SOFTWARE RADIO TECHNOLOGY PLC et al.

Patent Trials and Appeals Board

Feb 4, 2020

90013498 - (D) (P.T.A.B. Feb. 4, 2020)

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.
90/013,498 04/29/2015 7512095 P257056.US.01 6156
20686 7590 02/04/2020
DORSEY & WHITNEY, LLP - Denver
INTELLECTUAL PROPERTY DEPARTMENT
1400 Wewatta Street
Suite 400
Denver, CO 80202-5549
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/04/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SHINE MICRO INC., MARK JOHNSON, and
SOFTWARE RADIO TECHNOLOGY PLC,
Appellants

Appeal 2020-000390
Reexamination Control 90/013,498
Patent 7,512,095 B2
Technology Center 3900

Before JOHN A. JEFFERY, MARC S. HOFF, and DENISE M. POTHIER,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This proceeding returns to us from a previous decision, dated August
24, 2017 (“Dec.”), where we affirmed the existing rejections of claims 1–15
and 24–26. Dec. 2, 33. Subsequent to the decision, certain claims have been
amended, canceled, and added. See Appeal Br. i–iii (Claims App.).1

1 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
January 17, 2019, the Advisory Action (Advisory Act.) mailed April 3,
2019, the Appeal Brief (Appeal Br.) filed June 17, 2019, the Examiner’s
Answer (Ans.) mailed July 31, 2019, and the Reply Brief (Reply Br.) filed
September 30, 2019.
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Pursuant to 35 U.S.C. § 134(b) and 306, Appellant2 appeals from the
final rejection of claims 1, 15, and 24–32. Id. at 3. Claims 2–14 and 16–23
have been canceled. Id. at i–ii (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b). We heard the appeal on January 13, 2020.
We affirm.
CLAIMED SUBJECT MATTER
United States Patent Number 7,512,095 B2 (“the ’095 patent”) is
entitled “Multiple Access Communications System for Moveable Objects.”
The ’095 patent, code (54). The ’095 patent relates to transmitting
“geographical position data of one or more moving or stationary objects, to
one or more other moving or stationary objects on the same communication
frequency without interfering with any other users[.]” Id. at 1:7–11.
Examples of moving or stationary objects include boats or ships (e.g., 20–
25). Id. at 1:61–63, 2:48-54, Fig. 1. “The present invention is a non-
complex data communication system that listens on a given RF [(radio
frequency)] frequency and transmits [its] own position data only when there
are no other user transmissions.” Id. at 1:22–25.
Amended independent claim 1 is reproduced below:
A radio communication system comprised of[:]
two groups of mobile radios,
wherein the first group of mobile radios utilizes a time
division multiple access (TDMA) protocol in which a radio
channel is divided into predetermined time slots, and the second
group of mobile radios is not utilizing the TDMA protocol,

2 Appellant identifies the real parties in interest as Shine Micro Inc., Mark
Johnson, and Software Radio Technology PLC. Appeal Br. 1. We use the
word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a)
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wherein the mobile radios of the second group
each comprise:
a transmitter;
a receiver; and
a transmission detector having an input connected
to a first output of the receiver and an output being
connected with a first input of the transmitter;
wherein the transmission detector[:]
is capable of detecting the predetermined time
slots utilized by the first group of radios and
is capable of scanning throughout a predetermined
portion of a time slot for the appearance of transmissions
initiated by other radios and when a transmission is
detected, the transmitter does not transmit its
navigational data and when a transmission is not
detected, the transmitter transmits navigational data.

Appeal Br. i (Claims App.) (bracketed language and underlining
omitted) (reformatted for clarity).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Fulthorp US 5,737,330 Apr. 7, 1998
ITU (International Telecommunications Union) Radiocommunication
Assembly, Recommendation ITU-R M. 1371-1 - Technical
Characteristics for a Universal Shipborne Automatic Identification
System Using Time Division Multiple Access in the VHF Maritime Mobile
Band 1–98 (1998-2001) (“ITU-RM 1371-1”)
REJECTIONS
Claims 1, 15, and 24–32 are rejected under 35 U.S.C. § 305 as
enlarging the scope of the claims of the patent being reexamined. Final Act.
5–7.
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Claims 1, 15, and 24–29 are rejected under 35 U.S.C. § 102(b)3 as
being anticipated by Fulthorp. Id. at 10–21.
Claims 30–32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fulthorp and ITU-RM 1371-1. Id. at 22–30.4
OPINION
I. PROCEDURAL MATTERS
A. Request for Remand
Appellant submits amendments to the claims (Reply Br., Apps. A–B)
and requests that we remand this proceeding to the Examiner for further
consideration “to the extent the Board continues to conclude the appealed
claims to be unpatentable.” Reply Br. 9 (citing 37 C.F.R. § 41.50(a)(1)).
Appellant asserts that the Examiner suggested amendments to the claims to
overcome the 35 U.S.C. § 305 rejection, which would render the rejection
moot and would place the claims in condition for allowance. Id. at 9–10.
Our regulations related to remands state that we “may . . . remand an
application to the examiner.” 37 C.F.R. § 41.50(a)(1) (emphasis added).
The regulations also state “the Board may relinquish jurisdiction to the
examiner” if “the Board determines that the file is not complete or is not in
compliance with the requirements of this subpart . . . .” 37 C.F.R. § 41.35(e)

