Universal Electronics Inc.

Patent Trials and Appeals Board

Sep 2, 2020

2019002959 (P.T.A.B. Sep. 2, 2020)

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.
15/417,362 01/27/2017 Paul Ogaz 81230.147US4 5064
34018 7590 09/02/2020
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
PHILLIPS, III, ALBERT M
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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 PAUL OGAZ,
ARSHAM HATAMBEIKI, and PATRICK H. HAYES
Appeal 2019-002959
Application 15/417,362
Technology Center 2100
Before CARL W. WHITEHEAD JR., NABEEL U. KHAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–6, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Universal Electronics Inc. as the real
party in interest. Appeal Br. 2.
Appeal 2019-002959
Application 15/417,362

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TECHNOLOGY
The application relates to “the configuration of home appliance
systems” and “recommending equipment expansions.” Spec. 3:6–9.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized and spacing added:
1. A system for checking appliance compatibility, comprising:
a smart device having a product recommendation application and
a universal remote control application resident thereon;
and
a server device having an associated data repository in which is
maintained for each of a plurality of appliances an
appliance record comprising one or more features for the
corresponding appliance;
wherein the product recommendation application resident on the
smart device includes programming
for causing the smart device to provide to the server device
a first information, wherein the first information
functions to identify a first appliance being
considered for integration into a system which
includes a second appliance that is currently
controllable via use of the remote control
application resident on the smart device,
for obtaining from the universal remote control application
resident on the smart device second information
wherein the second information comprises data
indicative of command data set from within a
library of command data sets that is appropriate for
commanding functional operations of the second
appliance, and
for causing the smart device to provide to the server device
the second information; and
Appeal 2019-002959
Application 15/417,362

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wherein the server device includes programming
for causing the first information to be used to extract from
the data repository one or more features for an
appliance corresponding to the first information,
for causing the second information to be used to extract
from the data repository one or more features for an
appliance corresponding to the second information,
for determining if the one or more features for the
appliance corresponding to the first information as
extracted from the data repository and the one or
more features of the appliance corresponding to the
second information as extracted from the data
repository indicate that the appliance corresponding
to the first information is compatible for integration
into the system which includes the appliance
corresponding to the second information, and
for providing to the product recommendation application
a result of the determination for presentation to a
user via use of the smart device.
REFERENCES
The Examiner relies on the following prior art references:
Name Number Date
Amron US 2008/0180302 A1 July 31, 2008
Kemink US 7,574,693 B1 Aug. 11, 2009
Koike US 8,606,651 B2 Dec. 10, 2013
Shteyn WO 00/28436 A1 May 18, 2000
Yuh US 2006/0200538 A1 Sept. 7, 2006
REJECTIONS
Claims 1–3 and 5 stand rejected under 35 U.S.C. § 103 as obvious
over Koike, Amron, and Yuh. Non-Final Act. 2.
Claims 4 and 6 stand rejected under 35 U.S.C. § 103 as obvious over
Koike, Amron, Yuh, Kemink, and Shteyn. Non-Final Act. 7–8.
Appeal 2019-002959
Application 15/417,362

4
ISSUE
Did the Examiner err in finding the combination of Koike and Amron
teaches or suggests “a smart device” and “a universal remote control
application resident thereon,” as recited in claim 1?
ANALYSIS
Claim 1 recites “a smart device” and “a universal remote control
application resident thereon.”
The Examiner finds that Koike’s “set-top box is a smart device” and
Amron discloses “a set top box 1420 that is configured to receive wireless
signals . . . from the universal remote control 1410.” Non-Final Act. 2, 4
(quoting Amron ¶ 75). The Examiner determines that “[i]t would have been
obvious . . . to modify the smart device (set top box) in Koike to include
universal remote control application resident thereon as taught by Amron”
and “[t]he motivation would have been to allow a user to conveniently
control the set top box with one remote thereby saving time by not having to
keep up with multiple remotes.” Id. at 5.
Although we agree with the Examiner that it would have been obvious
to use Amron’s universal remote control device with Koike’s system, we
also agree with Appellant that the Examiner fails to explain why it would
have been obvious to add a universal remote control application on Koike’s
set top box. Appeal Br. 4–5; Reply Br. 2–3. “[B]ecause the universal
remote is intended to transmit the same commands as the OEM remote
control, one of [ordinary] skill in the art would have . . . understood that the
controllable appliance [i.e., Koike’s set top box] does not need to be
modified . . . .” Reply Br. 2. Thus, although it may be obvious to have a
universal remote control “application” on the universal remote control
Appeal 2019-002959
Application 15/417,362

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device transmitting commands (e.g., to specify which other devices need to
be controlled and what commands control them), the Examiner has not
sufficiently explained why it would have been obvious to add such an
application to devices receiving commands from a universal remote control.
The Examiner does not rely on the additional cited references to cure
the deficiency of the Koike/Amron combination discussed above.
Accordingly, we are constrained to reverse the Examiner’s rejections
of claim 1 and its dependent claims 2–6.
OUTCOME
The following table summarizes the outcome of each rejection:
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1–3, 5 103 Koike, Amron, Yuh 1–3, 5
4, 6 103 Koike, Amron, Yuh,
Kemink, Shteyn
4, 6
Overall 1–6
REVERSED