Ex Parte Flick et al

Board of Patent Appeals and Interferences

Sep 30, 2008

10236369 (B.P.A.I. Sep. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte KENNETH E. FLICK, MICHAEL STEPHEN THOMPSON, 8
and ROBERT FLOYD DREW 9
____________________ 10
11
Appeal 2008-3546 12
Application 10/236,369 13
Technology Center 3600 14
____________________ 15
16
Decided: September 30, 2008 17
____________________ 18
19
Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH 20
A. FISCHETTI, Administrative Patent Judges. 21
22
CRAWFORD, Administrative Patent Judge. 23
24
25
DECISION ON APPEAL 26
27
STATEMENT OF THE CASE 28
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 29
of claims 1 to 48. We have jurisdiction under 35 U.S.C. § 6(b) (2002).30
Appeal 2008-3546
Application 10/236,369

2
Appellant invented a method and system for vehicle control 1
(Specification 2). 2
Claim 1 under appeal reads as follows: 3
4
1. A vehicle remote control system 5
comprising: 6
a controller to be installed within the vehicle 7
and at least one remote device for wireless 8
communication therewith, said at least one remote 9
device comprising 10
a portable handheld housing to be carried by 11
a user when away from the vehicle, and 12
a Liquid Crystal Display (LCD) mounted on 13
said portable housing for displaying a selected 14
vehicle style image from among a plurality of 15
different selectable vehicle style images. 16
17
The Examiner rejected claims 1 to 3, 6 to 11, 13 to 17, 20 to 28, 30 to 18
41, and 44 to 47 under 35 U.S.C. § 103(a) as being unpatentable over Chetty 19
in view of Ben-Ze’ev, 20
The Examiner rejected claims 4, 5, 12, 18, 19, 29, 42, 43, and 48 21
under 35 U.S.C. § 103(a) as being unpatentable over Chetty in view of Ben- 22
Ze’ev and Brinkmeyer. 23
The prior art relied upon by the Examiner in rejecting the claims on 24
appeal is: 25
Brinkmeyer US 5,940,007 Aug. 17, 1999 26
Chetty US 2002/0052193 A1 May 2, 2002 27
Ben-Ze‘ev US 6,791,467 B1 Sep. 14, 2004 28
29
Appellants contend that the Examiner erred in rejecting the claims 30
because the prior art does not suggest a portable housing that displays a 31
Appeal 2008-3546
Application 10/236,369

3
selected vehicle style image from among a plurality of different selectable 1
vehicle style images or any vehicle style image. 2
Appellants also contend there is no motivation to combine the 3
teachings of Chetty and Ben-Ze’ev. 4
Appellants lastly contend that the prior art cited teaches away from 5
the invention. 6
7
ISSUES 8
The first issue is whether the Appellants have shown that the 9
Examiner erred in rejecting the claims because the prior art does not suggest 10
a portable housing that displays a selected vehicle style image from among a 11
plurality of different selectable vehicle style images or any vehicle style 12
image. 13
The second issue is whether the Appellants have shown that the 14
Examiner erred in rejecting the claims because there is no motivation to 15
combine the teachings of Chetty and Ben-Ze’ev. 16
The last issue is whether the Appellant has shown that the Examiner 17
erred in rejecting the claims because the prior art cited teaches away from 18
the invention. 19
20
FINDINGS OF FACT 21
Chetty discloses a universal remote control [0002]. The remote 22
control device is portable and includes an LCD (210) for displaying a choice 23
of a plurality of devices to control such as auto, garage, home, office, and 24
Appeal 2008-3546
Application 10/236,369

