Ex Parte Mui

Patent Trial and Appeal Board

Oct 29, 2018

14531389 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/531,389 11/03/2014 Daniel SauFu Mui
34018 7590 10/31/2018
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
81230.719US2 5127
EXAMINER
TUN,NAYL
ART UNIT PAPER NUMBER
2687
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL SAUFU MUI
Appeal 2018-003739
Application 14/531,389
Technology Center 2600
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-003739
Application 14/531,389
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 13 and 15-21. We have jurisdiction under 35 U.S.C. § 6(b). This
appeal is in related US Application No. 11/704,669; prior Appeal 2011-
011969.
We affirm.
The claims are directed to a graphical user interface for providing the
brand name and model number for the consumer electronic device to the
controlling device (for programming universal remote control devices).
(Abstract). Claim 13,2 reproduced below, is illustrative of the claimed
subject matter:
13. A system, comprising:
a home entertainment device having a processing device
and an associated memory; and
a controlling device in communication with the home
entertainment device;
1 Appellant indicates that the real party in interest is Universal Electronics
Inc. (App. Br. 2).
2 We note that independent claim 13 has both a controlling device and a
remote control device for controlling the consumer electronic device. We
further note that the claim switches between "electronic consumer device"
and "the consumer electronic device." The Examiner should consider
whether the various phrases throughout the claim provide grounds for an
indefiniteness rejection. Specifically, it is unclear whether the controlling
device is different from the remote control device, because both the
controlling device and the remote control device perform control of the
electronic consumer device.
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Application 14/531,389
wherein the memory of the home entertainment device has
stored thereon a set of instructions which, when executed by the
processing device of the home entertainment device, cause the
home entertainment device to:
display on a display monitor associated with the home
entertainment device a plurality of images, wherein each image
of the plurality of images is an image of a corresponding
respective one of a plurality of different devices, wherein each of
the plurality of different devices is taken from the group
consisting of: an electronic consumer device and a remote
control device usable to control an electronic consumer device;
receive a selection of a one of the plurality of images
displayed on the display monitor,
wherein the selected one of the plurality of images is an
image corresponding to a particular one of the plurality of
different devices;
use the selected one of the plurality of images displayed
on the display monitor to determine at least a brand name and a
model number for a consumer electronic device; and
provide at least the determined brand name and model
number for the consumer electronic device to the controlling
device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Harris et al.
Escobosa et al.
Hsieh
Haughawout et al.
US 2001/0033243 Al
US 2003/0151538 Al
US 2004/0263471 Al
US 2007/0279244 Al
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Oct. 25, 2001
Aug. 14, 2003
Dec. 30, 2004
Dec. 6, 2007
Appeal2018-003739
Application 14/531,389
REJECTIONS
The Examiner made the following rejections:
Claims 13, 15-18, and 20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Haughawout in view of Harris.
Claim 19 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Haughawout in view of Harris further in view of
Escobosa.
Claim 21 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Haughawout in view of Harris further in view of Hsieh.
ANALYSIS
Appellant sets forth arguments to the claims as a group. (App. Br. 3).
As a result, we select independent claim 13 as the representative claim for
the group and will address Appellant's arguments thereto.
With respect to representative independent claim 13, Appellant argues
that the Haughawout reference does not teach the steps of receiving, using,
and providing which are performed by the processor in the home
entertainment device having a memory with the stored set of instructions.
(App. Br. 4--5).
Appellant further contends that the Harris reference teaches use of a
sampled signal rather than an image to determine the type, brand, and model
of the appliance that is controlled. (App. Br. 5). Appellant further argues
that Harris generates configuration data for downloading to the remote
control and, as such, does not disclose providing to the controlling device a
determined brand name and model number for the controlled device. (App.
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Application 14/531,389
Br. 5---6). Appellant argues the specific sequence of steps recited in claim
13. (App. Br. 6).
