Universal Electronics Inc.Download PDFPatent Trials and Appeals BoardOct 8, 20212020004505 (P.T.A.B. Oct. 8, 2021) Copy Citation 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. 15/962,451 04/25/2018 Olav B.M. Pouw 81230.148US4 5641 34018 7590 10/08/2021 Greenberg Traurig, LLP 77 W. Wacker Drive Suite 3100 CHICAGO, IL 60601-1732 EXAMINER MONSHI, SAMIRA ART UNIT PAPER NUMBER 2422 NOTIFICATION DATE DELIVERY MODE 10/08/2021 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 OLAV B.M. POUW and PATRICK H. HAYES ____________ Appeal 2020-004505 Application 15/962,451 Technology Center 2400 ____________ Before ROBERT E. NAPPI, CATHERINE SHIANG, and TERRENCE W. McMILLIN, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–12, which are all the claims pending and rejected in the application. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Universal Electronics Inc. as the real party in interest. Appeal Br. 2. Appeal 2020-004505 Application 15/962,451 2 STATEMENT OF THE CASE Introduction The invention relates to “providing an adaptive user interface on an electronic appliance.” Title (capitalization omitted). Consumer electronic appliances such as set top boxes for receiving and decoding cable and satellite signals, televisions, DVD players, game systems, etc. are well known in the art, as are the hand held controlling devices, for example remote controls, which may be provided for use in issuing commands to these appliances. In some instances these controlling devices may be made available in various forms, for example coded to assist in recognition of individual users in a household; optimized for a specific function such as game playing, web browsing, or movie watching; or specially adapted to the needs of the elderly or of children. While such controlling devices may serve the purposes for which they were intended, in some instances it would be advantageous if the controlled appliance were further enabled to recognize the nature of the controlling device currently in use and adapt its appliance configuration, menuing system, GUI, etc. accordingly. Spec. 1:11–21. Claims 1 and 5 are exemplary: l. A method performed by a switching device that is operable to connect at least one of a plurality of source devices to a sink device, the method comprising: detecting an infrared (IR) signal transmitted by a remote control device, wherein the IR signal transmitted by the remote control device comprises a protocol and a command value that is directly recognizable by a first device among the plurality of source devices and the sink device; in response to the detection of the IR signal, determining that the remote control device is in use; and Appeal 2020-004505 Application 15/962,451 3 in response to determining that the remote control device is in use, controlling a connection between the at least one of the plurality of source devices and the sink device as a function of the detected IR signal. 5. A switching device, comprising: a plurality of audio/video (AV) ports; a receiver; and control logic that is operable to selectively connect at least one of a plurality of source devices to a sink device each of which is connected to a corresponding one of the plurality of AV ports, the control logic being configured to: determine that the receiver has received an infrared (IR) signal transmitted by a remote control device, wherein the IR signal transmitted by the remote control device comprises a protocol and a command value that is directly recognizable by a first device among the plurality of source devices and the sink device; in response to determining that the receiver has received the IR signal, determine that the remote control device is in use; and in response to at least determining that the remote control device is in use, controlling a connection between the at least one of the plurality of source devices and the sink devices as a function of the detected IR signal. Appeal 2020-004505 Application 15/962,451 4 References and Rejections2 Claims Rejected 35 U.S.C. § References 1, 3, 5, 7, 9, 11 103(a) Garg (US 2007/0220150 A1, Sep. 20, 2007), Igoe (US 2013/0187767 A1, Jul. 25, 2013) 2, 4, 6, 8, 10, 12 103(a) Garg, Igoe, Tzeng (US 2008/0291074 A1, Nov. 27, 2008) PRINCIPLES OF LAW “[W]hen the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). “[T]he ‘mere disclosure of alternative designs does not teach away’” and “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is highly relevant, and must be weighed in substance. A known or obvious composition does not become patentable 2 Throughout this opinion, we refer to the (1) Non-Final Office Action dated August 22, 2019 (“Non-Final Act.”); (2) Appeal Brief dated December 6, 2019 (“Appeal Br.”); (3) Examiner’s Answer dated April 3, 2020 (“Ans.”); and (4) Reply Brief dated May 28, 2020 (“Reply Br.”). Appeal 2020-004505 Application 15/962,451 5 simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). ANALYSIS Obviousness We have reviewed and considered Appellant’s arguments, but such arguments are unpersuasive. To the extent consistent with our analysis below, we adopt the Examiner’s findings and conclusions in (i) the action from which this appeal is taken and (ii) the Answer. Further, to the extent Appellant advances new arguments in the Reply Brief without showing good cause, Appellant has waived such arguments. See 37 C.F.R. § 41.41(b)(2). Claim 5 On this record, the Examiner did not err in rejecting claim 5. I Appellant contends “the requirements for presenting a prima facie case of obviousness have not been met.” Appeal Br. 6. In