3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’095
patent has an effective filing date before the effective date of the applicable
AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
103.
4 The rejections based on 35 U.S.C. § 112 (Final Act. 7–10) have been
withdrawn. See Advisory Act. 3–4.
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(emphasis added). Additionally, the Manual of Patent Examining Procedure
(MPEP) § 1211.02 states “[t]here is no obligation resting on the Board to
consider new or amended claims submitted while it has jurisdiction of the
appeal.” MPEP § 1211.02 (9th Rev. 08.2017 Jan. 2018) (citing In re Sweet,
136 F.2d 722 (CCPA 1943)).
We decline to exercise our discretion to remand this proceeding in this
instance. The Examiner disputes how certain phrases in the claim should be
construed but offers no precise claim language to overcome all the present
rejections. See Ans. 22–23 (discussing Fulthorp and stating “the claims
must be amended accordingly”), 27 (same), cited in Reply Br. 9–10. We
further do not find the file in this proceeding is incomplete or is not in
compliance with the requirements as set forth in 37 C.F.R. § 41.35(e), such
that a remand in this instance is warranted.
B. Finality
Appellant further contests the finality of the Office Action mailed
January 17, 2019. Reply Br. 10.
Appellant’s contentions related to finality are not within the
jurisdiction of the Board. See MPEP §§ 1002 and 1201; see also In re
Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (stating that there are many
kinds of decisions made by examiners, “which have not been and are not
now appealable to the board or to this court when they are not directly
connected with the merits of issues involving rejections of claims, but
traditionally have been settled by petition to the Commissioner.”) Instead,
these arguments relate to a petitionable matter. See MPEP §§ 706.07(c)
(addressing premature final rejections, indicating this question may not be
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advanced as a ground on appeal, and stating the question is reviewable by
petition under 37 C.F.R. § 1.1815) and 1002.02(c)(3)(a) (indicating petitions
related to the “prematureness” of a final rejection are decided by Technology
Center Directors). We therefore will not address this argument on appeal.

II. ENLARGING THE CLAIMS’ SCOPE – 35 U.S.C. § 305
The Examiner found that the amendments to independent claims 1,
15, and 26 are broader in scope than original claims 1–14 for several
reasons. Final Act. 5–6; see Ans. 4–20.
A. “[T]ransmission [D]etector”
The Examiner contends that the amended phrase “transmission
detector . . . is capable of detecting the predetermined time slots utilized by
the first group of radios” in claim 1 (Appeal Br. i (Claims App.)) broadens
its scope from the previously recited “means for detecting transmission
periods by a transmission detector” (“the previously recited ‘means’”) in
claim 1 (the ’095 patent 4:64–65). Final Act. 5–6. The Examiner
determines that claim 1 no longer recites the previously recited “means” (id.
at 5–6) and thus no longer limits the claims to the “specific structure” that
includes “hardware (e.g., circuitry) or a specially-programmed algorithm
that detects a time or interval when transmission occur” in the ’095 patent as
determined in our previous decision. Id. at 5–6 (quoting Dec. 8).

5 Appellant contested the finality in a submission entitled “Amendment and
Response to Final Office Action” (“Amendment and Response”) submitted
March 18, 2019. See Amendment and Response, 5–7.
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Appellant responds, contending the currently recited “transmission
detector” is narrower in scope than the previous recited “means” in two
aspects. Appeal Br. 16–19. First, Appellant argues that the recited
“transmission detector” is limited to hardware (e.g., circuitry) as opposed to
the previously recited “means,” which included both hardware and
specifically-programmed algorithms that detects a time or interval when
transmissions occur. Id. at 16–17; Reply Br. 5–7. In the Reply Brief,
Appellant supports this position by citing to Personalized Media
Communications. v. ITC, 161 F.3d 696, 704–05 (Fed. Cir. 1998), which,
according to Appellant, construed “the term ‘detector,’ although broad,” to
be “structural” and “not a generic structural term such as ‘means[.]’” Reply
Br. 6. Second, Appellant asserts the “transmission detector” is limited to
more specific functions, including “capable of detecting the predetermined
time slots utilized by the first group of radios” (Appeal Br. i (Claims App.))
as opposed to the previously recited “detecting transmission periods” (the
’095 patent 4:64). Appeal Br. 16–19. Appellant also states amending claim
1 from the transmission detector “scanning, within a predictable window of
time, for the appearance of transmissions” (the ’095 patent 5:1–2) to a
transmission detector “capable of scanning throughout a pre-determined
portion of a time slot for the appearance of transmissions” (Appeal Br. i
(Claims App.)) narrows claim 1’s scope. Appeal Br. 16, 19.
We agree with the Examiner that claim 1’s scope has broadened with
regard to the recited “transmission detector” for the following reasons.
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“No proposed amended or new claim enlarging the scope of a claim of
the patent will be permitted in a reexamination proceeding under this
chapter.” 35 U.S.C. § 305. The Federal Circuit has stated in this regard:
We have strictly interpreted § 305 to prohibit any broadening
amendments. The reexamined claim cannot be broader in any
respect, even if it is narrowed in other respects. Predicate
Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1303
(Fed. Cir. 2008). Therefore, while reexamination can make
certain changes in the patent, such changes are strictly
circumscribed by the original patent’s disclosure and claim
scope.
As a result, a reexamined patent claim cannot contain
within its scope any product or process which would not have
infringed the original claims. Id. Put another way, . . .
reexamination does not provide larger claim scope to a patentee
than the patentee had under the original patent claims.

Senju Pharm. Co., Ltd. v. Apotex, Inc., 746 F.3d 1344, 1352–53 (Fed. Cir.
2014).
Both Appellant and the Examiner agree that the new “transmission
detector” recitation in claim 1 no longer invokes 35 U.S.C. § 112, sixth
paragraph. Final Act. 5–6 (stating “claims 1, 15, and 26 no longer requires
‘means for detecting transmission periods . . .’” and “no longer includes . . .
‘hardware (e.g., circuitry) or a specially-programmed algorithm that detects
a time or interval when transmissions occur’”); Appeal Br. 17 (stating the
recitation “transmission detector” is “structure [that] is now limited to
hardware, i.e., a transmission detector, rather than the broader coverage of
both hardware and an algorithm . . .”). However, the Examiner and
Appellant disagree on whether this newly recited “transmission detector” is
broader or narrower in scope than the previously recited “means” in claim 1.
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In our earlier decision, we construed the previously recited “means” in
light of the Specification “to include structure, material, or acts and its
equivalents, including hardware, circuitry, or an algorithm, that detect a time
or interval when traffic is transmitting. This includes detecting energy (e.g.,
signal strength) of transmitted traffic for a time or interval. See the ’095
patent 1:44–45.” Dec. 14. As such, the broadest reasonable construction of
the previously recited “means” in claim 1 is the structure, material or acts
described in the Specification as performing the entire claimed function (i.e.,
detecting transmissions periods) and equivalents to the disclosed structure,
material or acts. See In re Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994).
On the other hand, the Federal Circuit has construed the term
“detector” in at least one instance as
not a generic structural term such as “means,” “element,” or
“device” . . . Instead, . . . “detector” had a well-known meaning
to those of skill in the electrical arts connotative of structure,
including a rectifier or demodulator. . . . Even though the term
“detector” does not specifically evoke a particular structure, it
does convey to one knowledgeable in the art a variety of
structures known as “detectors.” We therefore conclude that the
term “detector” is a sufficiently definite structural term to
preclude the application of § 112, ¶ 6.

Personalized Media Commc’ns, 161 F.3d at 704–05, cited in Reply Br. 6.
Based on the above understanding, the newly recited “transmission
detector . . . capable of detecting the predetermined time slots utilized by the
first group of radios” may include a variety of structures (e.g., circuitry),
which are not those described in the ’095 patent’s Specification or an
equivalent to the previously recited “means” in claim 1. From this
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perspective, we agree with the Examiner that the newly recited “detector”
appears to broaden claim 1.
However, the problem here is that the Specification provides little
details as to what structures (e.g., circuitry and its equivalents) perform the
function of “detecting transmission periods” in the previously recited
means,6 such that we can distinguish meaningfully between the previously
recited “means” and a “transmission detector” that possesses the functionally
defined limitation of being “capable of detecting the predetermined time
slots utilized by the first group of radios” as claim 1 now recites. For
example, “transmission detector 28” is shown as a box. The ’095 patent
3:17–18, Fig. 3. No further details regarding the detector are provided in the
Specification. See id.; see also Ans. 11 (stating the ’095 patent does not
address “any specific structure that performs the function[s] of detecting
transmission periods.”). Additionally, although contending the
“‘transmission detector’ is limited . . . to a specific type of hardware”
(Appeal Br. 17; see id. at 17–19), Appellant provides no examples from the
Specification (or otherwise) of what type of hardware would be
encompassed by the new “transmission detector” recitation. See Appeal Br.
17–19; see Oral Hearing Transcript mailed Jan. 24, 2020 (“Tr.”) 8–13
(discussing what the structure of a transmission detector is).
The ’095 patent further discusses “energy in the detection period” is
recognized (the ’095 patent 1:44–45, cited in Dec. 14), “each of the devices

6 Whether the previously recited “means” in claim 1 presented issues related
to lack of written description under 35 U.S.C. § 112, first paragraph was not
before us.
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. . . 10 include a unit for detecting free transmissions time within which a
transmitter can be activated” (the ’095 patent 2:63–65), and “[t]he system
will listen within a detection period of silence” (id. at 3:29–30). But, once
again, these passages provide little details as to the structure that performs
the previously recited “means” or that possesses the functionally defined
limitation of “detecting the predetermined time slots utilized by the first
group of radios” as claim 1 presently recites.
Thus, consistent with the Specification, whether or not some
programming (e.g., an algorithm) is required to detect the recited
“predetermined time slots utilized by the first group of radios” as newly
recited is not immediately apparent. See generally the ’095 patent. Given
the lack of structural details in the Specification and the black box
“transmission detector” in Figure 3, we are left to question whether the new
“transmission detector” recitation (i.e., “capable of detecting the
predetermined time slots utilized by the first group of radios”) should be
construed as a means-plus-function limitation. Appellant apparently
appreciates our dilemma, offering an alternative construction that the term
“detector” in claim 1 “is non-structural” and “would also invoke §112(f).”
Reply Br. 6. If construed in this fashion, Appellant argues the recited
“transmission detector” “points to the same corresponding structure in the
specification as the ‘means for detecting transmission periods,’ rendering the
‘means for’ language redundant, such that deleting the ‘means for’ language
does not broaden the scope. Rather, the scope remains the same . . . .” Id.
We agree that the structure, material, or acts to perform the function of
“detecting the predetermined time slots utilized by the first group of radios”
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(or its equivalents) as claim 1 presently recites (Appeal Br. i (Claims App.))
would most likely be the same as the structure, material, or acts to perform
the function of “detecting transmission periods” as claim 1 previously
recited (the ’095 patent 4:64).
In any event, Appellant further contends the newly recited limitation
of the “transmission detector . . . is capable of scanning throughout a
predetermined portion of a time slot for the appearance of transmissions” in
claim 1 (Appeal Br. i (Claims App.) (emphasis added)) is narrower than the
previously recited “transmission detector . . . scanning, within a predictable
window of time, for the appearance of transmissions” (the ’095 patent 5:1–2
(emphasis added)). Appeal Br. 18–19. Appellant asserts, in particular, that
the recited phrase “a predetermined portion of a time slot” (Appeal Br. i
(Claims App.)) is narrower than the previously recited “a predictable
window of time” (the ’095 patent 5:1–2). Appeal Br. 18–19. We disagree.
The Specification provides no examples of “a predictable window of
time,” but rather just discusses listening for “a predefined time period.” The
’095 patent, 1:25–26. Moreover, the newly recited claim limitation recites
“a predetermined portion of a time slot” (Appeal Br. i (Claims App.)
(emphasis added)), which does not have antecedent basis back to the
divided, “predetermined time slots” (id.). We thus disagree that the recited
“a predetermined portion of a time slot” as newly recited is limited to time
slots within a TDMA protocol as argued (see id. at 18–19), such that the
scope of claim 1 is narrower than the previously recited “predictable window
of time” (the ’095 patent 5:1–2). Rather, the record does not demonstrate
adequately whether or not “a predetermined portion of a time slot” as now
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recited in claim 1 is narrower in scope than the generally recited “predictable
window of time” as previously claimed.
Also, as emphasized above, claim 1 now recites scanning throughout
a predetermined portion of a time slot as opposed the previous recitation of
scanning within a predictable window of time. We previously construed the
recitation “within a predictable window of time” to mean scanning “during a
predictable window (e.g., before the end of the window) but . . . not
requir[ing] scanning for the entire ‘predictable window of time.’” Dec. 16
(emphasis added); see id. at 21–22. Appellant has not disputed this
understanding of the term “within.” On the other hand, “throughout” means
“all the way from one end to the other of” or “during the whole course or
period of.”7 Based on the above constructions and depending on the length
of the recited “predetermined portion of a time slot,” scanning during a
predictable window of time (e.g., before the end of the window) can be
viewed as narrow in scope than scanning throughout a predetermined
portion of a time slot. See Ans. 8–9 (addressing the “scanning” limitation
and stating the new recitation is viewed as broader in scope than what claim
1 previously recited).
For the above reasons, the recited “transmission detector . . . capable
of scanning throughout a predetermined portion of a time slot for the
appearance of transmissions” in claim 1 broadens aspects of claim 1 (Appeal
Br. i (Claims App.)), over the previously recited “transmission detector . . .

