Ex Parte Beals

Patent Trial and Appeal Board

Sep 27, 2016

12619591 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/619,591 11/16/2009
70336 7590 09/27/2016
Seed IP Law Group LLP/EchoStar (290110)
701 FIFTH A VENUE
SUITE 5400
SEATTLE, WA 98104
FIRST NAMED INVENTOR
William Michael Beals
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P2009-08-19 (290110.501) 8912
EXAMINER
KHALID, OMER
ART UNIT PAPER NUMBER
2422
MAILDATE DELIVERY MODE
09/27/2016 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 WILLIAM MICHAEL BEALS
Appeal2015-005260
Application 12/619,591
Technology Center 2400
Before DENISE M. POTHIER, JOHN P. PINKERTON, and
SCOTT E. BAIN, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20. See App. Br. 6. 1 We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.
1 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
October 13, 2014, (2) the Examiner's Answer (Ans.) mailed February 11,
2015, and (3) the Reply Brief (Reply Br.) filed April 13, 2015.
Appeal2015-005260
Application 12/619,591
Invention
Appellant's invention relates "to a set-top box or other single
electronic component that may associate a control device with an output
component via an identification signal." See Spec. i-f 1. Claim 1 is
reproduced below with emphasis:
1. A method comprising:
receiving, by a first component, a pairing signal from the remote;
upon receiving the pairing signal, transmitting an identification signal
from the first component to a second component, the identification signal
including identification information identifYing at least the first component;
and
associating the remote with at least one of the first and second
components by outputting from the second component the identification
information.
The Examiner relies on the following as evidence of unpatentability:
Suzuki
Bennett
Hicks
Candelore
US 2004/0143847 Al
US 2007/0124765 Al
US 7,782,407 B2
US 8 319 900 B2
' '
The Rejections
July 22, 2004
May 31, 2007
Aug. 24, 2010
Nov. 27, 2012
Claims 1-10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hicks, Candelore, and Suzuki. Ans. 5-8.
Claims 11-15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bennett, Hicks, and Candelore. Ans. 8-11.
Claims 16-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bennett and Candelore. Ans. 11-14.
2
Appeal2015-005260
Application 12/619,591
THE OBVIOUSNESS REJECTION OVER HICKS,
CANDELORE, AND SUZUKI
Appellant contends that Hicks is silent regarding "receiving ... a
pairing signal" and Suzuki fail to teach this limitation. App. Br. 8, 11.
Appellant also asserts that "[n]othing in Hicks is believed to teach or suggest
... [']transmitting an identification signal from the first component to a
second component, the identification signal including identification
information identifying at least the first component', as recited in claim 1."
App. Br. 8. Appellant further contends that Candelore and Suzuki do not
remedy these purported deficiencies. App. Br. 9-10.
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that Hicks, Candelore, and Suzuki collectively would have taught or
suggested:
(1) "transmitting an identification signal from the first component to a
second component, the identification signal including identification
information identifying at least the first component" and
(2) "receiving, by a first component, a pairing signal from the
remote"?
ANALYSIS
Based on the record before us, we are not persuaded the Examiner
erred in rejecting claim 1. As a preliminary matter, Appellant indicates, and
we agree, that the Examiner has taken inconsistent positions related to what
in Hicks is mapped to the remote, the first component, and the second
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Appeal2015-005260
Application 12/619,591
component as recited. Reply Br. 5---6. At one point, the Examiner maps
television 100 to the first component and remote control unit 110 to the
second component (Ans. 3); at another point, the Examiner maps remote
control unit 110 to the remote, the television's receiver (e.g., 108) to the first
component, and the television's logic (e.g., 104) to the second component
(Ans. 5); at yet a further point, the Examiner maps the DVD or VCR to the
first component and the television to the second component (Ans. 16).
Because the appeal is taken from the rejection, we analyze the
Examiner's position presented in the Non-Final Action ("Non-Final Act.")
mailed August 14, 2013 for purposes of this discussion.2'3 Furthermore,
Appellant notes the "additional evidence" discussed by the Examiner. Reply
Br. 6; Ans. 16. This evidence was not relied upon in the rejection and is not
therefore before us. See In re Hoch, 428, F.2d 1341, 1342 n.3 (CCPA 1970)
("Where a reference is relied on to support a rejection, whether or not in a
'minor capacity,' there would appear to be no excuse for not positively
including the reference in the statement of the rejection.") We thus focus on
the rejection presented in the Non-Final Action mailed August 14, 2013
based on Hicks, Candelore, and Bennett (Non-Final Act. 3--4) and repeated
in the Examiner's Answer (Ans. 5-6).
Regarding the disputed "transmitting" step, Appellant misstates how
the Examiner maps the recited first component and the recited second
component. See App. Br. 8; Reply Br. 5. As discussed below in more
detail, the Examiner has not mapped Hicks' television in its entirety (e.g.,
2 See 35 U.S.C. § 134(a); 37 C.F.R. § 41.31.
3 The Examiner indicated in the September 11, 2014 Action (PT0-90C) that
the rejection in the Non-Final Action was maintained in the Final Action.
4
Appeal2015-005260
Application 12/619,591
100) to the first component and Hick's DVD or VCR (e.g., 14, 15) to the
second component. Rather, the Examiner determines that Hicks teaches
"transmitting an identification signal from the first component to a second
component," recited in claim 1 during the process of remote control unit 110
transmitting a "stop" code to television set 100, receiver 108 receiving the
code, and television logic 104 determining which peripheral device is
currently being displayed on the television. Non-Final Act. 3; Ans. 5 (citing
Hicks, Figure 2 and noting remote control unit 110 is coupled to television
set 100). That is, the Examiner maps Hicks' television receiver (e.g., 108) to
the recited first component and Hicks' television logic (e.g., 104) to the
recited second component. See id. As broadly as recited, we determine that
these mappings to the recited "components" are reasonable.
Figure 2 of Hicks is shown below.
FIGURE 2
110
Figure 2 showing a communication system
with a remote, television, and peripheral device.
5
/ 100
Appeal2015-005260
Application 12/619,591
Figure 2 of Hicks shows above communication between remote
control unit 110 and television 100 at signals 121 and 122. Hicks, Fig. 2.
For example, the accompanying disclosure of Figure 2 relates to
transmissions concerning the "stop" button as discussed by the Examiner in
the rejection. Non-Final Act. 3; Ans. 5. Here, Hicks explains the user
presses a button (e.g., "stop" button) on remote control unit 110 in step 1.
Hicks 3:47-50, Fig. 5. Next, in step 2, remote control unit 110 transmits a
"stop" code to television set 100 (e.g., signal 122). Hicks 3:40-43, 51-52,
Fig. 5.
At step 3, television set 100 receives the "stop" code at receiver 108
(e.g., a first component). Hicks 3:52-54, Figs. 3, 5. Figure 3 of Hicks is
shown below.
~110
Trans
Repeater
Receiver _
Remote \
1
112
/
/
/
./
\_ 116 \_-114
" /
,.-·
r- - - -.- -· - - - -,
1 Peripheral 1
: Devices :
----/.,------
/
/
,.
/
./
_ _,,,.-
_.,
- /-- 108
.....
(J)
>
'[i
(.)
Q)
[)'.'.
-
-
'-
Q) -.E
CJ)
c
ro
'- \_
f- ' ,____ ~-109
I
('-- 102
CPU
( 106
Memory
Logic
l
TV
Figure 3 showing internal components of television 100.
104
At this point and as presented by the Examiner (see Non-Final Act. 3; Ans.
5), Hicks teaches a code is received by a first component (e.g., television
set's receiver 108) from a remote (e.g., 110).
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Application 12/619,591
In step 4, television logic 104 (e.g., a second component) shown in
Figure 3 identifies the peripheral device being displayed on television 100.
Hicks 3:52-56, Figs. 3, 5. The Examiner determines that this
"identification" teaches transmitting an identification signal from the first
component to a second component. Non-Final Act. 3; Ans. 5. However, no
specifics are provided regarding how logic 104 identifies the peripheral
device, such that Hicks discloses explicitly "an identification signal" is
transmitted "from the first component" (e.g., receiver 108) to a second
component" (e.g., logic 104). See Hick 3:54--56, 4:7-9, Figs. 3, 5.
Yet, in order for step 4 to follow from step 3, we determine that one
skilled in the art would have recognized that a signal is transmitted from
receiver 108 to logic 104 between steps 3 and 4. See id. For example,
Figure 3 in Hicks shows circuitry including a line connecting receiver 108 to
CPU 102 that contains logic 104 so the components can communicate with
each other. Moreover, some communication between the receiver 108 and
logic 104 must occur in order for the logic to know to begin to identify the
peripheral device in step 4 after receiving a "stop" code. Thus, Hicks
teaches and suggests to one skilled in the art transmitting an identification
signal from a first component (e.g., receiver 108) to a second component
(e.g., logic 104) so that the logic can perform step 4. See id.
But, the disclosure does not discuss what type of signal (i.e., an
"identification signal including identification information identifying at least
the first component") is transmitted as recited. 4 Even so, the Examiner
4 Notably, Hicks incorporates by reference U.S. Application No. 10/138,702,
which has issued as U.S. Patent No. 7,814,516 B2 (the '516 patent), and
states step 4 is described greater in this application. Hicks 3 :58---60.
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Appeal2015-005260
Application 12/619,591
further relies on Candelore to teach the immediately above-quoted
limitation. Ans. 6 (citing Candelore, Figs. 3, 7 and discussing the television
sending a challenge to the remote control). Appellant agrees that Candelore
teaches a television sending a challenge to a remote but argues that there is
no signal transmission between the television and a second component, such
as DVD player. App. Br. 9-10. As noted above, the Examiner relies on
Hicks for the transmission between the first and second component and
Candelore for the type of signal transmitted between the recited components.
Also, Appellant does not challenge (App. Br. 9-10) the Examiner's
finding that Candelore teaches the identification signal identifies at least the
first component (Ans. 6 (discussing the challenge process in Candelore's
Figure 3 that involves transmitting a global key)). Nor does Appellant
challenge the Examiner's rationale for combining the references in the
Appeal Brief. See App. Br. 8-10. We thus determine that the
Hicks/Candelore combined method includes transmitting an identification
signal, including identification information identifying the first component,
from a first component to a second component, as recited. See Non-Final
Act. 3--4; Ans. 5---6.
Concerning the disputed "receiving . . . a pairing signal from the
remote" limitation, Appellant contends that Hicks is silent on this feature
and Suzuki fails to teach this limitation. App. Br. 8, 11. We disagree.
Identity of terminology between Hicks and the claim language is not
required to teach the limitations in claim 1. See In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990). Moreover, the disclosure discusses "pairing" as a
However, the rejection does not rely on this portion of Hicks. Non-Final
Act. 3--4.
8
Appeal2015-005260
Application 12/619,591
process between the remote and set top box and provides an example. Spec.
i-fi-1 5---6, 22. But, the disclosure does not define "a pairing signal" with
sufficient clarity such that we are limited to this example.
Hicks teaches remote control unit 110 can send and receive
information to television set 100. Hicks 3:9-13. As such, Hicks
communicates with the television and more specifically, its transmitter and
receiver (e.g., 108, 109), to send and receive information. See id. at Figs.
2-3. For example, when discussing the step of "transmitting" a signal,
Hicks' steps 1 through 3 demonstrate that a command is sent by the remote
and received by the television's receiver. Hicks 3:46-54. The Examiner
additionally finds that Hicks discusses a pairing signal and specifically that
"control 110 is paired with the television 100, or else it could not control the
device(s)." Ans. 15. We agree, and Appellant has not provided a persuasive
rebuttal to these findings.
Appellant further contends, because Hicks does not teach the first
component transmitting an identification signal to a second component,
Hick does not teach the recited "associating" and "outputting" steps in
claim 1. App. Br. 10. We are not persuaded for the reasons already
discussed- namely, the Examiner has mapped the television's receiver
and logic in Hicks to the recited first and second components and, as
explained above, Hicks and Candelore teach how an identification signal
is transmitted between these components. We further note that the
rejection relies on Suzuki in combination with Hicks and Candelore to
teach the "associating" step. See Non-Final Act. 3--4; Ans. 6.
For the first time in the Reply Brief, Appellant argues that the
Examiner has not provided a sufficient rationale for combining the
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Appeal2015-005260
Application 12/619,591
references. Reply Br. 7. Such arguments are waived. See 37 C.F.R.
§ 41.41 (b )(2). Moreover, Appellant has not provided sufficient explanation
of the Examiner's alleged error regarding the rationale.
For the foregoing reasons, we sustain the Examiner's rejection of
independent claim 1, and of claims 2-10, which were not separately argued.
THE OBVIOUSNESS REJECTION OVER BENNETT, HICKS,
AND CANDELORE
Independent claim 11 has been rejected based on Bennett, Hicks, and
Candelore. Non-Final Act. 6-8; Ans. 8-10. As a preliminary matter,
Appellant notes that, in the Final Action, the Examiner states claim 11 "is
rejected for at least the same reason from rejected claim 1." Final Act. 3
(bolding omitted), cited in App. Br. 11. Appellant questions whether the
ground has changed. App. Br. 11. Although not precisely stated, we
determine that the Examiner's statement concerning the "same reason" relate
to the reasons concerning Hicks and Candelore' s teachings, for which both
the rejections of claim 1 and 11 rely. We thus also determine the ground for
claim 11 remains the same as that presented in the Non-Final Action. Non-
Final Act. 6-8; September 11, 2014 PT0-90C (indicating "the grounds of
the Non-Final rejection" are maintained in the Final Action).
Similar to claim 1, claim 11 recites "transmitting a control command
from a remote, the control command configured to cause a first component
to transmit a first identification signal to a second component, the first
identification signal including information identifying the first component."
The Examiner admits Bennett does not teach this feature, but relies on
Hicks, referring to the same "stop" button scenario in Hicks as discussed
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Appeal2015-005260
Application 12/619,591
when addressing claim 1. Ans. 9-10. Similar to claim 1, the Examiner
further relies on Candelore to teach the identification signal includes
information identifying the first component. Ans. 10.
Appellant argues that Hicks and Candelore fail to teach the recited
feature "as set forth in detail above." App. Br. 12. For the above reasons,
we are not persuaded. We further note that claim 11 does not recite "a
pairing signal." Thus, any arguments concerning pairing and Bennett are not
relevant to claim 11. See id.
Appellant also asserts that "[f]or at least the same reasons, Hicks and
Candelore are not understood to teach or suggest" (App. Br. 12) the recited
"detecting" and "reconfiguring" steps. Id. We are not persuaded for the
reasons previously stated.
Lastly, for the first time in the Reply Brief, Appellant argues that the
Examiner has not provided a sufficient rationale for combining the
references to arrive at the claimed invention. Reply Br. 7. Such arguments
are waived. See 37 C.F.R. § 41.41(b)(2). Moreover, Appellant has not
provided sufficient explanation of the Examiner's alleged error regarding the
rationale.
For the foregoing reasons, we sustain the Examiner's rejection of
independent claim 11, and of claims 12-15, which were not separately
argued.
THE OBVIOUSNESS REJECTION OVER BENNETT
AND CANDELORE
We reach the opposite conclusion for independent claim 16. For this
rejection, the Examiner relies on Bennett and Candelore in the Non-Final
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Application 12/619,591
Action to reject claim 16. Non-Final Act. 9-11. Hicks, however, also is
discussed in the record before us.
Appellant argues Hicks is not part of the rejection. App. Br. 13. In
the Final Action, the Examiner responds to Appellant's argument related to
claim 16 by discussing Hicks. Final Act 3, cited in App. Br. 13. In the
Answer, the Examiner does not mention Hicks, relying instead on Bennett
and Candelore. Ans. 11-13. However, we note that the body of the
rejection further discusses Suzuki to address the "configured to cause the
remote to pair" limitation is "well known." Non-Final Act. 10 (underlining
and bolding omitted); Ans. 12. Taking the evidence as a whole and despite
the Examiner's statement that the grounds in the Non-Final Action are being
maintained (Ans. 17; September 11, 2014 PT0-90C), the record is still not
clear as to which references are relied upon in the rejection of claim 16.
Accordingly, we review the rejection based solely on Bennett and
Candelore. Non-Final Act. 9-11.
On the record before us, Appellant has persuaded of error. In
particular, the rejection cites Bennett and Candelore to teach the recitation of
"a transmitting element ... operative ... to transmit a signal including the
identification code for display on a display device separate from the remote,
the signal being configured to cause the remote to pair with at least one of
the apparatus and the display device when displayed on the displayed
device." Ans. 12 (citing Bennett i-f 58). Appellant asserts that neither the
television nor the set top box taught by Bennett transmit the code for display
on a display device. App. Br. 13. We agree.
The Examiner's only explanation of how Bennett teaches the
above-disputed feature is found in the rejection presented in the Non-Final
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Action and repeated in the Examiner's Answer. Non-Final Act. 10; Ans. 12.
Here, the Examiner cites to paragraph 58 of Bennett and describes the
infrared transmitters/receivers. Id. Bennett also states devices 221, 223, and
225 can communicate with each other through the remote using infrared
signals. Bennett i-f 58. Bennett illustrates a transmitting element (e.g., a
transmitter/receiver of device 221, 223, or 225), but fails to discuss the
further recitation that the transmitting element is operative "to transmit a
signal including the identification code for display on a display device," as
recited.
Appellant also contends that Bennett does not teach this displayed
signal being configured to cause a remote to pair a device when the signal is
displayed on the displayed device as recited. App. Br. 14. As for this
limitation, we cannot discern whether the Examiner relies on Bennett or
Suzuki or some combination of these references. See Non-Final Act. 10;
Ans. 12. Moreover, the Examiner does not provide a reason to combine
Suzuki's teaching with Bennett to arrive at the claimed invention. Ans.
12-13.
For the foregoing reasons, we do not sustain the Examiner's rejection
of independent claim 16 and its dependent claims 17-20.
DECISION
We affirm the Examiner's rejection of claims 1-15 under§ 103.
The reverse the Examiner's rejection of claims 16-20 under§ 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
13