Ex Parte Thompson et al

Patent Trial and Appeal Board

Sep 17, 2018

12490978 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/490,978 06/24/2009 Brandt J. Thompson
34018 7590 09/19/2018
Greenberg Traurig, LLP
77 W. 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.
81230.133US2 4521
EXAMINER
DRAGOESCU, CLAUDIA B
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANDT J. THOMPSON, JON GALLEGOS,
JASONL. GODWIN, andPATRICKH. HAYES 1
Appeal2017-009063
Application 12/490,978
Technology Center 2100
Before JOHN G. NEW, CARLL. SILVERMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state the real party-in-interest is Universal Electronics Inc.
App. Br. 2.
Appeal2017-009063
Application 12/490,978
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 21, 24, and 31-35 as unpatentable
under 35 U.S.C. § I03(a) as being obvious over the combination of Rye et
al. (US 2009/0244402 Al, October 1, 2009) ("Rye"), Wugofski et al. (US
2003/0056216 Al, March 20, 2003) ("Wugofski"), and Shivaji-Rao (US
2008/0046916 Al, February 21, 2008) ("Shivaji-Rao").
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a system and method wherein
geographic data is used to configure a controlling device to control
operations of a target device and/or to configure the controlling device to
control tuning operations of a target device. Abstract.
REPRESENTATIVE CLAIM
Claim 21 is representative of claims 24 and 31-35 on appeal 2 and
recites:
21. A method for configuring a controlling device having a
favorites input element that is preassociated with a one of a
plurality of media content to control operations of a target device
2 Appellants do not explicitly argue dependent claims 24 and 31-35 which
depend from independent claim 21. We therefore consider the dependent
claims as argued together with claim 21.
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Application 12/490,978
which receives the plurality of media content from a media
content provider, comprising:
receiving into the controlling device a media content
lineup for the media content provider; and
automatically configuring the controlling device by using
the one of the plurality of media content that was associated with
the favorites input element at a time prior to the receipt of the
media content lineup and channel tuning information contained
within the media content lineup to automatically assign one or
more commands from a command code set stored in a memory
of the controlling device to the favorites input element
whereupon activation of the favorites input element causes the
controlling device to transmit to the target device the one or more
commands to thereby cause the target device to access the one of
the plurality of media content.
App. Br. 9.
ISSUES AND ANALYSES
Issue
Appellants argue that the Examiner erred in citing Rye, because Rye
is not prior art for the purposes of this application. App. Br. 5.
Analysis
Appellants argue that, in a Final Office Action of February 17, 2016
(the "February 17th Final Action"), prior to the Non-Final Action from
which this appeal originated, the Examiner found that Dresti et al. (US
2003/0103088 Al, June 5, 2003) ("Dresti") 3 teaches (1) "a method for
configuring a controlling device having a favorites input element that is pre-
3 Dresti is the US Patent Application Publication of Appl. No. 10/288,727
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Application 12/490,978
associated with a one of a plurality of media content to control operations of
a target device which receives the plurality of media content from a media
content provider." App. Br. 5 ( quoting February 17th Final Act. 6).
Appellants also point to the Examiner's finding that Dresti further teaches:
[ A ]utomatically configuring the controlling device by using the
one of the plurality of media content that is pre-associated with
the favorites input element and channel tuning information
contained within the identified media content lineup to
automatically assign one or more commands from the one of the
plurality of identified command code sets to the favorites input
element whereupon activation of the favorites input element
causes the controlling device to transmit to the target device the
one or more commands to thereby cause the target device to
access the one of the plurality of media content."
Id. ( quoting February 17th Final Act. 7-9).
Appellants point to similar findings by the Examiner on pages 3--4 of
the February 17th Final Action, e.g., (1) "The configuration of activities,
favorites, etc., is automatically invoked during the initial execution of the
remote control application" (citing Dresti ,r 139); (2) "Initialization of the
default favorites page in either case preferably occurs on first start-up of the
remote control application" ( citing Dresti Fig. 17, ,r 178); and (3) "The
remote control application may store favorite channel assignments as
broadcast channel identifiers and use the data in the EPG to dynamically
convert these channel identifiers to absolute channel numbers each time the
favorite is selected by the user" (citing Dresti ,r 268). App. Br. 5.
Appellants also point to similar findings by the Examiner in prior Non-Final
Rejection of October 16, 2015 (the "October 16th Final Action"). Id.
Appellants assert that their current application on appeal, which is a
continuation of Dresti, therefore claims the priority benefit of Dresti's filing
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Application 12/490,978
date of November 6, 2002. App. Br. 5. Appellants argue that, because the
