Ex Parte Huddleston et al

Board of Patent Appeals and Interferences

Nov 4, 2010

10045724 (B.P.A.I. Nov. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/045,724 10/26/2001 Wyatt Allen Huddleston PF02200NA/10-31 9665
51874 7590 11/05/2010
LAW OFFICES OF CHARLES W. BETHARDS, LLP
P.O. BOX 1622
COLLEYVILLE, TX 76034
EXAMINER
BRUCKART, BENJAMIN R
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
11/05/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WYATT ALLEN HUDDLESTON, DAVID JOHN SCHWARTZ,
and STEVEN WOJNOWSKI
____________________

Appeal 2009-006535
Application 10/045,7241
Technology Center 2400

____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and THOMAS S. HAHN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Motorola Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006535
Application 10/045,724

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention concerns communications networks suitable for
brokering or making available control instructions that can be updated as
required for intelligent devices or equipment (Spec. 3). A user programs a
desired function into a wireless internet access device (WIAD) such as a
remote control. The WIAD identifies the intelligent device and the desired
function to a web site, which returns to the WIAD a subset of control
instructions accessible by or via the web site for controlling the intelligent
device. In turn, the WIAD forwards the subset of control instructions to the
intelligent device to effect the desired function (Spec. 5-6).
Claim 1 is exemplary of the claims on appeal:
1. A method for command brokering on behalf of an intelligent device,
comprising the steps of:
defining in a wireless internet access device (WIAD) a desired
function to be performed by the intelligent device, the desired function being
only a portion of all functions that the intelligent device is capable of
performing;
identifying the intelligent device and the desired function to a web site
having access to control instructions for the intelligent device, the
identifying provided by the WIAD, through a wireless communication
network;
returning, to the WIAD from the web site, only a subset of the control
instructions for controlling the intelligent device to perform the desired
function; and
forwarding the subset of the control instructions from the WlAD to
the intelligent device to effect the desired function,
wherein the WIAD does not have a complete set of the control
instructions for the intelligent device.

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Appeal 2009-006535
Application 10/045,724

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Hayes US 2002/0140571 A1 Oct. 3, 2002
Escobosa US 2003/0151538 A1 Aug. 14, 2003
Baun US 2003/0197930 A1 Oct. 23, 2003
Maymudes US 6,748,278 B1 Jun. 8, 2004

Claims 1-3, 5, 8, 9, 11-13, 15, and 17-22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Escobosa in view of Hayes.
Claims 4, 6, 7, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Escobosa in view of Hayes and Maymudes.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Escobosa in view of Hayes and Baun.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed July 7, 2008) and the Examiner’s Answer (“Ans.,” mailed
August 27, 2008) for their respective details.

ISSUES
Appellants argue that Escobosa does not explicitly teach identifying a
function to a web site; that Escobosa teaches sending an icon and numeric
code, but does not provide control instructions for a device (App. Br. 14);
that Escobosa teaches only downloading all basic functions, not “only a
subset” as the claims require (App. Br. 15); and that Hayes does not supply
the teaching missing from Escobosa, because Hayes teaches only changing
the look and feel of a remote control, not affecting a desired function in the
intelligent device (App. Br. 16).
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Appeal 2009-006535
Application 10/045,724

Appellants’ contentions present us with the following issues:
1. Does Escobosa teach identifying a desired function to a web site?
2. Does Escobosa teach providing control instructions for an
intelligent device?
3. Does Escobosa teach downloading only a subset of the control
instructions for controlling the intelligent device to perform the desired
functions?
4. Does Hayes supply the teaching, conceded by the Examiner to be
missing from Escobosa, of defining a desired function in the wireless
internet access device itself?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Escobosa
1. Escobosa teaches that a user may select, on a web site, functions
(commands) to be downloaded to a remote control, which a user may invoke
by pressing one of the programmable “blank” keys of the remote control
(Fig. 5b; ¶ 0056).
2. A user may ‘drag and drop’ key functions onto the remote control
as desired. These functions are added to the remote when the configuration
is downloaded, whereas the other functions found on selection 66a are left
on the selection palette, thus not added to the remote and their functionality
not downloaded (¶¶ 0056-0059).
3. Escobosa teaches sending sequences of pre-programmed
instructions to perform various operations (¶ 0065).
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Appeal 2009-006535
Application 10/045,724

4. Escobosa teaches that a user who has just purchased a new audio
amplifier may be instructed to log in to a web site, where the user may
download code data for the new device, as well as instructions and remote
control sequences, into his remote (¶ 0066, emphasis added). Such
sequences may include macro sequences or steps for balancing volume
levels on surround sound speakers, setting equalizer values to match room
acoustics, etc. (Id.).
Hayes
5. Hayes teaches that remote control key defining can be done within
the universal remote itself (Hayes Fig. 5, ¶¶ 0123-0130).

PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
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Appeal 2009-006535
Application 10/045,724

ANALYSIS
CLAIMS 1-3, 5, 8, 9, 11-13, 15, and 17-22
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellants’ argument that Escobosa does not explicitly teach
identifying a function to a web site (App. Br. 14) is not persuasive to show
Examiner error. Escobosa Figure 5b clearly illustrates that a user may select,
on a web site, functions (commands) to be downloaded to a remote control,
which a user may invoke by pressing one of the programmable “blank” keys
of the remote control (FF 1).
Appellants’ argument, summarized supra, that Escobosa’s web site
has nothing to do with providing control instructions for a particular device
(App. Br. 14), is likewise unpersuasive. Escobosa teaches, for example,
sending sequences of pre-programmed instructions to perform various
operations (FF 3). These (numeric) instructions cause the intelligent device
to execute not merely one command, but several commands in sequence.
Escobosa teaches, as a further example, that a user who has just purchased a
new audio amplifier may be instructed to log in to a web site, where the user
may download code data for the new device, as well as instructions and
remote control sequences, into his remote (FF 4, emphasis added). Such
sequences may include macro sequences or steps for balancing volume
levels on surround sound speakers, setting equalizer values to match room
acoustics, etc. (Id.).
We are likewise not persuaded by Appellants’ argument that Escobosa
does not teach downloading “only a subset” of the control instructions for
controlling the intelligent device to perform the desired function (App. Br.
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Appeal 2009-006535
Application 10/045,724

15), nor forwarding the subset to the intelligent device (Id.). According to
Appellants, Escobosa’s teaching of a “base” remote control whose keypad
preferably includes a small set of basic functions expected to be required by
everyone, together with a number of “blank” customizable keys (¶ 0043),
does not meet the claimed “subset” because “all basic functions” are
included, not merely a subset (App. Br. 15). We agree with the Examiner’s
finding, however, that Escobosa Fig. 5b illustrates the process of
customizing the remote to associate functions with the blank, customizable
keys (Ans. 8-9; FF 1). A user may ‘drag and drop’ key functions onto the
remote control as desired. These functions are added to the remote when the
configuration is downloaded, whereas the other functions found on selection
66a are left on the selection palette, thus not added to the remote and their
functionality not downloaded (FF 2).
Appellants’ argument, summarized supra, that Hayes does not supply
the teaching conceded to be missing from Escobosa is unpersuasive.
Escobosa teaches defining a desired function (using a PC). Hayes
demonstrates that the key defining shown in Escobosa can be done within
the universal remote itself (Ans. 10; FF 5). We agree with the Examiner’s
reasoning that the combination would allow a user to redefine the menus for
a particular (intelligent) device without the need for the user computer 24 of
Escobosa, resulting in substantial time savings (Ans. 10).
Appellants have not shown error in the Examiner’s § 103 rejection of
claims 1-3, 5, 8, 9, 11-13, 15, and 17-22. Accordingly, we will sustain the
rejection.
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Appeal 2009-006535
Application 10/045,724

CLAIMS 4, 6, 7, 14, AND 16
Appellants’ argument that Maymudes does not remedy the
deficiencies of Escobosa and Hayes (App. Br. 19) is not persuasive, because
we do not find deficiencies in the Examiner’s combination of Escobosa and
Hayes, as explained supra.
Appellants have not shown error in the Examiner’s § 103 rejection of
claims 4, 6, 7, 14, and 16, and we will sustain the rejection.
CLAIM 10
We are not persuaded by Appellants’ argument that Baun does not
remedy the deficiencies of Escobosa and Hayes (App. Br. 19), because we
do not find deficiencies in the Examiner’s combination of Escobosa and
Hayes, as explained supra.
Appellants thus have not shown error in the Examiner’s § 103
rejection of claim 10 and we will sustain the rejection.

CONCLUSIONS
1. Escobosa teaches identifying a desired function to a web site.
2. Escobosa teaches providing control instructions for an intelligent
device.
3. Escobosa teaches downloading only a subset of the control
instructions for controlling the intelligent device to perform the desired
functions.
4. Hayes supplies the teaching, conceded by the Examiner to be
missing from Escobosa, of defining a desired function in the wireless
internet access device itself.
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Appeal 2009-006535
Application 10/045,724

ORDER
The Examiner’s rejection of claims 1-22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ELD
LAW OFFICES OF CHARLES W. BETHARDS, LLP
P.O. BOX 1622
COLLEYVILLE TX 76034
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