Ex Parte Martch et al

Patent Trial and Appeal Board

Apr 27, 2017

13928305 (P.T.A.B. Apr. 27, 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.
13/928,305 06/26/2013 Henry Gregg Martch P2013-06-01 (290110.584) 2644
70336 7590 04/27/2017
Seed IP Law Group LLP/EchoStar (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
CHOI, DAVID E
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
04/27/2017 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 HENRY GREGG MARTCH and LUKE VANDUYN
Appeal 2017-002201
Application 13/928,3057
Technology Center 2100
Before JASON MORGAN, HUNG H. BUI, and ADAM J. PYONIN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—20, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.1 2
1 According to Appellants, EchoStar Technologies L.L.C. is the real party in
interest. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed May 10, 2016
(“App. Br.”); Reply Brief filed December 1, 2016 (“Reply Br.”); Examiner’s
Answer mailed October 5, 2016 (“Ans.”); Final Office Action mailed
November 10, 2015 (“Final Act.”); and original Specification filed June 26,
2013 (“Spec.”).
Appeal 2017-002201
Application 13/928,305
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention relates to “[a] remote control system” shown in
Figure 1, including “a plurality of buttons arranged in a grid pattern that
correspond to user selectable options displayed on a display screen arranged
in the same grid pattern.” Abstract.
Appellants’ Figure 1 shows remote control 12 provided with buttons
20 arranged in grid pattern 22, as reproduced below with additional
markings, in red, for illustration:
Appellants’ Figure 1 shows remote control 12 provided with buttons 20
arranged in grid pattern 22.
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Application 13/928,305
Claims 1,6, 10, 14, and 18 are independent. Claim 1 is illustrative of
Appellants’ invention, as reproduced below with a disputed limitation in
italics'.
1. A video device, comprising:
a controller coupleable to a display screen;
a memory coupled to the controller;
a user interface stored on the memory and configured to be output to
the display screen;
a menu stored on the memory and displayable on the user interface, the
menu including a plurality of user selectable options arranged in a grid pattern;
and
a receiver coupled to the controller and configured to receive wireless
signals from a remote control, the remote control including a plurality of
buttons configured in a same grid pattern as the plurality of user selectable
options and each button of the plurality of buttons corresponding to one of the
user selectable options, wherein the received wireless signals instruct the
controller to select the corresponding one user selectable option in response
to a corresponding button of the plurality of buttons being pressed.
App. Br. 24 (Claims App’x).
Examiner’s Rejections and References
(1) Claims 1—5 and 10-18 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Segal et al. (US 6,765,557 Bl; issued July 20, 2004;
“Segal”). Final Act. 2-8.
(2) Claims 6, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Segal and Vassigh et al. (US 2008/0126975 Al;
published May 29, 2008; “Vassigh”). Final Act. 8—10.
(3) Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Segal, Vassigh, and Grier (US 2012/0127375 Al;
published May 24, 2012). Final Act. 10-11.
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Appeal 2017-002201
Application 13/928,305
(4) Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Segal and Grier. Final Act. 11—12.
Issue on Appeal
Based on Appellants’ arguments, the dispositive issue on appeal is
whether Segal discloses the disputed limitation:
the remote control including a plurality of buttons configured in
a same grid pattern as the plurality of user selectable options and
each button of the plurality of buttons corresponding to one of
the user selectable options, wherein the received wireless signals
instruct the controller to select the corresponding one user
selectable option in response to a corresponding button of the
plurality of buttons being pressed[,]
as recited in independent claim 1 and similarly recited in claims 6, 10, 14,
and 18. App. Br. 13—21; see also Reply Br. 2—10.
ANALYSIS
35 U.S.C. § 102(b): Claims 1—5 and 10—18
In support of the anticipation rejection of independent claim 1, the
Examiner finds Segal discloses a video device equipped with all the claimed
components, including a:
remote control including a plurality of buttons configured in a
same grid pattern as the plurality of user selectable options and
each button of the plurality of buttons corresponding to one of
the user selectable options, wherein the received wireless signals
instruct the controller to select the corresponding one user
selectable option in response to a corresponding button of the
plurality of buttons being pressed
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Application 13/928,305
in the form of a touch pad 12 on a remote control 13. App. Br. 24 (Claims
App’x); see also Final Act. 2^4 (citing Segal, Figures 1, 5A, 7A—7B, and
19).
Segal’s Figures 1 and 4 show a remote control system 10 including a
touch pad 12 on a remote control 13, a controller 14, and a display screen 16
on a video device 17, as reproduced below:
FiG.1
Segal’s Figure 1 shows a remote control system 10 including a touch pad 12
on a remote control 13, a controller 14, and a display screen 16 on a video
device 17, while Segal’s Figure 4 shows a remote control 13 having a touch
pad 12 and separate buttons 24a—24h.
According to Segal, “touch pad 12 is operable with display screen 16
such that the area of the touch pad [12] is absolutely mapped to the area of
the display screen [shown in Figures 7A—7B].” Segal 4:28—30. “This
allows the operator the manipulate touch pad 12 to select control function
entries of the panels and menus display on display screen 16 while
remaining visually focused on the display screen [16].” Segal 4:39-44.
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Appeal 2017-002201
Application 13/928,305
Segal’s Figures 7A—7B show (1) display screen 16 of video device 17
displaying an electronic program guide (EPG) and (2) virtual control areas
of touch pad 12 corresponding to grid areas of the EPG displayed on display
screen 16, as reproduced below:
r 'V” " “" ’I " )
I \ V/V
i
St
■ i
Segal’s Figure 7A shows display screen 16 of video device 17 displaying an
electronic program guide (EPG), while Figure 7B show virtual control areas
of touch pad 12 corresponding to grid areas of the EPG displayed on display
screen 16.
Appellants acknowledge Segal teaches a touchpad 12 on a remote
control 13, shown in Figures 1 and 4, and that touchpad 12 is divided into
grids in a grid like pattern. App. Br. 14—15. However, Appellants contend
Segal’s touchpad is not and cannot be considered the same as “buttons” and,
as such, does not include “a plurality of buttons configured in a same grid
pattern as the plurality of user selectable options and each button of the
plurality of buttons corresponding to one of the user selectable options” in
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Application 13/928,305
the manner recited in claim 1. App. Br. 15. In addition, Appellants argue
(1) the distinction between Segal’s touch pad and Appellants’ claimed
“buttons” and (2) “Segal even distinguishes between the touchpad and the
buttons, which are two different things physically and perform different
functions,” i.e.,
[t]he touchpad of Segal is used to highlight the item on the
display screen and then a button is pressed to select the item[,]
whereas:
[t]he buttons of Segal, including the “Select” button 24a shown
in Figure 4 that is pressed to select the highlighted item on the
screen are not “configured in a same grid pattern as the plurality
of user selectable options and each button of the plurality of
buttons corresponding to one of the user selectable options” as
required by claim 1.
App. Br. 15 (citing Segal 6:58—7:5, Fig. 4)
In response, the Examiner takes the position that Segal’s touch pad
12, shown in Figure 7B, can be considered as “software buttons.” Ans. 4.
According to the Examiner,
software buttons are well known in the art and they emulate and
preform the same functionality as a hardware or physical button
but is ran through software. However, a software button is still
a button and without clarity as to the constitution of the button.
The concept of a button being a software button would have
inherent and well known to anyone of ordinary skill at the time
of the invention as software buttons are used virtually
everywhere - whether they be touchscreens or mouse/keyboard
based operating systems. As such, the Examiner believes that
the claimed limitations have been disclosed by Segal.
Ans. 4—5.
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Application 13/928,305
We are persuaded by Appellants’ arguments and disagree with the
Examiner’s position. Anticipation under 35 U.S.C. § 102 is a question of
fact. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described in a single prior art reference.
Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631
(Fed. Cir. 1987). During examination, claim terms (not prior art term) are
given their broadest reasonable interpretation (BRI) consistent with the
specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). However, “the proper BRI construction is not just the broadest
construction, but rather the broadest reasonable construction in light of the
specification.” In re Man Mach. Interface Techs. LLC, No. 2015-1562, 2016
WF 1567181, at *3 (Fed. Cir. 2016) (citing Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)) (“A construction that is
‘unreasonably broad’ and which does not ‘reasonably reflect the plain
language and disclosure’ will not pass muster.”).
Contrary to the Examiner’s position, the term “remote control
including a plurality of buttons configured in a same grid pattern” is
described by Appellants’ Specification as physical buttons 20 arranged in a
grid pattern 22 on the remote control 12, shown in Figures 1, 4, and 7. App.
Br. 24 (Claims App’x); see also Spec. 4:5—19. Each of these buttons 20 is
viewed for corresponding user selectable option 32 highlight on display
screen 16 and depressed (selected) by a user via a finger. Spec. 7:19—8:22,
9:5—14. When viewed in light of Appellants’ Specification, the claimed
“buttons” cannot be broadly but reasonably interpreted to encompass Segal’s
touch pad 12 to the exclusion of Segal’s disclosure of separate “buttons”
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24a—24h, shown in Segal’s Figures 4 and 19. This is because Segal’s touch
pad is not “software buttons” or “hardware buttons.” As recognized by
Appellants, Segal’s touch pad does not have any buttons, whether hardware
or software, or any graphical representations of any buttons. Reply Br. 2—3.
Rather, Segal’s touch pad and Appellants’ claimed “buttons” are “two
different things physically and perform different functions,” that is, “the
touchpad 12 of Segal is used to highlight the item on the display screen”
whereas “the button (‘button 24a’) on the remote (which is not part of the
touch pad), is pressed to select the item [on display screen 16].” Reply Br. 4
(citing Segal col. 4:57—61, 6:58—col. 7:5, Figure 4; see also Segal Figure 19.
As such, we agree with Appellants that Segal does not teach the
disputed limitation:
the remote control including a plurality of buttons configured in
a same grid pattern as the plurality of user selectable options
and each button of the plurality of buttons corresponding to one
of the user selectable options, wherein the received wireless
signals instruct the controller to select the corresponding one
user selectable option in response to a corresponding button of
the plurality of buttons being pressed[,]
as recited in independent claim 1. App. Br. 14—16. Because Segal does not
teach the above limitations of claim 1, we decline to sustain the Examiner’s
anticipation rejection of claim 1 and its dependent claims 2—5.
Independent claim 10 recites similar limitations of claim 1, and
further requires the “buttons ... to be dual function . . . provide other static
functions, including at least one of: play, pause, stop, rewind, fast forward,
select, up, down, left, right, search, guide, DVR, clear, menu, and back.”
Similarly, independent claims 14 and 18 recite similar limitations of claim 1,
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Application 13/928,305
i.e., “a remote control having a plurality of buttons arranged in a same grid
pattern as the plurality of user selectable options.”
For the same reasons discussed, we also decline to sustain the
Examiner’s anticipation rejection of independent claims 10, 14, and 18 and
their respective dependent claims 11—13, 15—17, and 19—20.
35 U.S.C. § 103(a): Claims 6—9
Independent claim 6 is also directed to a remote control and recites, in
part: “a plurality of buttons arranged in grid pattern, wherein each button of
the plurality of buttons corresponds to one of a plurality of user selectable
options displayed by a video device in a same grid pattern as the plurality of
buttons.”
Appellants reiterate the same arguments presented against claim 1,
that is, Segal does not teach or suggest “a remote control comprising:
plurality of buttons arranged in grid pattern, wherein each button of the
plurality of buttons corresponds to one of a plurality of user selectable
options displayed by a video device in a same grid pattern as the plurality of
buttons” as recited in claim 6. App. Br. 22—23.
For the same reasons discussed, we also decline to sustain the
Examiner’s obviousness rejection of claims 6—9.
CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting claims 1—20 under 35 U.S.C. § 102(b) and
§ 103(a).
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Application 13/928,305
DECISION
As such, we REVERSE the Examiner’s final rejection of claims 1—20
under 35 U.S.C. § 102(b) and § 103(a).
REVERSED
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