Ex parte Takahashi

Board of Patent Appeals and Interferences

Oct 30, 1998

08139876 (B.P.A.I. Oct. 30, 1998)

Application for patent filed October 22, 1993. According to1
appellant, this application is a continuation of Application 07/790,177,
filed November 12, 1991.
1
Paper No. 29
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte KATSUMI TAKAHASHI
______________
Appeal No. 96-1489
Application 08/139,8761
_______________
ON BRIEF
_______________
Before THOMAS, KRASS, and CARMICHAEL, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1-6, which constitute all the claims
Appeal No. 96-1489
Application 08/139,876
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in the application.
Representative claim 1 is reproduced below:
1. A dual mode mobile telephone apparatus for
transmitting and receiving signals between a base station and
a mobile station using a radio line comprising:
a transmitting/receiving portion for transmitting and
receiving signals of different kinds of call modes, said
different kinds of call modes comprising a digital call mode
and an analog call mode;
an operation portion for assigning an available call mode
for the mobile station selected by the user from among said
different kinds of call modes;
a call mode detection portion for detecting the call mode
selected from among said different call modes;
a call mode store portion for storing the call mode which
is detected by the call mode detection portion; and
a response signal generating portion for receiving a
calling signal from the base station and generating a response
signal which is sent back to the base station in response to
the calling signal from the base station, said response signal
including the call mode detected by said call mode detection
portion.
The following references are relied on by the examiner:
Dahlin et al. (Dahlin) 5,119,397 June 2,
1992
(Filed 4/26/90)
Gillig et al. (Gillig) 5,127,042 June 30,
1992
(Effective filing date
9/23/88)
Appeal No. 96-1489
Application 08/139,876
3
Appeal No. 96-1489
Application 08/139,876
A new ground of rejection in the Answer was later2
withdrawn as indicated by the examiner in separate commun-
ications mailed on May 16, 1995 and July 25, 1995.
We have not considered the Reply Brief filed on April3
27, 1995 because the communication from the examiner on May
16, 1995, indicated the examiner had not entered it. However,
we have considered the Reply Brief filed on May 30, 1995,
since the examiner has noted its entry in the communication
from the examiner on July 25, 1995.
4
Claims 1-6 is rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Dahlin in
view of Gillig.2
Rather than repeat the positions of the appellant and the
examiner, reference is made to the Briefs and the Answer for3
the respective details thereof.
OPINION
We will not sustain the rejection of claims 1-6 under
35 U.S.C. § 103.
After a careful study of the positions of the appellant
and the examiner, as well as conducting a careful study of the
two references relied upon by the examiner in the rejection of
the claims on appeal, we conclude that we must reverse the
rejection. The examiner’s motivation rationale at pages 4 and
Appeal No. 96-1489
Application 08/139,876
5
5 of the Answer and the additional rationale in the responsive
arguments portion at page 9 of the Answer appear to us to be
conclusory
and presumptive. We do not understand from the examiner’s
position why the artisan would have found it obvious to have
used the capability of Gillig for the user to select between a
cordless and cellular telephone mode and to translate this
capability into an analog or digital selectability by the user
in the analog/digital phone in Dahlin. The examiner simply
has not developed any persuasive rationale for achieving this
modification in Dahlin from Gillig’s teachings other than
simply concluding that the user would therefor have the
ability to manually select analog or digital modes.
Additionally, to the extent the examiner’s position that
it would have been obvious to the artisan to make prior art
devices nonautomatic or manually operable when the prior art
teaches an automatic means to do so, or would have been
obvious to the artisan because it involves only routine skill
in the art, is also presumptuous and conclusory. Obviousness
within 35 U.S.C.
§ 103 requires some degree of rationale to support such a
Appeal No. 96-1489
Application 08/139,876
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conclusion, not merely per se rules, which rationale the
examiner has not persuasively argued to us.
The prior art relied upon by itself does not suggest the
desirability of the proposed modification. In re Fritch,
972 F.2d 1260, 1266, 23 F.2d 1780, 1783-84 (Fed. Cir. 1992).
In order for us to sustain the examiner’s rejection under
35 U.S.C. § 103, we would need to resort to speculation or
unfounded assumptions or rationales to supply deficiencies in
the factual basis of the rejection before us. In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968), rehearing denied, 390 U.S. 1000
(1968).
In view of the foregoing, the decision of the examiner
rejecting claims 1-6 under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
Appeal No. 96-1489
Application 08/139,876
7
ERROL A. KRASS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )

JDT/cam
Appeal No. 96-1489
Application 08/139,876
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Lawrence G. Norris
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