Ex Parte Pugel

Board of Patent Appeals and Interferences

Jul 29, 2008

09853001 (B.P.A.I. Jul. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL ANTHONY PUGEL
____________________

Appeal 2008-0245
Application 09/853,0011
Technology Center 2600
____________________

Decided: July 29, 2008
____________________

Before ROBERT E. NAPPI, MARC S. HOFF, and KARL D. EASTHOM,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims
19, 20, and 22-38.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention relates to a system for extending the effective
operating distance of an infrared remote control system (Spec. 1). A first

1 Application filed May 10, 2001. The real party in interest is Thomson
Licensing S.A.
2 Claims 1-18 and 21 have been canceled.
Appeal 2008-0245
Application 09/853,001

transmitter receives IR signals from a remote control unit and transmits a
corresponding RF signal which includes data concerning the IR carrier
frequency used, rather than directly transmitting the actual IR carrier
frequency, permitting a reduction of the RF bandwidth (Spec. 1-2). An RF
receiver decodes the received signal and uses the received data to configure
an IR control signal compatible with and transmitted to the controlled device
(Spec. 2).
Claim 19 is exemplary:
19. A control device for extending an effective control range of a
first control device for controlling an IR controllable device, the control
device comprising:

a rec eiver for receiving from the first control device a first control
signal having a first data segment for control information; and

means for extracting an IR carrier frequency from the first control
signal and means for transmitting a RF signal having a second data segment
for the control information and the IR carrier frequency, wherein the RF
signal is adapted to be received by a second control device that converts the
RF signal into an IR control signal for controlling the IR controllable device,
the IR control signal having an IR carrier with the IR carrier frequency and
having a data segment for the control information.

The prior art relied upon by the Examiner in rejecting the claims on appeal
is:
Smith US 4,856,081 Aug. 8, 1989
Harrington US 4,897,883 Jan. 30 1990
Tigwell US 5,227,780 July 13, 1993
Anderson US 6,130,910 Oct. 10, 2000
Eisaku JP 2001-8278A Jan. 12, 2001
Thomas US 6,400,480 B1 Jun. 4, 2002

2
Appeal 2008-0245
Application 09/853,001

Claims 19, 23-28, and 33-37 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Harrington in view of Tigwell, Eisaku, and
Smith.
Claims 19, 20, 22, 33-35, 37, and 38 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Thomas in view of Tigwell, Eisaku, and
Smith.
Claims 29-32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harrington in view of Tigwell, Eisaku, Smith, and
Anderson.
Claims 29-32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomas in view of Tigwell, Eisaku, Smith, and Anderson.
Appellant contends, inter alia, that because Harrington and Thomas
teach FM transmission, motivation to adopt the AM transmission and “7-bit
work scheme” taught by Tigwell is lacking (Br. 7, 15); that various
individual references do not teach certain elements of the invention; and that
Tigwell and Smith teach away from combination with Harrington, because
doing so would mean adding microprocessors and associated
software/firmware (Br. 8, 9, 10, 12).
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Brief (filed November 13, 2006) and the Answer
(mailed February 13, 2007) for their respective details.
ISSUE
There are two principal issues in the appeal before us.
3
Appeal 2008-0245
Application 09/853,001

The first issue is whether the Examiner erred in holding that the
combination of Harrington, Tigwell, Eisaku, and Smith teaches the claimed
invention.
The second issue is whether the Examiner erred in holding that the
combination of Thomas, Tigwell, Eisaku, and Smith teaches the claimed
invention.
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention relates to a system for
extending the effective operating distance of an infrared remote control
system (Spec. 1).
2. A first transmitter receives IR signals from a remote control unit
and transmits a corresponding RF signal which includes data concerning the
IR carrier frequency used, rather than directly transmitting the actual IR
carrier frequency, permitting a reduction of the RF bandwidth (Spec. 1-2).
3. An RF receiver decodes the received signal and uses the received
data to configure an IR control signal compatible with and transmitted to the
controlled device (Spec. 2).
Harrington
4. Harrington teaches extending the operational range of an infrared
data link beyond line-of-sight by transmitting a corresponding signal by
radio, which signal is received and re-converted to an infrared signal to
control the desired device (col. 1, ll. 48-68).
4
Appeal 2008-0245
Application 09/853,001

