Ex Parte Huang et al

Patent Trial and Appeal Board

Oct 31, 2016

12855501 (P.T.A.B. Oct. 31, 2016)

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 11/02/2016
GREENBERG TRAURIG, LLP
77 WEST 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
11/02/2016 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):
j arosikg@gtlaw.com
chiipmail@gtlaw.com
escobedot@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
Appeal2015-006186
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
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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:
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Application 12/855,501
1. A remote control device for controlling one or more
consumer devices of various device types, the remote control
compnsmg:
a user defined action map having a plurality of action map
entries, each action map entry including at least one function for
controlling at least one consumer device;
a plurality of user input elements each having an
assignment to at least one of the plurality of action map entries
and capable of activating the at least one function included in the
action map entry;
a plurality of device command code sets, each having a
plurality of functions for controlling at least one consumer
device;
a selector for selecting individual functions from the
device command code sets appropriate for controlling the one or
more consumer devices; and
an activator configured for creation of 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 user defined action map assigned to an user input element.
RELATED APPEALS
Appellants inform us of eight related appeals, four of which are said
to have resulted in decisions of this Board. App. Br. 2 (citing four Board
decisions). The Board, however, also issued decisions in the other four
identified appeals as well. See Ex parte Huang, No. 2014-001814 (PTAB
Apr. 4, 2016); Ex parte Thompson, No. 2013-003049 (PTAB July 28, 2015);
Ex parte Huang, No. 2012-009621 (PTAB Feb. 3, 2015); Ex parte Arling,
No. 2012-012188 (PTAB Sept. 1, 2015). Nevertheless, the issues in the
identified related appeals are not germane to those before us in this appeal.
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Application 12/855,501
THE REJECTIONS
The Examiner rejected claims 1-19 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 2-5. 1
The Examiner rejected claims 1-19 under 35 U.S.C. § 102(b)2 as
anticipated by Wouters (US 7,746,244 B2; iss. June 29, 2010). Final Act. 5-
8.
The Examiner rejected claims 1-19 under 35 U.S.C. § 103(a) as
unpatentable over Sony Corp., Integrated Remote Commander Operating
Instructions, RM-AV2100/AV2100B (2000) ("Sony"), Foster (US
6,211,870 Bl; iss. Apr. 3, 2001), and Lambrechts (US 6,909,378 Bl; iss.
June 21, 2005). Final Act. 9-14.
THE WRITTEN DESCRIPTION REJECTION
Regarding independent claims 1, 9, and 15, the Examiner finds that
Appellants' Specification does not support the recited ( 1) user-defined 3
action map; (2) user input elements each having an assignment to at least
1 Throughout this opinion, we refer to (1) the Final Rejection mailed October
16, 2014 ("Final Act."); (2) the Appeal Brief filed December 10, 2014
("App. Br."); (3) the Examiner's Answer mailed April 6, 2015 ("Ans."); and
(4) the Reply Brief filed June 3, 2015 ("Reply Br.").
2 Although Wouters qualifies as prior under§§ 102(a) and (e}-not § 102(b)
-since it issued less than one year before the present application's filing
date of August 12, 2010, we treat the Examiner's error in this regard as
harmless.
3 Although Appellants' claims recite a "user defined action map" without a
hyphen between "user" and "defined," we nonetheless include the hyphen
when referring to this element for proper grammatical form.
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Application 12/855,501
one action map entry; (3) selector for selecting individual functions from the
recited device command code sets; and ( 4) activator for creating one or more
links between at least one selected individual function and action map
entries assigned to a user input element. Final Act. 2-5; Ans. 2-5. The
Examiner adds that the limitations of dependent claim 8 are also
unsupported by Appellants' Specification. Final Act. 5.
Appellants argue that because the claims were copied from Wouters to
invoke an interference, Wouters must be considered when evaluating the
present application's claims because both Wouters and the present
application are said to disclose and claim the same elements. App. Br. 6-8;
Reply Br. 2. Appellants add that although various terms (e.g., "code set")
used by Wouters in the present application were replaced with equivalent
terms (e.g., "action map") to advance prosecution, these replacement terms
are nevertheless said to be supported by the original Specification to show
possession of the recited elements, including those of dependent claim 8.
App. Br. 8-10; Reply Br. 2--4.
ISSUE
Under§ 112, first paragraph, has the Examiner erred in rejecting
claims 1-19 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 skilled
artisans that Appellants possessed the invention recited in claims 1, 8, 9, and
15 as of the filing date.
