11491610 (B.P.A.I. Oct. 21, 2009)

Ex Parte Hayes et al

Board of Patent Appeals and InterferencesOct 21, 2009

11491610 (B.P.A.I. Oct. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte PATRICK H. HAYES and JEREMY BLACK ____________________ Appeal 2009-001344 Application 11/491,6101 Technology Center 2100 ____________________ Decided: January 21, 2010 ____________________ Before LANCE LEONARD BARRY, JEAN R. HOMERE, and CAROLYN D. THOMAS, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Filed on Jul. 24, 2006. The real party in interest is Universal Electronics, Inc. (App. Br. 2.) Appeal 2009-001344 Application 11/491,610 2 STATEMENT OF THE CASE In a paper filed October 27, 2009 Appellants requested a rehearing under 37 C.F.R. § 41.52 from the Opinion of the Board of Patent Appeals and Interferences (hereinafter Board) dated October 21, 2009. In the Opinion, we affirmed the Examiner’s rejection of claims 1, 2, 4, and 8 through 14. Appellants allege that the Board erred by misapprehending or overlooking their argument that the Examiner failed to identify a reason with a rational underpinning for combining the teachings of Stern, Black and Kernode. (Req. Reh’g 1.) In particular, at page 2 of the Request for Rehearing, Appellants state the following: Specifically, while the Decision of the Board addresses whether Stern, Black, and Kermode disclose prior art elements that perform their ordinary functions to predictably result in a method for controlling and operating a plurality of home appliances from a variety of different locations in a networked home control and automation environment (Decision; pg. 12), it is respectfully submitted that the Decision of the Board nevertheless fails to consider or address the argument raised in Appellant’s Appeal Brief that the sole reason identified within the rejection of the claims as to why one of ordinary skill in the relevant field would have been prompted to combine Stern, Black, and Kermode in the first instance to thereby arrive at the invention claimed is not supported by the record. (App. Br.; pg. 7). Because a prima facie case of obviousness requires an identification of a reason, with some rationale underpinning to support a conclusion that a person of ordinary skill in the relevant field would have been prompted to combine the prior art teachings in addition to a finding that all of the elements are in the prior art and can be predictably combined (Board Decision; pgs. 9 and 10) and because it is believed that no such rationale reason has been presented, it is again respectfully submitted that the rejection under 35 U.S.C. 103 based upon the combination of Stern, Black and Kermode must be withdrawn. Appeal 2009-001344 Application 11/491,610 3 (Req. Reh’g 2) (emphasis added). We have carefully considered Appellants’ remarks.2 We have also reviewed the Opinion in light of Appellants’ request, and we have found no error in the analysis or logic set forth therein with respect to the rejection of claims 1, 2, 4 and 8 through 14. Therefore, we have made no change to the Opinion with respect to the rejection of the cited claims. We deny the Appellants’ request for rehearing. PRINCIPLES OF LAW The US Supreme Court has held that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court further instructs that “[o]ften it will be necessary for a court to look to interrelated teachings of multiple patents; . . . and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason for combining the known elements in a the fashion claimed by the patent at issue.” Id. at 418. Additionally, the Court instructs that “‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements. Instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’… however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative 2 Request for Rehearing at pages 1-4. Appeal 2009-001344 Application 11/491,610 4 steps that a person of ordinary skill in the art would employ.” Id. (citation omitted) (emphasis added). ANALYSIS We established in the original Opinion that the teachings of Stern, Black and Kermode disclose familiar elements that perform their ordinary functions to predictably result in a method for controlling and operating a plurality of home appliances from a variety of locations in a networked home control and automation environment. (Op. 12.) Appellants do not dispute this finding. However, Appellants contend that the Examiner failed to provide a reason for combining these known elements as proffered in the rejection in order to arrive at the claimed limitations. (Req. Reh’g 2.) Therefore, Appellants contend that this alleged failure vitiates the Examiner’s prima facie case of obviousness. (Id.) We do not agree. As set forth in the Principles of Law section above, while it is often necessary for an Examiner to identify a reason for combining the familiar elements obtained from the prior art in establishing a prima facie case of obviousness, the identification of such a reason is not a sine qua non requirement. So long as the Examiner provides an articulated reasoning with some kind of a rational underpinning to substantiate the obviousness rejection, such a conclusion is proper. In this case, the Examiner provided more than just a mere conclusion of obviousness. The Examiner noted on page 5 of the Answer that “it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the portable device of Kermode as the controlling device in the system of Stern/Black as this would allow a user to ‘access, program, and control’ the appliances from a Appeal 2009-001344 Application 11/491,610 5 remote location.” Such a statement suffices as an articulated reason. We further found in the original Opinion that the known elements disclosed in the Stern, Black and Kermode combination yield no more than a predictable result when performing their ordinary functions. (Op. 12.) In our view, such findings suffice to establish the prima facie case of obviousness. Further, even if such a reason for combining the known elements of the references relied upon were not provided in this instance, we find that a person of ordinary skill in the art would be readily apprised of such a rationale from the predictable system that ensues from the proffered combination. As noted above, the case law allows the Examiner to look to the state of the prior art including the knowledge of the ordinarily skilled artisan to surmise such a reason for combining the known elements of the prior art. Consequently, we reiterate that once a person of ordinary skill in the art recognizes that the combination of certain known elements performing their ordinary functions yields a predictable result, the ordinarily skilled artisan will ipso facto be apprised of the reason for combining such elements. Therefore, contrary to Appellants’ arguments, the original Opinion sufficiently addressed how the combination of Stern, Black and Kermode renders claims 1, 2, 4 and 8 through 14 unpatentable. Consequently, we maintain our position that Appellants have not shown that the Examiner erred in concluding that the combined disclosures of the cited references renders the claims on appeal unpatentable under 35 U.S.C. § 103(a). Appeal 2009-001344 Application 11/491,610 6 CONCLUSION In view of the foregoing discussion, we deny Appellants’ request for rehearing. Therefore, we decline to modify our original Opinion. 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) (2009). DENIED nhl GREENBERG TRAURIG, LLP 77 WEST WACKER DRIVE SUITE 3100 CHICAGO IL 60601-1732