Universal Electronics Inc.

Patent Trials and Appeals Board

Oct 27, 2021

2020005141 (P.T.A.B. Oct. 27, 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.
15/831,717 12/05/2017 Oscar C. Miramontes 81230.717US3 2431
34018 7590 10/27/2021
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
KUDDUS, DANIEL A
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
10/27/2021 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 OSCAR C. MIRAMONTES
____________

Appeal 2020-005141
Application 15/831,717
Technology Center 2100
____________

Before MICHAEL W. KIM, Vice Chief Administrative Patent Judge,
ANTON W. FETTING and NINA L. MEDLOCK, Administrative Patent
Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–10. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed January 28, 2020) and Reply Brief (“Reply Br.,” filed June 29, 2020),
and the Examiner’s Answer (“Ans.,” mailed May 1, 2020) and Final Office
Action (“Final Act.,” mailed October 21, 2019). Appellant identifies
Universal Electronics Inc. as the real party in interest (Appeal Br. 2).
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CLAIMED INVENTION
The claimed invention relates to “a remote control device that sends
out operational signals to control one or more types of electronic consumer
devices” (Spec. ¶ 2).
Claim 1, reproduced below with bracketed notations added, is the sole
independent claim and representative of the subject matter on appeal:
1. A controlling device, comprising:
[(a)] a processing device;
[(b)] a transmitting device coupled to the processing
device;
[(c)] an input element coupled to the processing device;
and
[(d)] a memory device in which is stored instructions
executable by the processing device wherein the instructions,
when executed by the processing device, cause the controlling
device to respond to a user interaction with the input element by
sequentially accessing a plurality of keycode data structures that
are linked to each other until a keycode corresponding to the
input element is determined to be contained in a one of the
plurality of keycode data structures being accessed and to use the
keycode to transmit a command, via use of the transmitting
device, to control a functional operation of an appliance.
(Appeal Br. 10 (Claims App.)).
REJECTIONS
Claims 1–8 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Barile et al. (US 5,977,886, issued Nov. 2, 1999) (“Barile”) and
Sanderson et al. (US 6,071,194, issued June 6, 2000) (“Sanderson”).2

