Ex Parte Sydon et al

Board of Patent Appeals and Interferences

Sep 7, 2010

09754905 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/754,905 01/04/2001 Uwe Sydon 2454.1120 3947
21171 7590 09/07/2010
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
NGUYEN, STEVEN H D
ART UNIT PAPER NUMBER
2473
MAIL DATE DELIVERY MODE
09/07/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte UWE SYDON, OLAF DICKER, and JUERGEN KOCKMANN
____________________

Appeal 2009-005404
Application 09/754,9051
Technology Center 2400

____________________

Before MARC S. HOFF, CAROLYN D. THOMAS,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Siemens Communications, Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005404
Application 09/754,905

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3 and 6-34. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a cordless communication system that
provides optimum spectral usage for wireless devices by enabling direct
communication between devices within the wireless network, wherein
synchronization occurs between the wireless devices using the dedicated
communication channel established by the base station (Spec. 6:5-10, 6:25-
7:13).
Claim 1 is exemplary:
1. A cordless communication system, comprising:
a central unit; and
at-least two remote units capable of radio frequency communication
with said central unit and other of said at least two remote units, a first of
said at least two remote units being capable of providing a request to said
central unit for a direct connection with a second of said at least two remote
units;
wherein said central unit is capable of assigning a dedicated
communication channel for enabling direct communication between selected
ones of said at least two remote units upon receiving a request from said first
remote unit, said central unit assigning a dedicated communication channel
for enabling direct communication between said first and second remote
units, said second remote unit synchronizing to said first remote unit.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Miyake 5,903,618 May 11, 1999
Morvan 6,574,452 B1 Jun. 3, 2003

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Claims 11-27 and 30-34 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1-3, 6-10, and 28-29 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Miyake.
Claims 11-27 and 30-34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Miyake in view of Morvan.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed December 8, 2005) and the
Examiner’s Answer (mailed February 22, 2006) for their respective details.

ISSUES
With respect to the rejection under § 112, Appellants contend that the
Specification has provided adequate disclosure that once the central unit
establishes direct communication between the first and second remote units,
information communicated between the first and second remote units is not
communicated through the central unit but through the dedicated
communication channel (App. Br. 6-7).
With respect to the § 102 rejection, Appellants argue that independent
claim 1 recites that the second remote unit synchronizes to the first remote
unit during direct communication with the first remote unit through the
dedicated radio frequency connection (App. Br. 7). In contrast, Appellants
assert that Miyake discloses that all terminals of the system always
synchronize to the base station through sync signals paged from the base
station, even during direct communication between the terminals (App. Br.
7).
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Finally, with respect to the § 103 rejection, Appellants assert that
Morvan fails to disclose teach or suggest a central unit or base station that
assigns the dedicated radio frequency, since Morvan discloses that the base
station simply passes a message from the requesting communication device
when a direct connection between two of the communication devices is
desired (App. Br. 9).
Appellants’ contentions present us with the following three issues:
1. Does the Specification provide adequate support for
synchronization on the assigned dedicated communication channel?
2. Does Miyake disclose a central unit that assigns a dedicated
communication channel for enabling direct communication between a first
and second remote unit, wherein the second remote unit synchronizes to the
first remote unit?
3. Do the references disclose that the second remote unit synchronizes
to the first remote unit using the dedicated communication channel?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. After remote unit 14 provides a request to the central unit 12
using communication channel “a” for direct communication to remote unit
16, central unit 12 initiates the dedicated wireless channel “f'” between the
first remote unit 14 and the second remote unit 16. The remote units, 14 and
16, communicate directly on wireless channel “f,” wherein the “requesting”
remote unit 14 functions as a "temporary central unit" such that the second
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remote unit 16 synchronizes to the first unit 14. When communication
between the first and second remote units 14 and 16 ceases, either remote
unit may communicate to the central unit 12 the fact that direct
communication between the remote units 14 and 16 has ended. Upon this
notification, central unit 12 terminates the direct communication channel “f”.
The first and second remote units, 14 and 16, return to their original state,
wherein each synchronizes to the central unit 12 (Figs. 1 and 2; Spec. 6:2-
10; 6:25-7:13).
Miyake
2. Miyake discloses a multimode radio communication system,
including a base station connected to a wire communication network,
capable of terminal-to-terminal communication, i.e., peer-to-peer
communication, performed without using any infrastructure equipment.
The base station wirelessly transmits a sync signal to the radio
communication terminals, wherein the terminals are operated in
synchronization with the sync signal transmitted from the base station. A
terminal may communicate with another terminal directly or indirectly
through the base station. The terminal includes a means for receiving a sync
signal transmitted from the base station and a means for directly
communicating with another radio communication terminal by a peer-to-
peer communication link in synchronization with the sync signal without
using the base station (Figs. 8, 10, and 11; col. 2, ll. 5-10 and 29-48; col. 9,
ll. 19-42). During peer-to-peer communication, however, the terminals
receive a sync signal transmitted from the base station (col. 8, ll. 35-49).
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Morvan
3. Morvan discloses a method and system including terminals
4102 and 4103 that may communicate in confidential mode. When the first
terminal 4102 desires to set up confidential communication with device
4103, device 4102 sends a message 4503 which passes, transparently,
through the base station 4101. Device 4103 accepts or rejects the
confidential communication request by sending message 4504 back to
device 4102. After the connection through the base station 4101 is closed,
device 4102 automatically switches into base station operating mode,
wherein device 4102 functions in the role of the "new base station." Device
4103 starts a procedure for synchronizing itself with the new base station
4102, after having performed a detachment procedure with the base station
4101. When device 4103 is synchronized with the communication device
4102, confidential communication may commence (col. 41, ll. 5-39).

