Ex Parte Booher et al

Patent Trial and Appeal Board

Oct 31, 2012

11440835 (P.T.A.B. Oct. 31, 2012)

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.
11/440,835 05/25/2006 Cory Booher 1990-0002 7672
28078 7590 11/01/2012
MAGINOT, MOORE & BECK, LLP
CHASE TOWER
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
BROWN, VERNAL U
ART UNIT PAPER NUMBER
2681
MAIL DATE DELIVERY MODE
11/01/2012 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 TRAIL AND APPEAL BOARD

____________

Ex parte CORY BOOHER and LARRY D. O’CULL
____________

Appeal 2011-007908
Application 11/440,835
Technology Center 2600
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER , Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007908
Application 11/440,835

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
Appellants’ claimed invention is directed to receiver device operable
to transmit a garage door operation signal to a garage door opener in
response to the received automobile instruction signal (Spec. ¶ [0017]).
Independent claims 1 and 20, reproduced below, are representative of
the subject matter on appeal.
1. A receiver device configured for use in association
with a key fob of a automobile remote keyless entry system, the
key fob operable to transmit at least one automobile instruction
signal, the device comprising:

a receiver configured to receive the automobile
instruction signal transmitted by the key fob; and

a transmitter configured to transmit a device operation
signal to a non-automotive remotely controlled device in
response to the received automobile instruction signal, wherein
the transmitter is configured to transmit the device operation
signal only after the automobile instruction signal has been
received continuously for a predetermined period of time or
only after the automobile instruction signal has been received a
predetermined number of times over a predetermined period.

20. A method of controlling a non-automotive remotely
controlled device using a key fob configured to transmit an
automotive instruction signal, the method comprising:

Appeal 2011-007908
Application 11/440,835

3
receiving the automotive instruction signal transmitted from the
key fob;

identifying the received automotive instruction signal; and

transmitting a control signal for the non-automotive remotely
controlled device following identification of the received automotive
instruction signal if the automobile instruction signal is received in a
manner that meets a predetermined criterion indicating that the
automotive instruction signal is intended to also control the non-
automotive remotely controlled device.

REFERENCES and REJECTIONS
The Examiner rejected claim 20 under 35 U.S.C. § 102(b) based upon
the teachings of Swan (U.S. Patent Number 6,091,330, issued July 18,
2000). Ans. 3-4.
The Examiner rejected claims 1, 6, 9, 11, 13, and 15 under 35 U.S.C.
§ 103(a) based upon the teachings of Swan and Kokubu (U.S. Patent
Number 5,555,863, issued September 17, 1996). Ans. 4-5.
The Examiner rejected claims 2-5 under 35 U.S.C. § 103(a) based
upon the teachings of Swan, Kokubu, and Di Croce (U.S. Patent Number
5,838,255, issued November 17, 1998). Ans. 5-6.
The Examiner rejected claim 7 under 35 U.S.C. § 103(a) based upon
the teachings of Swan, Kokubu, and Fuller (U.S. Patent Number 6,795,760
B2, issued September 21, 2004). Ans. 6-7.
The Examiner rejected claims 8, 10, and 12 under 35 U.S.C. § 103(a)
based upon the teachings of Swan, Kokubu, and Fitzgibbon (U.S. Patent
Number 7,268,681 B2, issued September 11, 2007). Ans. 7.
Appeal 2011-007908
Application 11/440,835

4
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) based upon
the teachings of Swan, Kokubu, and Rodriguez (U.S. Patent Number
7,266,344 B2, issued September 4, 2007). Ans. 7-8.
The Examiner rejected claims 16-18 under 35 U.S.C. § 103(a) based
upon the teachings of Swan and Di Croce. Ans. 8-9.
The Examiner rejected claim 19 under 35 U.S.C. § 103(a) based upon
the teachings of Swan, Di Croce, and Baumgardner (U.S. Patent Number
7,023,322 B2, issued April 4, 2006). Ans. 9.

ISSUES
The pivotal issues are:
1. Whether the Examiner erred in finding that Swan teaches the
limitation of: “a predetermined criteria indicating that the
automotive instruction signal is intended to also control the non-
automotive remotely controlled device” as recited in claim 20;
2. Does Swan teach away from the combination with Kokubu; and
3. Whether the combination of Swan, Kokubu, and Di Croce teach
the limitation of a processor “operable to identify the received
automobile instructions signal as associated with the key
fob” as recited in claim 3.

