DISH Technologies L.L.C.

Patent Trials and Appeals Board

May 14, 2021

2020000361 (P.T.A.B. May. 14, 2021)

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.
13/928,305 06/26/2013 Henry Gregg Martch P2013-06-01 (290110.584) 2644
70336 7590 05/14/2021
Seed IP Law Group/DISH Technologies (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
CHOI, DAVID E
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
05/14/2021 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY GREGG MARTCH and LUKE VANDUYN
Appeal 2020-000361
Application 13/928,305
Technology Center 2100
Before JASON V. MORGAN, JEREMY J. CURCURI, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as DISH
Technologies L.L.C., formerly EchoStar Technologies L.L.C. Appeal Br. 1.
Appeal 2020-000361
Application 13/928,305

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STATEMENT OF THE CASE
Introduction
The Application is directed to “a remote control system and related
user interface for controlling an interactive menu of a video feed using a grid
system.” Spec. 1:5–6. This appeal is related to a prior appeal (2017-
002201) of the same application, decided April 27, 2017.2
Claims 1–10 and 12–20 are pending; claims 1, 6, 10, 14, and 18 are
independent. Appeal Br. 17–21. Claim 1 is reproduced below for reference
(emphases and some formatting added):
1. A video device, comprising:
a controller coupleable to a display screen;
a memory coupled to the controller;
a user interface stored on the memory and configured to
be output to the display screen;
a menu stored on the memory and displayable on the user
interface, the menu including a plurality of user selectable
options arranged in a grid pattern; and
a receiver coupled to the controller and configured to
receive wireless signals from a remote control,
the remote control including
a plurality of buttons configured in a same grid
pattern as the plurality of user selectable options and each button
of the plurality of buttons corresponding to one of the user
selectable options,
wherein the received wireless signals instruct the
controller to select the corresponding one user selectable option
in response to a corresponding button of the plurality of buttons
being pressed and the plurality of buttons provide other static
functions, and

2 Appellant failed to identify the prior appeal as being related. See Appeal
Br. 2. Appellant and Appellant’s counsel are reminded of the duty to
identify related “prior and pending appeals.” 37 C.F.R. § 41.37(c)(1)(ii).
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Application 13/928,305

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wherein pressing one of the plurality of buttons
when the display screen is not displaying the user selectable
options in a grid pattern causes the static functions to execute.
References and Rejections
The Examiner relies on the following prior art:
Name Reference Date
Stringer US 6,288,708 B1 Sept. 11, 2001
Shibamiya US 2004/0041723 A1 Mar. 4, 2004
Roberts US 2011/0304778 A1 Dec. 15, 2011

Claims 1–10, 12–14, 16, and 17 are rejected under 35 U.S.C. § 103 as
obvious in view of Stringer and Roberts. Final Act. 2, 25.
Claims 15 and 18–20 are rejected under 35 U.S.C. § 103 as obvious in
view of Stringer, Roberts, and Shibamiya. Final Act. 30, 31.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Arguments
raised for the first time in the Reply Brief are forfeit, absent showing of good
cause why such arguments were not raised in the Appeal Brief. See 37
C.F.R. § 41.41(b)(2).
We are not persuaded the Examiner’s rejection is in error. Appellant
does not show the cited references fail to render obvious the claims because
Appellant’s arguments are not commensurate with the scope of the disputed
claim limitations. Nor does Appellant provide persuasive arguments to
show the Examiner errs in finding the disputed claim limitations would be
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obvious to an artisan of ordinary skill at the time of the invention, in view of
the combined teachings of the cited references.

Independent Claim 1
Appellant argues the Examiner errs, because “the combination of
Roberts and Stringer does not teach or suggest, ‘wherein pressing one of the
plurality of buttons when the display screen is not displaying the user
selectable options in a grid pattern causes the static functions to execute’ as
recited in claim 1.” Appeal Br. 11. Particularly, Appellant contends
“Stringer only discloses what occurs regarding the buttons in the grid pattern
on the remote when the display is displaying the user selectable options in a
grid pattern,” and “the ‘plurality of buttons’ of claim 1 does not include
[Stringer’s] additional buttons which are not configured in the same grid
pattern as the plurality.” Id. at 12 (emphasis omitted).
The Examiner finds one of ordinary skill would combine the teachings
of Roberts and Stringer, to map the controller buttons to particular functions,
as claimed. See Final Act. 5 (“The combination of Roberts with Stringer
would have resulted in the mapping of buttons” in various ways, as
claimed.); Roberts Fig. 9. Appellant’s attack against the teachings of
Stringer, individually, do not persuade us the Examiner errs in finding the
limitations taught or suggested by the combination of Roberts and Stringer.
Moreover, we find the disputed limitations to be broadly but
reasonably obvious in view of the teachings of Stringer. Claim 1 recites “the
menu including a plurality of user selectable options arranged in a grid
pattern,” and “wherein pressing one of the plurality of buttons when the
display screen is not displaying the user selectable options in a grid pattern
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causes the static functions to execute.” Appeal Br. 17 (emphasis added).
That is, the video device of claim 1 has at least two display options: (1)
displaying the user selectable options in a grid pattern, and (2) not displaying
the user selectable options in a grid pattern. Option two merely requires not
displaying the specified user selectable options that are in the grid pattern;
displaying other options (including other user selectable options displayed in
a grid pattern), would fall under this requirement.
Stringer, as cited by the Examiner, teaches a display controller with a
grid of buttons that corresponds to a grid of options on the display. Stringer
Figs. 8–10b; Final Act. 5–7. Stringer further discloses “execution of the
selected function . . . may result in the generation of a new screen display
requiring further key inputs.” Stringer 4:40–41, 7:53–55; Final Act. 6.3
We agree with the Examiner that Stringer’s “generation of a new screen
display requiring further key inputs” teaches or suggests the disputed
limitations—wherein pressing one of the plurality of buttons when the
display screen is not displaying the user selectable options in a grid pattern
causes the static functions to execute—because Stringer’s video display will
display other options (that are not the first plurality of user selectable
options). Final Act. 6.
Accordingly, we are not persuaded the Examiner errs in finding the
limitations of claim 1 to be obvious in view of the cited references.

