Ex Parte Huang et al

Patent Trial and Appeal Board

Sep 14, 2018

14736810 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/736,810 06/11/2015 Steve LanPing Huang
34018 7590 09/18/2018
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.
81230.94US4 1001
EXAMINER
HOLLOWAY III, EDWIN C
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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 and
PATRICKH. HAYES 1
Appeal2018-001899
Application 14/736,810
Technology Center 2600
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
JAMES R. HUGHES, 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 Rejection of claims 1-18. Final Act. 1-2; Appeal Br. 2. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the real party in interest as Universal Electronics Inc.
Appeal Br. 2.
2 We refer to Appellants' Specification ("Spec.") filed June 11, 2015
(claiming benefit of US 10/151,635, filed May 20, 2002); Appeal Brief
("Appeal Br.") filed Aug. 18, 2017; and Reply Brief ("Reply Br.") filed Dec.
12, 2017. We also refer to the Examiner's Final Office Action ("Final
Act.") mailed Apr. 21, 2017; and Answer ("Ans.") mailed Oct. 19, 2017.
Appeal2018-001899
Application 14/736,810
Appellants 'Invention
The invention at issue on appeal generally relates to "remote control
systems and, more particularly, to ... method[ s] for setting up and
configuring a universal remote control to command functions of one or more
types of remotely controllable appliances of one or more manufacturers"
(Spec. 1: 12-15). The configuration process receives identity data provided
by an appliance ( to be controlled) at a server through use of a physical and
logical interconnection and utilizes the identity data to identify a code set
that is cross-referenced to the identity data. The configuration process
configures a controlling device to use one or more commands selected from
the identified code set to command corresponding functional operations of
the appliance. The functional operations of the appliance to be commanded
by the controlling device are determined as a function of controllable
capability information that is also provided by the appliance through use of
the physical and logical interconnection. Spec. 20: 18-21 :4, 21: 12-23, 22:9-
15, 31:5-33:21; Abstract.
Illustrative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. A method for configuring a controlling device to
command functional operations of an appliance, comprising:
receiving at a server device via a network an identity data
provided by the appliance through use of a physical and logical
interconnection in which communication exchanges are
referenced to a standard;
using the identity data at the server device to identify
within a database having a plurality of codesets, wherein each of
the plurality of codesets is cross-referenced to an appliance, a
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codeset which is cross-referenced to the identity data provided
by the appliance; and
configuring the controlling device to use one or more
commands selected from the identified codes et to command one
or more corresponding functional operations of the appliance;
wherein the one or more functional operations of the
appliance to be commanded by the controlling device using the
one or more commands selected from the identified codeset are
determined as a function of controllable capability information
that is also provided by the appliance through use of the physical
and logical interconnection.
Rejections on Appeal
1. The Examiner rejects claims 1--4, 7-16, and 18 under
pre-AIA 35 U.S.C. § I03(a) as being unpatentable over van Ee et al. (US
2002/0140569 Al, published Oct. 3, 2002 (filed Mar. 30, 2001)) ("van Ee"),
Yang (US 6,133,847, issued Oct. 17, 2000), and Adolph et al. (US
5,959,539, issued Sept. 28, 1999) ("Adolph").
2. The Examiner rejects claims 1-5 and 7-17 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over van Ee, Yang, and Shteyn
(US 6,199,136 Bl, issued Mar. 6, 2001). 3
3. The Examiner rejects claims 1--4 and 6-18 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over van Ee, Yang, and Allport
(US 6,104,334, issued Aug. 15, 2000).
3 The Examiner lists claims 1-5, 7-16, and 18 in the statement of the
rejection, but generally addresses claims 1--4 and 7-17 and addresses claim
5 in more detail. See Final Act. 13-14. The Examiner does not address
claim 18. Accordingly, we correct the Examiner's harmless typographical
error and clarify the statement of rejection for consistency of the record.
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4. The Examiner rejects claims 1-16 and 18 on the ground ofnon-
statutory obviousness-type double patenting over claims 1-16 of Arling et
al. (US 8,812,629 B2, issued Aug. 19, 2014) ("Arling") and Adolph.
5. The Examiner rejects claim 17 on the ground of non-statutory
obviousness-type double patenting over claims 1-16 of Arling, Adolph, and
Allport.
RELATED APPEALS
The instant Appeal is related to Appeal No. 2012-009621 for
US 11/818,295 and Appeal No. 2007-000421 for US 10/151,635. In the
Decision of Appeal No. 2012-009621 mailed on Feb. 3, 2015, the Board
reversed the Examiner's obviousness rejection of the pending claims under
35 U.S.C. § 103(a). In the Decision of Appeal No. 2007-000421 mailed on
Dec. 20, 2006, the Board also reversed the Examiner's obviousness rejection
of the pending claims under 35 U.S.C. § 103(a). In particular, the Board
found that the Allport reference ( cited in the instant appeal) did not teach
retrieving control codes from a database using identifying information. See
the Decision of Appeal No. 2007-000421 at 6-7.
ISSUE
Based upon our review of the record, Appellants' contentions, and
the Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in finding the combination of van Ee, Yang, and
Adolph would have taught or suggested "using the identity data at the server
device to identify" "a codeset ... cross-referenced to the identity data
provided by the appliance," "configuring the controlling device to use one or
more commands selected from the identified codeset to command one or
more corresponding functional operations of the appliance," which are "are