PRINCIPLES OF LAW
Enablement
Pursuant to 35 U.S.C. § 112, first paragraph, “[t]he test of enablement
is whether one reasonably skilled in the art could make or use the invention
from the disclosures in the patent coupled with information known in the art
without undue experimentation.” United States v. Telectronics, Inc., 857
F.2d 778, 785 (Fed. Cir. 1988).
Anticipation
Anticipation pursuant to 35 U.S.C § 102 is established when a single
prior art reference discloses expressly or under the principles of inherency
each and every limitation of the claimed invention. Atlas Powder Co. v.
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IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d
1475, 1478-79 (Fed. Cir. 1994). Limitations found in the Specification are
not to be read into the claims. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989). Claims are to given their broadest reasonable interpretation. Id.
Obviousness
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[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.

ANALYSIS
Rejection of claims 11-27 and 30-34 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement
Independent claims 11 and 20 recite that the second remote unit
synchronizes “to said first remote unit during communication with said first
remote unit via the dedicated radio frequency connection.” Independent
claim 32 recites a similar claim limitation: “the first remote unit functioning
as a temporary central unit for the second remote unit during direct
communication between the first remote unit and the second remote unit so
that the second remote unit synchronizes to the first remote unit.”
We consider Appellants’ arguments to be persuasive to show
Examiner error. Specifically, we do not agree with the Examiner’s finding
that the Specification does not disclose that the first and second remote unit
exchanges the synchronized message using the assigned channel (Ans. 3; FF
1).
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We agree, however, with Appellants that the Specification does
provide adequate disclosure to support the claim limitation (App. Br. 6-7).
Specifically, the Specification discloses that after remote unit 14 provides a
request to the central unit 12 using communication channel “a” for direct
communication to remote unit 16, central unit 12 initiates the dedicated
wireless channel “f'” between the first remote unit 14 and the second remote
unit 16 (FF 1). Further, the Specification discloses that the remote units, 14
and 16, communicate directly on wireless channel “f,” wherein the
“requesting” remote unit 14 functions as a "temporary central unit" such that
the second remote unit 16 synchronizes to the first unit 14 (FF 1). We find
that this recitation provides adequate support for the claim limitation at
issue.
Therefore, because Appellants’ arguments have persuaded us of error
in the Examiner’s rejection of independent claims 11, 20, and 32 and that of
dependent claims 12-19, 21-27, 30, 31, 33, and 34 under 35 U.S.C. § 112,
first paragraph, we reverse the Examiner’s rejection.

