Ex Parte Almeda et al

Patent Trials and Appeals Board

Jun 5, 2019

14465025 - (D) (P.T.A.B. Jun. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/465,025 08/21/2014 James R. Almeda
16621 7590 06/07/2019
Morris & Kamlay LLP / 030120
1911 Fort Myer Drive
Suite 1050
Arlington, VA 22209
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.
030120-259840US 5172
EXAMINER
LAM,DUNGLE
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
06/07/2019 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):
pto@morriskamlay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES R. ALMEDA and
GLEN THOMAS LINDAHL
Appeal2018-008334
Application 14/465,025
Technology Center 2600
Before JUSTIN BUSCH, JAMES W. DEJMEK, and JOYCE CRAIG,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b ).
We affirm-in-part and enter a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2015).
CLAIMED SUBJECT MATTER
Appellants' disclosed and claimed invention generally relates to a
control hub "for controlling the operation of an electrical appliance, such as
a VCR or a TiVo, from a remote location." Spec. ,r 2; see Abstract.
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Appellants' claimed invention relates to a control hub that translates an
instruction into a format appropriate for an intelligent appliance and sends
the translated instruction to the appliance. Spec. ,r 22. The control hub
preferably transmits the instructions using a wireless modality (e.g., infrared,
Bluetooth®, or Wi-Fi) and, if no wireless modality is available, the hub
transmits the instruction over a wired connection. Spec. ,r 22. Claims 1, 16,
1 7, and 19 are independent claims. Claim 1 is reproduced below:
1. A control hub comprising:
one or more communication mechanisms configured to
transmit instructions to a plurality of appliances in a plurality of
modalities; and
a processor operatively coupled with the one or more
communication mechanisms, wherein the processor 1s
programmed to, for each instruction:
identify one of the plurality of appliances as an
intended recipient of the instruction;
translate the instruction into a format readable to the
one of the plurality of appliances; and
send the translated instruction to the one of the
plurality of appliances identified as the intended recipient
of the instruction via one of the one or more
communication mechanisms.
REJECTIONS
Claims 1-3, 6-9, 11, 12, and 14--16 stand rejected under 35 U.S.C.
§ 103 as obvious in view of Fitzgerald (US 6,564,056 Bl; May 13, 2003)
and Chen (US 2005/0089052 Al; April 28, 2005). Final Act. 2-7.
Claims 4, 5, 10, 13, and 17-20 stand rejected under 35 U.S.C. § 103
as obvious in view of Fitzgerald, Chen, and Ito (US 6,510,212 B2; Jan. 21,
2003). Final Act. 7-10.
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ANALYSIS
CLAIMS 1, 2, 6-9, 11, 12, AND 14--16
The Examiner rejects claims 1-3, 6-9, 11, 12, and 14--16 as obvious
in view of Fitzgerald and Chen. Final Act. 2-7. Appellants separately argue
the rejection of claim 3, which we address in a separate section below.
The Examiner finds Fitzgerald teaches every limitation recited in
independent claim 1, except for the recited plurality of modalities, which the
Examiner finds Chen teaches. Final Act. 2-3. The Examiner explains that,
because Fitzgerald teaches a hub sending instructions to various appliances
and Chen teaches a hub capable of communicating using multiple
modalities, Chen's teachings complement Fitzgerald's teachings. Ans. 3.
The Examiner concludes it would have been obvious to modify Fitzgerald
with Chen's multiple modalities to make Fitzgerald's appliance controller
"more versatile and ... able to communicate with different devices in
different communications format[s]." Final Act. 3--4; see Ans. 3.
Appellants do not contest the Examiner's findings with respect to
Fitzgerald and Chen's teachings. Appellants argue only that modifying
Fitzgerald with Chen is improper because the proposed modification "would
add unnecessary complexity, change the principle of operation of Fitzgerald,
and/or render the modified system unsuitable for the uses disclosed by
Fitzgerald." Appeal Br. 3---6; see Reply Br. 1-3. In particular, Appellants
argue Chen's modalities "are merely conventional protocols used to send
messages," without any relationship to any format of instructions sent using
those protocols. Appeal Br. 6. Appellants assert modifying Fitzgerald to
include Chen's multiple modalities would require Fitzgerald's hub to receive
messages in its own format and then translate the messages into each
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device's format, which would add unnecessary complexity or redundancy to
Fitzgerald's hub that "already includes a more efficient technique of
communicating with arbitrary devices." Appeal Br. 6; Reply Br. 2.
