Ex Parte Hatambeiki et al

Patent Trial and Appeal Board

Jul 27, 2018

12956154 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/956, 154 11/30/2010 Arsham Hatambeiki
34018 7590 07/31/2018
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.
81230.141US2 8854
EXAMINER
BYCER, ERIC J
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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 ARSHAM HATAMBEIKI, BRIAN ALEX TRUONG, and
HAN-SHENG YUH 1
Appeal2018-002461
Application 12/956, 154
Technology Center 2100
Before JOHNNY A. KUMAR, JENNIFER S. BISK, and JOYCE CRAIG
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1--4, 8-16, and20-24. Claims 5-7, and 17-19have
been cancelled. We have jurisdiction over the appeal of these claims
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Universal Electronics Inc. as the real party in interest
(Appeal Br. 2).
Appeal2018-002461
Application 12/956,154
STATEMENT OF CASE2
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below:
1. A computer-readable media embodied on a physical, non-transient
memory device having instructions for creating a user interface for provision
to a hand-held device adapted to control functional operations of one or
more appliances, the instructions performing steps comprising:
receiving first input to create a widget which is activatable via the user
interface of the hand-held device to cause the hand-held device to perform at
least one action, wherein the at least one action includes an action in which
the hand-held device is caused to issue a command communication for a
specific target appliance, wherein the widget comprises a plurality of
predefined, user selected programming blocks each graphically represented
as a processing unit with at least one of an input and an output, wherein a
first one of the plurality of pre-defined, user selected programming blocks is
representative of an input element of the user interface of
the hand-held device, wherein a second one of the plurality of pre-defined,
user selected programming blocks is representative of the specific target
appliance, and wherein the first input used to create the widget comprises
instructions that function to graphically interconnect selected
ones of the inputs and outputs of the pre-defined, user selected programming
blocks to define the at least one action to be performed by the hand-held
device upon activation of the widget; and
receiving second input to add the created widget to a user interface to
be provided to the hand-held device.
REJECTION
Claims 1--4, 8-16, and 20-24 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over U.S. Patent Application Publication No.
2009/0249359 Al, filed by Caunter et al., on March 19, 2009, and published
2 Our Decision will make reference to Appellants' Appeal Brief ("Appeal
Br.," filed August 22, 2017), the Examiner's Answer ("Ans.," mailed
November 15, 2017), and Appellants' Reply Brief ("Reply Br.," filed
January 4, 2018).
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Application 12/956,154
on October 1, 2009 (hereinafter Caunter), in view of U.S. Patent No.
6,020,881, issued to Naughton et al., on February 1, 2000, and filed on
February 18, 1997 (hereinafter Naughton), further in view of U.S. Patent
Application Publication No. 2006/0150148 Al, filed by Beckett et al., on
December 16, 2005, and published on July 6, 2006 (hereinafter Beckett).
ANALYSIS
Issue on Appeal: Did the Examiner err in combining Caunter,
Naughton, and Beckett to teach or suggest all the limitations of independent
claims 1 and 13 because the references are not properly combinable?
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner has erred. Further, we have reviewed the
Examiner's response to claims 1 and 13 that has been argued by the
Appellants. Appeal Br. 5-9; Reply Br. 2--4.
We disagree with Appellants' arguments. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action (see
Final Act. 2-12; Ans. 2-9) from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief. (see Ans. 3-9). We concur with the conclusions
reached by the Examiner. Moreover, we incorporate by reference our
previous affirmance of the rejection of these claims, prior to amendment. Ex
parte Hatambeiki et al., Appeal 2014-006205 (PTAB June 15, 2016).
Notwithstanding Appellants' arguments to the contrary (see Reply Br. 2--4),
we see nothing in the amended claims that alters the applicability of that
reasoning. We highlight and address specific findings and arguments for
emphasis as follows.
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Application 12/956,154
Appellants' arguments with respect to the Examiner's obviousness
rejection of independent claims 1 and 13 mainly focus on whether Caunter,
Naughton, and Beckett are combinable. Appeal Br. 5-9; Reply Br. 2--4.
In particular, Appellants contend Beckett does not teach creating a
graphical user interface for a remote control device or user selectable
programming blocks representative of intended target devices that are
intended to be linked to programming blocks representative of input
elements. Appeal Br. 8.
In response, the Examiner finds that:
the Examiner relies on Beckett to teach an integrated design
environment for the creation of graphical user interfaces using
visual programming techniques, where the user selects icons
representing pre defined modules from a library, places them
within a design canvas, links them together (e.g., output to input),
in order to build a widget. See Final Rejection, page 6, citing
Beckett, Figs. 13-15 and paragraphs 0068---0071. Specifically,
these citations show the user creating a graphical user interface
for a device including objects representing input elements of a
user interface, such as buttons.
Naughton provides the teachings concerning the development of
a user interface for a remote control device to control a specific
target device. See Final Rejection, pages 4--5, citing Naughton,
Figs. 16b and 18-a---d, as well as Naughton, col. 17, line 60- col
18, line 20, and col. 26, line 58 - col. 28, line 32.
Ans. 6-7.
The Examiner also finds:
it would have been obvious to one of ordinary skill in the art,
having the teachings of Gaunter, Naughton, and Beckett before
him at the time the invention was made, to modify the media of
Gaunter, as modified by Naughton, to incorporate visual
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Application 12/956,154
programming with predefined programming blocks and virtual
connectors as taught by Beckett. One would have been motivated
to make such a combination because this makes it easier for a
user to create software solutions without writing code, as taught
by Beckett.
Final Act. 6.
We agree with the Examiner because Appellants' arguments do not
take into account what the collective teachings of the prior art would have
suggested to one of ordinary skill in the art and are therefore ineffective to
rebut the Examiner's prima facie case of obviousness. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art." (citations omitted)).
We further note that the Examiner has found actual teachings in the
prior art and has provided a rationale for the combination (see Ans. 4--9).
The above-noted teachings suggest that the combination involves the
predictable use of prior art elements according to their established functions,
i.e., generation and customization of graphical user interfaces and their
component objects. Ans. 8-9 (citing "Caunter, paragraph 0010 (invention
related to customizing widget operation); see also, Naughton, col. 1, lines
11-16 (invention related to providing an intuitive methodology for a user to
control remote devices with a computer controlled object oriented user
interface utilizing graphic images)); see also, Beckett, paragraph 0002
(invention related to graphical programming and visual software
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development and building solutions to integrating disparate systems without
programming)"). There is no requirement that the problem solved by the
secondary reference be discussed by the primary reference to apply the
teachings of the secondary reference in a rejection under 35 U.S.C. § 103.
The Supreme Court has held that in analyzing the obviousness of
combining elements, a court need not find specific teachings, but rather may
consider "the background knowledge possessed by a person having ordinary
skill in the art" and "the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,418 (2007). To be nonobvious, an improvement must be "more
than the predictable use of prior art elements according to their established
functions," id. at 417, and the basis for an obviousness rejection must
include an "articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness." Id. at 418 (citation and internal
quotation marks omitted). Here, the Examiner has provided a rationale for
the combination. Accordingly, we find that the Examiner has provided
sufficient motivation for modifying Caunter with the teachings of Naughton
and Beckett.
Further, Appellants have not presented evidence sufficient to show
that combining the prior art was "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418-19).
We conclude the Examiner's rejection sets forth adequate non-
hindsight reasoning for making the proposed combination. See KSR, 550
U.S. at 417 ("[I]f a technique has been used to improve one device, and a
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Application 12/956,154
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.").
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the proper combinability
of the prior art references as suggested by the Examiner. Therefore, we
sustain the Examiner's obviousness rejection of independent claims 1 and
13, and their respective dependent claims not argued separately.
We have considered Appellants arguments in the Reply Brief but find
them unpersuasive to rebut the Examiner's responses. Consequently, we
conclude there is no reversible error in the Examiner's rejections of claims
1--4, 8-16, and 20-24.
DECISION
The Examiner's decision rejecting claims 1--4, 8-16, and 20-24 is
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)(l )(iv).
AFFIRMED
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