particular, Appellant argues “the Office has failed to: a) evidence that all of the claimed elements were known in the art;3 or c) even conclude that the combination of Garg and Igoe would lead one of skill in the art to the exact invention claimed.” Appeal Br. 6. Appellant further argues: 3 Item b) is discussed below in Section II. Appeal 2020-004505 Application 15/962,451 6 In the rejection of claims, it was acknowledged that Garg does not disclose, teach, or suggest a switching device that is operable to detect/receive and respond to an infrared (IR) signal transmitted by a remote control device wherein the IR signal transmitted by the remote control device comprises a protocol and a command value that is directly recognizable by a first device among the plurality of source devices and the sink device that are connected to the switching device. (OA, pgs. 3-4, 5-6, and 9-10). It has not been asserted that Igoe discloses, teaches, or suggests a switching device or any other element that is operable to detect/receive and respond to such an IR signal. Rather, it has only been asserted that Igoe discloses “an IR signal transmitted by the remote control device comprises a protocol and a command value that is directly recognizable by first device among the plurality of source device and sink device,” (OA, pgs. 4, 6, and 10). Appeal Br. 5 (emphases omitted); see also Reply Br. 3–5. Appellant has not persuaded us of error. It is well settled that: [The USPTO] satisfies its initial burden of production by adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond. In other words, the PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in notify[ing] the applicant . . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and quotation marks omitted). Specifically, the Jung Court finds: the examiner’s discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected Appeal 2020-004505 Application 15/962,451 7 claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden. Id. at 1363 (emphasis added). Here, the Examiner’s rejection clearly satisfies the requirement of 35 U.S.C. § 132 to establish a prima facie case of unpatentability. The rejection identifies: the theory of unpatentability (obviousness); the prior art basis for the rejection (Garg and Igoe); where each limitation of claim 5 is shown in the references by paragraph and figure numbers, plus additional explanation about how the prior art features are mapped to the claim. See Jung, 637 F.3d at 1363; Non-Final Act. 5–7; Ans. 3–7. Similar to the Examiner in Jung, the Examiner has done “more than sufficient to meet this burden [of establishing the prima facie case].” The burden then shifts to Appellant to rebut the Examiner’s case. In order to rebut a prima facie case of unpatentability, Appellant must distinctly and specifically point out the supposed Examiner errors, and the specific distinctions believed to render the claims patentable over the applied reference. See 37 C.F.R. § 1.111(b). Appellant has not carried the burden. In particular, Appellant’s argument that “[i]t has not been asserted that Igoe discloses, teaches, or suggests a switching device or any other element that is operable to detect/receive and respond to” (Appeal Br. 5) (emphases omitted) is unpersuasive because it is not directed to the Examiner’s specific findings. The Examiner finds—and Appellant does not persuasively dispute—Garg teaches: A switching device . . . . . . Appeal 2020-004505 Application 15/962,451 8 determine that the receiver has received an infrared (IR) signal transmitted by a remote control device, . . . a first device among the plurality of source devices and the sink device; in response to determining that the receiver has received the IR signal, determine that the remote control device is in use; and in response to at least determining that the remote control device is in use, controlling a connection between the at least one of the plurality of source devices and the sink devices as a function of the detected IR signal. See Non-Final Act. 5–6; Ans. 4, 6.4 Therefore, Igoe does not need to teach those limitations again. Similarly, Appellant’s unsubstantiated argument that the proposed combination is not the claimed invention (Reply Br. 3–5) is unpersuasive, because it is not directed to the Examiner’s specific findings and conclusions. Further, Appellant’s attorney arguments (Reply Br. 3–5) are speculative and unpersuasive of Examiner error, as Appellant does not provide sufficient objective evidence to support the arguments. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“attorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness”); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977) (“Argument of counsel cannot take the place of evidence lacking in the record.”). Finally, Appellant repeatedly mischaracterizes the Examiner’s statements (see, e.g., Appeal Br. 5, 7; Reply Br. 4–5), which is unhelpful and 4 Although we map the preamble for completeness, Appellant has not demonstrated the preamble is limiting. Appeal 2020-004505 Application 15/962,451 9 fails to show Examiner error. For example, Appellant’s assertion that on page 6 of the Answer, “the Office has further acknowledged that modifying Garg according to the relied upon teaching in Igoe would not result in the exact invention claimed” (Reply Br. 5) plainly contradicts the record, as the cited page is devoid of such acknowledgement. II Appellant argues the Examiner has not provided the requisite rationale for combining the teachings of Garg and Igoe to teach claim 5. See Appeal Br. 5–6; Reply Br. 2–3. In particular, Appellant argues: while it was concluded that “it would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate the system/method of sending control command to DVD as disclosed by Igoe to the remote controller as disclosed by Garg in order to communicate with external devices via remote controller” (OA, pgs. 5, 7, and 10) . . ., it was not asserted that it would have been obvious, based on the teachings of Igoe, to modify the switching_device of Garg such that the switching_device of Garg would be operable to detect/receive and respond to an infrared (IR) signal transmitted by a remote control device wherein the IR signal transmitted by the remote control device comprises a protocol and a command value that is directly recognizable by a first device among the plurality of source devices and the sink device, i.e., the invention claimed. Appeal Br. 5–6 (emphases omitted); see also Reply Br. 2–3. We disagree. The U.S. Supreme Court has held “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Contrary to Appellant’s arguments, “[i]f the claim extends to what is obvious, it is invalid under § 103” and “the analysis Appeal 2020-004505 Application 15/962,451 10 need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418–19. The Examiner has provided articulated reasoning with a rational underpinning as to why one skilled in the art would have found it obvious to combine the teachings of Garg and Igoe. See Non-Final Act. 7; Ans. 4. In particular, the Examiner finds one skilled in the art would have modified Garg’s system to incorporate Igoe’s feature in order to facilitate communications with the remote controller. See Ans. 4. Appellant does not persuasively show why such reasoning is incorrect. Appellant’s argument that the “reasoning does not assert that Igoe discloses, teaches, or suggests a switching device that is able to detect 5 and act upon transmissions that are intended for reception by devices other than the switching device itself (which Igoe does not)” (Reply Br. 3 (emphasis omitted)) is unpersuasive, because it is not directed to the Examiner’s specific findings. As discussed above, the Examiner cites Garg—not Igoe—for teaching the determining limitation (as recited in claim 5) and the detecting limitation (as recited in claim 1). See Non-Final Act. 3, 5. Further, Appellant’s attorney argument that “the Office has admitted that Igoe adds nothing to the disclosure within Garg” (Reply Br. 5) plainly contradicts the record. See Ans. 4 (stating the opposite of what Appellant argues). The Examiner’s findings and conclusion are reasonable because the skilled artisan would “be able to fit the teachings of multiple patents together 5 While claim 1 recites a detecting limitation, claim 5 recites “determine . . . .” See claims 1 and 5. Appeal 2020-004505 Application 15/962,451 11 like pieces of a puzzle,” as the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. Appellant does not present adequate evidence that the resulting arrangements would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). Accordingly, we agree with the Examiner that applying Igoe’s feature in the Garg system would have predictably used prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. Finally, Appellant’s argument (Appeal Br. 5–6) is moot in light of the Examiner’s refined rationale for the proposed combination. See Ans. 4. Appellant’s assertion that the Examiner should withdraw the rejection because the Examiner refined the reasoning in the Answer (Reply Br. 3) is unpersuasive, as Appellant cites no basis for that assertion. To the extent Appellant is arguing the refined reasoning constitutes a new ground of rejection, that argument is a petitionable—not appealable—matter and is therefore, not before us. See 37 C.F.R. § 41.40(a) (“Any request to seek review of the primary examiner’s failure to designate a rejection as a new ground of rejection in an examiner’s answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner’s answer and before the filing of any reply brief. Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection.”); see also MPEP § 1002.02(c) (Petitions and Requests Decided Appeal 2020-004505 Application 15/962,451 12 by the Technology Center Directors); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”). III Appellant argues the proposed combination would cause Garg’s switching device to “be rendered inoperable.” Appeal Br. 8; see also Appeal Br. 7–8; Reply Br. 5. An argument that the system is rendered “inoperable for its intended purpose” is a “teach away” argument. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in effect, “French teaches away from the board’s proposed modification” because “if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose”). In this case, Appellant’s following attorney arguments are speculative and unpersuasive, as Appellant does not provide sufficient objective evidence to support the arguments. See Geisler, 116 F.3d at 1470; Meitzner, 549 F.2d at 782: Garg discloses a system that includes a switching device, to which is connected a plurality of source devices and a sink device, and an IR remote controller that is operable to transmit an IR signal to the switching device for the purpose of commanding the switching device to connect a particular source device to the sink device through the switching device. Appeal Br. 6 (emphases omitted); It is further respectfully submitted that, because nothing within Garg discloses, teaches, or suggests that the switching device of Garg is intended to detect/receive an IR signal that is