Ex Parte Newell

Patent Trial and Appeal Board

Sep 20, 2018

13706043 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/706,043 12/05/2012
70336 7590 09/24/2018
Seed IP Law Group/DISH Technologies (290110)
701 FIFTH A VENUE
SUITE 5400
SEATTLE, WA 98104
Nicholas B. Newell
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.
P2012-05-10/290110.550 1095
EXAMINER
MONSHI, SAMIRA
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS B. NEWELL
Appeal2018-003284
Application 13/706,043
Technology Center 2400
Before CARL W. WHITEHEAD JR., JASON V. MORGAN and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1-10 and 12-26
under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm-in-part.
Introduction
The invention is directed to:
[A] set-top box configured to store in memory a plurality
of user identification codes associated with respective portable
electronic devices each carried by a respective individual user of
home entertainment system. The portable electronic devices are
for example the mobile phones used by each member of the
household. The set-top box is configured to repeatedly transmit
an interrogation signal to detect the presence of any of the
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portable electronic devices. When one of the portable electronic
devices is in range of the interrogation signal, the portable
electronic device transmits an identification signal with an
identification code. When the set top box receives the
identification code, the set top box is configured to compare the
identification code with the user identification codes stored in
memory and to retrieve a user profile associated with the
matching user code. The set top box is configured to execute an
initial command stored in the user profile. The initial command
can include displaying selected media content on a display
coupled to the set-top box. Alternatively the initial command can
include emitting an audible request for instructions, the set-top
box being configured to recognize audible commands from the
user and to execute them.
Therefore a user of a home entertainment system can
merely walk in the room in which a set-top box is located while
carrying his mobile phone and the set-top box will detect the
presence of the mobile phone and begin operations unique to the
preferences of the user. The user need not operate a remote
control to initiate operation of the set-top box.
Specification 1 -2.
Illustrative Claim
1. A television receiver in a room comprising:
a control circuitry;
a first transmitter coupled to the control circuitry and
configured to transmit an interrogation signal;
a first receiver coupled to the control circuitry and configured to
receive an identification signal from a portable electronic device in
response to the interrogation signal, the identification signal including
an identification code; and
a memory coupled to the control circuitry, the control circuitry
configured to compare the identification code to a plurality of
registered identification codes stored in the memory and to execute an
initial command included in a user profile associated with the
identification code upon detection that the portable electronic device
has been stationary within the room for a predetermined amount of
time, the user profile being stored in the memory, wherein the first
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transmitter transmits the interrogation signal when the television
receiver is in a low power mode and the television receiver exits the
low power mode and executes the initial command upon receiving the
identification code, the initial command is to instruct a second
television receiver to provide content for the user profile that was
recorded when the second television receiver failed to receive the
identification signal from the portable electronic device.
Rejections on Appeal
Claims 1, 6, 8-10 and 13-16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Beals (US atent Application Publication
2011/0136442 Al; published June 9, 2011), Lazaridis (US Patent
Application Publication 2014/0137197 Al; published ay 15, 2014), Bryger
(US Patent Application Publication 2013/0114380 Al; published May 9,
2013), Hart (US Patent Application Publication 2012/0190301 Al;
published July 26, 2012) and Yui (US Patent Application Publication
2004/0104806 Al; published June 3, 2004). Final Action 5-17.
Claims 22-25 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Beals, Lazaridis, Bryger and Kerr (US Patent 8,942,995
Bl; issued January 27, 2015). Final Action 17-21.
Claims 2-5, 7, 12, 20 and 21 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Beals, Lazaridis, Bryger, Hart, Yui and Daly (US
Patent Application Publication 2010/333163 Al; published December 30,
2010). Final Action 21-25.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Beals, Lazaridis, Bryger, Hart, Yui and Wagner (US
Patent Application Publication 2007/0241203 Al; published October 18,
2007). Final Action 25-26.
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Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Beals, Lazaridis, Bryger, Hart, Yui and Lyu (US Patent Application
Publication 2008/0146151; published June 19, 2008). Final Action 26-27.
