Bluetech Automation, LLC

Patent Trials and Appeals Board

Apr 26, 2021

2020000448 (P.T.A.B. Apr. 26, 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.
15/312,438 11/18/2016 Steve Szymke BLU-002-P-US 4248
93613 7590 04/26/2021
SCHERRER PATENT & TRADEMARK LAW P.C.
17 E. CRYSTAL LAKE AVE
CRYSTAL LAKE, IL 60014
EXAMINER
BROWN, VERNAL U
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
04/26/2021 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):
USPTO@dockettrak.com
monique@scherrerpatentlaw.com
stephen@scherrerpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte STEVE SZYMKE and JOSHUA GRAMLICH
_____________

Appeal 2020-000448
Application 15/312,438
Technology Center 2600
______________

Before ERIC S. FRAHM, JOYCE CRAIG, and BETH Z. SHAW,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 2–17,2 all of the claims pending in the instant

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Bluetech Automation LLC (Appeal Br.
1).
2 Although the Examiner purports to reject claims 2–21 in the heading of the
statement of the rejection on page 2 of the Final Rejection and in the body of
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application. Claims 1 and 18–21 have been canceled (see Resp. Non-Final
Act. 2–8). We have jurisdiction under 35 U.S.C. § 6(b). We reverse the
Examiner’s obviousness rejection, and enter a new ground of rejection for
obviousness as to independent claim 2.
Introduction
Appellant’s Disclosed and Claimed Invention
Appellant’s disclosed invention “relates to an automatic wireless
Bluetooth®-enabled garage door opener, gate opener or other automatic
door opening system and method. Specifically, the door opener system and
method comprises a Bluetooth® wireless receiver interconnected to a low
voltage wired garage door opening system, and a control application on a
smart device, such as a smart phone, tablet, or other like Bluetooth®-
enabled wireless transmitter” (Spec. ¶¶ 2, 13). “To this end, in an
embodiment of the present invention, a smart device comprises an app
[application] for controlling, via Bluetooth protocol, an opener for a door by
sending a Bluetooth signal to receiver to trigger the opening or closing of the
door.” (Spec. ¶ 14).
Appellant discloses in paragraphs 29 through 31 of the Specification
that:

the rejection (see Final Act. 2, 4), claims 18–21 were cancelled in
Appellant’s Amendment filed in response to the Final Rejection mailed
November 6, 2018 (see Response to Final Office Action filed December 27,
2018, pp. 2, 8. This is bolstered by (i) the Examiner’s listing of only claims
2–17 as being rejected in box 15 on page 1 of the Advisory Action mailed
January 22, 2019; as well as (ii) Appellant’s recognition and understanding
that only claims 2–17 stand rejected (see Appeal Br. 1, 2, 6, 10). We
consider this harmless error, and consider only pending claims 2–17 to be
before us on appeal.
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[Appellant’s] FIG. 1 illustrates a prior art garage 10 having
a standard garage door 12 that is raised and lowered via an
electric motor 14 suspended above the garage 10 and at a
terminal end of a track 16. The electric motor 14 moves a carriage
18 via a chain, cable or other like means, along the track, the
carriage 18 connected to an arm 20 attached to the garage door
12. As the carriage 18 moves along the track 16 toward the
electric motor 14, the garage door 12 is raised. Likewise, as the
carriage moves along the track 16 away from the electric motor,
the garage door 12 is lowered. Edges of the garage door 12 may
follow side tracks, such as side track 22 to ensure alignment of
the garage door 12 as it is raised and lowered.
Typically, the electric garage door 12 has a pushbutton 24
that may be hardwired to the electric motor 14 or wirelessly
connected to the electric motor 14. Typically, the pushbutton 24
is mounted to the wall of the garage 10 so that a user has easy
access thereto when he or she enters the garage 10 through
garage door 26. When the pushbutton 24 is pressed, a signal is
sent to the electric motor 14 to raise or lower the garage door 12,
depending on its initial position.
In addition, users typically have a handheld wireless
transmitter (not shown) that the user may carry that may
wirelessly send a signal to the electric motor 14 to raise or lower
the garage door 12 depending on its position. As noted above,
these handheld wireless transmitters may be easily lost,
misplaced, damaged and/or stolen.

