Ex parte COMROE et al.

Board of Patent Appeals and Interferences

May 7, 1998

08030937 (B.P.A.I. May. 7, 1998)

Application for patent filed March 12, 1993.1
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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD A. COMROE, ROBERT W. FURTAW
ARUN SOBTI and JOHN E. MAJOR
__________
Appeal No. 96-1386
Application 08/030,9371
__________
ON BRIEF
__________
Before HAIRSTON, KRASS and FLEMING, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
As originally filed, this patent application contained 19
claims. Claims 15 and 16 were allowed in in the examiner’s
rejection (Paper No. 8) dated May 25, 1994. Claims 13 and 14
were canceled by appellant in a § 116 amendment (Paper no. 13½)
Appeal No. 96-1386
Application 08/030,937
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dated May 3, 1995. Claim 12 was allowed in the Examiner’s Answer
(Paper no. 20) dated September 21, 1995. Therefore, claims 1
through 11 and 17 through 19 are properly before us for our
consideration.
The invention relates to land mobile dispatch radio commu-
nication systems. In particular, Appellants disclose on pages 1
and 2 of the specification that unlike radio telephony systems,
where a user establishes contact with another party by inputting
a unique ID code, a telephone number, dispatch radios are pre-
programmed to automatically identify their transmissions as being
intended for reception by members of a particular pre-identified
fleet. The user need only actuate a push-to-talk (PTT) switch on
the radio and begin speaking. Appellants further disclose on
pages 2 and 3 of the specification that video transmission
systems using land mobile dispatch radio units are known.
However, Appellants point out that as of the date of the
filing of the application, a land mobile dispatch radio used
as a video modem is dedicated to this service and precludes the
radio's primary function of providing voice communications.
Appellants disclose that the problem that they solved is
integrating total communications capabilities including audio,
Appeal No. 96-1386
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video imaging and imaging display capabilities into a single land
mobile dispatch radio system that will not substantially distract
from the portability or utility of the communication unit while
maintaining compatibility with existing land mobile dispatch
radio channels.
On pages 4 through 7 of the specification, Appellants
disclose a block diagram of a two-way dispatch radio communi-
cation unit in accordance with the invention which is illustrated
in Figure 4. In particular, a radio transceiver for transceiving
dispatch communication is shown as element 408. A microphone 416
is coupled to the radio transceiver 408 for providing audible
messages to the radio transceiver 408 for transmission. A video
input system including an image sensor 108 and image memory 412
is coupled to the radio transceiver 408 for providing video
information to the radio transceiver 408 for transmission. A
control logic system 404 is coupled to the radio transceiver 408
for controlling operation of the radio transceiver 408 in two
modes of operation. In the first mode, the radio transceiver 408
transmits audible messages. In the second mode, the radio
transceiver 408 transmits video information. Appellants further
Appeal No. 96-1386
Application 08/030,937
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disclose that a push-to-talk switch 106 is coupled to the control
logic system 404 for selecting the two modes of operations.
The independent claim 1 is reproduced as follows:
1. A two-way dispatch radio communication unit, comprising:

