Ex Parte Mui

Patent Trial and Appeal Board

Feb 3, 2016

13068820 (P.T.A.B. Feb. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/068,820 05/21/2011 Daniel SauFu Mui
47713 7590 02/03/2016
IMPERIUM PATENT WORKS
P.O. BOX607
Pleasanton, CA 94566
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.
ZIL-568-2C 7302
EXAMINER
BROWN, VERNAL U
ART UNIT PAPER NUMBER
2686
MAILDATE DELIVERY MODE
02/03/2016 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte DANIEL SAUFU MUI 1
Appeal2013-002303
Application 13/068,820
Technology Center 2600
Before JAMESON LEE, SALLY C. MEDLEY, and
KRISTEN L. DROESCH, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a Final Rejection
of claims 25--41and43--49.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant indicates the real party-in-interest is UEI Cayman Inc. App.
Br. 1.
2 The rejection of claim 42 has been withdrawn. Ans. 3. The rejection of
claims 48 and 49 under 35 U.S.C. § 112, first paragraph has been
withdrawn. Advisory Action 2 (May 11, 2012). The rejection of claim 25
as unpatentable under the judicially created obviousness-type double
patenting was rendered moot by the filing of a terminal disclaimer and
Appeal2013-002303
Application 13/068,820
BACKGROl.J1'-JD
The disclosed invention is related to a remote control system and
associated methods that includes a key code generator that receives a
keystroke from a remote control device. The key code generator generates a
key code and transmits the key code. Spec. i-fi-12, 7-9.
Illustrative independent claims 25 and 39, reproduced from the Claim
Appendix, read as follows:
25. A method comprising:
(a) receiving a keystroke indicator from a remote control
device, wherein the keystroke indicator indicates a key on the
remote control device that a user has selected;
(b) generating a key code within a key code generator device
using the keystroke indicator;
( c) formatting the key code for transmission and thereby
generating a key code signal; and
( d) transmitting the key code signal from the key code
generator device to an electronic consumer device.
39. A method comprising:
(a) receiving a keystroke indicator from a remote control
device, wherein the keystroke indicator indicates a key on the
remote control device that a user has selected;
(b) generating a key code within a key code generator device
using the keystroke indicator;
( c) formatting the key code for transmission and thereby
generating a key code signal;
( d) transmitting the key code signal from the key code
generator device to an electronic consumer device using a first
modulation technique; and
( e) transmitting the key code signal from the key code
generator device to the electronic consumer device using a
second modulation technique.
payment of the terminal disclaimer fee. Terminal Disclaimer Review
Decision (June 22, 2012).
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REJECTIONS
Claims 25, 27-33, and 48 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pope (US 5,963,624; Oct. 5, 1999) and Graham (US
4,005,428; Jan. 25, 1977).
Claims 26 and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pope, Graham, and Autry (US 5,724,106; Mar. 3, 1998).
Claim 34 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pope, Graham, and Teskey (US 6,747,568 Bl; June 8, 2004).
Claims 36, 38--41, 43--45, 47, and 49 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Pope, Grube (US 5,201,067; Apr. 6,
1993), and Graham.
Claim 37 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pope, Grube, Graham, and Chiloyan (US 6,008,735; Dec. 28, 1999).
Claim 46 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pope, Grube, Graham, and Autry.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments in the Appeal Brief, and the Examiner's Answer in light of the
arguments in the Reply Brief. We determine that Appellant has not shown
error in the Examiner's rejections of claims 25-33, 35--41, 43, and 45--49,
but has shown error in the rejections of claims 34 and 44. We highlight and
address specific findings and arguments for emphasis below.
Unpatentability of Claims 25-32, 35--40, 43, and 45--47
"Keystroke Indicator"
The Examiner finds Pope's description of transmitting appliance
codes from the handset (i.e., remote control) to the base unit (i.e., key code
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generator) teaches "receiving a keystroke indicator from a remote control
device, wherein the keystroke indicator indicates a key on the remote control
device that a user has selected," as recited in independent claim 25 ("the
keystroke indicator limitation"). Final Act. 7. The Examiner further
explains the signal transmitted from the handset to the base unit indicates the
pressed key based on the desired control function. Final Act. 2 (citing Pope
2:57-3:9); Ans. 3 (citing Pope 2:57-3:9), Ans. 4 (Pope 3:35--40).
