Ex Parte LaGrotta et al

Board of Patent Appeals and Interferences

Jun 30, 2009

09919020 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES T. LAGROTTA and RICHARD THOMAS LAGROTTA
____________

Appeal 2008-003666
Application 09/919,020
Technology Center 2600
____________

Decided: June 30, 20091
____________

Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-003666
Application 09/919,020

I. STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-7, 10-13, 16-19, 22-25, and
28-30. The Appellants appeal therefrom under 35 U.S.C. § 134(a). We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. INVENTION
The invention at issue on appeal relates to use of an over-the-air
optical link within a geographically distributed base station in a wireless
radio frequency communications system. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. An RF base station apparatus, comprising:
first wireless RF communication equipment; and
wireless optical communication equipment coupled to the
first wireless
RF communication equipment,
the wireless optical communication equipment being
adapted to communicate signals between the first wireless RF
communication equipment and processing and control
equipment, and
the first wireless RF communication equipment and the
processing and control equipment being non-co-located.

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C. REFERENCES
The Examiner and the Board rely on the following references as
evidence:
Acampora US 6,314,163 B1 Apr. 11, 2000
Willebrand US 2002/0149811 A1 Oct. 17, 2002
Appellants admitted prior art figure 1

D. REJECTIONS
The Examiner makes the following rejections.
Claims 1-7, 10-13, 16-19, 22-25 and 28-30 stand rejected under
35 U.S.C. 103(a) as being unpatentable over admitted prior art (Fig. 1) in
view of Willebrand.
II. ISSUE
Have Appellants shown that the Examiner erred in rejecting
independent claim 1 and independent claim 17 under obviousness over the
combination of the admitted prior art figure 1 and Willebrand?

III. PRINCIPLES OF LAW

35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

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Application 09/919,020

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. Id. at 415-16 (citing Graham v. John Deere Co.,
383 U.S. 1, 12 (1966)). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. The operative question in this "functional approach" is
thus "whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 417.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 418).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

IV. FINDINGS OF FACT
1. “[A]dmitted prior art teaches an RF base station apparatus (Fig.
1, item 105) comprising first RF communication equipment (Fig. 1,
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item 110), a processing and control section (fig. 1, item 120),
processing and control section being at a significant distance from the
RF antenna (Fig. 1, item 130). Fig. 1 of application's specification
(prior art) does not teach first wireless optical communication.” (Ans.
3).

V. ANALYSIS
With respect to independent claim 1, Appellants do not specifically
dispute that figure 1 of the instant application is deemed to be admitted prior
art. Therefore, we accept that it was well known to the art to separate the
receiver and the signal processing equipment as shown in Appellants' figure
1 and to connect the two via some cable (metal or optical fiber). The
Examiner relies upon the teachings of Willebrand to teach routing network
traffic through an alternate communication path. (Ans. 4). Willebrand
evidences the interchangeability of various modes/media of communication
between units. Willebrand further supports the Examiner's position that it is
"always desirable to use wireless instead of cable in expense of land areas to
reduce costs without reducing the signal of the system." (Ans. 4).
Therefore, we agree with the Examiner that it would have been desirable to
one of ordinary skill in the art at the time the invention was made to replace
the land line in the admitted prior art figure 1 with an optical connection as
taught by Willebrand since Willebrand teaches the desirability and well-
known use of wireless optical communication and evidences that it would
have been within the level of ordinary skill in the art to convert from RF
signals to optical signals. Hence, we find that the Examiner has set forth a
sufficient initial showing of obviousness of independent claim 1.
Appellants contend that
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Willebrand, however, like the alleged, admitted prior art does
not disclose or suggest a RF base station apparatus having a first
wireless RF section that is not co-located with processing and control
equipment. Rather, Willebrand's transceivers 104, 214, 216 appear to
comprise co-located RF and processing/control equipment.

(App. Br. 6).
Appellants have not specifically controverted that figure 1 is admitted
prior art but imply that figure 1 may not show that which it clearly depicts:
that the two elements, antenna and processing circuitry, are separated and
not co-located. Furthermore, the Acampora '163 reference, of record, in
figures 3(c) and 3(d) further evidences the well known concept of separating
the antenna from the processing circuitry. Therefore, we find that the
admitted prior art teaches that the RF receiver and the processing/control
equipment are known to be non-co-located. With the teachings of
Willebrand concerning a desire to use wireless optical communication, we
find that it would have been obvious to one of ordinary skill in the art at the
time the invention is made to have incorporated the wireless optical
communication as taught by Willebrand into the admitted prior art figure 1
and to replace the optical land line communication as shown as they are well
known alternative means of conveying the signal from one location to
another. Therefore, we find Appellants' argument to be unpersuasive of
error in the Examiner's initial showing of obviousness.
Alternatively, in figure 3, Willebrand teaches that, depending on the
weather conditions, the signal path 212 may be implemented with the RF
transmitter unit 214, which could be used to transmit to RF receiver 216, and
that signal would then be transmitted via free space link 228. Paragraph
[0032] of Willebrand further evidences various combinations of wireless and
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wired combinations for communication between different buildings wherein
those skilled in the art would have readily understood the required signal
conversions to achieve the traversal of the various systems and modes of
communication.
With respect to independent claim 17, Appellants have not set forth
their arguments under a separate heading as required by 37CFR §41.37
(c)(1)(vii). Therefore, claims 17-19, 22-25, and 28-30 should stand or fall
with independent claim 1.
For completeness we will address the specific arguments presented
with respect to independent claim 17. Appellant argues the bodily
incorporation of each of the two teachings and identifies the flaws in each
individual reference at page 7 of the Brief. As discussed above, Willebrand
teaches the alternative use of various modes of communication of a signal
and evidences that those skilled in the art would have known how to convert
the RF signal received in the admitted prior art figure 1 into a wireless
optical signal. These alternative signals in Willebrand teach the alternative
use of the various modes of communication depending on weather
conditions affecting signal propagation of the optical signals. Therefore, we
do not find Appellants' argument persuasive of error in the Examiner's initial
showing of obviousness

VI. CONCLUSION
For the aforementioned reasons, Appellants have not shown that the
Examiner erred in rejecting claims 1 and 17 under obviousness over the
admitted prior in view of Willebrand.

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VII. ORDER
We affirm the obviousness rejections of claims 1-7, 10-13, 16-19, 22-
25, and 28-30.
AFFIRMED

PEB

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