A) radio transceiver means for transceiving dispatch
communications;
B) microphone means operably coupled to the radio
transceiver means for providing audible messages to the
radio transceiver means to allow transmission of the audible
messages;
C) video input means operably coupled to the radio
transceiver means for providing video information to the
radio transceiver means to allow transmission of the video
information;
D) control means operably coupled to the radio
transceiver means, for controlling operation of the radio
transceiver means in at least a first and second discrete
mode of operation, wherein:
i) in the first discrete mode of operation, the
radio transceiver means transmits the audible messages;
and
ii) in the second discrete mode of operation, the
radio transceiver means transmits the video
information;
E) push-to-talk switch means operably coupled to the
control means, for selecting the first and second discrete
modes of operation.
Appeal No. 96-1386
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The Examiner relies on the following references:
Brown 4,317,130 Feb. 23, 1982
Shimoda et al. (Shimoda) 4,985,755 Jan. 15, 1991
Claims 1 through 11 and 17 through 19 stand rejected under
35 U.S.C. § 103 as being unpatentable over Brown in view of
Shimoda.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
We will not sustain the rejection of claims 1 through 11 and
17 through 19 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
(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
Appeal No. 96-1386
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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).
The Examiner argues on page 5 of the answer that Brown
inherently teaches a radio dispatch communication unit capable of
audible transmission via a microphone means. The Examiner argues
that Brown discloses a typical and standard radio dispatch
communication unit and directs us to review column 2, lines 26-30
and column 3, lines 53 and 54 of Brown. The Examiner reasons
that all typical and standard radio dispatch communication units
have a microphone means coupled to the transceiver for
transmission of audio only mode. The Examiner concludes that it
would have been obvious to one skilled in the art to modify the
Brown video only mode radio dispatch communication unit to
provide an audible mode integrally housed together in the same
unit with the video transmission communication unit.
Appellants argue on pages 5 through 8 of the brief that
Brown and Shimoda fail to teach or suggest a microphone or a
Appeal No. 96-1386
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control means which provides a first discrete mode of operation
which transmits audible messages. Appellants agree that Brown
discusses a push-to-talk switch but argues that the teaching does
not suggest a microphone or a control means to provide a first
discrete mode of operation that transmits audible messages in
which the first mode of operation is discrete from the second
mode of operation that transmits video information as recited in
Appellants' claims. Appellants provide an affidavit in which
Daniel P. Brown, the inventor of the Brown patent, states that
the Brown patent does not contain a teaching of a microphone to
be included with the radio 22. Mr. Brown also states that the
push-to-talk switch is triggered electronically and is not
triggered by a switch in a microphone as done in the typical
communication units. Appellants also provide an affidavit in
which Gary Grube states that the Brown patent teaches a way to
use a typical and standard two-way FM radio to transmit video
data, as versus voice. Mr. Grube states that the Brown patent
teaches that the push-to-talk switch is selectively enabled so
that the data is ready and available for transmission.
In our own careful review of Brown, we find that Brown does
Appeal No. 96-1386
Application 08/030,937
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not teach or suggest a two-way dispatch radio communication unit
having a microphone and a control means for controlling operation
of the radio transceiver means in at least a first and second
discrete mode, wherein in the first discrete mode, the radio
transceiver means transmits audio messages and in the second
mode, the radio transceiver means transmits the video information
and the push-to-talk switch means for selecting the first and
second discrete modes of operation as recited in Appellants
claims. Brown teaches to those skilled in the art how to modify
a typical two-way dispatch radio communication unit to become a
dedicated two-way dispatch radio communication unit that only has
one mode in which video information is transmitted. See columns
1 and 2. Brown does not teach a modification in which typical
two-way dispatch radio communication retains its original
function of having a discrete mode for transmitting audible
messages. We agree that Brown does mention a push-to-talk switch
of a typical two-way dispatch radio in column 5, lines 52 and 53.
However, in column 5, lines 35-68, Brown teaches that the push-
to-talk switch is modified so that the PIA 34 keys the
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Application 08/030,937
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transmitter portion of FM radio 22 to a transmit condition, as by
controlling the push-to-talk microphone switch of a typical FM
radio. Thus, we fail to find that Brown teaches or suggests an
apparatus or method of transmitting audio and video information
in which audio information is transmitted as input through a
microphone when the push-to-talk switch is asserted in a first
manner and video information is transmitted as input through a
video input device when the push-to-talk switch has been asserted
in a second manner. Furthermore, we find that Shimoda fails to
supply this missing teaching.
In addition, the Examiner has to provide more evidence than
simply establishing that the Brown system could be modified to
obtain Appellants' 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). The
Examiner has not provided any evidence in the prior art that
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would have led those skilled in the art to make the Examiner's
proposed modification. Therefore, we find that the Examiner has
failed to establish that the prior art would have taught or
suggested to those skilled in the art to modify Brown's commu-
nication unit having one mode of operation of transmitting video
information to a communication unit having both a audible mode
of operation and a video mode of operation as recited in the
Appellants' claims by pointing to the express teachings or
suggestions found in the prior art.
We have not sustained the rejection of claims 1 through 11
and 17 through 19 under 35 U.S.C. § 103. Accordingly, the
Examiner's decision is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Appeal No. 96-1386
Application 08/030,937
11
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 96-1386
Application 08/030,937
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Donald B. Southard
Motorola, Inc.
1303 East Algonquin Road
Schaumburg, IL 60196