Ex Parte Yoshida

Board of Patent Appeals and Interferences

Jun 21, 2010

09921714 (B.P.A.I. Jun. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YASUHARU YOSHIDA
____________

Appeal 2009-009124
Application 09/921,714
Technology Center 2600
____________

Decided: June 21, 2010
____________

Before JOHN C. MARTIN, MAHSHID D. SAADAT,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13, which are all of the claims pending in this application. An oral
hearing was conducted on this appeal on April 20, 2010. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Appellant’s invention relates to a communication connection system
for dedicated short range communications used in an intelligent transport
system (ITS) for operating in coordination with a service requiring a high
speed link connection in an on-vehicle equipment. The system is capable of
receiving a plurality of services in zones where a plurality of services exist.
(Spec. 1:6-10; 5:7-11.)
Claim 1, which is illustrative of the claimed invention, reads as
follows:
1. An on-vehicle dedicated short range
communication equipment comprising:
searching means for performing search for radio
frequencies used by a roadside dedicated short range
communication equipment with which the on-vehicle dedicated
short range communication equipment is going to have a
dedicated short range communication; and
establishing means for establishing a link for the
dedicated short range communication with said roadside
dedicated short range communication equipment at the searched
for radio frequencies,
wherein said searching means performs the search by
cyclically switching radio frequencies from one to another
while keeping a first ratio that radio frequencies for a first type
of communication are searched for larger than a second ratio
that radio frequencies for a second type of communication are
searched for, wherein the ratio for a first type communication is
the scanning time spent searching for a first type of
communication, divided by a total scan period, and the ratio for
the second type of communication is the scanning time spent
searching for a second type of communication divided by the
total scan period.
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The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Wiatrowski US 5,806,002 Sep. 8, 1998
Ando US 6,275,552 B1 Aug. 14, 2001
(filed Feb. 5, 1998)

Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ando in view of Wiatrowski.
We make reference to the Briefs (Appeal Brief filed January 30, 2007,
and Reply Brief filed September 27, 2007) and the Answer (mailed July 27,
2007) for their respective details.1 Only those arguments actually made by
Appellant have been considered in this decision. Arguments which
Appellant did not make in the Briefs have not been considered and are
deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The pivotal issues before us are:
1. whether the Examiner erred in determining that combining
Ando’s roadside communication system with the frequency scanning
method of Wiatrowski would have taught all the claimed elements, and
2. whether the combination would have been obvious to one of
ordinary skill in the art.

1 The Examiner’s communications mailed January 14, 2008 and May 22,
2008 have been vacated in a communication mailed March 3, 2009.
Therefore, we need not consider Appellant’s “Second Reply Brief” filed
March 13, 2008, which was intended as a response to the Examiner’s
communication mailed January 14, 2008.
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FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal.
Ando
1. Ando relates to on-board and road side communication
equipments using a plurality of synchronizing signals, while having
simplified circuits and smaller equipments. (Col. 2, ll. 48-57 and 60-67.)
2. Ando discloses using Dedicated Short-Range Communication
(DSRC) protocol for interactive communications between the road side
equipment (RSE) and the on-board equipment. An application for such
protocol may be Electric Toll Collection (ETC), while the protocol may be
applied to other applications such as Intelligent Transport System (ITS) or
Commercial Vehicle Operation (CVO). (Col. 6, ll. 58-67.)
Wiatrowski
3. Wiatrowski discloses priority scanning of radio frequencies
wherein the priority scan comprises automatically scanning, while the
communication unit is unmuted to a non-priority communication resource
having a first frequency, at least one priority communication resource having
a second frequency. (Col. 2, ll. 36-44.)
4. Wiatrowski further discloses other embodiments of the priority
scan wherein a non-priority communication resource having a first
frequency and a priority communication resource having a second frequency
are scanned. (Col. 2, ll. 50-60; col. 3, ll. 21-26 and 53-60.)
5. Figures 2A and 2B of Wiatrowski disclose the timing diagram
for priority scanning wherein searching for radio frequencies are performed
during the non-activity period by switching between different channels
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including a priority channel and plural non-priority channels until activity is
detected. (Col. 4, ll. 10-18 and 50-61.)
6. Wiatrowski defines the scanning intervals at 50 milliseconds of
time. (Col. 4, ll. 31-35.)
7. Figures 2A and 2B of Wiatrowski are reproduced below:

