Ex Parte Xu et al

Patent Trial and Appeal Board

Aug 31, 2018

12491688 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/491,688 06/25/2009 Rex Xu
34018 7590 09/05/2018
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
81230.137US1 5870
EXAMINER
HO,RUAYL
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
chiipmail@gtlaw.com
escobedot@gtlaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REX XU and CESAR ALVARADO
Appeal 2018-001595
Application 12/491,688
Technology Center 2100
Before JOHN A. EV ANS, LINZY T. McCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Non-Final Rejection of Claims 1-9 and 12-18. App. Br. 1.
Claims 10 and 11 have been withdrawn. Non-Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE. 2
1 The Appeal Brief identifies Universal Electronics Inc., as the real party in
interest. App. Br. 2.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed August 22, 2017, "App. Br."), the Reply
Brief (filed December 1, 2017, "Reply Br."), the Examiner's Answer
(mailed October 19, 2017, "Ans."), the Non-Final Office Action (mailed
December 23, 2016, "Non-Final Act."), the Specification (filed June 25,
2009, and as amended May 17, 2012, "Spec."), and our prior Decision
Appeal 2018-001595
Application 12/491,688
STATEMENT OF THE CASE
Related Proceedings
The present Application was the subject of Appeal 2014-007712
heard by the present Panel of the Board. Our Decision of August 30, 2016
affirmed the rejection of Claims 1--4, 7-9, 12-14, 17, and 18 as anticipated
and affirmed the rejection of Claims 5, 6, 15, and 16 as obvious. Subsequent
to our Decision, Appellants amended the claims.
The Invention
The claims relate to a method to configure a macro command
sequence used by a controlling device to command functions of one or more
target devices. See App. Br. 2.
Claims 1 and 9 are independent. An understanding of the invention
can be derived from a reading of exemplary Claim 1, which is reproduced
below with some formatting added:
1. A method for configuring a macro command sequence
for use by a controlling device having programming for
commanding functions of one or more target devices,
compnsmg:
displaying in a display an exact image of an original
equipment manufacturer remote control device that is provided
with at least one of the one or more target devices where each
displayed image of the original equipment manufacturer remote
control device includes images of buttons that would be used to
control controllable functions of a corresponding one of the one
or more target devices;
accepting a first input by which one or more of the
displayed images of buttons of the displayed image of the one
(mailed August 30, 2016, "Decision") for their respective details.
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Appeal 2018-001595
Application 12/491,688
or more of the original equipment manufacturer remote control
devices are selected; and
using the selection of the one or more displayed images
of buttons of the displayed image of the one or more of the
original equipment manufacturer remote control devices to
configure a macro button of the controlling device whereupon
activation of the macro button will cause a transmission of
commands from the controlling device to control controllable
functions of the one or more target devices that correspond to
the selected one or more of the displayed images of buttons of
the displayed one or more images of the original equipment
manufacturer remote control devices.
References and Rejections
The Examiner relies upon the prior art as follows:
Muto et al.
Scott et al.
US 2005/0220038 Al
US 2006/0050142 Al
Oct. 6, 2005
Mar. 9, 2006
The following claims are before us for review:
1. Claims 1-9 and 12-18 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Non-Final Act. 4.
2. Claims 1-9 and 12-18 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Non-Final Act. 5.
3. Claims 1--4, 7-9, 12-14, 17, and 18 stand rejected under 35 U.S.C.
§ I02(e) as anticipated by Scott. Non-Final Act. 5-8.
4. Claims 5, 6, 15, and 16 stand rejected under 35 U.S.C. § I03(a) as
obvious over Scott and Muto. Non-Final Act. 8-9.
ANALYSIS
We have reviewed the rejections of Claims 1-9 and 12-18 in light of
Appellants' arguments that the Examiner erred. We provide the following
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Appeal 2018-001595
Application 12/491,688
explanation to highlight and address specific arguments and findings
primarily for emphasis.
CLAIMS 1-9 AND 12-18: NON-STATUTORY SUBJECT MATTER
The Examiner finds the independent claims recite a "method" for
configuring a macro command sequence comprising steps that may be
performed manually and/or mentally. Non-Final Act. 4. The Examiner,
thus, finds the recited method is an abstract idea because it is not tied to a
particular machine or apparatus, nor does it transform a particular article into
a different state or thing. Id.
Appellants contend the claims set forth a method requiring a
controlling device, which has programming for controlling a target device.
App. Br. 6. Appellants argue the claimed method is tied to a particular
device and cannot be performed by a human either mentally or with paper
and pencil. Id. Appellants contend the claims set forth a method including