Appellant contends the Board "has already determined in the parent
case 10/737,029 ... that neither Pope nor Graham teaches the narrower
construction of 'keystroke indicator,' as now recited in claim 25, in which
'keystroke indicator,' indicates which key on a remote control device that a
user has selected." App. Br. 7; see also id. at 9 ("keystroke indicators that
indicate which keys"), 10-12 ("a keystroke indicator that indicates which
key"). Appellant also argues the narrow construction of "keystroke
indicator," recited in claim 25, precludes the appliance control codes of
Pope. Id. at 9-10; Reply Br. 5-6.
Appellant misapprehends our earlier Decision. See Ex parte Mui,
Appeal 2008--4830, slip op. at 16 (BPAI Nov. 17, 2008). Our earlier
Decision rejected the narrow construction of "keystroke indicator signal"
urged by Appellant. Id. Contrary to Appellant's assertions, our earlier
Decision did not endorse or adopt a specific construction for the term
"keystroke indicator," or "keystroke indicator signal." See id.
Further, Appellant's arguments are not commensurate in scope with
the claim language because claim 25 does not require an indication of
"which key" that was selected by a user. For example, we disagree with
Appellant's arguments on page 11 of the Appeal Brief that claim 25 requires
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that when a user presses the "9" key, for example, that the keystroke
indicator signal contains a "9" in the signal. All that is required by claim 25
is that the keystroke indicator indicates a key (i.e., one or more keys) on the
remote control device that a user has selected. We agree with the Examiner
that the keystroke indicator, when interpreted in light of the specification,
need only contain, for example, a function associated with a key or a code
associated with a key in order to meet the claim language. Ans. 5. For these
reasons, we are not persuaded that claim 25 precludes Pope's appliance
control code because claim 25 does not exclude explicitly an appliance
control code from the scope of "keystroke indicator."
Related to the above arguments, Appellant contends Pope's base unit
receives a control code indicating a function instead of receiving a keystroke
indicator that indicates which key a user has selected on a remote control
device. App. Br. 1 O; Reply Br. 5---6. Specifically, Appellant asserts Pope
discloses the use of the handset to scroll through a menu of functions on a
display, and that when transmit key XMIT on the handset is pressed, the
control code for the selected function is transmitted to the base unit. App.
Br. 10. Appellant argues that it is not true that each control code received by
the base unit indicates the pressed key based on the desired function that the
control code represents because various keys or combinations of keys can be
assigned to a function, and the base unit could not know the particular keys
that were selected. Id. at 10-11.
We are not persuaded by Appellant's arguments regarding Pope's
appliance control code indicating a function because claim 25 does not
exclude explicitly the keystroke indicator from indicating a selected function
as explained above. We agree with the Examiner's broad but reasonable
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construction of "keystroke indicator" as including an indicator of a desired
function, based on the Specification disclosure of the keystroke indicator
signal corresponding to a function. Ans. 5 (citing Spec. if 7); Spec. iii! 23, 24.
The Examiner's construction is reasonable in light of the Specification which
discloses "the keystroke indicator signal can be an indication of a pressed key
where there is a one-to-one relationship between the key and a function to be
performed." Spec. ii 54. As pointed out by Appellant, Pope discloses an
appliance control code for a selected function which is transmitted to the
base unit when transmit key XMIT on the handset is pressed (see App. Br.
10, Pope 2:57-3:4). Pope further discloses "there can be dedicated keys for
some or all of the appliance control functions," and "individual functions
can be mapped with the associated buttons of the keypad." Pope 2:57---60,
3: 12-19. We agree the keystroke indicator limitation is met by Pope's
teaching of receiving an appliance control code from the handset, because
the receipt of the appliance control code indicates a key (i.e., one or more
keys, the XMIT key) on the remote control device that a user has selected.
For these same reasons, we are not persuaded that Pope does not teach the
keystroke indicator limitation "because the fact that transmit key XMIT was
selected is not conveyed to the base unit[]." See App. Br. 10; see also
Reply Br. 6 ("the only information conveyed in the signal ... is that the
indicated function has been selected").
"Generating a Key Code"
The Examiner finds Pope's description of the base unit processor
retrieving an infrared control code from the base unit memory based on the
appliance control code, and transmitting the infrared control code from the
base unit to an appliance teaches "generating a key code within a key code
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generator device using the keystroke indicator ... and transmitting the key
code signal from the key code generator to an electronic consumer device,"
as recited in claim 25. Final Act. 7; Ans. 4 (both citing Pope 3:35-50). The
Examiner further explains that Pope's appliance control code teaches a
keystroke indicator, and Pope's infrared (IR) control code teaches the key
code. Final Act. 3, 7; Ans. 6.
