Ex Parte Wall et al

Board of Patent Appeals and Interferences

Jan 3, 2012

12019399 (B.P.A.I. Jan. 3, 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.
12/019,399 01/24/2008 Justin D. Wall 1078.004 9912
36790 7590 01/03/2012
TILLMAN WRIGHT, PLLC
PO BOX 49309
CHARLOTTE, NC 28277-0076
EXAMINER
EDWARDS JR, TIMOTHY
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
01/03/2012 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 JUSTIN D. WALL and DAVID M. WALL
____________________

Appeal 2012-002605
Application 12/019,399
Patent 6,989,763
Technology Center 2600

____________________

Before DEBRA K. STEPHENS, GREGORY J. GONSALVES, and
JEFFREY S. SMITH, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 20-23, 25-34, and 37-43. Claims 1-19, 24, 35, and 36
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Introduction
According to Appellants, the invention is directed toward a
programmable universal remote control apparatus. Software supplied by
manufacturers of controllable devices is used to program the universal
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remote control apparatus so a single remote control apparatus is capable of
operating many different controllable devices. (Abstract).
STATEMENT OF THE CASE

Exemplary Claim
Claim 20 is an exemplary claim and is reproduced below:
20) A method for programming, by a user, a handheld universal
remote control apparatus for wirelessly controlling first and second
controllable devices, the universal remote control apparatus including a
microprocessor, a memory, and a transmitter assembly, the method
comprising the steps of:

a) loading into the memory of the universal remote control
apparatus, by the user, first control programming configured to
enable the universal remote control apparatus to wirelessly
control the first controllable device, wherein

(i) prior to the loading, the universal remote control
apparatus was unable to wirelessly control the first
controllable device, and

(ii) the first control programming is not configured to
enable the universal remote control apparatus to
wirelessly control the second controllable device;

b) separately, loading into the memory of the universal
remote control apparatus, by the user, second control
programming configured to enable the universal remote control
apparatus to wirelessly control the second controllable device,
wherein

(i) prior to the separate loading, the universal remote
control apparatus was unable to wirelessly control
the second controllable device, and

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(ii) the second control programming is not configured
to enable the universal remote control apparatus to
wirelessly control the first controllable device;

c) executing by the microprocessor the first control
programming for controlling the first controllable device;
and

d) executing by the microprocessor the second control
programming for controlling the second controllable device;

e) wherein the respective control programming defines control
functions of the corresponding controllable device and the
manner in which the remote control apparatus operates for
controlling the corresponding controllable device; and

f) wherein said steps of loading the first control programming
and the second control programming into the memory of the
remote control apparatus comprises both

[(i)] downloading the first control programming from a
first website associated with a first manufacturer of
the first controllable device and
[(ii)] downloading the second control programming
from a second website associated with the second
manufacturer of a second controllable device.

Rejections
Claims 20-23, 25-34, 37-43 are rejected under 35 U.S.C. § 103(a) as
being obvious over Escobosa (US 2003/015138 A1).

GROUPING OF CLAIMS
(1) Appellants argue claims 20-22, 25-34, and 37-40 as a group on
the basis of claim 20 (App. Br. 8-12). We select independent claim 20 as the
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representative claim. We will, therefore, treat claims 21, 22, 25-34, and 37-
40 as standing or falling with representative claim 20.
(2) Appellants argue claims 23 and 41-43 as a group on the basis
of claim 23 (App. Br. 12-13). We select independent claim 23 as the
representative claim. We will, therefore, treat claims 41-43 as standing or
falling with representative claim 23.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE 1
35 U.S.C. § 103(a): claims 20-22, 25-34, and 37-40
Appellants assert their invention is not obvious over Escobosa (App.
Br. 8-12). Specifically, Appellants contend Escobosa does not teach or
suggest downloading of first control programming from a first website
associated with a first manufacturer of a first controllable device (App. Br.
8-9). Instead, Appellants argue Escobosa teaches a user selects a brand and
device type and downloads a virtual configuration from a centralized
website for their customizable remote control from the suppliers’ website
(App. Br. 9). Thus, Appellants assert the supplier of Escobosa cannot
possibly be characterized as a manufacturer (id.). According to Appellants,
Escobosa at best can be characterized as teaching the downloading of control
programming from a centralized website associated with a supplier of a
customizable remote control, rather than a website associated with a
manufacturer of a controllable device (App. Br. 9-10).
Appellants similarly argue Escobosa does not teach downloading of
second control programming from a second website associated with a
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second manufacturer of a second controllable device (id.). Appellants
further contend the Examiner failed to provide a reason for modifying
Escobosa to teach downloading of first and a second control programming
from a first and a second website associated with a first and a second
manufacturer of a first and a second controllable device, respectively (App.
Br. 11). Appellants also assert such a modification would be contrary to the
teachings of Escobosa as Escobosa disparages utilizing devices of a single
brand to utilize a universal remote control configured for devices of that
single brand (App. Br. 11). Moreover, Appellants contend the proposed
modification would render Escobosa’s system unsatisfactory for its intended
purpose (App. Br. 11 -12).
Issue 1: Has the Examiner erred in concluding Escobosa would have
taught or suggested “[(i)] downloading the first control programming from a
first website associated with a first manufacturer of the first controllable
device and [(ii)] downloading the second control programming from a
second website associated with the second manufacturer of a second
controllable device” as recited in claim 20?