activation of a macro button to transmit commands to control functions of a
target device. Reply Br. 2. Appellants further argue the Examiner's finding
is not supported by any analysis that demonstrates that the claimed elements,
considered both individually and as an ordered combination, are insufficient
to ensure that the claims as a whole amount to significantly more than the
( unidentified) exception itself under Alice3. Id.
The Examiner finds it is unclear what hardware component( s) of the
controlling device are needed for configuring a macro command sequence to
command target devices. Ans. 8.
3 Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2357 (2014).
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Application 12/491,688
The Examiner has not sufficiently explained how the Examiner's
findings apply to the steps of the Alice analysis. Moreover, the Examiner's
objections (i.e., lack of clarity as to required hardware) sound in the written
description requirement of§ 112, not in § 101. We address the written
description rejection below. We decline to sustain the rejection of Claims
1-9 and 12-18 under§ 101.
CLAIMS 1-9 AND 12-18: WRITTEN DESCRIPTION REQUIREMENT
The claims as amended recite, inter alia, "displaying in a display an
exact image of an original equipment manufacturer remote control device."
The Examiner finds the recitation "exact image" occurs only once in
the Specification:
in instances where exact image data is not available for the
particular OEM remote control associated with the currently
selected configured target device, a closest match image, a
generic image, a drop-down list of available command function
names, etc. may be substituted as necessary.
Ans. 8 ( quoting Spec. ,r 25). The Examiner finds the recitation is not
presented in the summary of invention section and is recited in a hypothetic
and negative tone. Id.
Appellants contend the recitation provides for substitutions where the
exact image in unavailable and that Figure 7 illustrates an exact image of an
OEM remote control. App. Br. 6-7. Appellants argue their disclosure is
ample to convey to one skilled in the art that Appellants were in possession
of the subject matter. Id. at 6.
We agree the Specification conveys with sufficient clarity the notion
of an exact image. We decline to sustain the rejection of Claims 1-9 and
12-18 under§ 112, first paragraph.
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Application 12/491,688
CLAIMS 1--4, 7-9, 12-14, 17, AND 18: ANTICIPATION BY SCOTT
Appellants contend Scott fails to disclose "displaying in a display an
exact image of an original equipment manufacturer remote control device,"
as recited in independent Claims 1 and 9. App. Br. 8. Specifically,
Appellants argue Figures 9 and 10 of Scott disclose a system in which
command function labels are presented to a user in panel 912 together with
an image of a universal remote control device that is being programed. Id.
The Examiner finds the claimed "exact image" is undefined and,
therefore, the Examiner interprets the term to mean an "image of an original
equipment manufacturer remote control device." Ans. 9.
Appellants contend the Board determined that Scott does not disclose
an "exact image" of a remote control, but rather, that Scott discloses the use
of a drop down list. Reply Br. 4 ( citing Decision 4 ).
Our Decision found:
[ t ]he plain language of claim 1 is not limited to "exact image
data" for an OEM remote control device, and thus the disputed
term is sufficiently broad also to encompass "a closest match
image, a generic image, [and] a dropdown list of available
command function names," as described in the Specification
[and disclosed by Scott]. Thus, we agree with the Examiner's
reasonable interpretation of "original equipment manufacturer
remote control device."
Decision 4. However, subsequent to our Decision, Appellants have
amended their claims to recite an "exact image." Our prior Decision found
Claim 1 was "not limited to 'exact image data' for an OEM remote control
device" such that a drop-down list of command names reasonable
approximated the claimed "image of an original equipment
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Application 12/491,688
manufacturer remote control device." However, the claims have been
amended to recite an "exact image," which is not reasonably read-on by a
drop-down list.
In view of the foregoing, we decline to sustain the rejection of Claims
1--4, 7-9, 12-14, 17, and 18 under§ 102(e).
CLAIMS 5, 6, 15, AND 16: OBVIOUSNESS OVER SCOTT AND MUTO
The Examiner does not apply Muto to supply the deficiencies of Scott
as discussed above. See Non-Final Act. 8-9; Ans. 7. Because we do not
sustain the rejection of the independent claims, we similarly do not sustain
the rejection of the dependent claims.
DECISION
The rejection of Claims 1-9 and 12-18 under 35 U.S.C. § 101 is
REVERSED.
The rejection of Claims 1-9 and 12-18 under 35 U.S.C. § 112, first
paragraph, is REVERSED.
The rejection of Claims 1--4, 7-9, 12-14, 17, and 18 under 35 U.S.C.
§ 102(e) is REVERSED.
The rejection of Claims 5, 6, 15, and 16 under 35 U.S.C. § 103(a) is
REVERSED.
REVERSED
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