Ex Parte McQuaide

Board of Patent Appeals and Interferences

Jun 28, 2012

11004305 (B.P.A.I. Jun. 28, 2012)

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.
11/004,305 12/04/2004 Arnold McQuaide JR. 040303 5170
38516 7590 06/29/2012
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
CHEN, CAI Y
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
06/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ARNOLD McQUAIDE JR.
________________

Appeal 2010-000691
Application 11/004,305
Technology Center 2400
________________

Before GREGORY J. GONSALVES, DAVID M. KOHUT, and
JASON V. MORGAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000691
Application 11/004,305

2
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 – 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter new a new ground of rejection.
Invention
The invention relates to a communications and control system that
includes a set top box communicating streams of signals, including
television signals, telephone signals, and control signals. The system also
includes a remote control device that has video capabilities, wireless control
capabilities, and wireless communications capabilities. See Abstract.
Exemplary Claims
1. A system, comprising:
a set top box communicating three streams of signals
between a remote control device and the set top box, the
streams of signals comprising television signals, telephone
signals, and control signals;
means for switching the remote control between at least
three modes of operation comprising
i) a remote mode of operation that controls
operation of an electronic device,
ii) a monitor mode of operation that displays the
television signals, and
iii) a telephony mode of operation that receives the
telephone signals as a call;
the remote control device comprising a display that
visually presents the television signals;
the remote control device presenting the telephone
signals as the telephone call; and
the remote control device sending the control signal to
remotely control the electronic device.
(Formatting and emphasis added).
Appeal 2010-000691
Application 11/004,305

3
5. A system according to claim 1, further comprising a
processor that inspects a packet header to determine how a
packet is processed and, based on the packet header inspection,
when the packet header identifies the packet as containing
video content, then the processor switches to the monitor mode.
(Emphasis added).
Evidence and Rejections
The Examiner rejects claims 1 – 4, 10 – 13, and 15 – 17 under 35
U.S.C. § 103(a) as being unpatentable over Allen (US 2002/0149705 A1)
and Craven (US 2003/0038849 A1). Ans. 3 – 9.
The Examiner rejects claims 5, 7, and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Allen, Craven, and Hooper (US 5,442,390). Ans. 9
– 10.
The Examiner rejects claims 6, 14, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Allen, Craven, Hooper, and Remillard (US
5,490,208). Ans. 11 – 12.
The Examiner rejects claims 8, 9, and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Allen, Craven, and Wang (US 2004/0152414 A1).
Ans. 12 – 14.
ISSUES
1. Did the Examiner err in finding that the combination of Allen and
Craven teaches or suggests the recitations of claim 1?
2. Did the Examiner err in finding that the combination of Allen,
Craven, and Hooper teaches or suggests the recitations of claim 5?
2. Did the Examiner err in finding that the combination of Allen,
Craven, Hooper, and Remillard teaches or suggests the recitations of claim
6?
Appeal 2010-000691
Application 11/004,305

4

ANALYSIS
Issue 1
The Examiner finds that Allen, which is directed to a hybrid
communicator/remote control, teaches most of the claim recitations,
including a device with a remote mode and telephony mode. See Ans. 3 – 4.
The Examiner further relies on Craven to teach or suggest a third mode, for
displaying television signals, and a means for switching the device among
the three modes taught or suggested by Allen and Craven. See Ans. 4 – 5.
Appellant contends that the Examiner erred, arguing that (1) Allen
merely discloses a “Call” button that only “switches between two modes of
operation (e.g., remote control operation and telephony operation),” App. Br.
8 (emphasis in the original), and (2) Craven only operates as a remote
control, thus its “‘DEVICES’ button only changes what device is remotely
controlled,” id. at 9. Appellant argues that the combination of Allen and
Craven therefore fails to teach or suggest the “means for switching the
remote control between at least three modes of operation,” as recited in
claim 1.
As the Examiner correctly states, Craven’s remote control device
switches modes such that it can control at least three devices, such as
televisions, telephones, computers, etc. See Ans. 15 (citing, e.g., Craven fig.
2 and ¶ [0032]). When the user selects between different electronic devices,
user input buttons can serve differing functions and a matrix display can
provide information directed to each device. See Craven ¶ [0046]. Since the
input buttons serve different functions, depending on the device selected,
Craven teaches a means for switching a remote control among multiple
Appeal 2010-000691
Application 11/004,305