ANALYSIS
We agree with and adopt the Examiner’s findings and conclusions
(Ans. 5-7) as our own. We emphasize the following points. Appellants
have not explicitly defined the term “manufacturer” but do state in their
Specification that a manufacturer of an electrical or electronic device(s) may
provide a universal remote control device that is operable to control the
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operation of the electrical or electronic device(s) (col. 28-30). Therefore, the
supplier of the universal remote control device may also be a manufacturer.
Moreover, claim 1 recites a first website is associated with a first
manufacturer of the first controllable device. Such a recitation does not
require the website to be the manufacturer’s website, but instead only that
the website is “associated with” the manufacturer. Here, Escobosa teaches
the control programming is “connected or joined together with” the
manufacturer of the controllable device as the website connects specific
information regarding the controllable device of that manufacturer for the
user (Abstract; pg. 1, [0012]; pg. 4, [0051]; pg. 6, [0066]).
We also note that cumulative to the Examiner’s findings and
conclusions (Ans. 6-7), we conclude having more than one website
associated with manufacturers of the controllable device would not have
been beyond the skill of an ordinary artisan. Indeed, Appellants have
presented no evidence that modifying Escobosa to have two separate
websites for downloading two different control programming based on the
controllable device’s manufacturer was “uniquely challenging or difficult for
one of ordinary skill in the art” or “represented an unobvious step over the
prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418).
Furthermore, Escobosa suggests more than one avenue may be used to
access a computer (pg. 4, [0048]) (“The supplier site is preferably the
supplier’s Web site, but more generally may be a location of the supplier
(whether physical or virtual) which is accessed via a Web site or dedicated
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path.”) further suggesting more than on website is possible in Escobosa’s
system.
Lastly, we are not persuaded by Appellants’ arguments that Escobosa,
in paragraph 9, teaches away from the present invention as recited in claim
20 (App. Br. 11). “A reference may be said to teach away when a person of
ordinary skill, upon reading 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.” In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks
omitted). We find Escobosa discusses that programming may require
contacting customer service, excessive memory requirements which prevent
downloading all functionality, and key legends that do not indicate the added
functions (pg. 1, [0008]). Appellants have not provided any evidence or
argument that an ordinary skilled artisan would be discouraged from
accessing two different websites or led in a direction divergent from using
two different websites based on Escobosa.
We also agree with the Examiner’s finding that Escobosa teaches
accessing a different particular website to obtain the control programming of
a newly purchased device (Ans. 7) and thus, teaches or at least suggests
downloading second control programming from a second website associated
with the second manufacturer. Therefore, modifying Escobosa to use a
second website would not render the system of Escobosa unsatisfactory for
its intended purpose – to allow a user to configure a remote control to
provide the functions desired (see pg. 1, [0011], [0012]).
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Accordingly, the Examiner did not err in finding Escobosa would
have taught or suggested the invention as recited in independent claim 20
and independent claims 29 and 32, not separately argued, which recite
commensurate limitations as those disputed in claim 20. The Examiner
further did not err in concluding independent claims 20, 29, and 32 are
obvious over Escobosa. Dependent claims 21, 22, 25-28, 30, 31, 33, 34, not
separately argued, fall with their respective independent claims. Therefore,
the Examiner did not err in rejecting claims 20-22, 25-34, and 37-40 under
35 U.S.C. § 103(a) for obviousness over Escobosa.

ISSUE 2
35 U.S.C. § 103(a): claims 23 and 41-43
Appellants assert their invention is not obvious over Escobosa since
the Examiner has not addressed the limitation of downloading control
programming from first and second optical memory devices “in any way,
shape, or form whatsoever” (App. Br. 12-13). Appellants additionally argue
Escobosa teaches away from first and second optical memory devices
provided by first and second manufacturers (App. Br. 13).
The Examiner sets forth one of ordinary skill in the art readily
recognizes the use of optical memory is known in the art and it would have
been obvious to an ordinarily skilled artisan to use any of the known types of
memory, such as optical memory (Ans. 7-8). The Examiner may take notice
of facts or common knowledge in the art which are capable of such instant
and unquestionable demonstration as to defy dispute. In re Ahlert, 424 F.2d
1088, 1091 (CCPA 1970). To challenge the Examiner's notice, Appellants
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must present evidence to the contrary. In re Knapp-Monarch Co., 296 F.2d
230, 232 (CCPA 1961) (considering challenge to the taking of judicial
notice by Trademark Trial and Appeal Board). Appellants have not
presented any evidence or persuasive argument to rebut the Examiner’s
underlying factual findings and legal conclusion.
Additionally, Appellants have not provided any evidence or
persuasive argument that a person of ordinary skill, upon reading Escobosa,
would be discouraged from following the path set out, or would be led in a
direction divergent from the path that was taken by Appellant. In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994).
Accordingly, the Examiner did not err in finding Escobosa would
have taught or suggested the invention as recited in claim 23 and dependent
claims 41-43, not separately argued. Further, the Examiner did not err in
concluding claim 23 and 41-43 are obvious over Escobosa. Therefore, the
Examiner did not err in rejecting claims 23 and 41-43 under
35 U.S.C. § 103(a) for obviousness over Escobosa.

DECISION
The Examiner’s rejection of claims 20-22, 25-34, and 37-40 under 35
U.S.C. § 103(a) as being obvious over Escobosa is affirmed.
The Examiner’s rejection of claims 23 and 41-43 under 35 U.S.C.
§ 103(a) as being obvious over Escobosa 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)(1)(iv) (2010).

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AFFIRMED

ELD