7 Throughout, Merriam-Webster.com, available at https://www.merriam-
webster.com/dictionary/throughout (defs. 1 and 2) (last visited Jan. 15,
2020).
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scanning, within a predictable window of time, for the appearance of
transmissions . . .” (the ’095 patent 5:1–2). Similar limitations are found in
independent claims 15 and 26 (Appeal Br. i–ii (Claims App.)) and thus these
amended claim limitations broaden aspects of claims 15 and 26.
B. “[M]obile [R]adios”
The Examiner also contends the amended language “two groups of
mobile radios” (Appeal Br. ii (Claims App.)) broadens the scope of
independent claims 1, 15, and 26 over the previously recited “several
moving participants . . . that are each equipped with a communication
device” (the ’095 patent 4:57–59). Final Act. 6; Ans. 14–19. The Examiner
contends the “‘mobile radios’” “are not necessarily ‘moving participants’, as
these ‘mobile radios’ may be either movable or stationary.” Final Act. 6.
The Examiner indicates “the ‘communication device’ is seen to be
equivalent to the now claimed ‘mobile radios[.]’” Ans. 14; see id. at 15–16,
18–19 (citing the ’095 patent 1:7–16, 59–63).
Appellant counters the previously recited “‘participants’ is a very
broad term that can include any component that participates in the
communication system, including, among others, radios.” Appeal Br. 20.
Appellant argues the only participants in the Specification capable of
transmitting and receiving communication is a radio and thus “mobile
radios” narrows the participants to two groups of radios. Id. at 20 (citing the
’095 patent 2:48–50). Appellant also argues the presently recited “two
groups” is narrower than the previously recited “several participants.” Id. at
20–21. Appellant further asserts the previously recited “moving” is broader
in scope than or has the same scope as the presently recited “mobile.” Id. at
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21–22 (citing Mobile, Oxford English Dictionary,
https://en.oxforddictionaries.com/definition/mobile8 and Gemstar-TV Guide
Int'l, Inc. v. ITC, 383 F.3d 1352, 13689 (Fed. Cir. 2004) (quoting Webster’s
Third New International Dictionary 1480 (1993)).
We agree with Appellant that Gemstar-TV found “[t]he ordinary
meaning of ‘moving’ is: ‘that is marked by or capable of movement: that is
not fixed or stationary.’ Gemstar-TV, 383 F.3d at 1368. As such, “moving
participants” in claim 1 may be construed to include those participants
capable of movement, and thus have a similar scope to the term “mobile.”
However, claim 1 was amended not just to replace “moving participants”
with “mobile radios.” Instead, claim 1 was amended, replacing the phrase
“several moving participants . . . that are each equipped with a
communication device . . . having a transmitter . . . and receiver” (the ’095
patent 4:57–61) with “two groups of mobile radios . . . , wherein the mobile
radios of the second group each comprise: a transmitter[ and] a receiver . . .”
(Appeal Br. i (Claims App.)). For the reasons below, we agree that the
newly recited claim enlarges the scope of the previously recited limitation.
The Specification describes and maps “a group of several moving
participants” or “a group of moveable participants” to elements 20–25. The
’095 patent 2:48–50, 2:66–67, Figs. 1–2. The disclosure of the ’095 patent
also discusses moving participants as “moveable object” and states the
objects include boats, ships, sailboat masts, or crab pot buoys. Id. at 1:61–

8 Appellant states Oxford English Dictionary defines “mobile” as “able to
move or be moved freely or easily.” Id. at 21.
9 Appellant mistakenly cites to page 1621. Id. at 22.
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63, 2:52–54. As such, consistent with the ’095 patent’s Specification, the
previously recited “moving participants” include boats, ships, masts, and
buoys.
Additionally, the Specification states “[e]ach one of the moving
participants shown in FIG. 1 could include a communication device 10
shown in FIG. 3.” Id. at 2:51–52, Fig. 3; see id. at 1:61–63, 2:48–54. The
Specification describes communication device 10 is “about the size of a
handheld flashlight” and performs a radio’s functions. Id. at 1:59–61,
3:9–18, Figs. 1–3. Based on the foregoing and consistent with the ’095
patent, the previously recited “communication device” for each of the
“several moving participants” (id. at 4:57–59) includes a communication
device that performs the radio functions separate from the boat or ship and
intended to be mounted on a moveable object (e.g., a boat).
Turning the presently recited “mobile radios,” we initially note that
neither the phrase “mobile radios” nor “mobile radio” appear in the
Specification. See generally id. On the other hand, one technical reference
defines “mobile radio” as “[r]adio communication in which the transmitter is
installed in a vessel, vehicle, or airplane and can be operated while in
motion.” Mobile Radio, MCGRAW-HILL DICTIONARY OF COMPUTING &
COMMUNICATIONS 240 (2003). Consistent with this definition, a “mobile
radio” in claim 1 is a radio that communicates using a transmitter and is
installed in a vessel, vehicle, or airplane. In the ’095 patent’s Specification,
communication device 10 is consistent with the above definition of a
“mobile radio,” because communication device 10 (1) contains an RF
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transmitter 1, (2) performs a radio’s functions, and (3) is installed in a vessel
(e.g., a ship or boat). The ’095 patent 1:59–63, 2:51–54, 3:9–18, Fig. 3.
Furthermore, based on the above understanding, the newly recited
“mobile radios” (Appeal Br. i (Claims App.)) encompass communication
devices, like communication device 10 described in the Specification,
whereas the previously recited “moving participants[,] . . . each equipped
with a communication device[,]” encompassed both vessels and
communication devices (the ’095 patent 4:57–59). That is, the presently
recited “mobile radios” now omits the previously recited “moving
participants,” which includes ships, boats, and other objects, and only
encompasses the previously recited “communication device.” Compare
Appeal Br. i (Claims App.), with the ’095 patent 4:57–59. The Examiner
also emphasizes this difference. See Ans. 13 (noting “there is no current
requirement that there are several moving participants . . . [,] each equipped
mobile radios for exchanging the information.”), 15 (stating “the scope of
amended claims 1, as well as claims 15 and 26, now does not require several
moving participants that are each equipped with the second group of
mobile radios.”). In this respect, amended claim 1 has enlarged the scope of
original claim 1 of the ’095 patent.
Accordingly, we determine the recited “two groups of mobile radios”
in claim 1, as well as commensurate limitations (Appeal Br. i–ii (Claims
App.)) in independent claims 15 and 26, broaden aspects of the claims over
the previously recited “several moving participants . . . that are each
equipped with a communication device” in original claim 1 (the ’095 patent
4:57–59).
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C. “[C]haracterized by a method, for detecting free transmission
periods . . . which control the transmissions of the transmitter”

