Ex Parte Almeda et al

Board of Patent Appeals and Interferences

Mar 15, 2012

11640582 (B.P.A.I. Mar. 15, 2012)

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.
11/640,582 12/18/2006 James R. Almeda 1116-099A 7203
71739 7590 03/16/2012
WITHROW & TERRANOVA CT
100 REGENCY FOREST DRIVE , SUITE 160
CARY, NC 27518
EXAMINER
LAM, DUNG LE
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
03/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES R. ALMEDA,
and GLEN THOMAS LINDAHL
____________________

Appeal 2010-006998
Application No. 11/640,5821
Technology Center 2600
____________________

Before MARC S. HOFF, CARLA M. KRIVAK,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 28-36 and 41-47.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The real party in interest is ConPact, Inc.
2 Claims 1-27 have been cancelled. Claims 37-40 stand withdrawn from
consideration as being drawn to a non-elected invention.
Appeal 2010-006998
Application 11/640,582

2
Appellants’ invention concerns a system and method for controlling
the operation of an electrical appliance from a remote location using a
cellular device. The user selects an appliance to be controlled from a list of
appliances stored in the cellular device. Upon selecting an appliance from
the list, the user is then presented with a list of instructions stored in the
cellular device. The selected instruction is transmitted to a central hub (Spec.
2-3).
Claim 28 is exemplary of the claims on appeal:
28. A method for controlling operation of an appliance from a remote
location using a cellular device, the method comprising the steps of:

presenting a list of one or more appliances capable of being controlled
by a central hub;

receiving a selection of an appliance to be controlled from the list of
one or more appliances;

presenting a list of instructions associated with the selected appliance;

receiving a selection of an instruction from the list of instructions;

using the cellular device to transmit the instruction to the central hub;
and

wherein the list of one or more appliances and the list of instructions
are retrieved from memory in the cellular device, without connecting to a
remote device.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Ito US 6,510,212 B2 Jan. 21, 2003
Sutcliffe US 2006/0023862 A1 Feb. 2, 2006
Appeal 2010-006998
Application 11/640,582

3
Claims 28-36 and 41-47 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ito in view of Sutcliffe.
Claim 29 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claim 29 stands 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.
Claims 28, 33, and 41-46 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1, 8, 10, and 19-24 of U.S. Patent No. 7,155,213.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed January 15, 2010), the Reply Brief (“Reply Br.,” filed
April 19, 2010), and the Examiner’s Answer (“Ans.,” mailed February 17,
2010) for their respective details.
ISSUES
Appellants argue, inter alia, that the Examiner’s proposed
modification of Ito in view of Sutcliffe would impermissibly change Ito’s
principle of operation. According to Appellants, Ito requires dynamically
prepared menus based upon appliance condition information received from
the remote operation adaptor. Modifying Ito such that the cellular device
does not connect to the remote device (i.e., the appliance) would, in
Appellants’ view, impermissibly change Ito (App. Br. 9-10).
With respect to the § 112, first paragraph rejection of claim 29,
Appellants argue that the Specification clearly illustrates a direct cellular
communications link between the cellular device and the hub via the public
cellular telephone infrastructure (App. Br. 8).
Appeal 2010-006998
Application 11/640,582

4
With respect to the § 112, second paragraph rejection of claim 29,
Appellants argue that “the cellular device transmits the instruction directly to
the central hub via a cellular communications link” is not indefinite because
the various cellular components complained by the Examiner together
constitute a unitary cellular communications link (App. Br. 9).
Appellants' contentions, and the Examiner’s findings, present us with
the following issues:
1. Would the Examiner’s proposed modification of Ito in view of
Sutcliffe impermissibly change the principle of operation of Ito?
2. Did Appellants provide adequate written description of the
invention recited in claim 29?
3. Is “wherein the cellular device transmits the instruction directly to
the central hub via a cellular communications link” indefinite within the
meaning of 35 U.S.C. § 112, second paragraph?
FINDINGS OF FACT
Appellants’ Specification
1. The Specification discloses that "program 30 calls a stored number
of the cellular interface embedded in the selected appliance to establish a
communication link between the cellular device 22 and the embedded
cellular interface 24" (Spec. ¶ [0043]).
Ito
2. Ito teaches prepping the appliance home page 301, presented to a
user in response to the user’s selection of a particular appliance to control,
“using the condition of the appliance sent from the remote operation adaptor
106” (col. 8, ll. 43-47).
Appeal 2010-006998
Application 11/640,582

5
3. In the event the user selects the air conditioner, the room
temperature setting 317 and the current operating condition of the device
(i.e., cooling, heating, ventilating, or stationary) are transmitted from remote
operation adaptor 106 and displayed in appliance home page 301 (col. 8, ll.
47-54).
PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407, (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
If the proposed modification or combination of the prior art would
change the principle of operation of the prior art invention being modified,
then the teachings of the references are not sufficient to render the claims
prima facie obvious. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959).

Appeal 2010-006998
Application 11/640,582

6
ANALYSIS
§ 103 REJECTION
We agree with Appellants that the Examiner’s proposed modification
of Ito in view of the teachings of Sutcliffe would impermissibly change the
principle of operation of Ito (see App. Br. 10). The Examiner’s Answer fails
to present any meaningful response to Appellants’ argument.
Ito teaches prepping the appliance home page 301, presented to a user
in response to the user’s selection of a particular appliance to control, using
the condition of the appliance sent from the remote operation adaptor 106
(FF 2). For example, in the event the user selects the air conditioner, the
room temperature setting 317 and the current operating condition of the
device (i.e., cooling, heating, ventilating, or stationary) are transmitted from
remote operation adaptor 106 and displayed in appliance home page 301 (FF
3).
We agree with Appellants that if Ito were to be modified in the
manner proposed by the Examiner, such that the list of appliances and list of
instructions were retrieved without connecting to a remote device, the
resulting apparatus would be unable to present current environmental
information (e.g., room temperature) or current operating condition of the
selected device (App. Br. 11). Therefore, we conclude that the proposed
modification would change the principle of operation of Ito, and the
combined teachings of Ito and Sutcliffe are not sufficient to render the
claims prima facie obvious. See Ratti, 270 F.2d at 813.
We conclude that the Examiner erred in rejecting claims 28-36 and
41-47 under § 103. We will not sustain the rejection.

Appeal 2010-006998
Application 11/640,582

7
REJECTION UNDER § 112, FIRST PARAGRAPH
We agree with Appellants that the Specification provides adequate
written description to support the limitation “the cellular device transmits the
instruction directly to the central hub via a cellular communications link”
(App. Br. 8). The Specification discloses that “program 30 calls a stored
number of the cellular interface embedded in the selected appliance to
establish a communication link between the cellular device 22 and the
embedded cellular interface 24” (FF 1).
We therefore find that the Examiner erred in rejecting claim 29 under
§ 112, first paragraph. We will not sustain the rejection.
REJECTION UNDER § 112, SECOND PARAGRAPH
We do not agree with the Examiner’s finding that claim 29 is vague
and indefinite. We agree with Appellants that the “cellular communications
link” recited in the claim is, of necessity, composed of multiple cellular
components such as a base station (App. Br. 9). Therefore, we see no
indefiniteness in Appellants claiming that the cellular device transmits the
instruction directly to the central hub “via a cellular communications link”
(singular).
We find that the Examiner erred in rejecting claim 29 as indefinite
under § 112, second paragraph. We will not sustain the rejection.
OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION
Appellants present no arguments asserting error in the Examiner’s
rejection of claims 28, 33, and 41-46 under the judicially created doctrine of
obviousness-type double patenting. Therefore, we will sustain the
Examiner’s rejection pro forma.
Appeal 2010-006998
Application 11/640,582

8
CONCLUSION
1. The Examiner’s proposed modification of Ito in view of Sutcliffe
would impermissibly change the principle of operation of Ito.
2. Appellants provided adequate written description of the invention
recited in claim 29.
3. “[W]herein the cellular device transmits the instruction directly to
the central hub via a cellular communications link” is not indefinite within
the meaning of 35 U.S.C. § 112, second paragraph.
ORDER
The Examiner’s rejection of claims 28, 33, and 41-46 is affirmed.
The Examiner’s rejection of claims 29-32, 34-36, and 47 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

pgc