Ex Parte Igoe et al

Patent Trial and Appeal Board

Mar 20, 2015

11247633 (P.T.A.B. Mar. 20, 2015)

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.
11/247,633 10/11/2005 Joseph M. Igoe IGOE-001 8589
76528 7590 03/23/2015
IGOE INTELLECTUAL PROPERTY, LLC
2032 Arch Street Suite B
PHILADELPHIA, PA 19103
EXAMINER
CHIO, TAT CHI
ART UNIT PAPER NUMBER
2486
MAIL DATE DELIVERY MODE
03/23/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPH M. IGOE and PATRICK T. IGOE
____________________

Appeal 2012-011434
Application 11/247,633
Technology Center 2400
____________________

Before CARLA M. KRIVAK, DANIEL N. FISHMAN, and
DANIEL J. GALLIGAN, Administrative Patent Judges.

GALLIGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
seek our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1–12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
2

1
The Appeal Brief identifies the inventors as the real parties in interest. Br.
2.
2
Our Decision refers to Appellants’ Appeal Brief filed January 10, 2012
(“Br.”) and Examiner’s Answer mailed May 7, 2012 (“Ans.”).
Appeal 2012-011434
Application 11/247,633

2

STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 9, and 11 are independent claims. Claim 1 is reproduced
below:
1. A method for coordinating the switching of video signals
in a first video switching device and a second video switching
device by a switching coordination device comprising the steps
of:
storing information regarding control signals for said
second video switching device, said control signals operative to
cause selection of one of a plurality of video inputs of said
second video switching device, and information associating
each of said control signals with one connection of a plurality
of video output connections of said switching coordination
device;
generating, by said switching coordination device, a
plurality of distinguishable video probe signals that do not
represent video program content;
transmitting said plurality of distinguishable video probe
signals via said video output connections to said first video
switching device, wherein each one of said plurality of
distinguishable video probe signals is transmitted over one of
said video output connections of said switching coordination
device to one of a plurality of inputs of said first video
switching device, said first video switching device operative to
pass a signal from one of said inputs of said first video
switching device to an output of said first video switching
device;
receiving a signal on a video input connection of said
switching coordination device from said output of said first
video switching device, said signal representing the one of said
plurality of distinguishable video probe signals passed by said
first video switching device;
detecting which one of said distinguishable video probe
signals was passed by said first video switching device in said
signal received on said video input connection of said switching
Appeal 2012-011434
Application 11/247,633

3

coordination device from said output of said first video
switching device; and
transmitting a control signal to said second video
switching device, said transmitted control signal determined at
least in part from said stored information regarding control
signals for a second video switching device, said information
associating each of said control signals with one connection of
a plurality of outputs of said switching coordination device, and
the result of said step of detecting which one of said
distinguishable video probe signals generated by said switching
coordination device was passed by said first video switching
device in said signal received on said video input connection of
said switching coordination device.

The prior art relied upon by the Examiner in rejecting the claims on
appeal:
Mabey et al. US 4,885,632 Dec. 5, 1989
(hereinafter “Mabey”)
Elberbaum US 6,493,034 B1 Dec. 10, 2002
Hicks, III et al. US 2004/0261112 A1 Dec. 23, 2004
(hereinafter “Hicks”)
Examiner’s Rejections
Claims 1, 2, 8, 9, and 11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Mabey. Ans. 4–10.
Claims 3, 4, 7, 10, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mabey and Hicks. Ans. 10–12.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mabey and Elberbaum. Ans. 12–13.

Appeal 2012-011434
Application 11/247,633

4

ANALYSIS
Appellants argue the Examiner has not established Mabey discloses
the final step of claim 1 reciting
transmitting a control signal to said second video switching
device, said transmitted control signal determined at least in
part from . . . the result of said step of detecting which one of
said distinguishable video probe signals generated by said
switching coordination device was passed by said first video
switching device in said signal received on said video input
connection of said switching coordination device.
Br. 8–11. Appellants argue, inter alia, that the Examiner erred in
determining that the wireless pad 134 of Mabey is equivalent to the first
switching device of claim 1. Br. 9. Claim 1 recites that the “first video
switching device” is “operative to pass a signal from one of said inputs of
said first video switching device to an output of said first video switching
device.” Appellants argue that the wireless pad 134 of Mabey “neither
receives a plurality of video signals nor passes a selected one of an incoming
plurality of video signals.” Br. 9. In response, the Examiner explained that
the wireless pad of Mabey is equivalent to the claimed first video switching
device because “[w]hen the user presses one of the inputs on the wireless
keypad, a signal is passed from one of the inputs of the wireless keypad to
the output of the wireless keypad.” Ans. 14–15.
We are persuaded that the Examiner has not demonstrated that Mabey
teaches the particular configuration required by the method of claim 1. With
respect to the wireless keypad, the Examiner has not demonstrated that a
“plurality of distinguishable video probe signals” is transmitted to the
wireless keypad, as required by the first transmitting step of claim 1.
Therefore, the Examiner’s finding that the keypad transmits an output based
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Application 11/247,633

5

on a user pressing a button is not adequate to support an anticipation
rejection.
On this record we are constrained to conclude that the Examiner has
not established Mabey anticipates claim 1. Therefore, we do not sustain the
rejection of claim 1.
Appellants argue that, for the same reasons Mabey fails to disclose
“transmitting a control signal” with respect to claim 1, Mabey also fails to
disclose the limitations of claims 9 and 11 reciting “a signal generator for
generating a control signal.” Br. 12–15. We note that claims 9 and 11 do
not affirmatively recite “transmitting” the signal but instead refer to
generating the signal. However, despite the difference in claim language,
the Examiner rejected claims 1, 9, and 11 together. Ans. 4–10. As such,
because we do not sustain the rejection of claim 1, we also do not sustain the
rejection of claims 9
3
and 11.
Because we do not sustain the rejection of independent claims 1, 9,
and 11, we also do not sustain the rejections of dependent claims 2 and 8
under 35 U.S.C. § 102(b) over Mabey, dependent claims 3, 4, 7, 10, and 12
under 35 U.S.C. § 103(a) over Mabey and Hicks, and dependent claims 5
and 6 under 35 U.S.C. § 103(a) over Mabey and Elberbaum.

3
Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review claim 9 to
determine if the claim fails to comply with 35 U.S.C. § 112 ¶ 2 for lack of
antecedent basis of “said transmitted control signal,” which is recited in the
“signal generator” limitation of claim 9 even though the claim does not
previously identify any “transmitted control signal.”
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Application 11/247,633

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DECISION
We reverse the Examiner’s rejections of claims 1–12.

REVERSED
mls