Ex Parte McQuaide

Patent Trial and Appeal Board

Jan 27, 2014

11004434 (P.T.A.B. Jan. 27, 2014)

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.
11/004,434 12/04/2004 Arnold McQuaide JR. 040302 4611
38516 7590 01/27/2014
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
ALCON, FERNANDO
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
01/27/2014 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 ARNOLD MCQUAIDE, JR.
1

____________________

Appeal 2011-007849
Application 11/004,434
Technology Center 2400
____________________

Before ELENI MANTIS MERCADER, JASON V. MORGAN, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-18, all pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1
The Real Party in Interest is AT&T Intellectual Property I LP. App. Br. 1.
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STATEMENT OF THE CASE
2

The Invention
Appellant’s invention “relates to computer graphics processing,
operator interface processing, selective visual display systems, and to
television . . . . [and] to a remote control . . . [with multiple operating modes
including] . . . a remote mode . . . a monitor mode . . . and a telephone
mode.” Spec., ¶ [0003] (“BACKGROUND”).
Exemplary Claims
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A system, comprising:
a router wirelessly routing packets of data to a remote
control device, the packets of data comprising Internet Protocol
television signals and Internet Protocol telephone signals;
the remote control device comprising means for
switching the remote control between at least three modes of
operation comprising i) a remote mode of operation that
controls operation of an electronic device, ii) a monitor mode of
operation that displays the television signals, and iii) a
telephony mode of operation that receives the telephone signals;
the remote control device comprising a processor that
inspects a packet header to determine how a received packet is
processed,

2
Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
Nov. 15, 2010); Reply Brief (“Reply Br.,” filed Mar. 21, 2011); Examiner’s
Answer (“Ans.,” mailed Jan. 21, 2011); Final Office Action (“FOA,” mailed
July 19, 2010); and the original Specification (“Spec.,” filed Dec. 4, 2004).
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when the packet header identifies the received
packet as containing video content, then the processor
switches the remote control device to the monitor mode
of operation and processes the received packet for
display, and
when the packet header identifies the received
packet as containing telephony signals, then the
processor switches the remote control device to the
telephony mode of operation and processes the received
packet as a call;
the remote control device comprising a display that
visually presents the Internet Protocol television signals;
the remote control device comprising circuitry for
presenting the Internet Protocol telephone signals as the call;
and
the remote control device comprising circuitry for
sending a control signal to remotely control another device.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Pocock US 5,014,125 May 7, 1991
Lor US 6,201,562 B1 Mar. 13, 2001
Rakib US 2002/0044225 Al Apr. 18, 2002
Allen US 2002/0149705 A1 Oct. 17, 2002
Wingard US 2003/0041104 A1 Feb. 27, 2003
Giraud US 2003/0079020 A1 Apr. 24, 2003
Wittlinger US 2003/0188323 A1 Oct. 2, 2003
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Rejections on Appeal
3

1. Claims 1-3, 6-8, 10-13, 15, 16, and 18 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Rakib,
Wittlinger, and Lor. Ans. 3-9.
2. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Rakib and Lor. Ans. 9-13.
3. Claims 4 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Rakib, Wittlinger, Lor, and
Allen. Ans. 13-15.
4. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Rakib, Wittlinger, Lor, and
Giraud. Ans. 15-16.
5. Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Rakib, Wittlinger, Lor, Wingard,
and Pocock. Ans. 16-17.
ISSUE
Appellant argues (App. Br. 7-12; Reply Br. 4-10) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the

