Ex Parte Sato

Patent Trial and Appeal Board

Sep 17, 2013

11248295 (P.T.A.B. Sep. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HIDEKI SATO
____________________

Appeal 2011-005714
Application 11/248,295
Technology Center 2100
____________________

Before DEBRA K. STEPHENS, ERIC B. CHEN, and HUNG H. BUI,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge HUNG H. BUI.
Concurrence Opinion filed by Administrative Patent Judge HUNG H. BUI.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 23-31 and 47-58.2 We have jurisdiction
under 35 U.S.C. § 6(b). An Oral Hearing was held August 20, 2013, a
transcript of which will be made part of the record.
We AFFIRM.

1 Real Party in Interest is SONY Corp.
2 Claims 1-22 and 32-46 have been cancelled and are not on appeal.
Appeal 2011-005714
Application 11/248,295

2

STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to a remote control system, shown in
FIG. 1, for a user to operate at least two electronic devices (e.g., TVs, DVD
players, AV devices, etc.), via a remote controller. See Appellant’s Spec., p.
5, ll. 20-24, and Abstract.
FIG. 1 is reproduced below:

FIG. 1 shows a remote control system including a remote controller and
multiple electronic devices controlled by the remote controller, via an IP
network.
As shown in FIG. 1, an IP remote controller used by a user to operate
multiple electronic devices, such as device A and device B connected via an
Internet Protocol (IP) network. Id., p. 14, ll. 16-18. The IP remote
controller is configured to transmit an infrared signal corresponding to user
operations, and communicate with the devices A and B, via an IP network
and a wireless access point (AP). Id., p. 14, l. 20 – p. 15, l. 5.

Appeal 2011-005714
Application 11/248,295

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Claims on Appeal
Claims 23, 26, and 29 are the independent claims on appeal. Claim 23
is illustrative of Appellant’s invention, and is reproduced below:
23. A remote control system comprising:
a remote controller operative to transmit an infrared
signal and to communicate via an internet protocol network;
and
at least two devices capable of receiving the infrared
signal and being in selective communication with the remote
controller via the internet protocol network,
wherein, upon directing the infrared signal to a selected
one of the at least two devices and thereafter upon the selected
one of the at least two devices receiving the infrared signal, the
selected one of the at least two devices transmits a response
signal via the internet protocol network to the remote controller
enabling communication only between the remote controller
and the selected one of the at least two devices via the internet
protocol network,
wherein each one of the at least two devices is a
consumer electronic device.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hofmann US 5,809,076 Sep. 15, 1998
Chuah US 6,115,390 Sep. 5, 2000
Hermann US 6,590,504 B1 Jul. 8, 2003
Doering US 2003/0139177 A1 Jul. 24, 2003
Witkow US 2004/0108940 A1 Jun. 10, 2004
Wikipedia, Computer Network,
http://web.archive.org/web/20031219190153/en.wikipedia.org/wiki/
computer_network (“Computer Network”)

Appeal 2011-005714
Application 11/248,295

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Wikipedia, Wireless Networks,
http://web.archive.org/web/20040131122057/en2.wikipedia.org/wiki/
Wireless_network (“Wireless Network”)

ANSI/IEEE Standard 802.11

Examiner’s Rejections
(1) Claims 23, 26 and 29 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hermann, Doering, and Official Notice,3 as
evidenced by Wireless Network. Ans. 3-6.
(2) Claims 24, 27 and 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hermann, Doering, Official Notice, and
ANSI/IEEE Standard 802.11. Ans. 6-7.
(3) Claims 25, 28 and 31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hermann, Doering, Official Notice, ANSI/IEEE
Standard 802.11, and Chuah. Ans. 7-8.
(4) Claims 47-49 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hermann, Doering, Official Notice, and Witkow. Ans. 8-
9.
(5) Claims 50-58 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hermann, Doering, Official Notice and Hofmann. Ans. 8-
9.

