 11-12).
We agree with the Examiner and conclude that claims 2 and 8 are properly
rejected.
With respect to claims 3-5, Appellants argue that nothing in the cited
prior art teaches determining the location of the UT at the UT and
transmitting the location to the GW (Br. 16). Examiner responds that Steer
at column 4, lines 45-57, teaches determining the location of the UT at the
UT and transmitting the location to the GW (Ans. 5).
As to claims 3 and 5, we are persuaded by Appellants. Steer teaches
that the mobile radio does not broadcast its location information and that its
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location is determined at the mobile based on information down linked to the
mobile (FF 6). The Examiner has not identified, nor do we find, any
contrary teaching in the passage cited supra. Accordingly, we conclude that
the rejections of claim 3 and 5 based on the cited art are improper.
As to claim 4, we agree with the Examiner. Steer discloses that “[t]he
base stations transmit the broadcast control messages including any other
necessary information for determining the location of the mobile at regular
intervals” (col. 5, ll. 41-43), which describes a cooperative role between the
mobile stations and the base stations in determining location. Accordingly,
we conclude that claim 4 is properly rejected.
With respect to claim 6, Appellants argue that nothing in the cited art
teaches an exclusion zone that considers at least one of RF obstructions or
terrain features (Br. 15). We note that Maeda’s polygons, the applicability
of which is discussed supra, are defined in part by an elevation (FF 11),
which is a “terrain feature” within the scope of the claim. Accordingly, we
concur with the Examiner and conclude that claim 6 is properly rejected.
Respecting claims 9 and 10, Appellants argue that the cited prior art
does not include a volume or a surface defined, in part, by at least one point
above the surface earth (Br. 15-17). Examiner responds:
This region is a volume, the restricted area is not confined to
the surface of the earth such that someone can walk into the
region using the phone as long as it’s not touching the surface
of the earth. A volume has infinite surfaces and certainly one
such surface could contain two points on the ground and one
above the ground. Steer states in column 5, Lines 3-4 that:
“The region to be protected is defined generally as a volume of
space with geographic boundaries.”
Ans. 11-12.
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We agree with Appellants. A surface (or volume) containing a point
is not the same as that surface or volume being defined by that point. We
find that Appellants’ use of “defined by a point” means that a limit of the
surface or volume is established by the point. We find nothing in Steer or
any of the other cited references that teaches a defining point above the
ground. We therefore conclude that claims 9 and 10 are not properly
rejected.
Regarding claim 12, Appellants argue that none of the cited
references, and in particular Steer, teaches an exclusion zone that is dynamic
and capable of at least one of movement or change in shape (Br. 18). The
Examiner responds that as an airport, theater, library, or hospital expands
and contracts, so would the exclusion zone (Ans. 12). Implicit in the
Examiner’s argument is the observation that the claim does not impose any
limitation as to the time frame of change. We agree with the Examiner. We
further note that Steer, at column 10, lines 25-27, envisions a moving
protected area, such as an aircraft (FF 7). We conclude that claim 12 is
properly rejected.
3. Claims 13-18
Appellants argue that that the combination of Ishikawa with Steer,
Helm, Martti, and Maeda amounts to impermissible piecemeal hindsight
reconstruction in the absence of a teaching in the cited references to prompt
that combination (Br. 19). The Examiner responds that Ishikawa is in the
same field of endeavor as Appellants’ disclosure (see FF 12) and a person
skilled in the art would turn to Ishikawa for its teaching of factors, such as
local oscillator frequency variation, that lead to inaccuracy in UT location
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determination. We agree with the Examiner and find that Ishikawa is
properly combinable with the other cited prior art.
As to claims 13-16, Appellants argue that nothing in Ishikawa teaches
or suggests that:
the value of E is a function of the accuracy of the UT local
oscillator and where information that specifies the accuracy of
the UT local oscillator is stored in the UT as in claim 13; the
value of E is a function of the accuracy of the UT local
oscillator and where information that specifies the accuracy of
the UT local oscillator is stored in the GW as in claim 14; the
value of E is a function of the accuracy of the UT local
oscillator and where information that specifies the accuracy of
the UT local oscillator is stored in a home GW of the UT and is
transferred from the home GW to a serving GW when the UT is
roaming as in claim 15; the value of E is a function of the
accuracy of the UT local oscillator and where information that
specifies the accuracy of the UT local oscillator is stored in or is
determined by the UT and is transferred to the GW as in claim
16.
(Br. 20).
The Examiner responds by pointing out several passages in Ishikawa
that recite the use of mobile earth station frequency oscillator instability in
estimating E in the determination of mobile earth station location (see
Ishikawa, col. 6, ll. 11-23, 50-64) (Ans. 12-13). The Examiner further
states:
To make such an estimation the type of oscillator used in the
mobile earth station would be stored in the mobile earth station
and this would specify the accuracy of the local oscillator.
Being that the satellite communication system does the location
determination and many communication satellites are gateways
the satellite must at least temporarily store the accuracy of the
local oscillator. Again, if it is agreed that it[’]s an obvious
modification to Steer to provide an exclusion zone in a satellite
communication system then there is good reason to combine
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Maeda with Steer, Helm et al. and Martii with Ishikawa et al. to
determine the estimated position of the mobile earth station
relative to its true position.
(Ans. 13).
We agree with the Examiner. Ishikawa discloses uploading mobile
earth station data to the land earth station (FF 14) and both location E and
oscillator instability E are inherently included in the location data (FF 13). It
would have been an obvious matter of choice, well within the ability of one
of ordinary skill in the art, to store the information at any of the locations
specified in claims 13-16. Therefore, we conclude that the rejections of
claims 13-16 are proper.
As to claim 17, Appellants argue that nothing in any of the cited
references teaches, suggests, or implies that “the value of E is less than CL
and where the GW sets the value of CL to be less than a possible minimum
value of E for excluding all UTs from operating within the exclusion zone . .
. ” (Br. 20). Similarly, with respect to claim 18, Appellants argue that
nothing in any of the cited references teaches, suggests, or implies that “the
value of E is less than CL and where the GW sets the value of CL to be
greater than a possible maximum value of E for enabling all UTs to operate
within the exclusion zone . . . ” (id.). We find no response in the Examiner’s
Answer or any portion of the cited art to contradict these statements.
Therefore, we agree with Appellants that the rejection of claims 17 and 18 is
improper.

CONCLUSIONS
On the record before us and in view of the analysis above, we
conclude that the Examiner’s rejections of claims 1, 2, 4, 6-8, 11-16, and 19-
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25 are proper and the rejections of claims 3, 5, 9, 10, 17, and 18 are
improper.

ORDER
The decision of the Examiner rejecting claims 1, 2, 4, 6-8, 11-16, and
19-25 is affirmed.
The decision of the Examiner rejecting claims 3, 5, 9, 10, 17, and 18
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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