Ex Parte LI et al

Patent Trial and Appeal Board

Jul 26, 2016

13223312 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/223,312 09/01/2011
37123 7590 07/26/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
AdamH.Li
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.
7114-95710-US 7126
EXAMINER
KARIM, ZIAUL
ART UNIT PAPER NUMBER
2127
MAIL DATE DELIVERY MODE
07/26/2016 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 ADAM H. LI, AIXIN LIU, and DJUNG NGUYEN
Appeal2015-003184
Application 13/223 ,312
Technology Center 2100
Before JOHNNY A. KUMAR, LINZY T. McCARTNEY, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-11, which constitute all claims pending. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The claimed invention relates to home automation, and specifically,
interfaces for residential applicances. Spec. 1. Claims 1 and 10 are
1 Appellants identify Sony Corporation as the real party in interest. App.
Br. 3.
Appeal2015-003184
Application 13/223,312
independent. Claim 1, which is illustrative of the invention, reads as
follows:
1. An apparatus comprising:
home-automation edge-component interfaces;
a control circuit operably coupled to the home-
automation edge-component interfaces, wherein the control
circuit is configured to interact with home-automation edge
components using characterizing abstracts as correspond to the
home-automation edge components.
App. Br. 12 (emphasis added).
THE REJECTIONS
Claims 1-3 and 8-10 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Clayton (US 2008/0183316 Al; pub. July 31, 2008). Final
Act. 3-7.
Claims 4--7 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Clayton and Sibert (US 2008/0265799; pub. Oct. 30,
2008). Final Act. 8-12.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Any other arguments which Appellants
could have made but did not make in the Briefs are deemed to be waived.
See 37 C.F.R. § 41.37(c)(l)(iv). On this record, we are not persuaded the
Examiner erred. We adopt as our own the findings and reasons set forth in
the rejections from which this appeal is taken and in the Examiner's Answer,
and highlight the following for emphasis.
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Appeal2015-003184
Application 13/223,312
Claim 1
Appellants argue the Examiner erred in finding Clayton discloses the
"use of characterizing abstracts." App. Br. 7. Appellants assert there is "no
specific mention of an 'abstract"' in Clayton, and that Clayton "only"
discloses control of peripheral devices, such as on/off switches, without any
suggestion of "an abstract of information" corresponding to such devices.
App. Br. 9.
The Examiner finds the disputed limitation in Clayton's disclosure of
a control circuit controlling the "on/off/dim state" of peripheral devices,
Clayton i-f 23, controlling other functionality of peripherals, Clayton i-f 26,
and a "configurable on-off or dimmer switch that can be used to control one
or more peripheral devices directly and/ or via [an] automation controller or
[]remote controller," Clayton i-f 33. Ans. 11-13. We agree with the
Examiner's findings and reasoning.
As Appellants acknowledge, App. Br. 8, Appellants' Specification
lists examples of characterizing abstracts, including "Light dimmer - off, on,
set level, toggle," Spec. i-f 32, i.e., the very features described in Clayton.
See supra. Appellants' Specification further states that characterizing
abstracts "can include other information as desired," id. at i-f 33, including
"location" or "operational requirements" of a peripheral device or
component, id., and more generally, characterizing abstracts "characterize
the home-automation edge components with respect to any of a plurality of
properties" or "functional descriptors," id. at i-f 32. Thus, in essence,
Appellants have defined "characterizing abstracts" as being virtually any of
a component's properties, location, operational requirements, or functional
parameters. Id.; In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
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Application 13/223,312
(Fed. Cir. 2004) (claim terms given their "their broadest reasonable
interpretation consistent with the specification").
Accordingly, when Clayton describes a circuit configured to "control
the on/off/dim state" of particular peripheral devices, one of ordinary skill in
the art would understand the circuit is using "characterizing abstracts" (as
Appellants have defined them) such as location of the peripheral device,
operational requirements, functional parameters (i.e., on/ oft), and/ or other
properties. See supra. Clayton, moreover, also discloses "configuration
files" that the controller may use "for controlling [the] peripheral devices."
Ans. 13; Clayton i-f 63. Although Appellants emphasize that Clayton does
not call these files "abstracts" or "characterizing abstracts" (and that such
terms are completely absent from Clayton), anticipation is "not an ipsissimis
verbis test." In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citations
omitted). The configuration files, as they are described in Clayton, also
satisfy Appellants' definition of "characterizing abstracts."
For the foregoing reasons, we sustain the rejection of claims 1-3 and
8-10 under 35 U.S.C. § 102(b) as anticipated by Clayton.
Remaining Claims
Appellants do not argue independent claim 10 separately from claim
1, so we sustain the rejection of claim 10 for the reasons set forth above.
Appellants argue dependent claims 2-9 and 11 are patentable because they
depend from patentable claims 1 and 10, respectively. Because we sustained
the rejection of claims 1 and 10, we also sustain the rejections of claims 2-9
and 11.
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Appeal2015-003184
Application 13/223,312
DECISION
The Examiner's rejections of claims 1-11 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2013).
AFFIRMED
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