As Appellants note, see Appeal Br. 4--5, Fitzgerald discloses a hub
that communicates with and controls intelligent devices. Fitzgerald 1 :56-60,
2:4--8, 3:8-16 (describing connected devices as being typical home or
business appliances), Abstract. Fitzgerald may register each device with the
controller and the hub communicates with the devices over a private
network. Fitzgerald 2:4--11, 4:54--5:3, Abstract. Fitzgerald encrypts each
communication with an encryption key based on the device ID of the device
to which that communication is directed. Fitzgerald 2:14--18, 5:2-35,
Abstract. Fitzgerald's network over which the hub and devices
communicate may be wired or wireless. Fitzgerald 1:53-56, 3:23-35
( describing the benefits of wirelessly connecting the hub to the intelligent
devices), Abstract. Fitzgerald explains that the devices' wireless interfaces
may be external or built-in and that wireless connections are preferred,
eliminating the need to install particular infrastructure. Fitzgerald 3 :28-33.
Fitzgerald discloses a hub capable of sending instructions to various
devices over either a wired or wireless connection and, accordingly, suggests
a hub having "communication mechanisms configured to transmit
instructions to a plurality of appliances in a plurality of modalities," as
recited in claim 1. Fitzgerald 3: 16-19 ( describing connecting stationary
devices to the hub using wired links "such as telephone lines or power lines
on which communications signals have been superimposed"). However,
Fitzgerald does not explicitly disclose a hub with both wired and wireless
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connections, and the Examiner relies on Chen to teach or suggest a device
using a plurality of modalities. Final Act. 3.
Chen describes a "broadband communications access device" having
both wired and wireless interfaces. Chen Abstract. Of particular note, Chen
teaches an exemplary home gateway system that routes communications
between a wired LAN and a wireless LAN or other networks, and the
gateway system includes both a Bluetooth® module to wirelessly
communicate using Bluetooth® and an infrared module for communicating
via "one type of short-range wireless connection." Chen ,r,r 44, 110-111,
130-131, 149, Fig. 6A (items 130 and 132); see Final Act. 3 (citing Chen
,I 44, Fig. 6A).
We start by construing the recited "plurality of modalities." The
Specification does not explicitly define "modality" or "a plurality of
modalities." Nevertheless, the Specification provides clues useful in
construing the recited plurality of modalities. Figure 2 depicts aspects of the
claimed embodiment, including a hub that communicates with a mobile
phone over a public cellular telephone infrastructure and with multiple
appliances. Spec. Fig. 2. Figure 2 further depicts a module for various
modalities over which the hub communicates with the appliances. Spec.
,r 22, Fig. 2. In particular, the Specification explains that the hub receives
instructions from a cellular device via its cellular interface and "transmits the
instruction to the selected appliance in machine accessible code (MAC)
format, or other comparable format" using an appliance-appropriate
modality. Spec. ,r 22. The Specification further discloses using a wireless
modality, such as infrared (IR), Bluetooth® (BT), and Wi-Fi, if the selected
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appliance has a wireless modalities and, otherwise, transmitting the
instruction "over electric wires." Spec. ,r 22; accord Spec. ,r 23.
In light of these disclosures, we construe a modality as an electronic
data transmission technology. Furthermore, we construe the recited "one or
more communication mechanisms configured to transmit ... in a plurality of
modalities" as requiring one or more communication interfaces that, in
combination, are capable of transmitting electronic data using at least two
different transmission technologies ( e.g., Bluetooth® and infrared or Wi-Fi
and "electric wires").
Notably, claim 1 does not recite any direct relationship between the
plurality of modalities and the instruction format. The claims recite sending
the translated instruction via one of the recited communication mechanisms,
and the communication mechanisms must be capable of transmitting
instructions in one of the modalities. The instruction translation step and the
format into which the instructions is translated, however, are independent of
the modality used to transmit the instruction. See Spec. ,r,r 22-23. Thus, to
the extent Appellants contend Chen, or Fitzgerald as modified by Chen, fails
to teach a relationship between the multiple modalities and the instruction
format, this argument is not commensurate with the scope of the claims.
We disagree with Appellants' assertion that the Examiner's proposed
modification of Fitzgerald to incorporate Chen's teaching of using multiple
modalities is improper. Specifically, we are not persuaded the proposed
combination adds unnecessary complexity or redundancy, or otherwise
frustrates the purpose, changes the principle of operation, or renders
unsuitable Fitzgerald's hub, Appeal Br. 6.
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As explained above, Fitzgerald teaches or suggests communicating
with and controlling various devices and Fitzgerald's hub encrypts each
message using the target device's ID so that only that device can decrypt and
process the message. Fitzgerald 1:56-60, 2:4--8, 2:14--18, 3:8-16, 4:54--5:3,
5:2-35, Abstract. Fitzgerald does not focus on the particular transmission
technology used. However, as discussed above, Fitzgerald contemplates
communicating over either a wired or wireless network and explains a
wireless network is preferred because there would be no need to add "special
wiring or provisioning." Fitzgerald 1:53-56; see Fitzgerald 3:23-35.
