Ex Parte Yang

Board of Patent Appeals and Interferences

Mar 30, 2004

09264769 (B.P.A.I. Mar. 30, 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not binding precedent of the Board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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte BILL YANG
______________
Appeal No. 2002-1980
Application 09/264,769
_______________
ON BRIEF
_______________
Before THOMAS, RUGGIERO and DIXON, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner's
final rejection of claims 1-40.
Representative claim 1 is reproduced below:
1. A communication system for a mobile or a cellular
telephone to be installed inside a car, comprising:
Appeal No. 2002-1980
Application 09/264,769
2
a microphone connected by a wire to the mobile or cellular
telephone for receiving a first voice signal from a user and then
transmitting the first voice signal to the mobile or cellular
telephone;
a transmitter connected to the mobile or cellular telephone
for receiving a second voice signal from the telephone and then
converting the second voice signal into a wireless signal so that
the wireless signal is broadcast by the transmitter, wherein the
transmitter can be an (sic, a) separated unit or a built-in unit
in the mobile or cellular telephone; and
a receiver earphone for picking up the wireless signal from
the transmitter and then converting the wireless signal into a
third voice signal for hearing by the user, wherein the
transmitter and the receiver earphone are coupled in a wireless
manner, and the receiver earphone forms a stand-alone unit that
is not connected to the microphone.
The following references are relied on by the examiner:
Ham 5,552,708 Sep. 3, 1996
Rydbeck 5,590,417 Dec. 31, 1996
Barkat et al. (Barkat) 5,805,672 Sep. 8, 1998
Core et al. (Core) 5,826,187 Oct. 20, 1998
All claims on appeal, claims 1-40, stand rejected under
35 U.S.C. § 103. As evidence of obviousness, the examiner relies
upon Rydbeck in view of Ham as to claims 1, 4, 5, 8-11, 13,
22-33 and 35-40 in the first stated rejection, with the addition
of Barkat as to claims 2, 3, 6 and 7. The remaining claims on
appeal, claims 12, 14-21 and 34 are considered obvious by the
examiner in light of Rydbeck in view of Ham, further in view of
Core.
Appeal No. 2002-1980
Application 09/264,769
3
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
Of the claims on appeal, we sustain only the rejection of
independent claim 40 and reverse the rejection of claims 1-39.
The first stated rejection includes each of the independent
claims on appeal, claims 1, 13, 22, 30, 37 and 40. We reverse
the rejection of all of these claims except claim 40 for
essentially two reasons.
Our study of Ham leads us to conclude that this reference is
nonanalogous art as argued by appellant at pages 7, 10, 12, 14,
15 and 16 in the brief.
The test to determine whether the prior art is analogous
is: “(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.” In re Clay, 966 F.2d 656,
Appeal No. 2002-1980
Application 09/264,769
4
658-59, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992)(citing In re
Deminiski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986);
In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979).
Note also the common sense analysis in In re Oetiker, 977 F.2d
1443, 24 USPQ2d 1443 (Fed. Cir. 1992) as to what fields of
endeavor an artisan would reasonably be expected to look for a
solution to the problems facing the appellant.
Ham is clearly not in the same field of endeavor as the
telephone environment set forth in the claims on appeal.
Additionally, we do not consider Ham to be reasonably pertinent
to the particular problems addressed by the claimed invention
since Ham's magnetic resonance imaging apparatus and its gradient
noise suppression approach is not in a field of endeavor that the
artisan would reasonably be expected to look at for solutions to
the problems facing appellant. That Ham teaches a wireless
headset in and of itself is not sufficient in our view for the
artisan to have considered such as analogous art in the telephone
field of invention.
Since we consider Ham to be nonanalogous art, the rejection
of the independent claims in the first stated rejection is
sustainable only as to independent claim 40. Each of independent
Appeal No. 2002-1980
Application 09/264,769
5
claims 1, 13, 22, 30 and 37 in some manner recite that the
receiver earphone forms a stand-alone unit that is "not connected
to the microphone [or transmitter]." This negative limitation
feature is in each of the claims 1-39. Rydbeck's Figure 1, for
example, shows a prior art approach where the earphone and
microphone are connected together and both are connected by a
wire connection to the radio telephone shown. According to the
more system-oriented diagrams in Rydbeck's Figures 2, 3, and 6,
there is no embodiment where the receiver earphone/speaker 140
is not connected to the microphone 150. Additionally, in all
embodiments in Rydbeck, the receiver earphone/speaker 140 and
the microphone are connected together in a common stand-alone
unit. The same may be said of the various transceivers in
Figures 4a and 4b. Therefore, even considering the teaching
value of Rydbeck alone within 35 U.S.C. § 103, the subject matter
of claims 1-39 would not have been obvious to the artisan within
35 U.S.C. § 103.
In contrast, we do sustain the rejection of independent
method claim 40. This claim does not recite the above-noted
negative limitation at the end of this claim as does each of
the other independent claims on appeal. When the headset 110
Appeal No. 2002-1980
Application 09/264,769
6
is connected in Figures 2a and 2b to the telephone 100 in
Rydbeck, the microphone is clearly connected by a wire to the
telephone in the manner claimed. The methodology of this
connection is through the contacts 134 in Figure 2c, which is
further detailed in the various portions of Figure 3. Figures 4a
and 4b provide teachings of a wireless connected headset 110
functioning as a receiver earphone as claimed and which performs
its receiver function by the use of the transceiver 207 in Figure
4b or the FM receiver 210 in Figure 4a. The "comprising"
language at the end of the preamble of claim 40 does not exclude
an embodiment of use where the headset 110 is detached from the
telephone 110 and the embodiment of the headset 110 is attached
to the body of the telephone 100 as in Figure 2a.
In summary, we have reversed the rejections of claims 1-39,
but have sustained the rejection of claim 40 under 35 U.S.C.
§ 103. Therefore, the decision of the examiner is affirmed-in-
part.
Appeal No. 2002-1980
Application 09/264,769
7
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

James D. Thomas )
Administrative Patent Judge )
)
)
)
Joseph F. Ruggiero ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Joseph L. Dixon )
Administrative Patent Judge )
JDT/cam
Appeal No. 2002-1980
Application 09/264,769
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