Black, Jeremy et al.

Patent Trials and Appeals Board

Dec 19, 2019

15040124 - (D) (P.T.A.B. Dec. 19, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/040,124 02/10/2016 Jeremy Black 81230.132US3 5123
34018 7590 12/19/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
KEATON, SHERROD L
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
12/19/2019 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):
chiipmail@gtlaw.com
clairt@gtlaw.com
jarosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY BLACK and PATRICK H. HAYES
Appeal 2019-000868
Application 15/040,124
Technology Center 2100
Before JOHN A. EVANS, JOHN F. HORVATH, and
KIMBERLY McGRAW, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge Horvath.

Opinion Concurring filed by Administrative Patent Judge McGraw.

HORVATH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the
Examiner’s final decision to reject claims 1–11.1 We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Universal Electronics, Inc. as the real party in
interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed invention is directed to a “network-capable slave relay
station[] installed in conjunction with a universal remote control device.”
Spec. 1:23–2:1. The slave relay station is “adapted to serve and/or host
pages comprising a simplified graphical user interface (GUI) [that] embodies
activatable links corresponding to control functions for configured
appliances.” Id. at 2:1–4. For example, slave relay station 100 serves
“HTML-formatted[2] pages . . . requested by . . . personal communications
devices 400 or 402, thereby allowing such devices to be used as surrogate or
additional universal controlling devices.” Id. at 8:22–9:4.
Personal communication device 402 generates and displays an
HTML-based GUI that includes “a series of icons representative of
appliance control actions which may be initiated.” Spec. 11:12–16. When a
user selects one of the displayed icons, personal communication device 402
transmits “a message . . . back to the originating[3] slave relay device, receipt
of which causes the desired command(s) to be issued to an appliance.” Id. at
11:16–20. The message from personal communication device 402 to slave
relay device 100 can be a request for a named file, e.g., “an HTTP[4] ‘GET’
request,” for a file named “switch_to_abc.irm.” Id. at 12:2–9, 20:6–7.
When slave relay device 100 receives this request, it “retrieve[s] a stored
series of commands operable to change a pre-determined channel tuning
device to the ABC broadcast channel.” Id. at 13:8–13. The stored

