Universal Electronics Inc.

Patent Trials and Appeals Board

Aug 2, 2021

2020003784 (P.T.A.B. Aug. 2, 2021)

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.
15/053,323 02/25/2016 Brandt J. Thompson 81230.133US4 3481
34018 7590 08/02/2021
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
KARWAN, SIHAR A
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
08/02/2021 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
clairt@gtlaw.com
jarosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte BRANDT J. THOMPSON, JON GALLEGOS,
JASON L. GODWIN, and PATRICK H. HAYES
_______________

Appeal 2020-003784
Application 15/053,3231
Technology Center 3600
_______________

Before MICHAEL J. STRAUSS, HUNG H. BUI, and
DAVID J. CUTITTA II, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1–3, all the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2 Pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a new ground of rejection for independent claims 1–3.

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is Universal
Electronics Inc. Appeal Br. 2.
2 Our Decision refers to Appellant’s Appeal Brief filed December 6, 2019
(“Appeal Br.”); Reply Brief filed April 22, 2020 (“Reply Br.”); Examiner’s
Answer mailed February 25, 2020 (“Ans.”); Final Office Action mailed July
10, 2019 (“Final Act.”); and original Specification filed February 25, 2016
(“Spec.”).
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STATEMENT OF THE CASE
Appellant’s invention relates to “a system and method [as shown in
Figure 2] for rapid configuration of a universal controlling device.”
Spec. 2:20–21. Appellant’s Figure 2 is reproduced below.

Figure 1 shows a system in which remote control device 100 is placed in
communication with PC 200 for rapid configuration of remote control
device 100.

According to Appellant,
a configuration application may be executed by PC 200 to upload
configuration data from controlling device 100, to provide a user
interface 204 for display and selection of configuration options,
and to download resulting new and/or modified configuration
data to controlling device 100. The creation of such new or
modified configuration data may include the use of data stored
locally on PC 200 and/or data stored on a server 208 and accessed
via a wide area communication network 206 such as the Internet.
Spec. 6:4–9.
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Claim 1 is the only independent claim, as reproduced below with
disputed limitations emphasized:
1. A computer-implemented method for making a
selection for a channel control system through a computing
device, the method comprising:
receiving configuration information, the configuration
information including model information associated with the
channel control system;
receiving, from the computing device, a request for an
infrared code to perform a television function on the configured
channel control system;
determining an internet protocol (“IP”) address associated
with the computing device;
receiving a location identifier associated with the IP
address;
receiving a television service provider identifier
associated with the location identifier;
receiving a television function identifier based on the
television service provider identifier;
selecting the infrared code including instructions to
perform the television function on the channel control system;
and
transmitting the infrared code to the computing device.
Appeal Br. 8 (Claims App.).

REJECTION AND REFERENCES
Claims 1–3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Harris et al. (US 2001/0033243 A1; published Oct. 25,
2001; “Harris”) and Beranek et al. (US 6,226,642 B1; issued May 1, 2001;
“Beranek”). Final Act. 4–7.

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ANALYSIS
In support of the obviousness rejection, the Examiner finds Harris
teaches Appellant’s claimed “computer-implemented method for making a
selection for a channel control system through a computing device,”
including most limitations of claim 1, except for the disputed limitations:
1. “receiving a location identifier associated with the IP address;”
2. “receiving a television service provider identifier associated with
the location identifier;” and
3. “receiving a television function identifier based on the television
service provider identifier” as claimed.

Final Act. 5–6 (citing Harris ¶¶ 62, 71, 82).
The Examiner acknowledges Harris does not teach, but relies on
Beranek for teaching the disputed limitations to support the conclusion of
obviousness. Final Act. 7 (citing Beranek 12:45).
Appellant disputes the Examiner’s factual findings regarding Beranek.
In particular, Appellant contends:
Beranek discloses a system in which a computer is provided with
a proxy (225) where the proxy (225) is used to intercept a web
document as it is received from a computer network and to
process this document in order to control how the document is
presented on the browser.

Appeal Br. 5 (citing Beranek 97–25). According to Appellant,
While Beranek discloses a system in which a proxy (225), which
is bound to a browser via use of a socket, services HTTP requests
(transmitted utilizing the standard IP protocol) for the purpose of
controlling how a retrieved document is to be presented on the
browser, Beranek, like Harris, does not expressly disclose, teach,
or suggest any device that uses the standard protocol to:
determine an internet protocol (“IP”) address associated with a
computing device, [1] receive a location identifier associated
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with the IP address; [2] receive a television service provider
identifier associated with the location identifier; or [3] receive a
television function identifier based on the television service
provider identifier as claimed.
Appeal Br. 5–6.
In response, the Examiner takes a different position that “Harris
teaches all of applicant’s limitations” and, therefore, “Beranek . . . was not
needed.” Ans. 8–9. According to the Examiner, Harris teaches all
limitations of Appellant’s claim 1, including the disputed limitations because
(1) “[Harris’ invention may be] utilized to control and operate various
external electronic devices including but not limited to ‘televisions,’ cable
units, satellite dish receivers” and (2) “standard protocols over the internet
uses IP addresses as described in the primary reference of Harris.” Ans. 8
(citing Harris ¶¶ 51, 59).
We disagree with the Examiner’s position. Paragraph 51 of Harris
simply describes programming a remote control device 10 to recognize a
plurality of external electronic devices, as shown in Figure 4, such as, for
example, “televisions.” Harris ¶ 51. Likewise, paragraph 59 of Harris
describes the use of network interface to send and receive data over a
network connected to these external electronic devices “according to
standard protocols including data over a global computer network such as
the Internet.” Harris ¶ 59. However, neither paragraph teaches or suggests
the disputed limitations of Appellant’s claim 1, including:
1. “receiving a location identifier associated with the IP address;”
2. “receiving a television service provider identifier associated with
the location identifier;” and
3. “receiving a television function identifier based on the television
service provider identifier.”