As the Examiner explains, Chen is complementary to Fitzgerald,
which does not explicitly teach using multiple modalities. Adding multiple
modality functionality, as taught by Chen, to Fitzgerald's hub would enable
Fitzgerald's hub to communicate with the registered devices over each
device's existing modality without adding special wiring or provisioning.
See Ans. 3. Accordingly, given the teachings of Fitzgerald and Chen, the
proposed combination would have been obvious to a person of ordinary skill
in the art because adding Chen's multiple modality feature to Fitzgerald's
known hub yields the predictable result of Fitzgerald's hub communicating
with multiple devices using multiple transmission technologies while still
encrypting each message with a device-specific encryption key.
For the reasons discussed above, we do not agree that modifying
Fitzgerald with Chen's teaching of using multiple modalities would add
unnecessary complexity to Fitzgerald's hub. Other than the allegedly
introduced complexity, however, Appellants do not explain how or why
adding Chen's teaching of transmitting messages using multiple modalities
would frustrate Fitzgerald's purpose, change Fitzgerald's principle of
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operation, or render Fitzgerald's hub unsuitable for its intended purpose.
Because Appellants do not advance any other persuasive argument in
support of these allegations, we are not persuaded the proposed modification
frustrates the purpose, changes the principle of operation, or renders
unsuitable Fitzgerald's hub.
For these reasons, we sustain the Examiner's rejection of claim 1 as
obvious in view of Fitzgerald and Chen. We also sustain the Examiner's
rejection of claims 2, 6-9, 11, 12, and 14--16, which were not argued
separately with particularity.
CLAIM3
The Examiner's Rejection
The Examiner rejects claim 3 as obvious in view of Fitzgerald and
Chen. Final Act. 2--4. As with claim 1, the Examiner finds Fitzgerald
teaches every limitation recited in dependent claim 3, except for the recited
plurality of modalities, which the Examiner finds Chen teaches. Final
Act. 2-3. Of particular relevance to Appellants' separate argument for
dependent claim 3, the Examiner finds Fitzgerald teaches "translate the
instruction into a format readable to the one of the plurality of appliances,"
which is recited in claim 1 and incorporated into claim 3 because claim 3
depends directly from claim 1. Final Act. 3 ( citing Fitzgerald 11 :4--8, Fig. 5
(step 522)). The Examiner finds Fitzgerald also teaches or suggests claim
3 's additionally-recited limitation that "the cellular interface converts the
instructions into machine accessible code (MAC) before transmitting the
instructions via the one or more communication mechanisms." Final Act. 4
( citing Fitzgerald 11:4--8, Fig. 5 (step 522)).
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As an initial matter, we note "the cellular interface," as recited in
claim 3 lacks antecedent basis. The Specification describes central hub 110
includes cellular interface 124, which "has on-board software 80 for
converting the user instructions received from the cellular device 22 to
command strings in MAC format, or other comparable format, for
transmission to" an appliance. Spec. ,r,r 22-23. Therefore, for purposes of
this Decision, we construe claim 3 as requiring a cellular interface as part of
the recited hub.
Appellants argue the Examiner improperly finds Fitzgerald's
encryption of a message using an encryption key based on the target
device's ID teaches or suggests both translating the instruction into a format
readable by the target appliance and converting "the translated instructions
into machine accessible code (MAC)." Appeal Br. 6-7; Reply Br. 4. In
particular, Appellants assert Fitzgerald's step of encoding a message cannot
teach both translating an instruction into one format and converting the
translated instruction into another format because Fitzgerald does not teach
or suggest translating data into a first format then subsequently and
separately converting the translated data into another format. Appeal Br. 7;
Reply Br. 4. In other words, to the extent Fitzgerald's encryption teaches or
suggests translating an instruction, Fitzgerald does not teach encrypting or
otherwise converting the already-encrypted instruction before transmitting
the encrypted instruction to its destination.
We agree with Appellants. We see no disclosure in Fitzgerald's cited
portions that teaches or suggests translating an instruction into a first format,
then converting the translated instruction from the first format into another
format (i.e., "machine accessible code") before transmitting the instruction.
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Accordingly we do not sustain the Examiner's rejection of claim 3 as
obvious in view of Fitzgerald and Chen.
New Ground of Rejection
We enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 4I.50(b ). We reject dependent claim 3 under 35 U.S.C. § 112,
first paragraph for lack of written description support.
As discussed above, Appellants' claimed hub generally is supported
by the Specification's description of the second embodiment. Spec. ,r,r 17,
22-25, 26-27, 29-32, 37-39, Figs. 2, 3, 5. Of particular relevance to claim
3, however, the Specification does not provide written description support
for programmed steps that separately "translate the instruction into a format
readable to the one of the plurality of appliances" and "convert[] the
translated instructions into machine accessible code (MAC) before
transmitting the instructions via the one or more communication
mechanisms," as recited in claim 3.
