Ex parte WILLIAMS et al.

Board of Patent Appeals and Interferences

Aug 19, 1998

08242806 (B.P.A.I. Aug. 19, 1998)

Application for patent filed May 13, 1994. According to appellants,1
this application is a continuation of application 08/111,775, filed August 25,
1993, abandoned, which is a continuation of application 07/962,011, filed
October 15, 1992, abandoned, which is a continuation of application
07/831,628, filed February 6, 1992, abandoned, which is a continuation of
application 07/517,923 filed May 2, 1990, abandoned.
1
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(2) is not binding precedent of the Board.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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RONALD E. WILLIAMS, MICHAEL R. LEE and
DAN M. McDONALD
__________
Appeal No. 95-4897
Application 08/242,8061
__________
ON BRIEF
__________
Before KRASS, JERRY SMITH and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4897
Application 08/242,806
2
This is a decision on appeal from the final rejection of
claims 6 through 10. Claims 1 through 5 have been canceled.
The invention relates to the field of cellular
telephones. In particular, Appellants disclose on page 5 of
the specification that Figure 1 shows an embodiment of the
base station 100 implemented with three transceivers 121, 122
and 123, each switchable to a voice channel or to a control
channel. On page 7 of the specification, Appellants disclose
that Figure 3 shows the possible transceiver states of the
three transceivers. In particular, Appellants disclose that
the system allows for all three transceivers to be in the
voice channel state. This places the system in a busy state
because of unavailability of a control channel. The busy
state results in the system being unable to respond to an
incoming call. This is because there is a temporary
inactivation of the control channel because all three
transceivers are in the voice channel state.
The independent claim 6 is reproduced as follows:
6. A method for operating a radiotelephone base station
including one or more standard cellular telephone cell
site transceivers to allow standard cellular telephone
terminals to set up and communicate over a wire line,
said method comprising the steps of:
Appeal No. 95-4897
Application 08/242,806
3
A) tuning a first transceiver in said base
station unit to a control channel only if said
first transceiver is not engaged in voice
communications;
B) receiving a set up request from one of said
cellular telephone terminals over said control
channel;
C) signalling said cellular telephone terminal
to tune to a voice channel in response to
receiving said set up request;
D) tuning said first transceiver to said voice
channel regardless of whether this results in no
transceiver in said base station unit being
tuned to said control channel;
E) placing a wire line telephone call at said
base station unit in accordance with said set up
request;

F) communicating with said cellular telephone
terminal over said voice channel; and
G) tuning said first transceiver to said
control channel upon completion of said
communication only if no other transceiver in
said base station unit is then tuned to said
control channel.
The Examiner relies on the following references:
Kavehrad et al. (Kavehrad) 4,672,658 Jun. 09,
1987
Murata et al. (Murata) 4,939,785 Jul. 03,
1990
In the final action, claims 6 and 7 stand rejected under
Appeal No. 95-4897
Application 08/242,806
Appellants filed an appeal brief on January 9, 1995. We will refer to2
this appeal brief as simply the brief. Appellants filed a reply appeal brief
on April 24, 1995. The Examiner stated in the Examiner’s letter, mailed May
17, 1995, that the reply brief has been entered and considered but no further
response by the Examiner is deemed necessary.
4
35 U.S.C. § 103 as being unpatentable over Murata. Claims 8
through 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Murata and Kavehrad.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the briefs and answer for the2
respective details thereof.
OPINION
After a careful review of the evidence before us, we do
not agree with the Examiner that claims 6 through 10 are
properly rejected under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
Appeal No. 95-4897
Application 08/242,806
5
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
In regard to the rejection of claims 6 and 7 as being
unpatentable over Murata and the rejection of claims 8 through
10
as being unpatentable over Murata and Kavehrad, Appellants
argue
on pages 5 through 7 of the brief that Murata fails to teach a
temporary inactivation of the control channel. Appellants
argue that this feature is claimed in each of the independent
claims. Appellants state on the bottom of page 5 and on the
top of page 6 the following:
This feature, which will from time to time result in
temporary unavailability of the central channel, is
Appeal No. 95-4897
Application 08/242,806
6
recited in paragraph D of claim 6. Similar
recitations are contained in paragraph H of claim 8
and paragraph D(iii) of claim 10.
Appellants argue that Murata teaches to those skilled in the
art that at all times the control channel is monitored by a
transceiver. Appellants further argue Murata fails to suggest
to those skilled in the art to modify this requirement of
always monitoring the control channel by a transceiver.
Upon our review of Murata, we fail to find that Murata
teaches allowing the control channel to not be monitored as
recited in Appellants' claims. In the abstract, Murata makes
it clear that at least one of the connecting equipment units
is kept in the first control mode, a mode where the control is
monitored by the connecting equipment. In column 1, lines 45-
68, Murata points out that it is not desirable for the
connecting equipment
units to not always monitor the control channel because this
would result in prolongation of a response to the a call in
the control station. Murata states that this prolongation is
because the connecting equipment cannot respond to the call.
In column 2, lines 12-15, Murata states that it is the object
Appeal No. 95-4897
Application 08/242,806
7
of the invention to provide a control station which can always
monitor a control channel without any interruption of
monitoring the control channel. Murata teaches in column 5,
lines 13-24, that one connecting equipment unit always
monitors the control channel in each radio connecting section
in the radio communication network system illustrated in
Figure 1. In addition, upon a review of Kavehrad, we fail to
find any teaching or suggestion to allow the control channel
to not be monitored.
Furthermore, we fail to find any reason to modify Murata
to obtain Appellants' claimed invention. The Federal Circuit
states that "[t]he mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). Furthermore, rejecting patents solely
by finding prior art corollaries for the claimed elements
would permit an examiner to use the claimed invention itself
Appeal No. 95-4897
Application 08/242,806
8
as a blueprint for piecing together elements in the prior art
to defeat the patentability of the claimed invention. Such
an approach would be an illogical and inappropriate process by
which to determine patentability. IN RE DENIS ROUFFET, 97-
1492 (Fed. Cir. decided July 15, 1998).
We have not sustained the rejection of claims 6 through
10 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
Reversed
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-4897
Application 08/242,806
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Appeal No. 95-4897
Application 08/242,806
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