Ex Parte Arlein et alDownload PDFPatent Trial and Appeal BoardMay 11, 201512241699 (P.T.A.B. May. 11, 2015) 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. 12/241,699 09/30/2008 Robert Michael Arlein LCNT/129656 7527 46363 7590 05/12/2015 WALL & TONG, LLP/ ALCATEL-LUCENT USA INC. 25 James Way Eatontown, NJ 07724 EXAMINER HAILU, TADESSE ART UNIT PAPER NUMBER 2173 MAIL DATE DELIVERY MODE 05/12/2015 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 ____________ Ex parte ROBERT MICHAEL ARLEIN, JAMES ROBERT ENSOR, ROBERT DONALD GAGLIANELLO, MARKUS ANDREAS HOFMANN, and DONG LIU ____________ Appeal 2012-009042 Application 12/241,699 Technology Center 2100 ____________ Before JEFFREY N. FREDMAN, CHRISTOPHER G. PAULRAJ, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the decision entered March 17, 2015 (“Decision”), which affirmed the Examiner’s rejection of claims 1–7 and 11–20 as anticipated by Dresti1 and the rejections of claims 8, 9, and 10 as obvious over Dresti in view of Hope2 (claim 8), Zhang3 (claim 9), or Baugh4 (claim 10). Appellants contend that we misapprehended or overlooked 1 Dresti et al., US 2003/0103088 Al, published on June 5, 2003. 2 Hope et al., US 2009/0153289 Al, published on June 18, 2009. 3 Zhang et al., US 2004/0095317 Al, published on May 20, 2004. 4 Baugh et al., US 2009/0322582 Al, published on December 31, 2009. Appeal 2012-009042 Application 12/241,699 2 certain limitations in independent claims 1, 19, and 20. Req. Reh’g 2–3. We find no point of law or fact that we overlooked or misapprehended in arriving at our Decision. DISCUSSION Appellants raise three issues in their request for rehearing. We address each in turn below. First, Appellants assert that we erred in holding that turning on a television in Dresti is the “selected item” of claim 1. Req. Reh’g 2. Specifically, Appellants contend that the act of turning on a television is not a “selected item” and is not transferred to the television as required by the claim. Id. Rather, Appellants contend that selection of a device icon in Dresti only results in a transfer of a control signal, which is not a “selected item” as claimed. Id. In response, we first note that this is a new argument that was not previously raised in Appellants’ briefs, and thus it is not appropriately raised in a request for rehearing. See 37 C.F.R. § 41.52(a)(1). Second, even if it were appropriately raised, we nonetheless find this argument unpersuasive. Appellants have not provided any reason why the control signal for turning on a television cannot be a “selected item” as claimed. We find that the control signal can reasonably be considered as the “selected item” under the broadest reasonable interpretation of the claim. Second, Appellants assert that we erred in holding that Dresti discloses identifying a second device based on a spatial relationship. Req. Reh’g 2. We find that this argument merely re-phrases arguments that we previously considered and addressed. Specifically, Appellants argue that Dresti does not use a spatial relationship as a basis for identifying the second device. Id. Appellants previously argued that “[t]here is no indication in the Appeal 2012-009042 Application 12/241,699 3 cited portions of Dresti of knowledge of or use of information indicative of the spatial relationship between [first and second devices].” App. Br. 17. We fully addressed this argument in our Decision, in which we found that Dresti requires a spatial relationship in order to transmit IR-based commands to the second device, which necessarily incorporates identification of the second device under the broadest reasonable interpretation of the claim. See Decision 6. Finally, Appellants assert that we erred in holding that the selection of a power button or channel button results in a control signal that transfers the selected item to the second device. Req. Reh’g 3. Specifically, Appellants argue that the button on Dresti’s device is not transferred and that the control signal that is transferred to the second device is not the “selected item” as claimed. Id. We find this argument unpersuasive for the same reasons identified with respect to Appellants’ first argument, discussed above. Specifically, Appellants have not provided any reason why the control signal for turning on a television, which is selected by selecting the power button, cannot be a “selected item” as claimed. CONCLUSION We have carefully reviewed the original Decision in light of Appellants’ request, but we find no point of law or fact that we overlooked or misapprehended in arriving at our decision. Therefore, Appellants’ request for rehearing is denied. DENIED cdc Copy with citationCopy as parenthetical citation