UNIVERSAL ELECTRONICS INC.

Patent Trials and Appeals Board

Oct 6, 2021

2020003929 (P.T.A.B. Oct. 6, 2021)

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.
15/831,721 12/05/2017 Arsham Hatambeiki 81230.146US9 5645
34018 7590 10/06/2021
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
BARAKAT, MOHAMED
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
10/06/2021 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
clairt@gtlaw.com
jarosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARSHAM HATAMBEIKI,
JEFFREY KOHANEK, and
NAIMISARANYA D. BUSEK
Appeal 2020-003929
Application 15/831,721
Technology Center 2600

Before ERIC B. CHEN, HUNG H. BUI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10. Claims 11–20 are objected to as
being dependent upon a rejected base claim, but are indicated as allowable if
rewritten in independent form including all of the limitations of the base and
any intervening claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies Universal Electronics Inc. as the real party in interest.
Appeal Brief filed September 11, 2019 (“Appeal Br.”) at 2.
Appeal 2020-003929
Application 15/831,721
2
CLAIMED SUBJECT MATTER
Summary
The subject matter of Appellant’s application relates to a remote
control “for use in issuing commands to entertainment and other
appliances,” such as a television or a set top box. Spec. 1:12–13.2 The
remote control “may be two-sided, with command function keys and
navigation input means being located on one surface and alphanumeric
keyboard keys being located on an opposite surface.” Id. at 2:14–16. “To . . .
prevent inadvertent actuation of keys, such a [remote control] may be
adapted to selectively enable and disable all or a portion of the command
function keys, keyboard keys, navigation input devices, or other user input
means located on one or the other surface based upon . . . target appliance
status.” Id. at 2:17–21.
Appellant further explains that the remote control normally goes into a
sleep mode to preserve battery life. During sleep mode, the remote is
unaware of a change in status of the host device; and for this reason, the
claimed method causes the host to store a change of status message in a
deferred transfer queue rather than attempt to transmit the message to the
remote control while it is in sleep mode:
In particular, battery powered devices of type contemplated
herein generally enter into a low-power quiescent state when not
in active use. In some instances this behavior may be accounted
for by defining a system with a strict requirement that all

2 In addition to the above-noted Appeal Brief, throughout this Decision we
refer to: (1) Appellant’s Specification filed December 5, 2017 (“Spec.”);
(2) the Final Office Action (“Final Act.”) mailed May 3, 2019; (3) the
Examiner’s Answer (“Ans.”) mailed February 28, 2020; and (4) the Reply
Brief filed April 23, 2020 (“Reply Br.”).
Appeal 2020-003929
Application 15/831,721
3
interactions commence with transmission of a signal from the
battery-powered device, thereby ensuring that it is not in a
quiescent state at the time. However in applications such as those
contemplated herein where asynchronous events in a host or
target appliance may result in a requirement to indicate status to,
or request a state change from, a battery powered controlling
device, alternative provisions must be made. For example, an
appliance such as TV 102 or STB 104 may asynchronously enter
into a menu display upon reaching the end of playback of a
prerecorded item, and may need to instruct a multi-surface
controlling device 100 regarding an appropriate input surface to
be enabled for user response when controlling device 100 is next
active. Accordingly, a deferred transfer queuing method may be
implemented in an appliance capable of engaging in bi-
directional communication with controlling device 100, such an
appliance hereafter referred to for convenience as a host
appliance.
Id. at 17:4–18.
Illustrative Claim
Claim 1, reproduced below with certain dispositive limitation at issue
italicized, illustrates the claimed subject matter:
1. A method for using a controlled device to control
an operating state of a controlling device in communication
with the controlled device, comprising:
storing by the controlled device in a deferred transfer
queue a message communication comprising data indicative of
an operating status of the controlled device;
at a time subsequent to the message communication
being stored in the deferred transfer queue, receiving by the
controlled device from the controlling device a first
communication;
in response to the controlling device receiving from the
controlling device the first communication, transmitting from
the controlled device to the controlling device the message
communication stored in the deferred transfer queue; and
Appeal 2020-003929
Application 15/831,721
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in response to the controlling device receiving the
message communication from the controlled device, causing the
controlling device to transition from a first controlling device
operating state to a second controlling device operating state
that corresponds to the operating status of the controlled device
as indicated by the data within the message communication.
Appeal Br. 7 (Claims Appendix).
REFERENCES AND REJECTIONS
The Examiner rejects claims 1–6, 9, and 10 under pre-AIA 35 U.S.C.
§ 102(a) as anticipated by Reams (US 2010/0208146 A1, published Aug. 19,
2010). Final Act. 2–5.
The Examiner rejects claims 7 and 8 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of Reams and
Morillas Bueno et al. (US 2008/0272930 A1, published Nov. 6, 2008)
(“Morillas Bueno”). Id. at 5–6.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Claim 1 recites, in part:
storing by the controlled device in a deferred transfer
queue a message communication comprising data indicative of
an operating status of the controlled device.
Appeal Br. 7.
The Examiner finds Reams discloses the above-recited limitation of
claim 1. Final Act. 3, 7 (citing Reams ¶¶ 23, 24, 29, 58); Ans. 3. The
portions of Reams cited by the Examiner describe an entertainment device,
such as a TV, that transmits an operating status of the entertainment device
Appeal 2020-003929
Application 15/831,721
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at the request of the remote control and that queues other data for
transmission at a later time:
the remote control 106 may request any information to be
transmitted from the entertainment device 102, e.g., status
requests, commands, software/firmware updates and the like,
0024: the remote control 106 may request specific information,
such as an operating status of the entertainment device 102. Thus,
the entertainment device 102 may transmit the requested
information and may queue other data to be transmitted until a
later time.
Id. (quoting Reams ¶¶ 23, 24) (emphasis omitted).
Appellant argues the Examiner ignores the word “other” in Reams and
that “Reams discloses a system in which an entertainment device determines
its operating status only in response to the remote control 106 requesting a
current operating status of the entertainment device 102.” Appeal Br. 4.
According to Appellant:
because Reams expressly describes that the remote control may
request an operating status of the entertainment device and the
entertainment device may transmit the requested [operating
status] information and may queue other data to be transmitted
until a later time (i.e., the Office is ignoring the word “other” in
paragraph 0024 (OA, pg. 3)), it is inherent that the entertainment
device of Reams would determine its operating status and
transmit such determined operating status to the remote control
only in direct response to a request for that information being
received from the remote control contrary to the position taken
in the Office Action.
Id. at 4–5.
Appellant persuades us that the Examiner has not shown that Reams’
entertainment device 102 discloses “storing . . . data indicative of an
operating status,” as recited in claim 1.
Appeal 2020-003929
Application 15/831,721
6
Anticipation is a test of strict identity. Trintec Indus., Inc. v. Top-
U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002). That is, to meet the
strict identity test for anticipation, all elements must be disclosed in the same
way as they are arranged or combined in the claim. Therasense, Inc. v.
Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Here, the
Examiner has not shown that all elements in Reams are disclosed in the
same way as they are arranged in the claim.
Reams relates to a technique for locating a misplaced remote control.
To aid in locating the misplaced remote, the remote control “queries an
associated controlled device for information. Based on a response to the
query, the remote control may output audio or visual indicators.” Reams ¶ 8.
Reams explains that a wireless transceiver 404 of the controlled device is
“operational to transmit other data to the remote control 106.” Id. ¶ 58. The
other data is “a command, generated by the control logic 402 [of the
controlled device], requesting the remote control 106 to activate an audible
or visual indicator, such as a speaker.” Id. Reams further explains that:
A request to activate an indicator may be transmitted responsive
to a query from the remote control 106. In other words, if the
control logic 402 generates a request to activate an indicator, the
wireless transceiver 404 and/or control logic 402 queues such
request until a query is received from the remote control 106.
Id.
Thus, the other data discussed as queued in Reams is “a command,
generated by the control logic 402, requesting the remote control 106 to
activate an audible or visual indicator” and is not “data indicative of an
operating status” of the controlled device, as recited in claim 1. Id. The
Examiner finds that Reams discloses queueing operating status information
of the controlled device; but, as argued by Appellant, the portion of Reams
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Application 15/831,721
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cited by the Examiner only discloses queueing other information. Appeal
Br. 4 (citing Reams ¶ 24). And we can find no disclosure in Reams that
discloses that the queued other information is operating status information of
the controlled device rather than a command to activate an audio or visual
indicator of the remote control. We, therefore, agree with Appellant that the
Examiner has not shown Reams discloses “storing by the controlled device
in a deferred transfer queue a message communication comprising data
indicative of an operating status of the controlled device,” as recited in
claim 1.
Based on the record before us, the Examiner has not demonstrated that
Reams discloses all of the limitations of independent claim 1. Accordingly,
we do not sustain the anticipation rejection of claim 1.3 Because we agree
with at least one of the dispositive arguments advanced by Appellant, we
need not reach the merits of Appellant’s other arguments for claim 1. We
also do not sustain the anticipation rejection of claims 2–6, 9, and 10, which
depend from claim 1.
Because the Examiner does not rely on Morillas Bueno (Final Act. 6)
to cure the deficiency of the anticipation rejection discussed above, we also
do not sustain the obviousness rejection of dependent claims 7 and 8.

3 Our reversal should not be taken as an indication of allowability or non-
obviousness of claim 1. Whether an ordinarily skilled artisan would have
found it obvious to store data indicative of an operating status in Reams’
entertainment device is not a question before us. Because the Examiner has
not rejected the claim under 35 U.S.C. § 103, we will not speculate in that
regard here in the first instance on appeal.
Appeal 2020-003929
Application 15/831,721
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DECISION SUMMARY
In summary:

REVERSED
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–6, 9, 10 102(a) Reams 1–6, 9, 10
7, 8 103(a) Reams,
Morillas Bueno
7, 8
Overall
Outcome
1–10