Ex Parte Kohanek et al

Patent Trial and Appeal Board

Nov 29, 2017

13895992 (P.T.A.B. Nov. 29, 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.
13/895,992 05/16/2013 Jeffrey Kohanek 81230.134US2 9964
34018 7590
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
LEJA, RONALD W
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
chiipmail @ gtlaw .com
escobedot@gtlaw.com
j arosikg @ gtlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY KOHANEK and JEREMY K. BLACK
(Applicant: UNIVERSAL ELECTRONICS INC.)
Appeal 2017-004179
Application 13/895,992
Technology Center 2800
Before TERRY J. OWENS, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-12 and 14, 15, and 17-22. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a universal controlling device and a method for
configuring the device for radio frequency communication with an intended
target device. Claim 12 is illustrative:
12. A universal controlling device, comprising:
a RF communications circuit;
a processing device in communication with the RF
communications circuit for causing the RF communications
circuit to exchange RF communications with an intended target
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Application 13/895,992
device using a selected one of a plurality of RF
communications protocols;
a key matrix having a plurality of quick setup input
elements; and
a memory in which is stored a link between each of the
plurality of quick setup input elements and a different one of a
plurality of RF communication protocols usable by the
processing device in communication with the RF
communications circuit to exchange communications with a
device type of the intended target device;
wherein, in response to a selection of a one of the
plurality of quick setup input elements while the universal
controlling device is in a setup mode of operation, the
processing device of the universal controlling device is caused
to transmit a query message to the intended target device using
the one of the plurality of RF communication protocols linked
to the selected of the one of the plurality of quick setup input
elements within the memory of the universal controlling device
and wherein a response successfully received from the intended
target device in response to the query message causes the
universal controlling device to be paired with the intended
target device such that the processing device in communication
with the RF communications circuit will use the one of the
plurality of RF communication protocols linked to the selected
of the one of the plurality of quick setup input elements within
the memory of the universal controlling device when the
universal controlling device is subsequently placed into an
operating mode in which the universal controlling device is
intended to exchange communications with the intended target
device.
The References
Chiloyan
Chiang
Haughawout
Griesau
US 6,008,735 Dec. 28, 1999
US 2006/0109138 A1 May 25, 2006
US 2007/0052547 A1 Mar. 8, 2007
US 2008/0129579 A1 June 5, 2008
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Application 13/895,992
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1-9, 12, 14, 15, and 17-20 over Haughawout in view of Chiloyan and
Chiang, and claims 10, 11,21, and 22 over Haughawout in view of
Chiloyan, Chiang and Griesau.
OPINION
We reverse the rejections. We need address only the independent
claims (1 and 12).1
Haughawout discloses “a system and method for setting up and
configuring a universal remote control [(100)] to command functions of one
or more types of remotely controllable appliances of one or more
manufacturers” 2). A user enters remote control (100) setup mode by
pressing and holding a setup key (208) (^ 25). Upon entering setup mode
the remote control (100) transmits to a set top box (STB) (102) a specific
setup infrared (IR) code which initiates an application (406) stored within
the STB (102)’s mass storage (402) or on a device accessible to the
STB (102) (]fl[ 23, 25). The application (406) then displays on the screen of
a television (104) a list of valid device types and a prompt asking the user
what device type is to be controlled (^ 30). The user selects the device type
using navigation selection keys (214), and the application (406) responds by
displaying a confirmation of the selected device type together with a
scrollable list (410) of valid brand names for that device type (^ 31; Fig. 4).
Upon the user selecting the desired brand name, the application (406)
1 The Examiner does not rely upon Griesau for any disclosure that remedies
the deficiency in the references applied to the independent claims as to the
limitations in those claims (Non-final Act. 6-7 (mailed Dec. 3, 2015)).
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displays a remote control setup code number which the user enters into the
remote control (100) using digit entry keys (204), thereby causing the
remote control (100) to configure itself to transmit IR code commands for
operating that brand’s appliances in response to actuation of the remote
control (100)’s function keys (206, 208, 210, etc.) (]fl| 32, 33).
Chiloyan discloses “a method and system for programming a remote
