Ex Parte Nantz et al

Board of Patent Appeals and Interferences

Jun 23, 2009

10218975 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN S. NANTZ, QINGFENG TANG, RIAD GHABRA,
RONALD O. KING, BRUCE CONNER, ART TUROVSKY,
KEITH WALKER, and THOMAS BEJSTER
____________

Appeal 2009-002700
Application 10/218,975
Technology Center 2600
____________

Decided:1 June 23, 2009
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Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK,
and THOMAS S. HAHN, Administrative Patent Judge.

KRIVAK, 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 2009-002700
Application 10/218,975

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF CASE
Appellants’ claimed invention is a self-tuning transmitter for wireless
remote control systems. The invention includes a transceiver and a method
of determining a frequency and coding of a signal transmitted by a remote
transmitter unit. The signal is then stored and subsequently transmitted by
the transceiver. (Spec. 1:6-9)
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A self-tuning duplicating transceiver comprising:

a microprocessor;

a transmitter connected to the microprocessor and including a
radio frequency oscillator capable of being electrically tuned to
a carrier frequency within a range of frequencies; and

a receiver connected to the microprocessor and including a
counter for determining an edge count associated with a
received signal and indicative of a received signal carrier
frequency,

wherein the microprocessor is programmed to, on demand by a
user, receive an unknown signal with the receiver and use the
counter to determine the edge count thereof, and electrically
tune the transmitter oscillator to a carrier frequency
corresponding to the edge count for the unknown signal.

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REFERENCES
Anderson US 5,987,085 Nov. 16, 1999
Nolan US 6,072,404 Jun. 6, 2000
Stine US 6,701,140 B1 Mar. 2, 2004
(filed Sep. 14, 2000)

The Examiner rejected claims 1-9 under 35 U.S.C. § 103(a) based
upon the teachings of Nolan.
Appellants contend that Nolan does not teach or suggest using a
counter for determining an edge count associated with a received signal
indicative of a received signal carrier frequency as recited in Appellants’
claims (App. Br. 5).2

ISSUE
Did Appellants establish that the Examiner erred in finding it would
have been obvious to modify an inherent counter in Nolan’s microprocessor
to count edges, as edge counters are well known?

FINDINGS OF FACT
1. Appellants’ invention includes monitoring the number of edges
seen by a transmitter (Spec. 4:28-5:1). A microprocessor electronically
tunes the transmitter until the number of edges seen matches the number of
edges determined during the learn section of the transmitter intended for
duplication. Once the number of edges matches, the tuning setting is stored
and self-tuning of the transmitter is accomplished. (Spec. 5:1-5)

2 The Amended Appeal Brief filed Nov. 20, 2006, is referenced throughout
this opinion.
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2. Nolan teaches a universal garage door. A microprocessor 12
causes a synthesizer 34 to adjust the values in a program counter and
swallow counter in the synthesizer (col. 4, ll. 47-48).
3. Nolan’s microprocessor also controls the operation of the
synthesizer by instructing the synthesizer when to decrement the program
and swallow counters. Thus, the microprocessor knows the count value in
the swallow and program counters and stores a code indicative of these
count values and the reference frequency (col. 6, ll. 59-62).

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that
burden is met, then the burden shifts to the Appellants to overcome the
prima facie case with argument and/or evidence. In re Mayne, 104 F.3d
1339, 1342 (Fed. Cir. 1997). Additionally, a rejection based on § 103 must
rest upon a factual basis rather than conjecture or speculation. “Where the
legal conclusion [of obviousness] is not supported by facts it cannot stand.”
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). See also In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006).
The Supreme Court, citing In re Kahn, 441 F.3d at 988, stated that
“[r]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U. S. 398, 418 (2007).
However, “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
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of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id.
“The mere fact that a certain thing may result from a given set of
circumstances is not sufficient [to establish inherency]” (emphasis in
original). In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) quoting In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981).

ANALYSIS
The Examiner rejected claims 1-9 under 35 U.S.C. § 103 based upon
the teachings of Nolan. Appellants group claims 1-9 together and argue the
rejection with respect to independent claims 1 and 6 (App. Br. 3-4).
The Examiner finds that since Nolan’s microprocessor knows the
count values of swallow and program counters that were calculated inside
the synthesizer (FF 3), Nolan inherently teaches a counter inside the
microprocessor (Ans. 3). The Examiner also finds that Nolan is silent with
respect to the counter within the microprocessor counting edges of an
unknown signal, but that “counters to count edges … are evidently well
known” (Ans. 4). Thus, the Examiner takes official notice that a counter
inside the microprocessor in Nolan “could be designed to count the edges of
the unknown signal” (Ans. 4) (emphasis added).
Appellants contend that Nolan determines a carrier frequency of a
signal to be recorded by comparing a (divided) carrier frequency signal to a
(divided) reference frequency signal (App. Br. 4; Reply Br. 2). Appellants
assert, that, in contrast, the claimed invention uses a counter for
“determining an edge count associated with a received signal indicative of a
received signal carrier frequency as opposed to dividing … the received
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signal to a reference signal” (App. Br. 5). Appellants further contend Nolan
only describes that after synchronization is achieved, a counter value is
stored in the microprocessor as representative of a carrier frequency (App.
Br. 5). Thus, Nolan does not suggest a counter in a microprocessor
determining an edge count as claimed. Finally, Appellants contend that the
fact that edge counters exist does not make it obvious to modify Nolan and
thus obtain Appellants’ invention as Nolan synchronizes the received signal
to a reference signal; whereas Appellants’ claims recite an edge counter for
determining a carrier frequency (Reply Br. 3).
The Examiner may rely on inherent characteristics of the prior art,
however, the initial burden is on the Examiner to establish that the allegedly
inherent characteristic flows from the prior art. (See Levy, supra). In this
instance the Examiner has not done so. The Examiner has merely stated that
it is inherent that Nolan has a counter inside the microprocessor to count and
calculate values of the swallow and program counters (Ans. 4). Because
Nolan’s microprocessor knows the count values of the swallow and program
counters and stores a count value does not mean that the microprocessor
includes a counter and is not sufficient to establish inherency (See In re
Rijckaert supra at 1534). Further, the Examiner’s taking official notice that
because counters can count edges, the counter in Nolan “could” be designed
to count edges is not conclusive. There is no teaching or suggestion in
Nolan of a counter designed to count the edges of an unknown signal and
electrically tune the transmitter to a carrier frequency corresponding to the
edge count as claimed by Appellants.

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CONCLUSION
Appellants have established that the Examiner erred in finding that it
would be obvious to modify an inherent counter in Nolan’s microprocessor
to determine edge counts in rejecting claims 1-9 under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 1-9 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED

KIS

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