Ex Parte Gopi

Patent Trial and Appeal Board

Sep 26, 2012

11704885 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PARAMESH GOPI
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Appeal 2011-006216
Application 11/704,885
Technology Center 2600
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Before, JAMESON LEE, STEPHEN C. SIU, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006216
Application 11/704,885

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SUMMARY

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-35. We have jurisdiction under 35 U.S. C. § 6(b). We
reverse.

STATEMENT OF THE CASE
Appellant’s invention concerns a cellular phone that includes a first wireless
transceiver that receives intermediate frequency (IF) signals. The IF signals are
based on frequency modulated (FM) signals that have been tuned and down-
converted from a radio frequency (RF) to an IF by a remote device. An FM
processing module receives the IF signals, converts the IF signals to baseband
signals, and generates processed FM signals. (Spec. ¶[0010].)
Claim 1 is illustrative.
1. A cellular phone comprising:
a first wireless transceiver that receives intermediate frequency (IF)
signals, said IF signals being based on frequency modulated (FM) signals
that have been received, tuned and down-converted from a radio frequency
(RF) to an IF by a remote device and transmitted to said cellular phone; and
an FM processing module that
receives said IF signals,
converts said IF signals to baseband signals, and
generates processed FM signals.

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Application 11/704,885

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THE REJECTIONS
Claims 1-31 of application 11/704,885 were provisionally rejected on the
ground of non-statutory obviousness-type double patenting as being unpatentable
over claims1-31 of co-pending Application No. 11/725,426.
Claims 1-35 were rejected under 35 U.S.C. 103(a) as being unpatentable
over US 6,134,437 (Karabinis) and further in view of US 6,658,267
B1(Baranowski).1

THE REJECTION UNDER 35 U.S.C. § 103(a)
CONTENTIONS
The Examiner finds that Karabinis discloses a cell phone with a wireless
transceiver that receives IF signals that have been tuned and down-converted from
RF to IF by a remote device and transmitted to the cell phone. (Ans. 5.) The
Examiner finds that Baranowski discloses frequency modulation (FM),
transmitting IF directly from the remote device to a cell phone, and an FM
processing module that receives the IF signal, converts the IF into baseband signal
and generates a processed FM signal. (Id.) The Examiner concludes that it would
have been obvious to combine Karabinis and Baranowski to reduce component
size and save cost. (Ans. 6.)
The Examiner finds that Karabinis does not disclose FM signals and an FM
processing module, Appellant contends that Karabinis cannot disclose (i) a

1 The Examiner’s Answer indicates that claims 1-31 are rejected under 35 U.S.C.§
103(a). However, the details of the rejection include the basis of rejection of
claims 1-35 under 35 U.S.C.§ 103(a) (Ans. 5-9) and indicates that the Appellant’s
statement of the grounds of rejection in the Appeal Brief (claims 1-31
provisionally rejected for obviousness type double patenting and claims 1-35
rejected under 35 U.S.C. § 103 (a)) is correct. Therefore, we address claims 1-35
under 35 U.S.C. §103(a).
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wireless transceiver of a cell phone that receives IF signals, which are based on FM
signals that have been tuned and down-converted from a RF to an IF by a remote
device; and (ii) an FM processing module of a cellular phone that receives the IF
signals, converts the IF signals to baseband signals and generates processed FM
signals. (App. Br. 10.)
Appellant further contends that Baranowski does not disclose a cellular
phone with a wireless receiver that receives IF signals. Citing column 3, lines 38-
39, and col. 4, line 27 – column 5, line 13 of Baranowski, Appellant argues that
Baranowski teaches a cell phone that receives RF, down-converts the received RF
or FM signals and transmits modulated FM signals to a headset, rather than
converting them to baseband. (App. Br. 11, 13.) Appellant contends that
transmitting modulated FM signals from the cell phone to a headset is the opposite
of the claimed cellular phone which receives IF signals with FM content from a
remote device, such as a headset. (App. Br. 12.) Thus, Appellant contends that
Baranowksi does not teach the first or second claim elements.
The Examiner finds that Karabinis teaches a short range low power
communications link in which a cellular phone and satellite phone communicate by
receiving RF transmissions from the satellite, down-converting the signal and
remodulating it to transmit to the cellular handset, while Baranowski teaches a
communications scheme in which FM is transmitted from a remote device to a
transceiver. (Ans. 10.)
Appellant contends that the combination of Karabinis and Baranowski does
not teach receiving RF signals with FM content at a remote device, down-
converting the RF to IF and transmitting the IF to a cellular phone as claimed.
(App. Br. 14, Reply Br. 5.) Appellant notes that Karabinis is directed to
forwarding calls between satellite and cellular phones, while Baranowski is
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directed to transferring FM signals from a cellular phone to a headset and neither is
directed to transferring FM-based IF from a remote device to a cellular phone.
(Reply Br. 5.)

