2020005267 (P.T.A.B. Oct. 21, 2021)

Universal Electronics Inc.

Patent Trials and Appeals BoardOct 21, 2021

2020005267 (P.T.A.B. Oct. 21, 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. 15/927,587 03/21/2018 Jeffrey Kohanek 81230.134US3 1655 34018 7590 10/21/2021 Greenberg Traurig, LLP 77 W. Wacker Drive Suite 3100 CHICAGO, IL 60601-1732 EXAMINER RUSHING, MARK S ART UNIT PAPER NUMBER 2685 NOTIFICATION DATE DELIVERY MODE 10/21/2021 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 JEFFREY KOHANEK and JEREMY K. BLACK Appeal 2020-005267 Application 15/927,587 Technology Center 2600 Before TERRY J. OWENS, WESLEY B. DERRICK, and DEBRA L. DENNETT, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge Owens. Opinion Concurring filed by Administrative Patent Judge Derrick. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). 1“Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Universal Electronics Inc. (Appeal Br. 2). Appeal 2020-005267 Application 15/927,587 2 We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a universal controlling device and a method for configuring it. Claims 1 and 12, reproduced below, are illustrative of the claimed subject matter: 1. A method for configuring a universal controlling device to exchange communications with an intended target device via an RF communications channel, comprising: in direct response to receiving into the universal controlling device while in a setup mode of operation of the universal controlling device a selection of a one of a plurality of quick setup input elements of the universal controlling device, wherein each of the plurality of quick setup input elements is linked to a different one of a plurality of RF communication protocols usable by the universal controlling device to exchange communications with a device type of the intended target device, causing the universal controlling device to exit the setup mode of operation of the universal controlling device whereupon the universal remote control will have configured itself to use the one of the plurality of RF communication protocols that was linked to the selected one of the plurality of quick setup input elements when the universal controlling device is subsequently operated in an operating mode of the universal controlling device in which the universal controlling device is intended to exchange communications with the intended target device. 12. A universal controlling device, comprising: a RF communications circuit; a processing unit in communication with the RF communications circuit for causing the RF communications circuit to exchange RF communications with an intended target device; and a key matrix having a plurality of quick setup input elements wherein each of the plurality of quick setup input elements is linked to a different one of a plurality of RF communication protocols usable by the processing circuit in communication with the RF Appeal 2020-005267 Application 15/927,587 3 communications circuit to exchange RF communications with a device type of the intended target device; wherein, while the universal controlling device is in a setup mode of operation of the universal controlling device, in direct response to a selection of a one of the plurality of quick setup input elements the universal controlling device is caused to exit the setup mode of operation whereupon the universal remote control will have configured itself to use the one of the plurality of RF communication protocols linked to the selected one of the plurality of quick setup input elements when the universal controlling device is subsequently used in an operating mode of the universal controlling device to exchange RF communications with the intended target device. REFERENCES The references relied upon by the Examiner are: Name Reference Date Issa US 5,712,638 Jan. 27, 1998 Sari US 2003/0020638 A1 Jan. 30, 2003 Park US 2004/ 0174288 A1 Sept. 9, 2004 Wouters US 2005/0151726 A1 July 14, 2005 Huang US 2007/0225828 A1 Sept. 27, 2007 D’Hoore US 2009/0237287 A1 Sept. 24, 2009 Kohanek (Kohanek ’242) US 9,398,242 B2 July 19, 2016 Kohanek (Kohanek ’519) US 9,953,519 B2 Apr. 24, 2018 REJECTIONS The claims stand rejected as follows: 1) claims 1–3 and 6–8 under 35 U.S.C. § 103(a) over Wouters in view of Issa and Sari; 2) claims 4 and 5 under 35 U.S.C. § 103(a) over Wouters in view of Issa, Sari,2 and D’Hoore; 3) claims 9–11 under 35 U.S.C. § 103(a) over Wouters in view of Issa, Sari,2 and Park; 4) claims 12–18 under 35 U.S.C. § 103(a) over Wouters in view of 2 The Examiner omitted Sari from the statement of this rejection (Final 7–8). Appeal 2020-005267 Application 15/927,587 4 Huang and Sari; 5) claims 19–21 under 35 U.S.C. § 103(a) over Wouters in view of Huang and Park; 6) and claims 1–20 on the ground of nonstatutory obviousness-type double patenting over Kohanek ’242 or Kohanek ’519, each in view of Sari. OPINION Rejections under 35 U.S.C. § 103(a) Claims 1–11 We need address only the sole independent claim among claims 1–11, i.e., claim 1.3 Wouters discloses a “a remote control device comprising object keys, a selector for linking preset IR or RF code sets to the object keys to thereby enable the user to control