Ex Parte Huang et al

Patent Trial and Appeal Board

Dec 20, 2018

12855501 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/855,501 08/12/2010 Steve LanPing Huang
34018 7590 12/25/2018
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.
81230.71US7 1031
EXAMINER
PITARO,RYANF
ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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 STEVE LANPING HUANG, CHERYL SCOTT,
and WAYNE SCOTT
Appeal 2018-003516
Application 12/855,501
Technology Center 2100
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and MARC S.
HOFF, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
This application returns to us after we affirmed the Examiner's
rejection of then-pending claims 1-19. Ex parte Huang, No. 2015-006186,
(PTAB Nov. 2, 2016) ("Bd. Dec."). Prosecution reopened after that
decision, and Appellants 1 now appeal under 35 U.S.C. § 134(a) from the
Examiner's subsequent decision to reject claims 1 and 3-19. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 Appellants identify the real party in interest as Universal Electronics Inc.
App. Br. 2.
Appeal 2018-003516
Application 12/855,501
STATEMENT OF THE CASE
Appellants' invention is a hand-held electronic device with a remote
control application user interface that displays operational mode information
to a user. The interface can be used to (1) set up the application to control
appliances for users in various rooms; (2) perform activities; and (3) access
favorites. See generally Abstract. Claim 1 is illustrative:
1. A remote control device for controlling one or more
consumer devices of various device types, the remote control
compnsmg:
a plurality of user input elements;
an action map having a plurality of action map entries,
wherein each of the plurality of action map entries is associated
with a one of the plurality of user input elements;
a plurality of device command code sets, wherein each of
the plurality of device command code sets has a plurality of
functions for controlling at least one consumer device;
a selector configured to allow a user to select individual
functions from the plurality of device command code sets
appropriate for controlling the one or more consumer devices;
an activator configured to allow a user to create one or
more links between at least one of the selected individual
functions of the plurality of device command code sets and
action map entries of the action map whereupon an activation of
a one of the plurality of user input elements will cause a
transmission from the remote control device of the individual
functions of the plurality of device command code sets that
were selected via use of the selector and linked to the one of the
plurality of action map entries assigned to the activated one of
the plurality of user input elements via use of the activator; and
a memory device that is configured to store the plurality
of device command code sets and the action map.
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Application 12/855,501
RELATED APPEALS
Appellants inform us of ten related appeals, many of which have
resulted in decisions of this Board, including an earlier appeal in the present
application. App. Br. 2. 2
THE REJECTIONS
The Examiner rejected claims 1 and 3-19 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 2-6.
The Examiner rejected claims 1 and 3-19 under 35 U.S.C. § I02(e) as
anticipated by Wouters (US 7,746,244 B2; June 29, 2010). Final Act. 7-10.
The Examiner rejected claims 1 and 3-19 under 35 U.S.C. § 103 as
unpatentable over Sony Corp., Integrated Remote Commander Operating
Instructions, RM-AV2IOO/AV2100B (2000) ("Sony"), Foster (US
6,211,870; Apr. 3, 2001), and Lambrechts (US 6,909,378 Bl; June 21,
2005). Final Act. 10-16.
THE WRITTEN DESCRIPTION REJECTION
Regarding independent claim 1, the Examiner finds that the claimed
invention lacks written description support because, among other things, the
original disclosure is said to not disclose (1) linking the recited action map to
the command code set without having to first link to a macro map; (2) each
2 Throughout this opinion, we refer to (1) the Final Rejection mailed July 14,
2017 ("Final Act."); (2) the Appeal Brief filed October 3, 2017 ("App. Br.");
(3) the Examiner's Answer mailed December 20, 2017 ("Ans."); and (4) the
Reply Brief filed February 16, 2018 ("Reply Br.").
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Application 12/855,501
action map entry is assigned to a user input element; (3) a user can select
individual functions from the device command code set; and ( 4) a user can
create a link between individual functions of the device command code sets
and action map entries. Final Act. 2---6; Ans. 2-7.
Appellants argue not only do the currently-pending claims no longer
use the term "user-defined action map" that was at issue in connection with
the earlier written description rejection as noted in the earlier Board
decision, but the claims are supported by the originally-filed Specification.
App. Br. 7-11; Reply Br. 2--4. According to Appellants, the original
disclosure-including its underlying provisional application No. 60/344,020
("'020 provisional application"}-not only describes linking the action map
to the code set, but also enabling users to create this link via wizards that
also enables users to select individual functions form a device command
code set. App. Br. 8-10; Reply Br. 2-3.
