Ex Parte Perez et alDownload PDFPatent Trial and Appeal BoardDec 23, 201613071661 (P.T.A.B. Dec. 23, 2016) Copy Citation 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. 13/071,661 03/25/2011 Jesus Perez 81230.153US1 4459 34018 7590 12/28/2016 GREENBERG TRAURIG, LLP 77 WEST WACKER DRIVE SUITE 3100 CHICAGO, IL 60601-1732 EXAMINER MURPHY, JEROLD B ART UNIT PAPER NUMBER 2687 NOTIFICATION DATE DELIVERY MODE 12/28/2016 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 JESUS PEREZ, JOVEN JUBILO, REX XU, and JEFFREY KOHANEK Appeal 2016-000156 Application 13/071,661 Technology Center 2600 Before MICHAEL J. STRAUSS, JOHN R. KENNY, and AARON W. MOORE, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-000156 Application 13/071,661 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 2, 6—8, 12—16, and 18—21. Claims 3—5, 9-11, 17, and 22—25 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claims are directed to facilitating appliance control via a smart device. Spec., Title. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for controlling functional operations of one or more controllable appliances, comprising: a smart device having a first remote control application, the first remote control application causing the smart device to transmit a first command for controlling a first functional operation of a controllable appliance in response to a one of a plurality of user interface elements of the smart device being selected wherein the first command transmitted from the smart device is transmitted using a first transmission protocol; and a bridge device having a second remote control application, the second remote control application causing the bridge device to transmit a second command for controlling a second functional operation of the controllable appliance in response to a one of a plurality of user interface elements of the bridge device being selected and for causing the bridge device to transmit a third command for controlling the first functional operation of the controllable appliance in response to receiving at the bridge device the first command transmitted from the smart device; wherein the second and third commands transmitted from the bridge device are transmitted using a transmission protocol recognized by the controllable appliance and wherein the plurality of user interface elements of the bridge device selectable to transmit the second command is fewer in number 2 Appeal 2016-000156 Application 13/071,661 than the plurality of user interface elements of the smart device selectable to transmit the first command. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Liu US 2007/0037522 A1 Feb. 15,2007 Haughawout US 2009/0113478 A1 Apr. 30, 2009 Patel US 8,508,401 B1 Aug. 13,2013 REJECTIONS The Examiner made the following rejections: Claims 14—16 and 18—21 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 4. Claims 1, 2, 6—8, 12—16, and 18—21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Haughawout, AAPA, Liu, and Patel. Final Act. 5—19. APPELLANTS’ CONTENTIONS 1. In connection with the rejection of claims 1 and 14 under 35 U.S.C. § 103(a), Appellants contend Patel’s disclosure of modifying a remote control to completely remove a display or buttons does not teach a lesser, non-zero amount of user interface elements for triggering the transmission of command codes as required by claim 1. App. Br. 6—8. 2. In connection with the rejection of claim 13 under 35 U.S.C. § 103(a), Appellants contend Liu’s bridge device 120 “is equipped with a transmitter 140 - in the singular - for transmitting commands to an appliance,” the additional transmitter 135 “used to transmit state 3 Appeal 2016-000156 Application 13/071,661 information back to the first remote control,” not to one or more controllable devices to be controlled as required by claim 13. App. Br. 9 (emphasis omitted). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2—19) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 2—6) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. 35 U.S.C. § 112, second paragraph Because Appellants do not contest the rejection of claims 14—16 and 18—21 under 35 U.S.C. § 112, second paragraph (App. Br. 6) the rejection is summarily affirmed. 35 U.S.C. § 103(a) In connection with contention 1, Appellants argue the prior art disclosure of omitting features from Patel’s blaster, relied upon for teaching the bridge device of claim 1, only provides for the omission of the display or set of buttons for triggering the transmission of command codes but does not disclose providing a fewer number of user interact elements. App. Br. 7—8. According to Appellants, modifying Patel by eliminating the display or buttons would disable the blaster as an input device for triggering the 4 Appeal 2016-000156 Application 13/071,661 transmission of any command codes. App. Br. 8. The Examiner responds by finding [NJowhere does Patel suggest that modifications are limited to either include all of the disclosed user interface elements or none of the disclosed user interface elements. Patel provides a general teaching that various combinations of the disclosed remote control elements may or may not be included provide the blaster functionality. Ans. 2. Instead, the Examiner finds “Patel discloses remote controls acting as blasters may not include all of the interface elements of non-blaster remote controls,” thereby teaching or suggesting the disputed limitation of claims 1 and 14. Ans. 4. We are unpersuaded by Appellants’ argument. We agree with the Examiner in finding Patel’s disclosure that “each remote control. . . may not include all of the elements shown in FIG. 2A” and, if a remote control is a blaster, it “may not include ... a set of buttons for triggering the transmission of command codes” teaches or suggests that a blaster may have a lesser but non-zero number of buttons or interface elements selectable to transmit commands than other remote control units. See Patel col. 9,11. 32— 42. We further agree with the Examiner in finding “even in the case that Patel doesn’t sufficiently suggest such feature, it would have been obvious to one skilled in the art at the time of the claimed invention, as devices may have more or fewer user interface elements compared to each other.” Ans. 4. In particular, the number of buttons or “interface elements” provided for a remote control device is a design choice dictated by various criteria including, for example, space limitations, ergonomics, and appearance. Furthermore, in connection with Appellants’ disputed limitation, there are only three possibilities: the plurality of user interface elements of the bridge 5 Appeal 2016-000156 Application 13/071,661 device selectable to transmit the second command may be (1) fewer, (2) equal, or (3) greater in number than the plurality of user interface elements of the smart device selectable to transit the first command. Appellants fail to provide evidence or sufficient argument that the argued relationship is anything other than routine design expedient. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill [in the art] has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”). Accordingly, Appellants’ contention 1 is unpersuasive of Examiner error. Therefore, we sustain the rejection of independent claims 1 and 14. In connection with contention 2, Appellants argue Liu’s transmitter 135, relied upon by the Examiner for disclosing a second IR transmitter “A used to transmit state information back to the first remote control,” not for transmitting the same command intended to be received by the controllable device. App. Br. 9-10. Therefore, Appellants argue, Patel fails to disclose the bridge device of claim 13. Id. The Examiner responds by finding Nowhere does Liu teach or suggest that command transmissions or burst commands transmission are limited to transmitter 140 or that transmitter 135 may not be used to transmit commands to devices being controlled or that the operation of the second remote control is limited to only a particular one of the two transmitters 135, 140 being used to transmit commands. That Liu also discloses the additional exemplary but not exclusive functionality and capability of transmitting updates to the first remote control does not negate the fact that Liu disclose[s] the second remote device [is] capable of blasting commands via two transmitters to controlled devices. 6 Appeal 2016-000156 Application 13/071,661 Ans. 5. We are unpersuaded of Examiner error by Appellants’ contention 2. As found by the Examiner, Liu discloses two transmitters from which one skilled in the art would have understood both transmitters to be capable of performing the disputed functionality of claim 13 so as to transmit the third command to the controllable appliance. Whether to use one or more transmitters is mere design choice, as evidenced by Liu and other prior art, such as US 2007/0139172 A1Watanabe et al. Pittard et al. Petricoin, Jr. et al. Hwang et al. US 2009/0153351 Al US 2009/0220243 Al US 2010/0109904 Al Pittard et al. US 2010/0219977 Al Fig. IB, transmitters 103, 104, 105,131 Fig. 1, transmitters 12A- 12C, 19 Fig. 1, transmitters 107 and 113.121 Fig. 1, transmitters 4221, 4222,4223,4224 and 4225; Fig. 2, transmitters 6221, 6222,6223 and 6224.121 Fig. 4, transmitters 52A- 52D, 19 Adding a second transmitter would have merely been a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417; see also In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced.”). Accordingly, Appellants’ contention 2 is unpersuasive of Examiner error and we sustain the rejection of claim 13. For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the rejections of independent claims 1,13, 7 Appeal 2016-000156 Application 13/071,661 and 14 under 35 U.S.C. § 103(a) over Haughawout, AAPA, Liu, and Patel, together with the rejections of dependent claims 2, 6—8, 12, 15, 16, and 18— 21, which are not argued separately argued. DECISION We affirm the Examiner’s decision to reject claims 14—16 and 18—21 under 35 U.S.C. § 112, second paragraph. We affirm the Examiner’s decision to reject claims 1, 2, 6—8, 12—16, and 18—21 under 35 U.S.C. § 103(a) over Haughawout, AAPA, Liu, and Patel. 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 8 Copy with citationCopy as parenthetical citation