Ex Parte Arlein et al

Patent Trial and Appeal BoardMar 17, 2015

12241699 (P.T.A.B. Mar. 17, 2015)

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. 12/241,699 09/30/2008 Robert Michael Arlein LCNT/129656 7527 46363 7590 03/17/2015 WALL & TONG, LLP/ ALCATEL-LUCENT USA INC. 25 James Way Eatontown, NJ 07724 EXAMINER HAILU, TADESSE ART UNIT PAPER NUMBER 2173 MAIL DATE DELIVERY MODE 03/17/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT MICHAEL ARLEIN, JAMES ROBERT ENSOR, ROBERT DONALD GAGLIANELLO, MARKUS ANDREAS HOFMANN, and DONG LIU ____________ Appeal 2012-009042 Application 12/241,699 1 Technology Center 2100 ____________ Before JEFFREY N. FREDMAN, CHRISTOPHER G. PAULRAJ, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims related to coordinating transfer of information between a plurality of devices. The Examiner rejected the claims as anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Alcatel-Lucent. App. Br. 3. Appeal 2012-009042 Application 12/241,699 2 STATEMENT OF THE CASE Background “The invention relates to the field of information transfer and, more specifically, to coordinating transfer of information among multiple devices.” Spec. 1. The Claims Claims 1–20 are on appeal. Claim 1 is representative and reads as follows. 1. A method for coordinating transfer of information between ones of a plurality of devices including a coordinating device and at least one other device, comprising: detecting selection of an item available at a first one of the devices; detecting a gesture-based command for the selected item; identifying a second one of the devices based on the gesture-based command and a spatial relationship between the coordinating device and the second one of the devices; and initiating a control message adapted for enabling the first one of the devices to propagate the selected item toward the second one of the devices. App. Br. 23. The Rejections 1. The Examiner maintains that claims 1–7 and 11–20 are unpatentable under 35 U.S.C. § 102(b) over Dresti. 2 2. The Examiner maintains that claim 8 is unpatentable under 35 U.S.C. § 103(a) over Dresti in view of Hope. 3 2 Dresti et al., US 2003/0103088 A1, published on June 5, 2003. Appeal 2012-009042 Application 12/241,699 3 3. The Examiner maintains that claim 9 is unpatentable under 35 U.S.C. § 103(a) over Dresti in view of Zhang. 4 4. The Examiner maintains that claim 10 is unpatentable under 35 U.S.C. § 103(a) over Dresti in view of Baugh. 5 DISCUSSION 1. Dresti With respect to this rejection, Appellants present separate arguments only related to claims 1 and 20. See App. Br. 12–20. We address those two claims separately below, and each of claims 2–7, and 11–19 fall with claim 1. Principles of Law The Examiner must establish a prima facie case of anticipation under § 102 by showing, as a matter of fact, that all elements arranged as specified in a claim are disclosed within the four corners of a reference, either expressly or inherently, in a manner enabling one skilled in the art to practice an embodiment of the claimed invention without undue experimentation. ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008). Further, during prosecution, an application’s claims are given their broadest reasonable scope consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 3 Hope et al., US 2009/0153289 A1, published on June 18, 2009. 4 Zhang et al., US 2004/0095317 A1, published on May 20, 2004. 5 Baugh et al., US 2009/0322582 A1, published on December 31, 2009. Appeal 2012-009042 Application 12/241,699 4 Analysis Claim 1 Appellants argue that Dresti does not disclose detecting a gesture- based command, identifying a second device based on the gesture-based command and a special relationship, and initiating a control message as required by claim 1. App. Br. 12–18. For the reasons set forth below, we find Appellants’ arguments unpersuasive. Dresti discloses: A hand-held electronic device having a remote control application user interface that functions to displays [sic] operational mode information to a user. The graphical user interface may be used, for example, to setup the remote control application to control appliances for one or more users in one or more rooms, to perform activities, and to access favorites. Dresti, Abstract. Dresti discloses that the hand-held device includes IR transmission capabilities for short range communication with other devices. Id. at ¶ 59. Further, Dresti discloses the following regarding control of secondary devices, such as a television: Operation of a TV device is as follows. Assuming that the TV has been setup as described earlier, the remote control application may be placed into a mode for controlling the TV, for example, by rotating the home page wheel 110 until the TV becomes the active (top) device icon–142 in FIG. 14i–and then either tapping the TV icon 142 or the controls tab icon 124, resulting in the display of the first page of device control page as illustrated in FIG. 19a. Depending on the device type, additional pages of control functions may be available as illustrated in FIGS. 19b and 19c. The user may navigate to these additional pages, if any, by using either the page hard key 102b or the control surface switching icons 192. When the user selects a device as described above, the control page displayed Appeal 2012-009042 Application 12/241,699 5 may be the last one used, as opposed to always beginning at page one. For example, if the last action a user previously performed before switching to another device type, such as the VCR, was to command volume adjustment then, on re-selection of the TV, the third page (FIG. 19c) might be displayed since this page contains the (most recently used) TV volume control buttons 194. Id. at ¶ 198. Appellants first argue that Dresti does not disclose “detecting a gesture-based command for the selected item” because the portions of Dresti cited by the Examiner fail to teach detection of a gesture and pointing the remote control device in the direction of a targeted device does not teach or suggest that such a gesture is detected. App. Br. 12–14. We are not persuaded. We find that Dresti expressly discloses gesture-based commands in various forms under the broadest reasonable interpretation of the claim, including “rotating the home page wheel 110 until the TV becomes the active (top) device icon” or “control[] buttons, sliders, etc., e.g., via the use of bitmap images, to support operations unique to home automation devices.” See Dresti ¶¶ 198, 45; Ans. 16–18. We also find that Dresti discloses gesture-based commands in the form of pointing the device to the targeted secondary device, as found by the Examiner. See Ans. 19; Dresti Fig. 1. We find that each of these gesture-based commands are related to the selection of an item to be sent to a secondary device and are necessarily “detected” under the broadest reasonable interpretation of the claim. For example, where the selected item is turning a television on, the gesture of “rotating the home page wheel” is necessarily detected and related to the selected item. Alternatively, the gesture of pointing the device at the television is necessarily detected when a communication link is established Appeal 2012-009042 Application 12/241,699 6 between the remote control and the television. Thus, we find that Dresti discloses the required “detecting a gesture-based command for the selected item.” 6 Appellants next argue that Dresti does not disclose the “identifying” feature of claim 1 because Dresti fails to disclose a gesture-based command or a special relationship between a coordinating device and another device. App. Br. 14–18. We find this argument unpersuasive. We agree with and adopt the Examiner’s response to this argument. See Ans. 19–20. Specifically, we find that Dresti discloses gesture-based commands that are not only related to a selected item but are also related to a second device, i.e. as found above, Dresti teaches rotating a wheel to select a television or pointing to a television in order to control it. Further, Dresti necessarily requires a spatial relationship between the remote control device and the second device, i.e. a short range line-of-sight relationship, in order to transmit IR-based commands. See Dresti ¶ 59, Fig. 1. Thus, we find that Dresti necessarily discloses identifying a second device based on a gesture- based command and a spatial relationship. Finally, Appellants argue that Dresti does not disclose the “initiating” feature of claim 1. App. Br. 18. Appellants intimate that this feature is not disclosed for the same reasons that the “identifying” feature is not disclosed. 6 We note that Appellants appear to present a new argument in in their Reply Brief, viz. that an item must be selected before a gesture is detected. Reply Br. 3. However, method steps are not ordinarily construed to require an order unless they express or implicitly require performance in that order. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001)). We are not persuaded that the claims require the order asserted by Appellants. Appeal 2012-009042 Application 12/241,699 7 Id. Having found that Dresti does anticipate the “identifying” limitation of the claim, we are unpersuaded by Appellants’ argument with respect to the “initiating” limitation. Further, we agree with the Examiner that the selection of a power button or channel button, i.e. the selected item, on Dresti’s remote control necessarily results in a control signal being sent from the remote control to the second device, which transfers the selected item to the second device. See Ans. 21; Dresti claim 45. Based on the foregoing, we find that the Examiner has established a prima facie showing of anticipation with respect to claim 1, which Appellants have failed to rebut. Accordingly, we affirm the rejection of claim 1, and claims 2–7 and 11–19 fall with claim 1. Claim 20 With respect to claim 20, Appellants first argue that the Final Action fails to address all of the limitations of the claim. App. Br. 19–20. Further, in their Reply Brief, Appellants argue that the Examiner’s response to arguments fails to account for the difference between the first method step of claim 1 and the first method step of claim 20. Reply Br. 8. We find these arguments unpersuasive. Regarding Appellants’ initial arguments, we note that the Examiner’s Answer addresses every limitation of claim 20. Further, regarding Appellants’ reply argument, we note that Appellants’ focus on the Examiner’s response to arguments and fail to address the Examiner’s specific grounds of rejection provided in the Answer. Further, we agree with the Examiner that Dresti anticipates the first step of claim 20 under its broadest reasonable interpretation because the selection of a device icon, e.g. rotating the home page wheel to the TV icon, may be considered a gesture Appeal 2012-009042 Application 12/241,699 8 identifying a first device that stores an available item, such as a power or channel button. Accordingly, we find that the Examiner has established a prima facie showing of anticipation with respect to this claim, which Appellants have failed to rebut, and therefore, we affirm the rejection of claim 20. 2. Obviousness Rejections With respect to each of the obviousness rejections, Appellants argue only that they should be reversed because the Hope, Zhang, and Baugh references do not supply “that which is missing from Dresti” with respect to claim 1. App. Br. 20–21. We found no such deficiencies in Dresti with respect to claim 1, and thus, for the reasons set forth in the Answer, we find that the Examiner has established a prima facie showing of obviousness with respect to claims 8–10, which Appellants have failed to rebut. CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1–7 and 11–20 as anticipated, and we affirm the rejection of claims 8–10 as obvious. 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). AFFIRMED pgc