Universal Electronics Inc.

Patent Trials and Appeals Board

Oct 28, 2020

15341777 - (D) (P.T.A.B. Oct. 28, 2020)

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.
15/341,777 11/02/2016 Marcel Hilbrink 81230.107US6 7601
34018 7590 10/28/2020
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
10/28/2020 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 2020-000497
Application 15/341,777
Technology Center 2600
____________

Before JEAN R. HOMERE, JEFFREY S. SMITH, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7, which are all the claims pending and rejected in the
application.2 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.
2 The Examiner’s objections to the Specification and claims 1–5 are not
before us. See Final Act. 2–5; see also MPEP § 2163.06 (II); MPEP § 1201
(“The Board will not ordinarily hear a question that should be decided by the
Director on petition.”).

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2
STATEMENT OF THE CASE
Introduction
The present claimed subject matter relates to “media rendering
devices.” Spec. 1:12–13. In particular,
an advanced control device, such as a universal remote control
with integrated media rendering capabilities is described,
which, in conjunction with an associated docking station, is
able to play back rendered media files on a users entertainment
appliance(s). As a user operates the onboard media rendering
capabilities of the advanced control device, the current media
content being rendered may be played back on the users
entertainment appliances(s) by placing the control device in the
associated docking station. Based on detection by the control
device of docked or undocked states, various additional control
and media playback functions may be effected.

Spec. 3:2–9. Claim 1 is exemplary:

1. A system, comprising:
a hand-held, portable device; and
a docking station adapted to releasably receive the hand-
held, portable device having a machine readable identifier;
wherein programming of the hand-held, portable device
is adapted to read the machine readable identifier when the
hand-held, portable device is received within the docking
station and to use the machine readable identifier as read from
the docking station to cause the hand-held, portable device to be
automatically configured to remotely control functional
operations of a plurality of different appliances via use of
commands transmitted directly from the hand-held,
portable device to each of the plurality of different
devices wherein the plurality of different appliances were
caused to be associated with the machine readable identifier at a
time prior to the hand-held, portable device being releasably
received therein.
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References and Rejections3

Reference Number Date
Srivastava US 2002/0194596 A1 Dec. 19, 2002
Thede US 6,524,240 B1 Feb. 25, 2003
Hamel US 2004/0177380 A1 Sept. 9, 2004
Fadell US 2004/0224638 A1 Nov. 11, 2004
Chandley US 2005/0013103 A1 Jan. 20, 2005
Dua US 2006/0258289 A1 Nov. 16, 2006
Komori4 US 2011/0162014 A1 June 30, 2011

Claims
Rejected
35 U.S.C. § References
1–2 103 Hamel, Chandley, Fadell
3 103 Hamel, Chandley, Fadell, Komori
4–5 103 Hamel, Chandley, Fadell, Dua
6 103 Hamel, Chandley, Fadell, Thede
7 103 Hamel, Chandley, Fadell, Srivastava

ANALYSIS
Obviousness
On this record, the Examiner did not err in rejecting claim 1.

3 Throughout this opinion, we refer to the: (1) Final Office Action mailed
July 27, 2018 (“Final Act.”); (2) Appeal Brief filed Nov. 28, 2018 (“Appeal
Br.”); (3) Examiner’s Answer mailed Aug. 28, 2019 (“Ans.”); and (4) Reply
Brief filed Oct. 11, 2019 (“Reply Br.”).
4 If prosecution reopens, we leave it to the Examiner to determine whether
Komori and Dua (cited for rejecting claims 3–5) constitute prior art.
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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.5
Appellant contends the cited references do not collectively teach “the
hand-held . . . device . . . to remotely control functional operations of a
plurality of different appliances via use of commands,” as recited in claim 1.
See Appeal Br. 4–8; Reply Br. 2–4. For the reasons discussed below,
Appellant has not persuaded us of error.
I
Appellant asserts:
it is evident that the STB of Hamel is not configured to
“remotely control functional operations of a plurality of
appliances” as asserted and relied upon in rejecting the claims
at issue because it was not asserted that Hamel discloses,
teaches, or suggests the more specifically claimed element of a
hand-held, portable device being “configured to remotely
control functional operations of a plurality of different
appliances via use of commands.”

