Ex Parte Eyer

Board of Patent Appeals and Interferences

Sep 30, 2010

10662857 (B.P.A.I. Sep. 30, 2010)

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.
10/662,857 09/15/2003 Mark Kenneth Eyer 80398.P561 2132
7590 10/01/2010
Jan Carol Little
BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN LLP
Seventh Floor
12400 Wilshire Boulevard
Los Angeles, CA 90025-1026
EXAMINER
NGUYEN, NAM V
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
10/01/2010 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 MARK KENNETH EYER
____________

Appeal 2009-007128
Application 10/662,857
Technology Center 2600
____________

DECISION ON APPEAL1

Before JOHN C. MARTIN, KARL D. EASTHOM, and THOMAS S.
HAHN, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellant appeals2 under 35 U.S.C. § 134 from the rejection of claims
1-26. (Br. 1; see note 4 infra.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Disclosed Invention3
The disclosed invention includes a first audio/video device 102, a
second audio/video device 104, a remote control unit 106, and a
transmission medium 110. (Spec. ¶ 11; Fig. 1.) “Suitable audio/video
devices include, but are not limited, to [sic] set-top boxes such as those on
the premises of cable or satellite service subscribers, televisions such as
digital television (DTV) receiver/displays, compact disk (CD)
players/recorders, digital versatile disc (DVD) players/recorders,
surveillance cameras, personal video recorders such as Tivo®, radios, video-
cassette recorders/players (VCR), and digital recorders/players.” (Id. at ¶
12.)
The remote control unit emits an optical signal having a data code
sequence when a “user pushes a button.” (Id. at ¶ 41; Fig. 4.) Device 102
receives the optical signal having the data code sequence. (Id. at ¶ 42.)
Device 102 “determines whether it recognizes the data code sequence.” (Id.
at ¶ 43.) If device 102 does not recognize the data code sequence, it
generates a representation of the data code sequence. (Id. at ¶ 45.) Next, it
“transfers the representation of the data code sequence to a transmission

2 Appellant’s Appeal Brief (filed April 4, 2007) (“Br.”) and the Examiner’s
Answer (mailed Sept. 6, 2007) (“Ans.”) are referenced here.
3 The ensuing description constitutes findings of fact.
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medium.” (Id. at ¶ 46.) The device 104 receives the representation of the
data code sequence from the transmission medium. (Id. at ¶ 33.)
Accordingly, the “the remote control unit 106 can control the device 104
despite the fact that the remote control unit 106 does not have line-of-sight
communication with the device 104 and despite the fact that the remote
control unit 106 is not programmed for communicating with the device
102.” (Id. at ¶ 21.)
Exemplary claim 1 follows:
1. A system, comprising:
a first device coupled to a transmission medium;
a second device coupled to the transmission medium; and
a remote control unit for controlling the second device,
the remote control unit to transmit a data code sequence, the
data code sequence recognized by the second device, the data
code sequence for the purpose of controlling the second device,
the first device comprising circuitry to generate a
representation of the data code sequence if the data code
sequence is not recognized by the first device, and to transfer
the representation of the data code sequence to the transmission
medium to control the second device.

The Examiner relies on the following prior art references:
Harrington US 4,864,647 September 5, 1989
Darbee US 5,778,256 July 7, 1998
Prunier US 5,870,593 February 9, 1999
Shintani US 6,111,677 August 29, 2000
Schultheiss US 6,195,548 B1 February 27, 2001
Contaldo US 6,728,600 B1 April 27, 2004
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Jussi Teirikangas, HAVi: Home Audio Video Interoperability, Helsinki
University of Technology (May 15, 2001), available at
http://www.tml.tkk.fi/Studies/Tik-
111.590/2001s/papers/jussi_teirikangas.pdf.