We note that claim 13 is directed to a "system" rather than the specific
process. Though we agree with Appellant that neither reference individually
teaches the claimed invention, the Examiner has relied upon the combination
of teachings. The Examiner has relied upon the Haughawout reference to
teach and suggest the use of images and matching to determine configuration
information and the Examiner has relied upon the Harris reference to teach
the use of a signal rather than an image to determine corresponding
configuration information from the determined brand name and model
number. We find the Haughawout reference discloses a direct
correspondence between the image and the configuration data, and the
Harris reference discloses an intermediate determination of the brand name
and model number and subsequent generation of the configuration data
therefrom.
Appellant overlooks the disclosed intermediate step in the Harris
reference that the signal is used to determine the brand name and model
number of the electronic device and subsequently the configuration data is
generated therefrom.
We find that because Harris has disclosed the usefulness of the brand
name and model number information for determining correct configuration
data, that same information would be desirable to the end user to determine
configuration information. Therefore, we agree with the Examiner that it
would have been obvious to one of ordinary skill in the art to also provide
the determined brand name and model number to the remote control device.
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Application 14/531,389
Although we recognize that the Haughawout reference teaches and
suggests the communication of the information to a server, we agree with the
Examiner that any processor may perform the recited functions to determine
the configuration data to be used, as taught and suggested by the Harris
reference.
Thus, we find that the brand name and model number information is
determined by the Harris reference and the Harris reference further
evidences that it was well-known in the art to use the brand name and model
number to determine configuration data for a remote control. Consequently,
we agree with the Examiner that it would have been of little difference to
transmit the determined brand name and model number to the controlling
device to subsequently determine configuration information and configure
the remote control device.
We agree with the Examiner that the combination of the Haughawout
and Harris references teaches or suggests the claimed processing steps.
While each of the references disclose a more distributed processing of the
relevant data at servers or at a remote location, we agree with the Examiner
that the processing may be performed at any location as long as there was
sufficient processing ability, memory storage, and communication
availability for the data.
The Examiner maintains that
it would have been obvious to the one of the ordinary skill in
the art at the time of the invention was made to provide the
brand name and model number of a device as pointer to the
command data as taught by Harris in order to recognize a
plurality of electronic devices (Harris: Paragraph [0013]).
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Application 14/531,389
(Ans. 6). The Examiner rationalizes that the disclosure of the Haughawout
reference with regards to a pointer to the command data set for a specific
appliance for controlling. (Ans. 6). The Examiner maintains that the Harris
reference clearly teaches and suggests the type, brand, and model are the
information pointing to the data for configuring the electronic
system/universal remote control to control the electronic device of such
brand and model. (Ans. 6-7). "Therefore, the pointer of Haughawout '244
is modified to be brand and model of the controlling device as taught by
Harris since both information serves the same purpose to determine the data
to configure the remote control for this particular controlling device
represented by such information." (Ans. 6-7).
The Examiner also acknowledges the difference in the initial input
data for the determination of the configuration data for the remote control.
The Examiner further maintains "[ e ]ven though Harris teaches using
sampled signal to identify the devices and Haughawout '244 teaches using
the images in some embodiments (Fig. 6-8), they are neither mutually
exclusive nor teaching away each other. They are just altemative[s] and/or
additional different methods to identify the controlling device." (Ans. 7).
The Examiner further provides a line of reasoning for providing the
images for the determination of the brand name and model number in
combination with the sampled data as suggested by the Harris reference.
(Ans. 7). We agree with the Examiner's line of reasoning and do not find
that the Examiner has relied upon hindsight in the evaluation of the
obviousness rejection.
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Application 14/531,389
Reply Brief
We find the Reply Brief sets forth similar arguments as set forth in the
Appeal Brief. (Reply Br. 2-5). We find the Appellant's arguments are
based upon a bodily incorporation of each of the systems as taught by the
Haughawout and Harris references. "The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). See also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review."); and In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) ("Combining the teachings of references does not involve an ability to
combine their specific structures."). Rather, "if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill." KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellant argues that the Examiner has relied upon impermissible use
of hindsight reconstruction because the Examiner has acknowledged that
because it has been acknowledged that neither Haughawout nor
Harris disclose, teach, or suggest using an image to determine a
brand name and model number for a consumer electronic
device with the determined brand name and model number then
being provided back to the controlling device as claimed, it is
evident that that the conclusion of obviousness was not reached
on the basis of the facts gleaned from the prior art alone
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Application 14/531,389
(Reply Br. 3) (emphasis omitted).
