Universal Electronics Inc.Download PDFPatent Trials and Appeals BoardOct 27, 20212020003080 (P.T.A.B. Oct. 27, 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. 13/801,801 03/13/2013 Marcel Hilbrink 81230.107US4 6309 34018 7590 10/27/2021 Greenberg Traurig, LLP 77 W. Wacker Drive Suite 3100 CHICAGO, IL 60601-1732 EXAMINER KHAN, OMER S ART UNIT PAPER NUMBER 2683 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 MARCEL HILBRINK, PATRICK H. HAYES, and JEREMY K. BLACK ____________ Appeal 2020-003080 Application 13/801,801 Technology Center 2600 ____________ Before JEAN R. HOMERE, JEFFREY S. SMITH, and CATHERINE SHIANG, 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, 3, and 5–7, which are all the claims pending in the application. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers 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 2020-003080 Application 13/801,801 2 STATEMENT OF THE CASE Introduction The claimed subject matter relates to “consumer electronics, and, more particularly, relates to media rendering devices.” Spec. 1:11–12. It is desirable for users of such advanced control devices to not only control the functions of entertainment appliances and make use of onboard media rendering capabilities, but also to interface with the entertainment appliances such that media streamed to the control device, or contained locally on the control device may be played on the entertainment appliances. Accordingly, it is desired to provide a system for rendering media on one or more entertainment appliances using a control device and associated docking station which functions to both charge the control device, and provide an interface between the control device and entertainment appliance(s) for playback of media information. Spec. 2:11–12. Claim 1 is exemplary: 1. A method for causing an appliance to play a media stream, comprising: detecting by a portable electronic device playing the media stream that the portable electronic device has been placed into communication with an intermediate device; and subsequent to the portable electronic device detecting that the portable electronic device has been placed into communication with the intermediate device and in response to the portable electronic device detecting that the portable device has been placed into communication with the intermediate device, causing the portable device to automatically configure itself to issue communications to the appliance and to thereafter issue a media input selection command Appeal 2020-003080 Application 13/801,801 3 communication to the appliance to cause the appliance to select a media input mode for the appliance appropriate to communicatively couple the intermediate device with the appliance, stop the playing of the media stream on the portable electronic device, and commence a playing of the media stream on the appliance via use of the intermediate device. References and Rejections Claims 1, 3, and 5–7 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 4, and 6–8 of U.S. Patent No. 9,066,041, and the cited prior art Falcon and Meade discussed below. Final Act. 6–7. Claims 1, 3, and 5–7 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the collective teachings an suggestions of Falcon (US 2004/0098571 A1, published May 20, 2004), Furukawa (US 6,388,960 B1, published May 14, 2002), Meade (US 2003/0071117 A1, published Apr. 17, 2003), Dimenstein (US 2002/0086703 A1, published July 4, 2002), and Cupps (US 2003/0100340 A1, published May 29, 2003). Final Act. 7–15. Appeal 2020-003080 Application 13/801,801 4 ANALYSIS2 Non-Statutory Double Patenting Appellant argues: the Office has not presented a prima facie case of non-statutory double patenting over claims l, 4, and 6–8 of US 9,066,041 as the Office has failed to address any of the Graham factual inquiries as required. Rather, the Office has simply concluded - without more - that “although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are claiming essentially the same subject matter with the exception of ‘causing the portable device to automatically issue a media input selection command to the appliance to cause the appliance to select a media input mode for the appliance.’” Appeal Br. 4. We agree with Appellant that the Examiner’s general language is insufficient to form the basis of the rejection, and the Examiner has not made the requisite prima facie case for the rejection. See Appeal Br. 4. The Examiner cites our affirmance of the double patenting rejection in a prior appeal (Ans. 7). However, the situation in the prior appeal is different: at that time, Appellant did not contest the merits of the Examiner’s rejection and as a result, we summarily affirmed the Examiner’s double patenting rejection. PTAB decision dated February 22, 2018 (“Prior Decision”) 3. In 2 The Examiner solicits PTAB’s opinion on a potential rejection based on lack of written description under 35 U.S.C. § 112, first paragraph. See Ans. 5. If the Examiner finds sufficient basis for such a rejection, it is appropriate to enter the rejection. Because no such rejection is before us, we leave it to the Examiner to decide whether there is sufficient basis to enter the rejection in the event of further prosecution. Appeal 2020-003080 Application 13/801,801 5 contrast, Appellant disputes the Examiner’s rejection in this Appeal, and we must examine the substantive merits of the rejection here. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we reverse the Examiner’s double patenting rejection of claims 1, 3, and 5–7. Obviousness We disagree with Appellant’s arguments, and agree with and adopt the Examiner’s findings and conclusions in (i) the action from which this appeal is taken and (ii) the Answer to the extent they are consistent with our analysis below. 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). On this record, the Examiner did not err in rejecting claim 1. I Appellant contends “the Office has failed to meet the burdens associated within presenting a prima facie case of obviousness.” Appeal Br. 6. In particular, Appellant contends Falcon does not teach “the portable device to . . . issue a media input selection command communication to the appliance to cause the appliance to select a media input mode for the appliance appropriate to communicatively couple the intermediate device with the appliance,” as recited in claim 1 (emphases added). See Appeal Br. 5–7; see also Reply Br. 2–3. Appeal 2020-003080 Application 13/801,801 6 For the reasons discussed below, Appellant has not persuaded us of error. I(a) Procedural History As discussed above, this patent application was before the PTAB. At that time, the then pending claim 1 stated: 1. A method for causing an appliance to play a media stream, comprising: determining by a portable electronic device playing the media stream that the portable electronic device has been placed into communication with an intermediate device; and in response to the portable electronic device determining that the portable device has been placed into communication with the intermediate device, causing the portable device to automatically issue a media input selection command to the appliance to cause the appliance to select a media input mode for the appliance appropriate to communicatively couple the intermediate device with the appliance, stop the playing of the media stream on the portable electronic device, and commence a playing of the media stream on the appliance via use of the intermediate device. In the Prior Decision, we affirmed the Examiner’s rejections of claims 1, 3, and 5–7 based on the collectively teachings of Falcon, Furukawa, Meade, Cupps, and Dimenstein. See Prior Decision 3–10. Our Prior Decision includes five pages of detailed analysis of several reasons (including a cumulative reason) as to why Appellant failed to show Examiner error. See Prior Decision 5–9. According to our Prior Decision, the primary reason for our affirmance of the rejection is as follows: Appeal 2020-003080 Application 13/801,801 7 the Examiner cites numerous sections from Falcon, Furukawa, Meade, Cupps, and Dimenstein for collectively teaching the limitation in response to the portable electronic device determining that the portable device has been placed into communication with the intermediate device, causing the portable device to automatically issue a media input selection command to the appliance to cause the appliance to select a media input mode for the appliance appropriate to communicatively couple the intermediate device with the appliance, stop the playing of the media stream on the portable electronic device, and commence a playing of the media stream on the appliance via use of the intermediate device. See Final Act. 3–11; Ans. 3–21. Among other things, the Examiner cites Falcon’s Figure 3, paragraphs 8, 31 33, 51, 52, 66, and explains in detail why the cited references collective teach the disputed limitation. See Final Act. 3–11; Ans. 3–21. Appellants do not cite or analyze those specific sections relied on by the Examiner in the Appeal Brief. Instead, Appellants advance attorney arguments that lack sufficient evidential support and reasoning. See Appeal Br. 4–8; Reply Br. 2–5. Because Appellants fail to persuasively respond to the Examiner’s specific findings and conclusions, they fail to show Examiner error. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or this Board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Prior Decision 5–6. In addition to the primary reason, we listed additional reasons (including a cumulative reason) as to why Appellant’s arguments are unpersuasive. See Prior Decision 6–9. Following our Prior Decision affirming the Examiner’s rejection, Appellant filed a Request for Continued Examination. See Appellant’s Appeal 2020-003080 Application 13/801,801 8 Request for Continued Examination dated April 11, 2018. Although Appellant amended claim 1 to some extent (such as changing “determining” to “detecting” and adding “communication” after “issue a media input selection command”), Appellant has not shown the disputed limitations are substantively different from the disputed limitations associated with the Prior Decision. See Prior Decision 3–9; claim 1. In particular, although Appellant highlights “communication” (Appeal Br. 5), Appellant’s arguments focus on “transmit a command.” See, e.g., Appeal Br. 6. Further, Appellant does not assert adding “communication” results in a material change in the context of claim 1, as Appellant refers to the claimed “command” in the prior claim 1 (associated with the Prior Decision) as “command communication.” Reply Br. 2. As a result, the argued limitations are substantively the same as the argued limitations from the Prior Decision. The Examiner’s current findings and conclusions about the disputed limitations are also substantively the same as the findings and conclusions associated with the Prior Decision. See Final Act. 7–10, 13–14; Final Action dated May 11, 2016 4–7, 10–11. Because Appellant tries to reargue issues that were settled during the Prior Decision, the doctrine of law of the case precludes such arguments. Appeal 2020-003080 Application 13/801,801 9 I(b) The Doctrine of Law of the Case Precludes Re-arguments “The doctrine of law of the case generally bars retrial of issues that were previously resolved.” Intergraph Corp. v. Intel Corp., 253 F.3d 695, 697 (Fed. Cir. 2001). It “expresses the practice of courts generally to refuse to reopen what has been decided.” Messenger v. Anderson, 225 U.S. 436, 444 (1912). The doctrine applies to both the earlier explicit disposition and “necessary inferences from the disposition.” Kori Corp. v. Wilco Marsh Buggies & Draglines, Inc., 761 F.2d 649, 657 (Fed. Cir. 1985). In other words, “the doctrine of law of the case encompasses not only matters decided explicitly in earlier proceedings, but also matters decided by necessary implication.” Intergraph, 253 F.3d at 697–98 (citation omitted). “The purpose of [the doctrine] is to prevent relitigation of issues that have been decided” and “operates to protect the settled expectations of the parties and promote orderly development of the case.” Suel v. Secretary of HHS, 192 F.3d 981, 984 (Fed. Cir. 1999) (citing Gould, Inc. v. United States, 67 F.3d 925, 927–28 (Fed.Cir.1995), Mendenhall v. Barber–Greene Co., 26 F.3d 1573, 1582 (Fed. Cir. 1994), Little Earth of the United Tribes v. Department of HUD, 807 F.2d 1433, 1441 (8th Cir. 1986)). It “ensures judicial efficiency and prevents endless litigation. Its elementary logic is matched by elementary fairness–a litigant given one good bite at the apple should not have a second.” Perkin–Elmer Corp. v. Computervision Corp., 732 F.2d 888, 900 (Fed. Cir. 1984). Although the doctrine of law of the case is judicially created, federal administrative agencies have routinely applied the doctrine to give preclusive effect to settled issues in the same matter. See Ex parte Pong, Appeal No. 2016-002217, 2017 WL 5714381, at *3 n.4 (PTAB Nov. 6, Appeal 2020-003080 Application 13/801,801 10 2017) (listing administrative cases that apply the doctrine of law of the case). Consistent with other administrative agencies, the PTAB has applied the doctrine of law of the case to proceedings and held all matters decided by a prior decision—whether explicit or implicit—are entitled to issue-preclusive effect during further prosecution of the same application. Pong, 2017 WL 5714381, at *3 (listing PTAB cases that apply the doctrine of law of the case). The PTAB will adhere to the doctrine of law of the case involving the same application, unless one of three exceptions exists: (1) “the discovery of new and different material evidence that was not presented in the prior [appeal]”; (2) “an intervening change of controlling legal authority”; or (3) “when the prior decision is clearly incorrect and its preservation would work a manifest injustice.” Intergraph, 253 F.3d at 698. Appellant does not directly address the doctrine of law of the case in the briefs. Based on our review of the record, we have not identified any new and different material evidence or any intervening change in the law. Nor have we found our Prior Decision is clearly incorrect and would work a manifest injustice. Consistent with our assessment, Appellant did not request any rehearing for our Prior Decision. Accordingly, the doctrine of law of the case applies here, and Appellant may not reargue the disputed limitations. Appeal 2020-003080 Application 13/801,801 11 I(c) Regardless of Whether the Doctrine of Law of the Case is Applicable Here, Appellant’s Arguments are Substantively Unpersuasive As discussed above, the doctrine of law of the case precludes Appellant’s arguments about disputed limitations in this appeal. In any event, as discussed below, Appellant’s arguments are unpersuasive. 