Claims 1-4, 6, 7, and 14-16 stand rejected under 35 U.S.C. 102(b) as
anticipated by Schultheiss.
Claims 19 and 20 stand rejected under 35 U.S.C. 102(b) as anticipated
by Harrington.
Claim 5 stands rejected as obvious under 35 U.S.C. 103(a) based on
Schultheiss and Darbee.
Claims 8-10 stand rejected as obvious under 35 U.S.C. 103(a) based
on Schultheiss and Shintani.
Claims 11-13, 17, and 18 stand rejected as obvious under 35 U.S.C.
103(a) based on Schultheiss and Teirikangas.
Claim 21 stands rejected as obvious under 35 U.S.C. 103(a) based on
Harrington and Teirikangas.
Claims 22-25 stand rejected as obvious under 35 U.S.C. 103(a) based
on Shintani and Prunier.
Claim 26 stands rejected as obvious under 35 U.S.C. 103(a) based on
Shintani, Prunier, and Contaldo.
ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in finding that Schultheiss discloses
“circuitry to generate a representation of the data code sequence if the data
code sequence is not recognized by the first device, and to transfer the
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representation of the data code sequence to the transmission medium to
control the second device” as recited in claim 1, and as similarly recited in
claim 14?
2. Did the Examiner err in finding that the combination of Shintani
and Prunier renders obvious claims 22-26?
FINDINGS OF FACT (FF)
Schultheiss
1. As shown in Figure 2, Schultheiss discloses a system including a
remote control unit 50′ with a UHF transmitter 54, a personal computer 12, a
television, and a television interface 200. (Col. 7, ll. 14-32.)
2. The system
controls the television by accepting user input commands to
remotely control a television from a wireless remote control,
and transmits UHF remote control signals from the wireless
remote control to a personal computer. The UHF remote
control signals are received at the personal computer. They
may be processed by the personal computer. Television remote
control signals and television video signals are then transmitted
from the personal computer to a television. The received
television video signals are applied to the television for display.
The received television remote control signals are converted
into infrared television remote control signals to control the
television.
(Col. 8, ll. 10-22.)
Shintani
3. Shintani discloses “an apparatus and technique for controlling
equipment or a device which is located out of the operational range of an
optical remote controller.” (Col. 2, ll. 9-12.) “The apparatus comprises an
optical receiving unit, a serial bus, and an optical transmitting unit.” (Col. 2,
ll. 12-13.)
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4. “The optical receiver unit 120 receives the optical signal and
translates the received signal into a bit sequence that can be transmitted over
the transmission medium . . . .” (Col. 2, ll. 44-46.) “[T]he received optical
command can be sampled at a low sampling rate, e.g., at least two times the
bit rate of the demodulated optical command . . . .” (Col. 3, ll. 61-65.)
5. The optical receiver unit includes:
an optical receiver 122, a buffer 124, and an input/output (I/O)
interface 126. The optical receiver unit 122 receives the optical
signal emitted by the optical remote controller 110 and converts
the optical signal into a serial data stream in digital form. The
buffer 124 is a memory device that stores the serial data
forwarded by the optical receiver 122. . . . The I/O interface 126
comprises interface circuits that convert the data provided from
the buffer 124 into data compatible with the electrical
characteristics of the transmission medium 130.
(Col. 2, ll. 44-59.)
6. As shown by Figure 2, the optical receiver includes “a photodiode
210, an Automatic Brightness Level Control (ABLC) 212, a head amplifier
220, two gain resistors 222 and 224, a coupling capacitor 226, a limiter
amplifier 230, a coupling capacitor 232, a bandpass filter (BPF) 240, a filter
resistor 242, a detector/comparator 250, a capacitor 252, an integrator 260, a
hysteresis comparator 270, and a matching resistor 272.” (Col. 4, ll. 1-7.)
Prunier
7. Prunier discloses “a method for generating pulse trains by means
of a microprocessor, consisting of generating an envelope signal by means
of a timer which is programmable by a CPU, the width of a square wave of
the envelope signal corresponding to the width of the pulse trains, generating
a carrier signal having a predetermined frequency, and modulating the
