Ex Parte Booher et al

Patent Trial and Appeal BoardOct 31, 2012

11440835 (P.T.A.B. Oct. 31, 2012)

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. 11/440,835 05/25/2006 Cory Booher 1990-0002 7672 28078 7590 11/01/2012 MAGINOT, MOORE & BECK, LLP CHASE TOWER 111 MONUMENT CIRCLE SUITE 3250 INDIANAPOLIS, IN 46204 EXAMINER BROWN, VERNAL U ART UNIT PAPER NUMBER 2681 MAIL DATE DELIVERY MODE 11/01/2012 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 TRAIL AND APPEAL BOARD ____________ Ex parte CORY BOOHER and LARRY D. O’CULL ____________ Appeal 2011-007908 Application 11/440,835 Technology Center 2600 ____________ Before MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS MERCADER , Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007908 Application 11/440,835 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. THE INVENTION Appellants’ claimed invention is directed to receiver device operable to transmit a garage door operation signal to a garage door opener in response to the received automobile instruction signal (Spec. ¶ [0017]). Independent claims 1 and 20, reproduced below, are representative of the subject matter on appeal. 1. A receiver device configured for use in association with a key fob of a automobile remote keyless entry system, the key fob operable to transmit at least one automobile instruction signal, the device comprising: a receiver configured to receive the automobile instruction signal transmitted by the key fob; and a transmitter configured to transmit a device operation signal to a non-automotive remotely controlled device in response to the received automobile instruction signal, wherein the transmitter is configured to transmit the device operation signal only after the automobile instruction signal has been received continuously for a predetermined period of time or only after the automobile instruction signal has been received a predetermined number of times over a predetermined period. 20. A method of controlling a non-automotive remotely controlled device using a key fob configured to transmit an automotive instruction signal, the method comprising: Appeal 2011-007908 Application 11/440,835 3 receiving the automotive instruction signal transmitted from the key fob; identifying the received automotive instruction signal; and transmitting a control signal for the non-automotive remotely controlled device following identification of the received automotive instruction signal if the automobile instruction signal is received in a manner that meets a predetermined criterion indicating that the automotive instruction signal is intended to also control the non- automotive remotely controlled device. REFERENCES and REJECTIONS The Examiner rejected claim 20 under 35 U.S.C. § 102(b) based upon the teachings of Swan (U.S. Patent Number 6,091,330, issued July 18, 2000). Ans. 3-4. The Examiner rejected claims 1, 6, 9, 11, 13, and 15 under 35 U.S.C. § 103(a) based upon the teachings of Swan and Kokubu (U.S. Patent Number 5,555,863, issued September 17, 1996). Ans. 4-5. The Examiner rejected claims 2-5 under 35 U.S.C. § 103(a) based upon the teachings of Swan, Kokubu, and Di Croce (U.S. Patent Number 5,838,255, issued November 17, 1998). Ans. 5-6. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) based upon the teachings of Swan, Kokubu, and Fuller (U.S. Patent Number 6,795,760 B2, issued September 21, 2004). Ans. 6-7. The Examiner rejected claims 8, 10, and 12 under 35 U.S.C. § 103(a) based upon the teachings of Swan, Kokubu, and Fitzgibbon (U.S. Patent Number 7,268,681 B2, issued September 11, 2007). Ans. 7. Appeal 2011-007908 Application 11/440,835 4 The Examiner rejected claim 14 under 35 U.S.C. § 103(a) based upon the teachings of Swan, Kokubu, and Rodriguez (U.S. Patent Number 7,266,344 B2, issued September 4, 2007). Ans. 7-8. The Examiner rejected claims 16-18 under 35 U.S.C. § 103(a) based upon the teachings of Swan and Di Croce. Ans. 8-9. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) based upon the teachings of Swan, Di Croce, and Baumgardner (U.S. Patent Number 7,023,322 B2, issued April 4, 2006). Ans. 9. ISSUES The pivotal issues are: 1. Whether the Examiner erred in finding that Swan teaches the limitation of: “a predetermined criteria indicating that the automotive instruction signal is intended to also control the non- automotive remotely controlled device” as recited in claim 20; 2. Does Swan teach away from the combination with Kokubu; and 3. Whether the combination of Swan, Kokubu, and Di Croce teach the limitation of a processor “operable to identify the received automobile instructions signal as associated with the key fob” as recited in claim 3. PRINCIPLES OF LAW To teach away, prior art must “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appeal 2011-007908 Application 11/440,835 5 An artisan is presumed to possess both skill and common sense. See KSR Int’l., Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”) ANALYSIS Claim 20 Appellants argue that Swan does not teach the limitation of “a predetermined criteria indicating that the automotive instruction signal is intended to also control the non-automotive remotely controlled device” as recited in claim 20 (App. Br. 8-9). Appellants explain that Swan teaches an arrangement where a nonautomotive remotely controlled device (i.e., a garage door opener) is operated regardless of the manner in which the engine ignition signal is received (App. Br. 8). Appellants further clarify that whether or not the garage door opener is activated in Swan is dependent on whether the garage door sensor determines that the garage door is closed, not whether the received automobile instruction signal meets some predetermined criteria (App. Br. 8). The predetermined criteria indicate that the automotive instruction signal is also intended to control the non- automotive remotely controlled device (App. Br. 8). We agree with Appellants. Swan teaches that a proximity sensor 28 produces a gating signal to produce a garage door opener signal (col. 3, ll. 21-28) which is a different signal than the engine ignition signal (col. 3, l. 32). In other words, Swan does not teach that the automotive instruction signal (i.e., the engine ignition signal) is also intended to control the non- automotive remotely controlled device (i.e., the garage door). Rather, it is Appeal 2011-007908 Application 11/440,835 6 the gating signal and the engine ignition signal that operate to open the garage door (see col. 3, ll. 30-35)—not the engine ignition signal itself. Accordingly, we reverse the Examiner’s rejection of claim 20. Claim 1 Appellants argue that claim 1 was improperly rejected over the combination of Swan and Kokubu. Appellants contend that the combination would defeat the purpose of the safety device of Swan if the automobile start button needs to be pressed for a predetermined time as taught by Kokubu before the garage door goes up (App. Br. 12). Appellants explain that the safety device of Swan teaches that the garage door is opened automatically when the engine start button is depressed (App. Br. 12). Appellants assert that if Swan were amended as suggested by the Examiner, the garage door would remain shut if the user pressed the start button only briefly (App. Br. 12). Appellants conclude that this would allow the automotive engine to turn on while allowing the garage door to remain closed, thus completely defeating the purpose of the safety device of Swan (App. Br. 12). We do not agree with Appellants’ argument. We agree with the Examiner that Kokubu teaches a method of extending the functionality of the key fob by pressing the key fob for a predetermined time to indicate a different function request (col. 5, ll. 8-18). We see nothing in Swan that criticizes, discredits, or otherwise discourages the solution claimed. See Fulton, 391 F.3d at 1201. We further agree with the Examiner’s position that transmitting the device operation signal only after the automobile instruction signal has been received continuously for a predetermined period of time in Swan prevents Appeal 2011-007908 Application 11/440,835 7 the starting of the vehicle and the actuation of the garage door based on an accidental pressing of the button on the key fob (Ans. 12). In other words, it would be common sense that a user knowing that pressing the button on the fob for a predetermined period of time would open the garage door, would do exactly that to prevent starting the car engine prior to opening the garage door; whereas if the garage door is already open the button on the fob would be pressed once. An artisan is presumed to possess both skill and common sense. See KSR, 550 U.S. at 421. Appellants further argue that the Examiner’s rationale for combining the references is conclusory (App. Br. 14). We do not agree. Expanding the functionality of Swan’s fob by incorporating the teachings of Kokubu to correlate pressing the button on the fob for a predetermined period of time with the garage door opening functionality (Ans. 12) is not a conclusory motivation. Accordingly, we affirm the Examiner’s rejection of claim 1. Claims 3 and 5 Appellants argue that claim 3 specifically calls for a processor “operable to identify the received automobile instructions signal as associated with the key fob” (emphasis added) (App. Br. 16). Appellants explain that claim 3 calls for the processor to make a determination that the control signal was sent from the actual key fob (as opposed to another signal generator) (App. Br. 16). Appellants assert that the Examiner did not