Ex parte WANG

Board of Patent Appeals and Interferences

Aug 25, 1998

08246387 (B.P.A.I. Aug. 25, 1998)

Application for patent filed May 20, 1994. According to1
the appellant, the application is a continuation-in-part of
Application No. 08/165,568, filed December 13, 1993, which is
a continuation of Application No. 07/947,695, filed September
21, 1992.
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journal and (2) is not binding precedent of the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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT C. WANG
____________
Appeal No. 96-0273
Application No. 08/246,3871
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON and BARRETT, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 10. In an Amendment After Final (paper number 20),
Appeal No. 96-0273
Application No. 08/246,387
2
claim 7 was amended. Claims 11 and 12 have been found to be
allowable over the prior art of record.
The disclosed invention relates to a method and system
for detecting the presence of a Supervisory Audio Tone (SAT)
superimposed on a voice/data signal.
Claims 1 and 9 are illustrative of the claimed invention,
and they read as follows:
1. A method for detecting the presence of a Supervisory
Audio Tone (SAT) when the SAT is superimposed on a Frequency-
Modulated (FM) voice/data signal to yield a combined signal
which is periodically sampled, comprising the steps of:
(a) receiving successive samples of the combined
voice/data and SAT signal such that noise associated with said
combined
signal is suppressed and the combined signal is captured when
the signal power of the combined signal exceeds the power of
the noise and the combined signal is suppressed and the noise
is captured when the power of the noise exceeds the power of
the combined signal;
(b) deleting the voice/data signal from a sample
containing the combined voice/data and SAT signal so that only
the SAT remains:
(c) determining the signal power of the SAT;
(d) determining the noise power of the SAT, the SAT
noise power moving in an opposite direction from the SAT
signal power; and
(e) comparing the signal power to the noise power of the
SAT to determine if the signal power of the SAT exceeds the
noise power of the SAT as occurs when the SAT is present.
Appeal No. 96-0273
Application No. 08/246,387
3
9. A system for detecting the presence of a Supervisory
Audio Tone (SAT), when superimposed on a voice/data signal, to
yield a combined signal which is periodically sampled,
comprising:
(a) means for deleting the voice/data signal from a
sample of the combined voice/data and SAT signal so that only
the SAT remains;
(b) means for determining the signal power of the
remaining SAT;
(c) means for determining the noise power of the
remaining SAT; and
(d) means for comparing the SAT signal power to the SAT
noise power to determine if the signal power of the SAT
exceeds the noise power of the SAT as occurs when the SAT is
present in the combined signal.
The references relied on by the examiner are:
Wang 5,001,742 Mar.
19, 1991
Taub et al. (Taub), “Principles of Communication Systems,
Chapter 14: Communication System and Noise Calculations,”
pages 610 through 633, 1986.
Claims 1 through 8 stand rejected under the first
paragraph of 35 U.S.C. § 112 as being based upon a non-
enabling disclosure.
Claims 1 through 8 stand rejected under the second
paragraph of 35 U.S.C. § 112 as being indefinite for failing
Appeal No. 96-0273
Application No. 08/246,387
4
to particularly point out and distinctly claim the subject
matter which appellant regards as the invention.
Claims 1 through 6, 9 and 10 stand rejected under 35
U.S.C. § 103 as being unpatentable over Wang in view of Taub.
Reference is made to the brief and the answer for the
respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse all of the rejections.
Tbe rejections under the first and second paragraphs of
35 U.S.C. § 112 stem from appellant’s use of the phrase “the
SAT noise power moving in an opposite direction from the SAT
signal power” (claims 1 and 7). According to the examiner
(Answer, pages 3 and 7), “[t]he method does not make or cause
the SAT noise power to move in an opposite direction from the
SAT signal power,” because the movement of the signals in the
opposite direction “is a natural phenomenon and which is not
done by the method.”
In response to the lack of enablement rejection,
appellant argues (Brief, pages 3 and 4) that:
Appeal No. 96-0273
Application No. 08/246,387
5
Appellant’s specification contains a complete
and full written description of appellant’s
invention and the method of making and using it so
as to comply with 35 U.S.C. 112. In particular,
appellant’s specification contains a description of
the manner in which the SAT noise power and SAT
signal power move in opposite directions. As
discussed at page 2 of appellant’s specification, FM
radio receivers (such as the type used in cellular
and wireless communications) generally exhibit a
phenomenon known as the “FM capture effect”. This
phenomenon causes the radio receiver to suppress the