Tigwell
5. Tigwell teaches an apparatus for controlling a plurality of infrared
controlled appliances, including a UHF radio transmitter remote controller
having a plurality of separate distinct output control signals (col. 1, l. 66 –
col. 2, l. 2).
6. Tigwell teaches transmitting remote control commands via radio
frequency (col. 2, ll. 48-64).
7. Tigwell teaches that it is not desirable to control the infrared
controlled device directly via UHF as the modulation of the infrared code
onto a UHF radio frequency carrier would result in an occupied band width
which would exceed FC rules (col. 2, l. 65 – col. 3, l. 2).
Eisaku
8. Eisaku teaches receiving a remote control code from a code
recognition circuit, reading the carrier frequency that corresponds to the
remote control code from a memory, and transmitting a remote control code
with the carrier frequency information to a conversion circuit (Fig. 83).
9. Eisaku teaches a message format for transmitting carrier
information and remote control code to a remote control device (Fig. 9).
10. Eisaku teaches extraction of IR carrier frequency information
from an RF signal (para. [0033]).
Smith
11. Smith teaches a single remote control apparatus which can
quickly learn the transmission code for, and thereafter operate, remotely

3 Citations to Eisaku refer to the translation in the record.
5
Appeal 2008-0245
Application 09/853,001

controllable consumer products without modification or interconnection of
those products (col. 2, ll. 6-10).
12. Smith teaches a method for determining carrier frequency (col.
13, l. 44 – col. 14, l. 6).
Thomas
13. Thomas teaches a mobile transceiver for extending the
operational range of an infrared remote controller (Abstract), which includes
retransmitting infrared remote control commands via RF and converting
them back to IR for transmission to the controlled device (see Fig. 1).
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
6
Appeal 2008-0245
Application 09/853,001

prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000).
Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). Where
the teachings of two or more prior art references conflict, the Examiner must
weigh the power of each reference to suggest solutions to one of ordinary
skill in the art, considering the degree to which one reference might
accurately discredit another. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991). If the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court has held
that “[a] reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085,
1090 (Fed. Cir. 1995). “The prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed in the … application.” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004).
7
Appeal 2008-0245
Application 09/853,001

ANALYSIS
§ 103 rejection over Harrington, Tigwell, Eisaku, and Smith
We select claim 19 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that Harrington does not disclose that its repeater
extracts an IR carrier frequency from the first control signal (Br. 6); that
Tigwell does not teach that its data segment includes control information
extracted from an IR control signal and does not include IR carrier
frequency (Br. 7); that Eisaku does not disclose or suggest means for
extracting an IR carrier frequency from the first control signal (Br. 9); and
that Smith does not disclose or suggest transmitting a RF signal having a
data segment for the extracted control information and extracted IR carrier
frequency (Br. 11).
Each of Appellant’s statements is accurate, but none is persuasive to
show error in the Examiner’s rejection, because the Examiner relies upon
other reference(s) for teaching or suggestion of each of those elements. We
agree with the Examiner’s position that Harrington teaches transmitting
remote control commands received from an infrared remote control via radio
frequency (Ans. 3; FF 4); that Tigwell teaches that it is not desirable to
control the infrared controlled device directly via UHF as the modulation of
the infrared code onto a UHF radio frequency carrier would result in an
occupied band width which would exceed FC rules (Ans. 3; FF 7); that
Eisaku teaches a message format for transmitting carrier information and
remote control code to a remote control device (Ans. 3; FF 9); and that
Smith teaches a method for determining carrier frequency (Ans. 3; FF 12).
8
Appeal 2008-0245
Application 09/853,001

Appellant argues that since Harrington uses FM transmission rather
than AM, there would be no motivation to modify Harrington to include the
teachings of Tigwell (who uses AM), because the problem of violating FCC
regulations asserted by the Examiner would not exist (Br. 7). We are not
persuaded by Appellant’s argument because, as explained in the Examiner’s
Answer, the violation of FCC regulations does not arise because of the use
of amplitude modulation rather than frequency modulation but because, if
the IR carrier frequency were simply converted into RF and transmitted, the
transmitted signal would occupy too great a bandwidth to comply with FCC
regulations (Ans. 9-11). We therefore agree with the Examiner that one of
ordinary skill would have been motivated to encode IR carrier frequency in a
short message, as taught by Eisaku, to avoid sending RF signal in a
bandwidth that violates FCC rules, as taught by Tigwell (Ans. 4).
Appellant argues that Tigwell teaches away from combination with
Harrington because implementing the modification proposed by the
Examiner “would mean adding microprocessors and associated
software/firmware in the repeater unit 5 and the means 4 of the system
disclosed in Harrington” (Br. 8). Appellant correctly notes that the test to
apply is whether a person of ordinary skill in the art, upon reading Tigwell,
would be discouraged from following the path set out in Tigwell (see In re
Gurley, supra). We agree with the Examiner, however, that Appellant’s
argument is not persuasive, because Appellant has not identified any
teaching in Tigwell that would criticize, discredit, or otherwise discourage
the solution claimed in the application (Ans. 12). Fulton, 391 F.3d at 1201.
Appellant’s only support for his argument is his opinion that a “redesign”
9
Appeal 2008-0245
Application 09/853,001