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As recognized by Appellant, Beranek does not remedy the
deficiencies of Harris in order to arrive at Appellant’s claims 1–3 because
(1) Beranek teaches “techniques for modifying the appearance of a Web
page to be displayed on a Web browser associated with an appliance”
(Beranek 1:16–18) and (2) the cited portion of Beranek only describes the
transmission of packet to an “IP address/port number to service the HTTP
request” (Beranek 12:45–46).
For these reasons, we decline to sustain the Examiner’s obviousness
rejection of claims 1–3 under 35 U.S.C. § 103(a) for obviousness over Harris
and Beranek.

NEW GROUND OF REJECTION
New § 112, 1st Paragraph Rejection of Claims 1–3 under 37 C.F.R.
§ 41.50(b)
Pursuant to our authority under 37 C.F.R. §41.50(b), however, we
reject claims 1–3 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement for the following reasons.
Appellant’s claim 1 recites, inter alia:
1. “receiving a television service provider identifier associated with
the location identifier;” and
2. “receiving a television function identifier based on the television
service provider identifier.”
Appeal Br. 3.
In the Appeal Brief, Appellant asserts page 15, line 9 to page 17, line
20 of Appellant’s Specification provide support for (1) “receiving a
television service provider identifier associated with the location identifier;”
and (2) “receiving a television function identifier based on the television
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service provider identifier” as claimed. Appeal Br. 2–3.
However, these cited paragraphs of Appellant’s Specification do not
support what Appellant asserts. For example, the cited portion of Appellant’s
Specification describes a method of configuring favorite buttons or icon of
remote control device 100, as shown in Figure 10, as reproduced below:

As shown in Figure 10, a user can utilize the remote control device
100 to control “favorite operations of a target device, e.g., to cause a device
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to tune to a favorite channel.” At step 1010, “if service information, i.e.,
channel line ups for cable providers, satellite providers, over the air, etc. is
available for the selected region, either locally on PC 100 or from a remote
server 208. . . . If not, manual configuration of favorites channel number
assignments and tuning device is required . . . . If channel line up
information is however available, at step 1016 the channel numbers
associated with the previously assigned favorite content providers are
configured and the default configuration process is complete.” Spec. 16:15–
17:11.
These cited paragraphs of Appellant’s Specification do not teach or
support the teaching that a channel control system would (1) “receiving a
location identifier associated with the IP address;” (2) “receiving a television
service provider identifier associated with the location identifier; and (3)
“receiving a television function identifier based on the television service
provider identifier” in the manner recited in Appellant’s claim 1.
Appellant’s Specification also has a complicated prosecution history,
including its continuation of (1) U.S. Application No. 12/490,978, filed on
June 24, 2009 (now issued as US Patent 10,235,873), which application
claims the benefit of U.S. Provisional Application No. 61/076,226, filed June
27, 2008, and (2) U.S. Application No. 12/490,978 is a continuation-in-part
of U.S. Application No. 12/421,065, filed April 9, 2009, which is a divisional
of U.S. Application No. 11/340,442, filed January 26, 2006, which is a
divisional of U.S. Application No. 10/288,727, filed November 6, 2002,
which application claimed the benefit of U.S. Provisional Application Nos.
60/344,020, filed December 20, 2001, and 60/344,774, filed November 20,
2001. Spec. 1:5–14.
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Claims 1–3 were not part of U.S. Application No. 12/490,978, filed on
June 24, 2009 (now issued as US Patent 10,235,873) or any earlier
applications. Instead, as the Examiner has recognized,
claims 1–3 have been copied from US Patent No. 8,982,285 (“the
’285 patent”) and in accordance with pre-AIA 35 U.S.C.
§ 135(b)(1), the claims of the ’285 patent were copied in the
subject application, which was filed on February 25, 2016, within
one year from the date on which the ’285 patent was granted”
cannot be currently considered based on MPEP 2304.2.
Ans. 9.
However, there is no “written description” support from the current
application or the earlier U.S. Application No. 12/490,978 (now issued as US
Patent 10,235,873) for Appellant’s claims 1–3.
The test for determining compliance with the written description
requirement is whether the disclosure of the application as
originally filed reasonably conveys to the artisan that the inventor
had possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the
specification for the claim language.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
Satisfaction of the written description requirement of § 112 is a
question of fact. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). The disclosure must “reasonably convey[ ] to
those skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Id. “[T]he level of detail required to satisfy the
written description requirement varies depending on the nature and scope of
the claims and on the complexity and predictability of the relevant
technology.” Id.
Because Appellant has not “reasonably convey[ed] to those skilled in
the art that the inventor had possession of the claimed subject matter as of the
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filing date,” we reject claims 1–3, as currently presented, under 35 U.S.C.
§ 112, first paragraph, as lacking written description.

DECISION
As such, we REVERSE the Examiner’s final rejection of claims 1–3
as being unpatentable under 35 U.S.C. § 103 over Harris and Beranek.
However, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a
NEW GROUND of rejection for claims 1–3 for failure to comply with the
“written description” requirement under 35 U.S.C. § 112, first paragraph.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Grounds
1–3 103 Harris,
Beranek
1–3
1–3 112(a) Written
Description
1–3
Overall
Outcome
1–3

Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Further, § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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).

REVERSED
37 C.F.R. § 41.50(b)