Ex parte KING et al.

Board of Patent Appeals and Interferences

May 6, 1998

08115975 (B.P.A.I. May. 6, 1998)

Application for patent filed September 3, 1993. According to Appellants, this1
application is a continuation of 07/839,713, filed February 24, 1992, now abandoned, which is a
continuation of Application 07/545,157, filed June 28, 1990, now abandoned.
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law journal and (2) is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEFFREY S. KING
and SILVIA M. VITERI
_____________
Appeal No.95-3292
Application 08/115,9751
______________
ON BRIEF
_______________
Before URYNOWICZ, MARTIN and FLEMING, Administrative Patent Judges.
URYNOWICZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1, 2, 5, 7 and 9-12, all the claims pending
in the application.
Appeal No. 95-3292
Application 08/115,975
2
The invention pertains to a call receiver having selectable displays. Claim 1 is illustrative
and reads as follows:
1. A selective call receiver comprising:
means for receiving a first type message and a second type message wherein the first type
message being characterized by having a message length less than a predetermined threshold;
determining means, coupled to the receiving means, for determining whether the received
message is the first type message or the second type message in response to the message length of
the received message and the predetermined threshold;
a housing for enclosing the receiving means and the determining means therein, the
housing comprising:
first display means, positioned on and integrally coupled with a first surface of the housing
forming a portion of the surface thereof, for displaying the received first type message in response
to the determining means; and
second display means, positioned on and integrally coupled with a second surface of the
housing, for displaying the received second type message in response to the determining means;
and
a selector, coupled to the determining means, for selecting the second display means for
displaying the second type message, and for deselecting the second display means when the
second type message has been displayed for conserving battery power.
The references relied upon by the examiner as evidence of obviousness are:
Nakajima et al. (Nakajima) 4,477,807 Oct. 16, 1984
Ichikawa et al. (Ichikawa) 4,626,842 Dec. 02, 1986
Fujisaku et al. (Fujisaku) 4,684,935 Aug. 04, 1987
Ide et al. (Ide) 4,940,975 Jul. 10, 1990
Appeal No. 95-3292
Application 08/115,975
Although Ide is not mentioned in the examiner’s formal statement of the rejection of claim 5, it is2
apparent that this reference is applied to the claim for the same reason as it is applied to the other claims
of this group. Ide was applied against claim 1 and in the final rejection at page 5, the examiner stated,
“Claim 5 differs from claim 1 in that claim 5 further includes a transmitter with a decoding scheme prior
to transmitting any signals.” Thus, the appellants had notice of Ide with respect to claim 5.
Although Ide is not mentioned in the examiner’s formal statement of the rejection of dependent claim3
2, it is apparent that Ide is applied against claim 2 for the same reason as it is applied to claim 1, from
which it depends.
3
The appealed claims stand rejected as follows:
(a) claims 1, 5, 7 and 9-12 are rejected under 35 U.S.C. § 103 as unpatentable over
Ichikawa, Fujisaku and Ide.2
(b) claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over Ichikawa, Fujisaku, Ide
and Nakajima. 3
The respective positions of the examiner and the appellants with regard to the propriety of
these rejections are set forth in the final rejection (Paper No. 25), the examiner's answer (Paper
No. 31) and the appellants' brief (Paper No. 30).
Appellants' Invention
Appellants disclose a selective call paging receiver having first and second displays
positioned on first and second surfaces of a housing. The first display is relatively small and is for
displaying a first type message having a message length less than a predetermined threshold length
and the second display is larger for displaying a second type message having a message length
greater than the predetermined threshold length. The first display is deactivated when the second
type message is received. After the second type message has been displayed, the second display is
Appeal No. 95-3292
Application 08/115,975
4
deactivated to conserve battery power.
Appellants further disclose a paging transmitter. It comprises apparatus for transmitting
the first and second type messages to at least one call receiver. A determining means of the
transmitter determines whether the message to be transmitted is of the first or second type. An
encoding means, responsive to the determining means, encodes the message as the first type
message or the second type message for transmission to the at least one call receiver.
Opinion
Among other things, appellants maintain that there is no teaching or suggestion in the
prior art to combine Ichikawa and Fujisaku in the manner suggested by the examiner as to all of