noise when the power of the signal is greater than
the noise. Conversely, when the noise is greater
than the signal, the noise predominates, causing the
receiver to suppress the signal. This phenomenon is
depicted graphically in FIG. 3 and is further
discussed at pages 5 and 6 of appellant’s
specification.
Appellant’s response (Brief, page 4) to the
indefiniteness rejection is that:
Appellant’s claims comply with 35 U.S.C. 112,
second paragraph, because the claims clearly and
distinctly point out what appellant regards as his
invention. In particular, the claims are not
confusing regarding movement of the SAT noise power
and SAT signal power despite the examiner’s
contentions to the contrary. As discussed above
with respect to the
35 U.S.C. 112, first paragraph, rejection of
appellant’s claims, the movement of the SAT noise
power and SAT signal power in opposite directions
stems from the FM capture effect associated with FM
receivers. This effect is inherent with FM
receivers and is not directly attributable to
appellant’s method, let alone appellant’s step of
determining the SAT noise and signal power. Rather,
appellant’s method takes advantage of this
Appeal No. 96-0273
Application No. 08/246,387
6
phenomenon to provide a rapid and reliable method of
detecting the presence of the SAT. Appellant has
chosen to recite the opposite movement of the SAT
noise power and SAT signal power in the step of
determining the SAT noise power to assure proper
antecedent basis. Obviously, appellant could not
have recited that the SAT noise power and SAT signal
power move in opposite directions without having
recited the step of determining the SAT noise power
in the first place. As presently written, claims 1
and 7, and those that depend therefrom, clearly and
concisely point out what appellant regards as his
invention.
Although the “FM capture phenomenon” (specification, page
2) causes the SAT signal power and the SAT signal noise power
to move in opposite directions, appellant can still properly
claim the inherent by-product of the “FM capture phenomenon”
as part of his overall method of detecting the presence of the
SAT. Thus, we agree with appellant that the claims on appeal
fully comply with the first and second paragraphs of 35 U.S.C.
§ 112. The rejections of claims 1 through 8 under the first
and second paragraphs of 35 U.S.C. § 112 are reversed.
In formulating the obviousness rejection, the examiner
recognized (Answer, page 5) that Wang does not compare the SAT
signal power to the SAT signal noise power. Wang compares the
SAT signal power to a threshold value (column 5, line 51; and
Appeal No. 96-0273
Application No. 08/246,387
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column 8, lines 35, 36, 43, 65 and 67). The examiner is of
the opinion (Answer, page 5) that:
[I]t would have been obvious to one of ordinary
skill in the art at the time the invention was made
to incorporate the well known use of determining the
noise power of a signal and comparing the signal
power to the noise power, as evidence [sic,
evidenced] by Taub et al, in the method for
detecting the presence of a SAT signal for the
purpose of determining the minimal transmission
power and reception capabilities of the SAT signal
in order to detect a SAT signal superimposed on a
voice/data signal.
We agree with the examiner (Answer, page 10) that Taub
provides evidence (page 610) that it is well known in the art
to compare a signal power to a noise power to derive a signal-
to-noise ratio. On the other hand, we do not agree with the
examiner that it would have been obvious to one of ordinary
skill in the art to modify Wang with the signal-to-noise ratio
teachings of Taub because Wang already compares the SAT signal
power to a threshold value. The idea to collect SAT signal
noise power, and to then use it in a comparison step of a
method for detecting the presence of the SAT signal comes from
appellant’s disclosed and claimed invention, and not from the
applied references. The obviousness rejection of claims 1
through 6, 9 and 10 is reversed because a prima facie case of
Appeal No. 96-0273
Application No. 08/246,387
8
obviousness can not be established using impermissible
hindsight.
Appeal No. 96-0273
Application No. 08/246,387
9
DECISION
The decision of the examiner rejecting claims 1 through 8
under the first and second paragraphs of 35 U.S.C. § 112 is
reversed, and the decision of the examiner rejecting claims 1
through 6, 9 and 10 under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 96-0273
Application No. 08/246,387
10
S. H. Dworetsky
AT&T Bell Laboratories
600 Mountain Ave.
P.O. Box 636
Murray Hill, NJ 07974-0636
Appeal No. 96-0273
Application No. 08/246,387
11
KWH/jrg
JENINE GILLIS
Appeal No. 96-0273
Serial No. 08/246,387
Judge HAIRSTON
Judge BARRETT
Judge THOMAS
Received: 20 Aug 98
Typed: 21 Aug 98
DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 2608
Index Sheet-2901 Rejection(s): ___________
Acts 2: ____
Palm: ____

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