Appeal Br. 5.

it has not been explained nor is it evident how a desire to
provide a docking station that can communicate with a plurality
of appliances associated with the docking station would lead
one of skill in the art to arrive at a system in which a hand-held
device is configured to remotely control functional operations
of a plurality of different appliances via use of commands

5 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).

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transmitted directly from the hand-held portable device to each
of the plurality of different appliances as claimed.

Appeal Br. 7.
We disagree. Because the Examiner relies on the combination of
Hamel, Chandley, and Fadell to teach the disputed claim limitation,
Appellants cannot establish nonobviousness by attacking Hamel
individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner finds—and Appellant does not dispute—Fadell teaches the
claimed “via use of commands.” Final Act. 11–12; Fadell ¶ 59 (“The media
devices 154 and the media player 152 are configured to communicate with
one another through media link 156. . . . Using a master/slave
communication protocol, one of the devices is a master and the other is a
slave. The master controls the slave.”). The Examiner further finds—and
Appellant does not dispute—Chandley teaches the claimed “the hand-held . .
. device . . . to remotely . . . .” Final Act. 10–11; Chandley ¶ 34 (“With the
insertion of the handheld . . . computer 220 into the docking station 210, the
wireless communication interfaces 215a-g enable the handheld computer
220 to communicate through the docking station 210 to various peripherals,
computers, and network interfaces.”). Therefore, Hamel does not need to
teach those limitations.

II
Appellant contends:
Hamel does not disclose, teach, or suggest a portable device
having programming that uses an address associated with a
docking station to configure the portable device to remotely
control functional operations of a plurality of appliances as
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asserted and relied upon in rejecting the claims at issue. Rather,
Hamel describes that an address associated with a docking
station is used to configure a set-top box the purpose of limiting
programming the set-top box itself[] may provide to a monitor
via use of the docking station., i.e., the STB may block a
portion of the decoded audio/video programming signal from
being provided to the monitor (via the docking station) based
on the identifier of the docking station. (¶¶ 0002, 0012, 0024,
and 0036). Accordingly, because Hamel describes a system in
which a STB simply prevents certain signals from being
transmitted to a monitor (as opposed to describing a system in
which signals are actually transmitted to a TV by the STB to
thereby control some operation of the TV — see, e,g,, para,
0026 which describes using a remote control for this purpose),
it is respectfully submitted that it cannot be reasonably
concluded that Hamel discloses, teaches, or suggests “[]
remotely control functional operations of a plurality of
appliances” as asserted[.]

Appeal Br. 4–5 (footnote and emphases omitted).
We disagree. Hamel explains:
STB 12 may also have the capability to recognize the
difference between multiple docking stations 14a, 14b, and 14c
and their respective connected TVs 32a, 32b, and 32c. Docking
stations 14a, 14b, and 14c can each have an individual
identifier. STB 12 can recognize the identifier and determine
the level of programming allowed based on the identifier
associated with that docking station. STB 12 would limit the
access to certain channels based on the programming the
settings of the particular unit. For example, docking station
14a and TV 32a in a living room would have certain channels
accessible, while a docking station 14b and TV 32b in a
bedroom room could have a completely different set of channels
accessible. This feature could be a form of parental control for
docking stations and TVs based on their settings.