ANALYSIS
Appellant notes that claims 1, 12 and 21 include similar limitations and that
dependent claims 2-11, 13-20, and 22-35, which ultimately depend from claims 1,
12 and 21 respectively, are allowable for similar reasons (App. Br. 14-15).
Therefore, we direct our analysis to claim 1 as representative of all the claims.
Karabinis discloses a cell phone which communicates with a satellite phone
over a low power microwave link. (Col. 2, ll. 54-58.) Baranowski teaches a
wireless telephone unit that receives radio broadcasts and telephone calls, and
wirelessly transmits them to a headset unit. (Col. 3, ll. 24-30.) At column 3, line
31-35 Baranowski discusses the phone unit wirelessly transmitting a wireless
telephone signal or radio signal to the headset. At col. 3, lines 31 – 40,
Baranowski teaches that the phone receives FM radio broadcast signals.
Baranowski discloses communicating from the cell phone to the headset at column
4, lines 1- 62. Here Baranowski teaches communicating between the phone and
the headset using an FM carrier signal, preferable at a frequency of 400MHz or
more (but possibly within the FM broadcast band, e.g. 100 MHz). (See also, col.
4, ll. 58-60.) Broadband demodulaton takes place in the headset. (Col. 5, ll. 1-2.)
One difference between Baranowski and the claimed invention is that in
Baranowski the cell phone transmits an FM modulated signal to the headset, while
in the claimed invention a remote device - such as a radio station - transmits an FM
modulated IF to the cell phone.
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The Examiner maps the claimed remote device to the satellite phone 110 in
Karabinis. (Ans. 9.) Karabinis teaches that the satellite phone (remote device)
communicates with the cell phone 105 over a microwave link 125 and does not
mention FM modulation of an IF signal, nor does Karabinis disclose any circuitry
for processing an FM modulated signal. (Ans. 9, 10.)
The Examiner also maps the claimed remote device to the phone unit 100 in
Baranowski (Ans. 10). Since claim 1 recites the cell phone receiving an FM
modulated IF that was generated at a remote device, the Examiner’s mapping of
the cell phone to the remote device with respect to Baranowski suggests that the
claimed cell phone receives a signal from itself. Instead, Baranowsi discloses that
the cell phone receives a commercial band FM radio signal, converts it to an IF and
transmits the converted IF to a headset. Baranowski does not teach the cell phone
receiving an FM modulated IF signal from a remote device.
Thus, we agree with Appellant that an element of claim 1 is not found in the
references and that the Examiner’s manner of combining prior art teachings would
not have resulted in the claimed invention. The rejection of claims 1-35 is
reversed.

THE DOUBLE PATENTING REJECTION
Appellant urges reversal of the provisional non-statutory obviousness type
double patenting rejection, noting that the February 3, 2007 filing date of the
present application is earlier than the March 19, 2007 filing date of co-pending
application 11/725,426, which forms the basis of the provisional obviousness type
double patenting rejection. (App. Br. 7). Appellant indicates that upon removal of
the non-statutory obviousness type double patenting rejection, upon receipt of a
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notice of allowance in co-pending application 11/725,426, Appellant will file a
terminal disclaimer in that application. (App. Br. 8).
Appellant has not made any arguments concerning the substance of the non-
statutory obviousness double patenting rejection. The claims in co-pending
application 11/725,426 were last amended on January 27, 2012. An appeal brief
was filed in co-pending application 11/725,426 on August 13, 2012. Both dates
are later than the date of Appellant’s Reply Brief in this case. An Examiner’s
Answer has not yet been mailed in the appeal in the co-pending application.
Having reversed the rejections under 35 U.S.C. § 103(a) in this case, and not
having before us the co-pending application, in which some of the claims may be
different from those which form the basis of the rejection, we do not reach the
issues of obviousness type double patenting. See, Ex parte Moncla, 95 U.S.P.Q.2d
1884 (Bd.Pat.App. & Interf. 2010), 2010 WL 2543659.

ORDER
The rejection of claims 1-35 under 35 U.S.C. 103(a) as being unpatentable
over Karabinis and Baranowski is reversed.

REVERSED

KMF