Figures 2A and 2B depict timing diagrams of priority scanning with one
priority channel and two priority channels, respectively. (Col. 4, ll. 10-17,
50-51.)
8. Wiatrowski further discloses a communication unit having
multiple channels which may be tuned to the same or different receive or
transmit frequencies. Additionally, different channels may be assigned the
same frequencies, but their difference may be determined by the squelch
rules or other attributes associated with those channels. (Col. 8, ll. 58-64.)
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9. Wiatrowski further provides an exemplary table showing
channel configurations including various factors for differentiating among
channels and indicates that the table is merely illustrative, and not an
exhaustive list of possible channel configurations. (Col. 8, l. 64 – col. 9, l.
30.)
10. As shown in Figure 5, Wiatrowski determines if the priority and
non-priority channels have different frequencies, and if so, determines if the
bandwidths of these channels are different. Wiatrowski allows for different
bandwidths for different channels having different frequencies, that takes the
process to step 507 where the digital intermediate frequency (IF) filter is
programmed to the appropriate setting. (Figure 5; col. 11, ll. 7-26.)

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).
Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
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Kahn, 441 F.3d at 987-88; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981).

ANALYSIS
Claims 1, 3, and 5-7
Appellant does not challenge the Examiner’s reliance on Ando for
disclosing searching means for performing search for radio frequencies and
establishing means for establishing a link for the dedicated short range
communication with a roadside equipment. See FF 2. However, Appellant
contends that one of ordinary skill in the art would not have combined Ando
with Wiatrowski because the combination introduces needless complexity to
the system of Ando, which is concerned with a simplified circuit and smaller
size (App. Br. 14-17; Reply Br. 4-5). Appellant further asserts that Ando
teaches away from the combination because Ando uses a time division
multiple access communication method and is concerned with a less
complex and smaller configuration, as recited in claim 1 (App. Br. 17-18).
Contrary to Appellant’s contentions, the combination proposed by the
Examiner is not based on the bodily incorporation of the priority scanning of
Wiatrowski into the on-board and roadside communication equipment of
Ando. While the system disclosed in Ando may be less complex without the
priority scanning scheme of Wiatrowski, the added benefits of using
different frequencies for different types of communications justify the
potential increase in complexity. In other words, Ando’s method of
synchronizing signals may result in more simplified circuits (FF 1) but does
not mean that added improvements in device performance cannot be
considered merely because the size or complexity increases. As stated by
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the Examiner (Ans. 8-9), evaluating whether to use these improvements
involves trade-offs wherein one factor may be improved at the cost of
worsening some other factors.
Additionally, we find that one of ordinary skill in the art would have
recognized and appreciated that expanding the functionality of a dedicated
short range communication equipment using the priority scanning of radio
frequencies as taught by Wiatrowski would have served as an obvious
enhancement to the road side equipment (RSE) of Ando. “The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Leapfrog Enter., Inc.
v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR,
550 U.S. at 416).
Appellant further asserts (App. Br. 18-19) that, even if the references
may be combined, Figure 2A of Wiatrowski, relied on by the Examiner,
merely shows the sequences of channels, and not the periodicity of the
switching, as required by claim 1. The Examiner responds (Ans. 10) relying
on the description of Figure 2A of Wiatrowski and asserting that the
scanning intervals for priority scanning and non-priority scanning indicate
the scanning time ratios recited in the claims. Specifically, the Examiner
finds that Figure 2A shows that priority scanning has a duty cycle of 0.25
and non-priority scanning has a duty cycle of 0.75 (id.). We note that these
assertions regarding Figure 2A remain unchallenged by any arguments about
claim 1 in Appellant’s Reply Brief. The Examiner further states (id.) that
the channels shown in Figure 2A of Wiatrowski meet the claimed radio
frequencies for first and second types of communication because they have
different frequencies and different priorities.
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After reviewing the disclosure of Wiatrowski and Appellant’s
arguments, we agree with the Examiner that Wiatrowski uses different
frequencies for scanning the priority and non-priority communication
resources (FF 3-4). As shown in Figures 2A and 2B, priority scanning
includes a “no activity” time interval during which the scanning unit
switches between priority channel(s) and non-priority channels (FF 5-7).
Therefore, the ratio of the time during which radio frequencies for priority
channels (i.e., one type of communication) are searched relative to the total
search time is different from the ratio for searching radio frequencies for
non-priority channels (i.e., another type of communication), as recited in
claim 1. Because claim 1 requires that scanning for the recited “first type of