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 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 (Falcon, Furukawa, Meade, Dimenstein, and Cupps); where each limitation of claim 1 is shown in the references by specific figure Appeal 2020-003080 Application 13/801,801 12 numbers, paragraph numbers, and column and line numbers, plus additional explanation about how the prior art features are mapped to the claim. See Jung, 637 F.3d at 1363; Final Act. 7–14; Ans. 6–13. Similar to the Examiner in Jung, the Examiner has done “more than sufficient to meet this burden [of establishing the prima facie case].” Jung, 637 F.3d at 1363. 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. The Examiner cites numerous sections from Falcon and Cupps3 for collectively teaching “the portable device to . . . issue a media input selection command communication to the appliance to cause the appliance to select a media input mode for the appliance appropriate to communicatively couple the intermediate device with the appliance” (emphases added). See Final Act. 7–10, 13–14; Ans. 6. Among other things, the Examiner cites Falcon’s Figure 3, paragraphs 8, 31 33, 51, 52, 66, and explains in detail why the cited reference portions teach the disputed limitation. See Final Act. 7–10; Ans. 6. Appellant does not analyze those specific sections relied on by the Examiner. Instead, Appellant advances attorney arguments that lack sufficient evidential support and persuasive reasoning. Because Appellant fails to persuasively respond to the Examiner’s specific findings and conclusions, Appellant fails to show Examiner error. See In re Baxter 3 The Examiner cumulatively cites Cupps. Ans. 6. Appeal 2020-003080 Application 13/801,801 13 Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or this Board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Further, Appellant’s attorney arguments about Falcon (Appeal Br. 5– 7; Reply Br. 2–3) are unpersuasive, 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.”). Additionally, Appellant asserts “the words ‘communicatively couple’ fail to appear anywhere else in the rejection of the claims, i.e., it was not asserted that any combination of references would result in this claimed element.” Appeal Br. 6 n.2. That assertion plainly contradicts the record, as the limitation “communicatively couple” appears in the rejection. See Final Act. 8; see also Ans. 6. While not required for our analysis, in order to provide further guidance of claim mappings to Appellant, we refer Appellant to (i) page 8 of our Prior Decision regarding Falcon’s paragraph 53, and (ii) pages 2 and 3 of the concurring opinion of Judge Smith dated February 22, 2018, and incorporate such pages by reference here. Appeal 2020-003080 Application 13/801,801 14 I(d) Appellant’s New Arguments in the Reply Brief are Untimely and Unpersuasive In the Reply Brief and for the first time, Appellant argues: the Board affirmed that the “command communication” in the claims that were previously pending could be construed to read on the system described in Falcon in which “the car stereo 200 configures itself to receive media input and control commands from the portable computing device 102 upon the detection event.” . . . . It is, however, respectfully submitted that the “command communication” in the claims now pending cannot be construed to read on such a system. Specifically, it is noted that the claims have been amended to recite that the claimed media input selection command is a command that is issued from a portable device that automatically configures itself to issue communications to the appliance. Accordingly, because the claims now pending specifically distinguish themselves from a construction in which a command is a command that a car stereo configures itself to receive, it is respectfully submitted that - within this context - it cannot now be said that Falcon discloses that which is claimed under any reasonable interpretation of the claims. Reply Br. 2. Appellant’s new arguments are untimely, as Appellant has not demonstrated sufficient “good cause” for the belated presentation. See 37 C.F.R. § 41.41(b)(2). As shown above in the Procedural History, the prior claim 1 (associated with the Prior Decision) already includes the claim language “automatically issue a media input selection command to the appliance.” See prior claim 1 associated with the Prior Decision. Following our Prior Decision, Appellant added the limitation “configure itself to issue communications to the appliance and to thereafter,” resulting in the current claim limitation of “causing the portable device to automatically configure itself to issue communications to the appliance and to thereafter issue a Appeal 2020-003080 Application 13/801,801 15 media input selection command communication4 to the appliance” (emphasis added). The additional “configure . . .” limitation does not appear in the disputed limitations. Further, the Appeal Brief does not mention the “configure . . .” limitation, and does not explain why that limitation materially affects the interpretation of the disputed limitations in the context of claim 1. Nor does the Appeal Brief discuss the issue of whether the Examiner’s findings are incorrect in light of the “configure . . .” limitation.5 Given such a record, Appellant has not demonstrated sufficient good cause for the belated presentation. In any event, Appellant’s new arguments are unpersuasive. First, Appellant’s new arguments misinterpret our Prior Decision. As discussed above, in addition to the primary reason for our affirmance of the Examiner’s rejection, our Prior Decision discusses additional reasons (including a cumulative reason) as to why Appellant failed to show Examiner error. See Prior Decision 5–9. In the context of the cumulative reason, we stated: Even under the Examiner’s interpretation that “[t]he car stereo 200 configures itself to receive media input and control commands from the portable computing device 102 upon the detection event” (Final Act. 6), Appellants do not persuasively explain why that interpretation does not allow the portable computing device 102 to “issue a media input selection command to the appliance to cause the appliance to select a media input mode for the appliance appropriate to communicatively couple the intermediate device with the appliance.” 4 As discussed above, Appellant also added “communication.” 5 We refer to Appellant’s arguments associated with disputed limitations discussed in Section I. As discussed below in Section II, Appellant separately argues the “configure . . .” limitation. Appeal 2020-003080 Application 13/801,801 16 Prior Decision 6. As a result, the Examiner’s above additional finding is a cumulative— not necessary—reason for our affirmance in the Prior Decision. Id. Therefore, our affirmance from the Prior Decision is valid, regardless of whether Appellant’s new arguments about the Examiner’s above finding are persuasive. Second, Appellant’s new arguments are unpersuasive, as Appellant does not persuasively explain why the Examiner’s finding is incorrect because the current claim 1 includes the claim language of “configure itself to issue communications to the appliance and to thereafter.” The Examiner cites Falcon’s portable computing device 102 and car stereo 200 for teaching the claimed “portable device” and “appliance,” respectively. Final Act. 7–8. Appellant does not persuasively explain why Examiner’s finding that “[t]he car stereo 200 configures itself to receive media input and control commands from the portable computing device 102 upon the detection event” (Final Act. 9) precludes Falcon’s portable computing device 102 from automatically “configure[ing] itself to issue” communications to the stereo 200. II Appellant argues: Meade does not disclose, teach, or suggest modifying Falcon/Furakawa whereby a portable electronic device would automatically configure itself to issue communications to the appliance and to thereafter issue a media input selection command communication to the appliance, in response to detecting the portable device has been placed into communication with the intermediate device as claimed. In this Appeal 2020-003080 Application 13/801,801 17 regard, Meade, like Falcon, only discloses transmitting a command to an appliance to “select content” for playback when a mobile computing device establishes communication with that appliance . . . . Appeal Br. 7 (emphases omitted); see also Appeal Br. 7–8; Reply Br. 3–4. Appellant has not persuaded us of error. In particular, Appellant’s argument that “Meade, like Falcon, only discloses transmitting a command to an appliance to ‘select content’ for playback when a mobile computing device establishes communication with that appliance” Appeal Br. 7 (emphasis added; original emphases omitted) is speculative and unsubstantiated, as Appellant has not shown why Meade’s paragraphs 35 and 36 cited by the Examiner (Final Act. 3, 5, 6, 12) validate Appellant’s argument: Appliance control system 10 is used in a method 60 of controlling appliances, as shown in FIG. 3. Method 60 includes a first step 62 in which mobile computing device 12 moves within proximity of at least one appliance 13 and establishes wireless communication with appliance 13. First step 62 optionally includes mobile computing device 12 selecting which appliances 13 it will attempt to assert control over. When multiple computing devices are present, then first step 62 further includes step 64 in which appliances 13 and/or mobile computing devices 12 must determine priority and grant priority of control over appliances 13 to one of the mobile computing devices 12. Next, the master mobile computing device 12 automatically applies its user preferences to appliance 13 (step 65). Mobile computing device 12 then automatically or manually selects content available through appliance 13 for performance on appliance 13 (step 66). Step 66 also optionally includes mobile computing device 