Hamel ¶ 36 (emphases added).
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Because Hamel’s STB 12 controls the functional operations of TVs
32a, 32b, and 32c, Hamel teaches “the . . . device . . . to . . . control
functional operations of a plurality of different appliances,” as recited in
claim 1. Appellant’s argument that “Hamel describes a system in which a
STB simply prevents certain signals from being transmitted to a monitor []as
opposed to describing a system in which signals are actually transmitted to a
TV by the STB to thereby control some operation of the TV” (Appeal Br. 4
(emphases omitted)) is unpersuasive, because Hamel explicitly teaches
“allowed” programming—not merely preventing signals from being
transmitted. See Hamel ¶ 36 (“STB 12 can recognize the identifier and
determine the level of programming allowed based on the identifier
associated with that docking station.”) (emphasis added). Further,
Appellant’s argument about “via use of a transmitted command” (Reply Br.
2) is unpersuasive, because as discussed above, the Examiner finds—and
Appellant does not dispute—Fadell teaches the claimed “via use of
commands.” Final Act. 11–12; Fadell ¶ 59. Therefore, Hamel does not
need to teach that limitation.
Cumulatively, the Examiner finds Fadell teaches a device to “control
functional operations of” an appliance. See Ans. 7; Fadell ¶ 59 (“The media
devices 154 and the media player 152 are configured to communicate with
one another through media link 156. . . . Using a master/slave
communication protocol, one of the devices is a master and the other is a
slave. The master controls the slave.”). Because Appellant does not dispute
that finding, Appellant fails to show Examiner error.

III
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Appellant argues:
because Hamel does not contemplate “the portable device to be
automatically configured to remotely control functional
operations of a plurality of different appliances” in the first
instance[], one of skill in the art would find no reason to modify
the system of Hamel . . . to provide the STB with the capability
“of sending media and control command directly to the
appliances” as asserted and relied upon in rejecting the claims
at issue as this proposed modification of Hamel: a) solves no
noted problem in Hamel, and b) changes the very principle by
which the system of Hamel is intended to operate by
eliminating the docking station to which the STB must be
connected to receive encoded video signals in the first instance.

. . . .

Furthermore, to the extent it was further asserted that it would
have been obvious to modify Hamel according to the teachings
of Chandley — which is directed to using the docking station to
communicate with appliances (OA, pg. 11) — to “design a
docking station that can receive a hand-held device and
communicate with a plurality of appliances associated with the
docking station via wired or wireless IEEE 802.11b
communication schemes,” (OA, pg. 1l) (emphasis added), it is
submitted that, because Hamel operates on the principle of
using a docking station to allow a single STB to be configured
to prevent access by the STB itself to certain programs when
used with certain monitors in certain rooms (¶ 0008), it remains
unclear why one of skill in the art would make the modification
proposed as modifying Hamel in this manner to allow the
docking station to be used with multiple TVs at one time would
impermissibly require that the principle by which Hamel is
intended to operate be changed.

Appeal Br. 6–7 (emphases omitted).
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
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it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). Contrary to Appellants’ argument, “[i]f the
claim extends to what is obvious, it is invalid 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 as to why one
skilled in the art would have found it obvious to combine the teachings of
Hamel, Chandley, and Fadell. See Final Act. 11–12; Ans. 7–11, 13–14.6
Appellant does not persuasively show why such reasoning is incorrect. In
particular, Appellant’s argument about “chang[ing] the very principle by
which the system of Hamel is intended to operate by eliminating the docking
station” (Appeal Br. 6) is not directed to the Examiner’s proposed
combination, which does not eliminate the docking station. In any event,
that attorney argument about Hamel’s principle is unpersuasive, as
Appellant does not provide sufficient objective evidence to support the
assertion. 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

6 Appellant argues one of the Examiner’s sentences on pages 7, 9, 11, and
14 is inadequate as a rationale for the proposed combination. Reply Br. 3–4.
However, Appellant does not persuasively dispute the Examiner’s reasoning
in the Final Action (Final Act. 11–12) and additional reasoning in the
Answer (Ans. 7–11, 13–14). Therefore, Appellant has not shown Examiner
error.
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(CCPA 1977) (“Argument of counsel cannot take the place of evidence
lacking in the record.”).
Further, Appellant’s arguments that
Hamel operates on the principle of using a docking station to
allow a single STB to be configured to prevent access by the
STB itself to certain programs when used with certain monitors
in certain rooms (¶ 0008), it remains unclear why one of skill in
the art would make the modification proposed as modifying
Hamel in this manner to allow the docking station to be used
with multiple TVs at one time would impermissibly require that
the principle by which Hamel is intended to operate be
changed.

