Ex Parte Pearson

Patent Trial and Appeal Board

Oct 31, 2018

13489759 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/489,759
131270 7590
BELZER PC
ATTN: John G. Posa
2905 Bull Street
Savannah, GA 31405
06/06/2012
11/01/2018
FIRST NAMED INVENTOR
David Pearson
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.
EPE-11402 6141
EXAMINER
HAMMONDS, MARCUS C
ART UNIT PAPER NUMBER
2645
MAIL DATE DELIVERY MODE
11/01/2018 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 DAVID PEARSON
Appeal2017-000777
Application 13/489,759 1
Technology Center 2600
Before JEREMY J. CURCURI, KARA L. SZPONDOWSKI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-3 and 5-26, which are all the claims pending in this
application. An oral hearing was held October 16, 2018, and a transcript of
that hearing will be made of record in due course. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is TMW Enterprises, Inc.
App. Br. 1.
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Application 13/489,759
STATEMENT OF THE CASE
Introduction
Appellant's application relates to using a portable electronic device,
such as a smartphone, to program, tune, or control another electronic device.
Spec. ,r 1. Claim 1 illustrates the appealed subject matter and reads as
follows:
1. A method of controlling an electronic device having a
microphone, a controller, and .electronic circuitry to be
controlled with a portable device having a touch-screen display
and an audio output, the method comprising the steps of:
providing the portable electronic device with an
application software program (app) enabling the touch-screen
display of the portable electronic device to function as a control
panel for the electronic device;
generating a pattern of acoustic control tones
corresponding to a command input by a user through the control
panel;
transmitting the pattern of acoustic control tones from the
portable device to the electronic device using the audio output of
the portable device and the microphone of the electronic device;
interpreting the pattern of acoustic control tones in the
electronic device using the controller; and
controlling the electronic circuitry in the electronic device
in accordance with the pattern of acoustic control tones.
The Examiner's Rejections
Claims 1-3, 5, 6, 9, 10, and 12-26 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Kim (US 2007/0265038 Al; Nov. 15, 2007) and
Heikkinen et al. (US 2012/0015618 Al; Jan. 19, 2012). Final Act. 3-12.
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Application 13/489,759
Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable over
Kim, Heikkinen, and Moore et al. (US 2013/0059526 Al; Mar. 7, 2013).
Final Act. 12-13.
Claims 8 and 11 stand rejected under 35 U.S.C. § 103 as unpatentable
over Kim, Heikkinen, and Dua (US 2006/0258289 Al; Nov. 16, 2006).
Final Act. 13-14.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner has erred. We disagree with Appellant's
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Final Action from which this
appeal is taken; and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellant's Appeal Brief. We concur
with the Examiner's conclusions. We highlight the following additional
points.
Independent claim 1
Appellant argues the Examiner erred in rejecting claim 1 as
unpatentable over Kim and Heikkinen. See App. Br. 2-5; Reply Br. 1-3. In
particular, Appellant argues Kim and Heikkinen do not teach or suggest
"enabling the touch-screen display of the portable electronic device to
function as a control panel" and "generating a pattern of acoustic control
tones corresponding to a command input by a user through the control
panel." App. Br. 3-5.
Appellant argues Kim teaches a mobile terminal that includes a
display with a key inputting unit, not a touch-screen display. Id. at 3.
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Appellant argues Kim does not teach using the key inputting unit as a
control panel to receive command inputs to generate patterns of acoustic
control tones corresponding to the inputs. Id. at 3. Appellant's argument is
not persuasive because it focuses on the teachings of Kim without
considering the teachings of Heikkinen. One cannot show nonobviousness
by attacking references individually when the rejection is based on a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); see also In re Keller, 642 F.2d 413,425 (CCPA 1981). Indeed,
Appellant acknowledges the Examiner concedes Kim does not teach the
"enabling" limitation, relying instead on Heikkinen. App. Br. 3-4.