2 Hyper-Text Markup Language.
3 The “originating slave relay device” is slave relay device 100, which sent
the GUI page to personal communication device 402. See Spec. 8:22–9:4.
4 Hyper-Text Transfer Protocol.
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commands can include, for example, an appliance code (e.g., code C1376 to
control a Motorola cable set-top box), and the channel (e.g., channel 007) to
which the set-top box should be tuned to display ABC media broadcasts. Id.
at 20:6–9.
Claim 1, the only independent claim on appeal, is reproduced below
(bracketed material and formatting added):
1[a]. A media access controlling device having a
processing device and a non-transitory computer readable
media on which is stored instructions which, when executed by
the processing device, cause the media access controlling
device to perform steps, comprising:
[b] receiving from a personal communication device data
that at least identifies by name a one of a plurality of media
content sources;
[c] causing the data that at least identifies by name a one
of a plurality of media content sources to be used to locate a
sequence of commands to be used to cause a display device to
present a media content stream that originates from the named
one of the plurality of media content sources; and
[d] causing the located sequence of commands to be
executed whereupon the media content stream that originates
from the named one of the plurality of media content sources
will be presented on the display device.
REFERENCE(S)
The prior art relied upon by the Examiner is:
Name Reference Date
Dresti et al. “Dresti” US 2003/0103088 A1 June 5, 2003
REJECTION
Claims 1–11 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Dresti. Final Act. 2–6.
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OPINION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner has erred. We agree with at least one of
Appellant’s arguments, which is dispositive with respect to all of the
rejected claims, and reverse the Examiner’s rejection of all claims.
Neither the Appellant nor the Examiner asks us to construe any claim
term. See Appeal Br. 1–13; see also Ans. 3–6. In particular, neither party
asks us to construe the preamble of claim 1. A preamble must be construed
when it is needed to breathe “life and meaning” into a claim. See Pitney
Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)
(“If the claim preamble, when read in the context of the entire claim, recites
limitations of the claim, or, if the claim preamble is ‘necessary to give life,
meaning, and vitality’ to the claim, then the claim preamble should be
construed as if in the balance of the claim.”); see also Rowe v. Dror, 112
F.3d 473, 478 (Fed. Cir. 1997) (“Where a patentee uses the claim preamble
to recite structural limitations of his claimed invention, the PTO and courts
give effect to that usage.”) (emphasis added).
Here, the preamble of claim 1 includes structural limitations not
elsewhere recited in claim 1 that are needed to give life and meaning to the
claimed media access controlling device. In particular, claim 1 recites a
media access controlling device, rather than a method, that must include “a
processing device,” “a non-transitory computer readable media,” and
“instructions” that cause the device to: (1) receive, from a personal
communication device, data identifying by name a media content source;
(2) use that data to locate a sequence of commands; and (3) execute the
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sequence of commands to present on a display device a content stream from
the named media content source. Appeal Br. 14, Claims App. (claim 1).
The Examiner rejects claims 1–11 as anticipated by Dresti. Final Act.
2–6. To anticipate a claim, a reference must disclose “every element of the
claimed invention,” and “must also disclose those elements ‘arranged as in
the claim.’” NetMoneyIn, Inc. v. VeriSign Inc., 545 F.3d 1359, 1360 (Fed.
Cir. 2008) (internal citations omitted). To establish a prima facie case of
anticipation, the Examiner must “set forth the statutory basis of the rejection
and the reference . . . relied upon in a sufficiently articulate and informative
manner as to meet the notice requirement of [35 U.S.C.] § 132.” In re Jung,
637 F.3d 1356, 1363 (Fed. Cir. 2011) (emphasis added).
Appellant first argues that the Examiner fails to establish a prima facie
case of anticipation because the Examiner fails to identify where Dresti
discloses a media access controlling device having a processing device and a
computer readable medium storing instructions executed by the processing
device as required by claim 1. Appeal Br. 5. Although we agree with
Appellant that the Examiner initially failed to identify where Dresti discloses
these limitations, the Examiner subsequently corrected this deficiency in the
Examiner’s Answer. Compare Final Act. 2–3 (failing to identify where
Dresti discloses a media access controlling device), with Ans. 4 (citing
Dresti ¶ 30, Fig. 1) (identifying Dresti’s home entertainment equipment
1120 as a media access controlling device). Accordingly, we are not
persuaded by Appellant’s first argument.
Appellant next argues that the Examiner fails to show anticipation by
Dresti because the Examiner fails to meaningfully identify where Dresti
discloses the media access controlling device “receiving from a personal
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communication device data that at least identifies by name a one of a
plurality of media content sources,” as recited in claim element 1[b],
“causing the data that at least identifies by name a one of a plurality of
media content sources to be used to locate a sequence of commands,” as
recited in claim element 1[c], and “causing the located sequence of
commands to be executed whereupon the media content stream that
originates from the named one of the plurality of media content sources will
be presented on [a] display device,” as recited in claim element 1[d]. App.
Br. 6–9. We agree that the Examiner has not shown that Dresti teaches all of
the limitations of claim 1.
Initially, in the Final Action, the Examiner fails to identify where
Dresti discloses a media access controlling device that “receiv[es] from a
personal communication device data that at least identifies by name a one of
a plurality of media content sources” as recited in claim element 1[b]. See
Final Act. 3. This is facially deficient. See Jung, 637 F.3d at 1363 (To
establish prima facie anticipation, the Examiner must identify “where each
limitation of the rejected claims is shown in the prior art reference by
specific column and line number.”).
The Examiner also fails to correctly identify where Dresti discloses
the media access controlling device “caus[es] the data that at least identifies
by name a one of a plurality of media content sources to be used to locate a
sequence of commands” as recited in claim element 1[c]. See Final Act. 3
(citing Dresti ¶¶ 47, 178–180). Specifically, the Examiner fails to show that
the cited passages of Dresti disclose a media access controlling device that
(i) “receiv[es] . . . data that at least identifies by name a one of a plurality of
media content sources” and (ii) “caus[es] the data . . . to be used to locate a
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sequence of commands” as recited in claim elements 1[b] and [c]. Instead,
the cited passages of Dresti disclose a remote control application 1102,
executing on personal communication device 1150, that is capable of
“learning IR codes, assigning and playing back macros, [and] specifying
favorites ([e.g.] assigning channel numbers and/or the IR sequences
necessary to cause entertainment appliances to switch channels to network
logos).” Dresti ¶¶ 30–32, 47.
Dresti's IR codes, which the Examiner appears to map to the
“sequences of commands” recited in limitation 1[b], are stored in a device
configuration file on personal communication device 1150, and are