Appellant argues the keystroke indicator cannot be synonymous with
the key code. App. Br. 9; see Reply Br. 5. Appellant contends it is improper
to construe Pope's appliance control code to teach both a keystroke indicator
and a key code, and would render claim 25 internally inconsistent. Id. at 11-
12. Appellant further argues that the Examiner's position that the keystroke
indicator is the RF signal transmitted from the handset, and the generated
key code is the IR code transmitted from the base unit to an appliance (see
Ans. 6) is erroneous because claim 25 does not require a signal. Reply Br.
10. Appellant asserts: ( 1) neither the keystroke indicator nor the key code is
a signal, and (2) the keystroke indicator is distinct from a keystroke indicator
signal that contains the keystroke indicator. Id.
We are not persuaded by Appellant's arguments because the
Examiner does not rely on Pope's appliance control code to teach both a
keystroke indicator and a key code. Appellant also does not meaningfully
explain, or direct us to a Specification disclosure explaining, how a
keystroke indicator is distinct from a keystroke indicator signal. The term
"key stroke indicator" is broader than and includes within its scope the
narrower term "keystroke indicator signal." In other words, the term
keystroke indicator encompasses a keystroke indicator signal and other
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means for conveying the keystroke indicator. We further observe that the
Specification utilizes repeatedly the term "keystroke indicator signal."
Appellant further contends Pope does not teach generating a key code
within the base unit (i.e., a key code generator device) because the base unit
receives the appliance control code from the handset and transmits or
transfers the appliance control code to an appliance. App. Br. 12-13
(quoting Pope 1:31-36, 4:49-51). Appellant argues: (1) Pope cannot teach
generating a key code by translating the same key code that it has already
received; and (2) converting received control codes into an infrared format is
not the same as generating the control codes. Id. at 13-14 (citing Pope
1 :31-36, 2:48-52, 2:63---65, 4:49-51 ).
Appellant's arguments do not address sufficiently the teachings of
Pope relied upon by the Examiner. We agree with and adopt the Examiner's
finding that Pope teaches the base unit using the received appliance control
code to retrieve the infrared code from the base unit memory. Final Act. 3
(citing Pope 5:6-10), 7; Ans. 6 (citing Pope 5:3-10); see also Pope 6:14--18,
claim 5 (describing the received appliance control code as a pointer to the
infrared control codes stored in the memory of the base unit).
For all of the foregoing reasons, we are not persuaded of error in the
rejection of claim 25 as unpatentable over Pope and Graham. Appellant
presents arguments under separate headings addressing independent claims
36 and 39, which are substantially identical to the arguments presented
addressing independent claim 25. Compare App. Br. 19-22, with App. Br.
7-14. Therefore, for the same reasons provided with respect to claim 25, we
are not persuaded of error in the rejection of independent claims 3 6 and 3 9
as unpatentable over Pope, Graham, and Grube.
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Claims 27-32 and 35 depend from claim 25, claims 37 and 38 depend
from claim 36, and claims 40, 43, and 45--47 depend from claim 39.
Appellant does not present separate substantive arguments addressing the
limitations of dependent claims 27-32, 35, 37, 38, 40, 43, and 45--47. See
App. Br. 14--17, 22-26. Accordingly, for the same reasons provided with
respect to claims 25, 36 and 39, we are not persuaded of error in the
rejections of: (1) claims 27-32 as unpatentable over Pope and Graham; (2)
claims 26 and 35 as unpatentable over Pope, Graham, and Autry; (3) claims
38, 40, 43, 45, and 47 as unpatentable over Pope, Grube, and Graham (4)
claim 37 as unpatentable over Pope, Grube, Graham, and Chiloyan; and (5)
claim 46 as unpatentable over Pope, Grube, Graham, and Autry.
Unpatentability of Claim 33
Claim 33 depends from claim 25 and recites "the key code generated
in (b) is part of a codeset, and wherein the codeset is not stored on the
remote control device." The Examiner finds Pope's infrared control code
generated by the base unit is not stored in the handset (i.e., remote control)
because the base unit is required to translate the received code from the
handset (i.e., remote control) into code for controlling the appliance. Final
Act. 3 (citing Pope 3:35-36, 5:6---10); see Ans. 6. The Examiner further
explains the claimed codeset is taught by the infrared codes stored in the
memory of the base unit. Ans. 6 (citing Pope 5:3-10).
Appellant argues Pope's appliance control codes transmitted from
handset to base unit are stored in memory of handset. App. Br. 15 (citing
Pope 2:48-52, 4:27-28). Appellant argues Pope's infrared control code sent
to an appliance does not teach the recited key code because the infrared
control code is not associated with the particular key that was pressed, but is
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Application 13/068,820
associated with a desired appliance control function. Id. Appellant further
asserts a key code associates a function of an electronic consumer device
with a key or keys of a remote control device. Reply Br. 11. Appellant
asserts this association is not present on Pope's base unit, but is present on
Pope's handset as the appliance control codes stored in the handset memory.
Id. (citing Pope 5: 16-17, 31-33).
We are not persuaded by Appellant's arguments because they are not
commensurate in scope with the claim limitations. Claim 33 (and claim 25
from which it depends) does not recite or require the key code to associate a
function of an electronic consumer device with a key or keys of a remote
control. We agree with and adopt the Examiner's finding that Pope teaches
generating the infrared key code from a codeset stored in the base unit
memory, and not stored on the handset. We further observe that Pope
teaches the received appliance control code is a pointer to the infrared
control codes stored in the memory of the base unit. Pope 6: 14--18, claim 5.
For these reasons, in addition to those addressing claim 25 above, we
are not persuaded of error in the rejection of claim 33 as unpatentable over
Pope and Graham.
Unpatentability of Claims 48 and 49
Claim 48 depends from claim 25, and claim 49 depends from
independent claim 39. Claims 48 and 49 each recite "the keystroke indicator
is not a code that is understood by the electronic consumer device." We
agree with and adopt the Examiner's finding that Pope teaches the appliance
control code (i.e., keystroke indicator) received from the handset is
converted to an infrared signal format and transmitted to the appliance, and
therefore, the appliance control code is not understood by the appliance
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because it is not in a format acceptable by the appliance. Final Act. 8, 12
(both citing Pope 3:35--40).
Appellant argues Pope's appliance control code is understood by the
appliance when it is formatted. App. Br. 16, 24--25 (both citing Pope 4:49-
51). We are not persuaded by Appellant's arguments. As explained above
addressing claim 25, the Examiner relies on Pope's appliance control codes
received from the handset for teaching the keystroke indicator limitation,
and Pope's infrared control codes from base unit memory for teaching the
generated key code. We agree with and adopt the Examiner's finding that
Pope's appliance control code received by the handset is not in a format
acceptable by the appliance. Appellant does not direct us to evidence
sufficient to demonstrate that Pope's appliance control codes received from
handset (i.e., remote control) is a code that is understood by Pope's
appliances (i.e., TV, Cable, CD, etc.).
For these reasons, in addition to those addressing claims 25 and 39
above, we are not persuaded of error in the rejections of claim 48 as
unpatentable over Pope and Graham, and claim 49 as unpatentable over
Pope, Grube, and Graham.
Unpatentability of Claim 41
Claim 41 depends from claim 40, which depends from claim 39.
Intervening claim 40 recites "the key code signal is transmitted in ( d) in the
form of a radio frequency transmission, and wherein the key code signal is
transmitted in ( e) is in the form of an infrared frequency transmission."
Claim 41 recites "the electronic consumer device is not capable of receiving
the radio frequency transmission, and wherein the transmitting in ( e) is
performed after the transmitting in ( d)." The Examiner relies on the
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combined teachings of Pope, Grube, and Graham to teach or suggest all of
the limitations of claim 41. Final Act. 4 (citing Grube 4:9-24), 10-11
(citing Pope 3:35--40; Grube 4:9-24; Graham 2:7-21); Ans. 7-8 (citing Pope
3:35--40, 5:35--40; Grube 4:9-24, 6:1-11).
Appellant argues the Examiner does not present a prima facie case of
obviousness because the Examiner "does not contend that any of Pope,
Graham or Grube teaches transmitting an RF transmission to an electronic
consumer device and then transmitting an IR transmission to the electronic
device after the device is not capable of receiving the RF transmission."
App. Br. 22; see Reply Br. 14--15. Specifically, Appellant contends "Grube
does not transmit an RF transmission to an electronic device and then
transmit an IR transmission to the electronic device if the device was not
capable of receiving the RF transmission." App. Br. 23 (emphasis added);
see also Reply Br. 15 ("Grube does not determine whether a device was
capable of receiving one type of transmission."). In other words, Appellant
contends "wherein the electronic consumer device is not capable of
receiving the radio frequency transmission" recited in claim 41, requires a
determination step that is performed as part of step ( d) of claims 39 and 40.
We agree with the Examiner that claim 41 does not recite or require
transmitting an infrared frequency transmission after there is a determination
that the electronic consumer device is not capable of receiving an RF
transmission. Final Act. 4. When considering the limitations of claims 39
through 41 together, there is no requirement that transmitting the IR signal
must occur after there is a determination that a consumer device is not
capable of receiving the RF transmission. Appellant does not direct us to
language in claims 39 through 41 connecting the subsequent transmission of
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the infrared key code signal to any determination that the electronic
consumer device is not capable of receiving a first radio frequency key code
transmission.
For these reasons, in addition to the reasons addressing claims 25, 36
and 39, we are not persuaded of error in the rejection of claim 41 as
unpatentable over Pope, Grube, and Graham.
Unpatentability of Claim 44
Claim 44 depends from claim 39 and recites "before the transmitting
in ( e): ( t) determining that the key code signal using the first modulation
technique cannot be used to communicate with the electronic consumer
device." The Examiner relies on the combined teachings of Pope, Grube,
and Graham to teach or suggest all of the limitations of claim 44. Final Act.
10-11 (citing Pope 3:35--40; Grube 4:9-24; Graham 2:7-21). Specifically,
the Examiner relies on Grube for teaching the limitation of claim 44 based
on Grube' s teaching of selecting the modulation scheme of the code signal
according to the requirement of the remote control signal. Ans. 8 (citing
Grube 4:9-24, 6:1-11).
Appellant argues the Examiner does not indicate where Grube teaches
determining that a key code signal using a modulation technique cannot be
used to communicate with a device. Reply Br. 15. Appellant contends
Grube makes no determination that any modulation technique cannot be
used or that a device is not capable of receiving a transmission. Id.
We are persuaded of error in the rejection of claim 44. The Examiner
does not provide sufficient explanation, or direct us to sufficient supporting
evidence, demonstrating that Grube' s selection of the appropriate transmitter
in accordance with the requirement of the remote control signal requested
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(see Grube 6:1-10) teaches or suggests determining that the key code signal
using the first modulation technique cannot be used to communicate with the
electronic consumer device.
For these reasons, we cannot sustain the rejection of claim 44 as
unpatentable over Pope, Grube, and Graham.
Unpatentability of Claim 34
Claim 34 depends from claim 25 and recites: "the key code generated
in (b) is part of a codeset, and wherein the codeset comprises timing
information that describes a digital one and a digital zero." The Examiner
finds "Pope teaches the infrared signal [ (i.e., key code)] transmitted from the
base unit (code generator) is a pulse train and the train of pulses is 1. 6
microsecond indicating a high (ones) or low bit (zeroes)." Ans. 7 (citing
Pope 3:40-47). The Examiner finds that Teskey teaches "the transmitted IR
codes provides the necessary timing information each bits of the infrared
code." Id. (citing Teskey 3:60-4:8).
Appellant contends Pope's teaching of an infrared signal transmitted
as a train of pulses indicating high and low bits does not teach that codeset
timing information is used to describe digital ones and zeroes. Reply Br. 13.
For example, Appellant's Specification discloses the use of 19 bursts of a
38.5 kHz intermediary signal having an "on-time" of ten microseconds and
an "off time" of sixteen microseconds to generate a 490 microsecond mark
length representing a digital zero, and generating 151 bursts of the 38.5 kHz
signal to generate a 3940 microsecond mark length representing a digital
one. Spec. i-f 35, Fig. 6A. Appellant argues Teskey does not make clear that
a codeset with timing information describing digital ones and zeroes is
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necessarily present in Teskey because the signal timing information of
Teskey does not necessarily describe digital ones and zeroes. Id. at 13-14.
We are persuaded of error in the rejection of claim 34. The Examiner
does not provide sufficient explanation, or direct us to sufficient supporting
evidence, demonstrating that Pope's infrared code comprising a train of
pulses with each pulse being 1.6 microseconds long, and indicating a one or
a zero (Pope 3:45--47), combined with Teskey's remote control signal format
characteristics including overall signal timing information (Teskey 3: 60-
4: 8), teaches or suggests a codeset comprising timing information that
describes a digital one and a digital zero. Specifically, it is not clear how
Pope's train of 1.6 microsecond pulses, with each pulse indicating a high
(" 1 ") or low ("O") bit, as modified in view of Teskey' s general teaching of
signal timing information, teaches or suggests that it is the timing
information of the codeset pulses or signals that describes digital ones and
digital zeroes.
For these reasons, we cannot sustain the rejection of claim 34 as
unpatentable over Pope, Graham, and Teskey.
DECISION
We AFFIRM the rejections of claims 25-33, 35--41, 43, and 45--49.
We REVERSE the rejections of claims 34, and 44.
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
kis
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