Ex Parte Nobusawa et al

Patent Trial and Appeal Board

Aug 20, 2013

10697755 (P.T.A.B. Aug. 20, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/697,755 10/30/2003 Hideaki Nobusawa 17160 8759
23389 7590 08/20/2013
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
PEREZ, JULIO R
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
08/20/2013 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 HIDEAKI NOBUSAWA and SUSUMU NONAKA
____________

Appeal 2012-003111
Application 10/697,755
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
CAROLYN D. THOMAS, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 16-40, which are all of the pending claims. Claims 1-15 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed Feb. 22, 2011), the Answer
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(Supplemental, mailed Oct. 31, 2011), and the Reply Brief (filed Dec. 2,
2011) for the respective details. We have considered in this decision only
those arguments Appellants actually raised in the Briefs. Any other
arguments which Appellants could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

Appellants’ Invention
Appellants’ invention relates to a mobile telephone with remote-
controlling capability. Remote control codes for controlling operations on
target equipment are associated with the operation buttons of the mobile
telephone and are stored in the mobile telephone memory. Upon activation
of an operation button, an associated remote control code is transmitted to
the target equipment using an infrared emission unit. See generally
Abstract.

Claim 16 is illustrative of the invention and reads as follows:
16. A mobile telephone with remote-controlling capability which remote-
controls target equipment, comprising:
storage means for storing a group of remote control codes for only one
predetermined controlling operation to be performed on the target
equipment; and
transmission means for transmitting to the target equipment the group
of remote control codes as a batch for the only one predetermined
controlling operation to be performed on the target equipment in response to
a user operation.

The Examiner’s Answer cites the following prior art references:
August US 5,671,267 Sep. 23, 1997
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Shim US 6,078,270 June 20, 2000
Stenman US 6,223,029 B1 Apr. 24, 2001
Wall US 2003/0156053 A1 Aug. 21, 2003
(filed Feb. 15, 2002)

Claims 16, 19, 22, 26, 29, 32, and 36-38 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Stenman in view of Shim.
Claims 17, 20, 23, 24, 27, 30, 33, and 34 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Stenman in view of Shim and
August.
Claims 18, 21, 25, 28, 31, 35, 39, and 40 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Stenman in view of Shim and
Wall.

ANALYSIS1
Group I--Independent claims 16, 22, 26, 32, 36, and 38
Appellants’ arguments with respect to the Examiner’s obviousness
rejection, based on the combination of Steinman and Shim, of representative
independent claim 16 initially focus on the alleged deficiency of Shim in
disclosing a group of control codes for one operation and, further, that the
group of codes are transmitted to one target apparatus.2 According to

1 Our analysis tracks Appellants’ grouping of claims in the Appeal Brief.
Appellants have placed the same claims in different groups for the sake of
argument.
2 Appellants do not separately argue any of the claims in the rejected group,
i.e., claims 16, 22, 26, 32, 36, and 38. App. Br. 15-18. Accordingly, we
select independent claim 16 as representative for this group. See 37 C.F.R. §
41.37(c) (1)(vii).
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Appellants, Shim teaches “controlling successive operations in at least two
remotely control devices by pressing one key.” App. Br. 16.
Appellants’ arguments are not persuasive. While we agree with
Appellants that Shim discloses an embodiment where a user initiates
multiple equipment operations by outputting plural instruction data sets by
pressing one key, Shim also discloses an embodiment in which a single
instruction data set is outputted by pressing a single key (col. 3, ll. 42-52;
col. 4, ll. 12-29).
Appellants’ related argument that Shim does not disclose the
transmission of a plurality of codes to control a single target device is not
persuasive as it is not commensurate with the scope of the claims. App. Br.
17. As pointed out by the Examiner, the claims are not restricted to the
control of one target equipment, but, instead, merely recite the control of
“target equipment” which could be reasonably interpreted as encompassing
multiple devices. Ans. 22.
We are also not persuaded by Appellants’ contention that Shim does
not teach a “group of remote control codes” as claimed but, instead, teaches
a single code for controlling a single function. App. Br. 17-18. We find no
error in the Examiner’s position which, inter alia, directs attention to the
Figure 4 illustration in Shim. Ans. 23. As described by Shim, Figure 4A,
for example, shows a data format including a group of 8-bit codes for
performing the operation of turning on the power of a VCR.
Lastly, we make the observation, as also pointed out by the Examiner
(Ans. 21), that Appellants’ Appeal Brief is essentially a verbatim repeat of
the Appeal Brief submitted January 28, 2008 in the earlier appeal in this
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application.3 In the Reply Brief, for the first time on appeal, Appellants
direct attention to the claim limitations “only one” and “batch” added with
the submission of the RCE on October 22, 2010 and the amendment of
March 23, 2010.
In particular, Appellants contend that the terminology “only one”
must be construed differently from the terminology “one” which is the
terminology argued by Appellants in their principal Brief. In Appellants’
view, “only one” is always “one” and is not met by multiple instructions
which include “one” instruction as allegedly posited by the Examiner.
Reply Br. 3-4. However, since the issue of whether “only one” requires a
different interpretation from “one” was raised for the first time on appeal in
the Reply Brief, it is therefore deemed to be waived. See Ex parte Borden,
93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”4) (absent a showing
of good cause, the Board is not required to address an argument newly
presented in the Reply Brief that could have been presented in the principal
Brief on Appeal).
Further, although Appellants’ Reply Brief argument is untimely, we
note that our earlier discussion found that Shim’s disclosure contemplates an
embodiment in which a single instruction data set is output by pressing one
key (col. 3, ll. 42-52; col. 4, ll. 12-29). As illustrated in previously
referenced Figure 4A of Shim, a group of 8-bit codes are output to turn on
the power of a VCR. In other words, “only one” controlling operation is
performed on a target equipment at any particular instant of time.

