Ex Parte 7821504 et al

Patent Trial and Appeal Board

Dec 21, 2013

95001760 (P.T.A.B. Dec. 21, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,760 10/12/2011 7821504 91223-820674(089400US) 6410
34018 7590 12/23/2013
GREENBERG TRAURIG, LLP (CHI)
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732
EXAMINER
RALIS, STEPHEN J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/23/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

UNIVERSAL ELECTRONICS, INC.

v.

LOGITECH, INC.
____________________

Appeal 2013-009717
Reexamination Control 95/001,760
Patent No. US 7,821,504 B1
Technology Center 3900
____________________

Before JAMES T. MOORE, JOHN A. JEFFERY, and MARC S. HOFF,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patent Owner Universal Electronics, Inc. appeals under 35 U.S.C.
§§ 134(b) and 315(a) (2002) from the rejection of claims 1-86 as set forth in
the Right of Appeal Notice (RAN) mailed November 2, 2012. Requester
Logitech did not file a respondent brief. The Examiner mailed an
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Examiner’s answer on May 14, 2013 which incorporated the RAN by
reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm-in-part.
The ’504 patent issued to Janik (October 26, 2010), and is assigned to
Universal Electronics Inc. The ‘504 patent concerns a processing device of a
universal controlling device (“UCD”), programmed to distinguish between a
first input type provided to a touch-sensitive surface and a second input type
provided to the touch-sensitive surface. In response to the first input type,
indicative of a static touch made upon the touch-sensitive surface, the
processing device causes a transmitter to transmit first data representative of
the static touch. In response to the second input type, which is indicative of a
moving touch made across the touch-sensitive surface, the processing device
causes the transmitter to transmit second data representative of the moving
touch (Abstract).
Claim 1 is exemplary of the claims on appeal:
A method for using a universal controlling device comprised of a
touch-sensitive surface to command functional operations of one or more
appliances located remotely from the controlling device, comprising:
accepting via the touch-sensitive surface of the universal controlling
device a first input type indicative of a static touch made upon the touch-
sensitive surface;
causing the universal controlling device to transmit first data used to
command at least a first functional operation of the one or more appliances,
the first data being representative of the static touch made upon the touch-
sensitive surface;
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accepting via the touch-sensitive surface of the universal controlling
device a second input type indicative of a moving touch made across the
touch-sensitive surface;
causing the universal controlling device to transmit second data used
to command at least a second functional operation of the one or more
appliances, the second data being representative of the moving touch made
across the touch-sensitive surface; and
causing the universal controlling device to distinguish the first input
type received via the touch-sensitive surface from the second input type
received via the touch-sensitive surface.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Flowers US 4,578,671 Mar. 25, 1986
Goldstein US 5,410,326 Apr. 25, 1995
Hills US 5,506,572 Apr. 9, 1996
Van Ryzin US 6,255,961 Jul. 3, 2001
Mazza US 2002/0070915 Jun. 13, 2002
Yates US 2002/0118131 Aug. 29, 2002
Hayes US 2002/0140571 Oct. 3, 2002
Arling US 6,629,077 Sep. 30, 2003
Hayes US 6,650,247 Nov. 18, 2003
Yates US 6,750,803 Jun. 15, 2004
Segal US 6,765,557 Jul. 20, 2004
Harris US 6,784,805 Aug. 31, 2004
Arling US 6,788,241 Sep. 7, 2004
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Suomela US 6,885,362 Apr. 26, 2005
Yu US 6,980,120 Dec. 27, 2005
Hayes US 7,046,161 May 16, 2006
Giger US 7,411,515 Aug. 12, 2008
Dresti US 7,831,930 Nov. 9, 2010