subsequently located by personal communication device 1150 when a user
selects an icon displayed on personal communication device 1150 and
transmitted to media access control device 1120. See, e.g., id. ¶ 30 (“PDA
device 1150 is adapted to provide wireless control of consumer appliances
such as home entertainment equipment 1120”), ¶ 34 (PDA 1150 includes IR
Signaling Software 1118 that “performs the IR signal generating functions to
universally control appliances; supporting a database of IR codes and
transmission protocols”), ¶¶ 222–224 (disclosing the PDA’s user and
standard IR code databases, as well as a configuration file that stores “any
resources required by the device,” including IR codes). The IR codes
identified by the Examiner, therefore, are stored on personal communication
device 1150, and located by personal communication device 1150 rather
than by media access control device 1120.
The Examiner attempts, in the Examiner’s Answer, to correct these
deficiencies in the Final Action by citing to different disclosures in Dresti to
explain how Dresti discloses a media access controlling device that
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(i) “receiv[es] from a personal communication device data that at least
identifies by name a one of a plurality of media content sources” and
(ii) “caus[es] the data that at least identifies by name a one of a plurality of
media content sources to be used to locate a sequence of commands.” See
Ans. 4 (citing Dresi ¶¶ 47, 86). However, as explained below, this effort
also fails to show that Dresti discloses these limitations and anticipates claim
1.
First, the Examiner finds Dresti “details how sequences are
transmitted to a media access device for the control of access media content
sources.” Id. (citing Dresti ¶¶ 47, 86). It is unclear, from this terse passage,
whether the Examiner means to identify the IR code disclosed in paragraph
47 of Dresti (i.e., the “IR sequences necessary to cause entertainment
appliances to switch channels”) as the data “receiv[ed] from a personal
communication device . . . that at least identifies by name a one of a
plurality of media content sources” recited in claim element 1[b], or as the
sequence of commands that “the data that at least identifies by name a one
of a plurality of media content sources [is] used to locate” as recited in claim
element 1[c]. If the Examiner intends the IR code to be data that identifies
the name of a media content source received by media access control device
1120, then the Examiner fails to show where Dresti discloses using the IR
code to locate a sequence of commands as required by claim element 1[c].
If the Examiner intends the IR code to be the sequence of commands located
by media content access device 1120, the Examiner fails to show where
Dresti discloses media content access device 1120 (i) receives data that
identifies by name a media content source from personal communication
device 1150 as required by claim element 1[b] or (ii) uses the name of the
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media content source to locate a sequence of commands as required by claim
element 1[c].
Next, the Examiner finds:
Dresti provides that favorites within the interface can be pre-
populated which will include logo and name information along
with data such as URL data that can be loaded (See Figures
17a-h and Paragraph 180). These capabilities all provide a
functionality where a specific name is used to locate sequences
that will then be used for media content access. The names and
logos include items such as CNN, ESPN and FOX. Therefore
not only would the name be included with the logo and
favorites set-up page used for access but also in the URL that
would load on the browser (i.e. cnn.com, espn.com or fox.com).
Ans. 4. The Examiner’s finding that the interface on the personal
communication device 1150 can be prepopulated with data such as a logo,
name information, or URL data does not sufficiently explain that the data is
transmitted to the media access controlling device 1120 and then used by
that device to locate any command sequences, let alone command sequences
that cause the display device to present media content. Accordingly, the
Examiner has not shown that the media access controlling device of Dresti
(i) receives data that identifies by name a media content source as required
by claim element 1[b] or (ii) uses that data to locate a sequence of
commands as required by claim element 1[c].
For example, the Examiner identifies a name in a URL (e.g., CNN in
www.cnn.com) as “data that at least identifies by name a one of a plurality
of media content sources.” See Ans. 4 (citing Dresti ¶ 180, Figs. 17a–h).
However, the Examiner fails to explain how Dresti discloses personal
communication device 1150 transmits this URL “name” data to home
entertainment/media access controlling device 1120, thereby establishing
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that home entertainment/media access controlling device 1120 “receiv[es]
from a personal communication device data that at least identifies by name
a one of a plurality of media content sources,” as required by claim element
1[b].
Additionally, the Examiner fails to explain how Dresti discloses home
entertainment/media access controlling device 1120 “caus[es] the data . . .
to be used to locate a sequence of commands” as required by claim element
1[c]. Although the Examiner asserts that the URL’s linkage to an icon
displayed on Dresti’s personal communications device 1150 “provide[s] a
functionality where a specific name is used to locate sequences that will then
be used for media content access,” the Examiner fails to explain what these
sequences are and how the media access controlling device 1120 uses the
URL on personal communication device 1150 to locate these sequences.
Ans. 4–5. Thus, the Examiner fails to show that Dresti’s home
entertainment/media access controlling device 1120 “caus[es] the data that
at least identifies by name a one of a plurality of media content sources to be
used to locate a sequence of instructions,” as also required by claim 1.
Similarly, the Examiner fails to identify where Dresti teaches a media
access controlling device that performs the step of “causing the located
sequence of commands to be executed whereupon the media content stream
that originates from the named one of the plurality of media content sources
will be presented on the display device” as recited in claim element 1[d].
The Examiner cites to Figure 17 of Dresti and paragraphs 150, 167, 224, and
283 as disclosing the limitations of claim element 1[d]. See Final Act. 3.
All of these paragraphs, however, disclose steps taken on personal
communications device or PDA 1150 rather than media access controlling
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device 1120. See, e.g., Dresti ¶ 150 (disclosing using PDA remote control
application 1102 to specify the device IR format and command set to be
used to control selected devices), ¶ 167 (disclosing using PDA remote
control application 1102 to configure macros (i.e., preprogrammed sequence
of command actions that may be played back by pressing a single key)),
¶ 224 (disclosing using the PDA’s device configuration file to store user
defined macros and IR code sequences on the PDA), ¶ 283 (disclosing using
PDA remote control application 1102 to update channel numbers associated
with favorite stations (e.g., CNN) when a cable provider changes channel
line-ups).
Accordingly, for the reasons discussed above, we reverse the
Examiner’s rejection of claim 1. Claims 2–11 depend, directly or indirectly,
from claim 1. See Appeal Br. 14–16. We, therefore, reverse the Examiner’s
rejection of claims 2–11 for the same reasons.
CONCLUSION
The Examiner’s rejection of claims 1–11 as anticipated by Dresti is
reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11 102(b) Dresti 1–11
REVERSED