3 See also Stringer 2:22–26 (“Computer software is employed to define
target areas on the display screen having a position which corresponds to the
spatial relationship of the keys on the controller and to determine what
function or functions are to be assigned to each area and the effect of
selection of a particular area.”).
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Independent Claim 6
Appellant argues the Examiner errs, because Appellant “respectfully
disagrees with the Examiner that Roberts discloses ‘output a first control
signal in response to a user touching one of the buttons and a second control
signal in response to a user pressing one of the buttons’ as recited in claim
6.” Appeal Br. 12 (emphasis omitted). Appellant contends that, in contrast
with the claim, “in Roberts, the user must press the button on the remote to
output the signal (not only touch the button).” Id.
The Examiner construes claim 6 such “that a ‘press’ implies that a
button first be ‘touched’ as a ‘press’ cannot occur unless a touch ostensibly
occurs,” and the claimed “two different inputs are clearly stated in Roberts
as a user makes two separate inputs with a ‘press.’” Final Act. 38–39. We
find the Examiner’s analysis reasonable, and note the “touching” and the
“pressing” inputs of claim 6 may be for different respective buttons. See
Appeal Br. 18. Appellant, furthermore, does not address the Examiner’s
reasonable construction provided in the Final Action. Thus, Appellant does
not persuade us the Examiner errs in finding the disputed limitations of
claim 6 to be taught or suggested by Robert’s controller having “numerous
keys that provide particular signals to media client 110 to enable a user to
interact with media client.” Roberts ¶ 13; Final Act. 11.
Accordingly, we are not persuaded the Examiner errs in finding the
limitations of claim 6 to be obvious in view of the cited references.

Independent Claim 10
Claim 10 recites, inter alia, a “dual-function remote control,
comprising: a plurality of buttons arranged in a grid pattern and configured
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to be dual function.” Appeal Br. 18–19 (emphases added). Appellant argues
the Examiner errs, because “[t]here is no button in Stringer that is dual
function.” Appeal Br. 13.
Appellant does not persuade us that Stringer fails to teach or suggest a
remote with “dual function” buttons, for at least the reasons discussed above
with respect to claim 1. See Final Act. 18; Stringer Fig. 1 (depicting a
remote in which any function may be assigned to a button4). Furthermore,
the Examiner finds the disputed limitation obvious in view of the combined
teachings of Roberts with Stringer, which “would have resulted in the
mapping of buttons which [are] already mapped from the screen to the
remote control to also be used to select and control user selectable options.”
Final Act. 18; see also Final Act. 16, 17 (“Roberts discloses a dual-function
remote control” that “may alter programming options with a selection of a
button.”); Roberts Fig. 9, ¶ 21. Appellant does not challenge the Examiner’s
rejection with respect to the cited combination.
Accordingly, we are not persuaded the Examiner errs in finding the
limitations of claim 10 to be obvious in view of the cited references.

Independent Claim 14
Appellant argues the Examiner errs:
Applicant respectfully disagrees with the Examiner that Stringer
discloses “highlighting one of the plurality of user selectable
options in response to a user touching the corresponding one of
the plurality of buttons on the remote control; and selecting one
of the plurality of user selectable options in response to the user
pressing the corresponding one of the plurality of buttons on the
remote control” as recited in claim 14 (emphasis added).

4 See Stringer 4:20–21.
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Appeal Br. 13. Appellant contends “the user selectable option in Stringer is
both highlighted and ‘executed’ in response to the single action of the user
pressing a corresponding button.” Id. As asserted by Appellant, the fact that
Stringer discloses “different actions performed by the system . . . does not
mean there is an additional keypress to perform each one.” Id. at 14.
Appellant’s arguments are not commensurate with the scope of the
claim: claim 14 does not recite an “additional” keypress. See Appeal Br.
14. Similar to claim 6 as discussed above, the “highlighting” and the
“selecting” actions of claim 14 may be performed for different user
selectable options. See Appeal Br. 19. Thus, Appellant fails to show
persuasively that the Examiner errs in finding the disputed limitations taught
or suggested by Stringer’s recursive flowchart, which details steps for
actuating various functions and feedback using various buttons. See Final
Act. 39; Stringer Figs. 9–10b, 7:49–54 (“show[ing] the icon in the middle on
the top row in a different colour thus signifying that the middle key on the
top row has been pressed,” and “execution of the selected function . . . may
result in the generation of a new screen display requiring further key
inputs.”).
Accordingly, we are not persuaded the Examiner errs in finding the
limitations of claim 14 to be obvious in view of the cited references.

