Ex Parte Zicker et al

Board of Patent Appeals and Interferences

Aug 30, 2002

08723712 (B.P.A.I. Aug. 30, 2002)

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not written for publication and is not binding precedent of the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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT G. ZICKER and JOHN K. DION
__________
Appeal No. 2000-2237
Application 08/723,712
___________
ON BRIEF
___________
Before KRASS, BARRETT, and GROSS, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 and 56-74, all of the pending claims.
The invention is directed to a multiple mode personal
wireless communication system. In particular, the communication
system includes a base station for communicating with a plurality
of portable handsets. The portable handsets are dual-mode
Appeal No. 2000-2237
Application 08/723,712
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portable phones which can communicate in either a cellular mode
of operation or a cordless mode of operation.
The invention uses only one transceiver per portable handset
wherein that transceiver operates in accordance with two
protocols, one protocol being a standard cellular protocol and
the other being a cellular compatible protocol that permits
dynamic channel allocation and occupancy. In contrast to
conventional cellular protocols, a local base station does not
continually broadcast an overhead data stream on a control
channel, but rather, each handset engages in a cordless mode
registration session by transmitting a reverse channel message
initiated by the handset without receiving a corresponding
forward channel message.
Independent claim 1 is reproduced as follows:
1. A multiple mode telecommunications system which uses
communication facilities, said system comprising:
a portable handset with a single transceiver capable of
operating in accordance with first and second wireless control
protocols, said first protocol having a post-activation
registration session initiated by said handset transmitting a
reverse channel message without receiving a corresponding forward
channel message, and said second protocol having a post-
activation registration session initiated by said handset
Appeal No. 2000-2237
Application 08/723,712
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transmitting a reverse channel message after receiving a
corresponding forward channel message stream;
a local base station including a transceiver capable of
exchanging communications with said handset in accordance with
said first control protocol when said handset is within a local
range of said local base station; and
switching means coupled to said handset transceiver, for
automatically setting said handset transceiver to engage in
communications with a land station under said second control
protocol when said handset is moved beyond range of said local
base station.
The examiner relies on the following references:
Nagashima et al. (Nagashima) 4,879,740 Nov. 7, 1989
Schellinger et al. (Schellinger) 5,442,680 Aug. 15, 1995
Zicker et al. (Zicker) 5,046,082 Sep. 3, 1991
Lynn et al. (Lynn) 5,388,149 Feb. 7, 1995
Norman et al. (Norman) 5,485,505 Jan. 16, 1996
Ellis et al. (Ellis) 5,491,740 Feb. 13, 1996
Yamada et al. (Yamada) 5,504,803 Apr. 2, 1996
Blust et al. (Blust) 5,544,227 Aug. 6, 1996
Claims 1 and 56-74 stand rejected under 35 U.S.C. 103. As
evidence of obviousness, the examiner offers Schellinger and
Nagashima with regard to claims 1, 56, 59, 61-63, 67 and 68,
adding Lynn with regard to claim 57, but adding Yamada with
regard to claims 58 and 60, but adding Blust with regard to
claims 64-66, but adding Zicker with regard to claims 69 and 70.
The examiner cites Schellinger, Nagashima, Zicker and Norman with
regard to claims 71-73 and Schellinger, Nagashima, Zicker and
Ellis with regard to claim 74.
Appeal No. 2000-2237
Application 08/723,712
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Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
Regarding independent claim 1, it is the examiner’s position
that Schellinger discloses the instant claimed subject matter but
for the use of a first wireless protocol which transmits a
reverse channel message without receiving a forward channel
message, where the first wireless protocol is used in the local
base station.
The examiner turns to Nagashima, citing column 5, lines 35-
60, for a teaching of the deficiency of Shellinger and concludes
that it would have been obvious “to include a first protocol for
registration within a local base station, as taught by Nagashima,
to the system of Schellinger, in order to prevent a duplicate
registration within the wireless network” [answer-page 4].
For their part, appellants counter with the argument that
Schellinger teaches a dual mode (cordless mode and cellular mode)
handset that has a single transceiver and uses a single protocol
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Application 08/723,712