Claims 1, 2, 5-11, 20, 22-26, 29, 30, 32-33, 36-39, 49, 54- 55, 58, 60,
63-66, 76, 78-82, and 85 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Yates ’131.
Claims 1-2, 5-11, 20, 22-26, 29, 30, 32-33, 36-39, 49, 54-55, 58, 60,
63-66, 76, 78-82, and 85 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Yates ’803.
Claims 1-11, 27, 29-30, 32-39, 56, and 83 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Segal.
Claims 3-4, 27, 34-35, 56, 61-62, and 83 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Yates ’131 in view of Segal.
Claims 8-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ’803 in view of Wall.
Claims 8-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ’131 in view of Kim.
Claims 8-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ’131 in view of Asher.
Claims 8-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ’131 in view of Mears.
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Claims 12, 13, 40, 41, 67 and 70 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Segal, Yates ’131 or Yates ’803 in view
of Suomela.
Claims 14, 42, 43, 68, and 69 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Segal, Yates ’131 or Yates ’803.
Claims 16, 21, 45, 50-53, 72 and 77 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yates ’131 or Yates ’803 in view of
Mazza.
Claims 16, 45, and 72 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Segal and Mazza.
Claims 21, 50, 51-53 and 77 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Segal, Yates ’131, or Yates ’803 and Mazza.
Claims 17, 46 and 73 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Segal, Mazza and Yu.
Claims 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Segal, Yates ’131 or Yates ’803 in view of Arling.
Claims 18, 47, and 74 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Segal, Yates ’131 or Yates ’803 in view of Arling.
Claims 19, 48 and 75 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Segal, Yates ’131 or Yates ’803 in view of Hayes ’161 or
Hayes ’571.
Claims 20, 22-26, 49, 54-55, 76 and 78-82 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Segal in view of Yates ’131
or Yates ’803.
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Claims 23, 52 and 79 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Segal, Yates ’131 or Yates ’803 in view of Goldstein.
Claim 52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Segal, Yates ’131 or Yates ’803 and Mazza in view of
Goldstein.
Claims 25, 26, 54-55, and 81-82 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Segal, Yates ’131 or Yates ’803 in view
of Dresti.
Claims 27, 56 and 83 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Segal, Yates ’131 or Yates ’803 in view of Van Ryzin.
Claims 28, 57 and 84 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Segal, Yates ’131 or Yates ’803 in view of Harris.
Claims 31, 59 and 86 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Segal, Yates ‘131 or Yates ’803 in view of Hayes ’247 or
Arling.
Claims 32-39, 56 and 58 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Segal in view of Hayes ’161.
Claims 32, 33, 36-39, 49, 54-55 and 58 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yates ’131 or Yates ’803 in view of
Hayes.
Claims 13, 14, 41-43, and 68-70 stand rejected under 35 U.S.C.
§ 112, first paragraph.
Claims 17 and 32-59 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter which Appellants regard as their invention.
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ISSUES
Appellants argue, inter alia, that Yates ’131 does not expressly or
inherently disclose a method for using a UCD comprised of a display having
a touch-sensitive surface, comprising accepting via the touch-sensitive
surface of the UCD a first input type indicative of a static touch made upon
the touch-sensitive surface, accepting via the touch-sensitive surface of the
UCD a second input type indicative of a moving touch across the touch-
sensitive surface, and causing the UCD to distinguish the first input type
received via the touch-sensitive surface from the second input type received
via the touch-sensitive surface (App. Br. 9-11).
Appellants further argue that Segal does not expressly or inherently
disclose a method for using a UCD comprised of a display having a touch-
sensitive surface, comprising accepting via the touch-sensitive surface of the
UCD a first input type indicative of a static touch made upon the touch-
sensitive surface, accepting via the touch-sensitive surface of the UCD a
second input type indicative of a moving touch across the touch-sensitive
surface, and causing the UCD to distinguish the first input type received via
the touch-sensitive surface from the second input type received via the
touch-sensitive surface (App. Br. 23-25).
Appellants’ contentions present us with the following issues:
1. Does Yates ’131 expressly or inherently disclose a method for
using a UCD comprising accepting a first input type indicative of a selection
of a displayed GUI icon, accepting a second input type indicative of a
motion made across the touch-sensitive surface, and causing the UCD to
distinguish the first input type from the second input type?
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2. Does Segal expressly or inherently disclose a method for using a
UCD comprising accepting a first input type indicative of a selection of a
displayed GUI icon, accepting a second input type indicative of a motion
made across the touch-sensitive surface, and causing the UCD to distinguish
the first input type from the second input type?

PRINCIPLES OF LAW
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "Inherency, however,
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted).