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ANALYSIS
Claims 1-7 and 9-19
We begin by noting that Appellants' independent claims 1, 9, and 15
filed on August 12, 2010 are substantially similar to Wouters' independent
claims 1, 10, and 16, and that Appellants acknowledge that Wouters' claims
were copied to invoke an interference. See App. Br. 7; Reply Br. 2.
Notably, Appellants' original independent claims were amended on July 29,
2014 to, among other things, replace various recited terms as summarized
below:
Terms in Original Independent Replacement Terms in Appealed
Claims Claims
"code set" "action map"
"cells" "action map entries"
"object keys" "user input elements"
"preset" "device command"
Table 1: Comparison of Key Terms in Original and Appealed Claims
In effect, Appellants replaced Wouters' terminology in the original
claims with terminology more consistent with that used in Appellants'
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Specification. According to Appellants, the above-noted terms are
equivalent, and because Wouters and the present application allegedly
disclose and claim the same elements, Wouters must be considered when
evaluating the appealed claims with respect to the written description
requirement. App. Br. 7-8; Reply Br. 2.
Appellants are correct that Wouters is relevant here, at least to the
extent that the appealed claims were copied from that reference except for
the above-noted replacement terms. Although copied claims are interpreted
in light of the Specification of the patent from which the claims were copied,
In re Spina, 975 F.2d 854, 856 (Fed. Cir. 1992), the claims must
nevertheless be supported by the copier's Specification. See Cultor Corp. v.
A.E. Staley Mfg., 224 F.3d 1328, 1332 (Fed. Cir. 2000).4
Turning to the rejection, we agree with the Examiner that Appellants'
original disclosure does not convey with reasonable clarity to skilled artisans
that Appellants possessed the recited user-defined action map as of the filing
date. As noted above, the term "action map" was not in the claims copied
from Wouters, but instead was used to replace the term "code set" in the
copied claims. Nevertheless, Appellants contend that the recited "user
defined action map" is equivalent to the "user defined code set" in the
copied claims. App. Br. 8. There is insufficient evidence on this record,
however, to substantiate this assertion.
In the Appeal Brief, Appellants identify action map 514 in Figure 18
of the present application as corresponding to the recited user-defined action
4 See also Ex parte Harari, No. 2009-003212, 2011 WL 6960278, at *5
(expanded panel) (non-precedential) (citing Agilent Technologies, Inc. v.
Ajjj;metrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009)).
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map. App. Br. 3 (citing Spec. 17:2---6; 48: 17--49: 14; 50: 1-13). As shown in
that figure, action map 514 contains a number of actions including "OXal
HOME THEATRE-POWER ON," "0Xa2 HOME THEATRE-POWER
OFF," etc. The Specification, however, provides little description of this
action map, let alone that it is user-defined.
On page 15, lines 13 to 15 of Appellants' Specification (which was
not cited by Appellants in their Briefs), action map 514 in Figure 18 is said
to control all actions the user can perform for each device type; thus, user
input events are processed in terms of the action map. Notably, this is the
only specific reference to an action map in the Specification, and this
description falls well short of supporting the recited user-defined action map
as the Examiner indicates. See Final Act. 2-3; Ans. 3. That the action map
can control all user actions for each device type does not mean that the map
is defined by a user: it could be preprogrammed or otherwise defined by the
system-not necessarily a user.
Appellants' reliance on the disclosed setup wizards for supporting a
user-defined action map (App. Br. 9; Reply Br. 4) is unavailing. According
to Appellants, to populate an "action map," a user interacts with a setup
wizard as shown, for example, in Figures 22A to 22G. 5 App. Br. 9.
Appellants contend that these setup wizards allow the user to ( 1) define the
action map and associated entries, and (2) select functions from device
command code sets for linking to action map entries that are, in tum,
assigned to user input elements. App. Br. 9; Reply Br. 4 (citing Spec. 17:2-
5 Because the present application does not have a "Figure 22" as cited by
Appellants, but rather Figures 22A to 22G, we refer to the correct figure
numbers here.
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6; 48:17--49:14; 50:1-13). Notably, these cited passages match those cited
in connection with the recited user-defined action map limitation in the
Appeal Brief's "Summary of the Claimed Subject Matter" on page 3.
But these cited passages do not reasonably support a user-defined
action map. The first cited passage notes that Figure 18 is an example of
how various maps relate each other as a user performs an action which, in
this case, is a macro for powering a home theater. Our emphasis
underscores that while a user performs actions in connection with the action
map 514 in Figure 18, the user does not define that map based on this
description.
Appellants' reliance on pages 48 to 50 of the Specification (App. Br.
3, 9; Reply Br. 4) fares no better in this regard. Pages 48 and 49 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.
