Ex Parte Escobosa et al

Patent Trial and Appeal Board

Mar 20, 2018

14736761 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
141736,761 06/11/2015 Marcus Escobosa
34018 7590 03/22/2018
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
81230.56US4 2395
EXAMINER
BROWN, VERNAL U
ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCUS ESCOBOSA, PATRICK H. HAYES and
JAMES N. CONWAY JR1
Appeal2017-010579
Application 14/736,761
Technology Center 2600
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR,
and PHILLIP A. BENNETT, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the Final Rejection of claims 1-8 under 35
U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.
1 Appellants identify the Real Party in Interest as Universal Electronics Inc.
Appeal Brief 2.
Appeal2017-010579
Application 14/736,761
Introduction
The invention is directed to customizing a remote control.
Specification 1.
Illustrative Claim
1. A system for customizing a controlling device,
compnsmg:
an Internet Web server in communication with the
controlling device via a wide area network, the Internet Web
server having programming which, when executed by the
Internet Web server, causes the Internet Web server to perform
the steps of:
using first data and second data received via the wide area
network, wherein the first data functions to identify a plurality of
consumer electronic devices and the second data functions to
identify an activity to be performed using the controlling device,
to select from a database associated with the Internet Web server
a pre-programmed sequence comprising instructions for causing
at least a subset of the plurality of consumer electronic devices
identified by the first data to perfom a plurality of operations in
connection with the activity identified by the second data when
a configurable key of the controlling device is actuated; and
downloading the selected pre-programmed sequence via
the wide area network for use by the controlling device;
wherein the controlling device has programming which,
when executed by the controlling device, causes the controlling
device to perform the steps of:
associating the downloaded, selected, pre-programmed
sequence to the configurable key of the controlling device; and
responding to an activation of the configurable key at a
time after the step of associating by causing the controlling
device to execute the downloaded, selected, pre-programmed
sequence.
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Appeal2017-010579
Application 14/736,761
Rejections on Appeal
Claims 1-8 stand rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-9 of US Patent 9,071,329 B2;
issued June 30, 2015. 2 Final Action 2-3.
Claims 1, 2 and 4---6 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Kemink (US Patent 7,574,693 Bl; issued August
11, 2009) and Allport (US Patent 6,104,334; issued August 15, 2000). Final
Action 5-7.
Claim 3 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kemink, Allport and Sartain (US Patent 6, 124,854; issued
September 26, 2000). Final Action 7.
Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kemink, Allport and Darbee (US Patent 6, 130, 726; issued
October 10, 2000). Final Action 8.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed February 27, 2017), the Reply Brief (filed
2 Appellants chose not to argue the nonstatutory double patenting rejection.
See Appeal Brief 3. Accordingly, the rejection is not before us. See Ex
parteFrye, 94USPQ2d1072, 1075 (BPAI2010) (precedential) ("Ifan
appellant fails to present arguments on a particular issue - or, more
broadly, on a particular rejection - the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection. See, e.g.,
Hyatt v. Dudas, 551F.3d1307, 1313-14 (Fed. Cir. 2008) (the Board may
treat arguments appellant failed to make for a given ground of rejection as
waived)).
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Appeal2017-010579
Application 14/736,761
August 7, 2017), the Answer (mailed June 9, 2017) and the Final Action
(mailed November 30, 2016) for the respective details.
Appellants contend:
[T]he disclosure within Kemink relied upon in rejecting the
claim at issue is admittedly directed to using data that identifies
a single appliance whereupon a user is presented within a
plurality of graphic user interfaces corresponding to the selected
appliance [again in the singular] with the user then given a choice
among them (OA, pgs. 4 and 6 - citing to Col. 4, line 63-Col. 5,
line 6), it is respectfully submitted that this disclosure from
Kemink cannot be said to evidence that Kemink discloses,
teaches, or suggests a Web server that uses first data that
functions to identify a plurality of consumer electronic devices in
combination with any additional data to select anything from a
database, let alone to select a pre-programmed sequence of
commands as claimed. Since it has not been asserted that Allport
discloses using data that functions to identify a plurality of
consumer electronic device in combination with any additional
data to select a pre-programmed sequence of commands from a
database, which Allport does not, it is respectfully submitted that
the rejection of the claims under 35 U.S.C. § 103 based upon the
combination of Kemink and Allport must be withdrawn for
failing to present a prima facie case of obviousness.
Appeal Brief 5.
Appellants further contend that nothing within the Kemink/ Allport
combination discloses selecting "a pre-programed sequence comprising
instructions for causing at least a subset of the plurality of consumer
electronic devices identified by the first data to perform a plurality of
operations for downloading to a remote control." Appeal Brief 7. The
Examiner finds, "Kemink also teaches the code to be downloaded to the
remote control contain information specific to one or more appliances."
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Appeal2017-010579
Application 14/736,761
Answer 3 (citing Kemink column 4, lines 42--48 3). The Examiner further
finds, "Allport teaches the pre-programmed sequence comprises instructions
for causing the controlling device to control at least a channel tuning
operation of at least a one of the at least a subset of the plurality of consumer
electronic devices (col. 8 lines 58-67 4)." Answer 3 (footnote added). We do
not find Appellants' arguments persuasive and agree with the Examiner's
findings. Claim 1 requires, "wherein the first data functions to identify a
plurality of consumer electronic devices and the second data functions to
identify an activity to be performed using the controlling device" and it is
evident that Kemink discloses the first data and Allport discloses the second
data. See Final Action 5-7. Accordingly, we sustain the Examiner's
obviousness rejection of claim 1, as well as, the rejections of claims 2-8 not
separately argued. See Appeal Brief 4.
3 "In accordance with this invention, an Internet site 225 provides a service
for obtaining software code for programming the graphic user interface of
the control device 100. The software code will generally contain information
specific to one or more of the appliances 251-254, but may also contain
general purpose information as well, such as code for organizing and
presenting information on the display screen 110." Kemink column 4, lines
42--48.
4 "The software is preferably programmable by the consumer and presents a
unified system view of various devices being controlled. For example, there
may be volume and channel controls on one screen which control the
volume of a stereo speaker connected to a TV output and the channel
on a cable box connected to the TV input respectively. The ease of this
system contrasts with that of known universal remote controls where it is
necessary to first select a 'stereo' mode, then change volume, then select
'cable' mode to change channel." Allport column 8, lines 58---67.
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Appeal2017-010579
Application 14/736,761
DECISION
The Examiner's obviousness rejections of claims 1-8 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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