ANALYSIS
§ 102 REJECTION OF CLAIM 1, 2, 8, 29, 60, AND 63 OVER YATES ’131
The Examiner finds that Yates ’131 teaches a method for using a
UCD to transmit data to one or more appliance comprising, inter alia,
causing the UCD to distinguish the first input type (i.e., indicative of a static
touch) provided to the touch-sensitive surface from the second input type
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(i.e., indicative of a moving touch) received via the touch-sensitive surface,
as claim 1 recites (Ans. 14-16).
The Examiner reads remote control 12 of Yates ’131 as corresponding
to the claimed UCD (Ans. 9). Remote control 12 must therefore either
expressly or inherently distinguish the first input type received via the touch-
sensitive surface from the second input type received via the touch-sensitive
surface to anticipate the claimed invention.
We do not agree with the Examiner’s finding that remote control 12 of
Yates ’131 inherently distinguishes the first input type from the second input
type. The Examiner acknowledges that Yates ’131 does not expressly
disclose the claimed distinguishing, but contends that “single control
signal 30 must have some kind of information thereon . . . to allow the
controller 14 to discriminate the single control signal 30 from various other
possible single control signals to communicate with the appropriate
appliance device” (Ans. 16).
We agree with Appellants that remote control 12 of Yates ’131 need
not necessarily
transmit . . . first data that is representative of a static touch
made upon the touch-sensitive surface and second data that is
representative of a moving touch made across the touch-
sensitive surface where the ‘remote control’ is further caused to
distinguish the static touch, i.e. the first input type, from the
moving touch, i.e. the second input type, as is required of
inherency

(App. Br. 11).
Appellants argue, and we agree, that remote control 12 “does not and
need not necessarily transmit to the controller 14 anything more than the
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expressly described data indicative of the location of a touch on the touch
pad 28 when input is provided to the touch pad 28” (App. Br. 13). The
Examiner notes that Yates teaches switch 76 delineates the mode of
operation of the remote control 12 (Ans. 16), as “absolute” or “relative”
mode (Ans. 16).
The Examiner argues that relative/absolute mode information is
necessarily part of the “single signal 30” transmitted by remote control 12
(Ans. 15). The Examiner states that nowhere does Yates ’131 disclose a
separate signal being sent by remote control 12, in addition to signal 30, to
control at least one appliance or device (Ans. 18). The Examiner concludes
that since Yates ’131 discloses only the “single signal 30 providing
information to the controller 14 and the controller 14 must inherently
differentiate between mode and X/Y coordinate information simultaneously
for operation of the at least one appliance device” (Ans. 18), Yates teaches a
UCD in accordance with the claimed invention.
We do not agree with the Examiner’s position. Rather, we are
persuaded by Appellants that in Yates ’131, “the same data – i.e., the data
that is representative if a location of a touch on the touch pad 28 – is
expressly described as being transmitted as appropriate in response to any
type of touch on the touch pad 28” (App. Br. 16). We further agree that in
Yates, remote control 12 “does not distinguish between any different input
types provided to the touch pad 28” (App. Br. 16). Rather, the controller 14
will respond to the data that is ubiquitously transmitted in the signal 30, i.e.,
the data indicative of the location of the touch on the touch pad 28, “in a
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manner that will depend upon the current operating mode of the
system/controller 14” (App. Br. 16-17; emphasis added).
Because we find that controller 14 of Yates ’131, not remote
control 12, is the component charged with distinguishing between modes of
operation, we find that Yates ’131 does not teach all the limitations of
independent claim 1. We further find that Yates ’131 does not teach all the
limitations of independent claim 8, which is a “device” claim contains
parallel limitations concerning input types and “distinguishing” one input
type from another. We will not sustain the Examiner’s § 102 rejection of
claims 1, 2, 8, 29, 60, and 63 over Yates ’131. Because Yates ‘803 results
from the same patent application as Yates ’131, we will also not sustain the
§ 102 rejection of claims 1, 2, 8, 29, 60, and 63 over Yates ’803, for the
same reasons.

CLAIMS 3 AND 61, 103, YATES IN VIEW OF SEGAL
As noted supra, we find that Yates ’131 does not teach all the
limitations of independent claim 1. We have reviewed Segal and find that it
does not supply the teachings missing from Yates ’131. Therefore, we will
not sustain the § 103 rejection of claims 3 and 61 over Yates ’131 in view of
Segal.

