Ex Parte 7782309 et alDownload PDFPatent Trial and Appeal BoardDec 13, 201395001759 (P.T.A.B. Dec. 13, 2013) Copy Citation 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. 95/001,759 10/05/2011 . 7782309 91223-818262(089300US) 6449 34018 7590 12/13/2013 GREENBERG TRAURIG, LLP (CHI) 77 WEST WACKER DRIVE SUITE 3100 CHICAGO, IL 60601-1732 EXAMINER RALIS, STEPHEN J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/13/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ LOGITECH INC. Requester v. UNIVERSAL ELECTRONICS Patent Owner and Appellant ____________________ Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. US 7,782,309 B2 1 Technology Center 3900 ____________________ Before JAMES T. MOORE, JOHN A. JEFFERY, and MARC S. HOFF, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL 1 Issued August 24, 2010 to Craig M. Janik and assigned to Universal Electronics Inc. (the “309 patentâ€). The „309 patent issued from Appl. 12/103,895 filed April 16, 2008. Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. 7,782,309 B2 2 STATEMENT OF THE CASE Patent Owner, Universal Electronics, appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1-76 as set forth in the Right of Appeal Notice (“RANâ€) mailed November 2, 2012. Requester Logitech Inc. did not file a Respondent Brief. The Examiner mailed an Examiner‟s Answer on May 7, 2013, which incorporated the RAN by reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm-in-part. The „309 patent concerns a universal controlling device (“UCDâ€) having a touch-sensitive display. The display provides one or more graphical user interfaces comprised of graphical user interface (“GUIâ€) icons that are selectable via the touch-sensitive display. The display accepts motions made by a stylus or finger in contact with the touch-sensitive display. The different interactions with the touch-sensitive display are used to cause the transmission of respective data to one or more appliances (Abstract). Claim 1 is exemplary of the claims on appeal: 1. A method for using a universal controlling device comprised of a display having a touch-sensitive surface to transmit data to one or more appliances located remotely from the controlling device, comprising: causing one or more graphical user interfaces comprised of graphical user interface icons to be displayed in the display of the universal controlling device; accepting via the touch-sensitive surface of the universal controlling device a first input type indicative of a selection of a displayed graphical user interface icon; Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. 7,782,309 B2 3 causing the universal controlling device to transmit to the one or more appliances first data representative of the displayed graphical user interface icon selected by the first input type; accepting via the touch-sensitive surface of the universal controlling device a second input type indicative of a motion made across the touch- sensitive surface; causing the universal controlling device to transmit to the one or more appliances second data representative of the motion made across the touch- sensitive surface provided by the second input type; and causing the universal controlling device to distinguish the first input type received via the touch-sensitive surface from the second input type received via the touch-sensitive surface. The Examiner relies upon the following prior art in rejecting the claims on appeal: Yates et al. (“Yates „131â€) US 2002/0118131 A1 Aug. 29, 2002 Yates et al. (“Yates „803â€) US 6,750,803 B2 Jun. 15, 2004 Segal et al. (“Segalâ€) US 6,765,557 B1 Jul. 20, 2004 Suomela US 6,885,362 B2 Apr. 26, 2005 Flowers US 4,578,671 Mar. 25, 1986 Hills et al. (“Hillsâ€) US 5,506,572 Apr. 9, 1996 Giger et al. (“Gigerâ€) US 7,411,515 B2 Aug. 12, 2008 Mazza et al. (“Mazzaâ€) US 2002/0070915 A1 Jun. 13, 2002 Yu et al. (“Yuâ€) US 6,980,120 B2 Dec. 27, 2005 Arling et al. (“Arling „077â€) US 6,629,077 B1 Sep. 30, 2003 Hayes (“Hayes „161â€) US 7,046,161 B2 May 16, 2006 Hayes et al. (“Hayes „571â€) US 2002/0140571 A1 Oct. 3, 2002 Dresti et al. (“Drestiâ€) US 7,831,930 B2 Nov. 9, 2010 Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. 7,782,309 B2 4 Van Ryzin et al. (“Van Ryzinâ€) US 6,255,961 B1 Jul. 3, 2001 Harris et al.(“Harrisâ€) US 6,784,805 B2 Aug. 31, 2004 Hayes (“Hayes „247â€) US 6,650,247 B1 Nov. 18, 2003 Arling et al. (“Arling „241â€) US 6,788,241 B2 Sep. 7, 2004 Goldstein US 5,410,326 Apr. 25, 1995 May US 5,105,186 Apr. 14, 1992 Claims 1, 2, 5-8, 24, 25, 27-29, 31, 32, 35, 39, 40, 43-46, 62, 63, 65- 67, 69, 70, and 73 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Yates „131. Claims 1, 2, 5-8, 24, 25, 27-29, 31, 32, 35, 39, 40, 43-46, 62, 63, 65- 67, 69, 70, and 73 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Yates „803. Claims 3, 4, 15, 33, 36, 41, 42, 53, and 71 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yates „131 in view of Segal. Claims 9, 28, 47, and 66 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yates „131 in view of May and Goldstein. Claims 10-13, 30, 48-51, and 68 under 35 U.S.C. § 103 (a) as being unpatentable over Yates „131 or Yates „803 in view of Arling „241. Claims 16 and 54 under 35 U.S.C. § 103 (a) as being unpatentable over Yates „131 or Yates „803. Claims 17 and 54 U.S.C. under 35 U.S.C. § 103(a) as being unpatentable over Yates „131 or Yates „803 in view of Flowers, Hills or Giger. Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. 7,782,309 B2 5 Claims 18, 26, 56 and 64 under 35 U.S.C. § 103(a) as being unpatentable over Yates „131 or Yates „803 in view of Flowers, Hills or Giger. Claims 19 and 57 under 35 U.S.C. § 103(a) as unpatentable over Yates „131 or Yates „803 in view of Mazza. Claims 20 and 58 under 35 U.S.C. § 103(a) as unpatentable over Yates „131 or Yates „803 in view of Arling. Claims 21 and 59 under 35 U.S.C. § 103(a) as unpatentable over Yates „131 or Yates „803 in view of Hayes „161 or Hayes „571. Claims 22, 37, 67, and 82 under 35 U.S.C. § 103(a) as unpatentable over Yates „131 or Yates „803 in view of Arling „241 or Hayes „161. Claims 23 and 61 under 35 U.S.C. § 103(a) as unpatentable over Yates „131 or Yates „803 in view of Arling „241 or Hayes „161. Claims 33 and 71 under 35 U.S.C. § 103(a) as unpatentable over Yates „131in view of Van Ryzin. Claims 34 and 72 under 35 U.S.C. § 103(a) as unpatentable over Yates „131in view of Van Ryzin. Claims 38 and 76 under 35 U.S.C. § 103(a) as unpatentable over Yates „131in view of Van Ryzin. Claims 16 and 39-76 stand rejected under 35 U.S.C. § 112, first paragraph. 2 2 The Examiner‟s Answer mailed May 7, 2013 refers to the rejection under § 112, first and second paragraphs, of claims 16, 54, and 39-76 (Ans. 4). The Patent Owner‟s Appeal Brief filed January 18, 2013 states that Appellant does not seek review of the rejections under § 112, first and second paragraphs, of claims 16, 54, and 39-76. The Right of Appeal Notice mailed Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. 7,782,309 B2 6 Claims 16 and 39-76 stand rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which Appellants regard as their invention. ISSUE Appellants argue, inter alia, that Yates „131 does not expressly or inherently disclose a method for using a UCD comprised of a display having a touch-sensitive surface, comprising accepting via the touch-sensitive surface of the UCD a first input type indicative of a selection of a displayed GUI icon, accepting via the touch-sensitive surface of the UCD a second input type indicative of a motion made across the touch-sensitive surface, and causing the UCD to distinguish the first input type received via the touch-sensitive surface from the second input type received via the touch- sensitive surface (App. Br. 7-9). Appellants‟ contentions present us with the following issue: Does Yates „131 expressly or inherently disclose a method for using a UCD comprising accepting a first input type indicative of a selection of a displayed GUI icon, accepting a second input type indicative of a motion made across the touch-sensitive surface, and causing the UCD to distinguish the first input type from the second input type? November 2, 2012, however, only refers to the rejections of claims 16 and 54. Because the Appeal Brief and Examiner‟s Answer concur in the impression that the rejection of claims 39-76 has not been withdrawn, we treat claims 39-76 as standing rejected under § 112, first and second paragraphs. Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. 7,782,309 B2 7 PRINCIPLES OF LAW “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.†In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). "Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). ANALYSIS § 102 REJECTION OF CLAIMS 1, 2, 5, 24, AND 35 OVER YATES „131 OR YATES „803 The Examiner finds that Yates „131 teaches a method for using a UCD to transmit data to one or more appliance comprising, inter alia, causing the UCD to distinguish the first input type (i.e., indicative of a selection of a displayed graphical user interface icon) provided to the touch- sensitive surface from the second input type (i.e., indicative of a motion made across the touch-sensitive surface) received via the touch-sensitive surface, as claim 1 recites (Ans. 8-9). The Examiner reads remote control 12 of Yates „131 as corresponding to the claimed UCD (Ans. 9). Remote control 12 must therefore either expressly or inherently distinguish the first input type received via the touch- Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. 