Ex Parte Cheung Hyen et al

Patent Trial and Appeal Board

Feb 15, 2019

14531366 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/531,366 11/03/2014 David Chong Cheung Hyen
34018 7590 02/20/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
81230.150US2 5684
EXAMINER
JIAN, SHIRLEY XUEYING
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CHONG CHEUNG RYEN and
PATRICKH. HAYES
Appeal2018-005667
Application 14/531,366
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134 of the Examiner's
decision, as set forth in the Non-Final Office Action dated June 27, 2017
("Non-Final Act."), rejecting claims 1-19. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Universal Electronics Inc. ("Appellant") is the applicant, according to
3 7 C.F .R. § 1.46, and is identified as the real party in interest. Appeal Br. 2.
Appeal2018-005667
Application 14/531,366
CLAIMED SUBJECT MATTER
Claims 1 and 10 are independent claims. Illustrative claim 1 reads as
follows:
1. A hand-held controlling device for use in
controlling functional operations of one or more controllable
consumer appliances, comprising:
a processing device;
a wireless transmitter coupled to the processing device;
a user interface having a plurality of input elements
coupled to the processing device; and
at least one biometric sensor coupled to the processing
device;
wherein, in response to the processing device
determining that one or more of the plurality of input elements
of the user interface has been activated to cause the wireless
transmitter to transmit commands to control a functional
operation of one or more of the controllable consumer
appliances while the at least one biometric sensor is in a
disabled state, the processing device functions to transition the
at least one biometric sensor from the disabled state to an
enabled state to thereby allow for biometric data to be captured
from a user via use of the least one biometric sensor.
Appeal Br. 10 (Claims App.).
REJECTIONS
1. Claims 1, 2, 6-10, 12, and 16-19 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Taylor (US 6,419,630 Bl, issued July 16,
2002) and Castaneda (US 2008/0049980 Al, published Feb. 28, 2008).
2. Claims 3-5 and 13-15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Taylor, Castaneda, and Miyajima (US 2007 /0299322 Al,
published Dec. 27, 2007).
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Application 14/531,366
3. Claim 11 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Taylor, Castaneda, and Mault (US 2003/02088110 Al, published Nov.
6, 2003).
ANALYSIS
Rejection 1- Claims 1, 2, 6-10, 12, and 16-19
As for claim 1, the Examiner finds that Taylor discloses a hand-held
controlling device (remote control 12) comprising a processing device and at
least one biometric sensor (sensors 16) coupled to the processing device.
Non-Final Act. 3 (citing Taylor Fig. 4, col. 3, 1. 64---col. 4, 1. 28, and col. 4,
11. 45-50); see also id. Figs. 1, 3. The Examiner acknowledges that Taylor
does not disclose that the processing device "transitions the biometric sensor
from a disabled [state] to [an] enabled state upon detecting ... actuation of a
button intended for controlling the television set." Id. However, the
Examiner concludes that
this [ omission in Taylor] would have been an obvious design
choice, because it is understood [that] it requires higher battery
consumption to keep the remote control and the embedded
biosensors in standby mode. As such, disabling some of the
functions, such as keeping the biosensors in a disabled mode
until the remote device has detected an actuation from the user
would prolong battery life of the device. Therefore the
motivation for the design choice is efficient energy management
of the remote controller device.
Id. at 3--4 (emphasis added); see also Ans. 12 (the proposed modification of
Taylor would allow "activating the sensors 16 only based on the user's
desire to have his/her vital sign captured so it does not waste energy during a
time when the user only wants to control the TV").
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Application 14/531,366
Appellant contends that the Examiner's proposed modification of
Taylor's remote control is not a mere design choice, but requires adding
elements to the remote control, and also changes how the remote control
operates. Appeal Br. 4--5.
We agree with Appellant. As noted above, the Examiner
acknowledges that the proposed modification of Taylor would achieve a
different function or result, and reasons that the modification would produce
a benefit in terms of efficient energy management of Taylor's remote
control. Accordingly, the Examiner acknowledges that the claimed device
functions differently from Taylor's device. As Appellant contends, to
achieve this different function or result, the Examiner's design choice
rationale would require adding elements to Taylor's remote control. The
Examiner also asserts above that the modification of Taylor would provide a
benefit that the claimed device provides. Consequently, we agree with
Appellant that the proposed modification of Taylor is not merely an obvious
matter of design choice. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992)
( claimed chip design was not a matter of design choice over the prior art
where applicant disclosed that the claimed design achieved desired functions
different from the prior art); In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995)
(holding that claimed feature was not a matter of design choice where there