Independent Claim 18
Appellant argues the Examiner errs, because Appellant “respectfully
disagrees with the Examiner that Stringer discloses ‘the remote control
configured to enter into a grid mode in response to a first signal, and a
standard mode in response to a second signal’ as recited in independent
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claim 18.” Appeal Br. 14. Particularly, Appellant contends the “remote of
Stringer has both the standard static buttons and the grid pattern buttons
being operational at the same time,” whereas the claimed “[e]ntering into a
mode means that the remote was not in that mode previously.” Id.
We are not persuaded the Examiner errs. Appellant presents no
persuasive evidence, technical reasoning, or citations to the Specification, to
show that the claimed “enter” precludes the remote being in a given mode
previously. See Appeal Br. 14; Final Act. 40. For at least this reason, we
are not persuaded the Examiner errs in finding that claim 18 “does not state
(implicitly or explicitly) that each mode is seemingly ‘independent’ of each
other,” and “[w]hether or not [Stringer’s modes] are operational ‘at the same
time’ is irrelevant as the claimed matter does not make any distinctions as
that matter.” Final Act. 40.
Further, claim 18 recites the steps of entering in the modes comprise,
inter alia, “transmitting the button press.” Appeal Br. 20. Stringer teaches a
controller with different buttons sending different signals, and the Examiner
finds “a user would have entered into either mode depending on which
button was pushed/selected by the user.” Final Act. 31; Stringer Figs. 8, 9
(depicting a new screen display generated upon receiving a signal from a
button on the controller). We find the Examiner’s construction reasonable,
because Stringer’s new screen displays correspond to entering a mode, as
claimed.
Accordingly, we are not persuaded the Examiner errs in finding the
limitations of claim 18 to be obvious in view of the cited references.

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Dependent Claim 13
Appellant argues the Examiner’s rejection is in error, because “[c]laim
13 recites, in part ‘to transmit the static functions of the plurality of buttons
when the video device is not displaying the grid pattern,’” and “Stringer
mentions nothing about transmitting any static functions of the plurality of
buttons when the video device is not displaying the grid pattern.” Appeal
Br. 15.
Appellant’s argument is not responsive to the Examiner’s rejection.
Claim 13 recites “the video device transmits signals to the remote control to
transmit the static functions of the plurality of buttons when the video device
is not displaying the grid pattern.” Appeal Br. 19. The Examiner relies on
the combination of Roberts and Stringer, and cites Roberts for teaching
transmitting, as claimed. Final Act. 22; Roberts Fig. 9, ¶ 43. The Examiner
further finds the limitations of claim 13 would have been obvious to one of
ordinary skill in the art. See Final Act. 24 (“One would have been motivated
to have combined the teachings because a user in Roberts already benefits
from a mapping of the screen to the physical device.”). Appellant does not
challenge the Examiner’s reasonable citation to Roberts, or the Examiner’s
obviousness analysis.
Accordingly, we are not persuaded the Examiner errs in finding the
limitations of claim 13 to be obvious in view of the cited references.

Dependent Claim 17
Appellant argues the Examiner’s rejection is in error, because “[c]laim
17 recites, in part ‘to configure the buttons to execute a pre-set static
function,’” and “[S]tringer teaches away from such a modification.” Appeal
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Br. 15. According to Appellant, “[i]n Stringer, those ‘buttons keys of the
controller’ arranged in the grid pattern are ‘free from any identifying
characteristics which limits its use to a designated function.’” Id. (quoting
Stringer Abstract).
We are not persuaded of Examiner error. Beyond the bare assertion,
Appellant does not explain how a lack of numerals printed on Stringer’s
remote control teaches away from the claimed invention. Further, Stringer
discusses not limiting a controller button to a single function. Stringer 4:23–
26; Ans. 10. Thus, we see no error in the Examiner’s finding that Stringer
teaches or suggests configuring the buttons to execute a pre-set static
function, as claimed. See Final Act. 27–29.
Accordingly, we are not persuaded the Examiner errs in finding the
limitations of claim 17 to be obvious in view of the cited references.

CONCLUSION
We are not persuaded the Examiner errs in finding claims 1, 6, 10, 13,
14, 17, and 18 obvious in view of the cited references. Appellant does not
present separate substantive arguments for the remaining claims. See
Appeal Br. 12–14. Thus, we sustain the Examiner’s obviousness rejection
of claims 1–10 and 12–20.

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Application 13/928,305

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12–
14, 16, 17
103 Roberts, Stringer 1–10, 12–
14, 16, 17

15, 18–20 103 Roberts, Stringer,
Shibamiya
15, 18–20
Overall
Outcome
1–10, 12–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED