Ex Parte Ip et al

Board of Patent Appeals and Interferences

Oct 7, 2009

11154112 (B.P.A.I. Oct. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL IP AND YANCY CHEN
____________

Appeal 2009-004539
Application 11/154,112
Technology Center 2600
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Decided: October 7, 2009
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 2-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appeal 2009-004539
Application 11/154,112

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STATEMENT OF THE CASE
Appellants’ claimed invention is a remote control unit (Figs. 1-3;
Spec. ¶¶ [3], [8]; cl. 11). The remote control unit receives a data set
including a stream of video data and presents the stream of video data on a
display, such as a liquid crystal display (LCD). A transmitter transmits a
signal to control an electronic device such as a computer or television.
(Figs. 1-3; Spec. ¶¶ [3], [8], [9])
Independent claim 11, reproduced below, is representative of the
subject matter on appeal.
11. A remote control unit comprising:

a receiver operable to receive a data set;

a presentation device coupled to the receiver and operable to
present information derived from the data set; and

a transmitter coupled to the presentation device and operable to
transmit a signal operable to control an electronic device,
wherein the data set comprises a stream of video data.

REFERENCES
Mameda US 2002/0015109 A1 Feb. 7, 2002
Allen US 6,529,233 B1 Mar. 4, 2003
Ben-Ze’ev (Ben) US 6,791,467 B1 Sep. 14, 2004
(filed Mar. 23, 2000)

The Examiner rejected claims 2-5, 9, 11-15, 17, and 19-21 under
35 U.S.C. § 103(a) based upon the teachings of Ben and Mameda.

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The Examiner rejected claims 6-8, 10, 16, and 18 under
35 U.S.C. § 103(a) based upon the teachings of Ben, Mameda, and Allen.1
Appellants contend that Ben and Mameda do not teach or suggest “a
receiver operable to receive a data set” and that “the data set comprises a
stream of video data” (emphasis omitted) (App. Br. 11; Reply Br. 2).2
Appellants further contend that Ben, Mameda, and Allen do not teach or
suggest “‘a sensor configured to receive a verbal command issued by a user,
wherein the transmitter transmits the signal in response to the sensor
receiving the verbal command’” (App. Br. 12; Reply Br. 3) (emphasis
omitted).

ISSUES
Did Appellants establish the Examiner erred in finding that the
combination of Ben and Mameda teaches a remote control unit having a
receiver receiving a data set that comprises a stream of video data?
Did Appellants establish the Examiner erred in finding that the
combination of Ben, Mameda, and Allen teaches a remote control unit
including a transmitter that transmits a signal in response to a sensor
receiving a verbal command?

1 The Examiner cited only Ben and Allen in the Final Office Action, page 7,
mailed November 1, 2007, but corrected this oversight by including
Mameda in the Answer (Ans. 12, 13, 18).
2 Appellants’ Supplemental Appeal Brief received March 20, 2008, is
referred to throughout this Opinion.
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FINDINGS OF FACT
1. Appellants’ claimed invention is a remote control 20 that
includes a presentation device such as display 65 for displaying still and/or
streaming images (Fig. 2; ¶ [9]). The display can present information
derived from a data set (¶ [19]). A data set includes, for example, software
application data, television-channel guide, video or text files, etc. (¶ [18]).
2. Ben teaches an adaptive universal remote controller having a
transmitter 30 and a receiver 32 for controlling devices such as two
televisions, a stereo, a refrigerator, etc. (Figs. 1-2; col. 7, ll. 9-17; col. 8, ll.
12-15). The remote controller is capable of receiving a small database from
each appliance to control that appliance (Fig. 7; col. 7, l. 62-col. 8, l. 9). The
remote controller contains a display 35 for displaying images (col. 1, ll. 6-
11; col. 8, ll. 10-22; Figs. 6, 7), such as virtual keys and icons associated
with a particular appliance (col. 8, ll. 15-17; col. 12, ll. 41-45; Fig. 7).
3. Mameda teaches a remote controller 103’ having a tablet-
attached display 303, e.g., an LCD display unit (¶¶ [0090]-[0092] Fig. 12).
Mameda displays a still picture received from a broadcast receiver apparatus
102’ on the display and an image of a button is displayed over the still
picture (¶ [0091]; Fig. 12). The displayed image of a button is associated
with video data, and when touched, the video data associated therewith is
displayed on the LCD display (¶¶ [0091], [0092], [0095], [0097]; Fig. 12).
4. In Mameda, a moving picture can be displayed similarly to a
still picture (¶ [0096]; Fig. 12).
5. Allen teaches a remote control for capturing video and audio in
an interactive television system (Abstract; col. 1, ll. 65-67). The remote
control includes a transmitter 210 in electrical communication with a camera
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208 and with a microphone 209 to receive video and audio information
respectively (col. 5, ll. 62-67). The transmitter modulates the video and/or
audio information with a carrier frequency to enable transmission to a set top
box 102 (col. 6, lines 1-4). Transmission can be accomplished using an
analog telephone line, ISDN, DSL, or other technique (col. 7, ll. 37-39).

