Ex parte SHIM

Board of Patent Appeals and Interferences

Sep 16, 1999

08234115 (B.P.A.I. Sep. 16, 1999)

Application for patent filed April 28, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte SOON S. SHIM
________________
Appeal No. 1996-4065
Application 08/234,1151
________________
ON BRIEF
________________
Before JERRY SMITH, BARRETT, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
2
This is a decision on appeal from the final
rejection of claims 5 through 8. Claims 1 through 4 and 9
were canceled by an amendment after final rejection, paper no.
12, and the limitations of claim 1 were inserted into claim 5.

The invention relates to a remote controller for
controlling the operation of electronic products, such as
household electronic appliances. More particularly, the
remote controller has a keyboard with single function keys and
plural function keys. When a key is actuated, it is
determined if the actuated key is a plural function key or a
single function key. If a plural function key has been
actuated, first data is transmitted which controls an
operation of a first appliance and second data is transmitted
following the transmission of the first data to control
another operation of a second appliance. For example,
pressing one key of the remote controller could cause data to
be transmitted which would first turn on the power to a VCR
and then select a channel of a television. This eliminates
the need for pressing two or more keys to achieve these
Appeal No. 1996-4065
Application No. 08/234,115
3
separate functions.
Representative independent claim 5 is reproduced as
follows:
5. A method for remotely controlling operations of
at least two different apparatus from a remote controller
having a keyboard with keys that are depressed to initiate
data instructions that are transmitted to said apparatus, said
method comprising:
actuating on said keyboard a key assigned for
the control of at least two consecutive operations of said at
least two different apparatus;
detecting the actuation of said key assigned for
the control of at least two consecutive operations; and
in response to said detection of said key,
transmitting consecutively to said at least two apparatus at
least two preset data instructions limited to product signal
formats corresponding to said at least two apparatus, said
data instructions being received by each of said at least two
apparatus to control different operations in at least two of
said apparatus, wherein some keys (single function keys) on
said keyboard are preassigned to result in single data
instructions being generated and transmitted by said remote
controller and other keys (plural function keys) on said
keyboard are preassigned to result in plural data instructions
being generated and transmitted by said remote controller, and
wherein the step of detecting the actuation comprises:
detecting whether or not any key on said
Appeal No. 1996-4065
Application No. 08/234,115
Since the date of the U.S. Patent to Lee et al. is2
sufficient and the record states the disclosures are
equivalent, we will rely on the content of the U.S. Patent for
this decision.
4
keyboard is actuated;
in response to detection of actuation of a key
in said last step, buffering a data instruction preassigned to
the actuated key;

determining if the actuated key is a plural
function key; and
in response to determining that said activated
key is a plural function key, buffering successive data
instructions preassigned to said actuated plural function key
so that said at least two preset data instructions are read
from said buffer during the transmitting step.
The Examiner relies on the following references:
Evans et al. 4,825,200 Apr. 25, 1989
Smith 4,857,898 Aug. 15, 1989
Enomoto et al. 5,128,667 Jul. 7,
1992
Lee et al. 5,212,487 May 18, 1993
(filed Sep. 6, 1991)
Lee et al. DE 4128907 A1 Nov. 5, 1992 2

