Ex Parte Cross

Board of Patent Appeals and Interferences

Dec 8, 2008

10042505 (B.P.A.I. Dec. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY J. CROSS
____________

Appeal 10/042,505
Application 2008-1001
Technology Center 2400
____________

Decided: December 8, 2008
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-7, 9-17, 19-27, 29 and 30, which are all of the claims
remaining in this application. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 10/042,505
Application 2008-1001

2
We reverse the Examiner’s rejections against claims 1-7, 9-17, 19-27,
29 and 30. We enter a new ground of rejection under 35 U.S.C. § 112,
second paragraph against claims 21-27, 29 and 30.

Invention
Appellant’s invention relates to a method, system and computer
program product for securing radio communications utilizing a conventional
radio. A conventional radio and a computer system are provided. The
computer system is separate and apart from the conventional radio. The
conventional radio is capable of receiving an input analog signal from a
microphone and then transmitting the input analog signal. The conventional
radio is incapable of encrypting the input analog signal. The computer
system is coupled between the microphone and the radio such that inputs
into the microphone are received first by the computer system. The
computer system receives an analog input from the microphone, encrypts the
input into an encrypted voice file utilizing public key encryption, and passes
the encrypted voice file into the microphone port of the radio. The radio
then transmits the encrypted voice file (Spec 4:3-19, Figs. 4 and 5).

Representative Claim
1. A method for securing radio transmissions utilizing a
conventional radio, said method comprising the steps of:

providing a conventional radio, said conventional radio
being incapable of encrypting or decrypting signals, said radio
including a conventional microphone port that is configured to
be coupled to a conventional microphone and a conventional
speaker port that is configured to be coupled to a conventional
speaker, said radio remaining unmodified;
Appeal 10/042,505
Application 2008-1001

3

providing a computer system coupled between a
microphone and said radio, wherein inputs into said radio are
received first by said computer system, said computer system
being separate and apart from said radio;

receiving, within said computer system, an input analog
signal from said microphone;

encrypting, within said computer system, said input
analog signal utilizing public key encryption to form an
encrypted voice file;

passing said encrypted voice file from said computer
system to said microphone port that is included within said
unmodified radio; and

transmitting said encrypted voice file utilizing said
unmodified radio, wherein radio transmissions from said radio
are secured.

Prior Art
The Examiner relies on the following references:
Ashby US 5,305,384 Apr. 19, 1994
Baugh US 5,815,553 Sep. 29, 1998
Herlin US 5,915,021 Jun. 22, 1999

Examiner’s Rejections
Claims 1-7, 9-17, 19-27, 29 and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Baugh, Herlin, and Ashby.1

1 The Examiner’s Answer does not repeat a 35 U.S.C. § 112, second
paragraph rejection from the Final Rejection. We conclude that the § 112
rejection has been withdrawn. See Ex parte Emm, 118 USPQ 180, 181 (Bd.
Appeal 10/042,505
Application 2008-1001

4
ISSUES
(1) Has Appellant shown the Examiner erred by failing to identify
a teaching of “providing a computer system coupled between a microphone
and said radio, wherein inputs into said radio are received first by said
computer system, said computer system being separate and apart from said
radio” in the prior art, as recited in claim 1?
(2) Has Appellant shown structure in the Specification that
performs all the functions recited in claims 21-27, 29, and 30?

FINDINGS OF FACT
1. The Examiner finds that Baugh and Herlin do not specifically
teach providing a computer system being separate and apart from said radio
(Ans. 5).
2. The Examiner finds that Ashby teaches “providing a computer
system coupled between a microphone and said radio, wherein inputs into
said radio are received first by said computer system, said computer system
being separate and apart from said radio (fig. 1, ref. num 12, separate from
other components)” (Ans. 5).
3. Fig. 1 of Ashby shows a communication device having a radio
interface (14) between a CPU (16) and a radio (12).
4. Fig. 2 of Ashby shows a microphone (38) as part of the radio
(12).

App. 1957) (rejection not referred to in the examiner’s answer is assumed to
have been withdrawn).