5
modes of operation. In at least one of these modes, the device may be used
for video clip playback. See Craven ¶ [0051]. We therefore agree with the
Examiner that the combination of Allen and Craven teaches or suggests
means for switching the device among three modes of operation, including a
remote mode (found in both Allen and Craven), a monitor mode (taught or
suggested at least by Craven), and a telephony mode (found in Allen).
Furthermore, we are not persuaded by Appellant’s argument that
“[a]ny combination involving Allen and Craven, however, teaches away by
requiring impermissible changes.” App. Br. 10 (emphasis in the original).
Appellant has not identified any principle of operation in the references that
would need to be impermissibly changed to accommodate the proposed
combination. Moreover, we agree with the Examiner that the proposed
combination represents the combination of familiar elements according to
known methods to yield predictable results. See Ans. 16; see also KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“when a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious”) (citation omitted).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejections
of claim 1, and claims 2 – 4, 8 – 13, 15 – 17, and 20, which are not argued
separately. See, e.g., App. Br. 10.
Issue 2
Claim 5, which depends on claim 1, further comprises “a processor
that inspects a packet header to determine how a packet is processed and,
based on the packet header inspection, when the packet header identifies the
Appeal 2010-000691
Application 11/004,305

6
packet as containing video content, then the processor switches to the
monitor mode” (emphasis added).
The Examiner finds that Hooper, which illustrates a packet header that
identifies that a packet contains video content, teaches or suggests this
limitation. See Ans. 10 (citing Hooper fig. 3 and col. 5, l. 60 – col. 6, l. 40).
Appellant argues that “[m]erely describing packetized video data is not
reasonably equivalent to ‘switching to the monitor mode’ when video
content is identified.” App. Br. 12. Hooper teaches packet data of multiple
types (e.g., digital video data or digital audio data). Hooper col. 6, ll. 30 –
32. However, the Examiner’s findings do not show that Hooper teaches or
suggests switching to a different mode based on the result of inspecting a
packet header. Therefore, we agree with Appellant that the Examiner’s
findings do not show that the combination of Allen, Craven, and Hooper
teach or suggest all the limitations of claim 5.
Accordingly, we do not sustain the Examiner’s rejection of claim 5,
and claims 7 and 18, which contain similar recitations, under 35 U.S.C.
§ 103(a) as being unpatentable over Allen, Craven, and Hooper.
Issue 3
Claim 6, which depends on claim 1, recites “wherein means for
switching modes of operation at least one of i) automatically switches from
the monitor mode to the telephone mode when the telephone signals are
received and ii) automatically switches from the remote mode to the
telephone mode when the telephone signals are received.” In rejecting claim
6, the Examiner further relies on Hooper, which teaches differentiating
among different types of data received, see Ans. 10 (citing Hooper fig. 3 and
col. 5, l. 60 – col. 6, l. 40), and Remillard, which teaches a device that
Appeal 2010-000691
Application 11/004,305

7
automatically changes from a first mode to a second mode, see Ans. 11
(citing, e.g., Remillard col. 2, l. 58 – col. 3, l. 27).
Appellant argues that combining Allen and Remillard would
impermissibly change either Allen’s or Remillard’s principle of operation.
App. Br. 13. Specifically, Appellant submits that when a user places a call
using Remillard’s electronic device, audio is presented through a television’s
speaker and image data is presented on the television’s screen. Id. However,
the Examiner properly relies on Remillard for the teaching of automation,
which does not depend on where content is presented. See Ans. 19.
Therefore, combining the relied-upon teachings and suggestions of Allen
and Remillard would not require impermissibly changing a principle of
operation of either reference.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 6, and claims 14, and 19, which are not argued separately.
NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
As discussed supra, we do not sustain the Examiner’s rejection of
claims 5, 7, and 18 under 35 U.S.C. § 103(a) because the Examiner does not
show that the combination of Allen, Craven, and Hooper teaches or suggests
a processor that switches to the monitor mode. However, as the Examiner
correctly points out, Remillard teaches automatically switching among
modes. See Ans. 11 and 19. For example, Remillard teaches that a
“receiving electronic device 20 can be in automatic mode which
automatically switches modes” when a user desires to switch to audio mode.
See Remillard col. 3, ll. 19 – 23. The Examiner has also presented reasons
Appeal 2010-000691
Application 11/004,305

8
with rational underpinnings showing that it would have been obvious to an
artisan of ordinary skill to combine the teachings and suggestions of Allen,
Craven, Hooper, and Remillard. See Ans. 10 – 12 and 17 – 18. Therefore,
the combination of Allen, Craven, Hooper, and Remillard would have taught
or suggested to an artisan of ordinary skill a processor that switches to the
monitor mode (i.e., automatic switching of modes as taught by Remillard)
when a packet header identifies the packet as containing video content (as
taught or suggested by Allen, Craven, and Hooper).
Accordingly, we newly reject claims 5, 7, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Allen, Craven, Hooper, and Remillard.
DECISION
The Examiner’s decision to reject claims 1 – 4, 6 – 17, 19, and 20 is
affirmed.
The Examiner’s decision to reject claims 5, 7, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Allen, Craven, and Hooper is reversed.
Claims 5, 7, and 18 are newly rejected under 35 U.S.C. § 103(a) as
being unpatentable over Allen, Craven, Hooper, and Remillard.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
Appeal 2010-000691
Application 11/004,305

9
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .
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
37 C.F.R. § 41.50(b)

ELD