Ex Parte Lim et alDownload PDFPatent Trial and Appeal BoardFeb 22, 201613313147 (P.T.A.B. Feb. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/313,147 12/07/2011 Jonathan Lim 34018 7590 02/24/2016 GREENBERG TRAURIG, LLP 77 WEST WACKER DRIVE SUITE 3100 CHICAGO, IL 60601-1732 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. 81230.124US7 8584 EXAMINER TO, BAOQUOC N ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 02/24/2016 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): j arosikg@gtlaw.com chiipmail@gtlaw.com escobedot@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN LIM and JOSEPH LEE HAUGHAWOUT Appeal2014-004289 Application 13/313, 14 7 Technology Center 2100 Before JEAN R. HOMERE, JOHNNY A. KUMAR, and CHARLES J. BOUDREAU, Administrative Patent Judges. BOUDREAU, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 Appellants identify Universal Electronics Inc. as the real party in interest. App. Br. 2. Appeal2014-004289 Application 13/313, 147 STATEMENT OF THE CASE Appellants ' Claimed Invention The claimed invention relates to a method for configuring a universal controlling device. Spec. 3, 11. 1 7-18. Illustrative Claim Claim 1, the sole independent claim on appeal, reads as follows: 1. A method for providing a codeset for controlling functional operations of a target appliance to a portable device, compnsmg: receiving via a network at a server computer from the portable device data indicative of a selection criteria; using the data indicative of the selection criteria at the server computer to select a plurality of images from a pictorial database associated with the server computer; providing via the network from the server computer to the portable device the plurality of images selected from the pictorial database; receiving via the net\~1ork at the seP1er computer from the portable device data indicative of a selection of one of the plurality of images; using the data indicative of the selection of one of the plurality of images to select a codeset from a codeset database associated with the server computer; and providing via the network from the server computer to the portable device the codeset selected from the codeset database wherein the codeset selected from the codeset database is adapted to configure the controlling device to command functional operations of a target appliance corresponding to the selection criteria and the selected one of the plurality of images. 2 Appeal2014-004289 Application 13/313, 147 Rejections on Appeal Claims 1, 4--11, and 14--20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Colmenarez (US 2004/0208588 Al; published Oct. 21, 2004). Final Act. 6-11. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Colmenarez and Fitzgibbon (US 2004/0198251 Al; published Oct. 7, 2004). Final Act. 12-13. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Colmenarez and Cloutier (US 2002/0077117 Al; published June 20, 2002). Final Act. 11-12.2 ISSUE ON APPEAL The dispositive issue before us is whether the Examiner erred in finding that Colmenarez discloses all steps recited in claim 1, including in particular the steps of "receiving via a network at a server computer from the portable device data indicative of a selection criteria" and "receiving via the network at the server computer from the portable device data indicative of a selection of one of the plurality of images." 2 Claims 1-13 were also finally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 7,783,676 and claims 1-13 of U.S. Patent No. 7,765,212, and provisionally rejected on the same ground over claims 1-19 of copending Application No. 12/857,227. Final Act. 3---6. The double patenting rejections were withdrawn in the Examiner's Answer. Ans. 2. 3 Appeal2014-004289 Application 13/313, 147 ANALYSIS We have reviewed Appellants' arguments in the Briefs, the Examiner's rejection, and the Examiner's response to Appellants' arguments. We agree with Appellants that the Examiner erred in finding that Colmenarez anticipates claims 1, 4--11, and 14--20. Colmenarez discloses a universal remote control unit ("remote 1 O") that, in one embodiment, includes a database (1 Os) for storing a collection of templates of the front faces and associated command protocols of many devices available from various manufacturers, including appliances and home electronic information. Colmenarez i-fi-f l, 38. Colmenarez discloses that remote 10 "[ t ]ypically ... will come with the ... templates and associated command protocols for many commonly available devices preloaded in database 10s." Id. at i138. In addition, for devices introduced after the sale of remote 10 or otherwise not included in database 1 Os, Colmenarez discloses that "the template and command controls may be available for downloading to the user's PC ... from a manufacturer's website" and "may then be transferred from the user's PC to the database ... via a USB connection, for example." Id. Alternatively, the remote may receive a wireless download of the command protocols from the device at which it is pointing, for example, via a narrow field infrared light sensor. Id. at ,-r 57. Appellants argue that Colmenarez does not disclose any of the first five steps recited in claim 1. App. Br. 6. According to Appellants, While Colmenarez . . . discloses that the templates as stored in the remote contro 1 10 may be transferred from a user's PC/manufacturer's website to the remote control 10 in cited to 4 Appeal2014-004289 Application 13/313, 147 paragraph 003 8, it is respectfully submitted that the templates that are transferred from the user's PC/manufacturer's website to the remote control 10 are not selected via use of a selection criteria that is provided via a network to a server computer.from the portable device. In this regard, Colmenarez has no disclosure related to anything being provided to/received at a server device from the remote control 10. Id. at 8. We are persuaded by Appellants' arguments. We agree, in particular, with Appellants' argument that Colmenarez does not disclose a server receiving anything via a network from a portable device (e.g., Colmenarez's remote control), let alone "data indicative of a selection criteria" or "data indicative of a selection of one of [a] plurality of images" in tum selected by the server using the data indicative of the selection criteria and provided via the network from the server to the portable device, as recited in claim 1. App. Br. 9. Accordingly, we will not sustain the Examiner's rejection of independent claim 1 and its dependent claims 4--11 and 14--20 under 35 U.S.C. § 102(b) as being anticipated by Colmenarez. Because the identified error is dispositive of this rejection, we need not reach the merits of Appellants' remaining arguments. Claims 2, 3, 12, and 13 Appellants present no argument with respect to the rejections under 35 U.S.C. § 103(a) of claims 2 and 3 over the combination of Colmenarez and Fitzgibbon and claims 12 and 13 over the combination of Colmenarez and Cloutier. Accordingly, we summarily affirm those rejections. 5 Appeal2014-004289 Application 13/313, 147 DECISION The rejection of claims 1, 4--11, and 14--20 under U.S.C. § 102(b) is reversed. The rejections of claims 2, 3, 12, and 13 under U.S.C. § 103(a) are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 6 Copy with citationCopy as parenthetical citation