12 supplying content to appliance 13 for performance by appliance 13 (step 67). Meade ¶¶ 35–36. Appeal 2020-003080 Application 13/801,801 18 Appellant’s remaining arguments about Meade (Appeal Br. 7–8) are similarly unpersuasive, as they lack sufficient evidential support. For example, Appellant’s arguments that [a]ccordingly, because automatically transmitting a command to an appliance to “select content” for playback in keeping with a user preference established for that appliance in response to a mobile device moving into proximity to that appliance does not expressly or inherently disclose, teach, or suggest to one of skill in the art that Falcon should be (or could be) modified such that a portable electronic device would respond to detecting that the portable device has been placed into communication with an intermediate device, i.e., a device that is not the appliance, by automatically configuring itself to issue communications to an appliance [a device to which the portable electronic device is not detected to be in communication with - in direct contrast to that which is described in Meade] and to thereafter issue a media input selection command communication to that appliance to cause the appliance to select a media input mode for the appliance to communicatively couple that same intermediate device with the appliance as claimed, it is . . . submitted that it cannot be said that Meade discloses, teaches, or suggests to one of skill in the art that Falcon could be (or should be) modified to arrive at the exact invention claimed. Appeal Br. 7–8 (emphasis omitted) are unpersuasive, because Appellant does not provide sufficient objective evidence to support the arguments. See Geisler, 116 F.3d at 1470; Meitzner, 549 F.2d at 782. To the extent Appellant is arguing Meade must provide motivation to combine the teachings of Falcon (as modified by Furukawa) and Meade, Appellant is mistaken. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”); Id. at 418–19 (“[i]f the claim extends to what is obvious, it is invalid under Appeal 2020-003080 Application 13/801,801 19 § 103,” and “the analysis 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”). III Appellant argues: even if the combination of Falcon and Furakawa would lead one of skill in the art to a system in which an automatic command is “issued (by the appliance) to select the input mode of the appliance upon the detection event of a CD” as asserted and relied upon in rejecting the claims at issue . . ., because the subsequently proposed modification of Falcon/Furakawa in view of the teachings of Meade to cause the “portable device” (as opposed to the appliance) to issue a command in response to a detection event would clearly change the principle of operation of the Falcon/Furakawa combined system, contrary to the well-established rules for presenting a prima facie case of obviousness. Appeal Br. 8 (emphases omitted); see also Reply Br. 4. Appellant’s argument is unpersuasive, as Appellant does not provide sufficient objective evidence to support the assertion. See Geisler, 116 F.3d at 1470; Meitzner, 549 F.2d at 782. In particular, Appellant has not provided any evidence to show the proposed modification would have changed Falcon’s principle of operation. Appeal 2020-003080 Application 13/801,801 20 IV Appellant argues: even if Falcon/Furukawa/Meade were to be modified to allow the software of the Mobile computing device 109, after being paced in the docking station 100, to determine that the MCD 109 has been placed in a docking station, for the purpose of automatically causing the MCD 109 “to issue a command, i.e. connect to the internet; therefore, allowing the MCD to determine whether MCD has been placed in a genuine docking station for the safety and security of the system, and providing a safety net for the end-user”. . . this resulting system is not the invention claimed. Accordingly, because the Office has not asserted, let alone demonstrated, that one of skill in the art would (or could) use the teachings within Dimenstein to arrive at the exact invention claimed in which a command is caused to be transmitted to the appliance to cause the appliance to select a media input mode that is appropriate to place the appliance into communication with an intermediate device subsequent to and in response to the portable device detecting that the portable device has been placed into communication with the intermediate device as claimed and/or because the Office has not explained how or why a desire to “determine whether MCD has been placed in a genuine docking station for the safety and security of the system, and providing a safety net for the end- user” would lead one of skill in the art to modify Falcon in view of Furakawa in view of Meade to arrive at the exact invention claimed in which a command is caused to be transmitted to the appliance to cause the appliance to select a media input mode that is appropriate to place the appliance