Ex Parte Yamamoto

Board of Patent Appeals and Interferences

Aug 18, 2009

09926434 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOSHIFUMI YAMAMOTO
____________

Appeal 2009-003325
Application 09/926,434
Technology Center 2600
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Decided: August 18, 2009
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Before KENNETH W. HAIRSTON, JOHN C. MARTIN,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 24, 26 to 28, 63, 65, and 66. Claim 66 was canceled in an
Amendment After Final. Accordingly, claims 24, 26 to 28, 63, and 65
remain before us on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We sustain the anticipation rejection of claims 24, 28, and 63, and
reverse the obviousness rejection of claims 24, 26 to 28, 63, and 65.
Appeal 2009-003325
Application 09/926,434

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Appellant has invented a mobile communication terminal connectable
to a car mounted electronic device for hands-free operation. After the
hands-free operation is established, the connection control section of the
mobile communication terminal will disconnect the hands-free connection
with the car mounted electronic device if a periodic acknowledgement from
the car mounted electronic device is not received by the connection control
section of the mobile communication terminal for a predetermined time
period (Figs. 1, 2; Spec. 27 to 29).
Claim 24 is the only independent claim on appeal, and it reads as
follows:
24. A mobile communication terminal connectable to a car mounted
electronic device, the mobile communication terminal comprising:
a first interface for making radio communication with a mobile
communication network;
a second interface for making radio communication with the car
mounted electronic device; and
a connection control section for controlling connection to the car
mounted electronic device;
wherein the connection control section starts a connection procedure
with the car mounted electronic device by transmitting a response signal that
includes attribute information of the mobile communication terminal to the
car mounted electronic device when a paging signal transmitted from the car
mounted electronic device to determine a presence of a mobile
communication terminal within a radio area of the car mounted electronic
device is detected, and sets communication mode in a hands-free mode
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automatically if the connection procedure is completed, disconnects the
connection with the car mounted electronic device and sets the
communication mode in its own communication mode if no packet, which is
periodically output from the car mounted electronic device for
acknowledgement of the hands-free connection, is received for a
predetermined time period.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chen US 5,751,719 May 12, 1998
Raith US 6,493,550 B1 Dec. 10, 2002
(filed Nov. 20, 1998)
Chennakeshu US 6,542,758 B1 Apr. 1, 2003
(filed Jul. 22, 1999)
Larsson US 6,697,638 B1 Feb. 24, 2004
(filed Oct. 29, 1999)
The Examiner rejected claims 24, 28, and 63 under 35 U.S.C. § 102(e)
based upon the teachings of Larsson.
The Examiner rejected claims 24, 26 to 28, 63, and 65 under 35
U.S.C. § 103(a) based upon the teachings of Chennakeshu, Raith, and Chen.
In response to the Examiner’s position (Ans. 10 and 11) that the
Bluetooth mode described at columns 8, lines 9 to 11, and 18 to 20 of
Larsson teaches disconnect of the hands-free mode by the mobile handset as
set forth in the claims on appeal, Appellant argues (Reply Br. 2) that “there
is no mention or description of a disconnection of a connection” in the cited
portion of Larsson, and that “it is the car kit which disconnects the
connection and not the mobile phone” in Larsson.
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Application 09/926,434

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In response to the Examiner’s position (Ans. 8) that Chen describes a
disconnect of a hands-free mode, and a setting of the hands-free
communication mode to another mode if a data packet is not received in a
predetermined time period, Appellant argues (Reply Br. 2 and 3) that Chen
is silent as to a hands-free mode and another communication mode, that
Chen does not switch over to any communication mode if a disconnection
occurs during communication, and that the only disconnection in Chen
appears to be a disconnection due to a degradation of transmission quality
during voice communication. Appellant argues (App. Br. 7) that “even if the
three patents were combined in the manner suggested by the Examiner, the
claimed invention could not result because there is a missing element.”

ISSUES
Anticipation
Has Appellant demonstrated that the Examiner erred by finding that
the referenced portion of Larsson describes disconnection of the hands-free
mode by the mobile handset?
Obviousness
Has Appellant demonstrated that the Examiner erred by finding that
Chen describes disconnection of a hands-free mode by a mobile
communication terminal as set forth in the claims on appeal?

FINDINGS OF FACT (FF)
1. As indicated supra, the connection control section of Appellant’s
disclosed and claimed mobile communication terminal will disconnect the
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Application 09/926,434

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hands-free mode if a periodic acknowledgement signal is not received for a
predetermined time period.
2. Larsson describes a Bluetooth park mode in which the handset will
automatically de-activate the hands-free (HF) mode if a signal is not
received for a predetermined time period from the car mounted electronic kit
(col. 8, ll. 1 to 11).
3. The Examiner indicates (Ans. 7), and Appellant does not disagree,
that “[t]he combination of Chennakeshu and Raith does not specifically
disclose having the feature disconnects the connection with the car mounted
electronic device and sets the communication mode in its own
communication mode if no packet, which is periodically output from the car
mounted electronic device for acknowledgement of the connection, is
received for a predetermined time period.”
4. Chen describes a data transfer method and system in which data
packets successfully received by a receiver are store in a buffer so that if a
disconnect occurs between the transmitter and the receiver the transmitter
will not have to re-transmit correctly received data packets to the receiver
(Figs. 2 and 3A; col. 9, l. 51 to col. 10, l. 25). An acknowledgement signal
is periodically transmitted after a certain number of data packets have been
received in succession (col. 10, ll. 11 to 14).

PRINCIPLES OF LAW
Anticipation
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
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the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
Obviousness
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and the Appellant has the burden of presenting a rebuttal to
the prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Anticipation
Although the car kit in Larsson controls most of the Bluetooth
operating modes between the car kit and the mobile handset, Larsson does
give the mobile handset control of the hands-free mode during a park mode,
and the mobile handset will disconnect the hands-free mode if a signal is not
received for a predetermined time period from the car mounted electronic kit
(FF 2). Thus, it follows that anticipation has been established by the
Examiner because Larsson does disclose each and every limitation of the
claimed invention set forth in claims 24, 28, and 63. Atlas Powder Co., 190
F.3d at 1347; Paulsen, 30 F.3d at 1478-79.
Obviousness
A prima facie case of obviousness of the claimed subject matter set
forth in claims 24, 26 to 28, 63, and 65 has not been established by the
Examiner because the data packet buffering and acknowledgement signal
teachings of Chen (FF 4) fail to cure the noted lack of a teaching of a
disconnection of a hands-free communication mode after a predetermined
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period of time in the teachings of Chennakeshu and Raith (FF 3). Oetiker,
977 F.2d at 1445.

CONCLUSIONS OF LAW
Anticipation
Appellant has not demonstrated that the Examiner erred by finding
that the referenced portion of Larsson describes disconnection of the hands-
free mode by the mobile handset.
Obviousness
Appellant has demonstrated that the Examiner erred by finding that
Chen describes disconnection of a hands-free mode by a mobile
communication terminal.

ORDER
The decision of the Examiner rejecting claims 24, 28, and 63 under 35
U.S.C. § 102(e) is affirmed. The decision of the Examiner rejecting claims
24, 26 to 28, 63, and 65 under 35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED-IN-PART
KIS

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314