Lastly, the Examiner finds that amended claims 1, 15, and 26 “now do
not recite the functionality of the ‘receiver’, whereby original patented claim
1 recited a ‘receiver characterized by a method for detecting free
transmission periods which control the transmissions of the transmitter’.”
Ans. 13 (underlining omitted). Appellant responds, arguing “[t]he claim
element ‘characterized by a method, for detecting free transmission periods
(8) which control the transmissions of the transmitter,’ describes the
communication system, not the receiver.” Reply Br. 8 (citing the ’095
patent 3:27–31). We agree with Appellant.
Prior to the amendment, claim 1 recited
[a] communication system comprising[:]
several moving participants (20, 21, 22, 23, 24, 25) that are
each equipped with a communication device (10) for exchanging
information having a transmitter, transmissions from said transmitter,
and receiver (1, 2)[,]
characterized by a method, for detecting free transmission
periods (8) which control the transmissions of the transmitter (1)[.]

The ’095 patent 4:57–63 (indentations and bracketing added for clarity). As
shown above and when considering the claim as a whole, the phrase
“characterized by a method, for detecting free transmission periods (8)
which control the transmissions of the transmitter (1)” modified the
“communication system,” not the “receiver” as the Examiner found.
Thus, contrary the Examiner’s findings and conclusions, omitting the
previously recited phrase “characterized by a method, for detecting free
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transmission periods . . . which control the transmissions of the transmitter”
from claim 1 does not omit a recited receiver functionality.
In summary, we determine amended independent claims 1, 15, and 26
enlarge the scope of original claim 1 in the ’095 patent, and thus, claims 1,
15, and 24–32 were properly rejected under 35 U.S.C. § 305. For the
foregoing reasons, Appellant has not persuaded us of error in the rejection of
independent claim 1 and claims 15 and 24–32, which are not argued
separately.

III. ANTICIPATION REJECTION
Claims 1, 15, and 24–29 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Fulthorp. Final Act. 10–21. Of interest, the Examiner
maps the recited “first group of mobile radios utilizes a time division
multiple access (TDMA) protocol in which a radio channel is divided into
predetermined time slots” in claim 1 to base stations 2 in Fulthorp. Final
Act. 10–11 (citing Fulthorp 4:41–42, 8:56–9:4, 14:48–56, Figs. 1–4). The
Examiner maps the recited “second group of mobile radios [which] is not
utilizing the TDMA protocol” in claim 1 to remote units 6 in Fulthorp. Id.
at 11.
A. Claims 1, 15, 26, 27, and 29
Appellant presents numerous arguments related to independent claims
1, 15, and 26. Appeal Br. 23–30. Among them, Appellant asserts base
stations 2 in Fulthorp, mapped by the Examiner to the “first group of mobile
radios,” cannot be a group of “mobile radios” as claim 1 recites. Id. at 23–
25. Specifically, Appellant contends base stations 2 in Fulthorp are “fixed
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location, ground based RF modems,” which are distinguishable from
“mobile” remote units 6 in Fulthorp that “are mobile RF modems . . .
installed in mobile vehicles, ships and aircraft . . .” (id. at 24 (citing Fulthorp
5:57–60, 19:53 and quoting 5:52–65 (bolding omitted))). For the following
reasons, we agree that base stations 2 in Fulthorp are not “mobile radios” as
claims 1, 15, and 26 recite.
A claim is given its broadest reasonable construction “in light of the
specification as it would be interpreted by one of ordinary skill in the art”
during examination. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citation omitted).
Initially, we disagree with the Examiner that the entire phrase,
A radio communication system comprised of two groups of
mobile radios, wherein the first group of mobile radios utilizes
a time division multiple access (TDMA) protocol in which a
radio channel is divided into predetermined time slots, and the
second group of mobile radios is not utilizing the TDMA
protocol, wherein the mobile radios of the second group each
comprise . . .

