Ex Parte Johnson et al

Patent Trial and Appeal Board

Jun 11, 2018

14165922 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/165,922 01/28/2014
79804 7590 06/13/2018
Duncan Galloway Egan Greenwald, PLLC
9750 Ormsby Station Road, Suite 210
Louisville, KY 40223
FIRST NAMED INVENTOR
Daniel Charles Johnson
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.
113083.0lUSl 2652
EXAMINER
WU,ZHENY
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
06/13/2018 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):
kduncan@dgeglaw.com
carnold@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL CHARLES JOHNSON, MICHAEL CAL VIN McCOY,
and DANIEL PATRICK BOWEN
Appeal2018-000312
Application 14/165,922
Technology Center 2600
Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
SCOTT E. BAIN, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, and 6-48, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2018-000312
Application 14/165,922
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to a radio
frequency device adapted to provide key less entry capability to multiple
makes and models of vehicles by replicating both the RF frequency and data
transmitted by a manufacturer's original equipment keyless entry remote
device. See Spec. ,r 2. Claim 1 is exemplary:
1. A method for selectively programming a radio frequency
("RF") remote access device, the method comprising:
a. selecting by direct user manipulation of one or more
user interface elements on the remote access device a device
configuration profile from a plurality of device configuration
profiles preloaded onto the RF remote access device, the device
configuration profile comprising a plurality of vendor specific
properties including two or more of:
transmit and/ or receive frequencies, modulation schemes,
binary encoding algorithms, data encoding techniques, packet
payload templates, and algorithms configured to generate
rolling codes to replicate the function of an original equipment
manufacturer ("OEM") keyless entry remote device;
b. storing in a memory of the remote access device the
selected device configuration profile, the storing being based on
user manipulation of the one or more user interface elements;
and
c. automatically configuring the remote access device
based on a processor of the remote access device accessing
from the memory the stored selected device configuration
profile, whereby the remote access device is configured to:
i. generate an RF signal based on the selected device
configuration profile; and
ii. transmit the RF signal to an end device associated with
the selected device configuration profile to cause the end device
to perform a predefined operation.
References and Rejections
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Appeal2018-000312
Application 14/165,922
Claims 1, 6, 7, 10-12, 18, 20, 23-25, 29-31, 38, 40, and 44--46 are
rejected under pre-AIA 35 U.S.C. § I02(a) as being anticipated by Reeves
(US 2012/0124245 Al; May 17, 2012).
Claims 2, 16, 17, 21, 36, 37, and 41--43 are rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Reeves and Lopez (US
2009/0278656Al; Nov. 12, 2009).
Claims 8, 26, and 27 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Reeves and Weber (US 7,057,673 Bl; Jun. 6,
2006).
Claims 9 and 28 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Reeves, Weber, and Lopez.
Claims 13 and 32 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Reeves and Matsubara (US 2005/0I64728Al; Jul.
28, 2005).
Claims 14, 33, 34, and 47 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Reeves and Maeckel (US
2012/0023506Al; Jan. 26, 2012).
Claims 15 and 35 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Reeves and Barnes (US 2005/0038718 Al; Feb. 17,
2005).
Claims 19, 39, and 48 are rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Reeves and White (US 2013/0009722 Al; Jan.
10, 2013).
Claim 22 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Reeves and Shearer (US 2006/0I98523Al; Sep. 7, 2006).
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Appeal2018-000312
Application 14/165,922
ANALYSIS
Anticipation
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in finding the cited portions of Reeves
inherently disclose
a. selecting by direct user manipulation of one or more
user interface elements on the remote access device a device
configuration profile from a plurality of device configuration
profiles preloaded onto the RF remote access device, the device
configuration profile comprising a plurality of vendor specific
properties including two or more of
transmit and/or receive frequencies, modulation schemes,
binary encoding algorithms, data encoding techniques, packet
payload templates, and algorithms configured to generate
rolling codes to replicate the function of an original equipment
manufacturer ("OEM'') keyless entry remote device;
as recited in independent claim 1 ( emphasis added). 1 See App. Br. 10-16;
Reply Br. 1-3.
Inherency is a question of fact that arises both in the context of
anticipation and obviousness rejections. See In re Napier, 55 F.3d 610, 613
(Fed. Cir. 1995). Inherency can only be established when "prior art
necessarily functions in accordance with, or includes, the claimed
limitations." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) ( citations and internal quotation marks omitted).
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Appeal2018-000312
Application 14/165,922
The Examiner cites Reeves' Abstract, paragraphs 9, 20, and 21 for
inherently disclosing the italicized claim limitation. See Final Act. 6; Ans.
3-5. We have reviewed the cited Reeves portions, and they do not expressly
disclose
the device configuration profile comprising a plurality of
vendor specific properties including two or more of:
transmit and/or receive frequencies, modulation schemes,
binary encoding algorithms, data encoding techniques, packet
payload templates, and algorithms configured to generate
rolling codes to replicate the function of an original equipment
manufacturer ("OEM") keyless entry remote device,
as required by claim 1. Further, the Examiner has not adequately explained
why and how the cited Reeves portions inherently disclose the italicized
limitation.
The Examiner also cites Petricoin's paragraph 2 for supporting the
Examiner's inherency theory. See Final Act. 7; Ans. 5---6. Petricoin states:
[0002] Universal remote controls that generate the same type of
signal in response to a depressed button that would have been
generated by a home entertainment device's original remote
control are known. Home automation systems that provide a
central control system for home entertainment devices,
light/climate control, and control of other home electronic
systems are also known. In these systems, a central command
center or user interface (such as a wall-mounted control panel)
is often hard-wired to the devices that a use desires to control.
Petricoin ,r 2.
The above paragraph does not disclose the italicized limitation.
Further, the Examiner has not adequately explain why the above paragraph
shows the cited Reeves portions inherently disclose the italicized limitation.
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Appeal2018-000312
Application 14/165,922
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner's rejection of claim 1. 2
Each of independent claims 20 and 40 recites a claim limitation that is
substantively similar to the disputed limitation of claim 1. See claims 20 and
40. Therefore, for similar reasons, we reverse the Examiner's rejection of
independent claims 20 and 40.
We also reverse the Examiner's anticipation rejection of
corresponding dependent claims 6, 7, 10-12, 18, 23-25, 29-31, 38, and 44--
46.
Obviousness
The Examiner cites additional references for the obviousness
rejections of claims 2, 8, 9, 13-17, 19, 21, 22, 26-28, 32-37, 39, 41--43, 47,
and 48. The Examiner relies on Reeves in the same manner discussed above
in the context of claim 1, and does not rely on the additional references in
any manner that remedies the deficiencies of the underlying anticipation
rejection. See Final Act. 18-29.
Accordingly, we reverse the Examiner's obviousness rejections of
claims 2, 8, 9, 13-17, 19, 21, 22, 26-28, 32-37, 39, 41--43, 47, and 48.
2 We reverse the Examiner's anticipation rejection. In the event of further
prosecution, we leave it to the Examiner to determine whether the italicized
limitation is obvious in light of the teachings and suggestions of Reeves, or
Reeves in combination with other references, under 35 U.S.C.
§ 103.
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Appeal2018-000312
Application 14/165,922
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, and 6-48.
REVERSED
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