Ex parte LIPP

Board of Patent Appeals and Interferences

Oct 19, 1998

08400190 (B.P.A.I. Oct. 19, 1998)

Application for patent filed March 6, 1995. According1
to appellant, this application is a continuation of
application 08/007,873 filed January 22, 1993, now abandoned.
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journal and (2) is not binding precedent of the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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONALD L. LIPP
____________
Appeal No. 97-1504
Application No. 08/400,1901
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and NASE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-5 and 7-28, which constitute all of
Appeal No. 97-1504
Application No. 08/400,190
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the claims remaining of record in the application, claim 6
having been canceled.
The appellant's invention is directed to a method for
displaying messages which have been stored in the memory of a
pager. The subject matter before us on appeal is illustrated
by reference to claims 1 and 27, which have been reproduced in
an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Levine 4,336,524 Jun. 22,
1982
Tsunoda et al. (Tsunoda) 4,536,761 Aug.
20, 1985
Wagai et al. (Wagai) 5,285,493 Feb. 8,
1994
(filed June 25, 1991)
Lipp 5,398,022 Mar.
14, 1995
THE REJECTIONS
Claims 1-3, 7, 8, 12-15, 19-21, 25 and 26 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Wagai in view
of Levine.
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Claims 4, 5, 9-11, 16-18 and 22-24 stand rejected under
the judicially created doctrine of obviousness-type double
patenting over claims 1-19 of U.S. Patent No. 5,398,022 in
view of Wagai and Levine.
Claims 27 and 28 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wagai in view of Tsunoda.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
All three of the examiner’s rejections are grounded in
obviousness. This means that the examiner bears the initial
burden of presenting a prima facie case of obviousness (see In
re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993)), which is established when the teachings of the
prior art itself would appear to have suggested the claimed
subject matter to one of ordinary skill in the art (see In re
Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993)).
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The appellant’s invention is directed to pagers that are
capable of storing and displaying multiple messages. The
objective of the invention is to provide alternative methods
for displaying the stored messages or pages of messages, which
includes sequentially viewing the multiple messages or pages
by scrolling through them, or by viewing them individually.
In furtherance of this, the claims recite various methods, all
of which involve the operation of a multiple function switch
in which the application of a single input to the switch
initiates a mode wherein the stored messages (or pages of
messages) are sequentially displayed in a free-running display
automatically carried out without further input signal from
the switch, and wherein the input of a subsequent signal to
the switch causes the cessation of the free-running mode in
favor of a manual mode in which messages (or pages) are
presented one at a time.
With regard to independent claims 1, 12 and 21 (messages
with more than one page), and 7 and 15 (messages), the
examiner has taken the position that the subject matter
recited would have been obvious to one of ordinary skill in
the art in view of the teachings of Wagai and Levine.
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The thrust of the Wagai invention is to improve upon the
prior art situation in which the display switch has to be
operated many times in order to display a plurality of stored
messages (column 2, line 9 et seq.). To overcome this
problem, Wagai teaches displaying stored messages either
sequentially by scrolling through them or manually, one at a
time. According to the Wagai method, stored messages are
sequentially presented in a scrolling manner so long as the
user depresses (activates) and holds switch 11. When the
switch is released, the scrolling stops and a single message
is displayed. Another message is manually displayed if switch
11 is momentarily activated. See column 7, line 26 et seq.
This is essentially the opposite of the method recited in the
appellant’s claims. Wagai does not disclose or teach a method
wherein a free-running display of stored messages is initiated
by the receipt of a user input signal to a multiple function
switch without further receipt of a user input signal, and
wherein said free-running display is terminated and a manual
display mode initiated upon receipt of a subsequent user input
signal. In other words, wherein the appellant’s invention is
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a method in which scrolling is started by a short duration
activation of a multifunction switch and continues until
another short duration activation of that switch is made,
Wagai starts the scrolling by activating and holding the
multifunction switch in the activated position, and stops it
by releasing the switch.
The examiner deals with the above-noted insufficiency in
Wagai in three ways. First, the examiner asserts that the
claimed method would have been obvious “because Wagai et al.
et al. [sic] suggests manual, or sequential and automatic
