Ex Parte Kennedy et al

Patent Trial and Appeal Board

Mar 30, 2017

12347722 (P.T.A.B. Mar. 30, 2017)

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.
12/347,722 12/31/2008 John T. Kennedy P2008-05-0001(290110.490) 1558
70336 7590 03/30/2017
Seed IP Law Group LLP/EchoStar (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
BROWN, RUEBEN M
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
03/30/2017 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 JOHN T. KENNEDY and DAVID A. KUMMER
Appeal 2016-005341
Application 12/347,722
Technology Center 2400
Before CARL W. WHITEHEAD JR, KEVIN C. TROCK and
AMBER L. HAGY, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the Final Rejection of claims 1, 3—6, 8, 10—
13, and 21 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction
under 35 U.S.C. § 6(b) (2012).
We affirm-in-part.
Introduction
The invention is directed to:
[Controlling multiple devices using a virtual device that is
provided by a set-top box. The virtual device is displayed on a
TV and may be controlled by a user through a set-top box remote
control. In one embodiment, the set-top box obtains control data
from multiple devices to be controlled which it uses in order to
display the virtual control device on the [TV]. The set-top box
then receives a selection of an option on the virtual device from
Appeal 2016-005341
Application 12/347,722
a remote control device of the set-top box and sends a command
back to the remote control device, which then relays the
command to one of the multiple devices to control the device
according to the selected option.
Appeal Brief 8.
Illustrative Claim (disputed limitations emphasized)
1. A method, comprising:
obtaining, by a set-top box, control data from multiple
devices of a plurality of devices, the plurality of devices
including a plurality of electronic devices and a plurality of
control devices, the plurality of control devices being
configured to control the plurality of electronic devices,
respectively;
displaying a virtual device on a display that is coupled to
the set-top box, the virtual device including a plurality of
selectable options that are associated with the plurality of
electronic devices;
receiving, by the set-top box, a first command from a set­
top box control device,
the first command selecting an option of the plurality of
selectable options, the selected option being associated with a
target electronic device of the plurality of electronic devices;
determining, by the set-top box, target control data of the
obtained control data, the target control data corresponding to
the target electronic device; and
transmitting, by the set-top box, a second command to
the set-top box control device, the second command including
the target control data.
Rejections on Appeal
Claims 1, 3, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stark (US Patent Application Publication Number
2
Appeal 2016-005341
Application 12/347,722
2006/0253874 Al; published November 9, 2006) and Hicks (US Patent
Application Publication Number 2010/0309389 Al; published December 9,
2010). Final Rej ection 2—6.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stark, Hicks and Spilo (US Patent Number 7,375,673 B2;
issued May 10, 2008). Final Rejection 6—7.
Claims 8, 10-13, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Spilo and Starks. Final Rejection 7—9.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed September 1, 2015), the Reply Brief (filed
April 25, 2016), the Answer (mailed February 24, 2016), and the Final
Rejection (mailed November 3, 2014) for the respective details. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs.
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief, except where
noted.
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Application 12/347,722
Claim 1
Appellants contend that Stark fails to disclose “obtaining, by a set-top
box [STB], control data from multiple devices of a plurality of devices” as
recited in claim 1. Appeal Brief 9. Appellants contend:
Stark teaches a content management (CM) system that displays
user-selectable buttons on a graphical user interface (GUI) to
control the devices by sending commands to the devices when
the buttons are selected in the GUI to control or configure the
devices (see paragraphs 49 and 50 of Stark). However, Stark
does not teach or suggest obtaining control data from the devices,
let alone obtaining such control data by the set-top box of Stark.
Appeal Brief 9.
Stark discloses in paragraph 19 that “at least some of the content
being managed includes television-related programming content, with the
CM system receiving EPG [electronic programming guides] metadata
information and optionally other types of metadata information for the
content (e.g., via interactions with an STB).” Stark also discloses that the
CM system does not present external content to the user; instead, it interacts
with the media center to control the display of content to the user via the TV
and/or one or more other presentation devices. Stark, paragraph 28. The
media center can include a STB. See Stark Figure 3A (the data arrow
between the CM system and the STB flow in both input and output
directions) reproduced below:
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Application 12/347,722
[T]he home environment [shown in Figure 3A] includes an STB
or other media center 350 that is able to distribute content to
content presentation devices, such as after receiving external
content 360a that is available to one or more consumers (not
shown) in the environment (e.g., television related programming
content 360a for presentation on a television 370). Other types
of audio and/or video content could similarly be distributed by
the media center 350 for presentation to the consumer(s) on the
television and/or optional other content presentation devices 380