was no suggestion or teaching to modify the prior art in this manner and
applicant introduced evidence showing the benefits of the claimed feature).
We also note that the Examiner does not identify any teaching or suggestion
in Taylor of a desire to achieve efficient energy management of the remote
controller device. Rather, any suggestion to achieve this benefit in Taylor
appears to be gleaned from Appellant's disclosure.
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Application 14/531,366
Alternatively, the Examiner finds that Castaneda discloses a button
assembly, a biometric sensor, and a switch, and that when a button is
depressed, the button activates the switch to transition the biometric sensor
from a disabled/deactivated first position to an enabled/activated second
position to initiate the capturing of biometric information of a finger
depressing the button. Non-Final Act. 4 (citing Castaneda ,r,r 27, 32, 33, and
43); see also Ans. 13. The Examiner concludes that it would have been
obvious to modify Taylor's hand-held controlling device by "replac[ing] the
TV remote control buttons" with the button assembly, biometric sensor, and
switch of Castaneda for "power management of the remote device so as to
only activate the biosensors when the remote control is being handled during
its regular use by a user." Non-Final Act. 4 (citing Taylor col. 4, 11. 11--44).
Appellant argues that Castaneda's biometric sensor is operable only
between a first position and a second position, or only while the button is
depressed such that the switch must be enabled before it is activated, and, as
such, Castaneda does not disclose that the biometric sensor is transitioned
from a disabled state to an enabled state. Appeal Br. 6-7 ( citing Castaneda
,r,r 27, 43, 44, and 50). Thus, Appellant argues, Castaneda does not suggest
modifying Taylor such that biometric data will be captured from a user via
use of the biometric sensor in specific response to the processing device
determining that the claimed conditions have occurred. Id. at 8. Appellant
contends that even if Castaneda discloses using an activation switch to
transition a biometric sensor from a disabled or deactivated state to an
enabled or activated state to initiate the capturing of biometric information
of a finger depressing a button, as asserted by the Examiner, that does not
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Application 14/531,366
support the conclusion that a skilled artisan would have modified Taylor's
hand-held controlling device to arrive at claimed invention. Reply Br. 6.
We agree with Appellant that the Examiner has not provided an
adequate reason with a rational underpinning to modify Taylor's remote
control in view of Castaneda as proposed by the Examiner. We note
Castaneda discloses that if "a mobile station is snatched by a thief after a
user's identity has already been verified and the mobile station has been left
on, the thief may have access to the mobile station's resources and
information contained thereon." Castaneda ,r 5 (emphasis added). To solve
this problem, Castaneda discloses a "biometric sensor [that] can be operable
between a first position and a second position to effectuate opening or
closing of the switch," and a "button assembly [that] can operate the
biometric sensor between the first and second positions utilizing pivotal,
translational, and/ or rotational movement." Id. ,r 2 7. In other words,
Casteneda's biometric sensor is enabled or is operable only at a particular
position or instance. The Examiner does not direct us to any disclosure in
Castaneda of a button with an integrated biometric sensor that provides
"power management." And even if Castaneda discloses that "depression of
the switch button [] can activate image capture" (id. ,r 43), the Examiner
does not explain how modifying Taylor's remote control with Castaneda's
biometric sensor, which is enabled or is operable only at a particular position
or instance, would result in transitioning its biometric sensor from the
disabled state to an enabled state to thereby allow for biometric data to be
captured from a user via use of the biometric sensor in Taylor's remote
control. Accordingly, the Examiner has not provided sufficient evidence or
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Application 14/531,366
technical reasoning to support the proposed modification of Taylor in view
of Castaneda.
Thus, we do not sustain the rejection of claim 1, and of claims 2, 6-9,
and 12 depending from claim 1, as unpatentable over Taylor and Castaneda.
We also do not sustain the rejection of claim 10, and of claims 16-19
depending therefrom, for similar reasons as for claim 1.
Rejection 2- Claims 3-5 and 13-15
The Examiner's reliance on Miyahima as disclosing a cantilevered
element where a user inserts his or her finger for measurement in rejecting
dependent claims 3-5 and 13-15 does not cure the deficiencies in the
rejection of parent claim 1 or 10. See Non-Final Act. 8-9. Hence, we do not
sustain the rejection of claims 3-5 and 13-15 as unpatentable over Taylor,
Castaneda, and Miyahima.
Rejection 3 - Claim 11
The Examiner's reliance on Mault as disclosing an accelerometer in
rejecting dependent claim 11 does not cure the deficiencies in the rejection
of parent claim 10. See id. at 9. Hence, we do not sustain the rejection of
claim 11 as unpatentable over Taylor, Castaneda, and Mault.
DECISION
We reverse the rejections of claims 1-19.
REVERSED
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