Ex Parte Karr

Patent Trial and Appeal BoardApr 11, 2016

12632271 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/632,271 12/07/2009 25006 7590 04/13/2016 DINSMORE & SHOHL LLP POBOX7021 TROY, MI 48007-7021 FIRST NAMED INVENTOR Lawrence J. Karr 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 ATTORNEY DOCKET NO. CONFIRMATION NO. LKR-10302/29 3510 EXAMINER TORRES, MARCOS L ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 04/13/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docket@patlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAWRENCE J. KARR Appeal2014-003930 1 Application 12/632,271 Technology Center 2600 Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and GARTH D. BAER, Administrative Patent Judges. BAER, Administrative Patent Judge. DECISION ON APPEAL 1 The inventor, Lawrence Karr, is also the real-party in interest. Appeal Br. 1. Appeal2014-003930 Application 12/632,271 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from the Examiner's final rejection of claims 1--40. Appeal Br. 2, 5---6. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. BACKGROUND A. The Invention Appellant's invention is directed to a "[frequency modulation ("FM")] alert system" that "includes a transmitter that transmits a signal on a normally inactive mono (L+R) in-band FM subcarrier, and a receiver that wakes up on a periodic basis to determine if the signal is present." Spec. i-f 32. Independent claim 1 is representative and reproduced below, with emphasis added to the disputed element: 1. An FM alert system, comprising: a transmitter transmitting a modulated alert signal followed by an alarm or data on a normally inactive in-band FM subcarrier, in-band in this context being defined as within the L+R mono audio baseband extending from about 20Hz to 15 kHz; and a receiver that performs the following functions: (a) self-energizes on a periodic basis to determine if the modulated alert signal is present and, if the alert signal is present, (b) receives the alarm or data. Appeal Br. 7 (Claims App.). 2 Appeal2014-003930 Application 12/632,271 B. The Rejections on Appeal The Examiner rejects claims 1-3, 9-10, 12-15, 18, 21-23, 29-30, 32- 35, and 38 under 35 U.S.C. Â§ 103(a) as unpatentable over Eisold (US 2007/0252688 Al, published Nov. 1, 2007), in view of Yang (US 6,088,577 A, issued July 11, 2000). Final Act. 4. The Examiner rejects claims 4--8, 11, 24--28, and 31 under 35 U.S.C. Â§ 103(a) as unpatentable over Eisold, in view of Yang, and further in view of Abbaszadeh (US 7 ,953, 781 B 1, issued May 31, 2011 ). Final Act. 6. The Examiner rejects claims 16-17 and 26-27 under 35 U.S.C. Â§ 103(a) as unpatentable over Eisold, in view of Yang, and further in view ofKedjierski (US 4,862,514, issued Aug. 29, 1989). Final Act. 7. The Examiner rejects claims 19-20 and 39-40 under 35 U.S.C. Â§ 103(a) as unpatentable over Eisold, in view of Yang, and further in view of Stem (US 5,090,026A, issued Feb. 18, 1992). Final Act. 7. 2 ANALYSIS A. Claims 1-3, 9-10, 12-15, 18, 21-23, 29-30, 32-35, and 38 Appellant argues that neither Eisold nor Yang discloses transmitting a modulated later signal followed by an alarm or data on a normally inactive mono (L+R) in-band FM subcarrier extending from about 20 Hz to 15 kHz, as claim 1 requires. Appeal Br. 3-5; Reply Br. 1-3. Appellant also argues that the Examiner has failed to provide a sufficient rationale as to why one 2 The Examiner withdrew the rejection of claims 1 and 21 under 35 U.S.C. Â§ 112, first paragraph in the Examiner's Answer. Ans. 2. 3 Appeal2014-003930 Application 12/632,271 of ordinary skill in the art would modify either the teachings of Eisold and Yang. Appeal Br. 3; Reply Br. 1-3. We do not find Appellant's arguments persuasive. The mere existence of differences between the prior art and the claim does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219, 230 (1976). Instead, the relevant question is "whether the difference between the prior art and the subject matter in question is a [difference] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art." Dann, 425 U.S. at 228 (internal quotations and citations omitted). The Supreme Court made clear that for obviousness, "the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the Examiner that Eisold teaches all the limitations of independent claims 1 and 21, except Eisold teaches an alert system that transmits a modulated alert signal with alert information at a frequency at an edge of the standard FM radio band rather than at a mono (L+R) in-band FM subcarrier extending from about 20 Hz to 15 kHz. 3 Final Act. 4; Ans. 3-5. We also agree with the Examiner that Yang teaches the aforementioned mono (L+R) in-band FM subcarrier. Final Act. 4; Ans. 3-5. Further, we agree with the Examiner that it would have been obvious for one of ordinary skill in the art at the time of the invention to modify Eisold's alert system to 3 We note that Eisold explicitly teaches that "other frequencies of operation" could be used, and the choice of frequency "is not that important." Eisold ,-r 54. 