into communication with an intermediate device subsequent to and in response to the portable device detecting that the portable device has been placed into communication with the intermediate device, it is respectfully submitted that the burdens associated with presenting a prima facie case of obviousness have not been met . . . . Appeal 2020-003080 Application 13/801,801 21 Appeal Br. 8–9 (emphases omitted); see also Reply Br. 4–5. We disagree. Appellant’s argument that “the burdens associated with presenting a prima facie case of obviousness have not been met” (Appeal Br. 9) is unpersuasive. As discussed above, similar to the Examiner in Jung, the Examiner has done “more than sufficient to meet this burden [of establishing the prima facie case].” Jung, 637 F.3d at 1363. The burden then shifts to Appellant to rebut the Examiner’s case, and Appellant has not carried the burden. In particular, Appellant’s arguments are unpersuasive, as they are not directed to the Examiner’s specific findings. The Examiner finds—and Appellant does not persuasively dispute—Dimenstein teaches “subsequent to the portable electronic device detecting that the portable electronic device has been placed into communication with the intermediate device and in response to the portable electronic device detecting that the portable device has been placed into communication with the intermediate device.” See Final Act. 12–13. Further, Appellant has not shown error in the Examiner’s finding that Falcon, Furukawa, Meade, and Cupps collectively teach the remaining limitations of claim 1 (Final Act. 7–14). To the extent Appellant is arguing the Examiner has not provided the requisite rationale for combining the teachings of Falcon (as modified by Furukawa, Meade, and Cupps) with Dimenstein, Appellant’s argument is unpersuasive. 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, 550 U.S. at 416. Contrary to Appellant’s argument, “[i]f the claim extends to what is obvious, it is invalid Appeal 2020-003080 Application 13/801,801 22 under § 103” and “the analysis 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 Falcon (as modified by Furukawa, Meade, and Cupps) with Dimenstein. See Final Act. 13; Ans. 12–13. According to the Examiner, one skilled in the art would have pursued the proposed combination, because the combination would create the benefit of the “safety and security of the system, and providing a safety net for the end- user”: It would have been obvious for an ordinary skilled artisan at the time of invention to modify the Falcon[ method (as modified by Furukawa, Meade, and Cupps)] and allow the software of the Mobile computing device 109 after being paced in the docking station 100 to determine that the MCD 109 has been places in a docking station automatically cause the MCD 109 to issue a command, i.e. connect to the internet; therefore, allowing the MCD to determine whether MCD has been placed in the a genuine docking station for the safety and security of the system, and providing a safety net for the end-user. Final Act. 13; Ans. 12–13. See KSR, 550 U.S. at 424 (“[t]he proper question to have asked was whether a . . . designer of ordinary skill . . . would have seen a benefit to upgrading [the primary reference] with a [feature from the secondary reference]”). Appellant does not persuasively show why such reasoning is incorrect. The Examiner’s findings and conclusion are reasonable because the skilled artisan would “be able to fit the teachings of multiple patents together Appeal 2020-003080 Application 13/801,801 23 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 Dimenstein’s techniques in the Falcon method (as modified by Furukawa, Meade, and Cupps) would have predictably used prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. Because Appellants have not persuaded us the Examiner erred, we sustain the Examiner’s rejection of independent claim 1. 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. 9 (including a paragraph with only a single sentence, which lasts 16 lines); Appeal Br. 7–8 (including a sentence that lasts 14 lines). Claims 3 and 5–7 For the same reasons discussed above, we sustain the Examiner’s rejection of corresponding dependent claims 3 and 5–7, as Appellant does not advance separate substantive arguments about those claims. Appeal 2020-003080 Application 13/801,801 24 CONCLUSION We affirm the Examiner’s decision rejecting claims 1, 3, and 5–7 under pre-AIA 35 U.S.C. § 103(a). We reverse the Examiner’s decision rejecting claims 1, 3, and 5–7 on the ground of non-statutory double patenting. Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner’s decision rejecting claims 1, 3, and 5–7. See 37 C.F.R. § 41.50(a)(1). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5–7 103 Falcon, Furukawa, Meade, Cupps, Dimenstein 1, 3, 5–7 1, 3, 5–7 Double patenting (US 9,066,041, Falcon, Meade) 1, 3, 5–7 Overall Outcome 1, 3, 5–7 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