Examiner has acknowledged that Dresti teaches all of the limitations recited
in the claims on appeal, Appellants' application is entitled to the priority
benefit of Dresti's filing date. Id. Therefore, Appellants contend, the
Examiner's rejection, which relies on Rye, must be reversed because Rye,
with a publication date of October 1, 2009, is not prior art with respect to the
claims on appeal. Id.
The Examiner responds that Appellants' application is not entitled to
the priority benefit of the filing date of Dresti and, consequently, Rye is
valid prior art for the purposes of assessing the obviousness of Appellants'
claims. Ans. 2. The Examiner points out that Appellants' current
application is a continuation-in-part of Dresti and, therefore, the claims do
not automatically receive the priority benefit of Dresti's filing date. Id.
Rather, the Examiner states, the claims on appeal are entitled to the priority
filing date of Dresti only if the subject matter of the application presently on
appeal is also disclosed by Dresti. Id. The Examiner finds that it does not.
Id. at 5.
The Examiner finds that the subject matter of the claims on appeal
relates to:
1. Pre-populat[ing] the favorite channels based on various
criteria, such as popularity. For example, the ESPN
channel is automatically added to the favorites list.
2. Obtain[ing] information about the local service providers
in the area.
3. Obtain[ing] the channels number assignments used by the
local service provider, and associate it with the favorite.
For example, discover[ing] that the local service provider
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Application 12/490,978
broadcasts ESPN on channel 29, and associate number 29
with the ESPN favorite.
4. Repeat[ing] these operations for all favorite channels.
5. So that when the user later activates the "ESPN" favorite
button, the TV tunes to channel 29.
Ans. 3. The Examiner finds that Dresti only briefly mentions the subject
matter of pre-populating favorite channels. Id. (citing Dresti ,r,r 178, 179).
The Examiner finds, however, that Dresti does not teach how the remote
control system automatically configures favorite channels, nor does it
present the algorithm of Figure 10 of Appellants' Specification. Id. at 5.
Rather, the Examiner finds that Dresti discloses only how a user can
manually configure favorite channels using a wizard. Id. ( citing Dresti Fig.
17, ,r,r 177-180).
We are not persuaded by the Examiner's reasoning. The application
on appeal claims the priority benefit of Appl. Ser. No. 61/076,226, with a
filing date of June 27, 2008, and is a continuation-in-part of Appl. Ser. No.
12/421,065, with a filing date of April 9, 2009. The latter is a divisional
application of App. Ser. No. 11/340,442, with a filing date of January 26,
2006 which, in tum, is a divisional application of Appl. Ser. No. 10/288,727,
which has a filing date of November 6, 2002, and which was published as
Dresti.
In the Answer, the Examiner finds that Dresti does not disclose the
subject matter of the claims on appeal and, therefore, because the present
application is a continuation-in-part of an earlier application, the claims
cannot claim the priority benefit of Dresti's filing date of November 6, 2002.
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However, in the February 17th Final Action, the Examiner expressly
found that Dresti teaches: (1) automatically pre-assigning stations and logos
to favorite buttons (citing Dresti ,r,r 135, 139, 178,217); (2) automatically
associating channel numbers with stations ( citing Dresti ,r,r 3 7, 13 5, 219,
285, 286); and (3) pre-assigning stations and logos to favorites, associating
channel numbers with stations, and therefore they teach that stations and
associated channel numbers are pre-assigned to favorites ( citing Dresti
,r 218). February 17th Final Act. 3-5. The Examiner therefore previously,
and expressly, found that, in contrast to the Examiner's current position,
Dresti teaches the subject matter and limitations set forth by the Examiner as
characterizing the limitations of the present claims on appeal. Id. at 5; see
also Ans. 3.
We find that the Examiner's findings and conclusions of the February
17th Final Action (and the similar findings of the October 16th Non-Final
Action) are more persuasive than the findings and conclusions currently set
forth in the Examiner's Answer, for the precise reasons set forth by the
Examiner in the February 17th Final Action. We therefore find that Dresti
discloses the subject matter of the claims on appeal and that, consequently,
Appellants' application may claim the priority benefit of Dresti's filing date
of November 6, 2002. Therefore, we conclude that Rye, which has a
publication date of October 1, 2009, is not valid prior art with respect to
Appellants' claims.
Moreover, because the Examiner relies principally upon Rye as
teaching most of the limitations of the claims on appeal (see Non-Final Act.
4--5), we find that the Examiner's primafacie case, absent Rye, cannot
stand. We consequently reverse the Examiner's rejection of claims 21, 24,
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Application 12/490,978
and 31-35. Furthermore, because we find this issue to be dispositive of the
appeal, we do not reach Appellants' additional arguments.
DECISION
The Examiner's rejection of claims 21, 24, and 31-35 as unpatentable
under 35 U.S.C. § 103(a) is reversed.
REVERSED
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