Spec. ¶¶ 29–31.
Appellant claims a system for controlling a door that comprises a
door, a wireless receiver, and an application resident on a mobile smart
device comprising an icon visible in a screen of the mobile smart device
representing a pushbutton switch (see claims 2, 8 and 14). Claim 2 recites a
system for controlling a door using an application on a mobile smart device,
and is exemplary:

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2. A system for controlling a door comprising:
a door having an open position and a closed position,
wherein the door further comprises a motor mechanically
connected to the door to move the door between the open
position and the closed position, the motor comprising a
pushbutton switch electrically connected to the motor, wherein
the pushbutton switch activates the motor when pressed;

a wireless receiver electrically connected to the
pushbutton switch, wherein the wireless receiver comprises a
changeable PIN, wherein the wireless receiver is configured to
receive a Bluetooth signal from a mobile smart device, wherein
the mobile smart device is selected from the group consisting of
a smart phone and a tablet computer, wherein the Bluetooth
signal has an embedded security code therein and further
wherein when the wireless receiver receives the Bluetooth
signal from the mobile smart device and further wherein when
the embedded security code of the Bluetooth signal matches the
changeable PIN of the wireless receiver, activates the motor
by sending an electric signal through the pushbutton switch to
the motor and when the embedded security code of the
Bluetooth signal from the mobile smart device does not match
the changeable PIN of the wireless receiver, the first motor is
not activated, and further wherein the wireless receiver is not
connected to any computer networks; and

an application resident on the mobile smart device
comprising an icon visible on a screen of the mobile smart
device representing a pushbutton switch, wherein activating the
icon on the screen of the mobile smart device sends the
Bluetooth signal from the mobile smart device to the receiver.

Appeal Br. 12, Claims Appendix. Remaining independent claims 8 and 14
recite commensurate limitations pertaining to a system for controlling one or
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more doors (claim 8) along with a second application, and a system for
controlling a door3 (claim 14) having first and second doors.
Examiner’s Rejection
The Examiner rejected claims 2–17 as being unpatentable under
35 U.S.C. § 103 over Sikora et al. (US 8,310,340 B2; published Nov. 13,
2012) (hereinafter, “Sikora”) and Scalisi et al. (US 8,780,201 B1; issued July
15, 2014, and filed Dec. 6, 2012) (hereinafter, “Scalisi”) (Final Act. 2–6;
Ans. 3–4).

ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br.
6–11) and the Reply Brief (Reply Br. 1–7), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 2–17 under 35 U.S.C. § 103
as being unpatentable over the combination of Sikora and Scalisi, because
Sikora and Scalisi are not properly combinable to teach or suggest [a] a
mobile smart device, wherein the mobile smart device is selected from the
group consisting of a smart phone and a tablet computer, and [b] an
application resident on the mobile smart device comprising an icon visible
on a screen of the mobile smart device representing a pushbutton switch,
wherein activating the icon on the screen of the mobile smart device sends
the Bluetooth signal from the mobile smart device to the receiver, as set

3 Should there be further prosecution with regard to claim 14, the Examiner
should consider whether claim 14 is indefinite due to the recitation in the
preamble of one door, when the body of the claim clearly sets forth two
applications for controlling first and second doors.
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forth in independent claim 2, and as similarly set forth in remaining
independent claims 8 and 14?