Appeal 10/042,505
Application 2008-1001

5
5. According to Ashby, when PTT (push-to-talk) on microphone
38 is activated, audio input is rerouted from terminal A of block 62 (Fig. 2)
to terminal A of controller 72 (Fig. 3). In normal mode, terminals A and B
are coupled such that analog voice from microphone 38 is returned directly
to terminal B of block 62 (Fig. 2) to modulator 44 for transmission over
radio channel 48. Ashby col. 21, ll. 16-33.
6. In the Ashby device secure mode, the analog signal is routed
from terminal A of block 62 (Fig. 2) through audio out 74 (Fig. 3) to device
10 (Fig. 1) for digitizing, voice coding, and encrypting. The resultant signal
is received at terminal B of block 62 (Fig. 2) for modulation and
transmission over radio channel 48. Ashby col. 21, ll. 34-55.
7. Fig. 4 of Ashby depicts a method of encoding voice using the
communication device of Fig. 1. The voice signal begins in analog form at
microphone 38. Ashby col. 21, ll. 56-59.
8. Figure 1 of Ashby does not teach providing a computer system
coupled between a microphone and a radio, wherein inputs into the radio are
received first by the computer system.

PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appeal 10/042,505
Application 2008-1001

6

Indefiniteness
Lack of any structure in the disclosure that corresponds to a claimed
“means” indicates that the claim fails to pass muster under 35 U.S.C. § 112,
second paragraph. See, e.g., Biomedino, LLC v. Waters Technologies Corp.,
490 F.3d 946, 953 (Fed. Cir. 2007); Atmel Corp. v. Information Storage
Devices, Inc., 198 F.3d 1374, 1381-82 (Fed. Cir. 1999); In re Dossel, 115
F.3d 942, 944-46 (Fed. Cir. 1997).

ANALYSIS
I. Section 103 rejection of claims 1-7, 9-17, 19-27, 29, and 30
Claim 1 recites providing a computer system coupled between a
microphone and said radio, wherein inputs into said radio are received first
by said computer system. With respect to “inputs,” claim 1 also requires an
input analog signal that is received within the computer system, encrypted
within the computer system into an encrypted voice file, and then passed
from the computer system to the microphone port that is within the radio.
We agree with Appellant to the extent that the rejection fails to show
that Ashby teaches the feature attributed to the reference; i.e., the computer
system coupled between a microphone and the radio, such that inputs into
the radio are received first by the computer system. Appellant thus has
demonstrated error in the Examiner’s prima facie case for obviousness of the
subject matter of claim 1.
Each of the other independent claims on appeal (11 and 21) recites
similar limitations to those of claim 1 for which the rejection has been
shown to be deficient. We therefore cannot sustain the rejection of claims 1-
Appeal 10/042,505
Application 2008-1001

7
7, 9-17, 19-27, 29, and 30 under 35 U.S.C. § 103 over Baugh, Herlin, and
Ashby.

II. New Ground of Rejection -- 37 C.F.R. § 41.50(b)
We reject claims 21-27, 29, and 30 under 35 U.S.C. § 112, second
paragraph as being indefinite.
Claims 21-27, 29, and 30 are in the form of “means-plus-function”
claims to be interpreted under 35 U.S.C. 112, sixth paragraph.
Independent claim 21 recites “instruction means for providing a
conventional radio . . . .” According to Appellant’s Summary of Claimed
Subject Matter, the structure corresponding to the “means” is described at
page 6, lines 7 through 15 and at page 1, lines 19 through 22 of the
Specification. (See Br. 7). We do not find disclosure of structure capable of
performing the claimed function, either in the lines relied upon by Appellant
or in the remainder of the disclosure.
Neither do we find, with respect to claim 21, corresponding structure
for the “instruction means for providing a computer system” as set forth in
the claim.
Dependent claim 26 recites two instruction means for providing a
second conventional radio and a second computer system. Neither of the
means appear to relate to any corresponding structure in the disclosure.
Claims 21-27, 29, and 30 thus fail to pass muster under 35 U.S.C. §
112, second paragraph.

Appeal 10/042,505
Application 2008-1001

8
CONCLUSIONS OF LAW
(1) Appellant has shown the Examiner erred by failing to identify a
teaching of “providing a computer system coupled between a microphone
and said radio, wherein inputs into said radio are received first by said
computer system, said computer system being separate and apart from said
radio” in the prior art.
(2) Claims 21-27, 29, and 30 are unpatentable under 35 U.S.C. §
112, second paragraph.

DECISION
The Examiner’s rejections of claims 1-7, 9-17, 19-27, 29, and 30 are
reversed.
In a new ground of rejection, we have rejected claims 21-27, 29, and
30 under 35 U.S.C. § 112, second paragraph as being indefinite.
In addition to reversing the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
Appeal 10/042,505
Application 2008-1001

9
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED
37 C.F.R. § 41.50(b)

msc

IBM CORP (YA)
C/O YEE & ASSOCIATES PC
P.O. BOX 802333
DALLAS TX 75380