the claims on appeal. The examiner asserts at page 4 of the examiner’s answer that since Fujisaku
teaches the use of two separate LCD displays to display graphic and character information, the
utilization of these features in Ichikawa would provide two independent LCDs in the pager
receiver of Ichikawa. Still further, in the sentence bridging pages 4 and 5 of the answer, it is
asserted that this would provide a first display means on a first surface and a second display means
on a second surface of Ichikawa’s pager receiver.
We agree with appellants’ position and will not sustain the rejection of the claims. The
examiner simply has not carried his burden of showing a teaching or suggestion in the prior art for
combining Ichikawa and Fujisaku. It has merely been shown that combining the two references
produces a significant part of the claimed invention. Having failed to establish the requisite
teaching or suggestion, a prima facie case of obviousness has not been established. In re Fritch,
Appeal No. 95-3292
Application 08/115,975
5
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-1784 (Fed. Cir. 1992).
Ichikawa discloses a paging receiver adapted to receive a radio-frequency paging signal
having a preamble, a subscriber’s address word and a message. The receiver includes a single
display unit, a memory for storing the message and a data processing unit. The data processing
unit detects a match between a received address word and a subscriber’s address word to store
the received message into memory, generates a numeral indicating the degree of freshness of the
received message, and detects whether the received message is greater in length than the capacity
of the display unit. The processing unit generates in response to the operation of a reset key, a
display with an indication of the presence of a message segment to be subsequently displayed if
the total length of the message is greater than the capacity of the display unit, or generates a
display including an indication that the message segment being displayed is a continuation from
the previously displayed message segment if the total length of the message is greater than the
capacity of the display unit.
Fujisaku relates to a display system comprising a first image memory storing first image
data, a second image memory storing second image data operable independently from the first
image memory, a display selection and combination circuit, and two liquid crystal display units.
Appeal No. 95-3292
Application 08/115,975
6
The display selection and combination circuit is connected to the first and second image memories
and it is formed such that the display units display a combination of data from the image memories
according to a display request. Usually, one of the first and second image memories stores
character information, such as letters and numerals, and the other stores graphic information, such
as figures and curves. The system is able to display graphic data and character data individually
or in combination, so as to prevent inadvertent deletion of character data due to interference from
graphic data or vice versa. In achieving his improvement, Fujisaku resorts to two display units
rather than the single display unit of the prior art.
Ichikawa addresses the problem of displaying a sender’s message on a single display unit
of a paging receiver, the display unit having a limited number of display segments available.
Ichikawa lacks any suggestion of using a plurality of display units, one to display a short message
and another to display a long message all at once, or of transmitting character and graphic data to
a paging receiver. Fujisaku teaches the use of plural display units in a display system designed to
prevent the inadvertent deletion of character and graphic data experienced in prior art display
systems. Although Fujisaku concerns the display of character and graphic data on separate
display units, it lacks any suggestion of transmitting character and graphic data in a paging system
from a transmitter to a receiver. Neither Ichikawa nor Fujisaku, alone or in combination, appears
to provide any incentive to combine their teachings. The inadvertent deletion of character and/or
graphic data, the problem which Fujisaku seeks to overcome, is not a problem in Ichikawa. Such
being the case, there appears to be no teaching or motivation which would have suggested to one
Appeal No. 95-3292
Application 08/115,975
7
of ordinary skill in the art to utilize the two LCDs of Fujisaku in Ichikawa.
We have not sustained the rejection of claims 1, 2, 5, 7 and 9-12 under 35 U.S.C. § 103.
Accordingly, the examiner’s decision is reversed.
REVERSED
STANLEY M. URYNOWICZ, JR.)
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS AND
JOHN C. MARTIN ) INTERFERENCES
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-3292
Application 08/115,975
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THOMAS G. BERRY
MOTOROLA, INC.
PATENT DEPT.
1500 GATEWAY BLVD.
BOYNTON BEACH, FL 33426-8292