Ex Parte Wong et al

Patent Trial and Appeal Board

Oct 31, 2016

12894107 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/894,107 09/29/2010 Ling Jun Wong
36738 7590 11/02/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
200903017.01 5398
EXAMINER
NGUYEN,ANV
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
11/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LING JUN WONG and TRUE XIONG
Appeal2015-007138
Application 12/894, 107
Technology Center 2400
Before THU A. DANG, JOHN D. HAMANN, and
ALEX S. YAP, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 12-15 and 17-20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellants, the invention is directed to "[t]echniques for
developing a television user interface for a secondary device," which include
"creating a set of user interface rules and a plurality of user interface
Appeal2015-007138
Application 12/894, 107
objects," wherein "[t]he set of user interface rules are applied to the plurality
of user interface objects to create a mapping between the inputs and output
of the user interface of the secondary device to television remote control
commands" (Abstract).
B. EXEMPLARY CLAIMS
Claim 12 is exemplary:
12. A system comprising:
an extendable computing device for wirelessly controlling
an appliance different than the extendable computing device, the
extendable computing device including a configurable user
interface associated with a set of user interface rules applied to a
plurality of user interface objects to configure the device to be used
as a remote commander for the appliance, with a mapping being
defined between the input and output of the user interface objects
to television remote control commands according to the user
interface rules, one of the user interface objects being an
accelerometer and a user interface rt1le associated \vith the
accelerometer defining a command for the appliance based on an
output of the accelerometer.
C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lee
Musschebroeck
US 2010/0030549 Al
US 2010/0271252 Al
Feb.4,2010
Oct. 28, 2010
Claims 12-15, and 17-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Musschebroeck and Lee.
2
Appeal2015-007138
Application 12/894, 107
IL ISSUE
The principal issue before us is whether the Examiner erred in finding
that the combination of Musschebroeck and Lee teaches or suggests "an
extendable computing device for wirelessly controlling an appliance"
including "a configurable user interface associated with a set of user
interface rules applied to a plurality of user interface objects" wherein "one
of the user interface objects being an accelerometer and a user interface rule
associated with the accelerometer defining a command for the appliance
based on an output of the accelerometer" (claim 12).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Musschebroeck
1. Musschebroeck discloses a programmable remote control for
controlling devices, which comprises a communication interface for
receiving a control script and sending a control command to the devices,
wherein, upon activation, the user executes the control script for generating
the control command (Abstract). The remote control further comprises a
display screen for providing feedback and/or instructions to the user (i-f 17).
Lee
2. Lee discloses a mobile electronic device having a touch sensitive
screen and an accelerometer (Abstract). The accelerometer provides
information about the physical orientation or position of the device, as well
as rotation or movement of the device about an axis, wherein the information
is used to detect that the device is in a vertical (portrait) orientation, or in a
3
Appeal2015-007138
Application 12/894, 107
horizontal (landscape) orientation. The processing of the accelerometer data
is performed by a driver program that translates raw data from the
accelerometer into physical orientation information used by the various
modules of the device (i-f 24 ), one module being a communication module
that manages or facilitates communication with external devices (i-f 25).
IV. ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend Musschebroeck "has no accelerometer" and "Lee
does nothing more with its accelerometer than present information on its
local display 'right side up' without ever contemplating using the signal to
control a different appliance" (App. Br. 3). Thus, according to Appellants,
"it is clear that illegitimate hindsight reconstruction of the references is
afoot, diligently using the claims as a template" (id.).
We have considered all of Appellants' arguments and evidence
presented. However, we disagree with Appellants' contentions regarding the
Examiner's rejections of the claims. Instead, we agree with the Examiner's
findings, and find no error with the Examiner's conclusion that the claims
would have been obvious over the combined teachings.
The test for obviousness is what the combined teachings would have
suggested to one of ordinary skill in the art. See In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Although Appellants contend
Musschebroeck "has no accelerometer" and Lee does not contemplate
4
Appeal2015-007138
Application 12/894, 107
"using the [accelerometer] signal to control a different appliance" (App. Br.
3), we agree with the Examiner's finding Lee's accelerometer "defines the
command to be performed based on the output of the accelerometer" (Ans.
4), and thus, "[w]hen properly combined with a remote control of