ANALYSIS
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see
also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed.
Cir. 2017) (“Without any explanation as to . . . why the references would be
combined to arrive at the claimed invention, we are left with only hindsight
bias that KSR warns against. . . . [W]e cannot allow hindsight bias to be
the thread that stitches together prior art patches into something that is the
claimed invention.”). Further, the USPTO “must examine the relevant data
and articulate a satisfactory explanation for its action including a rational
connection between the facts found and the choice made” and that
articulation requirement “appl[ies] with equal force to the PTAB’s
motivation to combine analysis.” In re Nuvasive, Inc., 842 F.3d 1376,
1382–83 (Fed. Cir. 2016); see also Motor Vehicle Mfrs. Ass’n v. State
Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation marks
and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp., 814
F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative agency,
the PTAB “must articulate logical and rational reasons for [its] decisions”
(internal quotation marks and citation omitted)). This is done by presenting,
for obviousness, a prima facie case. When “motivation to combine . . . is
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disputed,” USPTO “must articulate a reason why a PHOSITA would
combine the prior art references.” In re Nuvasive, Inc., 842 F.3d at 1382.
The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks—the so-
called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial
burden of proof is on the USPTO “to produce the factual basis for its
rejection of an application under sections 102 and 103”) (quoting In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967)). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not,
because it may doubt that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in
its factual basis.” In re Warner, 379 F.2d at 1017.
With this in mind, we have reviewed the Examiner’s rejection (Final
Act. 2–6) in light of Appellant’s arguments (Appeal Br. 6–11; Reply Br. 1–
7) that the Examiner has erred, as well as the Examiner’s response to
Appellant’s arguments in the Briefs (Ans. 3–4). We concur with Appellant’s
contentions (Appeal Br. 6–11; Reply Br. 1–7) that the Examiner erred in
determining it would have been obvious to modify Sikora’s mobile unit 4
with Scalisi’s smart device, such as a smartphone, to teach or suggest the use
of a mobile smartphone for transmitting control information to a garage door
opener as recited in claim 2, and as commensurately recited in claims 8 and
14. Specifically, Sikora’s mobile unit 4 functions to communicate
wirelessly via antennae 10 and 11 with safety sensor 6 and stationary unit 12
on door controller 7 (see Fig. 1; col. 9, ll. 22–28). Mobile unit 4 is
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permanently mounted on door 1, and moves with the door upon
opening/closing. Thus, mobile unit 4 is not a remote control for a door, as it
does not serve as a mobile device used for opening a door, and a person
having ordinary skill in the art would not seek to replace the mobile unit 4
with a smart phone.
In the instant case, the Examiner’s notification to Appellant of the
determination of the obviousness of independent claims 2, 8, and 14 is found
at pages 2 through 6 of the Final Rejection and pages 3 through 4 of the
Examiner’s Answer. The Examiner provides the same findings and
reasoning for each of claims 2, 8, and 14, thus a discussion of claim 1 will be
dispositive of the issue in the instant case on appeal.
The Examiner finds that Sikora teaches all of the limitations of claim
2, except for that the wireless signal transmitted to the push button is a
Bluetooth signal (see Final Act. 2–3). The Examiner’s rationale for
modifying Sikora with Scalisi, namely “because such modification provide
for a more adaptable garage door control system that can be controlled by a
computing device with a standard communication interface such as
Bluetooth” (Final Act. 4), is conclusory and speculative. Thus, Appellant’s
arguments (Appeal Br. 10; Reply Br. 1, 3–6) that there is neither proper
motivation to combine Sikora and Scalisi, nor reasonable expectation of
success, are persuasive.
Appellant’s contentions that Sikora “one would not simply ‘swap’ a
mobile smart device, as defined in the present invention, with the ‘mobile’
unit as taught by Sikora et al. to arrive at the claimed invention” (Appeal Br.
8; see also Reply Br. 5 (arguing that “because the ‘mobile device’ of Sikora
is fixed to the garage door, there would be no motivation to combine Sikora
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with Scalisi to exchange the ‘mobile device’ with a ‘smart phone’ as taught
by Scalisi. One of ordinary skill in the art would not have fixed a smart
phone or tablet computer to the garage door of Sikora”)), are persuasive. As
a result, Appellant’s final contention, that “because the ‘mobile device’ of
Sikora is fixed to the garage door, there would be no motivation to combine
Sikora with Scalisi to exchange the ‘mobile device’ with a ‘smart phone’ as
taught by Scalisi. “One of ordinary skill in the art would not have fixed a
smart phone or a tablet computer to the garage door of Sikora” (Reply Br. 5)
because there is no logical or rational articulation as to why an ordinarily
skilled artisan would combine Sikora with Scalisi since “Sikora does not at
all relate to a smart device (i.e., a smart phone or a tablet computer) in the
same manner as the present invention and instead relates to a safety system
on a garage door, where the controller itself is mounted to the garage door”
(Reply Br. 6), is persuasive. On this record, the Examiner’s obviousness
rejection is not well-supported by the express disclosures of Sikora and
Scalisi, and instead relies on conjecture. See In re Warner, 379 F.2d at 1017
(conjecture would require “resort to speculation, unfounded assumptions or
hindsight reconstruction”).
Further, the Examiner’s response to Appellant’s motivation arguments
is not well-founded. The Examiner determines:
In this case, the examiner considers the use of a mobile wireless
device carried by a user for transmitting control signal to a garage
door as a conventional practice and as explained and taught by
the Scalisi reference. The reference of Scalisi teaches a
computing device providing convenient control functions to a
user by running software to provide remote control function to a
security system and the security system also communicate with
the garage door opener (col. 10 lines 42-64, col. 31 lines 25-33)
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which is interpreted to be the same as the claimed mobile smart
device is a smart phone. Furthermore Scalisi also discloses the
system communicates with a garage door opener wirelessly (Col.
31, Lines 25-33) where Sikora discloses in Col. 8, Lines 46-56
wireless networked door controller for a movable door and the
motivation to combine the references is to increase user
convenience by reducing manual intervention.
Ans. 4–5. Sikora, however, does not teach a mobile device “[b]ecause the
‘mobile device’ of Sikora is actually a static device (in the sense it is rigidly
held on the door) that is not carried and used by a user thereof, there would
be no motivation to combine the teachings of Scalisi with Sikora to arrive at
the claimed invention” (Reply Br. 4). The Examiner provides no
explanation why one of ordinary skill in the art would modify Scalisi’s smart
device by using Sikora’s mobile unit that it physically attached to the garage
door and is mobile in that it moves up and down as the garage door opens
and closes. Since the mobile unit in Sikora is mounted to the door, there
would be no motivation to combine the smart device of Scalisi that is carried
by a user with a mounted mobile device of Sikora. Therefore, the Examiner
has not provided “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness,” as required by
KSR. See KSR, 550 U.S. at 418.
The Examiner (i) improperly relies upon the combination of Sikora
and Scalisi to teach or suggest disputed claim limitations as set forth in claim
2 (i.e., the mobile smart device, wherein the mobile smart device is selected
from the group consisting of a smart phone and a tablet computer); and thus,
(ii) has not properly established factual determinations and articulated
reasoning with a rational underpinning to support the legal conclusion of
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obviousness for claims 2, 8, and 14, resulting in a failure to establish a prima
facie of obviousness.
As a result, we are constrained by the record before us to reverse the
Examiner’s obviousness rejection of independent claims 2, 8, and 14, as well
as the corresponding dependent claims, over the combination of Sikora and
Scalisi.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 103 for claim 2.
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over
a combination of newly cited Menard (US 2002/0183008 A1; published
Dec. 5, 2002) and Scalisi.
Regarding claim 2: Menard discloses the basic conventional
components of a standard garage door.
Figure 1 of Menard illustrates a schematic of a residential garage door
opener and is reproduced below:
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Figure 1 shows the parts of a garage door including a motor connected to a
door (not shown), a wireless receiver electronically connected to a
pushbutton switch, and a wireless remote control.
Menard discloses a system and method which allows remote control
and management of a single or multiple door openers using a wired or
wireless communication device (see ¶ 9). Menard discloses a door (e.g., a
garage door) that comprises an electric motor that provides the force to open
and close the garage door (see Fig. 1; ¶¶ 4–7, 9, 69). Menard discloses a
switch is wired to the power unit. The switch is often mounted on a wall
adjacent to a service door to the garage. In addition to switch, power unit
can be operated using a remote control/communication device. The remote
control/wireless communication device includes a wireless transmitter that
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broadcasts a signal to power unit. The remote control/wireless
communication device notifies the user of door position, presents control
options to user, and receives user selection (see Fig. 1; ¶¶ 6–7, 9, 69).
Menard discloses that the wireless communication device may be a cellular
telephone, a pager, a personal digital assistant, a computer, or other device
that communicates using a network (see ¶¶ 9, 29, 38). Menard discloses that
the transceiver may include a BLUETOOTH® transceiver in order to
communicate with the wireless communication device (e.g., cellular
telephone) (see Figs. 3, 4; ¶¶ 26–29, 38, 41).
Furthermore, we take judicial notice4 of the fact that an ordinarily
skilled artisan would have recognized that garage door components such as
wireless remote controllers and pushbutton switches, doors, wireless
transmitters/receivers, and motors were well-known. This fact is supported
by (i) intrinsic evidence (Appellant’s Admitted Prior Art in the
Specification, see Fig. 1; Spec. ¶¶ 3–5); (ii) extrinsic evidence in the form of
prior art patent references; and (iii) case precedent. We address the
supporting evidence in turn:

