Ex Parte Dodgson et al

Board of Patent Appeals and Interferences

Apr 13, 2010

10648560 (B.P.A.I. Apr. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TERENCE EDWIN DODGSON and CHARLES TIBENDERANA
____________

Appeal 2009-003826
Application 10/648,560
Technology Center 2600
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Decided: April 13, 2010
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and KARL D.
EASTHOM, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-18, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
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Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed January 9, 2008), the Answer (mailed
March 31, 2008), and the Reply Brief (filed May 30, 2008) for the respective
details. Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived (see 37 C.F.R. § 41.37(c)(1)(vii) (2008)).

Appellants’ Invention
Appellants’ invention relates to a modulating device for modulating
and demodulating data transmitted from a first device to a second device.
The modulating device is capable of modulating and demodulating the data
according to at least first and second modulation techniques and further
includes a switch for automatically switching between the at least first and
second modulation techniques. (See generally Spec. 3:11-23).

Claim 1 is illustrative of the invention and reads as follows:
1. A modulating device for modulating and demodulating data for
transmission from a first device to a second device, comprising modulating
means capable of modulating and demodulating the data according to at least
a first and a second modulation technique using common digital modulation
components, and a switching means for automatically switching between at
least the first and the second modulation techniques.

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The Examiner’s Rejections
The Examiner relies on the following prior art to show
unpatentability:
Womack US 5,982,819 Nov. 9, 1999

Admitted Prior Art (APA) at pages 1 and 2 of Appellants’ Specification.

Claims 1, 2, 17, and 18 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Womack.
Claims 3-16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Womack in view of APA.

ISSUE
The pivotal issue before us is whether the Examiner erred in
determining that the messaging system of Womack, which is capable of
handling communications with different modulation formats, inherently
includes a mechanism for automatically switching between a first
modulation technique and a second modulation technique as claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Womack discloses (Fig. 1, col. 2, l. 63-col. 3, l. 4) a messaging
receiver which is adaptable to a plurality of modulation formats. A plurality
of transmitters 111 are controlled by a system controller 107 to transmit
message suitable for reception by a Personal Messaging Unit (PMU) 113.
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2. Womack further discloses (col. 3, ll. 4-16) that the messaging
receivers 115, 117 include flexible resources which are configured in
accordance with a particular modulation format.
3. Womack also discloses (col. 2, ll. 26-40) that the PMUs 113
can receive multiple modulation formats on the forward channel 103 and can
transmit on the plurality of modulation formats on the reverse channel 105.
4. Womack further discloses (col. 7, ll. 9-28) that the receivers
1115, 117, upon notification of a particular modulation technique, will
allocate their flexible resources to receive and demodulate the reverse
channel response from the PMUs 113.

PRINCIPLES OF LAW

1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
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Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).

2. OBVIOUSNESS
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). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (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 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

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ANALYSIS
35 U.S.C. § 102(b) REJECTION
Appellants’ arguments with respect to independent claims 1, 17, and
18 focus on the contention that, in contrast to the claimed invention,
Womack does not disclose a switching means for automatically switching
between first and second modulating techniques. According to Appellants
(App. Br. 5-6; Reply Br. 2-3), while the Examiner has asserted that a
modulation technique switching operation, which is admittedly not disclosed
in Womack, is nevertheless inherent, the Examiner has provided no support
for such a determination. In Appellants’ view (id.), while Womack’s
disclosed messaging system may have the capability of handling different
modulation types, it does not necessarily follow that such a system would
have a means for automatically switching from one modulation format to
another as claimed.
We agree with Appellants. We find no basis in fact and/or technical
reasoning from the Examiner that would establish that, merely because a
system can accommodate different modulation formats, it would necessarily
follow that there must be some mechanism to switch between formats, let
alone automatically switch as required by Appellants’ claims. While the
Examiner maintains (Ans. 5, FF 1-2) that, since Womack’s messaging
system is disclosed as accommodating communications from personal
messaging units (PMUs) operating with different modulation formats, there
is a clear implication that there must be a capability to switch automatically
from one modulation format to another, we find this to be speculative.
The Examiner’s conclusion does indicate that the system in Womack
could function as the Examiner has alleged, perhaps even how it could
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obviously perform, but it does not follow that the system of Womack must
function in such a fashion or would necessarily function that way inherently.
“[A]nticipation under § 102 can be found only when the reference discloses
exactly what is claimed and that where there are differences between the
reference disclosure and the claim, the rejection must be based on § 103
which takes differences into account.” Titanium Metals Corp. v. Banner,
778 F.2d 775, 780 (Fed. Cir. 1985).
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Womack, we do not sustain the Examiner’s
35 U.S.C. § 102(b) rejection of independent claims 1, 17, and 18, nor of
claim 2 dependent thereon.

35 U.S.C. § 103(a) REJECTION
We also do not sustain the Examiner’s obviousness rejection of
dependent claims 3-16 based on the combination of Womack and APA. The
Examiner has applied APA to Womack to address, inter alia, the
programmable finite impulse response filter feature of these claims. We find
nothing in the disclosure of APA, however, which overcomes the innate
deficiencies of Womack discussed supra.

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CONCLUSION
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1, 2, 17, and 18 for anticipation under
35 U.S.C. § 102(b), and in rejecting claims 3-16 for obviousness under
35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1, 2, 17, and 18 under
35 U.S.C. § 102(b) and claims 3-16 under 35 U.S.C. § 103(a) is reversed.

REVERSED

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