in the environment, such as stored content or other external
content that is received.
Stark, paragraph 24.
Stark further discloses a device search control to locate available
content presentation devices and a refresh devices control to update the
status of a selected group of devices. Stark, paragraph 51. It is evident that
the communication between the CM/STB/devices is multi-directional
because the devices communicate to the CM through the STB and vice
versa.
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Appeal 2016-005341
Application 12/347,722
Appellants further argue that Hicks fails to cure the deficiencies of
Stark and there is “no reason is apparent why one of skill in the art would be
motivated to modify the Stark system to include completely new
functionality corresponding to these claimed features and techniques it
lacks.” Appeal Brief 9—10. The Examiner finds:
Hicks goes on to disclose that when the television 100 receives a
command from the remote control unit 110 to control one of the
connected plurality of devices, that in response to the received
command the television 100 (via logic 104) identifies the
peripheral device being displayed on the television 100 and
accordingly retrieves the appropriate command code from
memory 106 which will cause the instant peripheral device to
execute the command that it received from the remote control
unit 110; see Para [0017-0018].
Final Rejection 5.
The Examiner further finds that, “ft would have been obvious for one
of ordinary skill in the art at the time the invention was made, to operate
Stark by determining the target control data as taught by Hicks, at least to
ensure that the appropriate control command is received by the appropriate
peripheral device.” Final Rejection 5. We agree with the Examiner’s
findings and sustain the Examiner’s obviousness rejection of claim 1, as well
as dependent claims 3 and 5 not separately argued. The Examiner
supported the legal conclusion of obviousness with a rational foundation
because both Stark and Hicks disclose two way or multi-directional
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Application 12/347,722
communication between a CM and peripheral devices, such as remotes,
STB, etc.1 See Appeal Brief 11.
Claim 4
Appellants argue the Examiner’s obviousness rejection of dependent
claim 4 is erroneous because the Examiner “use[d] the claimed invention to
find the reasons to combine prior art references [Stark/Hicks/Spilo]” but
“that reason must be found in the prior art references or knowledge in the
art.” Appeal Brief 11. The Examiner cites Spilo to disclose multiple
commands sent between a controller 100 (CM) and a remote control unit
110. Final Rejection 6—7. We do not find Appellants’ arguments persuasive
because the employment of multiple commands in an electronic
device/remote configuration is well within purview of one of ordinary skill
in art and therefore we agree with the Examiner’s findings.1 2 We sustain the
Examiner’s obviousness rejection of claim 4.
1 The test for obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art. See In re Kahn, 441
F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588, 591 (Fed.
Cir. 1991), and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner can satisfy this test by showing some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
KSRInt’l. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441
F.3d at 988).
2 “It is well settled that the mere duplication of parts has no patentable
significance unless a new and unexpected result is produced.” See In re
Harza, 274 F.2d 669, 671 (1960).
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Application 12/347,722
Claim 6
Appellants argue the Examiner’s obviousness rejection of claim 6 is
erroneous because “Stark does not teach the TV 370 of Stark located at a
remote location from the set-top box 350 of Stark (see Figure 3A of Stark),
much less the set-top box 350 of Stark providing the virtual device.” Appeal
Brief 12. It is evident that the TV and the set-top box of Stark are separate
devices and therefore they are considered to be at a remote location in the
same manner as the undefined remote location recited in claim 6.3 Further,
Stark discloses, referring to Figure 3A, “the home environment includes an
STB or other media center 350 that is able to distribute content to content
presentation devices, such as after receiving external content 360a that is
available to one or more consumers (not shown) in the environment (e.g.,
television related programming content 360a for presentation on a television
370).” Stark, paragraph 24. Stark’s television is more than capable of
displaying the virtual device provided by the set-top box. We sustain the
Examiner’s obviousness rejection of claim 6.
Claims 8, 10-13 and 21
Appellants argue “the Examiner completely ignores the limitation of
claim 8, ‘receiving, by the set-top box, a first command from a set-top box
control device, the first command selecting an option of the plurality of
selectable options, the selected option being associated with a target
electronic device of the plurality of electronic devices’.” Appeal Brief 12.
We find Appellants argument persuasive. See Final Rejection 7—8; Answer
3 “[T]he PTO gives claims their ‘broadest reasonable interpretation’” In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000)).
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7—8. Consequently we are constrained by the record, we reverse the
Examiner’s obviousness rejection of independent claim 8, as well as
dependent claims 10—13 and 21.
DECISION
The Examiner’s obviousness rejections of claims 1 and 3—6 are
affirmed.
The Examiner’s obviousness rejection of claims 8, 10—13 and 21 is
reversed.
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). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED-IN-PART
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