4 Appeal2014-003930 Application 12/632,271 transmit the modulated alert signal at the aforementioned mono (L+R) in- band FM subcarrier in light of Yang's teaching. Final Act. 4; Ans. 4. Such a modification is simply a substitution of one known element (i.e., a frequency at an edge of the standard FM radio band} for another (i.e., a mono (L+R) in-band FM subcarrier) to obtain predictable results. 4 KSR, 550 U.S. at 416. Accordingly, we sustain the Examiner's rejection of independent claims 1and21, and claims 2-3, 9-10, 12-15, 18, 22-23, 29-30, 32-35, and 38, not argued separately. B. Claims 4--8, 11, 24--28, and 31 Appellant argues that the use of binary phase-shift key ("BPSK") modulation is more than a mere design choice, and that the Examiner's 4 Appellant also argues that modifying Yang's paging system to use the mono (L+R) in-band FivI subcarrier would cause audio interference. Appeal Br. 4; Reply Br. 3. This argument is not persuasive for several reasons. First, the Examiner's modification is a modification of Eisold's alert system, rather than Yang's paging system to use the mono (L+R) in-band FM subcarrier. Final Act. 4. Second, Appellant has not provided sufficient evidence or technical reasoning to support the contention that modifying Yang's paging system to use the mono (L+R) in-band FM subcarrier would cause audio interference. Third, even if Appellant's argument is correct, such a modification would merely render Yang's paging system less desirable, which does not rise to the level of rendering the paging system wholly unsatisfactory for its primary purpose. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Circ. 2004) ("[t]he question is whether there is something in the prior art as a whole to suggest the desirability, and thus, the obviousness, of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available") (citation omitted, emphasis added). 5 Appeal2014-003930 Application 12/632,271 rationale for combining the teaching of Abbaszadeh with the teachings of Eisold and Yang is not legally sufficient. Appeal Br. 5; Reply Br. 3. We do not find Appellant's argument persuasive. The Examiner did not find that the use of BPSK is a mere design choice. Instead, the Examiner found that the claim limitation of baud selection, rather than the use of BPSK modulation, is a design choice within the skill of a person of ordinary skill in the art. Final Act. 6. Further, the Examiner found, and we agree, that Abbaszadeh explicitly teaches a system where a transmitted signal is BPSK modulated with a pseudo-noise ("PN") sequence length of (25-1) or 31. Final Act. 6; Ans.6. Thus, the Examiner's modification is a simple substitution of one known element (i.e., standard frequency shift key modulation) for another (i.e., BPSK) to obtain predictable results. KSR, 550 U.S. at 416. Appellant has not persuasively rebutted the Examiner's findings. Thus, we sustain the Examiner's rejection of claims 4--8, 11, 24-- 28, and 31. C. Claims 16-17 and 26-27 Appellant argues that the claimed "transmitted signal ... at 14 KHz" and "signals of 14.5KHz and 14.925KHz" are significant because "[a] heavily coded, in-band 14KHz data subcarrier at high deviation is dramatically ( 40db) more robust than RBDS signaling, and interferes less with program audio than the old EBS sequence." Appeal Br. 5. We do not find Appellant's argument persuasive. The argument does not address the Examiner's finding that Yang teaches a signal that is transmitted at 14 kHz. Final Act. 7. The argument also does not address the Examiner's finding that Kedjierski teaches two audio tones of 14 kHz and 23 kHz, and that 6 Appeal2014-003930 Application 12/632,271 modifying the frequencies of the two tones would yield no more than predictable results. Final Act. 7 (citing Kedjierski, 7:5-8). Thus, we sustain the Examiner's rejection of claims 16-17 and 26-27. D. Claims 19-20 and 39-40 Appellant argues that the Examiner's rationale for combining the teaching of Stem with the teachings of Eisold and Yang is insufficient. Appeal Br. 6; Reply Br. 4. We do not find Appellant's argument persuasive because the Examiner's modification is a simple substitution of one known element (i.e., standard frequency shift key modulation) for another (minimum-shift key modulation or continuous-phase modulation) to obtain predictable results. KSR, 550 U.S. at 416. Thus, we sustain the Examiner's rejection of claims 19-20 and 39--40. DECISION We affirm the Examiner's rejection of claims 1--40 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7