Ex Parte Patel

Patent Trial and Appeal Board

Mar 10, 2014

12168701 (P.T.A.B. Mar. 10, 2014)

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.
12/168,701 07/07/2008 Harish N. Patel PD-200225A 7965
20991 7590 03/10/2014
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
MARANDI, JAMES R
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
03/10/2014 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 HARISH N. PATEL
____________

Appeal 2011-009706
Application 12/168,701
Technology Center 2400
____________

Before ROBERT E. NAPPI, CAROLYN D. THOMAS, and
JEFFREY S. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009706
Application 12/168,701

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-18, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
l. A system for optimizing the bandwidth on an audio/video network
having a master box, comprising:

at least one slave client for receiving network services via the master
box;

a television in communication with the slave client; and

a smart remote control for sending a first signal to the television to set
the television in an on or off condition and a second signal unique from the
first signal to said slave client informing the slave client that the television
has been turned to the on condition or the off condition in response to a user
input.

Prior Art
Diehl US 5,659,653 Aug. 19, 1997
Dresti US 6,642,852 B2 Nov. 4, 2003
Sparrell US 2004/0268406 A1 Dec. 30, 2004

Examiner’s Rejections
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sparrell, Dresti, and Diehl.

Appeal 2011-009706
Application 12/168,701

3
ANALYSIS
Section 103 rejection of claims 1, 2, 4, 6, 7- 9, 10, 12, 13, 14, 16, and
18
Appellant contends the combination of Sparrell, Dresti, and Diehl
does not teach “a smart remote control for sending . . . a second signal
unique from the first signal to said slave client informing the slave client that
the television has been turned to the on condition or the off condition in
response to a user input” as recited in claim 1. App. Br. 7-16.
Dresti teaches a remote control that obtains power status information
from equipment, such as a television or VCR, which indicates whether the
equipment is on or off. Fig. 4. The remote control includes a macro key to
turn both a television and a VCR on. After first turning the television on, the
remote control uses the power status information to determine whether the
VCR is off, and if so, toggles the VCR to on. Col. 10, ll. 12-40. Cumulative
to the Examiner’s finding that the combination of Sparrell, Dresti, and Diehl
teaches the smart remote control as claimed, we also observe Dresti alone
teaches a smart remote control for sending a second signal informing the
client the television has been turned on.
Appellant contends “informing” the client to turn on because the
television has been turned on is somehow different than commanding the
client to turn on because the television has been turned on. Reply Br. 5-6.
According to Appellant, page 3 of Appellant’s Specification distinguishes
informing from commanding. Id.. Page 3 of Appellant’s Specification
states “the remote control unit is a smart remote control unit that sends a
signal to the at least one slave client to inform it of the status of the
television.” The cited section of page 3 does not define “informing” to
Appeal 2011-009706
Application 12/168,701

4
exclude commanding. Although commanding does more than informing,
commanding does include “informing” the client to turn on. We find Dresti
teaches “a smart remote control for sending . . . a second signal unique from
the first signal to said slave client informing the slave client that the
television has been turned to the on condition or the off condition in
response to a user input” within the meaning of claim 1.
Appellant contends a second signal as taught by Diehl is not necessary
to turn a VCR of Sparrell on after the television has been turned on, because
paragraph 116 of Sparrell teaches the on signal from the IR remote control is
monitored and used to turn the VCR on. See App. Br. 15-16. Appellant
concludes that Sparrell “teaches away” from sending a separate signal to
inform the VCR. App. Br. 16.
“A reference may be said to teach away when a person of ordinary
skill, upon [examining] the reference, would be discouraged from following
the path set out in the reference, or would be led in a direction divergent
from the path that was taken by the applicant.” Para-Ordnance Mfg., Inc. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Appellant has not identified any
teaching of Sparrell that discourages an artisan to avoid sending a separate
informing signal. Further, paragraph 120 of Sparrell teaches using another
approach for determining when resources associated with a television lack
the ability to sense an IR signal.
Appellant contends the Examiner has not provided an adequate reason
to combine Sparrell, Dresti, and Diehl to teach sending a second signal
unique from the first signal informing the client that the television has been
turned on. Reply Br. 6-16. We find Dresti alone teaches this limitation as
Appeal 2011-009706
Application 12/168,701

5
discussed above. Further, Diehl teaches informing a VCR about a
television’s changed status, to cause the VCR to match the television’s
changed status. Col. 5, ll. 18-32. Dresti teaches the changed status
information includes information to indicate the television has been turned
on. Fig. 4. Sending the changed status information of Dresti to a VCR
using the informing method of Diehl represents the combination of familiar
elements according to known methods that yields the predictable result of
causing the VCR to match the television’s changed status as taught by Diehl.
We adopt the Examiner’s findings of fact in the Final Rejection and
the Examiner’s Answer as our own. We concur with the conclusions
reached by the Examiner in the Examiner’s Answer. We sustain the
rejection of claim 1 under 35 U.S.C. § 103. Appellant does not provide
arguments for separate patentability of claims 2, 4, 6, 7-9, 10, 12, 13, 14, 16,
and 18, which fall with claim 1.

Section 103 rejection of claims 3 and 15
Appellant contends the combination of Sparrell, Dresti, and Diehl
does not teach “whether the slave client turns off or enters a sleep mode
when the television has been turned to the off condition is selectively
predetermined” as recited in claim 3. App. Br. 17-18; Reply Br. 16-19. The
Examiner finds Sparrell teaches a device for determining a television is off,
causing a set top box to enter an off condition or a sleep mode condition.
Ans. 7, 31.
We agree with the Examiner for the reasons given by the Examiner in
the Examiner’s Answer. We sustain the rejection of claim 3 under 35 U.S.C.
Appeal 2011-009706
Application 12/168,701

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§ 103. Appellant does not provide arguments for separate patentability of
claim 15, which falls with claim 3.

Section 103 rejection of claims 5, 11, and 17
Appellant contends the combination of Sparrell, Dresti, and Diehl
does not teach “in response to the second signal, the slave client instructs the
master box to stop transferring network services” as recited in claim 5. App.
Br. 18-21; Reply Br. 19-23. The Examiner finds Sparrell teaches a device to
allocate network resources, including sending a request to a master server to
stop providing services. Ans. 8-9, 32.
We agree with the Examiner for the reasons given by the Examiner in
the Examiner’s Answer. We sustain the rejection of claim 5 under 35 U.S.C.
§ 103. Appellant does not provide arguments for separate patentability of
claims 11 and 17, which fall with claim 5.

DECISION
The rejection of claims 1-18 under 35 U.S.C. § 103(a) as being
unpatentable over Sparrell, Dresti, and Diehl is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
41.50(f).

AFFIRMED

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