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for both modes of operation. Appellants also argue that
Nagashima teaches a single mode (only a cordless mode) handset
which has a single transceiver and uses a single control channel
protocol. Accordingly, appellants contend that each of the
applied references teaches the use of one transceiver for each
protocol used and this cannot meet or suggest the claimed
requirement of a “single transceiver...operating in accordance
with first and second wireless control protocols.”
While appellants also mention a U.S. Patent No. 4,989,230 to
Gillig, and the examiner responds to this in the answer, where a
reference is relied on to support a rejection, whether or not in
a minor capacity, there would appear to be no excuse for not
positively including the reference in the statement of the
rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406,
407 n.3 (CCPA 1970). Gillig forms no part of the examiner’s
statement of the rejections and, accordingly, we have not
considered this reference.
We agree with appellants. The instant claims clearly
require “a single transceiver...operating in accordance with
first and second wireless control protocols.” However, neither
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Application 08/723,712
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of the applied references teaches or suggests a single
transceiver operable in two control protocols. Schellinger
discloses two modes of operation (cellular and cordless) but uses
a single protocol for these modes. The examiner contends
otherwise, referring to column 7, lines 60-65, of Schellinger to
show that the two protocols are “similar” but that Schellinger
does not require the “same” protocol. The examiner’s reliance on
this portion of Schellinger is misplaced. What is referred to as
“similar” here is a signalling “message” from the cordless base
station and “that transmitted in the conventional system” but
there is no indication that protocols employed for the two
different modes of operation in Schellinger are different and
that such different protocols operate from the same single
transceiver, as claimed.
The instant rejection is reversible for this reason alone.
However, even the examiner’s rationale for the combination is
found wanting. The examiner contends that it would have been
obvious to combine the references “in order to prevent a
duplicate registration within the wireless network.” However, we
again agree with appellants that there would have been no reason
to employ anything in Nagashima for the purpose of avoiding
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Application 08/723,712
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duplicate registration in Schellinger since Schellinger,
employing a single protocol for both the cordless and cellular
modes of operation, should have no problem with duplicate
registration. Moreover, as indicated by appellants [reply brief-
page 8], while the examiner argues that the Nagashima feature of
transmitting a reverse channel message without receiving a
forward channel message should be incorporated into Schellinger
to avoid a double registration problem, this does not appear to
be the feature that solves the problem of double registration in
Nagashima. Rather, Nagashima solves the double registration
problem by first receiving a forward channel message conveying an
area identification code at the handset and then transmitting an
acknowledgment which conveys the same area identification code.
Thus, again, there would appear to be no convincing
rationale for making the combination of Schellinger and Nagashima
and, even if made, the combination would not provide for the
claimed subject matter wherein a single transceiver operates in
accordance with first and second wireless control protocols.
Moreover, the last paragraph of claim 1 requires a switching
means for “automatically” setting the handset transceiver to
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communicate with a land station under the second control protocol
when the handset is moved beyond range of the local base station.
Nagashima teaches a “manual” command [e.g., see the abstract
portion of Nagashima]. Therefore, as argued by appellants [reply
brief, page 11], to replace the automatic system selection of
Schellinger with manual selection would appear to be contrary to
the Schellinger teachings.
None of the additional references cited by the examiner
against the dependent claims provides for the deficiencies of
Nagashima and Schellinger noted supra.
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The examiner’s decision is reversed as we find no prima
facie case of obviousness established by the examiner.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 2000-2237
Application 08/723,712
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EAK:pgg
James K. Weixel, Esq.
C/O Christian Andersen
Verizon Services Group
600 Hidden Ridge, HQE03H01
Irving, TX 75038