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McGRAW, Administrative Patent Judge, concurring.
I concur with the majority’s decision to reverse the Examiner’s
rejection of claims 1–11 under 35 U.S.C. § 102 as anticipated by Dresti.
The Examiner has not persuasively shown that Dresti explicitly discloses,
either expressly or inherently, where the media access control device uses
data received from the personal communication device to then locate a
sequence of commands or cause the located sequence of commands to be
executed, as required by claim elements 1[c] and [d], necessary to support a
rejection under § 102.
I disagree, however, with the majority’s conclusion that Dresti does
not disclose a media access controlling device that receives from a personal
communication device “data that at least identifies by name a one of a
plurality of media content sources” as recited in claim element 1[b].
As admitted by Appellant, Dresti’s personal communication device
1150 transmits to media access control device 1120 “a sequence of channel
tuning command signals that the user previously recorded.” Reply 3 (citing
Dresti ¶ 180) (emphases omitted); see also Final Act. 3 (citing Dresti
¶¶ 178–180). Dresti explains the user can use the setup wizard “to record a
sequence of keystrokes” that are to be associated with a favorites entry.
Dresti ¶ 180. For example, the user can “enter a series of keystrokes” such
as “‘0,’ ‘0,’ ‘4,’ and ‘Enter’ to assign to a favorites button commands for
switching the satellite receiver device . . . to channel four.” Dresti ¶ 180; see
also id. ¶ 47 (stating the set up wizard can be used for “assigning channel
numbers and/or the IR sequences necessary to cause the entertainment
appliances to switch channels”). Appellant has not persuasively explained
why these commands for switching the satellite receiver to channel four are
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not data that identifies by name a media content source (i.e., channel four) as
required by claim element 1[b]. As noted by the Examiner, Appellant has
not provided an explicit definition nor steps pertaining to a level at which the
name information must be utilized. Ans. 4.