free-running displaying of the messages, or both with the
activation of a switch” (Answer, page 4). However, the issue
is whether Wagai teaches the method of recited in the claims,
in which certain manners of operating a single switch result
in a particular modes of message display. The fact is that
while the methods of both the appellant’s invention and Wagai
utilize a single switch to initiate two different modes of
message display, they do not accomplish this by the same
steps. The second assertion by the examiner has to do with
switching “typically used in automatically programming VCR’s”
(Answer, page 4). Even if we were able to fully understand
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this discussion, it fails because it is merely the examiner’s
opinion, unsupported by evidence.
The third of the examiner’s theories is that Levine
discloses an auto scroll switch, with regard to which “[t]here
is no indication that it is necessary for switch (59) to be
continuously actuated” (Answer, page 5). Levine’s explanation
of the manner in which switch 59 affects the operation of the
pager message display system is not crystal clear. However,
even assuming, arguendo, that the examiner’s conclusion is
correct, to modify the Wagai method in the manner proposed by
the examiner would destroy the method espoused by Wagai as the
inventive solution to the problem, which in our view would
operate as a disincentive to the artisan. Moreover, we fail
to perceive any suggestion in either of the references which
would have motivated one of ordinary skill to make such a
wholesale change in the Wagai method, except the hindsight
accorded one who first viewed the appellant’s disclosure.
This, of course, is impermissible. See In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
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It therefore is our conclusion that the combined
teachings of Wagai and Levine fail to establish a prima facie
case of obviousness with regard to the subject matter of
independent claims 1, 7, 12, 15 and 21 and, it follows, of
dependent claims 2, 3, 8, 13-15, 19, 20, 25 and 26.
Dependent claims 4, 5, 9-11, 16-18 and 22-24 stand
rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1-19
of U.S. Patent No. 5,398,022, taken in view of Wagai and
Levine. According to the examiner, “the appellant has already
received a patent for the limitations of claims 4, 5, 9, 10,
16, 17, 22, and 23 in claims 1-19 of . . . [the patent]” and
“to include the steps of claims 1-3, 7-8, 12-15, and 18-21, in
the method of the claimed invention of . . . [the patent]
would have been obvious to one of ordinary skill in the art”
in view of Wagai and Levine because they “suggest such method
limitations are known in the art” (Answer, paragraph bridging
pages 5 and 6).
The referenced patent claims are directed to a method of
actuating a switch to illuminate the display of a pager and to
cause other functions to take place concurrently, and thus
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they clearly do not themselves encompass the method recited in
the claims before us, which deals with the presentations of
displays. The teachings of Wagai and Levine have been set
forth above, as have their deficiencies with regard to the
appellant’s independent claims. The examiner has not
explained what “limitations” in the patent claims form the
basis for the rejection, what teachings of Wagai and Levine
are relied upon, and how the references would be combined.
From our perspective, therefore, a prima facie case of
obviousness-type double patenting has not been established,
and we will not sustain this rejection.
Independent claim 27 stands rejected as being
unpatentable over Wagai in view of Tsunoda. This claim
requires that the pages be transferred sequentially to the
display of the pager “in response to a single short-duration
actuation of a multiple function switch,” and hold a displayed
page “in response to a second discrete actuation of said
multiple function switch.” As we explained above, this
teaching is not present in Wagai. The examiner states that
Tsunoda teaches “holding a display of a paged message for so
long as the switch is actuated,” and then concludes that “[i]t
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would have been obvious . . . to maintain the display of the
paged message so long as the switch is in the actuated state
in the pager of Wagai . . . because Wagai et al. suggests
displaying a paged message upon actuation of a switch and
Tsunoda et al. teaches the message is displayed until
deacctuation [sic] of the switch” (Answer, page 6).
Again, we find ourselves struggling to understand the
rejection. It is true that Wagai teaches displaying a paged
message upon actuation of a switch. However, that display
lasts only as long as the switch is held in the actuated
position, and ceases when it is released which, according to
the examiner, is exactly what Tsunoda teaches. Thus, Tsunoda
would seem to add nothing to the teachings of the primary
reference. It is our view that a prima facie case of
obviousness is not established by the combined teachings of
these two references, and therefore we will not sustain this
rejection.
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SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1504
Application No. 08/400,190
12
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