operable to Appeal 2020-004505 Application 15/962,451 13 control a device other than the switching device (e.g., Garg does not disclose the switching device detecting a command transmitted for purposes of controlling a TV or a set-top box), Garg must also fail to disclose, teach, or suggest a switching device that will respond to the detection/reception of the IR signal (that is operable to control a one of plurality of source devices and the sink device) to thereby determine that the remote control device is in use as further claimed. Accordingly, based on the disclosure within Garg and the acknowledgements set forth in the rejection of the claims as to what is missing from within Garg in the first instance, it must be taken as fact that the switching device of Garg is incapable of detecting/receiving and responding to an IR signal transmitted by the remote control device when the IR signal transmitted by the remote control device comprises a protocol and a command value that is directly recognizable by a first device among a plurality of source devices and the sink device that are coupled to the switching device, e.g., when a remote control is used to transmit a command to a DVD player. In view of the foregoing, it is respectfully submitted that, if the remote controller of Garg were to be modified to send control signals using a protocol and a command value that is directly recognizable by the DVD player as asserted and relied upon in rejecting the claims at issue, the switching device of Garg, which is incapable of detecting and responding to such control signals, would be rendered inoperable, i.e., the switching device of Garg would no longer be capable of being operated by the remote controller so modified as the switching device of Garg would-- ;as is conventional-–ignore an IR signal that is intended for receipt by the DVD player. (Appeal Br. 7–8 (emphases omitted)). Additionally, Appellant argues that Garg’s paragraph 55 and 64–66 [d]escribe[] that the switching device can be commanded to connect a source device to the sink device by a user interacting with a front panel provided to the switching device and/or by Appeal 2020-004505 Application 15/962,451 14 the user using the remote controller to transmit to the switching device an IR signal having an AV input selection command, i.e., an IR signal that is intended to be received and acted up by the switching device to thereby control the AV input selection functional operation of the switching device. Appeal Br. 6–7 (emphases omitted). However, according to Garg: FIG. 4 illustrates one embodiment of a source switching method when manual and/or remote selection of the source devices is supported and currently enabled. If at least one source device is detected (in step 320), the method of FIG. 4 may detect whether or not the user has selected a particular source device via manual or remote selection means (in step 340). For example . . . . Garg ¶ 55. In some cases, the front panel may include remote selection means for connecting a particular source device to the sink. For example . . . . In some cases, the front panel may include manual selection means for connecting a particular source device to the sink in addition, or alternative to, the remote selection means mentioned above. For example . . . . In some embodiments, the manual/remote selection means provided on the front panel of the hub may be used to assign priority data to the connected source devices. In one example . . . . Garg ¶¶ 64–66. Appellant has not persuasively explained that Appellant’s description (Appeal Br. 6–7) accurately reflects the substance of the above paragraphs. In any event, regardless of whether the description Appeal 2020-004505 Application 15/962,451 15 is indeed accurate, Appellant does not persuasively explain why that description demonstrates Examiner error. In short, Appellant’s teaching away arguments are unpersuasive because Appellant fails to provide adequate analysis under the case law. Appellant fails to show one skilled in the art “would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Kahn, 441 F.3d at 990. Because Appellant has not persuaded us the Examiner erred, we sustain the Examiner’s rejection of independent claim 5. For effective resolution of issues, we encourage Appellant to state precisely which claim limitation is missing in the Examiner’s mappings, analyze the reference portions cited by the Examiner for that limitation, and clearly explain why the reference portions cited by the Examiner—not merely explanation from the Examiner—do not teach that limitation. We also recommend clear, concise sentences with reasonable length. Contra Appeal Br. 5–6 (including a paragraph with only a single sentence, which lasts 10 lines); Reply Br. 4 (including a paragraph with only a single sentence, which lasts 9 lines). Claims 1–4 and 6–12 For similar reasons discussed above with respect to claim 5, we sustain the Examiner’s rejection of independent claims 1 and 9. Appeal 2020-004505 Application 15/962,451 16 We also sustain the Examiner’s rejection of corresponding dependent claims 2–4, 6–8, and 10–12, as Appellant does not advance separate substantive arguments about those claims. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We affirm the Examiner’s decision rejecting claims 1–12 under 35 U.S.C. § 103. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 7, 9, 11 103 Garg, Igoe 1, 3, 5, 7, 9, 11 2, 4, 6, 8, 10, 12 103 Garg, Igoe, Tzeng 2, 4, 6, 8, 10, 12 Overall Outcome 1–12 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation