Ex Parte Black et al

Patent Trial and Appeal Board

Aug 9, 2017

13542146 (P.T.A.B. Aug. 9, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
81230.132US2 7788
EXAMINER
KEATON, SHERROD L
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
13/542,146 07/05/2012
7590
Ring
c/o Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
Jeremy Black
08/11/2017 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
escobedot@gtlaw.com
j arosikg @ gtlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY BLACK and PATRICK H. HAYES
Appeal 2016-007690
Application 13/542,1461
Technology Center 2100
Before BRUCE R. WINSOR, JOHN F. HORVATH, and
KIMBERLY McGRAW, Administrative Patent Judges.
WINSOR, Administrative Patent Judge
DECISION ON REQUEST FOR REHEARING
Appellants timely request rehearing under 37 C.F.R. § 41.52 (2015) of
the Decision2 of June 2, 2017, wherein this panel sustained the Examiner’s
rejection of the appealed claims 1 and 3—15, which constitute all the claims
pending in this application.
Rehearing is denied.
1 The real party in interest identified by Appellants is Universal Electronics
Inc. App. Br. 2.
2 We note that, in a typographical error, we misidentified the Office Action
mailed June 5, 2015 as non-final. Compare Decision 1, with Final Act. 1,
and with Decision 4.
Appeal 2016-007690
Application 11/542,146
ANALYSIS
Appellants contend as follows:
[T]he Board misapprehended or overlooked Appellant's
argument that the rejection of the claims under 35 U.S.C. § 103
overNiwamoto (US Patent No. 7,631,197) in view of Arling (US
Publication No. 2005/0097618) in further view ofNakajima (US
Publication No. 2003/0095211) cannot be maintained because no
reference of record discloses, teaches, or suggests a tag file that
comprises both a definition of a controllable device and a listing
of one or more commands to be transmitted directly to that
controllable device as recited in the claims at issue.
Request3 1—2 (emphases in original). More particularly, Appellants contend
we erred by concluding the broadest reasonable interpretation of “tag file”
encompasses “a data structure that defines the action to be taken by the slave
relay station, such as the command to be transmitted to a controllable
device, upon receipt of a control command (e.g., activation of an HTML tag)
from a client/control device.” Id. at 2 (quoting Decision 6) (emphasis in
Request).
Appellants argue we failed to give meaning to all of the claim’s terms
because we did not incorporate the claim’s recitation of “both a definition of
a controllable device and a listins of one or more commands to be
transmitted directly to that controllable device’ '' into the construction of tag
file. Id. (citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir.
2006); Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1119 (Fed. Cir. 2004)) (emphases in Request). We disagree.
Were we to have construed the term “tag file” to include all of the recited
further limitations on the recited “tag file” we would have rendered the
3 Request for Rehearing filed July 27, 2017.
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Appeal 2016-007690
Application 11/542,146
recitation of those further limitations as mere surplusage. Instead we looked
to Appellants’ Specification to ascertain those features of a “tag file” that
define it as a “tag file.” See Decision 6 (citing Spec. 18:8—18).
Although we did not construe the term “tag file,” as including the
further limitations on a tag file recited in the claim, we did not disregard
those limitations. Rather, we agreed with the Examiner that the combination
of Arling and Nakashima taught the “tag file” and its further limitations. Id.
at 7—8 (citing In re Keller, 642 F.2d 413, 426 (CCPA 1981)). In particular,
we found that “Arling teaches a data structure that defines the command to
be transmitted to a controllable device, upon activation of a tag at a control
device.” Id. at 8. Implicit in that finding is our agreement with the
Examiner that Arling’s teaching of command conversion to address a
particular controllable device teaches “both a definition of [the particular]
controllable device and a listing of one or more commands to be transmitted
... to that controllable device,” as recited in claim 1. See Ans. 3^4
(discussing Arling 130). For example, in our Decision we quoted paragraph
30 of Arling, which teaches storing “corresponding data elements for source
appliances 12a ... for subsequent command generation,” where the source
appliances 12a include such disparate appliances as TVs 122, audio
receivers 121, and network appliances 123. Decision 7—8. To be able to
generate the different types of commands that can be sent to these different
types of devices, Arling must store both device definitions for the different
devices, as well as the commands that can be sent to the different devices
(e.g., brightness and contrast commands to TV 122, mode and surround
sound state commands to audio receiver 121). Indeed, Arling teaches the
data can be stored as XML files using the UPnP specification. We provide
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Appeal 2016-007690
Application 11/542,146
this additional explanation to make explicit that which was implicit in the
Decision.
CONCLUSION
We have reconsidered our Decision of June 2, 2017 in light of
Appellants’ comments in the Request, and we have granted Appellants’
request to the extent that we have reviewed the Decision and provided
additional explanation. We find no errors in the previous Decision that merit
a change in our Decision. We, therefore, decline to change the Decision.
DECISION
The request for rehearing is denied.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
REHEARING DENIED
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