Ex parte Hortensius et al.

Board of Patent Appeals and Interferences

Aug 13, 1998

07605052 (B.P.A.I. Aug. 13, 1998)

Application for patent filed October 29, 1990.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCE
_____________
Ex parte PETER D. HORTENSIUS
and HAAKEN B. WINBOM
____________
Appeal No. 95-4543
Application 07/605,0521
____________
ON BRIEF
____________
Before MARTIN, BARRETT and CARMICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4543
Application 07/605,052
-2-
This is an appeal from the final rejection of claims
1-6, 8-12, 14-16, and 18. The other remaining claims (Claims
7, 13, and 17) were allowed.
Claim 1 reads as follows:
1. A method for operating data processing means
coupled to a communication network, comprising the steps of:
transmitting a message from a first network node
over a wireless medium, the message being addressed to a
second network node;
receiving the transmitted message with means for
interfacing the wireless network medium to a wired medium
having a physical conductor for conveying the message;
retransmitting with the interface means, as the
message is received, the received message to the wired medium;
retransmitting with the interface means, as the
message is received, the received message to the wireless
medium;
receiving the retransmitted message with the first
network node; and
comparing, with the first network node, the message
being transmitted with the received retransmitted message to
determine if they are the same and, if not, determining that a
collision has occurred.
The examiner’s Answer cites the following prior art:
Knapp 4,975,926 Dec. 4, 1990
(filed March 30, 1989)
Appeal No. 95-4543
Application 07/605,052
-3-
Wilmoth 5,060,303 Oct. 22, 1991
(filed Sept. 6, 1988)
Vacon et al. (Vacon) WO88/07794 Oct. 6, 1988
OPINION
Claims 1-6, 8-12, 14-16, and 18 stand rejected
under 35 U.S.C. § 103 as unpatentable over Knapp in view of
Vacon and Wilmoth. We reverse for the reasons given by
Appellants amplified as follows.
The examiner found that Knapp disclosed the
invention of Claim 1 except for the comparing step. In the
final rejection, the examiner found that the comparing step
was disclosed by Vacon and that it would have obvious to
include it in Knapp.
Appellants correctly point out that Vacon does not
disclose the comparing step. Rather, Vacon merely checks
whether or not there are multiple transmissions being
attempted simultaneously. If the answer is yes, Vacon
declares that a collision has occurred.
In response, the examiner says that:
Appeal No. 95-4543
Application 07/605,052
-4-
There is only a limited number of ways to
implement this operation of determining a
successful transmission and an efficient and
simple way is to . . . compare the transmitted
message with the received message (received
retransmitted message).
Supplemental Examiner’s Answer at 3.
The 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). In the present case, the examiner has not pointed to
anything in the prior art that suggested the desirability of
comparing the transmitted message with the received
retransmitted message to determine a collision as claimed.
The comparing step may well be “an efficient and simple way”
to determine a successful transmission as posited by the
examiner, but the examiner has not shown that it was suggested
by the prior art.
The examiner reasonably relies on Wilmoth to show
use of different frequencies. However, Wilmoth does not make
up for the above-noted deficiencies.
Appeal No. 95-4543
Application 07/605,052
-5-
Thus, the rejection will not be sustained.
CONCLUSION
The rejection of claims 1-6, 8-12, 14-16 and 18 is
not sustained.
REVERSED
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
Appeal No. 95-4543
Application 07/605,052
-6-
)
LEE E. BARRETT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Harry F. Smith
Perman & Green
425 Post Road
Fairfield, CT 06430-6232