Ex Parte Wenham

Patent Trial and Appeal Board

Mar 19, 2015

11612640 (P.T.A.B. Mar. 19, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVEN WENHAM
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Appeal 2012-011095
Application 11/612,640
Technology Center 2600
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Before ALLEN R. MacDONALD, BRUCE R. WINSOR, and
ADAM J. PYONIN, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1–10, 13–15, and 18–23.
1
We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1
Claims 11, 12, 16, and 17 have been canceled. Appeal Br. 1. References to
the Appeal Brief (“App. Br.”) are directed to Appellant’s Appeal Brief filed
February 21, 2012.
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2
STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to “configuring communication
terminals to interoperate.” Spec. 1:4. Claim 1, reproduced below, is
illustrative of the claimed subject matter (emphasis added):
1. A communication system comprising:
at least two command devices, each being capable of
transmitting command signals over a communication interface;
at least two response devices, each being capable of
receiving such command signals over the communication
interface and being capable of performing a non-
communication function in response to such a command signal;
and
a computer having a program store storing a computer
program for execution by the computer to cause the computer to
remotely configure at least one of the command and response
devices, said at least one of the command and response devices
hereinafter being referred to as the configurable device(s), so as
to operate selectively with other response and/or command
devices in such a way that:
if a configurable device is a command device it will
direct its command signals to a specific one or more of the
response devices to the exclusion of one or more other of the
response devices; or
if a configurable device is a response device it will accept
command signals from a specific one or more of the command
devices to the exclusion of one or more other of the command
devices.

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3
Rejections
The Examiner rejects claims 1– 7, 9, 10, 13–15, 18– 21, and 23 under
35 U.S.C. § 103(a) as being unpatentable over Goldstein (US 5,410,326;
Apr. 25, 1995) and Reponen (US 2003/0197740 A1; Oct. 23, 2003). Ans. 3.
The Examiner rejects claims 8 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Goldstein, Reponen, and Tilley (US 2007/0112767
A1; May 17, 2007). Ans. 6.
ISSUES
Appellant’s arguments present us with the following issues:
A. Did the Examiner err in rejecting independent claims 1
and 10, because the cited art does not teach or suggest
remote configuration for selective operation? App. Br.
8–10.
B. Did the Examiner err in rejecting independent claims 1
and 10, because “Goldstein cannot be properly combined
with Reponen?” App. Br. 10.
C. Did the Examiner err in rejecting the dependent claims?
App. Br. 10–16.
ANALYSIS
We adopt the Examiner’s findings and conclusions (see Ans. 3–11) as
our own, and we add the following for emphasis.

A. Remote Configuration For Selective Operation
Regarding the above Issue A, Appellant argues that the cited art does
not render obvious independent claims 1 and 10, because the claim “term
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‘configure’ does not mean to control” as discussed in Reponen, and
“Reponen does not disclose any remote configuration of any device such
that it will interoperate with one device to the exclusion of at least one other
device.” App. Br. 9.
We are not persuaded the Examiner erred. Appellant appears to be
arguing that Reponen must be “bodily” incorporated into Goldstein. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). As articulated by the Examiner,
Goldstein teaches “a configurable device, so as to operate selectively with
other response and/or command devices,” and that “Reponen generally
teaches ‘a computer having a program store storing a computer program for
execution by the computer to cause the computer to remotely configure.’”
Ans. 4, citing Goldstein col. 7:4–15 and Reponen Fig. 3. Particularly, the
Examiner finds that Reponen discloses in “Paragraph 0032 . . . the user can
use mobile device 10 to control the television volume,” and therefore
teaches “remotely configuring” as recited in claim 1. Ans. 8.
We agree with the Examiner that changing (i.e., configuring) the
volume of a response device, as taught by Reponen, teaches “remotely
configure” as required by claims 1 and 10. Ans. 8. Further, as found by the
Examiner, both Goldstein and Reponen teach a variety of control signals and
remote configurations. See, e.g., Ans. 3–4, citing Goldstein Fig. 1 and col.
4:55–68, and Reponen ¶ 22. Appellant has thus not persuaded us that the
combination of Goldstein and Reponen does not teach or suggest
independent claims 1 and 10.
Separately we note, although the Examiner states that “Goldstein does
not teach ‘a computer having a program store storing a computer program
for execution by the computer to cause the computer to remotely
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configure,’” Goldstein is silent only as to the claim term “computer
program.” Ans. 4. That is, the Examiner finds, and we agree, that Goldstein
teaches remotely configuring a device to operate selectively, as required by
claims 1 and 10. Ans. 4. See, e.g., Goldstein col. 4:55–68 (“the television
converter may be programmed only to respond to a specific universal remote
control device. A unique identification number assigned to each remote
control device is downloaded from the head end cable system to the cable
converter”). Accordingly, we affirm the Examiner’s rejection of
independent claims 1 and 10.

B. Combination of Goldstein and Reponen
Regarding the above Issue B, Appellant argues that “Goldstein cannot
be properly combined with Reponen,” because there is no motivation to
combine the references, and there is no reason to do so, as “the universal
remote of Goldstein is already operable.” App. Br. 10, see also Reply Br. 2–
3. In view of the U.S. Supreme Court’s opinion in KSR Int'l Co. v. Teleflex
Inc., our analysis here does not turn upon whether the Examiner has
provided an adequate teaching, suggestion, or motivation to combine the
references. “[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result” to
be nonobvious. KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007)
Here, the Examiner has combined Reponen’s “intuitive representation
of a home remote control computer program” (Reponen ¶ 22) with
Goldstein’s remote control system and graphical user interface (see
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Goldstein Fig. 1) in order to permit “a user to control lights, appliances, and
other devices (not shown) within and around his/her home.” Ans. 8–9.
Appellant fails to provide sufficient evidence or reasoning to persuade us
that using the graphical user interface of Reponen in the system of Goldstein
(see Ans. 9) yields anything other than predictable results. See App. Br. 10,
Reply Br. 2–3. Accordingly, we find Appellant’s arguments unpersuasive
that the cited references have been improperly combined by the Examiner.