3
We note claims 8, 10, and 18 were rejected as being unpatentable over the
combination of Rakib, Wittlinger, and Lor in the explicit statement of the
rejection (Ans. 3), but the Examiner neither provided a corresponding
detailed rejection in the Answer, nor addressed these claims at all with
respect to this particular rejection. Ans. 4-9. Appellant did not argue these
points in the Briefs. Arguments not made are therefore waived. See 37
C.F.R. § 41.37(c)(1)(vii).
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combination of Rakib, Wittlinger, and Lor is in error. These contentions
present us with the following issue:
Did the Examiner err in combining Rakib with Lor to reject claim 1
because Rakib purportedly teaches away from the suggested combination by
requiring impermissible changes to Rakib’s principles of operation?
ANALYSIS
We only consider those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellant’s conclusions with respect to claims 1-18,
and we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
and rebuttals set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Arguments. However, we highlight and address
specific findings and arguments regarding claim 1 for emphasis as follows.
Appellant’s only argument with respect to the multiple rejections of
all claims on appeal is that the combination of Rakib with Lor is improper
because Rakib would be rendered unsuitable for its intended purpose, and
thereby teaches away from the suggested combination. App. Br. 7 et seq.;
Reply Br. 4 et seq. We disagree with Appellant’s contentions for the reasons
discussed below.
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With respect to the limitations taught by the references, we agree with
the Examiner’s finding that the combination of Rakib, Wittlinger, and Lor
teaches or suggests all the limitations of claim 1 (Ans. 3-7, 17-21), a finding
which Appellant does not contest, except for the purported teaching away of
the reference combination. App. Br. 7 et seq.; Reply Br. 4 et seq.
With respect to the motivation to combine Rakib, Wittlinger, and Lor,
the Examiner finds:
[I]t would have been obvious to one of ordinary skill in
the art (in a system which has a monitor mode of operation and
a telephony mode of operation such as Rakib’s) to include a
processor such as packetizer to identify packets and determine
how a received packet is processed, when a packet is identified
as containing video data a remote control device switching to a
monitor mode of operation, i.e. processing the packet for
display, and for a packet identified as containing voice data a
remote control device switching to a telephony mode, i.e.
processing the packet as a call by modifying the system taught
by Rakib in view of Wittlinger with the teaching of Lot [sic] so
that received data is routed to the correct subsystems in order to
ensure proper data processing, i.e. video data decoded by video
decoder and audio data decoded by audio decoder, since video
data must be output through a display while audio data must be
output through a speaker.
Ans. 6-7. We agree with the Examiner’s finding of motivation to combine
the references in the manner suggested, and we disagree with Appellant’s
numerous arguments in support of the proposition that the reference
combination is improper including, if Rakib were to be combined with Lor,
“then Rakib’s remote control must be bizarrely changed to connect to a
modem and to work with an IP telephony gateway . . . . [such that] much of
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Rakib’s teachings must be eliminated and replaced by Lor’s teachings . . .
[b]ecause these changes are not permitted.” App. Br. 8.
As in this Appeal, an argument that the system is rendered “unsuitable
for its intended purpose” is a “teach away” argument. In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in effect, “French
teaches away from the board’s proposed modification” because “if the
French apparatus were turned upside down, it would be rendered inoperable
for its intended purpose”). The Federal Circuit has held “[a] reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir.1994)).
Further in this regard, we note our reviewing court has held “[w]hat
the prior art teaches and whether it teaches toward or away from the claimed
invention … is a determination of fact.” Para-Ordnance Mfg., Inc. v. SGS
Importers Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). “A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” \See Gurley, 27 F.3d at 553. Teaching an
alternative or equivalent method, however, does not teach away from the use
of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
We specifically note that Appellant’s challenge to the references
individually is not convincing of error in the Examiner’s position because all
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of the features of the secondary reference need not be bodily incorporated
into the primary reference, but consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA
1981)). Furthermore, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984)).
With respect to Appellant’s attack on the references separately,
Appellant does not meaningfully explain why the entirety of Rakib’s
technical approach and principle of operation would necessarily be changed
by incorporating Lor’s processor, e.g., a packetizer, into Rakib’s remote
control device. Further, Appellant does not persuasively argue why the
combination suggested by the Examiner would also require Lor’s Internet
Protocol Video Phone Adapter and interface to a modem to be incorporated
into Rakib’s remote control device. See Syntex (U.S.A.) LLC v. Apotex, Inc.,
407 F.3d 1371, 1380 (Fed. Cir. 2005). A teaching of something different is
not a teaching away.
Appellant has provided no evidence on this record to support the
assertion that the combination of Rakib and Lor teaches away from
Appellant’s invention, apart from mere conclusory statements which are
unsupported by factual evidence and entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). Rather, only attorney argument was presented
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regarding why (i) Rakib’s remote control must be changed to connect to a
modem and to work with an IP telephony gateway (App. Br. 8; and see
Reply Br. 4, 5), and (ii) why “much of Rakib’s teachings must be
eliminated.” App. Br. 12, and see Reply Br. 5-6. See In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974); Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977).
Common sense teaches that familiar items may have obvious uses
beyond their primary purposes, and persons of ordinary skill can often fit the
teachings of multiple patents together like pieces of a puzzle. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, it is not necessary that the
references be physically combinable, without change, to render obvious the
invention under review. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
The criterion instead is what these references would have meant to a person
of ordinary skill in the field of the invention. In re Gorman, 933 F.2d 982,
986 (Fed. Cir. 1991). In the instant case on appeal, we find one of ordinary
skill in the art would recognize that combining the teachings and suggestions
of Rakib, Wittlinger, and Lor could lead to the system recited in claim 1.
Therefore, based upon the findings above, and on the record before us,
we are not persuaded of error in the Examiner’s reliance on the combined
teachings and suggestions of the cited prior art combination to teach or
suggest the disputed limitation of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness.
As Appellant has not provided separate arguments with respect to
independent claims 10 and 11, or dependent claims 2, 3, 6-8, 12, 13, 15, 16,
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and 18, rejected on the same basis as claim 1, we similarly sustain the
Examiner’s rejection of these claims under 35 U.S.C. § 103(a).
§ 103(a) Rejection of Claims 4, 5, 9, 10, 14, 17, and 18
The Examiner variously rejected claims 4, 5, 9, 10, 14, 17, and 18
under 35 U.S.C. § 103(a) as being unpatentable over cited combinations of
Rakib and Lor with other prior art of record. Ans. 9, 13, 15, and 16.
Appellant does not separately or substantively argue against the
rejections of these claims. We note that arguments not made are considered
waived.
4

CONCLUSION
The Examiner did not err with respect to any of the unpatentability
rejections of claims 1-18 under 35 U.S.C. § 103(a) over the various
combinations of the prior art of record, and we sustain the rejections.
DECISION
We affirm the Examiner’s decision rejecting claims 1-18.

4
See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When the
appellant fails to contest a ground of rejection to the Board, section
1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board
to consider the merits of that ground of rejection. . . . [T]he Board may treat
any argument with respect to that ground of rejection as waived.”).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

kis