envelope signal with the carrier.” (Abstract.)
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8. The method produces an output signal S from an envelope signal E
and a carrier signal P:
Signal E is directed to a first input of logic gate 11 via a flip-
flop 12, and signal P is directed to a second input of logic gate
11 and to a clock input of flip-flop 12. Consequently the width
of each square wave C of signal E corresponds to an integer
multiple of the modulation carrier, that is, of signal P. Through
such a construction a falling edge of signal E is thus only
transmitted to gate 11 upon occurrence of a rising edge of
signal P. Thus, the output of timer 2 is set-up again to
correspond to an integer multiple of the period of signal P.
Such synchronization guarantees that the width of all pulses I of
a same train T1, T2, or T3 is identical. This is of particular
interest in an application to infrared remote controls since it
guarantees that a last pulse of a train is not cut-off by the falling
edge of signal E and thus, that the shape factor is respected on
the entire pulse train.
(Col. 4, ll. 19-34.)
PRINCIPLES OF LAW
The Examiner bears an initial burden of factually supporting an
articulated rejection. In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992). “It is
axiomatic that anticipation of a claim under § 102 can be found only if the
prior art reference discloses every element of the claim . . . .” In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986). Under § 103, “‘there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (citation omitted). On appeal, Appellant may rebut the
Examiner’s findings and reasoning with opposing evidence or argument.
Failure to do so may constitute a waiver of potential arguments. See Ex
parte Frye, 94 USPQ2d 1072, 1075 (precedential) (BPAI 2010) (“If an
appellant fails to present arguments on a particular issue — or, more
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broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”); Hyatt v.
Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (The Board may treat
arguments appellant failed to make for a given ground of rejection as
waived); 37 C.F.R. § 41.37(c)(1)(vii).
ANALYSIS
Issue 1- Claims 1-4, 6-7, and 14-16
Appellant asserts that Schultheiss does not anticipate claim 1 because
it “does not teach ‘the first device comprising circuitry to generate a
representation of the data code sequence if the data code sequence is not
recognized by the first device’ . . . as recited in claim 1.” (Br. 7 (emphasis
omitted).) Appellant also asserts that the Examiner has improperly
characterized Schultheiss with respect to claim 1. (Br. 6, 8-9.) Appellant
also asserts that the Examiner improperly equated a single element as two
distinctly claimed elements because “there is no teaching in Schultheiss that
the television remote control signals 70b are anything other than a simple
pass through of the television commands 74a.” (Br. 7.)
As found by the Examiner, however, Schultheiss does disclose a first
device (i.e., a personal computer and a television interface) comprising
circuitry to generate a representation of a data code sequence (e.g., IR
signals 218) if the data code sequence (i.e., television remote control signals
70b) is not recognized by the first device. (Ans. 14-15; accord FF 1 and 2.)
Appellant does not explain what the phrase “not recognized” means or
explain clearly why Schultheiss does not satisfy this limitation. Under these
circumstances, the phrase reasonably means that the data code sequence is
not a command for the first device.
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As also found by the Examiner, the television remote control signals
70b are not a simple pass through of the television commands 74a. Rather,
“the converter in the PC interface card 22 of the personal computer (12)
converts the TV commands signal (74a) into the TV commands signal (70b)
and the TV command signal (70b) is a representation of the TV command
signal (74a).” (Ans. 16; accord FF 2.) Moreover, “the PC and the TV
interface could be considered the first device and then the representation
signal 218 would be an IR signal that would be different than the UHF
signal 74a.” (Ans. 16, accord FF 2.) Accordingly, the Examiner did not
improperly characterize Schultheiss.
Therefore, we will sustain the Examiner’s rejection of claim 1. We
will also sustain the Examiner’s rejection of independent claim 14 for the
reasons expressed for claim 1 because Appellant’s arguments for claim 14
are substantially the same as his arguments for claim 1. (See Br. 9-11.) We
will also sustain the Examiner’s rejection of claims 2-4, 6, 7, 15, and 16,
which depend from claims 1 or 14, because Appellant did not present
separate patentability arguments for these dependent claims. (See Br. 8, 11.)
Issue 2 – Claims 22-25
Appellant argues that claim 22 is patentable over the combination of
Shintani and Prunier. (Br. 11-13.) Appellant argues that the Examiner
improperly used a mere statement to support a determination of obviousness
and that the combination of Shintani and Prunier does not teach every
element of claim 22. (Br. 12-13.) Appellant argues that neither Shinani nor
Prunier teaches “that the output of an optical receiver, demodulator, and
processor provide the same data stream to the buffer,” or “sampling the data
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code sequence and generating a representation of the data code sequence
from the samples.” (Br. 12.)
As found by the Examiner, however, Shintani discloses an apparatus
that samples a data code sequence and generates a representation of the data
code sequence and that includes a number of components that constitute an
optical receiver, a demodulator, and a processor. (Ans. 17-18; accord FF 3-
6.) As also found by the Examiner, Prunier discloses a digital signal pulse
train signal S that is a representation of a data code sequence E. (Ans. 19;
accord FF 7-8.) The Examiner also found that there was a motivation to
combine Shintani and Prunier: “it would have been obvious to a person
skilled in the art at the time the invention was made to include sampling the
data code sequence and generating a representative of the data code
sequence from samples to be stored in the buffer in the device of Shintani et
al. as evidenced by Prunier et al. because such would provide continuous
data stream without unnecessarily loosing [sic] data at all times, thus
increasing communication reliability.” (Ans. 19.) Accordingly, the
Examiner does not, in fact, rely on a mere statement to support a
determination of obviousness.
Therefore, we will sustain the Examiner’s rejection of claim 22. We
will also sustain the Examiner’s rejection of claims 23-26 which depend
from claim 22. Appellant did not present separate patentability arguments
for these dependent claims. (See Br. 13.)
CONCLUSION
The Examiner did not err in finding that that Schultheiss discloses
“circuitry to generate a representation of the data code sequence if the data
code sequence is not recognized by the first device, and to transfer the
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representation of the data code sequence to the transmission medium to
control the second device” as recited in claim 1, and as similarly recited in
claim 14. The Examiner did not err in finding that the combination of
Shintani and Prunier renders obvious claims 22-26. Appellant did not
present separate arguments for any of claims 5, 8-13, or 17-21 and therefore,
we will also sustain the Examiner’s rejections of those claims.4
DECISION
We affirm the Examiner's decision rejecting claims 1-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).
AFFIRMED

KMF

4 Appellant’s Notice of Appeal (Jan. 17, 2007) is an appeal from the
Examiner’s last decision, Office Action (Oct. 17, 2006), in which claims 1-
26 were finally rejected. While Appellant states that “claims 1-18 and 20-26
are the subject of this appeal,” (Br. 2), Appellant also identifies claims 1-26
at the beginning of the Appeal Brief and, in the very next sentence, “requests
consideration . . . . for allowance of these claims.” (Br. 1.) Further, claims
20 and 21 depend from claim 19 and are on appeal, further implying claim
19 is on appeal. The record does not show that claims 19-21 were
withdrawn or cancelled. Claims 1-26 are listed in the Brief. (Claims
App’x.) Because of the ambiguity presented over which claims are on
appeal, Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008)
(precedential) (remanding an appeal to allow the Examiner to cancel
impliedly withdrawn claims) does not apply. In any case, under Frye, 94
USPQ2d at 1075, failure to separately argue claims 19-21 (and other claims
noted) constitutes waiver.
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Jan Carol Little
BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN LLP
Seventh Floor
12400 Wilshire Boulevard
Los Angeles, CA 90025-1026