Rejection of claims 1-3, 6-10, and 28-29 under 35 U.S.C.
§ 102(b) as being anticipated by Miyake
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 1 recites “wherein said central unit is capable of
assigning a dedicated communication channel for enabling direct
communication between selected ones of said at least two remote units upon
receiving a request from said first remote unit, said central unit assigning a
dedicated communication channel for enabling direct communication
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between said first and second remote units, said second remote unit
synchronizing to said first remote unit.”
We do not consider Appellants’ arguments to be persuasive to show
Examiner error. Specifically, we agree with the Examiner that Appellants’
argument that claim 1 recites that the second remote unit synchronizes to the
first remote unit during direct communication with the first remote unit
through the dedicated radio frequency connection is not commensurate with
the scope of the claim, since the claim limitations recited by Appellants are
not found within the claim limitation at issue (App. Br. 7, Ans. 10).
Representative claim 1 recites the “second remote unit synchronizing to said
first remote unit.” The claim does not recite how or when the
synchronization occurs. The claim is silent as to synchronization “during
direct communication” as asserted by Appellants (App. Br. 7).
Further, Miyake discloses that synchronization occurs between the
central unit and each remote unit continuously using a sync signal, wherein
the base station wirelessly transmits a sync signal to each radio
communication terminal (FF 2). Each terminal includes a means for
receiving a sync signal transmitted from the base station and a means for
directly communicating with another radio communication terminal by a
peer-to-peer communication link in synchronization with the sync signal
without using the base station (FF 2 (emphasis added)). Thus, each terminal
may be synchronized during a peer-to-peer communication session as
required by the claim.
We find that Miyake discloses the claimed “second remote unit
synchronizing to said first remote unit.” As a result, we will sustain the
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Examiner’s § 102 rejection of representative claim 1 and that of dependent
claims 2-3, 6-10, and 28-29.

Rejection of claims 11-27 and 30-34 under 35 U.S.C.
§ 103(a) as being anticipated by Miyake
We select claim 11 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 11 recites “wherein a first of said at least two
remote units is further capable of communication with a second of said at
least two remote units via a dedicated radio frequency connection assigned
by said central unit for enabling direct communication between said first
remote unit and said second remote unit, the second remote unit
synchronizing to said first remote unit during communication with said first
remote unit via the dedicated radio frequency connection.” Independent
claims 20 and 32 are similar in scope to representative claim 11.
We do not consider Appellants’ arguments to be persuasive to show
Examiner error. Specifically, we agree with the Examiner’s finding that,
although Miyake fails to disclose the remote units performing
synchronization on an assigned dedicated communication channel during
peer-to-peer communication, Morvan does disclose that the mobile terminals
are synchronized on the assigned dedicated communication channel during
peer-to-peer communication (Ans. 11). More particularly, Morvan discloses
that a first and second communication device, 4102 and 4103, may
communicate in confidential mode, wherein device 4102 automatically
switches into base station operating mode (FF 3). In base station operating
mode, device 4102 operates as a "new base station" after an assigned
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communication channel is established (FF 3). Morvan further discloses that
device 4103 starts a procedure for synchronizing itself with the “new base
station” 4102, after having performed a detachment procedure with the base
station (FF 3).
Therefore, we find that the Examiner has established the prima facie
obviousness of the claims, because the combination of Miyake and Morvan
discloses a cordless communication system that includes remote units that
are able to communicate directly with each other through an assigned
dedicated communication channel, wherein the units synchronize with each
other on the dedicated communication channel. As a result, we will sustain
the Examiner’s § 103 rejection of representative claim 11, and that of
independent claims 20 and 32 and dependent claims 12-19, 21-27, 30-31,
and 33-34.

CONCLUSIONS OF LAW
The Specification provides adequate support for synchronization on
the assigned dedicated communication channel.
Miyake discloses a central unit that assigns a dedicated
communication channel for enabling direct communication between a first
and second remote unit, wherein the second remote unit synchronizes to the
first remote unit.
The references disclose that the second remote unit synchronizes to
the first remote unit using the dedicated communication channel.

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ORDER
The Examiner’s rejection of claims 11-27 and 30-34 under 35 U.S.C.
§ 112, first paragraph is reversed.
The Examiner’s rejection of claims 1-3, 6-10, 28, and 29 under 35
U.S.C. § 102 is affirmed.
The Examiner’s rejection of claims 11-27 and 30-34 under 35 U.S.C.
§ 103 is affirmed.
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
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).

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AFFIRMED

ELD

STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005

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