3 In the Examiner’s Answer mailed December 14, 2010 (“Ans.”), the
Examiner cites Wikipedia – Wireless Network as evidence of common
knowledge or Office Notice taken to establish that using internet protocol
(i.e., wireless internet protocol network) was well known at the time of the
invention.
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Issues on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the Examiner erred in rejecting claims 23, 26 and 29 under 35
U.S.C. § 103(a) as being unpatentable over Hermann, Doering, and Official
Notice, as evidenced by Wireless Network. In particular, the issue turns on:
whether the combination of Hermann, Doering, and Official Notice teaches
“at least two devices…being in selective communication with the remote
controller via the internet protocol network…enabling communication only
between the remote controller and the selected one of the at least two
devices via the internet protocol network,” as recited in Appellant’s
independent claim 23 and commensurately recited in independent claims 26
and 29.

ANALYSIS4
Independent Claims 23, 26, and 29
Appellant contends that the Examiner erred because Herman does not
teach a radio transceiver in a wireless network but instead, teaches several
control devices networked together on a data bus, via a common radio
receiver (Reply Br. 2). Appellant further contends that the Examiner’s use
of Wikipedia by the Examiner is not proper (Reply Br. 3).
We are not persuaded. We agree with the Examiner’s findings
regarding Hermann and Doering (Ans. 2-6). We further find it was well
known at the time of the invention that two devices could communicate

4 Our decision refers to Appellant’s Appeal Brief filed October 8, 2010
(“App. Br.”); Examiner’s Answer mailed December 14, 2010 (“Ans.”); and
the original Specification filed September 1, 2006 (“Spec.”).
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using the internet protocol wirelessly. Appellants’ arguments regarding
Wikipedia are not persuasive, because Wikipedia is cited merely as evidence
in support of Official Notice. Even if we were not to rely on Wikipedia, we
note wireless networks using internet protocol (i.e., wireless internet
protocol networks) were well known at the time of the invention (see e.g.,
GPRS and Bluetooth).
With respect to dependent claims 24, 25, 27, 28, 30, 31 and 47-58, we
note that the Examiner has made extensive fact findings regarding Hermann
Doering ANS/IEEE Std 802.11, Chuah, Witkow, and Hoffman, respectively
(Ans. 6-9). Appellant has not identified sufficient evidence or argument to
persuade us the Examiner’s findings are in error.
For the reasons set forth above, we sustain the Examiner’s rejection of
independent claims 23, 26, and 29 and their respective dependent claims 24,
25, 27, 28, 30, 31 and 47-58.

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 23-31 and 47-58 under 35 U.S.C. § 103(a).

DECISION
As such, we AFFIRM the Examiner’s final rejections of claims 23-31
and 47-58 under 35 U.S.C. § 103(a).
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
Tj
Appeal 2011-005714
Application 11/248,295

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HUNG H. BUI, Administrative Patent Judge, Concurrence.
I respectfully concur with the majority's opinion with respect to the
Examiner’s final rejections of claims 23-31 and 47-58 under 35 U.S.C. §
103(a). For purposes of completeness, I would also consider Appellant’s
belated arguments, including the application of Wikipedia as prior art
against Appellant’s claimed invention in this case.
First, Wikipedia, as a website, can be an “unreliable source of
information” for purposes of resolving legal disputes, because (1) it is not
peer reviewed; (2) the authors are unknown; and (3) apparently anyone can
contribute to its content. See, e.g., Ex parte Mandy, No. 2011-000015,
Application No. 10/537,714, 2013 Pat. App. LEXIS 3163 (Pat. App. May
23, 2013) (“We give minimal weight to Appellant’s citation of a Wikipedia
entry); Ex parte Bailey, No. 2010-010310, Application No. 11/168,650,
2013 Pat. App. LEXIS 2470 (Pat. App. Apr. 25, 2013) (“Wikipedia has
limited probative value in view of its dubious reliability. Among other
things, Wikipedia is not peer reviewed, the authors are unknown, and
apparently anyone can contribute”); Techradium, Inc. v. Blackboard
Connect Inc., 2009 WL 1152985, at *4 n.5 (E.D. Tex. 2009) (“The Court
agrees with Blackboard that Wikipedia disclaims any validity of the content
listed on its website, and is therefore not a reliable source of technical
information.”); see also Bing Shun Li v. Holder, 2010 WL 4368469 (5th Cir.
2010) (unpublished), at *2 (noting Wikipedia’s unreliability and citing
Badasa v. Mukasey, 540 F.3d 909, 910–11 (8th Cir. 2008)).5 However,