4 “Judicial notice permits proof by evidence to be dispensed with where
common knowledge supports the truth of a proposition. Judicial notice also
may be taken of facts though they are neither actually notorious nor bound to
be judicially known, yet they would be capable of such instant and
unquestionable demonstration, if desired, that no party would think of
imposing a falsity on the tribunal in the face of an intelligent adversary.” In
re Knapp-Monarch Company, 296 F.2d 230, 232 (CCPA 1961); see also In
re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (explaining that “the Patent
Office appellate tribunals, where it is found necessary, may take notice of
facts beyond the record which, while not generally notorious, are capable of
such instant and unquestionable demonstration to defy dispute.”).
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(I) Intrinsic Evidence
Appellant’s Specification discloses standard garage door opener
components similar to Menard as being known at the time of the filing of
Appellant’s Specification. Appellant admits as prior art a garage having a
standard garage door that is raised and lowered via an electric motor, along
with a pushbutton and a handheld wireless transmitter (see Fig. 1; Spec ¶¶
3–5, 26, 29–31). As indicated supra, Appellant recognizes that:
[Appellant’s] FIG. 1 illustrates a prior art garage 10 having
a standard garage door 12 that is raised and lowered via an
electric motor 14 suspended above the garage 10 and at a
terminal end of a track 16. The electric motor 14 moves a carriage
18 via a chain, cable or other like means,along the track, the
carriage 18 connected to an arm 20 attached to the garage door
12. As the carriage 18 moves along the track 16 toward the
electric motor 14, the garage door 12 is raised. Likewise, as the
carriage moves along the track 16 away from the electric motor,
the garage door 12 is lowered. Edges of the garage door 12 may
follow side tracks, such as side track 22 to ensure alignment of
the garage door 12 as it is raised and lowered.
Typically, the electric garage door 12 has a pushbutton 24
that may be hardwired to the electric motor 14 or wirelessly
connected to the electric motor 14. Typically, the pushbutton 24
is mounted to the wall of the garage 10 so that a user has easy
access thereto when he or she enters the garage 10 through
garage door 26. When the pushbutton 24 is pressed, a signal is
sent to the electric motor 14 to raise or lower the garage door 12,
depending on its initial position.
In addition, users typically have a handheld wireless
transmitter (not shown) that the user may carry that may
wirelessly send a signal to the electric motor 14 to raise or lower
the garage door 12 depending on its position. As noted above,
these handheld wireless transmitters may be easily lost,
misplaced, damaged and/or stolen.