3 BPAI Decision – Examiner Affirmed – Appeal No. 2008-005379 (Aug. 25,
2009).
4 Designated as “Informative Opinion” at
http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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Appellants’ further Reply Brief arguments directed to the Examiner’s
reliance on Stenman for remote control code group and batch code teachings
are equally untimely and are deemed to be waived. We note that the
Examiners’ statement of reliance on Stenman in the Answer is unchanged
from the Final rejection.
For the above reasons, Appellants’ arguments for the first group of
claims do not persuasively rebut the Examiner’s 35 U.S.C. § 103(a)
rejection.

Group II–Claims 19, 22, 29, 32, 37, and 38
We also find that Appellants’ arguments for the second group of
claims, for which we consider claim 19 to be representative, do not
persuasively rebut the Examiner’s obviousness rejection. Appellants
contend that, in contrast to Shim in which a complete code is stored in
advance, the claimed invention stores only parts of a code group in advance
and the remaining parts of the code group are generated and added by a user
through a key depression. App. Br. 19-20.
We find, however, that each stored instruction data set in Shim
includes at least three code parts, i.e., a header, a data code, and a custom
code (col. 2, ll. 17-18; col. 3, ll. 8-21; Fig. 3). Further, we agree with the
Examiner (Ans. 23), that, contrary to Appellants’ contention (App. Br. 19),
there is nothing in the claim language which requires that a user can add
certain information to the stored codes, such as hour, day, minute and year
information. We also find that the claim terminology “an operation button
pressed by the user in advance” is not sufficiently defined in the claim so as
to distinguish over the final recited “user operation” being effected, for
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example, by the simultaneous or a single pressing of the recited “operation
button.”

Group III–Claims 22, 32, and 38
Appellants’ arguments for the third group of claims, for which we
consider claim 32 to be representative, are also not persuasive in rebutting
the Examiner’s obviousness rejection. Appellants contend that, in contrast
to the claimed requirement of setting a mobile telephone in first, second, or
third remote control “modes,” Shim merely discloses two transmission
methods, not remote control “modes” which are set. App. Br. 20.
We agree with the Examiner, however, that the different
functionalities of the remote control device of Shim can be reasonably
interpreted as corresponding to the claimed “mode[s].” As explained by the
Examiner, the remote control of Shim can be operated, for example, to
perform the functions, i.e., modes, of operating a television power on/off
state, channel setting, and volume setting. Ans. 24-25.

Claims 17, 18, 20, 21, 23-25, 27, 28, 30, 31, 33-35, 39, and 40
We sustain the Examiner’s obviousness rejection of claims 17, 18, 20,
21, 23-25, 27, 28, 30, 31, 33-35, 39, and 40 in which the August and Wall
references have been applied in various separate combinations with the
Stenman/Shim combination. Appellants have not argued any of the rejected
claims with particularity but, instead, have relied on arguments asserted
against the claims of Groups I-III, which arguments we have found to be
unpersuasive as discussed supra.

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 16-40 for obviousness under
35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 16-40 under
35 U.S.C. § 103(a).
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

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