As to Heikkinen, Appellant argues Heikkinen teaches a mobile device
with a touch screen that is used to control a headset, but the interface
between the devices is Bluetooth, not sound, and the control functions are
unrelated to call notification. Id. at 4. This argument is also unpersuasive
because it focuses on the teachings of Heikkinen without considering the
combined teachings of the references.
Appellant argues an ordinarily skilled artisan would not combine
Heikkinen's control functions with Kim because Kim teaches away from the
combination by disclosing automatically generated acoustic control tones,
rather than control tones generated in response to user input such as in
Heikkinen. Id. at 4; Reply Br. 1-3. Appellant argues Kim would not be
improved by Heikkinen's elaborate set of headset control functions because
Kim is unrelated to headsets. App. Br. 4-5.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Heikkinen teaches a mobile apparatus 100 with a touch
screen display 102 that shows a user interface application 108 for controlling
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a wireless headset 120. Ans. 3 (citing Heikkinen Fig. 1, ,r,r 34, 35, 40--45).
The mobile apparatus generates control signals that are transmitted via
Bluetooth to the wireless headset. Id. The Examiner finds, and we agree,
Kim teaches a mobile terminal 420 receives an incoming call signal and
transmits a sound wave 442 to a notifying apparatus 430 using a speaker.
Ans. 3 (citing Kim Fig. 4, ,r,r 53, 54, 63-65). The Examiner reasons, and we
agree, an ordinarily skilled artisan would have combined Kim and Heikkinen
to obtain a "mobile apparatus receiving user input commands via the user
interface application and transmitting the user input commands to the
wireless accessory via Bluetooth, which as shown by Kim is reasonabl[y]
substituted by sound wave transmission." Ans. 5; see also Kim ,r 44 ("The
incoming call notifying apparatus 130 has, for example, a ring shape, a
watch shape and an accessory shape, or attaches thereon."). Put another
way, Kim's notifying apparatus may have an accessory shape, such as a
headset; given this disclosure of Kim, Heikkinen's teachings are readily
applicable to Kim by a skilled artisan.
Appellant argues that Kim "teaches away" from such a combination
because Kim teaches automatically generating acoustic control tones in
response to an incoming call. See App. Br. 4, Reply Br. 1-2. But teaching
an alternative method does not teach away from the use of a claimed
method. See In re Dunn, 349 F.2d 433,438 (CCPA 1965). Instead,
teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one
alternative does not constitute teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
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the solution claimed."). Appellant has not identified, nor have we found,
any teaching in Kim that criticizes, discredits, or otherwise discourages
generating an acoustic control tone in response to user input as claimed ( and
as taught by Heikkinen). Thus, we are not persuaded by Appellant's
teaching away argument.
We are also not persuaded by Appellant's argument that an ordinarily
skilled artisan would not have been motivated to combine Kim and
Heikkinen because "Kim's system is limited to incoming call notification
such that the 'potential uses' of Heikkinen do not apply." App. Br. 5. "The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference ....
Rather, the test is what the combined teachings of those references would
have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d
413,425 (CCPA 1981) (citations omitted); see also, In re Nievelt, 482 F.2d
965, 968 (CCPA 1973) ("Combining the teachings of references does not
involve an ability to combine their specific structures."). Indeed, "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." KSR Int 'l
Co. v. Teleflex, Inc., 550 U.S. 398,417 (2007) (quoting Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 283 (1976)). The operative question is "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. As explained above, the Examiner finds
an ordinarily skilled artisan would have used the elements of Kim and
Heikkinen according to their established functions to achieve a predictable
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result. Appellant's arguments have not persuasively identified error in these
findings.
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 1 as unpatentable over Kim and Heikkinen. We, therefore,
sustain the rejection of independent claim 1. We also sustain the rejection of
independent claim 18, for which Appellant provides no separate argument.
See App. Br. 5. We also sustain the rejection of dependent claims 2, 3, 5, 6,
9, 10, 12-17, and 19-26, for which Appellant provides no separate
argument. See id.