Claim 26 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Shintani (US Patent Application Publication 2010/0107185 Al;
published April 29, 2010), Yui and Barnett. Final Action 28-30.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed July 28, 2017), the Reply Brief (filed
February 6, 2018), the Answer (mailed December 7, 2017) and the Final
Action (mailed March 7, 2017) for the respective details.
35 U.S.C. § 103 Rejection-claims 1, 6, 8-10 and 13-16
Claim 1 recites:
[T]he control circuitry configured to compare the identification
code to a plurality of registered identification codes stored in the
memory and to execute an initial command included in a user
profile associated with the identification code upon detection that
the portable electronic device has been stationary within the
room for a predetermined amount of time.
Appeal Brief 23 ( emphasis added).
The Examiner finds:
Hart discloses a proximity-detection apparatus 200 may detect
the user's proximity to stationary computing device 104 based
on a period of time spent by the user in the predefined area. For
example, proximity-detection apparatus 200 may consider a user
to be in the proximity of stationary computing device 104 if the
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user remains within three feet of stationary computing device
104 for a period of five seconds or longer ([0038]).
Final Action 9.
Appellant contends that "Hart appears to be checking to see if the
mobile device is close to the stationary device" and further contends that:
[D]etecting the distance between two devices and determining if
that distance is within a predefined range for a given period of
time, as described in Hart, does not disclose or even suggest an
initial command is executed upon detection that the portable
electronic device itself has been physically stationary within a
room for a predetermined amount of time, as recited in
independent claim 1.
Appeal Brief 13-14.
Appellant further contends, "One of ordinary skill in the art would
understand that the primary definition of the term 'stationary,' especially in
light of the specification, is directed to the physical movement of an object."
Appeal Brief 14.
Appellant discloses on page 5 of the Specification ( emphasis added):
The set-top box 22 can be further configured to automatically
perform an action only when the portable electronic device 30
has been stationary within the room and the user is thereby
deemed to be sitting down. For example, the set-top box 22 can
be programmed to automatically perform an action when the set-
15 top box 22 has detected that the electronic device has been
stationary for three seconds. This can distinguish between a
situation in which the user is merely passing through the room
and a situation in which the user desires to operate the set-top
box 22.
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Appellant provides various definitions for stationary and contends
that "all of these definitions are used to describe the physical movement of
an object:
For example, Dictionary.com lists the main definition of
"stationary" as "standing still; not moving;" Merriam-Webster's
main definition of "stationary" is "fixed in a station, course, or
mode: immobile" (noting that the definition of station is "the
place or position in which something or someone stands or is
assigned to stand or remain"); Merriam-Webster also notes that
the definition of "stationary" for English language learners is
"not moving: staying in one place or position" and that the
definition of "stationary" for kids is "having been set in a certain
place or post: immobile;" and Google provides the definition of
stationary as "not moving or not intended to be moved."
Appeal Brief 14 ( citations omitted).
We do not find Appellant's argument persuasive of Examiner error
because Hart's portable electronic device is stationary within the
transmitting space of the stationary computing device in the same manner as
the claimed invention's portable electronic device is stationary within the
transmitting space of the television receiver or set-top box. See
Specification 5; see also Hart Figure 1. Hart discloses a system for
interacting with a stationary computing device that performs one or more
tasks for the user portable electronic device based on a set of motion-based
commands from the portable electronic device when the portable electronic
device is detected within proximity of the stationary computing device.
Hart, Abstract. Hart also discloses in paragraph 38 (emphasis added):
Furthermore, proximity-detection apparatus 200 may detect the
user's proximity to stationary computing device 104 based on a
period of time spent by the user in the predefined area. For
example, proximity-detection apparatus 200 may consider a user
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to be in the proximity of stationary computing device 104 if the
user remains within three feet of stationary computing device
104 for a period of five seconds or longer. As a result,proximity-
detection apparatus 200 may include functionality to distinguish
between users who pass through the predefined area around
stationary computing device 104 and users who enter the
predefined area to use stationary computing device 104.