§ 102 REJECTION OF CLAIMS 1-3, 8, AND 29 OVER SEGAL
We agree with Appellants that Segal discloses substantially the same
system as Yates ’131 (App. Br. 23). We thus further agree, for the reasons
expressed supra with respect to Yates ’131, that Segal does not teach a
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universal controlling device that responds to a first input type provided to a
touch-sensitive surface indicative of a static touch by transmitting first data
used to command at least a first functional operation of an appliance, and
which responds to a second input type . . . indicative of a moving touch
made across the touch-sensitive surface by transmitting second data used to
command a second functional operation of an appliance, wherein the UCD
distinguishes the first input type from the second input type (App. Br. 23-
24).
We find that controller 14 of Segal, rather than remote control 12, is
the component charged with distinguishing between modes of operation.
Accordingly, we find that Segal does not teach all the limitations of
independent claims 1 and 8. We will not sustain the Examiner’s § 102
rejection of claims 1-3, 8, and 29 over Segal.

§ 103 REJECTION OF CLAIM 8 OVER YATES ‘131 IN VIEW OF WALL, YATES ‘131
IN VIEW OF KIM, YATES ‘131 IN VIEW OF ASHER, OR YATES ‘131 IN VIEW OF
MEARS
As noted supra, we find that Yates ’131 does not teach all the
limitations of claim 8.
We have reviewed Wall and find that it does not supply the teachings
missing from Yates ’131. Therefore, we will not sustain the § 103 rejection
of claim 8 over Yates ’131 in view of Wall.
We have reviewed Kim and find that it does not supply the teachings
missing from Yates ’131. Therefore, we will not sustain the § 103 rejection
of claim 8 over Yates ’131 in view of Kim.
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We have reviewed Asher and find that it does not supply the teachings
missing from Yates ’131. Therefore, we will not sustain the § 103 rejection
of claim 8 over Yates ’131 in view of Asher.
We have reviewed Mears and find that it does not supply the
teachings missing from Yates ’131. Therefore, we will not sustain the § 103
rejection of claim 8 over Yates ’131 in view of Mears.

CLAIMS 4-7, 9-28, 30-59, 62, AND 64-86
Each of these claims depends from independent claim 1 or
independent claim 8. As noted supra, we do not sustain the rejection of
independent claims 1 and 8.We have reviewed the further references applied
against these claims and we find that they do not remedy the deficiencies of
Yates ’131 or Yates ’803. Therefore, we will not sustain the Examiner’s
§§ 102 or 103 rejections of claims 4-7, 9-28, 30-59, 62, and 64-86.

§ 112, FIRST PARAGRAPH REJECTION OF CLAIMS 13, 14, 41-43, AND 68-70
These claims stand rejected under 35 U.S.C. § 112, first paragraph.
Appellant presented no arguments contesting the rejection (App. Br. 7).
Accordingly, we will sustain pro forma the Examiner’s § 112, first rejection
of claims 13, 14, 41-43, and 68-70.

§ 112, SECOND PARAGRAPH REJECTION OF CLAIMS 17 AND 32-59
These claims stand rejected under 35 U.S.C. § 112, second paragraph.
Appellant presented no arguments contesting the rejection (App. Br. 7).
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Accordingly, we will sustain pro forma the Examiner’s § 112, second
paragraph rejection of claims 17 and 32-59.

CONCLUSIONS
1. Yates ‘131 does not expressly or inherently disclose a method for
using a UCD comprising accepting a first input type indicative of a selection
of a displayed GUI icon, accepting a second input type indicative of a
motion made across the touch-sensitive surface, and causing the UCD to
distinguish the first input type from the second input type.
2. Segal does not expressly or inherently disclose a method for using a
UCD comprising accepting a first input type indicative of a selection of a
displayed GUI icon, accepting a second input type indicative of a motion
made across the touch-sensitive surface, and causing the UCD to distinguish
the first input type from the second input type.

ORDER
The Examiner’s rejection of claims 13, 14, 32-59, and 68-70 is
affirmed. The Examiner’s rejection of claims 1-12, 15-31, 60-67, and 71-86
is reversed.

AFFIRMED-IN-PART

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ak

Greenberg Traurig, LLP
77 West Wacker Drive
Suite 3100
Chicago, IL 60601-1732

Third Party Requester:

Kilpatrick Townsend & Stockton, LLP
Two Embarcadero Center
Eighth Floor
San Fransisco, CA 94111-3834