control unit [10] to control operation of a controllable device” (col. 1,11. 7-
9). The remote control unit (10) includes a setup button (70) which, when
activated by a user, causes the remote control unit (10) to show on a
display (72) various options that are selectable using corresponding
buttons (74-77) (col. 6,11. 33-37). Selecting the “devices” option enables
the user to select a type of device and then a particular brand of that device
type (col. 6,11. 40-67).
Chiang discloses a remote control apparatus (1) which “stores a
plurality of device identifications so that a single apparatus is able to control
a plurality of electrical appliances” (Abstract). The remote control
apparatus (1) includes an acknowledge request button (13) which, when
pressed, sends a device identification request signal (SI) to a target
appliance (2) via a radio frequency (RF) transmission circuit (181) (^ 31,
32; Fig. 1). Upon receiving that signal (SI) the target appliance (2) responds
with a device identification signal (S2), in response to which the remote
control apparatus (l)’s micro controller (14) searches for a match in the
remote control apparatus (l)’s identification storage (15) (]fl| 33, 34). When
the micro controller (14) finds a match, it loads the corresponding
communication protocol, control button layout and related information into
the remote control apparatus (l)’s current device identification register (16),
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Application 13/895,992
after which the user can use the remote control apparatus (l)’s touch screen
display module (12) to control the functions of the target appliance (2)
(136).
The Examiner finds that Haughawout discloses “a key matrix (see
Figs. 4 and 5) having a plurality of quick setup input elements (410 and
associated keys, Fig. 4)” (Non-final Act. 2).
The “associated keys” to which the Examiner refers appear to be the
keys on Haughawout’s remote control (100) (Fig. 4). The Examiner,
however, does not establish that the combination of those keys and
Haughawout’s relied-upon item 410, which is a scrollable list of device type
valid brand names that appears on the screen of a television (104) (131), can
serve as a quick setup input element.
The Examiner asserts that the Appellants “have not provided a
specific definition for the term ‘universal controlling device’ such that it
cannot comprise a key matrix displayed on a TV” (Ans. 2), so “under a
broad but reasonable interpretation of the terms ‘key matrix’ and ‘universal
controlling device,’ elements (410) of Haughawout are part of a key matrix
and the claimed ‘quick setup input elements’ encompass elements (410) of
Haughawout” (Ans. 2-3).
“‘[DJuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Examiner does not
establish that the Examiner’s “broad but reasonable interpretation” of the
Appellants’ claim term “key matrix having a plurality of quick setup input
elements” is the broadest reasonable interpretation of that term consistent
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with the Appellants’ Specification such that the combination of
Haughawouf s remote control (100) keys and scrollable list (410) of device
type valid brand names that appears on the screen of a television (104)
reasonably can be considered to correspond to the Appellants’ key matrix
having a plurality of quick setup input elements.
The Examiner concludes that “it would have been obvious to one of
ordinary skill in the art at the time of the invention to incorporate the
individual quick setup input elements, each linked with a different one of a
plurality of RF communication protocols, of Chiloyan into the universal
controlling device of Haughawout in order to provide to the user a faster,
more direct means for selecting the desired RF communication protocol”
(Non-final Act. 4), and “it would have been obvious to one of ordinary skill
in the art at the time of the invention to incorporate the query message and
response disclosed by Chiang into the universal controlling device of
Haughawout in view of Chiloyan in order to allow the universal controlling
device to receive communication, status updates, identification, verification,
etc. from the target device, thereby improving remote control
communication” {id.).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
Examiner does not address the differences among Haughawouf s, Chiloyan’s
and Chiang’s remote controls and establish that regardless of those
differences, the Examiner’s relied-upon reasons for combining the
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references would have been apparent to one of ordinary skill in the art in
view of the references’ disclosures.
Thus, the Examiner has not established a prima facie case of
obviousness of the Appellants’ claimed invention.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1-9, 12, 14, 15,
and 17-20 over Haughawout in view of Chiloyan and Chiang, and
claims 10, 11,21, and 22 over Haughawout in view of Chiloyan, Chiang and
Griesau are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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