PRINCIPLES OF LAW
To teach away, prior art must “criticize, discredit, or otherwise
discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004).
Appeal 2011-007908
Application 11/440,835

5
An artisan is presumed to possess both skill and common sense. See
KSR Int’l., Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”)

ANALYSIS
Claim 20
Appellants argue that Swan does not teach the limitation of “a
predetermined criteria indicating that the automotive instruction signal is
intended to also control the non-automotive remotely controlled device” as
recited in claim 20 (App. Br. 8-9). Appellants explain that Swan teaches an
arrangement where a nonautomotive remotely controlled device (i.e., a
garage door opener) is operated regardless of the manner in which the
engine ignition signal is received (App. Br. 8). Appellants further clarify
that whether or not the garage door opener is activated in Swan is dependent
on whether the garage door sensor determines that the garage door is closed,
not whether the received automobile instruction signal meets some
predetermined criteria (App. Br. 8). The predetermined criteria indicate that
the automotive instruction signal is also intended to control the non-
automotive remotely controlled device (App. Br. 8).
We agree with Appellants. Swan teaches that a proximity sensor 28
produces a gating signal to produce a garage door opener signal (col. 3, ll.
21-28) which is a different signal than the engine ignition signal (col. 3, l.
32). In other words, Swan does not teach that the automotive instruction
signal (i.e., the engine ignition signal) is also intended to control the non-
automotive remotely controlled device (i.e., the garage door). Rather, it is
Appeal 2011-007908
Application 11/440,835

6
the gating signal and the engine ignition signal that operate to open the
garage door (see col. 3, ll. 30-35)—not the engine ignition signal itself.
Accordingly, we reverse the Examiner’s rejection of claim 20.

Claim 1
Appellants argue that claim 1 was improperly rejected over the
combination of Swan and Kokubu. Appellants contend that the combination
would defeat the purpose of the safety device of Swan if the automobile start
button needs to be pressed for a predetermined time as taught by Kokubu
before the garage door goes up (App. Br. 12). Appellants explain that the
safety device of Swan teaches that the garage door is opened automatically
when the engine start button is depressed (App. Br. 12). Appellants assert
that if Swan were amended as suggested by the Examiner, the garage door
would remain shut if the user pressed the start button only briefly (App. Br.
12). Appellants conclude that this would allow the automotive engine to
turn on while allowing the garage door to remain closed, thus completely
defeating the purpose of the safety device of Swan (App. Br. 12).
We do not agree with Appellants’ argument. We agree with the
Examiner that Kokubu teaches a method of extending the functionality of
the key fob by pressing the key fob for a predetermined time to indicate a
different function request (col. 5, ll. 8-18). We see nothing in Swan that
criticizes, discredits, or otherwise discourages the solution claimed. See
Fulton, 391 F.3d at 1201.
We further agree with the Examiner’s position that transmitting the
device operation signal only after the automobile instruction signal has been
received continuously for a predetermined period of time in Swan prevents
Appeal 2011-007908
Application 11/440,835

7
the starting of the vehicle and the actuation of the garage door based on an
accidental pressing of the button on the key fob (Ans. 12). In other words, it
would be common sense that a user knowing that pressing the button on the
fob for a predetermined period of time would open the garage door, would
do exactly that to prevent starting the car engine prior to opening the garage
door; whereas if the garage door is already open the button on the fob would
be pressed once. An artisan is presumed to possess both skill and common
sense. See KSR, 550 U.S. at 421.
Appellants further argue that the Examiner’s rationale for combining
the references is conclusory (App. Br. 14). We do not agree. Expanding the
functionality of Swan’s fob by incorporating the teachings of Kokubu to
correlate pressing the button on the fob for a predetermined period of time
with the garage door opening functionality (Ans. 12) is not a conclusory
motivation.
Accordingly, we affirm the Examiner’s rejection of claim 1.

Claims 3 and 5
Appellants argue that claim 3 specifically calls for a processor
“operable to identify the received automobile instructions signal as
associated with the key fob” (emphasis added) (App. Br. 16). Appellants
explain that claim 3 calls for the processor to make a determination that the
control signal was sent from the actual key fob (as opposed to another
signal generator) (App. Br. 16). Appellants assert that the Examiner did not
attempt to show where this limitation is found in Di Croce or any of the
other cited references (App. Br. 16). Appellants raise similar arguments
with respect to claim 5 (App. Br. 17-19).
Appeal 2011-007908
Application 11/440,835

8
We do not agree. The Examiner found the following, and we agree
with the findings and adopt them as our own:
Swan teaches receiving an automobile instruction signal
and instructing the transmitter to transmit the device operation
signal to the garage door operator (col. 3 lines 10-20).
Although the reference of Swan is not explicit in teaching a
processor is used to recognize the received signal and instruct
the transmitter to transmit the device operation signal[.] The
reference of Kokubu teaches the use of a control unit (7) which
is considered a microprocessor to recognize the received
automobile instruction signal and to transmit the appropriate
operation signal based on the received automobile instruction
signal to the appropriate device to be controlled (col. 3 line 46-
col. 4 line 42). The reference of Di Croce is further relied upon
for teaching the use of a processor (21) to receive an
automotive instruction signal to from a transmitter (30) and the
processor further instruct a transmitter (80) to transmit an
operational signal to a non-automotive device such as a garage
door operator (col. 3 line 4l-col. 5 line 40). Di Croce teaches a
plurality of switches on the key fob used for controlling
individual function (col. 4 lines 25-45). The processor
therefore inherently compares the data associated with the
received automobile instruction signal with the stored data in
the processor in order to determine the function requested by
the automobile instruction signal. It is therefore the examiner's
position that combination of the references of Swan, Kokubu
and Di Corce is proper and reads on the claimed limitations
because the system of Swan inherently requires a control means
for interpreting the received signal and instructing the
transmitter to transmit an operational signal to the non-
automotive device and the reference of Di Corce is relied upon
for teaching the use of a processor as the control means.

Ans. 13-14.
Accordingly, we affirm the Examiner’s rejections of claims 3 and 5.

Appeal 2011-007908
Application 11/440,835

9
Claim 16
Appellants argue that the Examiner failed to show that either Di Croce
or Swan teach the limitation of “a processor configured to identify a
received signal as the automobile instruction signal based on a comparison
of the signature data for the received signal and the stored signature data for
the automobile instruction signal” (App. Br. 22).
We do not agree. We agree with the Examiner’s findings and
conclusions as set out in the Answer (Ans. 8-9), which we reproduce below:
Swan et al. is not explicit in teaching a processor
operable to recognize the received automobile instruction
signal. It is the examiner's position that a processor is
conventionally used to interpret the received remote control
code and to initiate the transmission of the appropriate signal.
The use of processor to interpret the received automobile
instruction signal and to transmit the appropriate signal is
disclosed by vehicle transmit the Di Croce (col. 4 lines 35-45)
and the processor include a memory for storing control codes
(col. 5 lines 10-17). Di Croce teaches a plurality of switches on
the key fob used for controlling individual function (col. 4 lines
25-45). The processor therefore inherently compares the data
associated with the received automobile instruction signal with
the stored data in the processor in order to determine the
function requested by the automobile instruction signal.

Ans. 8-9 (emphasis added).

Accordingly, we affirm the Examiner’s rejection of claim 16.

Appeal 2011-007908
Application 11/440,835

10
Claims 2-15 and 17-19
Appellants do not raise separate patentability arguments with respect
to these claims (App. Br. 23). Accordingly, we affirm the Examiner’s
rejections of claims 2-15 and 17-19 for the same reasons articulated supra.

CONCLUSIONS
1. The Examiner erred in finding that Swan teaches the limitation of:
“the automotive instruction signal is intended to also control the
non-automotive remotely controlled device” as recited in claim 20;
2. Swan does not teach away from combination with Kokubu; and
3. The combination of Swan, Kokubu, and Di Croce teaches the
limitation of a processor “operable to identify the received
automobile instructions signal as associated with the key
fob” as recited in claim 3.

DECISION
The Examiner’s decision rejecting claims 1-19 is affirmed. The
Examiner’s rejection of claim 20 is reversed.
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)(2010).

AFFIRMED-IN-PART

Appeal 2011-007908
Application 11/440,835

11

kis