Hart is concerned with not only the distance of the portable electronic
device to the stationary computing device, as Appellant argues, but also with
the duration of time the portable electronic device is within the stationary
computing device transmission area in order to distinguish between users of
the stationary computing device and people who are merely passing through
the area. Hart, paragraph 38. We find the Examiner's findings are in the
same scope as the disputed claim 1 limitation, as well as, Appellant's
disclosure wherein "the set-top box 22 can be programmed to automatically
perform an action when the set-top box 22 has detected that the electronic
device has been stationary for three seconds." Specification 5. Hart also
discloses the stationary computing device executes commands based upon
identification codes or data in the same manner as the disputed claim 1
limitation. Hart, Abstract. However, it is noted that the Examiner relied
upon Bryger, not Hart, to disclose executing an initial command upon
detection. Final Action 8.
Appellant argues, "the Examiner does not allege that the Yui
reference remedies the above described deficiencies of Beals, Lazaridis,
Bryger, and Hart, nor does it appear to do so" and concludes, "Therefore, the
combination [ofJ Beals, Lazaridis, Bryger, Hart, and Yui fails to disclose or
render obvious each and every limitation recited in independent claim 1."
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Appeal Brief 16. We do not find Appellant's argument persuasive because
we did not find Hart deficient as Appellant argues. Accordingly, we sustain
the Examiner's obviousness rejection of claim 1, as well as, claims 6, 8-10,
and 13, argued together. Appeal Brief 16.
Appellant contends that independent claim 14 is similar to
independent claim 1 and argues that Hart fails to "disclose or even suggest
executing an initial command when the portable electronic device itself is
detected to have been motionless within a room for an amount of time, as
recited in independent claim 14." Appeal Brief 16-1 7. Appellant
concludes, "Therefore, in a manner similar to what is discussed above, the
combination Beals, Lazaridis, Bryger, Hart, and Yui fails to disclose or
render obvious each and every limitation recited in independent claim 14."
Appeal Brief 1 7. We do not find Appellant's arguments persuasive of
Examiner error for the same reasons as we stated above and therefore we
sustain the Examiner's obviousness rejection of claims 14--16 argued
together. Appeal Brief 17.
Appellant further argues "the Examiner has failed to provide a reason
why one of skill in the art would be motivated to combine the systems of
Beals, Lazaridis, Bryger, Hart, and Yi references, or to modify the systems
of those references to include completely new functionality corresponding to
the claimed features and techniques that they lack." Appeal Brief 1 7. In
addition, Appellant argues that "one of ordinary skill in the art would not
have been motivated to combine the Hart or Yui references with the Beals,
Lazaridis, and Bryger references." Appeal Brief 18. We do not find
Appellant's arguments persuasive of Examiner error because the Examiner
articulated reasoning throughout the rejection that supported her legal
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conclusion of obviousness, which Appellant has not persuasively addressed
or rebutted. See KSR Int 'l., Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also Final
Action 6-17. Moreover, to the extent Appellant is suggesting Beals,
Lazaridis and Bryger are not analogous art to the Appellant's claimed
invention (Appeal Brief 17-18), Appellant has not sufficiently presented this
argument. See In re Kahn, 441 F.3d 977, 986-987 (Fed. Cir. 2006).
35 U.S.C. § 103 Rejection-claims 22-25
Claim 22 recites, "control circuitry configured ... to execute the
command corresponding to a registered identification code that matches the
identification code of the identification signal if fewer than a predetermined
number of commands have been previously executed in a predetermined
timeframe." Appeal Brief 2 7. Appellant contends the combination of Beals,
Lazaridis, Bryger and Kerr fails to disclose the recited limitation. Appeal
Brief 18-19.
The Examiner finds:
Kerr discloses a method/system for allowing the user to set the
maximum number of advertisement to receive in a set-top-box,
in another world, set-top-box keeps displaying advertisement
until the number of display does not exceed 5/ day (Fig. 14 block
826). In another word, during the day ( considered as
"predetermined timeframe") the system of Kerr is able to keep
presenting ads ( considered as command) if the total number of
previous presentations during the day doesn't exceed 5 times.
Therefore, Examiner still believes this feature of Kerr's reference
teaches claimed "if fewer than a predetermined number of
commands have been previously executed in a predetermined
timeframe."
Answer 12-13.