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that
burden is met, then the burden shifts to the Appellants to overcome the
prima facie case with argument and/or evidence. See Id.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 406.

ANALYSIS
Claims 2-5, 9, 11-15, 17, and 19-21
The Examiner rejected claims 2-5, 9, 11-15, 17, and 19-21 as obvious
over Ben and Mameda (Ans. 3). Appellants chose claim 11 as
representative of this grouping (App. Br. 10, 11, 13).
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The Examiner finds Ben teaches all the limitations of claim 11 except
for a data set comprising a video data stream (Ans. 3, 4). The Examiner
further finds that Mameda teaches this feature (Ans. 4, 5).
Appellants assert neither Ben nor Mameda teaches or suggests “‘a
receiver configured to receive a data set’” (emphasis omitted) or that “‘the
data set comprises a stream of video data’” (emphasis omitted (App. Br. 11).
Further, Appellants assert Mameda does not teach that a remote controller
simultaneously receives and displays video data, i.e., transferring video data
and then displaying the video data (Reply 2).
Appellants have not challenged the Examiner’s assertion that Ben
teaches an adaptive universal remote controller having a receiver for
controlling a wide variety of different appliances, capable of receiving a
small database from each appliance to control that appliance which
corresponds to a data set (FF 2).
As found by the Examiner, Ben teaches a display on the remote
controller that displays icons associated with particular appliances (FF 2)
and Mameda teaches a remote controller having a display that displays a still
picture or a moving picture on the screen (FF 3, 4). Thus, modifying Ben’s
remote control device to display moving pictures in addition to still pictures
is nothing more than using known display features for performing known
functions and as such is obvious. KSR, 550 U.S. at 418. Providing video as
taught by Mameda (FF 3, 4) on Ben’s display provides a more robust user
interface. Therefore, it would be obvious to a skilled artisan to modify the
remote controller of Ben to include the reception of video data, both still and
moving, as taught by Mameda, to increase the functionality of Ben’s device
(Ans. 5, 17).
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Additionally, Appellants’ argue, for the first time in the Reply Brief,
that the remote control unit simultaneously receives and displays video data
(Reply 2). This argument is not considered because it was not timely
presented.3 Furthermore, this argument has no merit as claim 11 merely
requires that a presentation device be operable to present information
derived from the data set.
Thus, Appellants have not established the Examiner erred in rejecting
claim 11, and claims 2-5, 9, 11-15, 17, and 19-21, that fall therewith.
Claims 6-8, 10, 16, and 18
The Examiner rejected claims 6-8, 10, 16, and 18 as obvious over the
combination of Ben, Mameda and Allen (Ans. 12-14, 17-18).
With respect to claim 10, the Examiner finds that the remote control
described in Allen corresponds to the limitation of claim 10 that “the
transmitter transmits the signal in response to the sensor receiving the verbal
command” (Ans. 13). The Examiner states it would be obvious to an
ordinarily skilled artisan to modify Ben and Allen to include a microphone
as taught by Allen to facilitate user control (Ans. 18; Allen, col. 11, ll, 25-
27). Appellants counter that none of the references teach “‘a sensor
configured to receive a verbal command issued by a user, wherein the
transmitter transmits the signal in response to the sensor receiving the verbal
command’” (App. Br. 12) (emphasis omitted).
While Allen does recite a transmitter in electrical communication with
a microphone to receive, modulate, and transmit audio information from the
microphone (FF 4), this is not the same as transmitting a signal in response
to a sensor receiving a verbal command. Thus, Allen does not teach or

3 See 37 CFR § 41.33(e).
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suggest transmitting a signal in response to receiving a verbal command as
claimed.
With respect to claims 6-8, 16, and 18, the Examiner states it would
have been obvious to modify Ben and Allen to include the camera and
microphone taught by Allen to have a video/audio conference (Ans. 13).
Appellants acknowledge that Allen teaches remote video and audio
information capture and communication (App. Br. 12; FF 5). Appellants,
however, provide no further arguments rebutting the Examiner’s assertion
with respect to Allen (App. Br. 13).4 Thus, Appellants have failed to
establish error in the Examiner’s rejection of claims 6-8, 16 and 18.
CONCLUSION
Appellants did not establish the Examiner erred in finding that Ben
and Mameda teach a remote control unit having a receiver receiving a data
set that comprises a stream of video data.
Appellants did establish the Examiner erred in finding that the
combination of Ben, Mameda, and Allen teaches a remote control unit
having a transmitter that transmits a signal in response to a sensor receiving
a verbal command.

DECISION
The Examiner’s decision rejecting claims 2-9 and 11-21 is affirmed.
The Examiner’s decision rejecting claim 10 is reversed.

4 Appellants state that claims 6-8, 16, and 18 are “allowable for at least the
same reasons as delineated in Section VII(A)(1).” (App. Br. 13). This
appears to be a typographical error, and is treated as such. That is, it is
assumed Appellants meant Section VII(B)(1) since that section addresses
Ben and Allen.
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Application 11/154,112

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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)(1)(iv).

AFFIRMED-IN-PART

KIS

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