In Figures 22A to 22G, the user programs a new macro sequence by
selecting the "add activity" 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.
Although this functionality enables users to create macros associated with
button-based "user input elements" via a wizard, we fail to see how this
functionality involves a user-defined action map as claimed. Although the
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user defines the macro using this wizard, the disclosure does not convey
with reasonable clarity that the user also defines an action map, let alone an
action map such as action map 514 in Figure 18 even assuming, without
deciding, that the functionality of Figure 18 is somehow involved in
connection with the user-defined macro of Figures 22A to 22G.
Notably, apart from merely asserting that the user's interaction with a
setup wizard populates the action map by adding activities to that map (App.
Br. 9), the relied-upon passages from the original disclosure that are said to
support such a "user-defined action map" do not convey such functionality
with reasonable clarity to show possession of this feature and, therefore, fail
to satisfy the written description requirement. See Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). To the extent
that it would have been obvious for a user to define an action map, such as
that shown in Figure 18, by, for example, populating it with activities via a
wizard or otherwise, is insufficient. Although the written description
requirement under § 112 does not demand any particular form of disclosure
or require a verbatim recitation, a description that merely renders the
invention obvious does not satisfy the requirement. Id. at 1352. Therefore,
to the extent that Appellants contend that the recited user-defined action map
would have been obvious from the cited passages from the original
disclosure, such a position is unavailing in light of Ariad.
We reach our finding regarding the insufficiency of proffered
support in the Specification, even assuming, without deciding, that the
original disclosure enables the user to define soft keys for display as
Appellants contend (Reply Br. 3--4), and that these soft keys are user input
elements as claimed. Notably, Appellants' soft-key-based argument was
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Application 12/855,501
raised for the first time in the Reply Brief~ and is, therefore, waived as
untimely. See 37 C.F.R. § 41.41(b)(2). 6 Nevertheless, the original
disclosure does not convey with reasonable clarity the recited user-defined
action map in connection with this soft-key functionality. Not only do
Appellants fail to cite particular passages from the Specification supporting
such soft-key functionality, let alone passages that explicitly tie this
functionality to that shown in Figure 18 (which was cited on page 3 of the
Reply Brief), Appellants' reliance on the exemplary action map in this figure
in connection with this newly-raised soft-key argument is unavailing for the
reasons previously discussed.
Lastly, Appellants' reliance on the Specification's page 50, lines 1 to
13 as ostensibly supporting the recited user-defined action map (App. Br. 3,
9; Reply Br. 4) likewise falls short of conveying possession of that element.
Although this cited passage pertains to customizing and reassigning keys via
a customization menu 1202 in Figure 20A, this passage does not convey
with reasonable clarity that the user also defines an action map, let alone an
action map such as action map 514 in Figure 18 even assuming, without
deciding, that the functionality of Figure 18 is somehow involved in
connection with the key customization and reassignment functionality of
6 Notably, the Examiner's articulated position on pages 3 to 5 of Answer in
connection with the written description rejection-including the portion
pertaining to hardware buttons noted by Appellants (Reply Br. 3--4}-
matches the same position articulated in the Final Rejection. Compare Ans.
3-5 with Final Act. 2-5. Therefore, Appellants' soft-key-based argument
raised for the first time in the Reply Brief was not prompted by new findings
or conclusions made by the Examiner in the Answer, for the Examiner's
position on which Appellants' argument was based was articulated in the
Final Rejection.
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Figure 20A. And to the extent that it would have been obvious for a user to
define an action map, such as that shown in Figure 18, using the disclosed
key customization and reassignment functionality of Figure 20A, is
insufficient under Ariad as noted previously. See Ariad, 598 F.3d at 1352.
Therefore, because the original disclosure does not convey with
reasonable clarity that Appellants possessed the recited user-defined action
map, we are not persuaded that the Examiner erred in rejecting independent
claim 1 as failing to satisfy the written description requirement for that
reason alone. Nor are we persuaded that the Examiner erred in rejecting
independent claims 9 and 15 which recite commensurate limitations, and the
dependent claims, for similar reasons. Because we sustain the Examiner's
written description rejection based solely on the lack of support for the user-
defined action map in all appealed claims, we need not reach other issues
associated with this rejection, including those in connection with dependent
claim 8.7
THE ANTICIPATION REJECTION
The Examiner finds that Wouters discloses every recited element of
claims 1-19. Final Act. 5-8.
7 We note in passing, however, that claim 8 recites limitations commensurate
with those recited in claims 14 and 18. Accord Ans. 8 (noting this similar
scope in connection with another rejection). Therefore, to the extent that
claim 8 fails to satisfy the written description requirement for the additional
reason regarding the lack of support for communicating unlinked user input
elements to a user noted by the Examiner on page 5 of the Final Rejection-
an issue that we do not reach---claims 14 and 18 are similarly deficient.
