Ex Parte Lee et al

Board of Patent Appeals and Interferences

May 23, 2007

10267877 (B.P.A.I. May. 23, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte Hea-Jeung Lee and Gye-Baeg Lee
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Appeal 2007-0642
Application 10/267,877
Technology Center 2600
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Decided: May 23, 2007
___________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and
JEAN R. HOMERE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §§ 6(b) and 134 from the
Examiner's Final Rejection of claims 1-8 and 10-16.

We AFFIRM.

Appeal 2007-0642
Application 10/267,877

BACKGROUND

Appellants’ invention relates to a telephone apparatus for stabilizing a
call in a no power operation mode and method for controlling the same.
(Specification 1). An understanding of the invention can be derived from a
reading of exemplary claim 1, which is reproduced below.
1. A telephone apparatus which has at least two processors and
stabilizes a call in a no power operation (NPO) mode, said telephone
apparatus comprising:

a power-on detector for detecting a power-on state of an external
supply voltage to generate a power-on detection signal when said
telephone apparatus is operating in said no power operation mode;

a power switch receiving a central office telephone line loop voltage
outputted from a telephone circuit in a hook-off state and the external
supply voltage, said power switch selectively outputting at least one of
the received voltages as an operating voltage to the telephone circuit;

said telephone circuit being connected to a central office telephone
line, said telephone circuit being operated in response to said loop
voltage on said telephone line during said no power operation mode and
being operated in response to said external supply voltage when said
external supply voltage is received by said power switch; and

a main controller having an operation control port, said main
controller performing a power-on reset operation to boot an internal
system program when said external supply voltage is received by said
main controller during said no power operation mode;

a sub-controller included in said telephone circuit, said sub-controller
outputting a booting prevention signal to said operation control port of
said main controller in response to said power-on detection signal to
prevent said main controller from performing the power-on reset
operation.
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Application 10/267,877

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
WALLACE US 6,647,117 B1 Nov. 11, 2003
(filed Aug. 16, 1999)
FOX 5,014,308 May 7, 1991
IIDA 4,916,735 Apr. 10, 1990

REJECTIONS
Claims 1-6 and 13-16 stand rejected under 35 U.S.C. 102(e) as being
anticipated by Wallace.

Claim 12 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Wallace.

Claim 10 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Wallace in view of Fox.

Claims 7, 8, and 11 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Wallace in view of Fox and Iida.

Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed Jun. 2, 2006) for the reasoning
in support of the rejections, and to Appellants’ Brief (filed Mar. 3, 2006) and
Reply Brief (filed Jul. 28, 2006) for the arguments thereagainst.
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Application 10/267,877

OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.
At the outset, we note that Appellants have not provided a Brief in
compliance with 37 CFR § 41.37 wherein the Summary of the Claimed
Invention does not include a concise summary of each of the independent
claims. The Brief does not include a summary of independent claim 13.
Furthermore, Appellants have not separately argued this claim beyond any
assertions that were argued with respect to independent claim 1 that there is
no booting prevention signal and no disclosure of a masked program. We
find no limitation in independent claim 1 of a masked program and find that
Appellants have identified no express support in the Specification for the
masked program. We will therefore group independent claim 13 with
independent claim 1.
35 U.S.C. § 102
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631,
2 USPQ2d 1051, 1053 (Fed. Cir. 1987). The inquiry as to whether a
reference anticipates a claim must focus on what subject matter is
encompassed by the claim and what subject matter is described by the
reference. As set forth by the court in Kalman v. Kimberly-Clark Corp., 713
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F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), it is only necessary for
the claims to “‘read on’ something disclosed in the reference, i.e., all
limitations of the claim are found in the reference, or ‘fully met’ by it.”
While all elements of the claimed invention must appear in a single
reference, additional references may be used to interpret the anticipating
reference and to shed light on its meaning, particularly to those skilled in the
art at the relevant time. See Studiengesellschaft Kohle, M.B.H. v. Dart
Indus., Inc., 726 F.2d 724, 726-27, 220 USPQ 841, 842-43 (Fed. Cir. 1984).
With respect to independent claim 1, Appellants argue that Wallace
does not discuss the operation control port and a booting prevention signal to
said operation control port (Br. 9-11). We disagree with Appellants and find
that Wallace teaches the use of a port for communication between various
elements in the system. While not expressly shown in the drawings,
Wallace describes at column 7, lines 10-15, that the power monitor 370
indicates a failure of power and has an interface to the microprocessor 363 to
generate an interrupt or allow polling. Therefore, Wallace contains
communication between the various units.
Similarly, Wallace states, at column 8, lines 39-43, that upon power
restoration, the changes must be reversed without requiring a full retrain.
Here, we find that there would be some required communication between
the Discrete Multi-Tone (DMT) modem 364 (with a Digital Signal Processor
(DSP)) and the microprocessor 363 to allow the modem to either fully
retrain or limit the retraining of the modem. The Examiner has identified the
modem 364 as the main controller and the microprocessor 363 as the sub-
controller (Answer 4). We agree with the Examiner’s correlation of
independent claim 1 to the teachings of Wallace.
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Appellants argue that if the modem 364 had a power-on reset operation
to boot an internal system program when supply voltage is received at the
main controller then the modem would boot and cause the call to be lost (Br.
12). Here, Appellants seem to interpret the supply of the voltage as the
trigger for the system program, but we find that Wallace would have the
program for retraining or limited retraining responsive to the signal from the
microprocessor which gets an indication from the power supply monitor.
We cannot agree with Appellants’ implied narrow interpretation of
independent claim 1.
Appellants argue that the Examiner is speculating as to the operation
of Wallace (Br. 13). We disagree with Appellants’ argument and do not find
that Appellants have identified any specific error in the Examiner’s
correlation to the express limitations recited in independent claim 1.
Therefore, Appellants' argument is not persuasive, and we will sustain the
rejection of independent claim 1.
With respect to dependent claim 2, the Examiner has identified that
the microprocessor or sub-controller blocks the output of the booting
prevention signal to the operation port of the main controller (Answer 6).
We understand the Examiner to maintain that the microprocessor uses the
hook-on state of the telephone to allow the modem to perform a full retrain
operation. The Examiner finds that this meets the feature “adapted to block
the output of said booting prevention signal.” We agree with the Examiner
that the change of the output of the microprocessor or the lack of an output
in response to the change in state would have met the broad language of
dependent claim 2. Since we do not find that Appellants have shown error
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in the Examiner rejection of dependent claim 2, we will sustain the rejection
of dependent claim 2.
With respect to dependent claims 3 and 5, Appellants rely upon the
base argument that modem 364 of Wallace does not have the function of a
performing power-on reset operation to boot an internal system program
(Br. 14-15). As discussed above, we did not find this argument persuasive
with respect to independent claim 1. Therefore, Appellants' argument is not
persuasive with respect to dependent claims 3 and 5. Appellants argue that
there is no showing by the Examiner that the prevention signal if it existed
would be both a hold signal and a reset signal (Br. 15). This argument is
not commensurate in scope with the express limitations of dependent claims
3 and 5 since each claim only has one of the signals recited. Therefore,
Appellants' argument is not persuasive. Additionally, Appellants have
elected to group both dependent claims 3 and 5 together under a single
heading. Therefore, since we find no persuasive argument to dependent
claim 3, we sustain the rejection thereof and further sustain the rejection of
dependent claims 4, 5, and 6 as being not separately argued.
With respect to independent claim 13, Appellants rely upon the same
arguments as advanced with respect to independent claim 1 (Br. 16). Since
we did not find those arguments persuasive with respect to independent
claim 1, we similarly do not find reliance thereon persuasive with respect to
independent claim 13. We find no limitation in independent claim 1 of a
masked program and find that Appellants have identified no express support
in the Specification for the masked program. We will therefore group
independent claim 13 with independent claim 1.
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Additionally, since the language in independent claim 13 is not
commensurate in scope with the limitations in independent claim 1, we
cannot find the arguments directed to independent claim 1 persuasive with
respect to independent claim 13. Therefore, we will sustain the rejection of
independent claim 13.

35 U.S.C. § 103
At the outset, we note that to reach a proper conclusion under § 103,
the Examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the Examiner to ascertain
whether the Examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
a person of ordinary skill in the art. When claim elements are found in more
than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed.
Cir. 2006). With respect to the role of the Examiner as finder of fact, the
Court of Appeals for the Federal Circuit has stated: “the examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The Court of Appeals
for the Federal Circuit has also noted: “[w]hat the prior art teaches, whether
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it teaches away from the claimed invention, and whether it motivates a
combination of teachings from different references are questions of fact.” In
re Fulton, 391 F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir.
2004) (internal citations omitted). 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, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner
must make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). 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 v.
Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
With respect to dependent claims 7, 8, and 10-12, Appellants rely
upon the same arguments as advanced with respect to independent claim 1
(Br. 16-17). Since we did not find those arguments persuasive with respect
to independent claim 1, we similarly do not find reliance thereon persuasive
with respect to dependent claims 7, 8, and 10-12.
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CONCLUSION
To summarize, we have sustained the rejection of claims 1-6 and 13-16
under 35 U.S.C. § 102, and we have sustained the rejection of claims 7, 8,
and 10-12 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

pgc:

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