Ex Parte Guzman

Patent Trial and Appeal Board

Dec 12, 2014

11475743 (P.T.A.B. Dec. 12, 2014)

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.
11/475,743 06/27/2006 Jorge H. Guzman PD-205093 1062
20991 7590 12/15/2014
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
BORROMEO, JUANITO C
ART UNIT PAPER NUMBER
2184
MAIL DATE DELIVERY MODE
12/15/2014 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 JORGE H. GUZMAN
____________________

Appeal 2014-001882
Application 11/475,743
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, CARLA M. KRIVAK, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2014-001882
Application 11/475,743

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1–28. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A system comprising:
a display;
a user interface;
a first device coupled to the display and the user interface, said
first device having a first controller and a first data port; and
an external device having an external controller and a second
data port coupled to the first data port, said external device
communicating a plurality of command wordings and a plurality of
command identifiers corresponding to the command wordings to the
first controller;
said first controller causing the display to display the plurality
of command wordings and when a first command wording of the
plurality of command wordings is selected by the user interface, said
first controller determining a first command identifier from the
plurality of command identifiers corresponding to the first command
wording and transmitting the first command identifier and not the
command wording to the external controller through the first and
second data port;
said external controller controlling an operation of the external
device in response to the first command identifier.

Rejections on Appeal
1. The Examiner rejected claims 1–7, 11–15, 18, 24, 25, 27, and
28 as being unpatentable under 35 U.S.C. § 103(a) over the combination of
Appeal 2014-001882
Application 11/475,743

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Vogel (US 5,446,488, Aug. 29, 1995) and Cozier (US 2004/0263658 A1,
Dec. 30, 2004). 1
2. The Examiner rejected dependent claims 8–10, 16, 17, 19–23
and 26, as being unpatentable under 35 U.S.C. § 103(a) over the
combination of Vogel, Cozier, and Fries (US 2004/0078807 A1, Apr. 22,
2004).2

Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because Vogel and Cozier fail to teach or suggest
an external device communicating a plurality of command wordings and a
plurality of corresponding command identifiers to a first controller of a first
device. App. Br. 6–7.
2. Further, Appellant contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because Vogel and Cozier fail to teach or
suggest transmitting a first command identifier and not the command
wording to the external controller. App. Br. 9.

1 As to the rejection of claims 2–7, 11–15, 18, 24, 25, 27, and 28, separate
patentability is argued only for claim 1. Appellant merely repeats for claims
18 and 24 the arguments directed to claim 1. Except for our ultimate
decision, these claims are not discussed further herein. While using an
argument for patentability of a first claim as a restated argument for a second
claim might outwardly appear to be a separate argument for patentability of
the second claim, such a mere restatement of the first claim’s argument is
not in fact an argument for “separate patentability.”
2 As to the rejection of claims 8–10, 16, 17, 19–23, and 26, separate
patentability is not argued. Therefore, the rejection of these claims turns on
our decision as to the rejection of claim 1. Except for our ultimate decision,
these claims are not discussed further herein.
Appeal 2014-001882
Application 11/475,743

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Examiner’s Response
The Examiner responds that:
Even though Applicant amended the term “command
names” to “command wordings”, they are still anticipated by
Vogel because Vogel discloses command wordings, as
described above to be “a series of words that form a command”,
e.g. pause mode, play mode, and fast spooling mode (Vogel
7:14-18).
Ans. 3.

Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?

ANALYSIS
We agree with the Appellant’s above recited contentions. First, the
portion of the Examiner’s Answer cited above suggests that claim 1
previously recited “command names” (plural). However, in our review of
the original claim 1 as previously appealed, we do not find “command
names” (plural) as argued by the Examiner. Rather, we find “a command”
(singular). Claim 1 now recites “command wordings” (plural). Although,
the “play mode, pause mode or fast spooling mode” of Vogel (7:17–18) may
include plural commands, the Examiner has not explained how these would
be plural command wordings and a plurality of corresponding command
identifiers which are communicated to a first controller of a first device.
Additionally, we do not agree with the Examiner that Cozier discloses the
claimed transmitting a first command identifier and not the command
wording to the external controller (Final Rej. 3).
Appeal 2014-001882
Application 11/475,743

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CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1–28 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, these claims have not been shown to be
unpatentable.

DECISION
The Examiner’s rejections of claims 1–28 are reversed.

REVERSED

msc