Ex Parte Gamble

Patent Trial and Appeal Board

Nov 20, 2017

12658000 (P.T.A.B. Nov. 20, 2017)

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.
12/658,000 02/01/2010 Oliver Gamble 5285
7590 11/21/2017
Oliver W. Gamble
436 East 75th Street
New York, NY 10021
EXAMINER
PHAN, JOSEPH T
ART UNIT PAPER NUMBER
2653
MAIL DATE DELIVERY MODE
11/21/2017 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 OLIVER GAMBLE
____________________

Appeal 2017-006806
Application 12/658,000
Technology Center 2600
____________________

Before JEAN R. HOMERE, JEREMY J. CURCURI, and
PHILLIP A. BENNETT, Administrative Patent Judges.

BENNETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 8–12 and 21–28.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Claims 1–7 have been indicated to be allowable. Final Act. 1. Claims 13–
20 have been cancelled. Br. (Claims Appendix 4–6).
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CLAIMED SUBJECT MATTER
The claims are directed to controlling electrical devices using
instructions inputted from a remote source via a communication network.
Spec. 11. Claim 8, reproduced below, is illustrative of the claimed subject
matter:
8. A method for control the future behavior of a
targeted electrical device by transmitting instructions over
communication network(s) that links a targeted electrical device,
at least one computer at a central processing center, and at least
one remotely located input terminal, said method comprising:
(a) a remotely located input terminal that can establish a
temporary connection to a central processing center computer via
a communication network;
(b) the central processing center computer configured to
process all information collected from said input terminal;
(c) the central processing center computer configured to
transmit instructions derived from processing information from
said the input terminal to the targeted electronic device in a
timely manner[.]
Br. (Claims Appendix 3).2,3

2 Although we affirm the prior art rejection as discussed below, in the event
of further prosecution, we recommend the Examiner and Appellant consider
several issues relating to 35 U.S.C. § 112, ¶ 2, we observe in the
independent claims. For example, the claim is directed to a “method for
control,” but it does not recite performing method steps. Rather, it recites a
series of system components with specific configurations. Such a mixed-
type claim is impermissible and indefinite.
3 We also observe that the phrase “in a timely manner” is likely indefinite
because there is no baseline provided against which the “timely manner” is
measured. The claim does not indicate what the baseline for what is timely,
nor does the Specification make it clear what the baseline would be.
Without such a baseline, an accused infringer would be unable to determine
whether instructions transmitted to a targeted electronic device were timely
or not, thereby rendering the claim indefinite. See, e.g., Semmler v.
American Honda Motor Co., 990 F.Supp. 967, 975 (S.D. Ohio 1997), aff’d,
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REJECTIONS
Claims 8–12 and 21–28 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by, or alternatively under 35 U.S.C. § 103(a) as being
unpatentable over Banker et al. (US 5,357,276, issued Oct. 18, 1994). Final
Act. 2–6, Ans. 2–6.

ISSUES
First: Has the Examiner erred in finding Banker discloses “a remotely
located input terminal that can establish a temporary connection to a central
processing center computer via a communication network,” as recited in
claim 8?
Second: Has the Examiner erred in finding Banker discloses “the
central processing center computer configured to process all information
collected from said input terminal,” as recited in claim 8?
Third: Has the Examiner erred in finding Banker discloses “the
central processing center computer configured to transmit instructions
derived from processing information from said the input terminal to the
targeted electronic device in a timely manner,” as recited in claim 8?

