Ex parte Yamaki

Board of Patent Appeals and Interferences

May 18, 2000

08312959 (B.P.A.I. May. 18, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YOICHI YAMAKI
____________
Appeal No. 1997-0636
Application No. 08/312,959
____________
HEARD: May 4, 2000
____________
Before JERRY SMITH, RUGGIERO, and LALL, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 5. Claims 6 and 7 have been canceled. The
amendment after final rejection filed May 28, 1996 was denied
entry by the Examiner.
Appeal No. 1997-0636
Application No. 08/312,959
2
The claimed invention relates to a selective call
receiver which includes a memory for storing test mode
setting data, the receiver being changed from an ordinary
reception state to a test mode state when such setting data is
present. More particularly, Appellant indicates at pages 4
through 6 of the specification that a battery saving operation
is suspended when test mode data is present and enabled when
test mode data is determined not to be present.
Claim 1 is illustrative of the invention and reads as
follows:
1. A selective call receiver comprising:
a receiving unit for receiving a selective calling number
allocated thereto;
means for selectively enabling a battery saving operation
of said selective call receiver;
a memory for storing therein test mode setting data for
setting the receiving unit in a test mode;
a control switch for controlling data writing to said
memory and initiating of said test mode; and
control means for analyzing data read out from said
memory through operation of said control switch and for
suspending said battery saving operation to set said selective
call receiver in the test mode when said control means
determines said test mode data to be present.
The Examiner relies on the following prior art:
Appeal No. 1997-0636
Application No. 08/312,959
The Appeal Brief was filed May 28, 1996. In response to1
the Examiner’s Answer dated August 30, 1996, a Reply Brief was
filed October 21, 1996 which was acknowledged and entered by
the Examiner without further comment on November 19, 1996.
3
Mori (Great Britain) 2,105,077 Mar.
16,
1983
Akahori et al. (Akahori) 2,124,001 Feb.
08,
1984
(Great Britain)
Yamada et al. (Yamada) 2,145,259 Mar. 20,
1985
(Great Britain)
Claims 1 and 3 through 5 stand finally rejected under 35
U.S.C. § 103 as being unpatentable over Akahori in view of
Yamada. Claim 2 stands finally rejected under 35 U.S.C. § 103
as being unpatentable over Akahori in view of Yamada and
further in view of Mori.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answer for the1
respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
evidence of obviousness relied upon by the Examiner as support
Appeal No. 1997-0636
Application No. 08/312,959
4
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, 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 1-4. We reach the opposite conclusion with respect
to claim 5. Accordingly, we affirm-in-part.
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an Examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to Appellant
to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
Appeal No. 1997-0636
Application No. 08/312,959
5
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).