Claim 7
Claim 7 recites "[t]he method of claim 1, wherein the app is operative
to deliver targeting advertising to the electronic device." Appellant argues
the Examiner erred in rejecting claim 7 as unpatentable under 35 U.S.C.
§ 103(a) over Kim, Heikkinen, and Moore. See App. Br. 5-6, Reply Br. 4.
In particular, Appellant argues Kim and Heikkinen do not relate to electronic
media dissemination, and Moore does not relate to device control using
acoustic patterns based on user commands. App. Br. 6. Appellant argues
Moore is, therefore, non-analogous art, because it is directed to providing
electronic media on clothing. Reply Br. 4.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Moore teaches a mobile apparatus 103 that sends
targeted advertisements to a wireless accessory, wearable device 117, using
a Bluetooth communications link. Ans. 6 (citing Moore Fig. 6, ,r,r 26, 39,
40). The Examiner finds an ordinarily skilled artisan would have been
motivated to add Moore's advertising teachings to Kim and Heikkinen's
combined mobile device and wireless accessory system to provide an
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effective approach to disseminate electronic media. Id. Appellant's
argument that Moore, Kim, and Heikkinen are non-analogous art is
unpersuasive because all three relate to transmitting control signals from
mobile devices to accessory devices. See Moore Abstract ( signals carrying
targeted advertisements sent to wearable devices); Heikkinen ,r 26 (signals to
control accessories including wireless headsets); Kim ,r 54 ( signals
indicating an incoming call sent to notifying apparatuses including watches,
rings, wrist bands, and other accessories); Spec. ,r,r 4--5. Thus, we are not
persuaded the Examiner erred in rejecting claim 7. We, therefore, sustain
the rejection of claim 7 as unpatentable over Kim, Heikkinen, and Moore.
Claim 8
Claim 8 recites "[t]he method of claim 1, wherein the app is operative
to deliver pay-per-view or pay-to-listen content the electronic device."
Appellant argues the Examiner erred in rejecting claim 8 as unpatentable
under 35 U.S.C. § 103(a) over Kim, Heikkinen, and Dua. See App. Br. 6,
Reply Br. 4-5. In particular, Appellant argues the Examiner's stated
rationale for combining Dua with Kim and Heikkinen ("taking advantage of
the rich feature set of mobile devices and allowing a mobile device to
connect automatically with an accessory device to transmit media assets,"
(Ans. 8)) is flawed because Kim and Heikkinen already connect
automatically with an accessory device to carry out their respective
functions. Reply Br. 4. Appellant also argues Kim and Heikkinen do not
relate to electronic media dissemination, and Dua does not relate to device
control using acoustic patterns based on user commands. Reply Br. 4-5.
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Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Dua teaches a mobile apparatus 100 that sends paid
media content to a wireless accessory, such as wireless headset 152, using a
Bluetooth communications link. Ans. 7 ( citing Dua Fig. 1, Fig. 8B, ,r,r 62,
74, 168, 172, 224). The Examiner finds an ordinarily skilled artisan would
have been motivated to add Dua's paid media dissemination to the Kim and
Heikkinen's combined mobile device and wireless accessory system to allow
the mobile device to connect automatically with an accessory device to
transmit media assets. Ans. 7-8. Appellant's argument that Dua's teaching
is redundant (see Reply Br. 4-5) is unpersuasive because even if Kim and
Heikkinen teach automatically connecting a mobile device with a wireless
accessory as argued, Dua's teachings would allow the additional feature of
transmitting media assets over this automatic connection. Appellant's
argument that Dua is unrelated to device control using acoustic patterns
based on user commands is also unpersuasive because Dua, like Kim and
Heikkinen, is related to transmitting control signals from mobile devices to
accessory devices. Thus, we are not persuaded the Examiner erred in
rejecting claim 8.
We, therefore, sustain the rejection of claim 8 as unpatentable over
Kim, Heikkinen, and Dua. We also sustain the rejection of claim 11, for
which Appellants provide no separate argument. See App. Br. 6.
DECISION
We affirm the decision of the Examiner rejecting claims 1-3 and
5-26.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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