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Application 14/736,810
determined as a function of controllable capability information that is also
provided by the appliance through use of the physical and logical
interconnection" as recited in Appellants' claim 1?
ANALYSIS
The Obviousness Rejection over van Ee, Yang, and Adolph
The Examiner rejects independent claim 1 as being obvious in view
of van Ee, Yang, and Adolph. See Final Act. 6-9; Ans. 5-10. Appellants
contend that van Ee, Yang, and Adolph do not teach the disputed limitations
of claim 1. See Appeal Br. 4---6; Reply Br. 2-5. Specifically, Appellants
contend, inter alia, that "Adolph fails to disclose, teach, or suggest a remote
control that uses controllable capability information as provided by an
appliance to select command codes from a codes et and thereby configure
the remote control," but rather "discloses a system in which an appliance
provides to the remote control the data, namely, the 'function and
meaning code' that is to be returned back to the appliance when a
corresponding command key of the remote control is activated." Appeal Br.
5. Further, Appellants contend "Adolph does not describe that the
'information items' are used to select anything, let alone to select command
codes from a previously identified codes et as claimed. Instead, Adolph
describes that the 'information items"' (the 'function and meaning code')
"that may be provided by the appliance to the remote control function merely
to provide labels within a graphical user inteiface of the remote control.
Appeal Br. 5.
We agree with Appellants that the Examiner-cited portions of Adolph
(generally Adolph, col. 2, col. 4, and col. 8-see Final Act. 9) do not
describe the disputed limitations of determining the functional operations of
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the appliance "as a function of controllable capability information" and
using the determined functional operations to select "one or more
commands" "from the identified codeset" ( claim 1 ), and that the Examiner
does not sufficiently explain how the cited portions of Adolph teach or
suggest these features. See Reply Br. 2-5. As pointed out by Appellants,
(supra), Adolph describes providing a label to a graphical user interface.
See Adolph, col. 2, 11. 7-24; col. 7, 1. 40-col. 8, 1. 44. We also note that the
Examiner's citation to column 4 of Adolph ( describing the communication
interface (see col. 4, 11. 34--39)) is not related to (describes a different
embodiment from) the information exchanged between the remote control
device and electronic device ( device to be controlled) (supra). Compare
Adolph, col. 7, 1. 40-col. 8, 1. 44 and col. 4, 11. 34--39.
Consequently, we are constrained by the record before us and find that
the Examiner erred in concluding that the combination of van Ee, Yang, and
Adolph renders unpatentable Appellants' claim 1. Dependent claims 2--4,
7-16, and 18 depend on and stand with claim 1. Accordingly, we do not
sustain the Examiner's obviousness rejection of claims 1--4, 7-16, and 18
over van Ee, Yang, and Adolph.
The Obviousness Rejection over van Ee, Yang, and Adolph
The Examiner rejects independent claim 1 and dependent claims 2-5
and 7-17 as being obvious in view of van Ee, Yang, and Shteyn. See Final
Act. 13-14; Ans. 10-11. We agree with Appellants (see Appeal Br. 6;
Reply Br. 6) that the Examiner does not sufficiently explain how the cited
prior art teaches or suggests the recited features of claim 1. The Examiner
does not discuss independent claim 1 in any detail or explain how Shteyn
cures the deficiencies of Adolph (supra). Accordingly, we do not sustain the
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Examiner's obviousness rejection of claims 1-5 and 7-17 over van Ee,
Yang, and Shteyn.
The Obviousness Rejection over van Ee, Yang, and Allport
The Examiner rejects independent claim 1 and dependent claims 2--4
and 6-18 as being obvious in view of van Ee, Yang, and Allport. See Final
Act. 14--17; Ans. 11-12. We agree with Appellants (see Appeal Br. 7;
Reply Br. 6) that the Examiner does not sufficiently explain how the cited
prior art teaches or suggests the recited features of claim 1. The Examiner's
discussion of Allport (Final Act. 14--15) does not clearly map the features of
independent claim 1 to the disclosures of Allport or explain how Allport
cures the deficiencies of Adolph (supra). That is, it is unclear how Allport
describes determining the functional operations of the appliance based on
information provided by the appliance through a physical interconnection
and using the determined functional operations to select commands from a
codeset identified at a remote server. Accordingly, we do not sustain the
Examiner's obviousness rejection of claims 1--4 and 6-18 over van Ee,
Yang, and Allport.
The Non-Statutory Obviousness-Type Double Patenting Rejections
The Examiner rejects independent claim 1 and dependent claims 2-16
and 18 on the ground of non-statutory obviousness-type double patenting
over claims 1-16 of Arling and Adolph. See Final Act. 4; Ans. 4--5. We
agree with Appellants (see Appeal Br. 3--4; Reply Br. 2) that Adolph does
not teach or suggests the features of claim 1 for which the Examiner cites
Adolph. See discussion of Adolph (supra). Accordingly, we do not sustain
the Examiner's non-statutory obviousness-type double patenting rejection of
claims 1-16 and 18.
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The Examiner rejects dependent claim 17 on the ground of non-
statutory obviousness-type double patenting over claims 1-16 of Arling,
Adolph, and Allport. See Final Act. 4---6; Ans. 4--5. Claim 17 depends on
and stands with independent claim I-we do not sustain the Examiner's
non-statutory obviousness-type double patenting rejection of claim 17 for
the same reasons as claim 1 (supra).
CONCLUSIONS
Appellants have persuasively shown the Examiner erred in rejecting
claims 1-18 under 35 U.S.C. § I03(a).
Appellants have persuasively shown the Examiner erred in rejecting
claims 1-18 on the ground of non-statutory obviousness-type double
patenting.
DECISION
We reverse the Examiner's rejections of claims 1-18.
REVERSED
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