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Spec. ¶¶ 29–31. A statement by an applicant in the specification or made
during prosecution identifying the work of another as “prior art” is an
admission which can be relied upon for both anticipation and obviousness
determinations, regardless of whether the admitted prior art would otherwise
qualify as prior art under the statutory categories of 35 U.S.C. § 102.
Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir.
2003). Constant v. Advanced MicroDevices, Inc., 848 F. 2d 1560, 1570
(Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is
binding on the applicant and patentee for determinations of anticipation and
obviousness.”); In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (A
statement by an applicant that certain matter is prior art is an admission that
the matter is prior art for all purposes).
(II) Extrinsic Evidence
The Menard garage door components (along with the Appellant’s
cited prior art) are conventional components that are also taught, for
example, in (1) a 1924 Car-Door-Operating Mechanism (see Hynes (US
1,499,735; issued July 1, 1924) (see Figure 1 and accompanying
description); and (2) Fitzgibbon (US 7,224,275 B2; issued May 29, 2007)
(col. 3, 1.27–col. 4,1.4 (explaining the conventional components of a garage
door, and adding “and is generally well understood in the art”); Figs. 1, 2
(showing the conventional garage door components)).
(III) Case Precedent
In a recent case, Chamberlain Group, Inc. v. Techtronic Industries
Co. Ltd., 2018-2103, 2018-2228, slip. op. 9–10 (Fed. Cir. Aug. 21, 2019),
dealing with a movable barrier (i.e., garage door) and controller (i.e., opener
and motor) having wireless control, the Court of Appeals for the Federal
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Circuit found certain elements of a wireless garage door system to be well-
known, understood, and conventional. In Chamberlain Group, the Court
found that “[t]he specification describe each individual element of the
asserted claims—including the controller, the interface, and the wireless data
transmitter—as ‘“well under-stood in the art.’” Chamberlain Group, Inc. v.
Techtronic Industries Co. Ltd., 2018-2103, 2018-2228, slip. op. 9 (Fed. Cir.
Aug. 21, 2019). The Court there found that the specification makes clear
that transmitting information wirelessly was conventional at the time the
patent was filed and could have been performed with off-the-shelf
technology. See Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd.,
2018-2103, 2018-2228, slip. op. 9–10 (Fed. Cir. Aug. 21, 2019).
Thus, it is well-settled that at the time of the filing of Appellant’s
application, an ordinarily skilled artisan would have recognized that garage
door components such as wireless remote controllers with pushbutton
switches, doors, wireless transmitters/receivers, and motors were well-
known in the prior art.
Menard does not explicitly teach that the wireless communication
device that the user uses to interact with the system (e.g., open the garage
door) comprises a mobile application (“app”) designed to run on
smartphones/tablet computers/computing devices that allows a person to
open a garage door by interacting with the application.
Scalisi, however, in an analogous art, teaches the use of (i) a
computing device to wirelessly communicate with a garage door opener to
open a garage door (col. 31, ll. 25–33; col. 32, ll. 60–67; col. 10, ll. 42–64);
and (ii) a Bluetooth wireless signal (col. 12, ll. 39–42; col. 10, ll. 26–40).
Scalisi also discloses that app software resident on the smart
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device/smartphone/tablet computer (i.e., computing device) comprises an
icon visible on a screen of the smart device representing a pushbutton switch
(col. 10, ll. 48–64; col. 32, ll. 60–67). Scalisi further teaches that activating
the icon on the screen of the smart device sends the Bluetooth signal from
the smart device to the receiver, which causes a certain action to occur (e.g.,
open a garage) (col. 10, ll. 48–64; col. 32, ll. 60–67). Furthermore, the
application comprises a security code, wherein entering the security code
into the application activates the application for use by a user (col. 17, l. 59–
col. 18, l. 2). In addition, the wireless receiver of the security system
comprises a changeable PIN (personal identification number) allowing the
administrator to add/delete a computing device (Fig. 24; col.14, ll. 53–67;
col. 18, ll. 1–2; col. 19, ll. 31–33; col. 32, ll. 32–67). Finally, Scalisi teaches
granting access when the embedded security code of the Bluetooth signal
matches the changeable PIN of the wireless receiver (Fig. 24; col. 19, ll. 13–
34; col. 18, ll. 1–2).5