ISSUE
Under§ 112, first paragraph, has the Examiner erred in rejecting
claims 1 and 3-19 by finding that the recited subject matter fails to comply
with the written description requirement? This issue turns on whether
Appellants' original disclosure conveys with reasonable clarity to ordinarily
skilled artisans that Appellants possessed the claimed invention as of the
filing date.
ANALYSIS
We begin by noting that the version of claim 1 that was at issue in the
earlier appeal is substantially different from that which is at issue here.
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Application 12/855,501
Although both claims recite a remote control device with similar elements,
namely (1) an action map; (2) user input elements; (3) device command code
sets; ( 4) a selector; and ( 5) an activator, the earlier version of claim 1 recited,
in pertinent part, a user-defined action map. Notably, we found that this
latter element, namely the user-defined action map, was not supported by the
original disclosure and, therefore, was the principal basis for our affirming
the Examiner's written description rejection of claim 1 in the earlier appeal.
See Bd. Dec. 5-11. But as Appellants indicate (App. Br. 8), claim 1 no
longer recites a user-defined action map, but rather an action map with plural
entries, where each entry is associated with one user input element.
As in the earlier appeal, Appellants identify action map 514 in Figure
18 of the present application as corresponding to the recited action map.
App. Br. 3 (citing Spec. 17:2---6; 48:17--49:14; 50:1-13). As shown in that
figure-a figure substantially similar to Figure 4 of Appellants'
corresponding '020 provisional application-action map 514 contains a
number of actions including "OXal HOME THEATER-POWER ON,"
"0Xa2 HOME THEATER-POWER OFF," etc. Although we
acknowledged on page 7 of our earlier decision that the Specification
provides little description of this action map, we nevertheless noted that
page 15, lines 13 to 15 of Appellants' Specification indicates that action map
514 controls all actions the user can perform for each device type; thus, user
input events are processed in terms of the action map. Notably, we
emphasized that this was the only specific reference to an action map in the
Specification. Bd. Dec. 7.
Nevertheless, the functionality of Appellants' Figure 18, when
considered in light of the corresponding description entitled "User Input" on
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Application 12/855,501
page 15, lines 8 to 15 of the Specification-a disclosure substantially similar
to that on page 4 of Appellants' corresponding provisional application-
reasonably conveys possession of the recited action map whose entries are
each associated with one of plural user input elements as claimed. As shown
in Appellants' Figure 18 reproduced below, various maps, including the
action map, are related to each other as a user performs an action, namely a
macro that turns on power for a home theater. Spec. 17: 1---6.
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Appellants' Figure 18 showing map relation as user performs an action
As shown above, action map 514 has a number of actions, including
"OXal HOME THEATER-POWER ON," that reasonably correspond to
recited "action map entries" according to Appellants' mapping. See App.
Br. 9; Reply Br. 2 (mapping "home theater power on" and "home theater
power off' to action map entries). Although Figure 18 shows only the home
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Application 12/855,501
theater power on button and associated user input is associated with the
"OXal HOME THEATER-POWER ON" action map entry, it is clear from
the associated disclosure that other action map entries, such as the "0Xa2
HOME THEATER - POWER OFF" action map entry, can be associated
with different user input elements, such as the home theater power off button
and associated user input. See, e.g., Spec. 15, 18, 23-24.
We also find that Appellants' original disclosure not only reasonably
conveys possession of the recited device command code sets, but also the
recited selector that allows a user to select individual functions from those
sets. As shown in Appellants' Figure 18, the "OXal HOME THEATER-
POWER ON" action map entry is linked to the "OXlfMACRO-POWER
ON" entry in macro map 522 via an arrow. As Figure 18 illustrates, this
"power on" macro entry has various associated functions listed below the
macro entry, including "OXfal - SONY TV ON," associated with particular
command code sets in IR database 544. Similarly, the macro map's "OX20
MACRO - POWER OFF" entry in Figure 18 has associated functions listed
below that entry, including "0Xfa2 - SONY TV OFF," associated with
particular command code sets in IR database 544.
Based on this functionality, the main macro map entries, namely
"OXlf MACRO-POWER ON" and "OX20 MACRO-POWER OFF,"
are associated with device command code sets that each have plural
functions, such as (1) "OXfal - SONY TV ON" for the device command
code set associated with the power on macro, and (2) "0Xfa2 - SONY TV
OFF" for the device command code set associated with the "power off'
macro. Accord Reply Br. 2 (noting that Figure 4 of Appellants' provisional
application (which is similar to Figure 18 of the present application) links an
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Application 12/855,501
action map entry ( e.g., home theater power on) to selected functions from a
device command code set ( e.g., "Sony TV On" command)).
And as Appellants indicate, the original disclosure explains how a
user interacts with the described system to select functions that are to be
executed when the corresponding action map entry ( e.g., home theater power
on) is invoked, including how the user selects and links a function from the
device command code set to an action map entry assigned to a user input
element. Reply Br. 2. For example, the original disclosure describes
wizards that enable a user to select individual functions from device
command code sets, thus creating a link between the action map entries and
functions associated with those sets. See App. Br. 9 (citing p. 9 of the
provisional application)). See also App. Br. 9 (citing page 59 of the
provisional application describing a user creating a link between an action
map entry for a "play movie" command and associated functions from
device command code sets).
Pages 48 and 49 of the present application describe how a user
programs a macro, namely a sequence of actions that are assigned to a single
button so that the sequence can be repeated by merely pressing the button.
These user-generated macros are different than system-generated macros
that are generated automatically or semi-automatically by a remote control
application to facilitate common tasks, such as powering a home theater
system on and off as noted previously in connection with Figure 18. See
Spec. 48:4--16.
To program a new macro sequence, a user interacts with a setup
wizard as shown, for example, in Figures 22A to 22G of the present
application. As shown in those figures, the user selects the "add activity"
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Application 12/855,501
icon which initiates an activity wizard in Figure 22B that records the user's
keystrokes, and allows the user to assign an icon and label to that activity
(e.g., "WATCH DVD"). Spec. 48:17--49:14. This macro-creating capability
effectively enables a user to select particular functions associated with
device command code sets, such as powering on a Sony TV as in Figure 18,
and link those functions to associated action map entries as part of the
sequence associated with that macro. See, e.g., Spec. 15, 18, 23-24, 48--49.
Given this functionality, we also agree that the original disclosure
reasonably conveys possession of the recited activator configured to allow a
user to create one or more links between at least one of the individual
selected functions of the device command code sets and action map entries,
where activating a user input element will cause a transmission from the
remote control device of the individual selected functions, as claimed. As
Appellants indicate, activating the "home theater power on" button
associated with a "home theater power on" macro causes a transmission
from the remote control device of the selected and linked functions. App.
Br. 10. As Appellants explain, when a user selects the remote control's
power key during activity setup, the user indicates to the remote control that
the user desires linking that function to that key, namely the "Sony TV On"
command from the Sony TV codeset. Reply Br. 3. When the key assigned
to this activity is later activated, the linked-to command code from the code
set will be sent to the controlled device in the manner described on page 16
of the provisional application.
Given this functionality, considered in light of the functionality
associated with present application's Figure 18 and corresponding Figure 4
in the provisional application, we agree with Appellants that the original
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Application 12/855,501
disclosure reasonably conveys possession of the recited elements of claim 1
and, therefore, satisfies the written description requirement.
Therefore, we are persuaded that the Examiner's written description
rejection of claims 1 and 3-19 is erroneous.
THE ANTICIPATION REJECTION
The Examiner finds that Wouters discloses every recited element of
claims 1 and 3-19. Final Act. 7-1 0.
Appellants do not dispute that Wouters discloses all elements recited
in the appealed claims, but rather contend that Wouters is not prior art
because the claims of the present application are said to be fully supported
by the disclosure of the '020 provisional application filed December 20,
2001 which antedates Wouters' earliest priority date. See App. Br. 1 O;
Reply Br. 5.
The Examiner, however, finds that because the claim limitations lack
written description support, Wouters qualifies as prior art to the claimed
invention. Ans. 7.
ISSUE
Under § 102, has the Examiner erred in rejecting claims 1 and 3-19 as
anticipated by Wouters? This issue turns on whether Wouters qualifies as
prior art to the claimed invention.
ANALYSIS
The present application is a continuation of U.S. Application
12/421,065, filed April 9, 2009, which is a divisional of U.S. Application
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Application 12/855,501
11/340,442, filed January 26, 2006, which is a divisional of U.S. Application
10/288,727, filed November 6, 2002. The '727 application claims benefit of
two provisional applications, one of which is the '020 provisional at issue
here.
Although Wouters issued on June 29, 2010, Appellants acknowledge
that Wouters' earliest possible priority date is March 29, 2002. App. Br. 11.
Although this latter date precedes the filing date of the earliest parent
Application No. 10/288,727, namely November 6, 2002, Wouters' earliest
possible priority date is after the date of the '020 provisional and, as such,
Appellants contend that Wouters does not qualify as prior art. See id.
Notably, if the present application's parent applications and the '020
provisional adequately provide (1) a written description of the subject matter
of Appellants' claimed invention, and (2) an enabling disclosure to permit
ordinarily skilled artisans to make and use the claimed invention, then
Appellants would be entitled to the date of the '020 provisional application
and, consequently, Wouters would not qualify as prior art. See
New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed.
Cir. 2002); see also MANUAL OF PATENT EXAMINING PROCEDURE (MPEP)
§§ 211.05(I)(A), 706.02(VI)(C) (9th ed. Rev. 08.2017, Jan. 2018).
That is the case here. Leaving aside the fact that the Examiner did not
map the particular elements in claim 1 to corresponding elements in
Wouters, apart from merely referring Wouters' claims 1 and 2 without
further explanation (see Final Act. 8), we nevertheless find that claims of the
present application are supported by the '020 provisional application and,
therefore, Wouters does not qualify as prior art for the reasons noted
previously and those indicated by Appellants. See App. Br. 11; Reply Br. 4.
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Application 12/855,501
Although we held just the opposite in our earlier decision, the record
before us in the earlier appeal was considerably different than it is here.
Unlike the earlier appeal, Appellants here do not merely summarily assert
that the claimed invention is supported by the '020 provisional without
identifying the relevant disclosure in the '020 provisional. See Bd. Dec. 13
("Although Appellants allege that the same figures and descriptions cited in
the Briefs are found in the '020 provisional ... , Appellants provide no
pinpoint citations from the '020 provisional to support this contention, let
alone specifically identify such disclosure."). Rather, Appellants here
provide pinpoint citations from the '020 provisional to show support for the
claimed subject matter, and explain why this disclosure provides such
support as noted previously. On this record, we find these citations show
that Appellants possessed the claimed subject matter when the application
was filed.
Therefore, we are persuaded that the Examiner erred in rejecting
claims 1 and 3-19 as anticipated by Wouters.
THE OBVIOUSNESS REJECTION
The Examiner finds that Sony discloses a remote control device with
every recited element of claim 1 except for (1) allowing a user to select
individual functions from device command code sets, and (2) an activator
configured to allow a user to create one or more links between at least one
selected function and action map entries. Final Act. 10-13. The Examiner,
however, cites Foster for teaching element (1 ), and Lambrechts for teaching
both elements (1) and (2), in concluding that the claim would have been
obvious. Final Act. 13-14.
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Appellants argue that the Examiner's reliance on Lambrechts is
misplaced because, even when combined with Sony/Foster system, the user
must interact with a personal computer to select commands, unlike the
claimed invention where the remote control itself has all recited elements.
App. Br. 11-12. Appellants add the Examiner's rationale to modify the
Sony/Foster device is improper because the purpose of Lambrechts' "learn"
function is to teach a remote control device commands that are not present
on the remote control and, therefore, Lambrechts does not provide for a
remote control to learn through an internal code set as the Examiner
proposes. App. Br. 12-13; Reply Br. 4.
ISSUES
( 1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Sony, Foster, and Lambrechts collectively would have taught or
suggested the recited selector and activator limitations?
(2) Is the Examiner's proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion?
ANALYSIS
We begin by noting that the Examiner's reliance on Sony and Foster
is undisputed. Rather, as noted above, this dispute turns solely on the
Examiner's reliance on Lambrechts.
Turning to the rejection, the Examiner cites Sony for teaching many
recited elements of claim 1 including, notably, a selector and an activator.
See Final Act. 12 (citing Sony 10-11, 16-21 for teaching the selector and
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activator limitations). Although the Examiner acknowledges that Sony's
activator does not allow a user to select individual functions from plural
device command code sets, the Examiner nevertheless cites Foster, or,
alternatively, Lambrechts for teaching that feature. See Final Act. 13
( finding that both Foster and Lambrechts teach allowing a user to select
individual functions of device command code sets appropriate for
controlling one or more consumer devices). The Examiner, however,
additionally cites Lambrechts for teaching allowing a user to create one or
more links between at least one selected function and action map entries.
Final Act. 13-14.
Given these articulated findings, Appellants' contention that
ordinarily skilled artisans would not have used Lambrechts' "selector" and
"activator" in the Sony/Foster system (App. Br. 12-13) is inapposite to the
Examiner's rejection which finds that Sony-not Lambrechts----discloses a
selector and activator as noted previously. See Final Act. 12 (citing Sony
10-11, 16-21 for teaching the selector and activator limitations).
Appellants' contention is likewise inapposite to the Examiner's alternative
reliance on Foster for teaching the recited selector functionality, namely
allowing a user to select individual functions from plural device command
code sets. Final Act. 13. The Examiner's rationale for combining Foster's
teachings with those of Sony is also undisputed. Final Act. 13.
This dispute, then, turns on whether the Examiner erred in relying on
Lambrechts for teaching the recited activator functionality, namely allowing
a user to create one or more links between at least one selected function and
action map entries, as well as the Examiner's rationale for combining
Lambrechts' teachings with those of Sony and Foster.
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In the Background section, Lambrechts notes the drawbacks of earlier
learning techniques that required (1) placing a universal remote control and
an appliance remote control face-to-face; (2) setting the universal remote
control to a learning mode; and (3) selecting keys on both remote controls
repetitively to transmit associated command codes to the universal remote
control. Lambrechts, col. 1, 11. 44--52. As Lambrechts indicates, a
disadvantage of this method is that the appliance remote control must be
present and operational: a condition that is not often the case because remote
controls may be unavailable or inoperative. See Lambrechts, col. 1, 11. 52-
58.
Lambrechts' system improves on this earlier technique by upgrading a
universal remote control with a command code downloaded from an internet
server into a personal computer or set-top box coupled to an infrared (IR)
transmitter. Lambrechts, Abstract. The remote control is placed in front of
the transmitter, and the command code is transferred to the remote control.
Id. According to Lambrechts' claim 1 on which the Examiner relies, the
universal remote control's learning mode enables a user to individually
assign each command code to a particular key. See Final Act. 13-14 (noting
this functionality).
Although the Examiner acknowledges that Lambrechts' process uses a
computer, the Examiner nonetheless reasons that the modified Sony remote
control would allow a user that previously used "the learn feature described
above" to learn through an internal code set rather than having to learn via
the IR port from another remote control. See Ans. 8. Although the
particular learn feature on which Examiner relies is not entirely clear from
this discussion, the Examiner apparently refers to the learning technique
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described in Lambrechts' Background section where universal and appliance
remote controls are placed face-to-face. See Ans. 7-8 (quoting Lambrechts,
col. 1, 11. 43-58). That the Examiner acknowledges that using a learn
function requires a second device, such as a remote control, only further
supports our presumption that the Examiner relies principally on the face-to-
face learning technique in Lambrechts.
Given this reliance on Lambrechts, we find the Examiner's proposed
combination problematic on this record. According to the Examiner, the
modified Sony device would allow a user that previously used Lambrechts'
face-to-face learning procedure to learn through an internal code set rather
than having to learn via the IR port from another remote control. Ans. 8.
Under the Examiner's reasoning, if the modified Sony device had to re-learn
codes that it received previously from another remote control via a face-to-
face technique, the device could ostensibly do so by merely accessing the
codes that it stored previously via the face-to-face technique. See id.
But as Appellants indicate, remote controls that have command code
sets already stored thereon-regardless of whether these code sets are pre-
stored or derived from other remote controls via face-to-face techniques or
otherwise----do not need nor require a "learn" feature to learn commands
from the remote control's own code set. See Reply Br. 4. Therefore, the
Examiner's rationale for modifying the Sony/Foster system is problematic
for that reason alone.
Therefore, we find the Examiner's rationale to combine the teachings
of the cited references is not supported by articulated reasoning with rational
underpinning to justify the Examiner's obviousness conclusion.
Accordingly, we are persuaded of error in the Examiner's obviousness
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rejection of (1) independent claim 1; (2) independent claims 9 and 15 that
recite commensurate limitations; and (3) the dependent claims for similar
reasons.
CONCLUSION
The Examiner erred in rejecting claims 1 and 3-19 under§§ 112, first
paragraph, 102, and 103.
DECISION
We reverse the Examiner's decision to reject claims 1 and 3-19. 3
REVERSED
3 Given the recited involvement of a user in connection with apparatus
claims 1-8 and 15-19, we leave to the Examiner to consider whether these
claims recite active method steps to render them definite under§ 112,
second paragraph as hybrid apparatus/method claims. See MPEP
§ 2173.05(p) (citing In re Katz Interactive Call Processing Patent Litig., 639
F.3d 1303, 1318 (Fed. Cir. 2011)); see also H-W Tech., L.C. v.
Overstock.com, Inc., 758 F.3d 1329, 1335-36 (Fed. Cir. 2014) (holding
indefinite a computer-readable medium claim reciting that a user (I)
completes a transaction, and (2) selects an offer because it was unclear when
infringement occurred given these user-based steps).
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