With respect to independent claim 1, the Examiner, as the
basis for the obviousness rejection, proposes to modify the
selective call receiver disclosure of Akahori which includes a
plurality of test modes. In the Examiner’s view (Answer, page
5), Akahori discloses all of the limitations of claim 1 except
that Akahori relies on an external signal to initiate testing
rather than a user-controlled test switch. To address this
deficiency, the Examiner turns to Yamada which is also
directed to a selective call receiver but which initiates
testing by operation of a reset switch 11 illustrated in
Yamada’s Figure 2. The Examiner’s line of reasoning at pages
5 and 6 of the Answer is expressed as follows:
It would have been obvious at the time of the
invention to an artisan that the reset switch (11)
to [sic, of] Akahori which is used to set test modes
2-4 would be modified such that it would also
initiate test mode 1 thus making the selective call
receiver more user friendly by allowing the user to
initiate a test mode as evidenced by Yamada.
In response, Appellant, aside from a broad general
assertion at page 9 of the Brief, does not attack the
Appeal No. 1997-0636
Application No. 08/312,959
6
combinability of Akahori and Yamada. Rather, Appellant’s main
point of contention (Brief, page 5) is that neither of the
applied Akahori and Yamada references discloses a key feature
of independent claim 1, i.e. a control switch which performs
both control of data writing to a test mode data setting
memory and initiating of the test mode.
After careful review of the Akahori and Yamada references
we are in agreement with Appellant’s stated position in the
Briefs. In addition to Akahori’s failure to disclose
initiation of the test mode of operation by reset switch 11 as
recognized by the Examiner, we also find no disclosure in
Akahori of the control of data writing to a test data memory
by the reset control switch. We do note that page 2, lines
35-37 of Akahori, referenced by the Examiner (Answer, page 5),
describes the writing and storing of test mode instructions in
program memory 301; however, there is no disclosure that this
data writing operation is controlled by reset switch 11.
Similarly, while the Examiner is correct in his assertion
that Yamada initiates testing operation by operation of reset
switch 11, Yamada also lacks any disclosure of the control of
data writing into a test data memory by such reset switch. As
Appeal No. 1997-0636
Application No. 08/312,959
7
with Akahori, Yamada describes the storing of test
instructions in a program memory 301 (Yamada, page 2, lines
15-17), but is silent as to any control of such operation by
reset control switch 11.
In view of the above discussion, it is our opinion that,
since all of the limitations of independent claim 1 are not
taught or suggested by the applied prior art, the Examiner has
not established a prima facie case of obviousness.
Accordingly, we do not sustain the 35 U.S.C. § 103 rejection
of independent claim 1, nor of claims 3 and 4 dependent
thereon.
With respect to dependent claim 2, it is apparent from
the Examiner’s analysis at page 6 of the Answer that Mori was
added to the combination of Akahori and Yamada for the sole
purpose of addressing the logical “OR” circuitry limitation.
The Mori reference is directed to a battery saving feature in
a radio paging receiver; however, we can find no teaching or
suggestion of a control switch which performs both data
writing control and test mode initiating. As such, Mori has
no disclosure which would overcome the innate deficiencies of
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Application No. 08/312,959
8
Akahori and Yamada and, therefore, we do not sustain the
obviousness rejection of dependent claim 2.
Turning to a consideration of the obviousness rejection
of independent claim 5 based on the combination of Akahori and
Yamada, we note that, while we found Appellant’s arguments to
be persuasive with respect to the rejection of claims 1-4
discussed supra, we reach the opposite conclusion with respect
to claim 5. Independent claim 5 is directed to the selective
enabling of continuous or intermittent operation of a receiver
dependent on the analysis of stored data from a memory.
Initially, after reviewing the language of claim 5 in light of
the applied prior art, we find Akahori’s teaching of a
selective mode receiver to be cumulative to that of Yamada.
Further, it is our view that the Figure 2 illustration and
accompanying description in Yamada discloses all of the
elements of claim 5. In particular, the disclosure at page 1,
lines 33-35 and the Figure 3 flow chart in Yamada describe the
intermittent and continuous operation modes of a receiver as a
result of the analysis of data from a memory. A disclosure
that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the
Appeal No. 1997-0636
Application No. 08/312,959
The Board may rely on one reference alone in an2
obviousness rationale without designating it as a new ground
of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263,
266-67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458, n.2, 150
USPQ 441, 444, n.2 (CCPA 1966).
9
epitome of obviousness." Jones v. Hardy, 727 F.2d 1524, 1529,
220 USPQ 1021, 1025 (Fed. Cir. 1984). See also In re
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982);
In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA
1974). Thus, we sustain the Examiner’s rejection of appealed
claim 5 under 35 U.S.C. § 103.2
In summary, we have sustained the 35 U.S.C. § 103
rejection of claim 5, but have not sustained the 35 U.S.C. §
103 rejection of claims 1-4. Accordingly, the Examiner’s
decision rejecting claims 1-5 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 1997-0636
Application No. 08/312,959
10

JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
lp
Appeal No. 1997-0636
Application No. 08/312,959
11
JAMES E. LEDBETTER, ESQ.
STEVENS, DAVIS, MILLER & MOSHER, L.L.P.
1615 L STREET N.W., SUITE 850
P.O. BOX 34387
WASHINGTON, DC 20043-4387
Leticia
Appeal No. 1997-0636
Application No. 08/312,959
APJ RUGGIERO
APJ JERRY SMITH
APJ LALL
DECISION: AFFIRMED-IN-PART
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: January 24, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT