Home Theater Direct, Inc.

Patent Trials and Appeals Board

Feb 8, 2022

2021003648 (P.T.A.B. Feb. 8, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 16/599,238 10/11/2019 Brian R. Wines 087844.0101 9254 5073 7590 02/08/2022 BAKER BOTTS L.L.P. 2001 Ross Avenue, Suite 900 Dallas, TX 75201 EXAMINER GILMAN, ALEXANDER ART UNIT PAPER NUMBER 2831 NOTIFICATION DATE DELIVERY MODE 02/08/2022 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): PTOmail1@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN R. WINES Appeal 2021-003648 Application 16/599,238 Technology Center 2800 Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and JANE E. INGLESE, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-21. Appeal Br. 7-19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 This Decision includes citations to the following documents: Specification filed October 11, 2019 (“Spec.”); Final Office Action entered September 30, 2020 (“Final Act.”); Appeal Brief filed February 1, 2021 and Supplemental Appeal Brief filed February 12, 2021 (collectively referred to as “Appeal Br.”); Examiner’s Answer entered May 3, 2021 (“Ans.”); and Reply Brief filed May 19, 2021 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Home Theater Direct as the real party in interest. Appeal Br. 2. Appeal 2021-003648 Application 16/599,238 2 CLAIMED SUBJECT MATTER Appellant states the invention relates to controllers that are easy to install or uninstall. Spec. 1. Claim 1 is reproduced below, and is illustrative of the claimed subject matter (Appeal Br. 22, Claims App.): 1. A controller system, comprising: an electrical junction box; a mounting receptacle inserted into and coupled to the junction box; a user interface operable to receive input from a user, wherein the user interface comprises an interface housing to which the user interface is coupled, the interface housing having a front portion and a rear portion, the front portion containing the user interface; a controller housing coupled to the rear portion of the user interface housing, the controller housing comprised of at least one sidewall and a rear wall; at least one magnet coupled to the controller housing, the at least one magnet operable to hold the controller in position using magnetic force when the controller housing is inserted into the mounting receptacle. Claim 8 is also independent and recites a controller system. Appeal Br. 23 (Claims App). Appeal 2021-003648 Application 16/599,238 3 REFERENCES The Examiner relies upon the following prior art: Name Reference Date Le US 7,414,193 B1 Aug. 19, 2008 Colao et al. (“Colao”) US 9,793,697 B1 Oct. 17, 2017 Bryans et al. (“Bryans”) US 10,492,602 B2 Dec. 3, 2019 Iaconis et al. (“Iaconis”) US 2019/0229478 A1 July 25, 2019 REJECTIONS3 1. Claims 1-6, 8-13, 15-19, and 21 are rejected under 35 U.S.C. § 103 as being unpatentable over Le and Colao. Final Act. 3-7. 2. Claims 7, 14, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Le, Colao, and Iaconis. Final Act. 7-8. 3. Claims 18, 20, and 21 are rejected under 35 U.S.C. § 103 as being unpatentable over Le, Colao, and Bryans. Final Act. 8. OPINION We confine our discussion to claim 1, which is sufficient to decide the rejections on appeal. 3 The Examiner withdrew the rejection of claims 1-21 under 35 U.S.C. § 112(b) in the Answer. Ans. 3; see Final Act. 3. In addition, because Rejections 2 and 3 involve claims that depend from claims 1 and 8, we understand these rejections to also include Colao even though this reference is not listed in the Examiner’s statements of rejection. Appeal 2021-003648 Application 16/599,238 4 Rejection 1 The Examiner’s Rejection In rejecting claim 1 as unpatentable over Le and Colao, the Examiner found Le discloses a controller system including an electrical junction box, a mounting receptacle (wall box 40), a user interface with an interface housing (switch plate 30), and a controller housing (device 28, base plate 10) including at least one magnet (magnet 18) coupled to the controller housing. Final Act. 3 (citing Le col. 1, ll. 10-12; Fig. 6); see also Le, col. 5, ll. 22-40. The Examiner found that for Le’s assembly to be used in any existing buildings, the mountable receptacle (wall box 40) would be attached to any standard electrical junction box. Final Act. 3. The Examiner stated “[a]n electrical junction box is not part of the claimed controller, but one of possible mounting elements (a mounting bracked [sic, bracket], a holed mounted surface, a junction box) of a building where the controller would be installed.” Id. The Examiner found Colao discloses a mounting receptacle adapted to be coupled into an existing junction box. Id. at 3-4. The Examiner determined that it would have been obvious to have combined an existing junction box with a retrofit mounting receptacle as taught by Colao in order to avoid various disadvantages related to mounting disclosed in Le. Final Act. 4. Appellant’s Arguments Appellant argues Le does not disclose a mounting receptacle that is inserted into and coupled to an electrical junction box, rather wall box 40 disclosed in Le is an electrical junction box, and as such, Le is missing the mounting receptacle disclosed in claim 1. Appeal Br. 12-17. Appeal 2021-003648 Application 16/599,238 5 Discussion We are persuaded by Appellant’s arguments. The main dispute is whether the “magnetically engageable wall box” disclosed in Le is an electrical junction box. We are of the view that a preponderance of the evidence does not support the Examiner’s position that the “magnetically engageable wall box” in Le is a “structurally and functionally” different element than an electrical junction box. See Ans. 5. That is, the Examiner’s statements that Le’s magnetically engageable wall box “is configured to tightly match and magnetically attach (or detach) the controller/‘device’ (28) with no inner space for wires or circuitry” as a basis for distinguishing the wall box from an electrical junction box (Ans. 5-6), is not supported by Le. In this regard, Le discloses “[a] wall box is typically mounted on a wood beam during the construction of a home or office and is usually used to house a light switch and its associated wires and/or circuitry.” Le, col. 1, ll. 10-12. Le discloses its invention is “an apparatus for mounting a device in a wall box.” Id. at col. 1, ll. 39-44. Le discloses an arrangement where one or more magnets 18 are coupled to side portions 16 of base plate 10, and front portion 14 of the base plate is coupled to device 28. Id. at col. 2, l. 56 - col. 3, l. 9; Figs. 1, 6. Le discloses that magnets 18 may be coupled to side portion 16 by a fixed or displaceable coupling. Id. at col. 3, ll. 27-37. Le also discloses that magnets 18 may be adjusted to allow “movement in a direction (B) that is transverse to the center axis (A), such that the magnets move in an outward direction away from the base plate 10 and towards a magnetically engageable wall box 40.” Id. at col. 3, ll. 56-61; Fig. 1. Le discloses the arrangements include wires. Id. at col. 3, ll. 13-16; col. 4, ll. 8-9; Appeal Br. 18. Appeal 2021-003648 Application 16/599,238 6 From these disclosures, it is clear that Le does not require tight matching between magnetically engageable wall box 40 and device 28 and that Le contemplates the presence of wires in the inner space of the wall box, contrary to the Examiner’s findings. See Appeal Br. 18; Reply Br. 8-9. Moreover, we are of the view that Le’s disclosure regarding the use of springs to adjust the force exerted by the magnets in situations where a non- magnetic wall box is used is further evidence that Le’s “wall box” is an electrical junction box. Le, col. 6, l. 62 - col. 7, l. 1; see Appeal Br. 18-19. Thus, a preponderance of the evidence does not support the Examiner’s position that Le’s magnetically engageable wall box is a separate component from an electrical junction box. Therefore, we agree with Appellant that the Examiner’s combination lacks the “mounting receptacle” recited in claim 1. Accordingly, we reverse the Examiner’s rejection of claim 1 and claims 2-6 dependent therefrom. Because claim 8 recites “a mounting receptacle adapted to be coupled into a junction box” we reverse the Examiner’s rejection of claims 8-13, 15-19, and 21 as well. Rejections 2 and 3 Claims 7, 14, 18, 20, and 21, the subject of Rejections 2 and 3, depend from either claim 1 or claim 8. The additional prior art cited does not remedy the deficiencies discussed above with respect to claims 1 and 8. Accordingly, we reverse Rejections 2 and 3 for similar reasons as discussed above for Rejection 1. Appeal 2021-003648 Application 16/599,238 7 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 8-13, 15-19, 21 103 Le, Colao 1-6, 8-13, 15-19, 21 7, 14, 20 103 Le, Colao, Iaconis 7, 14, 20 18, 20, 21 103 Le, Colao, Bryans 18, 20, 21 Overall Outcome 1-21 REVERSED