2 We treat the Examiner’s inclusion of claims 9 and 10 in the statement of
this rejection (i.e., at page 4 of the Final Office Action) as inadvertent error
in view of the Examiner’s discussion of those claims at pages 7–8.
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Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Barile, Sanderson, and Seal et al. (US 2004/0255095 A1, published
Dec. 16, 2004) (“Seal”).
ANALYSIS
Independent Claim 1 and Dependent Claims 2–8
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) at least because
Barile, on which the Examiner relies (see Final Act. 4 (citing Barile 2:19–67,
3:41–51, 4:24–43, Fig. 5)), does not disclose or suggest
a memory device in which is stored instructions [that] . . . when
executed by [a] processing device, cause [a] controlling device
to respond to a user interaction with [an] input element by . . .
accessing a plurality of keycode data structures that are linked to
each other until a keycode corresponding to the input element is
determined to be contained in a one of the plurality of keycode
data structures being accessed[,]
i.e., limitation (d), as recited in claim 1 (Appeal Br. 5–6; see also Reply
Br. 3–4).
Barile is directed to a system and method for communicating a user
input to an application resident on a data processing system, and discloses
that the user input is communicated using a code, which is a member of a
code set adaptively selected to optimize a performance parameter for
communicating user inputs to the application, i.e., preferably, a code set that
minimizes the power expended in communicating codes from the user input
device to the data processing system on which the application is resident
(Barile 2:3–13). Barile describes that its invention “arises from the
realization that . . . a particular code set, e.g., a particular keycode set, for
communication between a user input device and a variety of applications . . .
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may have different energy consumption characteristics . . . depending on the
application” (id. at 2:19–24). “For example, a user input device may utilize
keycodes for an English-text word processing application in a different
fashion than for a word processing application in a different language”;
consequently, assuming a fixed keycode set is used, these applications may
have different associated levels of energy consumption (id. at 2:24–31).
Barile explains, “[a]ccordingly, improved utilization of limited power
resources[, e.g., a personal computer’s battery power,] can be achieved . . .
by adaptively selecting a code set which is matched to the application being
used” (id. at 2:32–35). In Barile’s disclosed method, a user input is, thus,
communicated to an application resident on a data processing system
according to a code set, which is adaptively selected in response to the
application (id. at 2:36–39).
Barile describes that, according to one aspect, an application is first
identified; then, a code set is selected from a stored plurality of code sets
according to the identified application (Barile 2:46– 49). According to
another aspect, a plurality of user inputs to the application is accepted at the
user input device; the user inputs are recorded; and a code set is selected
based on the recorded user inputs (id. at 2:49–52; 3:41–51). And, according
to yet another aspect, a keycode set is adaptively selected in response to an
application resident on a data processing system; a keystroke is accepted at
the user input device; and a keycode of the selected keycode set, i.e., the
keycode that corresponds to the accepted keystroke, is communicated from
the user input device to the application (id. at 2:53–67).
There is no dispute, Appellant, in fact, acknowledges, that
“[Barile] discloses a system in which a memory device (318) stores a
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plurality of keycode data structures” (Appeal Br. 5). But, as Appellant
observes, and we agree, there is nothing in the cited portions of Barile that
discloses or suggests that the keycode data structures stored in the Barile
memory device are linked to each other, or that the Barile device “respond[s]
to a user interaction with [an] input element by . . . accessing a plurality of
keycode data structures that are linked to each other until a keycode
corresponding to the input element is determined to be contained in a one of
the plurality of keycode data structures being accessed,” i.e., limitation (d),
as recited in claim 1 (id. at 5–6). Rather than accessing a plurality of
keycode data structures until a data structure is identified that contains a
keycode corresponding to the user input element, Barile discloses that a user
input is communicated to an application resident on a data processing system
according to a code set, previously selected in response to the launching of
the application (see, e.g., Barile 2:19–67). In other words, as Appellant
points out, “in [Barile], only one of the keycode data structures stored in the
memory device (318),” i.e., the keycode structure matched to the application
being used, is ever accessed in identifying the keycode that corresponds to
the user input (Appeal Br. 6; see also Reply Br. 3–4).
Responding to Appellant’s argument, the Examiner points, in the
Answer, to column 7, line 62 through column 8, line 11 of Barile as
disclosing the argued limitation (Ans. 4–5). Yet, nowhere there does Barile
disclose or suggest accessing a plurality of keycode data structures until a
keycode corresponding to an input element is determined. Instead, Barile
discloses a process there for selecting the one of the plurality of keycode
data structures that is be accessed when a user input is subsequently
provided for communicating with an application.
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More particularly, Barile discloses (1) that a plurality of keystrokes is
accepted at a user input device and recorded; (2) that the recorded
keystrokes are compared to keystroke statistics compiled for each of a
plurality of keycode sets, which can be used to transmit keystrokes to an
application; and (3) that the keycode set having statistics that best match the
recorded keystrokes is selected (Barile 7:63–8:5). Thereafter, as Barile
explicitly discloses, “[a] keystroke may then subsequently be accepted . . . at
the input device and a corresponding keycode from the selected keycode set
used to represent the accepted keystroke” (id. at 8:8–11) (emphasis added).
The Examiner notes in the Answer, “[t]he examiner further interprets
accessing until a keycode corresponding to the input element is determined
to be contained within the data structures as simply searching through
Barile’s stored keystroke set in order to find the keycode that matches the
keystroke/input element” (Ans. 6). And the Examiner takes the position that
“Barile indeed teaches this in col[umn] 7, line 63 to column 8, line 11” (id.).
We, however, agree with Appellant that simply searching through a
pre-selected keycode set, i.e., a single keycode set, in order to identify the
keycode that matches the keystroke/input element, as Barile discloses, is not
the same as, and does not disclose or suggest “accessing a plurality of
keycode data structures . . . until a keycode corresponding to the input
element is determined to be contained in a one of the plurality of keycode
data structures being accessed,” as called for in claim 1 (Reply Br. 3–4).
The Examiner takes the further position in the Answer that Sanderson
discloses the argued limitation (Ans. 7–9 (citing Sanderson 5:56–67,
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7:35–46, claim 5, Fig. 4)).3 But, we fail to see how, and the Examiner does
not adequately explain how, the cited portions of Sanderson, including
Figure 4, which generally describes the reconfiguration logic employed in a
preferred embodiment of the Sanderson invention, disclose or suggest
“accessing a plurality of keycode data structures that are linked to each other
until a keycode corresponding to the input element is determined to be
contained in a one of the plurality of keycode data structures being
accessed,” as recited in clam 1.
We are not persuaded, on the present record, that the Examiner
properly rejected independent claim 1 as unpatentable over Barile and
Sanderson. Therefore, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the

3 Sanderson is directed to a reconfigurable video game controller for use
with a video game program running on a personal computer platform, and
discloses that the controller comprises a plurality of game input switches, a
keyboard interface for connecting to a computer keyboard device and
receiving keycodes from the keyboard device when activated by a user, and
processing means for controlling the operation of the video game controller;
the controller also comprises memory means for storing a keycode
assignment associated with each of the input switches (Sanderson 2:66–3:7).
Sanderson describes that the memory means is controlled by the processing
means to output, during a functional mode, a keycode assignment associated
with an input switch when the input switch is activated by a user, and,
during a reconfiguration mode, to store, for subsequent use during the
functional mode, a keycode assignment associated with an input switch
when the input switch is activated by a user and a keycode is received from
the keyboard interface (id. at 3:7–14). Sanderson explains that the
reconfiguration capability permits a single video game controller to interface
with different video game programs, responding to different keycodes and/or
executing different functions in response to the same keycode (id.
at 4:65–5:4).
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rejection of dependent claims 2–8. Cf. In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (“dependent claims are nonobvious if the independent
claims from which they depend are nonobvious”).
Dependent Claims 9 and 10
The rejection of dependent claims 9 and 10 does not cure the
deficiency in the rejection of independent claim 1, from which both claims 9
and 10 depend. Therefore, we do not sustain the Examiner’s rejection of
claims 9 and 10 under 35 U.S.C. § 103(a) for the same reasons set forth
above with respect to claim 1.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 103(a) Barile, Sanderson 1–8
9, 10 103(a) Barile, Sanderson,
Seal
9, 10
Overall
Outcome
1–10
REVERSED