4
other (Figures 2 and 15). Each choice may have a subchoice, e.g., the auto 1
choice may include a list of autos [0093]. 2
Ben-Ze’ev discloses a remote control for controlling a plurality of 3
devices with graphic indicators or icons to reference each controllable 4
device (Figure 6). The graphic indicators or icons are depressed to control 5
the associated device (col. 11, ll. 29 to 34). The device is adaptable for use 6
outdoors and is portable in that it moves with the user (col. 1, l. 9 to 11; col. 7
2, ll. 56 to 67). 8
9
ANALYSIS 10
We are not persuaded of error on the part of the Examiner by 11
Appellants’ argument that the prior art does not suggest a portable housing 12
that displays a selected vehicle style image from among a plurality of 13
different selectable vehicle style images or any vehicle style image. As 14
Chetty discloses that it was known to control several vehicles with one 15
remote and Ben-Ze’ev discloses that different devices can be identified by 16
an icon on the remote, it would have been obvious to provide a remote 17
control device that distinguished each vehicle by a different icon. The 18
Examiner is further supported by the disclosure in Ben-Ze’ev that the icon 19
for a chandelier is different from the light bulb when both devices are lights. 20
Therefore, we disagree with the Appellants that the combined teachings of 21
Chetty and Ben-Ze’ev would result in identical style images for vehicles to 22
be selected. We also disagree with the Appellant that the Ben-Ze’ev device 23
relates to indoor appliances only because as we found above, Ben-Ze’ev 24
specifically discloses that the remote control device therein described may 25
Appeal 2008-3546
Application 10/236,369

5
be used outside. Therefore, Ben-Ze’ev does suggest using the device to 1
display icons representative of outdoor devices. In any case, the particular 2
image displayed on the remote control device is not related to the function of 3
the remote and is therefore non-functional descriptive material. 4
Nonfunctional descriptive material cannot render nonobvious an invention 5
that otherwise would have been obvious. In re Ngai, 367 F.3d 1336, 1339 6
(Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) 7
(when descriptive material is not functionally related to the substrate, the 8
descriptive material will not distinguish the invention from the prior art in 9
terms of patentability) 10
We are not persuaded of error of the Examiner by Appellants’ 11
argument that there is no motivation to combine the teachings of Chetty and 12
Ben-Ze’ev. As Chetty discloses a remote control device that controls 13
several devices and Ben-Ze’ev discloses that devices controlled by a remote 14
control can be distinguished on the remote control by icons representative of 15
the devices, there is ample motivation to combine the references in order to 16
achieve the advantage of having an easy way to distinguish and control each 17
device. Ben-Ze’ev is cited for teaching that devices under the control of a 18
remote control can be distinguished on the remote control itself by the use of 19
icons. 20
We are not persuaded of error on the part of the Examiner by 21
Appellants’ argument that the prior art cited teaches away from the invention 22
because it would be impractical for the user to carry the device. A reference 23
would be said to teach away if it criticizes, discredits, or otherwise 24
discourages the combination. See In re Fulton, 391 F.3d 1195, 1201 (Fed. 25
Appeal 2008-3546
Application 10/236,369

6
Cir. 2004) (“The prior art's mere disclosure of more than one alternative 1
does not constitute a teaching away from any of these alternatives because 2
such disclosure does not criticize, discredit, or otherwise discourage the 3
solution claimed in the … application.”); see also In re Gurley, 27 F.3d 551, 4
552-53 (Fed. Cir. 1994) (“[A] reference will teach away if it suggests that 5
the line of development flowing from the reference's disclosure is unlikely to 6
be productive of the result sought by the applicant.”). There is nothing in 7
either reference which discourages or criticizes the use of icons to represent 8
devices under the control of a portable remote control. In addition, Ben-9
Ze’ev discloses that therein described device moves with the user and thus 10
like the Chetty device is portable. In addition, it is our view that an ordinary 11
skilled artisan would be capable or adapting the size of the remote control to 12
suit the particular purpose and therefore such size adjustment would not 13
patentably distinguish the claims. 14
In view of the foregoing, we will sustain the Examiner’s rejection of 15
claim 1. We will also sustain the Examiner’s rejection of claims 2 to 3, 6 to 16
11, 13 to 17, 20 to 28, 30 to 41 and 44 to 47 because the Appellant has not 17
argued the separate patentability of these claims. We will also sustain the 18
Examiner’s rejection of claims 4, 5, 12, 18, 19, 29, 42, 43, and 48 19
as being unpatentable over Chetty in view Ben-Ze’ev and Bringmeyer 20
because the Appellants have not addressed this rejection separately but 21
instead states that no further discussion is required (Brief 8). 22
Appeal 2008-3546
Application 10/236,369

7
The decision of the Examiner is affirmed. 1
No time period for taking any subsequent action in connection with 2
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED 5
6
7
8
hh 9
10
11
12
ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST P.A. 13
1401 CITRUS CENTER 255 SOUTH ORANGE AVENUE 14
P.O. BOX 3791 15
ORLANDO, FL 32802-3791 16
17
18