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Appellants do not dispute that Wouters discloses all elements recited
in the appealed claims, but instead contend that Wouters is not prior art
because the claims of the present application are said to be fully supported
by the disclosure of U.S. Provisional Application 60/344,020 filed
December 20, 2001 ("the '020 provisional") which antedates Wouters'
earliest priority date. See App. Br. 10; Reply Br. 5.
The Examiner, however, finds that because (1) the claim limitations
are not supported by the '020 provisional, and (2) Appellants did not provide
support in any related application, the claims have, at best, a filing date of
the present application, namely August 12, 2010 and, therefore, Wouters
qualifies as prior art to the claimed invention. Ans. 6.
ISSUE
Under§ 102, has the Examiner erred in rejecting claims 1-19 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
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. 10;
Reply Br. 4--5. Although this latter date precedes the filing date of the
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earliest parent Application No. 10/288,727, namely November 6, 2002,
Wouters' earliest possible priority date is after the filing date of the '020
provisional and, as such, Appellants contend that Wouters does not qualify
as prior art. See id.
To be sure, 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).
But there has been no such entitlement shown on this record, nor will
we presume as much, for we have no basis on this record for doing so. See
Dynamic Drinkware, LLC v. Nat 'l Graphics, Inc., 800 F.3d 1375, 1380
(Fed. Cir. 2015) ("[B]ecause the PTO does not examine priority claims
unless necessary, the Board has no basis to presume that a reference patent is
necessarily entitled to the filing date of its provisional application.").
In addition, the Examiner finds that the claim limitations are not
supported by the '020 provisional (Ans. 6}-a factual finding that has not
been persuasively rebutted on this record. Although Appellants allege that
the same figures and descriptions cited in the Briefs are found in the '020
provisional (App. Br. 10; Reply Br. 4), Appellants provide no pinpoint
citations from the '020 provisional to support this contention, let alone
specifically identify such disclosure. Nor do Appellants analyze or explain
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how this currently-unidentified disclosure in the '020 provisional provides
the requisite support for the claimed subject matter apart from mere
conclusory statements.
Such conclusory statements, however, are insufficient to persuasively
rebut the Examiner's findings to the contrary. The Board's precedential
decision, Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI Aug. 29, 2008), is
instructive in this regard. There, in relying on a cited U.S. patent's
provisional application to show that the cited patent (Narayanan) was prior
art, the Examiner found that both the cited patent and its provisional
application "clearly show[ ed] the same subject matter"-a factual finding.
Yamaguchi, 88 USPQ2d at 1613. By making this factual finding, the
Examiner then shifted the burden to Appellants to show why such a factual
finding was erroneous-a burden that they failed to meet. Id.
Rather, the Appellants in Yamaguchi merely stated that the Examiner
failed to furnish a copy of the provisional application which was allegedly
improper (which it was not). Id. Nevertheless, the Appellants admitted that
they obtained a copy of the cited patent's provisional application, but alleged
that it did not "identically track" the patent. Id. Notably, the Yamaguchi
panel held that this mere conclusory statement-totally devoid of
explanation or analysis-was unpersuasive of error in the Examiner's factual
findings pertaining to the cited patent and its underlying provisional
application. Id. at 1613-14.
Similarly, the Examiner in this case finds that the claim limitations are
not supported by the '020 provisional (Ans. 6}-a factual finding that shifted
the burden to Appellants to show why this finding is erroneous. See
Yamaguchi, 88 USPQ2d at 1613. But, as in Yamaguchi, Appellants' mere
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conclusory statements to the contrary-without more---do not meet that
burden. See App. Br. 1 O; Reply Br. 4. Accordingly, we find that the weight
of the evidence on this record supports the Examiner's conclusion that
Wouters qualifies as prior art to the claimed invention.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 1-19 as anticipated by Wouters.
THE OBVIOUSNESS REJECTION
Because our decision is dispositive regarding patentability of all
appealed claims for the reasons previously discussed, we need not reach the
merits of the Examiner's decision to also reject claims 1-19 as obvious over
Sony, Foster, and Lambrechts. See Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (approving ITC's determination based on a
single dispositive issue, and not reaching other issues not decided by the
lower tribunal).
CONCLUSION
The Examiner did not err in rejecting claims 1-19 under § § 112 and
102. We do not reach the Examiner's obviousness rejection of those claims.
DECISION
The Examiner's decision rejecting claims 1-19 is affirmed.
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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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