Ex Parte Hironaka et al

Patent Trial and Appeal Board

Jul 1, 2014

11724631 (P.T.A.B. Jul. 1, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TAKASHI HIRONAKA, RAJESH KECHAL RAO,
THOMAS PATRICK DAWSON, LUDOVIC DOUILLET, and
GEORGE WILLIAMS
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Appeal 2011-012566
Application 11/724,6311
Technology Center 2100
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1-11, 13-16, 18, and 21-23.

1 Application filed March 15, 2007. The real parties in interest are Sony
Corp. and Sony Electronics Inc.
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Claims 12, 17, 19, and 20 have been canceled. (App. Br. 2.)2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal concerns methods for automatically
transferring configuration information from one electronic device to another.
(Spec. ¶¶ [0001], [0003]-[0014]; Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method for inputting user-selected settings to a second
consumer electronic device, comprising:
establishing a first communication path between a first
consumer electronic device and the second consumer electronic
device, said first communication path being configured to
transfer content to be rendered by at least one of the devices;
querying the first device over the first communication
path to identify user-selected settings previously established for
use by the first device that are applicable for use by the second
device;
in response to the query, transferring over the first
communication path only the applicable user-selected settings
from the first device to the second device; and
storing the transferred applicable user-selected settings
into respective fields of a settings database associated with the
second device.

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“App.
Br.”) filed February 14, 2011. We also refer to the Examiner’s Answer
(“Ans.”) mailed May 9, 2011.
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Rejections on Appeal
1. The Examiner rejects claims 1, 3, 6, 8-11, 14, 18, and 21-23
under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No.
6,449,075 B1, issued Sep. 10, 2002 (“Watson”) and U.S. Patent App. Pub.
No. 2006/0082817 A1, published Apr. 20, 2006 (“Crosier”).
2. The Examiner rejects claims 2 and 13 under 35 U.S.C. § 103(a)
as being unpatentable over Watson, Crosier, and U.S. Patent No. 6,208,326
B1, issued Mar. 27, 2001 (“Frederick”).
3. The Examiner rejects claims 4 and 15 under 35 U.S.C. § 103(a)
as being unpatentable over Watson, Crosier, and U.S. Patent No. 5,179,550,
issued Jan. 12, 1993 (“Simpson”).
4. The Examiner rejects claims 5 and 16 under 35 U.S.C. § 103(a)
as being unpatentable over Watson, Crosier, and U.S. Patent App. Pub. No.
2005/0198233 A1, published Sep. 8, 2005 (“Manchester”).
5. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Watson, Crosier, and U.S. Patent No. 7,350,139 B1,
issued Mar. 25, 2008 (filed June 16, 2000) (“Simons”).

ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows is:
Does the Examiner err in concluding that the combination of Watson
and Crosier collectively would have taught or suggested:
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establishing a first communication path between a first
consumer electronic device and the second consumer electronic
device . . . ;
querying the first device over the first communication
path to identify user-selected settings previously established for
use by the first device that are applicable for use by the second
device; [and]
in response to the query, transferring over the first
communication path only the applicable user-selected settings
from the first device to the second device
within the meaning of Appellants’ claim 1 and the commensurate limitations
of claim 21?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed June 7, 2010, as our own, except as to those findings that we
expressly overturn or set aside in the Analysis that follows.

ANALYSIS
Based on Appellants’ arguments (App. Br. 4-7), we select
independent claim 1 as representative of Appellants’ arguments and
groupings with respect to claims 1-11, 13-16, 18, and 21-23. 37 C.F.R.
§ 41.37(c)(1)(vii) (2004). We adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken (Ans.
3-11), and (2) the reasons set forth by the Examiner in the Examiner’s
Answer (Ans. 11-13) in response to Appellants’ Appeal Brief. We concur
with the conclusions reached by the Examiner, and we provide the following
for emphasis.
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Appellants contend that Watson and Crosier do not teach or suggest
the disputed features of representative claim 1. (App. Br. 5-7.) Specifically,
Appellants contend that “the settings (as the term is used by the Examiner)
transferred in Watson are strictly target device drivers and communication
protocol stacks which are needed to establish infrared or RF communication
between the two devices. Such settings are clearly not previously
established, user-selectable setting[s].” (App. Br. 6.) Appellants also
contend that “the settings transferred in Crosier are not identified by
querying the first device. In fact, as best as Applicant can discern, no such
querying appears to be performed at all” and “the second device (i.e., the
new device 204) does not initiate the process and appears to be largely
passive during the transfer process.” (App. Br. 6.)
As pointed out by the Examiner (Ans. 11-13), Watson and Crosier
teach these disputed limitations. Watson describes establishing a
communication path and querying a first device by a second device (Ans. 3-
4, 11-12 (citing Watson, col. 4, ll. 22-51; col. 5, ll. 9-16; Figs. 3, 4A)).
Watson also discloses sending configuration information (settings)
responsive to the query from the first device to the second device (Ans. 4, 12
(citing Watson, col. 5, ll. 9-14; Fig. 4A)). Crosier describes transferring
user-selectable settings from a first device to a second device (Ans. 4, 12-13
(citing Crosier, ¶ [0045])).
Appellants do not dispute the Examiner’s findings. Rather, it appears
that Appellants argue the references individually, discussing features of the
references that were not cited by the Examiner. (App. Br. 5-7.) Appellants
fail to appreciate the teachings of the combination of references. One cannot
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show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425
(CCPA 1981)). We find that it would have been well with the skill of one
skilled in the art to combine the known techniques of establishing a
communication path between devices and querying device configuration
data, as taught by Watson, with transferring user-selectable configuration
data (settings) as taught by Crosier. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device,
and a 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” (citations omitted)).
We are not persuaded that combining the respective familiar elements of the
cited references in the manner proffered by the Examiner would have been
“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of Appellants’ invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Further, Appellants failed to file a Reply Brief rebutting the findings
and responsive arguments made by the Examiner in the Answer.
Appellants argue independent claim 1 and claims 2-11, 13-16, 18, and
21-23 together as a group and do not separately argue with particularity
independent claim 21 or dependent claims 2-11, 13-16, 18, 22, and 23.
(App. Br. 4-7.) Thus, for all the reasons supra, Appellants do not persuade
us of error in the Examiner’s obviousness rejection of representative
independent claim 1 or the obviousness rejections of claims 2-11, 13-16, 18,
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and 21-23. Therefore, we affirm the Examiner’s obviousness rejections of
claims 1-11, 13-16, 18, and 21-23.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1-11, 13-16, 18, and 21-23 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-11, 13-16, 18, and
21-23.

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).

AFFIRMED

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