Ex Parte Mahany

Patent Trial and Appeal BoardNov 30, 2012

10684747 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RONALD L. MAHANY ___________ Appeal 2010-000786 Application 10/684,747 Technology Center 2600 ____________ Before DENISE M. POTHIER, JEFFREY S. SMITH, and ERIC B. CHEN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000786 Application 10/684,747 2 This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 11-20, 22-36, and 38-42. Claims 1-10, 21, and 37 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellant’s invention relates to a data transceiver module for digital data communications that includes a portable handheld data terminal having multiple data spread spectrum modes (i.e., direct sequence and frequency function modulation algorithms). (Abstract.) Claims 11 and 17 are exemplary, with disputed limitations in italics: 11. A portable data processing device sized to be carried by a human user comprising: a wireless radio transceiver arranged to transmit with a first type of spread spectrum modulation and a second type of spread spectrum modulation and to receive with the first type of spread spectrum modulation and the second type of spread spectrum modulation; and a controller arranged to automatically select one of the first type of spread spectrum modulation and the second type of spread spectrum modulation. 17. The device of claim 11 wherein the device comprises a laptop computer. Claims 17, 25, 33, and 41 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirements. Claims 11-15, 17-20, 22, 23, 25-31, 33-36, 38, 39, 41, and 42 stand rejected under 35 U.S.C. § 103(a) as being obvious over Smith (U.S. Patent No. 5,887,020; Mar. 23, 1999) and Morrow, Jr. (U.S. Patent No. 5,022,046; June 4, 1991). Appeal 2010-000786 Application 10/684,747 3 Claims 16, 24, 32, and 40 stand rejected under 35 U.S.C. § 103(a) as being obvious over Smith, Morrow, Jr., and Sheffer (U.S. Patent No. 5,131,019; July 14, 1992). ANALYSIS § 112, First Paragraph Rejection With respect to dependent claims 17, 25, 33 and 41, we are persuaded by Appellant’s arguments (App. Br. 14; see also Reply Br. 5) that these claims are enabled by the Specification. The Examiner found that “each of claims 17, 25, 33 and 41 recites that the device or circuitry is a laptop computer is not described in the specification, shown in the drawings, and recited in the original claims.” (Ans. 26; see also Ans. 3-4.) Accordingly, the Examiner concluded that such claims are “not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.” (Ans. 3.) We do not agree. The Examiner has not alleged any amount of experimentation that would be required, much less demonstrated an amount that would be undue, pursuant to supporting the legal conclusion of an enablement rejection. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (listing the factors to be considered to show undue experimentation and lack of enablement). Furthermore, Appellant’s Specification states that “[t]he transceiver module as shown in FIG. 9 [an exploded view of a radio module of the present invention] may be utilized in a standard desktop or portable computer such as a laptop computer” (emphases added). (Spec. 39:23-24.) Therefore, the Examiner has not met the initial burden of demonstrating that dependent Appeal 2010-000786 Application 10/684,747 4 claims 17, 25, 33, and 41 fail to satisfy the enablement requirement set forth under 35 U.S.C. § 112, first paragraph. Accordingly, we do not sustain the rejection of dependent claims 17, 25, 33, and 41 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. § 103 Rejection We are also persuaded by Appellant’s arguments (App. Br. 5-9; see also Reply Br. 2-4) that the combination of Smith and Morrow, Jr. would not have rendered obvious independent claim 11, which includes the limitation “a first type of spread spectrum modulation and a second type of spread spectrum modulation.” The Examiner found that the spread-spectrum signal despreader 215 of Smith corresponds to the claimed “first type of . . . modulation” and that the conventional narrow band signal demodulator 213 of Smith corresponds to the claimed “second type of . . . modulation.” (Ans. 4; Smith, col. 8, ll. 55-58.) The Examiner acknowledged that Smith does not disclose the limitation “a first type of spread spectrum modulation and a second type of spread spectrum modulation” and therefore, relied upon Morrow, Jr. for teaching a packet transceiver that outputs a non-spreading waveform. (Ans. 5, 13-14.) We do not agree that this combination teaches what is recited in claim 11. Morrow, Jr. “relates to a narrowband/wideband packet data communication system” (col. 1, ll. 12-13), in particular, “a new spread-spectrum packet radio system, which combines the best features of the previous protocols while avoiding some of their more significant Appeal 2010-000786 Application 10/684,747 5 disadvantages” (col. 5, ll. 30-33). Figure 1 of Morrow, Jr. illustrates a packet transceiver that operates in both narrowband and wideband. (Col. 6, l. 6 to col. 7, l. 1.) “In the narrowband mode, a sequence generator 22 outputs a non-spreading waveform; i.e., for direct-sequence, the ‘all ones’ code is produced, and for frequency-hopping, a single frequency is selected.” (Col. 7, ll. 1-4.) However, the Examiner’s modification of Smith substitutes the narrowband mode of Morrow, Jr. for the narrowband modulation of Smith. Furthermore, because the packet transceiver of Morrow, Jr. operates in both narrowband and wideband mode, Morrow, Jr. does not provide an express teaching of the limitation “a first type of spread spectrum modulation and a second type of spread spectrum modulation.” Therefore, we do not agree with the Examiner that the combination of Smith and Morrow, Jr. would have rendered obvious independent claim 11, which includes the limitation “a first type of spread spectrum modulation and a second type of spread spectrum modulation.” Accordingly, we do not sustain the rejection of independent claim 11 under 35 U.S.C. § 103(a). Claims 12-15, 17, and 18 depend from claim 11. Therefore, we do not sustain the rejection of claims 12-15, 17, and 18 under 35 U.S.C. § 103(a), for the same reasons discussed with respect to independent claim 11. Independent claims 19, 27, and 35 recite limitations similar to those discussed with respect to independent claim 11. We do not sustain the rejection of claims 19, 27, and 35, as well as dependent claims 20, 22, 23, 25, 26, 28-31, 33, 34, 36, 38, 39, 41, and 42, for the same reasons discussed with respect to claim 11. Appeal 2010-000786 Application 10/684,747 6 Claims 16, 24, 32, and 40 depend from independent claims 11, 19, 27 and 35 respectively. Sheffer was cited by the Examiner for teaching the additional features of these claims. (Ans. 6-7.) However, the Examiner’s application of Sheffer does not cure the above noted deficiencies of Smith and Morrow, Jr. DECISION The Examiner’s decision to reject claims 11-20, 22-36, and 38-42 is reversed. REVERSED kis