Ex Parte Louie et al

Patent Trial and Appeal Board

Jun 22, 2016

13443046 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/443,046 04/10/2012 Alex Louie
34018 7590 06/24/2016
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.
81230.108US3 3263
EXAMINER
RABOVIANSKI, JIVKA A
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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 ALEX LOUIE, CESAR ALVARADO, and PATRICK H. HA YES
Appeal2015-001646
Application 13/443,046
Technology Center 2400
Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-32, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Universal Electronics
Inc. App. Br. 2.
Appeal2015-001646
Application 13/443,046
STATEMENT OF THE CASE
Introduction
Appellants' present application relates to automatically selecting a
device for playback of a previously-recorded program. Abstract. Claim 1 is
illustrative of the subject matter on appeal and reads as follows:
1. A method for enabling a user to effect playback of a
program that was previously recorded by a recording device
using a one of a plurality of playback devices in communication
with the recording device, the method comprising:
using data maintained within a portable device to
automatically select the one of the plurality of playback devices
to playback the program that was previously recorded by the
recording device; and
causing the selected one of the plurality of playback
devices to playback the program.
The Examiner's Rejection
Claims 1-32 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Ma (US 2006/0123449 Al; June 8, 2006). Ans. 2-8.
ANALYSIS
The Examiner finds Ma discloses "using data maintained within a
portable device to automatically select the one of the plurality of playback
devices to playback the program that was previously recorded by the
recording device." See Ans. 8-9, Final Act. 2-3. Specifically, the Examiner
finds Ma teaches the viewer can select a device to view previously recorded
media. Final Act. 3 (citing Ma ,-i,-i 53-55, 59, 75, Figs. 1, 3, 5).
Appellants argue the Examiner erred because Ma relates to selecting a
device to record a program, not automatic selection of a device to playback a
2
Appeal2015-001646
Application 13/443,046
previously-recorded program. App. Br. 3--4. Appellants argue Ma teaches
the user must manually select the device to be used for playback. App. Br.
5-6.
The Examiner responds in the Answer that Ma teaches the device
learns the user's usage patterns and automatically records the selected
program using a suitable recording device. Ans. 9 (citing Ma ,-i,-i 3--4). The
Examiner finds Ma's handheld device sends a command to the recording
device to record the program and to view the program at the recorded
location. Ans. 9 (citing Ma ,-i,-i 41, 74, 78).
Ma teaches analyzing usage patterns by a user to adapt to operate in
the user's preferred manner. Ma ,-i 78. For example, if a user frequently
watches The History Channel at a particular volume, the television will
automatically tune to the History Channel at that volume when the user turns
on the television. Id. In addition, if the user repeatedly records a program
but forgets to record that program one day, the device will alert the user. Id.
However, none of the example adaptations relate to automatic playback of a
previously recorded program. As argued by Appellants, Ma does not
disclose such automatic playback and the portions cited by the Examiner
relate, at best, to automatic recording of programs, not automatic playback.
See App. Br. 3-6. Accordingly, on the record before us, we are constrained
to reverse the Examiner's rejection because Ma does not disclose the
disputed limitation. 2
2 Because we are persuaded of error with regard to the identified issue,
which is dispositive of the rejection of claim 1 over Ma, we do not reach the
additional issues raised by Appellants' arguments.
3
Appeal2015-001646
Application 13/443,046
CONCLUSIONS
On the record before us and in view of the analysis above, Appellants'
argument has persuaded us that the Examiner erred in rejecting claim 1.
Therefore, we do not sustain the rejection of claim 1, independent claim 17,
which recites similar limitations, and claims 2-16 and 18-32 dependent
therefrom.
DECISION3
We reverse the decision of the Examiner to reject claims 1-3 2.
REVERSED
3 In the event of further prosecution we leave it to the Examiner to consider
whether the instant claims are obvious under 35 U.S.C. § 103 or not.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
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