(Appeal Br. i (Claims App.)) is part of claim 1’s preamble and recites “the
purpose or intended use of the mobile radios.” Ans. 23; Advisory Act. 18.
Instead, like Appellant (Appeal Br. 27; Reply Br. 11), we find the phrase
“comprised of” in the above quoted portion of claim 1 to be a transitional
phrase (Appeal Br. 27), such that claim 1’s preamble is the recited “radio
communication system” and the remainder of the claim is part of claim 1’s
body. Thus, as claimed, claim 1’s system comprises two groups of mobile
radios, each mobile radio in the second group further comprising a
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transmitter, a receiver, and a transmission detector as recited. Id. at i
(Claims App.).
Additionally, we construe the disputed “mobile radio” in claim 1 in
light of the ’095 patent’s Specification and the ordinary artisan’s
understanding. Notably, the phrase “mobile radios” or “mobile radio” does
not appear in the Specification. See generally the ’905 patent. On the other
hand and as previously noted, one technical reference defines “mobile radio”
as “[r]adio communication in which the transmitter is installed in a vessel,
vehicle, or airplane and can be operated while in motion.” Mobile Radio,
MCGRAW-HILL DICTIONARY OF COMPUTING & COMMUNICATIONS 240
(2003). Consistent with this definition, a “mobile radio” in claim 1 is radio
that communicates using a transmitter and is installed in a vessel, vehicle, or
airplane. In the ’095 patent’s Specification, communication device 10 is a
“mobile radio” because it (1) contains transmitter 1, receiver 2, and
transmission detector 28, (2) performs a radio’s functions, and (3) is
installed in a vessel or vehicle, or airplane (e.g., a ship or boat). The ’095
patent 1:59–63, 2:51–54, 3:9–18, Fig. 3.
Various references also distinguish a “mobile station” from a “base
station.” For example, one source defines a “mobile station” similar to
MCGRAW-HILL DICTIONARY OF COMPUTING & COMMUNICATIONS as “a radio
station designed for installation in a vehicle and normally operated when in
motion” (Mobile Station, THE AUTHORITATIVE DICTIONARY OF IEEE
STANDARD TERMS 699 (7th ed. 2000)) and a “base station (mobile
communication)” as “[a] land station in the land-mobile service carrying a
radio communication service with mobile and fixed radio stations” (Base
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Station, THE AUTHORITATIVE DICTIONARY OF IEEE STANDARD TERMS 88
(7th ed. 2000). MCGRAW-HILL DICTIONARY OF COMPUTING &
COMMUNICATIONS also defines a “base station” as “[a] land station, in the
land mobile service, carrying on a service with land mobile stations” or “[a]
station in a land mobile systems which remains in a fixed location and
communicates with the mobile stations.” Base Station, MCGRAW-HILL
DICTIONARY OF COMPUTING & COMMUNICATIONS 28 (2003) (defs. 1 and 2).
Thus, as understood by an ordinary skilled artisan, a “base station” is land
station that ordinarily is in a fixed location and communicates with mobile
and fixed radio stations, and a “mobile radio” is a radio having a transmitter
for communication, designed for installation in a vehicle or vessel, and
normally operated in motion.
This interpretation is also consistent with the ’095 patent’s disclosure.
For example, the Specification describes communication device 10 as
having an RF radio transmitter 1, an RF radio receiver 2, and other circuitry.
The ’095 patent, 3:9–24, Fig. 3. The Specification also states the “receiver,
transmitter, and associated circuitry is mounted in a completely waterproof
housing about the size of a handheld flashlight” and “mounted on a
moveable or stationery object, such as a sailboat mast or crab pot buoy.” Id.
at 1:59–63. Thus, the recited “mobile radios” are consistent with
communication device 10 in the Specification as previously explained.
Given the above understanding, we agree that Fulthorp’s base station
2 are not “mobile radios” as argued. Appeal Br. 23–25. In particular,
Fulthorp’s component 2 is described as: (1) a base station (Fulthorp 5:54) as
opposed to a mobile station, and (2) typically at a fixed location (see id. at
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5:54–55, 19:38). For example, Fulthorp describes installing base stations 2
on mountain tops. Id. at 19:52–54. On the other hand, Fulthorp further
describes remote units 6—not base stations 2—as being designed for
installation in a vehicle and being mobile. Id. at 5:56–59, 5:63–65, Fig. 2.
Additionally, Fulthorp states that a single base station services remote units
6 with each cell C1–C7 (id. at 5:25–28, Fig. 1) and that remote units 6 can
switch communication to a new base station under certain conditions (id. at
7:1–9), suggesting that the base stations are fixed and typically not operated
while in motion. Thus, although base station 2 has a transmitter for radio
communications (id. at 2:30–34, 6:23–28), we agree with Appellant that
Fulthorp’s base stations 2 in Fulthorp are not “mobile radios” in light of the
Specification as the phase would be interpreted by an ordinary skilled
artisan, because they (1) are not radios or stations designed for installation in
a vehicle, and (2) do not normally operate in motion.
The Examiner nevertheless finds base stations 2 are reasonably
interpreted as “mobile radios,” because these stations communicate with
remote units and other base stations using “mobile radio frequency (RF)
communications.” Ans. 21 (quoting Fulthorp 1:31–33 and citing Fulthorp
6:21–40). As noted above, we agree that base stations 2 have a transmitter
to communicate using radio frequencies, which can be considered mobile RF
communications. Even so, the evidence of record fails to establish base
stations 2 in Fulthorp are designed for installation in a vehicle and normally
operate in motion as we interpreted the term “mobile radio.”
The Examiner further indicates Fulthorp states “[b]ase stations 2 are
typically fixed-location, ground based RF modems” (Fulthorp 5:54–55
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(emphasis added)). Ans. 21. Fulthorp thus suggests some base stations may
not be RF modems that are at fixed locations or are ground-based. See
Fulthorp 5:54–55. Even so, the evidence in this record does not sufficiently
demonstrate Fulthorp’s base stations normally operate in motion or are
designed for installation in a vehicle or vessel. See Appeal Br. 24 (arguing
base stations 2 are not mobile). Moreover, the possible connection between
base stations 2 and computer system 8 (e.g., a dedicated line, a microwave
link, or satellite link) in Fulthorp’s Figure 2 (see Fulthorp 5:37–40) do not
demonstrate base stations 2 (1) “would be ‘able to move’” as the Examiner
contends (Ans. 21), (2) normally operate in motion, or (3) are designed for
installation in a vehicle or vessel.
The Examiner, however, finds claim 1 and the recited “mobile radios”
“do[] not expressly require that any radios are actually ‘moving’.” Ans. 21.
We agree, but nevertheless determined previously the recitation “mobile
radios” requires the capability to operate in motion, unlike Fulthorp’s base
stations.
Additionally, the Examiner notes the ’095 patent describes “mobile
radios” as either moveable or stationary, and that certain circuitry is
mounted on a moveable or stationary object. Ans. 21–22 (citing the ’095
patent 1:7–16, 1:59–63). We acknowledge that the ’095 patent describes
“one or more moving or stationary objects” (the ’095 patent, 1:8–9), but we
disagree that these “objects” are describing a mobile radio based on our
discussed interpretation. Instead, as previously discussed, the ’095 patent
describes “moveable objects” as being synonymous with “moving
participants” 20–25. See id. at 2:48–52, Figs. 1–2. That is, the Specification
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describes “moving participants” 20–25 as “moveable objects” that “could
represent boats or ships.” Id. at 2:51–54. Granted, the Specification
describes communication device 10 may be mounted on a stationary object
and thus can be stationary itself (id. at 1:59–63), but this still does not show
Fulthorp’s base station 2 is a radio that is designed for installation in a
vehicle or vessel, consistent with a “mobile radio” as the term is understood
by an ordinary skilled artisan as previously discussed.
Because the argument concerning Fulthorp’s base stations is
dispositive, we need not reach Appellant’s remaining arguments related to
the prior art rejection.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 1, (2) independent claims 15 and 26,
which recite commensurate limitations, and (3) dependent claims 27 and 29
for similar reasons.
Claims 24, 25, and 28
Appellant separately argues dependent claims 24, 25, and 28. Appeal
Br. 30–31. Each of these claims ultimately depends from claim 1. Id. at ii
(Claims App.). For the reasons similar to those discussed related to claim 1,
we will not sustain the anticipation rejection of claims 24, 25, and 28.

IV. OBVIOUSNESS REJECTION
Claims 30–32 ultimately depend from claim 1 (id. at ii–iii (Claims
App.)) and are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Fulthorp and ITU-RM 1371-1. Final Act. 22–30. The rejection does not
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rely on ITU-R 1371-1 to teach or cure the features missing from Fulthorp
previously discussed. See id.
Accordingly, for the reasons similar to those discussed related to
claim 1, we will not sustain the rejection of claims 30–32.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 15, 24–32 305 Improper
Broadening,
Reexam
1, 15, 24–32
1, 15, 24–29 102 Fulthorp 1, 15, 24–29
30–32 103 Fulthorp, ITU-RM
1371-1
30–32
Overall
Outcome
1, 15, 24–32

REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

hh

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