Ex Parte Pouw et alDownload PDFPatent Trial and Appeal BoardMar 15, 201613225635 (P.T.A.B. Mar. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/225,635 09/06/2011 Olav B.M. Pouw 34018 7590 03/17/2016 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. l 48US2 1987 EXAMINER MONSHI, SAMIRA ART UNIT PAPER NUMBER 2422 NOTIFICATION DATE DELIVERY MODE 03/17/2016 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 Exparte OLAV B.M. POUW and PATRICKH. HAYES Appeal2014-005516 Application 13/225,635 Technology Center 2400 Before CATHERINE SHIANG, TERRENCE W. McMILLIN, and KAMRAN JIVANI, Administrative Patent Judges. JIV ANI, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejections of claims 1-5, 7-18, and 20-28, which are all the claims pending in the present patent application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE The present application relates to systems in which more than one controlling device may be available for the operation of an appliance or 1 Appellants identify Universal Electronics Inc. as the real party in interest. App. Br. 2. Appeal2014-005516 Application 13/225,635 group of appliances, and in which different controlling devices may each be enabled to convey a specific identity to a controlled appliance to facilitate adaptation of appliance features and/or configuration in accordance with the controlling device currently in use. Spec. 1 :24--2:3. Claim 1 is illustrative (disputed limitations emphasized): 1. A system, comprising: a controllable device; and a plurality of controlling devices each adapted to command one or more functional operations of the controllable device wherein the plurality of controlling devices have differing input capabilities; wherein the controllable device responds to a received transmission originating from a one of the plurality of controlling devices by determining an identity of the one of the plurality of controlling devices from which the transmission originated and by using the identity to automatically enter into a one of a plurality of controllable device operating modes wherein the one of the plurality of controllable device operating modes automatically entered into by the controllable device corresponds to the input capabilities of the controlling device from which the transmission originated. The Rejections Claims 1, 2, 7-9, 12, 14, 15, 20-22, and 25 stand rejected under 35 U.S.C. § 102(b) over Matsuo (US 7,631,192 Bl; Dec. 8, 2009). Claims 3-5, 10, 11, 13, 16-18, 23, 24 and 26-28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Matsuo and Allport (US 6,882,299 Bl; Apr. 19, 2005). 2 Appeal2014-005516 Application 13/225,635 ANALYSIS We have considered Appellants' arguments in the Appeal Brief and the Reply Brief, the Examiner's response thereto, and the evidence of record. We are not persuaded by Appellants' arguments. Rather, we agree with and adopt as our own, the Examiner's findings and reasons as set forth in the Final Action and Answer. We further emphasize the following. Anticipation The Examiner finds Matsuo anticipates claim I-and particularly the limitation controlling devices having "differing input capabilities"-through disclosure of multiple remote controllers, each having the ability to input into the main device using only a particular email address specific to a given remote. Final Act. 3. Appellants argue independent claims 1 and 14 as a group. App. Br. 5. Specifically, Appellants argue the Examiner errs because Matsuo fails to disclose controlling devices having "differing input capabilities" as claimed. App. Br. 5---6. Appellants elaborate that the various remote controllers of Matsuo have the same input capabilities (a mail confirmation key), which result in different output after the mail confirmation key is activated. Id. Reply Br. 2. Initially, as a matter of claim construction, we determine Appellants have not defined in the claims or the Specification the term "input capabilities." Appellants direct our attention to pages 4 and 5 of the Specification (App. Br. 2); however, we do not find therein a definition of the term. Instead, the cited portion of the Specification discloses the capability of transmitting commands to a set top box 104. Spec. 4:4--13. 3 Appeal2014-005516 Application 13/225,635 This disclosure is consistent with dictionary definitions of 'input', which include "the data to be processed" (Institute of Electrical and Electronics Engineers, The Authoritative Dictionary of IEEE Standard Terms 556 (7th ed., IEEE Press 2000)) and "information entered into a computer or program for processing, as from a keyboard or from a file stored on a disk drive." The Microsoft Computer Dictionary 274 (5th ed. 2002). Where, as here, the Specification does not explicitly define a term, the term should be given its ordinary meaning. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1368 (Fed. Cir. 2003). We apply the broadest reasonable interpretation of claim terms, consistent with the specification, as would be understood by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Applying these principles in light of the foregoing dictionary definitions, we find an artisan of ordinary skill would understand the claimed "input capabilities" to encompass the abilities of the controlling devices to transmit data for entry into the claimed controllable devices-not the means by which a user actuates a controlling device, as Appellants contend. In light of this construction, we are not persuaded by Appellants' arguments. The Examiner finds, and we agree, Matsuo discloses a plurality of controlling devices (remote controller devices 2a-2x) each having differing input capabilities (each device appending "its own ID code" to data such as an email address, network address, or display switching signal and transmitting the combined data as input to the main device). Ans. 23 (citing Matsuo, 4:25-37, 6:8-22; 6:47-55). Further, we are not persuaded by Appellants' argument that Matsuo fails to disclose devices with different input key elements (App. Br. 5-6), because this argument is not 4 Appeal2014-005516 Application 13/225,635 commensurate with the claim language. Claim 1 does not require that the plurality of controlling devices must each have different key elements. Accordingly, we sustain the Examiner's 35 U.S.C. § 102(a) rejection of independent claims 1 and 14, together with their dependent claims 2, 7-9, 12, 15, 20-22, and 25, not separately argued. Obviousness Independent claim 28 recites, in relevant part, wherein a first one of the plurality of controllable device operating modes allows controlling device control of all remote controllable functionalities provided by the controllable device, and wherein a second one of the plurality of controllable device operating modes allows controlling device control of less than all remotely controllable functionalities provided by the controllable device. The Examiner finds that Allport teaches or suggests this limitation by teaching "a parent with a 'supervisor' password may have access to all users' settings, while a child may have access only to their own settings." Final Act. 22 (citing Allport, 21:1--4). The Examiner makes similar findings applying Allport to claims 3-5, 10, 11, 13, 16-18, 23, 24, 26 and 27. Appellants contend, inter alia, that the Examiner errs because combining Allport's teaching of a first mode with all functionalities and second mode with limited functionalities "would impermissibly change the principle by which the system of Matsuo is intended to operate." App. Br. 8. We are persuaded by Appellants' argument. In the context of obviousness, when a proposed modification would change the basic principle of operation of the primary reference, then the teachings of the 5 Appeal2014-005516 Application 13/225,635 proposed combination are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810 (CCPA 1959). As discussed above in the context of claim 1, Matsuo operates on the principle that each one of its multiple remote controllers appends "its own ID code" to data, including an email address, network address, or display switching signal, such that no two controllers may operate using the same code. Matsuo, 4:25-37, 6:8-22; 6:47-55. Indeed, Matsuo's invention seeks to protect private information by enabling "no one but the user alone [to] see the content displayed on the display unit." Matsuo, 1:39--40. The Examiner's proposed combination adding Allport's teaching of allowing one controller access to all controllable functionalities impermissibly alters Matsuo' s premise limiting certain functions and private information to specific controllers. Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a) rejections of independent claim 28 and dependent claims 3-5, 10, 11, 13, 16-18, 23, 24, 26 and 27. DECISION We affirm the Examiner's decisions rejecting claims 1, 2, 7-9, 12, 14, 15, 20-22, and 25. We reverse the Examiner's decisions rejecting claims 3-5, 10, 11, 13, 16-18, 23, 24, and 26-28. 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 6 Copy with citationCopy as parenthetical citation