5 The Specification explains that:
The app on the smart device 50 may present a user with a
simple interface for pairing the smart device 50 with the receiver
52 using the Bluetooth wireless protocol. To aid in the security
of the app and the receiver, the user may be presented with a
security code that he or she may be required to enter to access
the app and to control the function of a garage door via the app.
Thus, even if the smart device 50 falls into the wrong hands, a
would-be thief would be required to know the security code to
access the app. Simply having the smart device 50 would be of
no benefit without also knowing the security code. Of course,
any other security means may be utilized to ensure that the app
is not used by the wrong people, including PINs, biometric
security features, such as fingerprint scanners, retina scanners, or
other like security means.
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18

Based on the above disclosures, it would have been obvious to one
having ordinary skill in the art at the time the invention was made, to modify
Menard with the teaching and suggestions of Scalisi, to teach or suggest a
mobile smart device using an app and icon to activate a motor, wherein the
mobile smart device is selected from the group consisting of a smart phone
and a tablet computer, because in most cases, a user must use either the
proprietary remote control encoded for use with the particular opener or the
wired button usually affixed to a wall surface. However, if the remote
control is unavailable, then the user is inconvenienced and forced to use
other means to open the door (i.e., an alternate door) (see Menard ¶ 3; see
also Spec. ¶ 5).
Remaining Claims
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have made a rejection above under
37 C.F.R. § 41.50(b) for independent claim 2. However, we have not
reviewed the remaining claims to the extent necessary to determine whether
these claims are unpatentable under 35 U.S.C. § 103. We leave it to the

Indeed, security may be increased by forcing a user to
adopt a security code or other security means upon setting up the
app for use with the paired receiver. For example, upon setting
up the app and pairing with the receiver, the app may force a user
to change a default PIN to one of the user's choice. Moreover,
the PIN may be changeable at any time to increase security,
whether prompted by the user or automatically required by the
app. In addition, the app may block users from using easily-
hacked PIN choices, such as 1234 or 0000 or another like easily
discernible PIN choice.
Spec. ¶¶ 36–37.

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Examiner to determine the appropriateness of any further rejections based
thereon.

CONCLUSION
We reverse the Examiner’s obviousness rejections of claims 2–17
under 35 U.S.C. § 103 over the base combination of Sikora and Scalisi; and,
we enter a new ground of rejection under 35 U.S.C. § 103 over Menard and
Scalisi for claim 2.
For all of the reasons above, we hold as follows:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
2–17 103 Sikora, Scalisi 2–17
2 103 Menard, Scalisi 2
Overall
Outcome
2–17 2

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 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:
(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
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Application 15/312,438

20

reconsidered by the examiner, in which event the proceeding
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. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)