Ex Parte Meijer et al

Patent Trial and Appeal Board

Sep 14, 2016

13460267 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/460,267 04/30/2012 Gerben Meijer
34018 7590 09/16/2016
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.
81230.158US 1 8238
EXAMINER
RABOVIANSKI, JIVKA A
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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 GERBEN MEIJER and PA TRICK H. HA YES 1
Appeal2015-001710
Application 13/460,267
Technology Center 2400
Before: JOHN F. HORVATH, MICHAEL M. BARRY, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134 from rejections of claims 1-
23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Universal Electronics Inc. as the real party in interest.
(App. Br. 2.)
Appeal2015-001710
Application 13/460,267
CLAIMED INVENTION
The claimed invention is directed to systems and methods for
detecting the removal of a controlling device. (Spec. 1.) Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for using a controllable appliance to determine
an inoperable state of a controlling device, the method
compnsmg:
causing the controllable appliance to repeatedly
determine, at a first predetermined timed interval, if a wireless
notification signal has been received from the controlling
device; and
when the wireless notification signal has not been
received from the controlling device within the first
predetermined timed interval, causing the controllable
appliance to issue a status notification that the controlling
device is in an inoperable state.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sakamoto
Ueno et al.
US 2007 /0200727 Al
US 2009/0184161 Al
REJECTIONS
Aug.30,2007
July 23, 2009
Claims 1, 4, and 12 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. (Final Act. 2, Ans. 2-3.)
Claims 1, 3-5, 7, 9, 11-13, 15, and 17 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Ueno. (Final Act. 3---6, Ans. 3-7.)
Claims 2, 6, 8, 10, 14, 16, and 18-23 stand rejected under 35 U.S.C.
2
Appeal2015-001710
Application 13/460,267
§ 103(a) as unpatentable over Ueno and Sakamoto. (Final Act. 7-10, Ans.
7-10.)
ANALYSIS
Indefiniteness Rejection
Appellants argue the Examiner erred in rejecting claims 1, 4, and 12
for indefiniteness. (App. Br. 5-8.) "The test for definiteness is whether one
skilled in the art would understand the bounds of the claim when read in
light of the specification." Miles Labs, Inc. v. Shandon Inc., 997 F.2d 870,
875 (Fed. Cir. 1993). To establish a prima facie case of indefiniteness, an
Office Action must set forth why the metes and bounds of a claim term or
phrase are unclear. See MPEP § 2173 .02(III)(B). Here, the Examiner
identifies the term "first predetermined timed interval," recited in claim 1,
and the term "second predetermined timed interval," recited in claims 4 and
12, as indefinite. (Final Act. 2, Ans. 2-3, 10-12.) The Examiner's
reasoning is that the Specification does not explain the terms in the way
claimed. (Final Act. 2, Ans. 2-3, 10-12.) That reasoning, however, is more
applicable to a rejection under 35 U.S.C. § 112, first paragraph, for a lack of
written description support, than to an indefiniteness rejection. As a result,
we are not persuaded that the terms "first predetermined timed interval" and
"second predetermined timed interval" by themselves are indefinite.
We conclude, however, that the phrase "the first predetermined timed
interval" in claim 1 is indefinite because the claim specifies more than one
first predetermined timed interval that causes the status notification to be
issued. In particular, claim 1 recites repeated determinations at a first
predetermined timed interval: "causing the controllable appliance to
repeatedly determine, at a first predetermined timed interval, if a wireless
notification signal has been received from the controlling device." With
3
Appeal2015-001710
Application 13/460,267
these repeated determinations, a "first predetermined interval" exists
between the first and second determinations, another exists between the
second and third determinations, and so forth. Claim 1 is ambiguous as to
which, if any, of these intervals is "the [recited] first predetermined timed
interval" that causes the status notification to be issued.
An example illustrates the ambiguity. If the first predetermined timed
interval is 20 seconds, repeated determinations could be made at 0, 20, 40,
and 60 seconds. In which case, the intervals between 0 and 20 seconds, 20
and 40 seconds, and 40 and 60 seconds would all be 20-second timed
intervals (i.e., first predetermined timed intervals). Claim 1 does not
indicate which of these 20-second timed intervals is "the first predetermined
timed interval" that causes the status notification to be issued.
It could be argued in light of the Specification that "the first
predetermined timed interval" could be construed to mean any of the first
predetermined timed intervals. (See, e.g., Specification Fig. 5.) In this case,
the controllable appliance would issue the status notification if, during any
first predetermined timed interval, a wireless notification signal was not
received. Even if such a construction were plausible, however, the term "the
first predetermined timed interval" would remain indefinite because it would
be amenable to two or more plausible claim constructions, e.g., the interval
between 0 and 20 seconds or any 20-second interval. Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BP AI 2008) (precedential).
Accordingly, we sustain the rejection of claim 1. We also sustain the
rejection of claim 4 based on its dependency on claim 1. Further, we sustain
the rejection of claim 12 based on its dependency on claim 9, which also
recites "the first predetermined timed interval" and presents the same
indefiniteness issue as claim 1.
4
Appeal2015-001710
Application 13/460,267
Because the reasoning and fact finding we rely upon to sustain the
indefiniteness rejection of claims 1, 4, and 12 differ from the reasoning and
fact finding by the Examiner, we designate our affirmance of this rejection
as a NEW GROUND OF REJECTION in order to provide Appellants with a
full and fair opportunity to respond to the thrust of the rejection.
Indefiniteness: Claims 2, 3, 5-11, and 13-23