functions of a device to be controlled via the remote control” (¶ 1). To select and activate a code set, a user 1) selects a device on a Home panel, 2) selects a device brand code from a list appearing on a screen, 3) taps Next, causing the device to switch to a Try mode, 4) tries one or more Try buttons, 5) when satisfied with the way the device is responding to the selected code, taps Next, thereby causing the code for the pressed Try button (object key) to be installed (activated), and 6) try and install other Try buttons until all buttons have been installed and activated, at which point the code set is finished and the process is stopped (¶¶ 61–85). Issa discloses a remote control transmitter having a transmitter control switch which, after being depressed for a predetermined time, causes the transmitter to enter a selection mode during which the user can select a transmission channel group (col. 2, ll. 44–65). Once a transmission channel 3 The Examiner does not rely upon D’Hoore or Park for any disclosure that remedies the deficiency in the references applied to the independent claim. Appeal 2020-005267 Application 15/927,587 5 group is selected there is a brief period of inactivity, after which the transmitter exits the selection mode and can transmit channel commands from the selected channel group (col. 2, l. 66 – col. 3, l. 1; col. 8, ll. 33–43). Sari discloses a locator device which, when a button is pressed in setup mode, can transmit a selected waypoint or accept a selected format, then exit setup mode (¶¶ 4, 50, 52, 54). The Examiner concludes that it would have been obvious to one of ordinary skill in the art: 1) to modify Wouters in view of Issa “to provide an efficient setup of the remote controller allowing for control of multiple units for controllers from a single remote” (Final 5; Ans. 11), and “to provide a remote control system with efficient use of the buttons allowing dual functionality from a single button press (the dual functionality of saving a desired operation and exiting the setup mode)” (Ans. 12), and 2) “to modify Wouters and Issa with Sari in order to provide a remote control system with efficient use of the buttons allowing dual functionality from a single button press” (Final 5; Ans. 14). Setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner does not address the differences between Wouters, Issa, and Sari, and establish that regardless of those differences they would have provided one of ordinary skill in the art with an apparent reason to modify Wouters as proposed by the Examiner. The Examiner’s mere assertions lack an established basis in the references and, therefore, appear to be based upon impermissible hindsight in view of the Appellant’s disclosure. See In re Appeal 2020-005267 Application 15/927,587 6 Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Claims 12–21 We need address only the sole independent claim among claims 12– 21, i.e., claim 12.4 Huang discloses a system and method to enable a controlling device to support the addition of a new command code set definition at little or no extra hardware cost. The method contemplates manual entry by a consumer of a relatively short sequence of keystrokes on the keypad of the controlling device which . . . may serve to define a new set of appliance command codes which were not previously available in the stored library of codes within the controlling device [(¶ 3)]. The Examiner concludes that “it would have been obvious for one of ordinary skill in the art at the time the invention was made to modify Wouters with Huang to provide upgradeability to a controlling device in a simple manner and with minimal extra expense, as suggested by Huang ([0002])” (Final 10). The entirety of Huang’s paragraph 2 relied upon by the Examiner is: “Accordingly, a need exists for a system and method to provide upgradeability to a controlling device in a simple manner and with minimal extra expense.” Regarding Sari, the Examiner concludes that it would have been obvious “to modify Wouters and Huang with Sari in order to provide a 4 The Examiner does not rely upon Park for any disclosure that remedies the deficiency in the references applied to the independent claim. Appeal 2020-005267 Application 15/927,587 7 remote control system with efficient use of the buttons allowing dual functionality from a single button press” (Final 11). The Examiner does not establish that Huang’s disclosure of an existing need and Sari’s disclosure of a button which, when pressed in setup mode, can transmit a selected waypoint or accept a selected format, then exit setup mode, would have provided one of ordinary skill in the art with an apparent reason to modify Wouters in a way that results in the Appellant’s claimed device. Thus, the record indicates that the rejection is based upon impermissible hindsight in view of the Appellant’s disclosure. See Warner, 379 F.2d at 1017. Obviousness-type double patenting rejections The Examiner does not address the Appellant’s claim limitations or the limitations in the claims of Kohanek ’242 or Kohanek ’519 but, rather, merely asserts that the Appellant’s claims are not patentably distinct (Final 3) and that “the reasons for combining the previous patents with the Sari reference are provided under the 103 rejections as stated, which is to provide a remote control system with efficient use of the buttons allowing dual functionality from a single button press” (Ans. 10). Those mere assertions clearly are insufficient for establishing that the inventions claimed in the Appellant’s claims would have been prima facie obvious to one of ordinary skill in the art over the claims of Kohanek ’242 or Kohanek ’519, in view of Siri. Response to concurring opinion The concurring opinion states that the Examiner’s reason for modifying the prior art to arrive at the claimed invention need not come from the applied prior art but, rather, can be grounded on “the background Appeal 2020-005267 Application 15/927,587 8 knowledge possessed by a person having ordinary skill in the art.” The Examiner’s perception of the background knowledge possessed by a person having ordinary skill in the art may have been what led the Examiner to conclude that modifying Wouters as set forth above would have been prima facie obvious to one of ordinary skill in the art. The deficiency in the rejection is that the Examiner did not provide supporting evidence for that conclusion. Because examiners do not have access to non-prior art evidence of the background knowledge possessed by a person having ordinary skill in the art, such as expert testimony that may be available in an infringement case like KSR, examiners must rely upon the applied prior art to support their conclusions of obviousness. CONCLUSION For the above reasons, we reverse the Examiner’s rejections. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6–8 103(a) Wouters, Issa, Sari 1–3, 6–8 4, 5 103(a) Wouters, Issa, Sari, D’Hoore 4, 5 9–11 103(a) Wouters, Issa, Sari, Park 9–11 12–18 103(a) Wouters, Huang, Sari 12–18 19–21 103(a) Wouters, Huang, Park 19–21 1–20 Nonstatutory Double Patenting Kohanek ’242, Sari 1–20 Appeal 2020-005267 Application 15/927,587 9 1–20 Nonstatutory Double Patenting Kohanek ’519, Sari 1–20 Overall Outcome 1–21 REVERSED Appeal 2020-005267 Application 15/927,587 10 DERRICK, Administrative Patent Judge, concurring. I concur in the result reached by the majority. I write separately because I respectfully disagree with the majority’s reasoning that KSR International Company v. Teleflex Incorporated, 550 U.S. 398 (2007), requires the applied prior art to provide a reason to modify the prior art to arrive at the claimed invention, and that the reason the rejection fails is because there is no established reason to modify the prior art grounded on the applied references themselves. It is well-established that the motivation to combine and modify the prior art in a determination of obviousness can be grounded on “the background knowledge possessed by a person having ordinary skill in the art.” Id. at 418; Bayer Pharm. AG v. Watson Labs., Inc., 874 F.3d 1316, 1324 (2017) (quoting Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed Cir. 2017)) (“Any motivation, ‘whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient.’”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 297 n.24 (Fed. Cir. 1985) (“[k]nowledge generally available to one skilled in the relevant art” can provide the motivation “to combine the relevant teachings of references”). Also well-established, however, is that setting forth a prima facie case of obviousness requires establishing that there is an apparent reason for one of ordinary skill in the art to combine and modify the prior art to arrive at the claimed invention. See KSR, 550 U.S. at 418. This analysis should be explicit, because “[r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead there must be some articulated Appeal 2020-005267 Application 15/927,587 11 reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis omitted). What is lacking in the Examiner’s rejections, in my view, is the required articulated reasoning with a rational underpinning to support the legal conclusion of obviousness. The Examiner does not address the differences between Wouters, Issa, and Sari (claim 1), nor those between Wouters, Huang, and Sari (claim 12), and fails to establish that, regardless of those differences, one of ordinary skill in the art would have been motivated to modify Wouters as proposed by the Examiner. The Examiner relies on assertions that the modification is motivated by greater efficiency in that it is not necessary to press a second button or to wait, but there is insufficient explanation why this modification would have been deemed more efficient, or even desired, by the skilled artisan where Wouters allows for multiple setup inputs before leaving setup mode. Final 5 (claim 1), 11 (claim 12); Ans. 10–16. Accordingly, the Examiner’s rejections fall short of what is required. See Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Further, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Given the absence of a clear Appeal 2020-005267 Application 15/927,587 12 alternative explanation for the proposed modifications, what I discern here is an exercise of impermissible hindsight reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”).