Ex Parte Escobosa et al

Patent Trial and Appeal Board

Dec 9, 2014

11601265 (P.T.A.B. Dec. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARCUS ESCOBOSA, PATRICK H. HAYES and
JAMES N. CONWAY JR.
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Appeal 2012-005669
Application 11/601,265
Technology Center 2600
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Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR. and
STANLEY M. WEINBERG, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1–9 and 19–21
under 35 U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35
U.S.C. § 6(b) (2012).
We reverse.
Introduction
The invention is directed to customizing a remote control.
Specification 1.

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Representative Claim (disputed limitations emphasized)
1. A method of customizing a remote control, comprising:
receiving at an Internet Web site first data that functions to
identify a plurality of consumer electronic devices;
receiving at the Internet Web site second data that functions to
identify an activity to be performed using the plurality of consumer
electronic devices identified by the first data;
using the first data that functions to identify the plurality of
consumer electronic devices and the second data that functions to
identify an activity to be performed using the plurality of consumer
electronic devices identified by the first data to cause the Internet Web
site to select a pre-programmed sequence comprising instructions
executable by the remote control for causing the plurality of consumer
electronic devices identified by the first data to perform a plurality of
operations in connection with the activity identified by the second
data when a configurable key of the remote control is actuated; and
downloading the pre-programed sequence from the Internet
Web site for use in connection with the configurable key of the remote
control.

Rejections on Appeal
Claims 19–21 are rejected under 35 U.S.C. §102(b) as being
anticipated by Kemink (International Publication Number WO 00/17738;
published March 30, 2000). Answer 4–6.
Claims 1–3, 5–7 and 9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kemink and Van Ee (US Patent Number 6,208,341 B1;
issued August 5, 2001). Answer 6–8.
Claim 4 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Kemink, Van Ee and Sartain (US Patent Number 6,124,854; issued
September 26, 2000). Answer 8.
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Claim 8 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Kemink, Van Ee and Darbee (US Patent Number 6,130,726; issued
October 10, 2000). Answer 9.

ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed July 11, 2011), the Answer (mailed
October 20, 2011) and Reply Brief (December 14, 2011) for the respective
details. We have considered in this decision only those arguments
Appellants actually raised in the Briefs.

Anticipation Rejection
Appellants argue, “Kemink does not expressly disclose, teach, or
suggest displaying images of original equipment remote controls” as
required by independent claim 19. Appeal Brief 6. The Examiner finds
Kemink anticipates the claim because Figure 1 discloses an image of the
original equipment remote control and “displaying and downloading the
graphical user interface from the internet site provide an alternative to the
packaging [sic] an appliance specific remote control with the appliance.”
Answer 10. We do not agree with the Examiner’s findings. Kemink’s
Figure 1 discloses an image of a prior art programmable remote control
device and fails to disclose “a plurality of images of original equipment
remote controls” via an Internet Web site as recited in claim 19. See
Kemink, page 5, line 11.
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Therefore, we reverse the Examiner’s anticipation rejection of
independent claim 19, as well as dependent claims 20 and 21 for the reasons
articulated above.1

Obviousness Rejection
Appellants contend Kemink fails to disclose the claimed “receiving at
the Internet Web site second data that functions to identify an activity to be
performed using the plurality of consumer electronic devices identified by
the first data” as recited in claim 1. Appeal Brief 8. The Examiner finds
“deleting an icon as an example of selecting a functions [sic] to be
performed by the . . . appliance upon selection at the remote control.”
Answer 10–11. We do not agree with the Examiner’s findings and find
Appellants’ arguments persuasive because:
[W]hile a user “deleting an icon” may be “an example of
selecting a function to be performed by the graphical user
interface” (Ex. Ans.; pgs. 11-12), it is respectfully submitted
that a user deleting an icon of a graphical user interface has no
relevance to a user providing second data to an internet server
to indicate an activity to be performed by a plurality of
appliances or an Internet Web site using such second data to
select for the user data for downloading to a remote control as
claimed.
Reply Brief 3–4.

1 “A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

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Van Ee does not remedy the noted deficiency of Kemink and
therefore we reverse the Examiner’s obviousness rejection of independent
claim 1, as well as, dependent claims 2–9 for the reasons articulated above.

DECISION
The Examiner’s 35 U.S.C. § 102(b) rejection of claims 19–21 is
reversed.
The Examiner’s 35 U.S.C. § 103(a) rejections of claims 1–9 are
reversed.

REVERSED

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