Ex Parte Kamen et al

Patent Trial and Appeal Board

Jun 27, 2016

10087975 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/087,975 03/01/2002 YakovKamen
22907 7590 06/29/2016
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
007287.00037 9048
EXAMINER
PENG, HSIUNGFEI
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
eofficeaction@bannerwitcoff.com
GPD@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y AKOV KAMEN and DAN KIKINIS
Appeal2014-007880
Application 10/087,975
Technology Center 2400
Before TERRENCE W. MCMILLIN, MELISSA A. HAPP ALA, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 28, 30-33, and 35-50, which constitute all of the
claims pending in this application. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 According to Appellants, the real party in interest is JLB Ventures, LLC.
App. Br. 2.
2 Claims 1-27, 29, and 34 have been cancelled. App. Br. 14--21.
Appeal2014-007880
Application 10/087,975
fNVENTION
Appellants' invention relates to multimedia interactive device
function selection based upon button depression duration. Abstract. Claim
28 illustrative and reads as follows:
28. A method comprising:
receiving an indication of a depression of a button on a
multimedia presentation device controller;
receiving an indication of an ending of the depression of the
button;
evaluating a depression duration of the button and classifying the
depression duration into one of three or more ranges, wherein a
first depression duration range is associated with a first function
on the multimedia presentation device controller, a second
depression duration range is associated with a second function
on the multimedia presentation device controller, and a third
depression duration range is associated with a third function on
the multimedia presentation device controller, and wherein a
final depression duration after the three or more depression
duration ranges is associated \~1ith a termination fi1nction that
does not perform any of the button functions on the multimedia
presentation device controller; and
performing the function associated with the depression duration
range of the button on the multimedia presentation device
controller.
REJECTIONS
Claims 28, 30, 33, 35, 38--41, and 44 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Saib et al.
(US 2001/0005905 Al; published June 28, 2001) and Skupin et al.
(US 6,097,993; issued Aug. 1, 2000).
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Appeal2014-007880
Application 10/087,975
Claims 31, 36, and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Saib, Skupin, and Coleman et al. (US
5,844,620; issued Dec. 1, 1998).
Claims 32, 37, and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Saib, Skupin, and Look et al. (US
6,757,906 Bl; issued June 29, 2004).
Claims 45-50 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Saib, Skupin, and Keenan (US 5,317 ,403; issued
May 31, 1994).
ANALYSIS
Appellants contend Skupin is not analogous art to the claimed
invention. App. Br. 6-7. In particular, Appellants argue that the claimed
invention relates to multimedia presentation device controllers, such as
remote controls of televisions and set-top boxes, while Skupin relates to the
"repeatable dosing or metering of fluids." Id. at 7 (citing Spec i-f 3; Skupin
Abstract). Appellants argue that Skupin is neither in the same field of
endeavor as the claimed invention nor reasonably pertinent to the problem
faced by the inventor. Id.
"A reference qualifies as prior art for an obviousness determination
under§ 103 only when it is analogous to the claimed invention." In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC
v. MGA Entm't., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), andin re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004)). "Two separate tests define the scope
of analogous art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
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Appeal2014-007880
Application 10/087,975
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved." Id.
(quoting In re Bigio, 381 F.3d at 1325).
The Examiner's response to Appellants' argument that Skupin is non-
analogous art does not apply either of the tests. See Ans. 8. The only
explanation the Examiner provides in response to Appellants' argument is
that "both references are directed to using control unit and pressing key on
remote control to perform an operation." Ans. 8 (citing Saib Figs. IA, IB,
i-fi-1 21, 31-3 7; Skupin col. 3, 11. 45-50, col. 17, 11. 2-15).
Saib relates to a tuning decoder device (remote controller) and Skupin
relates to the "repeatable dosing or metering of fluids." Saib Abstract;
Skupin Abstract. We agree with Appellants that the references are not from
the same field of endeavor. Nor does the Examiner establish the references
are analogous art under the second test. The inquiry whether a reference is
analogous art is not whether a reference (Skupin) is reasonably pertinent to
the particular problem with which an inventor of a different prior art
reference (Saib) is involved; rather, the inquiry is directed to the problem
Appellants seek to address. See In re Klein, 647 F.3d at 1348 (quoting In re
Bigio, 381 F.3d at 1325).
Even assuming the Examiner intended to find that Skupin is
reasonably pertinent to the particular problem with which Appellants are
involved, we disagree with the Examiner's finding. The portions of Skupin
cited by the Examiner disclose that a learning mode of a control unit, which
controls a shut-off device provided in a fluid line, is initiated "by putting in
an input information to the control unit or by effecting the opening of the
shut-off device by an operator" (Skupin col. 3, 11. 45-50) and that, in
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Appeal2014-007880
Application 10/087,975
learning mode, an allocated key can be pressed for different durations,
triggering different operations (Skupin col. 17. 11. 2-15). The Examiner has
not explained in sufficient detail why an artisan of ordinary skill would have
looked to Skupin's controller of a fluid line when considering the problem of
navigating efficiently among the multitude of channel and/or program
selections available in television viewing systems. See Spec. i-f 8. In light of
the Examiner's misapplication of the analogous art test, the Examiner's
finding that an artisan of ordinary skill would have considered Skupin is not
supported by a preponderance of the evidence.
Accordingly, on the record before us, we do not sustain the
obviousness rejections of claims 28, 30-33, and 35-50.
DECISION
We reverse the Examiner's decision to reject claims 28, 30-33, and
35-50.
REVERSED
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