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Appellant argues:
Kerr, however, describes a system for generating a mobile
autonomous dynamic graphical user interface. See Kerr,
Abstract. In particular, Kerr describes a server that selects
targeted content based on user preferences location of the
wireless device. See Kerr, Abstract. Kerr goes on to state that
the "user can set the maximum number of advertisement to
receive." See Kerr, col. 20, ln. 1-6.
It is respectfully submitted that setting the maximum
number of advertisements that a user will receive has nothing to
do with executing a command if fewer than a predetermined
number of commands have been previously executed in a
predetermined timeframe, as recited in claim 22. Thus, Kerr fails
to disclose or suggest executing a command "if fewer than a
predetermined number of commands have been previously
executed in a predetermined timeframe," as recited in
independent claim 22.
Appeal Brief 19.
We find Appellant's arguments persuasive of Examiner error and we
reverse the Examiner's obviousness rejection of independent claim 22, as
well as, dependent claims 23-25.
35 U.S.C. §103 Rejection-claims 2-5, 7, 12, 20 and 21
Appellant contends that, "Claims 2-5, 7, 12, 20 and 21 depend from
one of independent claims 1 or 14. The Daly reference does not cure the
deficiencies noted above regarding the combination of Beals, Lazaridis,
Bryger, Hart, and Yui with respect to independent claims 1 and 14." Appeal
Brief 20. We do not find Appellant's arguments persuasive of Examiner
error because we did not find the combination of Beals, Lazaridis, Bryger,
Hart and Yui with respect to independent claims 1 and 14 deficient based
upon the arguments set forth by Appellant. Accordingly, we sustain the
Examiner's obviousness rejection of claims 2-5, 7, 12, 20 and 21.
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35 U.S.C. § 103 Rejection-claims 17 and 18
Appellant contends, "The Wagner reference does not cure the
deficiencies noted above regarding the combination of Beals, Lazaridis,
Bryger, Hart, and Yui with respect to independent claim 14" and concludes
that "claims 17 and 18 are also non-obvious in view of the relied-upon
references for at least the foregoing reasons with respect to independent
claim 14 and further for the additional novel and non-obvious features
recited therein." Appeal Brief 20-21. We do not find Appellant's
arguments persuasive of Examiner error because we did not find the
combination of Beals, Lazaridis, Bryger, Hart and Yui with respect to
independent claims 1 and 14 deficient based upon the arguments set forth by
Appellant. Accordingly, we sustain the Examiner's obviousness rejection of
claims 1 7 and 18.
35 U.S.C. § 103 Rejection-claim 26
Appellant contends that Shintani' s "generalized description of
accessing a device's database of stored features and privileges does not
disclose or suggest sending a control signal indicative of a command from a
first television receiver to a remote control that initiates the execution of the
command, as recited in amended claim 26." Appeal Brief 21. Appellant
further argues that "nowhere does the Yui reference, singly or in
combination with the Shintani reference, describe or suggest 'sending a
control signal indicative of the command from the first television receiver to
a remote control that initiates the execution of the command,' as recited in
independent claim 26." Appeal Brief 21. The Examiner disagrees and
recognizes that "Shintani in view of Yui fails to disclose 'sending a control
signal indicative of the command from the first television receiver to a
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remote control that initiates the execution of the command'" however
the Examiner:
[C]ombines [the] Barnett reference (US 2016/0295156) [that]
discloses a media source device programmed to provide to the
controlling device via the first communications link a message
having data which indicates whether a media sink device ( e.g.
Television) coupled to the media source device ( e.g. STB) is
responsive or unresponsive to a command communication
transmitted to the media sink device by the media source device
(fig. 5 and [0025]-[0027]).
Answer 15.
We do not find Appellant's arguments persuasive because the
arguments did not address the obviousness rejection of claim 26 in its
entirety because the rejection included the Barnett reference as well as
Shintani and Yui. See Final Action 28-30. Accordingly, we sustain the
Examiner's obviousness rejection of claim 26.
DECISION
The Examiner's 35 U.S.C. § 103 rejection of claims 22-25 is reversed.
The Examiner's 35 U.S.C. §103 rejections of claims 1-10, 12-21 and
26 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)(l). See 37 C.F.R.
§ 1.136(a)(l )(v).
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AFFIRMED-IN-PART
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