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
2, 3, 5-11, and 13-23 under 35 U.S.C. § 112, second paragraph, for
indefiniteness.
Independent claim 9 is indefinite because it recites the phrase "within
the first predetermined timed interval," which is ambiguous for the reasons
discussed above for claim 1. Dependent claims 2, 3, 5-8, and 13-17 are
indefinite because each ultimately depends on either claim 1 or claim 9.
Claim 18 is indefinite because it recites "within a repeatedly
measured, second predetermined timed interval." In context, claim 18
requires that the set top box determine that the controlling device is in an
inoperable state in the event the wireless notification signal has not been
received within a repeatedly measured, second predetermined timed interval.
Because claim 18 repeatedly measures the second predetermined timed
interval, claim 18 specifies more than one second predetermined timed
interval. Therefore, it is unclear which second timed interval is "the second
predetermined timed interval" that could trigger a determination that the
controlling device is in an inoperable state. (See discussion above for claim
1.) Claims 19-23 are indefinite because each ultimately depends on claim
18.
5
Appeal2015-001710
Application 13/460,267
Claim 1
Prior Art Rejections
Appellants argue the Examiner erred in finding that Ueno discloses
the repeatedly-determining element2 of independent claim 1. 3 (App. Br. 8-
10.) Appellants contend that Ueno does not disclose having television
receiver 200 (Ueno's controllable appliance) repeatedly determine at a
predetermined timed interval if a wireless notification has been received
from remote control 100 (Ueno's controlling device). (Id.) In particular,
Appellants argue that although Ueno uses a timer, Ueno does not use that
timer to repeatedly determine at a predetermined timed interval whether
wireless notification has been received by the television receiver 200 from
the remote control 100. (Id.) Instead, Ueno uses its timer to determine
whether a predetermined timed interval has passed so Ueno can place remote
control 100 in a low power state. (Id.) Based on the record before us, we
agree with the Appellants.
Although we agree with the Examiner that the repeatedly-determmmg
element of claim 1 does not require that a timer be in the television receiver
(Ans. 14), neither the Final Action nor the Answer sufficiently explain how
Ueno discloses such a repeated determination by the controllable appliance
at a predetermined timed interval as claimed. (Final Act. 3--4; Ans. 3--4.)
Anticipation is a strict standard that requires finding each and every element
2 "causing the controllable appliance to repeatedly determine, at a first
predetermined timed interval, if a wireless notification signal has been
received from the controlling device."
3 As discussed above, we conclude that the term "the first predetermined
time interval" in claim 1 is indefinite. We can nevertheless address
Appellants' arguments regarding the repeatedly-determining element
because that element does not recite the indefinite term.
6
Appeal2015-001710
Application 13/460,267
as set forth in the claim, either expressly or inherently, in a single prior art
reference, arranged as required by the claim. Verdegaal Bros., Inc. v. Union
Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). "The identical
invention must be shown in as complete detail as is contained in the ...
claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir.
1989). Accordingly, based upon and constrained by the record before us, we
are not persuaded that Ueno discloses the repeatedly-determining element of
claim 1, and we do not sustain its rejection. 4
Claim 9
Independent claim 9 recites an element commensurate with the
repeatedly-determining element of claim 1. (App. Br. 15 (Claims App'x).)
Accordingly, we do not sustain the rejection of claim 9 for the same reasons
as for claim 1.
Claim 18
Independent claim 18 is directed to a method for using a set top box
and also recites an element commensurate with the repeatedly-determmmg
element of claim 1. (App. Br. 17 (Claims App'x).) Although claim 18 was
rejected for obviousness over the combination of Ueno and Sakamoto (Final
Act. 8, Ans. 7), the Examiner relies only on Ueno for repeatedly determining
at a predetermined timed interval if a wireless notification has been received
from the controlling device (the remote control) as recited in claim 18. (The
Examiner relies upon Sakamoto for disclosing the type of receiver specified
4 In light of this resolution, we do not need to address Appellants' arguments
regarding the status-notification element of claim 1 (i.e., "when the wireless
notification signal has not been received from the controlling device within
the first predetermined timed interval, causing the controllable appliance to
issue a status notification that the controlling device is in an inoperable
state.") (App. Br. 8-10.)
7
Appeal2015-001710
Application 13/460,267
in claim 18. See Ans. 14--15.) Accordingly, we do not sustain the rejection
of claim 18 for the same reasons as for claim 1.
Claims 2--8, 10--17, and 19-23
Claims 2-8, 10-17, and 19-23 each incorporate through dependency
the elements of one of independent claims 1, 9, or 18 and therefore, for the
reasons discussed above, we do not sustain their rejections.
DECISION
We affirm the indefiniteness rejection of claims 1, 4, and 18, but
designate that affirmance as a new ground of rejection.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter an
additional new ground of rejection, rejecting claims 2, 3, 5-11, and 13-23
under 35 U.S.C. § 112, second paragraph, as indefinite.
We reverse the prior art rejections of claims 1-23.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
8
Appeal2015-001710
Application 13/460,267
opinion of the examiner, overcomes the new ground of
rejection designated in the decision. Should the examiner reject
the claims, appellant may again appeal to the Board pursuant
to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
The request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which
rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. & 41.50(b)
9