Ex Parte Yang

Board of Patent Appeals and Interferences

Jan 10, 2003

08777721 (B.P.A.I. Jan. 10, 2003)

1 Application for patent filed December 20, 1996, which claims the
foreign filing priority benefit under 35 U.S.C. § 119 of Korean Application
1995-53538, filed December 21, 1995.
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for publication and is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KYEONG-TAEG YANG
____________
Appeal No. 2000-2291
Application No. 08/777,7211
____________
HEARD: NOVEMBER 21, 2002
____________
Before LALL, GROSS, and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claim 1. Claims 6-20 have been allowed. The
Examiner has objected to claims 2-5 and has indicated their
allowability if rewritten in independent form including all of
the limitations of the base claim and any intervening claims.
We reverse.
Appeal No. 2000-2291
Application No. 08/777,721
2 We recommend that Appellant and the Examiner consider amending the
claim to clarify the structure included in the telephone set other than the
base unit.
2
BACKGROUND
Appellant’s invention is directed to a wireless telephone
set having a built-in facsimile and a cordless unit and to a
method for informing a user of the status of the facsimile
apparatus by an aural message. A voice mixer stores a plurality
of messages which are processed and transmitted to the cordless
unit according to specific codes indicating the status of the
facsimile apparatus (specification, pages 4 & 5). As depicted in
figures 3A and 3B, the method includes the steps of sensing and
verifying whether a transmit or receive key is received, of
sending the aural message to inform the user of the mode and the
completion/failure of the facsimile transmission/reception
(specification, page 8).
Independent claim 1 is reproduced below:
1. A method for sending an aural message to a user of a
cordless handset of a wireless telephone set having and2 a base
unit incorporating a facsimile apparatus, said method comprising
the steps of:
determining an operational state of said facsimile
apparatus; and
transmitting an aural message, stored in a voice mixer and
corresponding to the operational state of said facsimile
apparatus, to said cordless handset.
Appeal No. 2000-2291
Application No. 08/777,721
3
The Examiner relies on the following references in rejecting
the claims:
Hayashi 5,479,485 Dec. 26, 1995
(filed Apr. 15, 1991)
Van Buskirk 5,684,260 Nov. 4, 1997
(filed Sep. 9, 1994)
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hayashi in view of Van Buskirk.
Rather than reiterate the viewpoints of the Examiner and
Appellant regarding the above-noted rejection, we make reference
to the answer (Paper No. 18, mailed October 14, 1999) for the
Examiner’s reasoning, the appeal brief (Paper No. 17, filed
September 13, 1999) and the reply brief (Paper No. 20, filed
December 14, 1999) for Appellant’s arguments thereagainst.
OPINION
Appellant argues that the purpose of generating audio
signals, sounds and voices in Van Buskirk “is not equivalent to
the purpose of providing an audio message indicative of the
operational state of the facsimile apparatus” (brief, page 7).
Additionally, Appellant points out that Hayashi’s step a1 (Figure
5) merely determines whether a reception signal requests
facsimile or telephone communication and switches the connection
Appeal No. 2000-2291
Application No. 08/777,721
4
to the corresponding device (brief, page 8 and reply brief, page
9). Finally, Appellant argues that even if determining the
operational state is whether a reception signal is detected or
not, the user of the cordless handset would not be informed by an
aural message stored in the voice mixer that the facsimile
apparatus is in reception mode (brief, page 9 and reply brief,
page 11). In that regard, Appellant asserts that the handset is
informed only when a ringing burst indicates the state of not-
receiving wherein the burst is neither an aural message nor
stored in a voice mixer (reply brief, pages 10 & 11).
In response to Appellant’s arguments, the Examiner asserts
that incorporating the step of transmitting an aural message
stored in a voice mixer of Van Buskirk in Hayashi’s method of
sending a message to a user of a cordless handset would have been
obvious (answer, page 4). The Examiner further argues that
Hayashi’s step a1 (Figure 5) determines an operational state of
the facsimile by determining whether the facsimile is receiving
or not (answer, page 10).
The initial burden of establishing reasons for
unpatentability rests on the Examiner. In re Oetiker, 977 F.2d
1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). Where, as
here, a conclusion of obviousness is premised upon a combination
Appeal No. 2000-2291
Application No. 08/777,721
5
of references, the Examiner must identify a reason, suggestion,
or motivation which would have led an inventor to combine those
references. Pro-Mold & Tool Co. V. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629, (Fed. Cir. 1996).
However, “the Board must not only assure that the requisite
findings are made, based on evidence of record, but must also
explain the reasoning by which the findings are deemed to support
the agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002).
Upon a review of Hayashi, we find that the reference relates
to a facsimile apparatus that incorporates a cordless telephone
set. As depicted in Figures 4 and 5, after the CPU responds to
the receipt of an incoming signal (step a1), a CNG facsimile
request signal is transmitted from the caller (step a3) which
causes the relay switch to connect the telephone line to the
facsimile apparatus (col. 6, lines 20-33). If voice
communication is requested by the caller, a ringing burst is
generated (step a5) and emitted from the remote unit (col. 6,
lines 34-41). Therefore, Hayashi does not send any signal to the
cordless unit when a facsimile signal is received. In fact, the
ringing burst is generated only when no facsimile reception
signal is detected and the external line is to be transferred to
Appeal No. 2000-2291
Application No. 08/777,721
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the telephone set instead of the facsimile apparatus (col. 6,
lines 49-53).
Van Buskirk, as conceded by the Examiner and Appellant,
relates to an apparatus for producing signals representative of
complex time varying audio signals or musical waveforms by
synthesizing musical sounds. As depicted in Figure 5, the voice
synthesis function 504 generates one or more voices and receives
the output from white noise generator 512. The outputs of the
voice synthesis function are sent to voice mixer function 512
which generates the output process (col. 12, lines 1-14).
However, our review of the reference reveals no teaching related
to using the synthesized voice signals processed in the voice
mixer as an aural message corresponding to the operational state
of a facsimile apparatus, as recited in claim 1.
As the Federal Circuit states, "[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). The court further reasons in Karsten Mfg.
Corp. v. Cleveland Gulf Co., 242 F.3d 1376, 1385, 58 USPQ2d 1286,
Appeal No. 2000-2291
Application No. 08/777,721
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1293 (Fed. Cir. 2001) that for an invention to be obvious in view
of a combination of references, there must be some suggestion,
motivation, or teaching in the prior art that would have led a
person of ordinary skill in the art to select the references and
combine them in the way that would produce the claimed invention.
Based on these well-settled principles, we disagree with the
Examiner that, because voice mixers are used in generating
synthesized voice signals from complex time varying audio signals
or music waveforms, one of ordinary skill in the art would have
found it obvious to combine the voice synthesizer of Van Buskirk
with the facsimile apparatus of Hayashi. Although, broadly
speaking, Hayashi’s step a3 determines whether the facsimile
apparatus is receiving or not and could be interpreted as the
claimed step of determining an operational state of the facsimile
apparatus, Van Buskirk provides no teaching or suggestion for
incorporating in a telephone-facsimile apparatus the synthesized
voice function stored in a voice mixer. Van Buskirk, in fact,
merely discloses a method for processing in a voice mixer the
output signal from a voice synthesis function and it is the
claimed invention that provides the details of how to transmit an
aural message, stored in a voice mixer, corresponding to the
operational state of the facsimile apparatus. Furthermore, we
Appeal No. 2000-2291
Application No. 08/777,721
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agree with Appellant that “the purpose of generating audio
signals, musical sounds, tones or voices representative of
complex time varying audio signals or musical waveforms” would
not have taught or motivated one of ordinary skill in the art to
transmit as aural message stored in a voice mixer in Hayashi’s
apparatus.
Based on our analysis above, we find that the Examiner has
failed to set forth a prima facie case of obviousness because the
necessary teachings and suggestions for implementing synthesized
signals stored in the voice mixer of Van Buskirk as the aural
message corresponding to the operational state of the facsimile
apparatus of Hayashi, are not shown. Accordingly, we do not
sustain the 35 U.S.C. § 103 rejection of claim 1 over Hayashi and
Van Buskirk.
Appeal No. 2000-2291
Application No. 08/777,721
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claim 1 under 35 U.S.C. § 103 is reversed.
REVERSED
PARSHOTAM S. LALL )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2000-2291
Application No. 08/777,721
10
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