5 But see, U.S. v. Crooker, 608 F.3d 94, 95 n.1 (1st Cir. 2010) (using
Wikipedia as source for definition); Lantz v. C.I.R., 607 F.3d 470, 482-83
(7th Cir. 2010) (Wikipedia as source for longest human lifespan).
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Wikipedia is not automatically disqualified as prior art as a per se rule;
rather, the use of Wikipedia must be evaluated on a case-by-case basis,
particularly in the context of Appellant’s claimed invention and prosecution
history.
This is particularly true, when the content and authenticity of the
information included in Wikipedia are undisputed, as Appellant has not
challenged in this case, such information can speak for itself as long as that
information qualifies as prior art against Appellant’s claimed invention.
As correctly noted by Appellant, in order for the Wikipedia website
articles to qualify as prior art, such articles must be published or publicly
available before Appellant’s priority date of October 14, 2004.
In this case, both the Wikipedia website articles, i.e., Wikipedia-
Wireless Network and Wikipedia-Computer Network, were printed by the
Examiner on April 15, 2010. However, both Wikipedia website articles
were posted or published and archived on December 19, 2003 as evidenced
from a timestamp dated on the same date and included in a web archive copy
of the same articles. That web archive copy of the articles is located at:
http://web.archive.org/web/20031219190153/http://en.wikipedia.org/wiki/C
omputer_network, a print out of which is enclosed for Appellant’s review.
In view of such timestamp and early disclosure, both the Wikipedia
website articles, i.e., Wikipedia-Wireless Network and Wikipedia-Computer
Network, qualify as prior art against Appellant’s claimed invention.
Having established the Wikipedia website articles as prior art against
Appellant’s claimed invention, I would find the Examiner’s factual findings
regarding Hermann, Doering, and Wikipedia (“Wireless Network”) are
supported by a preponderance of evidence. For example, the Examiner finds
Appeal 2011-005714
Application 11/248,295

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Hermann discloses a remote control system, shown in FIG. 2, including a
remote controller 16 used by a user to operate multiple electronic devices 13
connected via a data network 14. Ans. 3-6 (citing Hermann, col. 3, ll. 24-37,
46-55, col. 4, l. 1; and FIG. 2).
FIG. 2 of Hermann is reproduced below:

FIG. 2 shows a remote control system including a remote controller
16 and multiple electronic devices 13 controlled by the remote controller 16,
via a data network 14.

As shown in FIG. 2, the remote controller 16 operates to transmit an
infrared signal and to communicate via a data network 14. The electronic
devices 13 are configured to receive the infrared signal and to communicate
(via radio wave communication) with the remote controller 16 via a radio
transmitter/receiver unit 15 of the data network 14.
Appeal 2011-005714
Application 11/248,295

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The Examiner also finds Doering discloses the specific order of an
infrared signal from the remote controller and a response signal from the
selected electronic device, i.e., upon receipt of the infrared signal, the
selected device transmits a response signal via the data network to the
remote controller so as to enable communication only between the remote
controller and the selected device, via the network. Ans. 6 (citing Doering,
¶¶[0028]-[0029]).
According to the Examiner, the Wikipedia website articles are simply
cited for disclosing that IP is a well-known, principal communications
protocol used in a data network for relaying data across network boundaries
(and essentially established the Internet since the late 1960’s and early
1970’s) such as that, for example, used by Hermann. Ans. 5.

Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415. In particular, the Supreme Court reaffirmed principles based
on its precedent that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 416.
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Application 11/248,295

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Here, the invention of Appellant’s claims 23, 26, and 29 is no more
than a simple arrangement of old elements, with each performing the same
function it had been known to perform, yielding no more than one would
expect from such an arrangement. Id., at 406. The skilled artisan would
“be able to fit the teachings of multiple patents together like pieces of a
puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” Id. at 420-21.
In view of the collective teachings of Hermann, Doering, and
Wikipedia (“Wireless Network”), I agree with the Examiner’s conclusion
that “it is natural to use IP for communication” and that “[a]n ordinary
skilled artisan would have sufficient skill for implementing various
networking protocols and implementing an IP network.” Ans. 5.
Appellant has not presented sufficient evidence or argument that
combining Hermann, Doering, and Wikipedia (“Wireless Network”) would
have been “uniquely challenging or difficult for one of ordinary skill in the
art” or “represented an unobvious step over the prior art.” See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418-19).
For the reasons set forth above, I would sustain the Examiner’s
obviousness rejection of independent claims 23, 26, and 29 and their
respective dependent claims 24, 25, 27, 28, 30, 31 and 47-58, which were
not separately argued and fall therewith.

Notice of References Cited

Application/Control No.

11/248,295
Applicant(s)/Patent Under
Reexamination
HIDEKI SATO
Examiner

FARLEY J ABAD
Art Unit

2181

Page 1 of 1

U.S. PATENT DOCUMENTS

* Document Number Country Code-Number-Kind Code Date MM-YYYY

Name

Classification

A US-

B US-

C US-

D US-

E US-

F US-

G US-

H US-

I US-

J US-

K US-

L US-

M US-
FOREIGN PATENT DOCUMENTS

* Document Number Country Code-Number-Kind Code Date MM-YYYY

Country

Name

Classification

N

O

P

Q

R

S

T
NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

U

Web archive copy of Wikipedia article “Computer Network” available at
http://web.archive.org/web/20031219190153/http:/en.wikipedia.org/wiki/Computer_network

V

W

X

*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.

U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
8/20/13 Computer network - Wikipedia
web.archive.org/web/20031219190153/http:/en.wikipedia.org/wiki/Computer_network 1/3

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Computer network
From Wikipedia, the free encyclopedia.
A computer network is a system for communication among two or more computers.
Computer networks may be categorized with respect to range:
personal area network (PAN)
wireless PAN
local area network (LAN)
wireless LAN
metropolitan area network (MAN)
wide area network (WAN)
(Tiny area network (TAN)
Computer network applications may be categorized with respect to the functional relationships between
components:
client-server
multitier architecture
peer-to-peer
Computer networks may be categorized with respect to network topologies:
star network
grid network
toroidal networks and hypercubes
tree and hypertree networks
Computer networks may be categorized with respect to specialised functions
Storage Area Networks
Server farms
Computer networks may be implemented using a variety of protocol stack architectures, computer buses
or combinations of media and protocol layers, incorporating one or more of:
ARCNET
DECnet
Ethernet
IP
TCP
UDP
Appletalk
Token Ring
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http://en.w ikipedia.org/w iki/Computer_netw ork Go NOV DEC JUN
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2002 2003 2004
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8/20/13 Computer network - Wikipedia
web.archive.org/web/20031219190153/http:/en.wikipedia.org/wiki/Computer_network 2/3
IPX
FDDI
HIPPI
Myrinet
ATM
RS-232
IEEE-488
USB
IEEE 1394 aka Firewire, iLink
X.25
Frame relay
Bluetooth
IEEE 802.11
System Network Architecture
For a list of more see Network protocols
For standards see IEEE 802.
Suggested topics:
communication theory
data transmission
Public switched telephone network
Modems and dialup
wireless transmission
short range
Bluetooth
medium range
IEEE 802.11
long range
satellite
MMDS
SMDS
cellular telephone data transmission
CDMA
CDPD
GSM
iMode
TDMA
paging networks
DataTAC
Mobitex
Motient
Wired Transmission
dedicated lines (leased lines)
Time-division multiplexing
packet switching
Frame relay
PDH
Ethernet
RS-232
Optical fiber transmission
Synchronous optical networking
8/20/13 Computer network - Wikipedia
web.archive.org/web/20031219190153/http:/en.wikipedia.org/wiki/Computer_network 3/3
Computer networking device
Routing
Bitnet
References
Andrew S. Tanenbaum, "Computer Networks" (ISBN 0133499456).
See also computing, internet, routing

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