178 F.3d 1308 (Fed. Cir. 1998) (unpublished) (finding phrase “considerable
fuel savings” indefinite); see also Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
2008 U.S. Dist. LEXIS 82991 (N.D. Ill. 2008) (finding “reduced air content
cleaning fabric” indefinite because no reference baseline for air content
provided).
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ANALYSIS
First Issue
In rejecting claim 8, the Examiner finds Banker’s remote control,
through the subscriber terminal shown in Figures 1 and 2A is a “remotely
located input terminal” and that via communication network 52, the remote
control unit can establish a temporary connection to headend 10, shown in
Figure 1, which corresponds to the recited “central processing center
computer.” Ans. 2.
Appellant argues Banker does not teach this limitation because it
merely discloses using a line of sight infrared remote control unit. Because
the remote control in Banker operates on line of sight, Appellant contends
there is no need for a communication network, and instructions are simply
passed directly from the remote control to the set top box. Br. 11.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). Additionally, “[t]hough understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim.” See SuperGuide Corp. v. DirecTV Enterprises, Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004).
We are not persuaded the Examiner has erred because Appellant’s
argument does not address the specific finding made by the Examiner, nor
does it account for the broad language recited in the claim. The limitation at
issue recites “a remotely located input terminal that can establish a
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temporary connection to a central processing center computer via a
communication network.” Appellant’s argument also relies on an overly
narrow interpretation of “network,” and Appellant’s argument incorrectly
assumes the recited connection must be a direct connection, and that the
connection must be only via a communication network (without any other
type of connectivity). In proceedings before the Office, we interpret claims
according to their broadest reasonable interpretation.
Appellant’s Specification defines a communication network as “any
network over which information or data can be transmitted from one
location to another.” Appellant’s Specification does not provide a definition
for “network.” Dictionary definitions of “network” include “a group or
system of interconnected people or things,” and “a number of interconnected
computers, machines, or operations.” New Oxford American Dictionary, 1st
Ed., OXFORD UNIVERSITY PRESS (2001). The connection from the Banker
remote control to the head end 10 meets these definitions as the remote
control and the head end share information, and also are part of a system of
interconnected things, and also are interconnected computers and machines.
That the connection between the remote control and the head end is made
through a set top box does not change this analysis. Nothing in the language
of the claim requires a direct connection between the remote input terminal
and the central processing center. As such, Banker’s indirect connection
between the remote control and the head end discloses “a remotely located
input terminal that can establish a temporary connection to a central
processing center computer via a communication network,” and we are not
persuaded of Examiner error.
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Second Issue
Appellant also argues Banker does not disclose “the central
processing center computer configured to process all information collected
from said input terminal.” Br. 11. More specifically, Appellant argues
“[t]here is no involvement of a central computer that process[es] the
instructions from the remote control unit and then forward[s] said
instructions to the targeted device.” Br. 11–12. The Examiner finds Banker
discloses this limitation. Ans. 2 (citing Banker Figs. 6A, 6B, 8–10 and col.
4, ll. 40–43, col. 7, ll.60–66).
We are not persuaded the Examiner erred. Banker discloses that a
subscriber may make a pay-per-view request using the remote control which
is passed to the network head end 10 on a reverse signaling system. Banker
col. 4, ll. 40–57. The head end 10 processes the request in order to provide
pay-per-view services. As such, Banker discloses this limitation, and we
discern no error in the Examiner’s finding.
Third Issue
Claim 8 also recites the limitation “the central processing center
computer configured to transmit instructions derived from processing
information from said the input terminal to the targeted electronic[4] device
in a timely manner.” The Examiner finds this limitation disclosed by the
head end 10 processing the pay-per-view command and sending a pay-per-

4 We note that prior references to the “targeted . . . device” reference a
“targeted electrical device.” In this limitation, the adjective “electronic” is
instead used. We assume this to be a typographical error, and that the
recited “electronic device” is the same as the “electrical device” recited in
the preceding portion of the claim. In the event of further prosecution we
recommend this error be corrected.
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view playback signal to the set top box. Ans. 2 (citing, inter alia, col. 6, ll.
48–53, col. 7, ll. 60–66). Appellant argues Banker does not disclose “a
central processing computer processing, capturing, processing, and then
forwarding instruction from user to a targeted electronic device.” Br. 12.
According to Appellant, “[t]he remote only forwards commands to the
targeted electronic device via line of sight Infrared signals.” Id.
We are not persuaded the Examiner has erred. Appellant’s argument
again fails to account for the broad language recited in the claim. Appellant
argues that an instruction must be received and forwarded by the central
processing center computer, but no such requirement exists in the claim.
The claim requires only that the “central processing center computer . . .
transmit instructions derived from processing information.” Here, the
Examiner finds, and we agree, Banker discloses the head end 10 receives a
pay-per-view request originated in the remote control. Ans. 6. The
Examiner further finds the pay-per-view request is processed at the head end
10, and a pay-per-view playback signal (the recited “instructions derived
from processing information”) is transmitted to the set top box time for the
viewer to watch the pay-per-view event. Accordingly, we discern no error
in this finding.5
Summary
Because we are not persuaded by Appellant’s arguments, we sustain
the rejection of claim 8. Appellant does not argue separately for

5 Because we find the Examiner has not erred in finding Banker anticipates
the claims, we need not and do not consider whether the Examiner erred in
concluding, in the alternative, that the claims are unpatentable under 35
U.S.C. § 103(a) as obvious over Banker.
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patentability of any other claim. Accordingly, we sustain the rejections of
those claims for the same reasons.

DECISION
We affirm the Examiner’s rejection of claims 8–12 and 21–28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED