Ex Parte Cheung Hyen et alDownload PDFPatent Trials and Appeals BoardFeb 15, 201914531366 - (D) (P.T.A.B. Feb. 15, 2019) Copy Citation 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). 2 Appeal2018-005667 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"). 3 Appeal2018-005667 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. 4 Appeal2018-005667 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 5 Appeal2018-005667 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 6 Appeal2018-005667 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 7 Copy with citationCopy as parenthetical citation