Under a broadest reasonable interpretation, the terms "convert" and
"translate" may encompass similar actions and, consistent with the
Examiner's rejection, each term encompasses Fitzgerald's process that
encrypts data. However, as discussed above, Fitzgerald's process teaches or
suggests only one of these recited actions because claim 3 recites converting
the translated instructions, such that two distinct actions are performed-a
first action that translates the instruction into a format readable by a
particular appliance and a second action that converts the instruction into
machine accessible code. Cf CAE Screenplates Inc. v. Heinrich Fiedler
GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) ("In the absence of evidence to
the contrary, we must presume that the use of these different terms in the
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claims connotes different meanings."); Applied Med. Res. Corp. v. US.
Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) ("[T]he use of two
terms in a claim requires that they connote different meanings .... ").
Claim 1 does not recite converting the translated instruction. Thus,
the Specification's disclosure of "converting the user instructions received
from the cellular device 22 to command strings in MAC format, or other
comparable format" provides written description support for the broadest
reasonable interpretation of claim 1 's translation of the instruction because
the claim does not require a conversion action separate from a translation
action.
Claim 3, however, introduces a limitation that requires converting the
already-translated instruction. Accordingly, the Specification must support
both translating an instruction and converting the already-translated
instruction in order to meet the requirements of 35 U.S.C. § 112, first
paragraph. We find insufficient support in the Specification for these two
separate actions.
Figure 2, reproduced below, depicts many aspects of Appellants'
claimed embodiment.
FIG.2
11
APPLIANCE TO BE
CONTROLLED
APPUANU TO BE
CONTROLLED
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Application 14/465,025
Fig. 2 ("a diagrammatic view showing a remote control system for
controlling the operation of an electric appliance from a remote location via
a public cellular infrastructure according to a second embodiment of the
present invention").
Central hub 110 receives an instruction via cellular interface 124 from
cellular device 22. Spec. ,r 22; Fig. 2. Hub 110 subsequently "transmits the
instruction to the selected appliance in machine accessible code (MAC)
format, or other comparable format, using a communication modality that is
appropriate for the selected appliance." Spec. ,r 22; Fig. 2. Cellular
interface 124 has both hardware components and "on-board software 80 for
converting the user instructions received from the cellular device 22 to
command strings in MAC format, or other comparable format." Spec. ,r 23
( emphasis added).
Notably, other than in the original claims, the only reference in the
Specification to the term "translate," or any variation thereof, is in the
"Summary," which reproduces original claim 1 in paragraph format. Spec.
,r,r 5---6. That is not to say that "translating," on its own, is unsupported by
the Specification, but rather that the only disclosed references to translation
are translating an "instruction into a format readable to the one of the
plurality of appliances." More specifically, the claimed "translate" action
recited in claim 1 appears to be supported only by the Specification's
disclosure of converting the instructions received from cellular device 22 to
machine accessible code (MAC) format, or other comparable format. 1 Spec.
1 To the extent Appellants contend the disclosed modalities are relevant to
either the recited translation or conversion, we disagree. As discussed
above, Appellants' recited modality is merely a communication technology,
such as infrared; Bluetooth; Wi-Fi; or hard wire. Spec. ,r,r 22-23. The
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,r,r 22-23. In other words, the Specification does not support two separate
actions-a step of translating the instruction and subsequently converting the
already-translated instruction.
CLAIMS 4, 5, 10, 13, AND 17-20
The Examiner rejects claims 4, 5, 10, 13, and 17-20 as obvious in
view of Fitzgerald, Chen, and Ito. Final Act. 7-10. With respect to these
claims, Appellants argue only that Ito does not cure the deficiencies of
Fitzgerald and Chen. Appeal Br. 7. Because we find no deficiencies with
respect to the rejection of claims 1, 2, 6-9, 11, 12, and 14--16 as obvious in
view of Fitzgerald and Chen, we also sustain the Examiner's rejection of
claims 4, 5, 10, 13, and 17-20 as obvious in view of Fitzgerald, Chen, and
Ito.
DECISION
We affirm the Examiner's decision to reject claims 1, 2, and 4--20
under 35 U.S.C. § 103.
We reverse the Examiner's decision to reject claim 3 under 35 U.S.C.
§ 103.
modality, and any potential modification to an instruction to utilize a
particular modality, is not directly related to the recited translation and
conversion and is part of the recited transmission. Spec. ,r,r 22-23.
Moreover, to the extent the system may convert the instruction to transmit
the instruction using a particular modality, this conversion would be inherent
to, or at least suggested by, Chen's teaching of using multiple modalities.
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We enter a new ground of rejection of claim 3 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the 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 reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is
made which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the decision.
Should the examiner reject the claims, Appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
The request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
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new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART;
37 C.F.R. § 4I.50(b)
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