We disagree with Appellant and find the Examiner has provided an
articulated line of reasoning with some rationale underpinning to support the
legal conclusion of obviousness and Appellant's argument does not show
error in the Examiner's showing. Rather, Appellant merely repeats the
language of the claim and maintains that the prior art does not teach the
totality of the limitation rather than addressing the combination of prior art
references as proffered by the Examiner in the grounds of the rejection and
in the Response to Argument section of the Examiner's Answer.
Appellant further argues that
because Haughawout clearly describes that the system will use
image recognition software to attempt to discern a match
between the uploaded image and reference images stored in a
database and, in the event a match is found, the server will
prepare configuration data for downloading to the remote
control, in Haughawout, when a user provides an image to the
system, neither the user nor the system is required to know the
brand or the model of a device to thereby allow the system to
identify a device for programming purposes. That the model as
well as the brand is not required to determine the data for
programming the universal remote control in Haughawout is
evident because, in Haughawout, the uploaded image - when
matched to a reference image - itself serves as "a pointer for
identifying the data corresponding to the device to
program/configure the universal remote control" (Ex. Ans., pg.
7). Therefore, because within the system of Haughawout there
exists no reason to use an image to determine a model and brand
for a device to be controlled, there exists no reason for one of
skill in the art to modify Haughawout ( even considering the
teachings of Harris) to arrive at the exact invention claimed.
(Reply Br. 3--4). Appellant further contends:
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Application 14/531,389
it is again respectfully submitted that, while Harris may suggest
modifying Haughawout such that a sampled signal is uploaded
to a server instead on an image of an appliance ( as disclosed
within Haughawout) to thereby cause the server to generate
configuration data for downloading to the remote control ( as
disclosed in both Harris and Haughawout ), nothing within
Harris suggests that Haughawout should or could be modified
such that, after a user selects an image from a group of images,
the selection of the image from the group of images is used to
determine a brand name and a model number for an appliance
whereupon the determined brand name and model number for an
appliance (as opposed to "configuration data" is downloaded to
the remote control as claimed.
(Reply Br. 4). Appellant argues:
It is also again respectfully submitted that, because Harris
discloses a system having the capability for downloading
configuration data to the controlling device exactly like
Haughawout, it cannot be said that Harris suggests modifying
Haughawout to arrive at the exact invention claimed. (See, e.g.,
Square, Inc. v. Cooper, IPR2014-00158, Paper No. 8, at 30 (15
May 2014) wherein an obviousness challenge was dismissed
where the primary reference already had the capabilities that the
secondary reference provided with its added disclosures.
(Reply Br. 4--5).
We find Appellant is arguing the process limitations in the claimed
"system" claim which are performed by the processor in the home
entertainment device, but the process steps in the Haughawout and Harris
references clearly teach and suggest the claimed process steps, but both
references go further to teach the generation of the configuration data for
programming the controlling device, but the claimed invention does not
expressly claim the generating the configuration data for the control device.
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As a result, we agree with the Examiner that the prior art teaches and
suggests the claimed process, but the prior art combination uses the brand
name and model number to generate the configuration information which is
then sent to the control device to program it. In the claimed invention, the
control device is not explicitly programmed.
We disagree with Appellant's line of reasoning and conclusion
because the Harris reference teaches and suggests that the
sampled/transmitted data would be used to determine the brand name and
model number which is subsequently used to determine the corresponding
configuration data. As a result, the data selected by the user would be used
to determine the brand name and model number which could be similarly
provided to the user as suggested by the Examiner. (Ans. 5-6).
Therefore, we find Appellant's arguments do not show error in the
Examiner's factual findings or conclusion of obviousness of representative
independent claim 13.
CONCLUSIONS
The Examiner did not err in rejecting claims 13 and 15-21 based upon
obviousness under 35 U.S.C. § 103(a).
DECISION
For the above reasons, we sustain the Examiner's obviousness
rejections of claims 13 and 15-21.
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
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