Musschebroeck that remotely controls a local device" would "render
obvious using the accelerometer to perform commands" (Ans. 5). That is,
we agree with the Examiner that the combination of Lee and Musschebroeck
at least suggest the contested limitations.
Musschebroeck discloses a programmable remote control for
controlling different devices/appliances, which comprises a communication
interface for receiving a control script and sending a control command to the
devices, wherein, upon activation, the user executes the control script/rules
for generating the control command (FF 1 ). We find no error with the
Examiner's reliance on Musschebroeck for teaching and suggesting "an
extendable computing device for wirelessly controlling an appliance"
including "a configurable user interface associated with a set of user
interface rules" applied to a plurality of user interface objects, wherein "a
user interface rule" associated with one of the user interface objects defines
"a command for the appliance" based on an output of the one user interface
object (claim 12). Thus, the only claim limitation missing from
Musschebroeck is a specific teaching of "one of the user interface objects
being an accelerometer." (id.).
However, we find no error with the Examiner's reliance on Lee for
disclosing a user interface object for defining commands being an
accelerometer (Ans. 4; FF 2). Even Appellants concede that Lee discloses
using an accelerometer.
5
Appeal2015-007138
Application 12/894, 107
In Lee, the accelerometer data is processed by a driver program that
translates raw data from the accelerometer into information used by the
various modules of the device, one of which is a communication module that
manages communication with external devices (FF 2). That is, Lee discloses
use of the output of the accelerometer by various modules, such as a
communication module that manages communication with external devices
(id.). We agree with the Examiner's finding that Lee discloses or at least
suggests an accelerometer that "defines the command to be performed based
on the output of the accelerometer" (Ans. 4), wherein the command includes
a communication module command for managing communication with
external devices. Thus, we find no error with the Examiner's finding that
the combination of Musschebroeck and Lee teaches or at least suggests
defining a command to be performed by external devices/appliances based
on the output of an accelerometer.
Although we are mindful of Appellants' hindsight contentions (App.
Br. 3), the Supreme Court has clearly stated the "combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int'! Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). That is, when considering obviousness of a
combination of known elements, the operative question is thus "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 417. The skilled artisan is "a person of
ordinary creativity, not an automaton." Id. at 421.
Here, Appellants have presented no evidence that combining Lee's
accelerometer to Musschebroeck's remote control for defining commands to
external devices would have been "uniquely challenging or difficult for one
6
Appeal2015-007138
Application 12/894, 107
of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Instead, we
conclude that it would have been well within the skill of one skilled in the
art to combine Lee's accelerometer for defining commands (FF 1) with
Musschebroeck's remote control for defining commands to external devices
(FF 2). Such a substitution/design choice would have been well within the
skill of the art. See KSR, 550 U.S. at 417.
Here, we agree that one of ordinary skill in the art, upon reading Lee's
teaching of an accelerometer that "defines the command to be performed
based on the output of the accelerometer" (Ans. 4; FF 2), would have found
it obvious to modify Musschebroeck's teachings of using user interface rules
to define commands for external devices/appliances (FF 2) also to use an
accelerometer to further define the commands. That is, we agree that
Appellants' invention is simply a modification of familiar prior art teachings
(as taught or suggested by the cited references) that would have realized a
predictable result, KSR 550 U.S. at 421. Minor differences between the
prior art and a claimed device may be a matter of design choice absent
evidence to the contrary. See In re Rice, 341F.2d309, 314 (CCPA 1965).
Although Appellants contend Lee does not contemplate "using the
signal to control a different appliance" (App. Br. 3), we agree with the
Examiner's reliance on Musschebroeck (instead of Lee) for disclosing and
suggesting defining commands for controlling an appliance different than
the computer device (FF 1). In view of Lee's teaching of using an
accelerometer to provide output for use in providing commands by various
modules, such as a communication module that manages communication
with external devices (FF 2), we agree with the Examiner that the
7
Appeal2015-007138
Application 12/894, 107
combination thereof teaches or at least suggests the contested limitation
(Ans. 4).
On this record, we are unconvinced of Examiner error in the rejection
of independent claim 12 over Musschebroeck and Lee. Appellants do not
provide separate arguments for the other pending claims, and thus, we
summarily affirm the rejections of these claims.
V. CONCLUSION AND DECISION
We affirm the Examiner's rejection of claims 12-15 and 17-20 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)(l )(iv).
AFFIRMED
8