(Appeal Br. 6–7) (emphasis omitted) and

[the proposed combination] would change the principle by
which the system of Hamel is intended to operate and/or would
make the system of Hamel inoperable for its intended purpose
(e.g., it would defeat the purpose of having each individual TV
associated with its own individual docking station for the
purpose of limiting content that is accessible via each TV

(Reply Br. 3) are unpersuasive, because they contradict the record.
Hamel states:
Thus, there exists a need for a method and system that would
allow a subscriber to use one STB amongst a plurality of TVs in
a subscriber’s home. Such a method and system would
eliminate the need to directly connect a STB between a TV and
a programming source. With such a method and system, the
connection and disconnection of the STB with the broadcast
programming source and the TV would be connected indirectly
without the use of direct cable connections from the STB to
either of the TV and the programming source. As a result, the
connection of the STB between the TV and the programming
source would be inexpensive, easy, convenient, and reliable.
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Hamel ¶ 8 (emphasis added).
As shown above, Hamel’s paragraph 8 does not state Hamel “operates
on the principle of using a docking station to allow a single STB to be
configured to prevent access by the STB itself to certain programs when
used with certain monitors in certain rooms,” as Appellant argues (Appeal
Br. 6–7). Nor does it state Hamel’s purpose is “having each individual TV
associated with its own individual docking station for the purpose of limiting
content that is accessible via each TV” (Reply Br. 3). Therefore,
Appellant’s conclusions (Appeal Br. 7; Reply Br. 3) based on the incorrect
assessment of Hamel’s principle or purpose are also unpersuasive.
Further, the skilled artisan would “be able to fit the teachings of
multiple patents together 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, Appellant has not shown the Examiner erred in
combining the teaching of Hamel, Chandley, and Fadell.

IV
Appellant argues the Examiner used impermissible hindsight
reasoning in proposing the combination. See Appeal Br. 7–8.
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We disagree. Our reviewing courts have not established a bright-line
test for hindsight. The U.S. Supreme Court guides that “[a] factfinder
should be aware, of course, of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning.” KSR, 550
U.S. at 421 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
36 (1966)). “Rigid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR, 550 U.S. at 421.
As discussed above, Appellant has not demonstrated the Examiner’s
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” Leapfrog Enters., 485 F.3d
at 1162. In particular, Appellant’s attorney argument that “each
modification being proposed and relied upon changes the underlying
principle by which the system being modified is intended to operate”
(Appeal Br. 7) is unpersuasive. See Geisler, 116 F.3d at 1470; Meitzner,
549 F.2d at 782. Further, Appellant’s argument that “a modification of
Hamel/Chandley with removes the just modified docking station” (Appeal
Br. 7) is not directed to the Examiner’s proposed combination, which does
not remove the docking station.
In addition, after reviewing the respective teachings and suggestions
of Hamel, Chandley, and Fadell, we find the weight of the evidence shows
the proffered combination is merely a predictable use of prior art elements
according to their established functions, because the combination uses prior
art elements of Hamel, Chandley, and Fadell according to their well-known
functions. Therefore, on this record, Appellant has not persuaded us the
Examiner engaged in impermissible hindsight.
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Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 1.
We also sustain the Examiner’s rejection of corresponding dependent
claims 2–7, 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 1–7 under 35
U.S.C. § 103.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–2 103 Hamel, Chandley,
Fadell
1–2
3 103 Hamel, Chandley,
Fadell, Komori
3
4–5 103 Hamel, Chandley,
Fadell, Dua
4–5
6 103 Hamel, Chandley,
Fadell, Thede
6
7 103 Hamel, Chandley,
Fadell, Srivastava
7
Overall
Outcome
1–7

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