C. Dependent Claims
Appellant separately argues various dependent claims. App. Br. 10–
16. We highlight the following issues, seriatim, as they are presented in the
Appeal Brief. Id.
Appellant argues that the cited art does “not disclose a command
device being arranged to include a stored identity in command signals that it
transmits” as required by claims 4 and 19, nor does the cited art teach “a
response device that is arranged to respond only to command signals that
include a command device identity that is stored by the response device” as
required by claims 6 and 20.
2
App. Br. 11–13.
We agree with the Examiner that the cited art renders obvious such
limitations, because Goldstein discloses “[o]nly a remote control device
which has an ID number verified by the cable TV converter will be able to
control the cable TV converter” and the “cable converter may also

2
We note that claims 4 and 6 do not specify which device in the system “is
configurable to store the identity.” However, for purposes of this analysis
we group claim 4 with claim 19 and claim 6 with claim 20. See C.F.R 37
C.F.R. § 41.37(c)(l)(iv).
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personalize the remote to a specific location,” that is, a specific converter.
Goldstein col. 4:62–63, 66–67, cited by Ans. 5–6. Goldstein also discloses
“[t]he remote control device 5 will generate infrared codes for each of the
devices.” Goldstein col. 7:11–12, cited at Ans. 4. We further note that
Goldstein teaches a “bidirectional link” between the remote control and the
cable converter (See Fig. 1, col. 7:47–48); therefore the remote control of
Goldstein teaches both the “command device” and “response device” as
recited in claims 4, 6, 19, and 20. So, too, does Goldstein’s cable converter.
Goldstein thus teaches the “stored identity” in the command signals,
as the cable box may only respond to signals sent from a verified remote
control. See Ans. 5, 9. Appellant responds that “other known methods . . .
could be used for verification of commands in Goldstein's system, which do
not include transmission of a unique identity,” such as “cryptographic
techniques.” Reply Br. 3–4. Appellant’s proposed alternative methods of
the verification of Goldstein, however, are still encompassed by the “stored
identity” of the claims, because Goldstein teaches verifying the “identity” of
the device. See Ans. 5–6, Goldstein col. 4:55–68. Accordingly, we do not
find the Examiner erred in finding Goldstein teaches or suggests storing and
transmitting the identity, as required by claims 4, 6, 19, and 20.
Appellant additionally argues that the cited art “does not disclose a
configurable device being configurable over the communication interface
that it uses to transmit commands to response devices” as recited in claims 7
and 21, because Goldstein requires a “connector” to download an ID. App.
Br. 13. The Examiner finds that Reponen teaches configuring a device over
the communication interface, such as setting the volume on a television.
Ans. 10, citing Reponen Fig. 8. We are not persuaded the Examiner erred
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for the reasons discussed above with respect to Reponen teaching “remotely
configuring” as required by claims 1 and 10. Furthermore, we note that
Goldstein teaches remotely configuring over the communication interface.
See, e.g., Goldstein Fig. 1, col 12:66–68. Accordingly, we affirm the
Examiner’s rejection of independent claims 7 and 21.
Appellant contends that the rejection of claims 8 and 22 “is utterly
nonsensical and must be reversed” (Reply Br. 6), as
it would not be obvious to eliminate user input interfaces from
any of the appliances disclosed by Goldstein as being
controllable by the universal remote, as it would not make any
sense to have a consumer appliance that could not be directly
controlled in favor of being only remotely controlled.
(App. Br. 15). We are not persuaded that the Examiner’s analysis is not
reasonable. We agree with the Examiner that “[t]he claimed limitation
clearly reads on how a device may be incapable of being configured via its
‘user interface’ to access more than one wireless network.” Ans. 10. The
Examiner finds a teaching of restricting programmability in Tilley’s
disclosure of “a device may be incapable of being configured to access more
than one wireless network.” Tilley ¶ 4, cited at Ans. 6–7. The Examiner
thus finds that, by adding Tilley to the combination, “the appliances of
Reponen would be modified to eliminate the need to configure the
appliances by means of any user interface to access a different mobile
device.” Ans. 10–11. Contrary to Appellant’s arguments, this limitation on
configurability control is relevant to Goldstein (see, e.g., col. 13:47–55) and
Reponen (see, e.g., Reponen ¶ 22). Reply Br. 5–6. Accordingly, we are not
persuaded the Examiner erred.

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CONCLUSION
Appellant has not persuaded us that the Examiner erred in rejecting
independent claims 1 and 10, and dependent claims 4, 6, 7, 8, and 19–22.
Appellant does not present arguments for the patentability of remaining
dependent claims 2, 3, 5, 9, 10, 13–15, 18, and 23, apart from independent
claims 1 and 10. See App. Br. 8. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), we find no error in the Examiner’s rejections of these
dependent claims.

DECISION
We affirm the Examiner’s rejection of claims 1–10, 13–15, and 18–23
under 35 U.S.C. § 103(a).
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

ELD