communcation” has a larger ratio than scanning for the recited “second type
of communication, the first and second types of communications read on the
non-priority channels and priority channels, respectively, in Figure 2A.
Additionally, we find that Wiatrowski scans these resources by
switching between channels that are tuned to different frequencies (FF 3 and
8). Wiatrowski specifically distinguishes between the priority and non-
priority resources by disclosing that each type is scanned at a different
frequency (FF 4). Furthermore, the disclosed embodiments in Figures 2A
and 2B refer to scanning different channels (FF 5-7) for different types of
communication. However, while Wiatrowski allows for differentiating
among the scanned channels based on other factors listed in the table of
Column 9, such as the squelch rules, these channels may tune to different
frequencies for receive or transmit states (FF 8). As such, we agree with the
Examiner (Ans. 11) that scanning communication resources in Figures 2A
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and 2B involve switching among different radio frequencies associated with
different channels.
Therefore, we conclude that the combination of Ando and Wiatrowski
renders obvious the subject matter recited in claim 1, as well as claims 3 and
5-7, argued together with claim 1.
Claims 2 and 9
Regarding the combinability of the references, Appellant presents
(App. Br. 19-23 and 36-40) similar arguments made with respect to claim 1,
which were found to be unpersuasive. Additionally, Appellant contends
(App. Br. 24 and 40-41) that Wiatrowski does not teach the claimed
requirement of high-speed link for the first type of communication, while the
second type of communication does not require high-speed link. Appellant
asserts (id.) that the portion of Wiatrowski in Column 9, lines 31-44, which
the Examiner relied on, relate to different channels having the same
frequency.
The Examiner responds (Ans. 10-11) that the high-speed and low-
speed links are applied to channels having different frequencies since
Wiatrowski discloses in Column 3, lines 21-23 and 53-60, that different
channels are disclosed to have different frequencies. We generally agree
with the Examiner’s findings and conclusion and further note that
Wiatrowski also discloses the general method of scanning in Figure 5 where
it is determined if the bandwidths of the channels having different
frequencies are different. As such, while the Examiner is correct that the
table in Column 9 shows different communication speeds applied to
channels having different frequencies (Ans. 10-11), Figure 5 of Wiatrowski
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(See FF 10) provides a more comprehensive scan method that clearly allows
for different bandwidths for channels tuned to different frequencies.
Thus, based on the discussion above, we find that one of ordinary skill
in the art would have found the subject matter of claims 2 and 9 obvious
over the combination of Ando and Wiatrowski.
Claims 4 and 11
Similar to claim 1 discussed above, Appellant challenges (App. Br.
25-29 and 41-46) the propriety of the combination of Wiatrowski with
Ando, which arguments we found unpersuasive. Appellant further argues
(App. Br. 29-30 and 46-47) that the cited portion of Wiatrowski does not
disclose switching the demodulation method when radio frequencies are
switched, as recited in claim 4. Appellant asserts (id.) that the relied on
portions of Wiatrowski discuss switching demodulation method for channels
having the same frequency.
In response, the Examiner points out (Ans. 11) that the examples
provided by Wiatrowski are indicated to be illustrative and not exhaustive of
the possible channel configurations. We agree with the Examiner and find
that, based on the discussion of assigning different frequencies to priority
and non-priority channels (FF 3-5 and 8-9), Wiatrowski allows for using
different modulation types for different channels tuned to different
frequencies. As argued by the Examiner (Ans. 11), the channel
configuration illustrated in the table of Column 9 is merely an example of
differentiating among sixteen channels using two different frequencies, and
not an exhaustive list of possible channel configurations (FF 9). Therefore,
the disclosure of Wiatrowski, taken as a whole, suggests switching the
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modulation method for scanning channels having different frequencies, as
recited in claims 4 and 11.
Thus, based on the discussion above we conclude that one of ordinary
skill in the art would have found the subject matter of claims 4 and 11
obvious over the combination of Ando and Wiatrowski.
Claims 8, 10, 12, and 13
Appellant challenges (App. Br. 30-36) the rejection of these claims
based on the same features discussed above with respect to claim 1, which
we found to be unpersuasive. In view of our analysis above, we conclude
that the teachings of Ando and Wiatrowski, when considered as a whole,
would have also suggested the subject matter of claims 8, 10, 12, and 13 to
one of ordinary skill in the art.

CONCLUSION
Based on the findings of facts and the analysis above, we conclude
that the Examiner did not err in determining that combining Ando’s roadside
communication system with the frequency scanning method of Wiatrowski
would have taught all the claimed elements and the combination would have
been obvious to one of ordinary skill in the art.

ORDER
The decision of the Examiner rejecting claims 1-13 is affirmed.
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
Appeal 2009-009124
Application 09/921,714

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