would be required (Br. 9). In the absence of evidentiary support in the prior
art, we decline to adopt Appellant’s opinion.
Appellant also argues that Eisaku and Smith teach away from
combination with Harrington, for the same reasons presented with respect to
Tigwell (Br. 10, 12). We find these arguments unpersuasive as well, because
Appellant cites no evidence in Eisaku or Smith to support his contention that
the skilled artisan would be led in a divergent direction. We therefore do not
agree with Appellant that either Eisaku or Smith teaches away from the
Examiner’s asserted combination with Harrington.
Appellant argues that there is no motivation to modify Tigwell to
adopt the signal format disclosed in Eisaku (Br. 11). We do not find
Appellant’s argument persuasive, because the Examiner has provided ample
reason to make the modification, i.e., to send IR carrier frequency
information instead of directly modulating an RF carrier with the IR carrier
frequency to avoid violation of FCC regulations (Ans. 15).
Because we find that the combination of Harrington, Tigwell, Eisaku,
and Smith teaches all of the limitations of claim 19, and because we agree
with the Examiner’s reasons why the person having ordinary skill in the art
would have been motivated to combine the references, we do not find error
in the Examiner’s rejection of claim 19, nor of claims 23-28 and 33-37 not
separately argued, under 35 U.S.C. § 103(a).
§ 103 rejection over Thomas, Tigwell, Eisaku, and Smith
We select claim 19 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
10
Appeal 2008-0245
Application 09/853,001

As with Harrington, Appellant argues that since Thomas uses FM
transmission rather than AM, there would be no motivation to modify
Harrington to include the teachings of Tigwell (who uses AM), because the
problem of violating FCC regulations asserted by the Examiner would not
exist (Br. 15). We are not persuaded by Appellant’s argument because, as
explained in the Examiner’s Answer, the violation of FCC regulations does
not arise because of the use of amplitude modulation rather than frequency
modulation, but because the transmitted signal would occupy too great a
bandwidth to comply with FCC regulations if the IR carrier frequency were
simply converted into RF and transmitted (Ans. 9-11, 17-18). We therefore
agree with the Examiner’s statement that one of ordinary skill would have
been motivated to encode an IR carrier frequency in a short message, as
taught by Eisaku, to avoid sending a RF signal in a bandwidth that violates
FCC rules, as taught by Tigwell (Ans. 17).
Appellant argues that because the battery transceiver in Thomas
receives the RF signal, rather than the IR signal, the battery transceiver
could not determine an IR carrier frequency using the method taught in
Smith. Claim 19, however, recites “means for extracting an IR carrier
frequency from the first control signal.” We agree with the Examiner’s
position that “the first control signal can be an RF signal and the IR carrier
frequency information can be encoded as data to be included in the RF
signal” (Ans. 18), and that extraction of IR carrier frequency information
from an RF signal is taught by Eisaku (FF 10). As a result, we find that the
Examiner’s asserted combination teaches every element of claim 19.
11
Appeal 2008-0245
Application 09/853,001

We therefore do not find error in the Examiner’s rejection of claim 19,
nor in the rejection of claims 20, 22, 33-35, 37, and 38 not separately argued,
as being obvious over Thomas in view of Tigwell, Eisaku, and Smith.
Claims 29-32
Appellant argues only that Anderson does not supply the teachings
alleged to be missing from the proposed rejection of parent claim 19.
Because we sustain the rejection of claim 19, supra, we sustain the rejection
of dependent claims 29-32 as well, for the same reasons expressed with
regard to claim 19.
CONCLUSION OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 19, 20, and 22-38.
DECISION
The Examiner’s decision rejecting claims 19, 20, and 22-38 is
affirmed.

12
Appeal 2008-0245
Application 09/853,001

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

tdl/gw

JOSEPH S. TRIPOLI
THOMSON MULTIIMEDIA LICENSING INC.
2 INDEPENDENCE WAY
P.O. BOX 5312
PRINCETON, NJ 08543-5312
13