7,782,309 B2 8 sensitive surface from the second input type received via the touch-sensitive surface to anticipate the claimed invention. We do not agree with the Examiner‟s finding that remote control 12 of Yates „131 inherently distinguishes the first input type from the second input type. The Examiner acknowledges that Yates „131 does not expressly disclose the claimed distinguishing, but contends that “single control signal 30 must have some kind of information thereon . . . to allow the controller 14 to discriminate the single control signal 30 from various other possible single control signals to communicate with the appropriate appliance device†(Ans. 9). We agree with Appellants that remote control 12 of Yates „131 need not necessarily “transmit . . . first data that is representative of the one of the plurality of graphical user interface icons selected by the first input type and second data that is representative of the motion made across the touch- sensitive surface provided by the second input type distinguishable from the first input type as is required of inherency†(App. Br. 9-10). Appellants argue, and we agree, that remote control 12 “does not and need not necessarily transmit to the controller 14 anything more than the expressly described data indicative of the location of a touch on the touch pad 28 when input is provided to the touch pad 28†(App. Br. 12). The Examiner notes that Yates teaches switch 76 delineates the mode of operation of the remote control 12 (Ans. 13), as “absolute†or “relative†mode (Ans. 15). The Examiner argues that relative/absolute mode information is necessarily part of the “single control signal 30†transmitted by remote Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. 7,782,309 B2 9 control 12 (Ans. 15). The Examiner states that nowhere does Yates „131 disclose a separate signal being sent by remote control 12, in addition to signal 30, to control at least one appliance or device (Ans. 16-17). The Examiner concludes that since Yates „131 discloses only the “single signal 30 providing information to the controller 14 and the controller 14 must inherently differentiate between mode and X/Y coordinate information simultaneously for operation of the at least one appliance/device†(Ans. 17), Yates teaches a UCD in accordance with the claimed invention. We do not agree with the Examiner‟s position. Rather, we are persuaded by Appellants that in Yates „131, “the same data – i.e., the data that is representative of a location of a touch on the touch pad 28 – is expressly described as being transmitted as appropriate in response to any type of touch on the touch pad 28†(App. Br. 16). We further agree that in Yates, remote control 12 “does not distinguish between any different input types provided to the touch pad 28. Rather, the controller 14 will respond to the data that is ubiquitously transmitted in the signal 30, i.e., the data indicative of the location of the touch on the touch pad 28, in a manner that will depend upon the current operating mode of the system/controller 14†(App. Br. 16; emphasis added). Because we find that controller 14 of Yates „131, not remote control 12, is the component charged with distinguishing between modes of operation, we find that Yates „131 does not teach all the limitations of independent claim 1. We will not sustain the Examiner‟s § 102 rejection of claims 1, 2, 5, 24, and 35 over Yates „131. Because Yates „803 results from Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. 7,782,309 B2 10 the same patent application as Yates „131, we will also not sustain the § 102 rejection of claims 1, 2, 5, 24, and 35 over Yates „803, for the same reasons. § 103 REJECTION OF CLAIM 3 OVER YATES „131 IN VIEW OF SEGAL As noted supra, we find that Yates „131 does not teach all the limitations of independent claim 1. We have reviewed Segal and find that it does not supply the teachings missing from Yates „131. Therefore, we will not sustain the § 103 rejection of claim 3 over Yates „131 in view of Segal. CLAIMS 4, 6-23, 25-34, AND 36-76 Each of these claims depends from independent claim 1. As noted supra, we do not sustain the rejection of independent claim 1.We have reviewed the further references applied against these claims and we find that they do not remedy the deficiencies of Yates „131 or Yates „803. Therefore, we will not sustain the Examiner‟s rejection of claims 4, 6-23, 25-34, and 36-76. § 112 REJECTION OF CLAIMS 16 AND 39-76 These claims stand rejected under 35 U.S.C. § 112, first paragraph, and 35 U.S.C. § 112, second paragraph. Appellants presented no arguments contesting the rejection (App. Br. 5). Accordingly, we will sustain pro forma the Examiner‟s § 112 rejection of claims 16 and 39-76. CONCLUSIONS Yates „131 does not expressly or inherently disclose a method for using a UCD comprising accepting a first input type indicative of a selection Appeal 2013-009716 Reexamination Control 95/001,759 Patent No. 7,782,309 B2 11 of a displayed GUI icon, accepting a second input type indicative of a motion made across the touch-sensitive surface, and causing the UCD to distinguish the first input type from the second input type. ORDER The Examiner‟s rejection of claims 16 and 39-76 is affirmed. The Examiner‟s rejection of claims 1-15 and 17-38is reversed. AFFIRMED-IN-PART alw Patent Owner: GREENBERG TRAURIG, LLP (CHI) 77 WEST WACKER DRIVE SUITE 3100 CHICAGO, IL 60601-1732 Third Party Requester: KILKPATRICK TOWNSEND & STOCKTON LLP TWO EMBARCADERO CENTER EIGHTH FLOOR SAN FRANCISCO, CA 94111-3834 Copy with citationCopy as parenthetical citation