Appeal No. 1996-4065
Application No. 08/234,115
5
Claims 5 through 8 stand rejected under 35 U.S.C. §
103 as being unpatentable over Lee et al. in view of Enomoto
et al. and what was well known in the remote controller art,
and claims 5 through 8 also stand rejected under 35 U.S.C. §
103 as being unpatentable over Evans et al., Enomoto et al.
and Smith.
Rather than reiterate the arguments of Appellant and
the Examiner, reference is made to the brief, reply brief and
answer for the respective details thereof.
OPINION
After a careful review of the evidence before us, we
will not sustain the rejection of claims 5 through 8 under 35
U.S.C. § 103.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan contained in such teachings or suggestions. In re
Appeal No. 1996-4065
Application No. 08/234,115
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Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995) citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With regard to the rejection of claims 5 through 8
under 35 U.S.C. § 103 as being unpatentable over Lee et al.,
Enomoto et al and what was known in the prior art, Appellant
argues:
One reason for this is that the references fail to
teach or even suggest Appellant’s most basic claimed
arrangement: that of providing some keys as single
function keys and other keys as plural function keys
which are pre-assigned to result in plural data
instructions being generated and transmitted by the
remote controller. (Brief-page 5.)
The two preset data instructions are defined at
Appeal No. 1996-4065
Application No. 08/234,115
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lines 13-15 [of claim 5] as controlling different
operations in at least two apparatus. (Reply brief-
page 2.)
The Examiner responds:
Regarding Appellant’s limitation that
operations for different equipments are controlled,
the Examiner notes that Lee specifically suggests
that different equipments and commands for each
equipment can be transmitted, see Figure 3B and
Figure 5, items 204-206 as well as column 3, lines
44-51 and column 6, lines 17-30 of US 5,212,487.
Note that Lee discloses storing product codes for
different products and outputting them sequentially
so “that a variety of electric appliances can be
simultaneously controlled.” (Answer-page 9.)
We fail to find any support in the Examiner’s
citations for the controlling of different operations in at
least two apparatus as claimed. Lee controls the same
operation for different products simultaneously.
Appellant argues:
Additionally, neither of the applied references
teaches or suggests the feature of determining if
the actuated key is a plural function key as
required by Claim 5. (Brief-page 5.)
The Examiner responds:
Appeal No. 1996-4065
Application No. 08/234,115
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Regarding the limitation of determining
whether the activated key is a plural function key,
Enomoto is suggestive of this feature (in addition
to the other references). See Figure 4, item 104,
where the activated key is checked and set to the
proper response command. Further, Lee teaches that
at least one control command is assigned to a given
key, thereby implying that some keys may have a
single command function transmitted in response to
their respective activation in addition to some keys
causing the transmission of two, or more, commands
when depressed. (Answer-pages 9 and 10.)
Reviewing the Examiner’s citations supra, we see no
“determining if the actuated key is a plural function key” as
claimed. Figure 4, item 104, of Enomoto “sets the key data to
the proper response command”, column 7, line 14. And, the
“implication” in Lee that some keys have a single command and
some keys have two or more commands, does not teach the
“determining” step.
Therefore, as to the rejection of claims 5 through 8
using the Lee and Enomoto combination, we find they lack the
required limitations of claim 5, and we will not sustain this
rejection.
Appeal No. 1996-4065
Application No. 08/234,115
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With regard to the rejection of claims 5 through 8
under 35 U.S.C. § 103 as being unpatentable over Evans et al.,
Enomoto et al. and Smith, Appellant argues:
The remote controller of Evans et al. is
also capable of being programmed to cause a
predetermined sequence of steps to be performed in
conjunction with one or more devices (column 8,
lines 16-21). ...
As described above, Evans et al. requires
the activation of two keys to achieve control of
more than one device. (Brief-pages 9 and 10.)
Reviewing Evans at column 8, lines 5 et seq., we
note that Evans does in fact “control different operations in
at least two of said apparatus” as claimed, but uses two keys.
However, the first key, preset key 46, only indicates that the
next key will be a pre-programmed key. When the pre-programed
key is actuated, the claimed operations are performed.
Appellant’s claim does not recite a “single” key, and does not
preclude using a preset key first. In a similar manner, if
key 40 were in the learn mode, it would have to be actuated to
obtain the run mode. Thus Appellant might argue that three
keys may have to be actuated to perform the plural operations,
i.e. key 40 (to obtain the run mode), then key 46 (to indicate
Appeal No. 1996-4065
Application No. 08/234,115
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a pre-programmed mode) and then the “single” key that when
activated will “control different operations in at least two
of said apparatus” as claimed. We find that Evans meets the
recited claim language.
Appellant further argues:
In particular, Appellant submits that
neither Evans, Enomoto nor Smith teaches or suggests
the features recited in Claim 5 wherein some keys on
the keyboard are single function keys, some keys are
plural function keys, and a determination is made if
an actuated key is a plural function key. (Emphasis
added.) (Brief-page 8.)

The Examiner responds:
Regarding Appellant’s argument that Smith
does not teach distinguishing between single and
plural function keys, this feature is taught by both
Evans and Enomoto in the combination of the
references applied in the rejection. (Answer-page
10.)

Although the Examiner has shown the use of plural
function keys in Evans and Enomoto, there is no evidence
proffered, nor can we find a teaching, of a method step of
“determining if the actuated key is a plural function key” as
claimed in claim 5. Thus we will not sustain the rejection of
claims 5 through 8 using the Evans, Enomoto and Smith
Appeal No. 1996-4065
Application No. 08/234,115
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combination.
We have not sustained the rejection of claims 5
through 8 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
Jerry Smith )
Administrative Patent Judge )
)
)
) BOARD OF
)
Lee E. Barrett ) PATENT
Administrative Patent Judge )
) APPEALS AND
)
)
INTERFERENCES
Stuart N. Hecker )
Administrative Patent Judge )
Appeal No. 1996-4065
Application No. 08/234,115
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