attempt to show where this limitation is found in Di Croce or any of the other cited references (App. Br. 16). Appellants raise similar arguments with respect to claim 5 (App. Br. 17-19). Appeal 2011-007908 Application 11/440,835 8 We do not agree. The Examiner found the following, and we agree with the findings and adopt them as our own: Swan teaches receiving an automobile instruction signal and instructing the transmitter to transmit the device operation signal to the garage door operator (col. 3 lines 10-20). Although the reference of Swan is not explicit in teaching a processor is used to recognize the received signal and instruct the transmitter to transmit the device operation signal[.] The reference of Kokubu teaches the use of a control unit (7) which is considered a microprocessor to recognize the received automobile instruction signal and to transmit the appropriate operation signal based on the received automobile instruction signal to the appropriate device to be controlled (col. 3 line 46- col. 4 line 42). The reference of Di Croce is further relied upon for teaching the use of a processor (21) to receive an automotive instruction signal to from a transmitter (30) and the processor further instruct a transmitter (80) to transmit an operational signal to a non-automotive device such as a garage door operator (col. 3 line 4l-col. 5 line 40). Di Croce teaches a plurality of switches on the key fob used for controlling individual function (col. 4 lines 25-45). The processor therefore inherently compares the data associated with the received automobile instruction signal with the stored data in the processor in order to determine the function requested by the automobile instruction signal. It is therefore the examiner's position that combination of the references of Swan, Kokubu and Di Corce is proper and reads on the claimed limitations because the system of Swan inherently requires a control means for interpreting the received signal and instructing the transmitter to transmit an operational signal to the non- automotive device and the reference of Di Corce is relied upon for teaching the use of a processor as the control means. Ans. 13-14. Accordingly, we affirm the Examiner’s rejections of claims 3 and 5. Appeal 2011-007908 Application 11/440,835 9 Claim 16 Appellants argue that the Examiner failed to show that either Di Croce or Swan teach the limitation of “a processor configured to identify a received signal as the automobile instruction signal based on a comparison of the signature data for the received signal and the stored signature data for the automobile instruction signal” (App. Br. 22). We do not agree. We agree with the Examiner’s findings and conclusions as set out in the Answer (Ans. 8-9), which we reproduce below: Swan et al. is not explicit in teaching a processor operable to recognize the received automobile instruction signal. It is the examiner's position that a processor is conventionally used to interpret the received remote control code and to initiate the transmission of the appropriate signal. The use of processor to interpret the received automobile instruction signal and to transmit the appropriate signal is disclosed by vehicle transmit the Di Croce (col. 4 lines 35-45) and the processor include a memory for storing control codes (col. 5 lines 10-17). Di Croce teaches a plurality of switches on the key fob used for controlling individual function (col. 4 lines 25-45). The processor therefore inherently compares the data associated with the received automobile instruction signal with the stored data in the processor in order to determine the function requested by the automobile instruction signal. Ans. 8-9 (emphasis added). Accordingly, we affirm the Examiner’s rejection of claim 16. Appeal 2011-007908 Application 11/440,835 10 Claims 2-15 and 17-19 Appellants do not raise separate patentability arguments with respect to these claims (App. Br. 23). Accordingly, we affirm the Examiner’s rejections of claims 2-15 and 17-19 for the same reasons articulated supra. CONCLUSIONS 1. The Examiner erred in finding that Swan teaches the limitation of: “the automotive instruction signal is intended to also control the non-automotive remotely controlled device” as recited in claim 20; 2. Swan does not teach away from combination with Kokubu; and 3. The combination of Swan, Kokubu, and Di Croce teaches the limitation of a processor “operable to identify the received automobile instructions signal as associated with the key fob” as recited in claim 3. DECISION The Examiner’s decision rejecting claims 1-19 is affirmed. The Examiner’s rejection of claim 20 is reversed. 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)(2010). AFFIRMED-IN-PART Appeal 2011-007908 Application 11/440,835 11 kis