Ex Parte Ha et al

Patent Trial and Appeal BoardApr 1, 2016

12051618 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/051,618 03/19/2008 22908 7590 04/05/2016 BANNER & WITCOFF, LTD. TEN SOUTH WACKER DRIVE SUITE 3000 CHICAGO, IL 60606 FIRST NAMED INVENTOR Wai-leung Ha 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. 011398.00047 1860 EXAMINER BHATIA,AJAYM ART UNIT PAPER NUMBER 2142 NOTIFICATION DATE DELIVERY MODE 04/05/2016 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): eofficeaction@bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WAI-IEUNG HA, KAIRY KAI LEI, and GORDON QIAN Appeal2014-003915 1 Application 12/051,618 Technology Center 2100 Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and GARTH D. BAER, Administrative Patent Judges. BAER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from the Examiner's Final Rejection of claims 1-5, 7-8, and 10-23. Appeal Br. 4. Claims 6 and 9 are cancelled. Id. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. 1 Appellants identify Computime, Ltd. as the real party in interest. Appeal Br. 2. Appeal2014-003915 Application 12/051,618 A. The Invention BACKGROUND Appellants' invention is directed to "the control of a plurality of controlled devices" using a "remote controller." Abstract. Independent claims 1 and 22 are representative and reproduced below, with emphasis added to the disputed elements: 1. An apparatus comprising: an accelerometer configured to sense motion of the apparatus; a transmitter; a receiver cooperatively coupled to the transmitter to operate as a transceiver; a processor configured to: select a first selected device from a plurality of controlled devices; receive a received signal with a first predetermined command list containing a plurality of commands from the first selected device through the receiver of the apparatus over a two-way communications channel, wherein the plurality of commands are supported by the first selected device to control the first selected device; map a plurality of user actions with the plurality of commands in the first predetermined command list; receive accelerometer information from the accelerometer; determine a first orientation of the apparatus from the accelerometer information; determine a user action applied to the apparatus by a user from the accelerometer information, wherein the user action is one of the plurality of user actions; and 2 Appeal2014-003915 Application 12/051,618 convert the user action to a first command for the first selected device, wherein the first command is included in the first predetermined command list; and the transmitter electrically coupled to the processor and configured to transmit a transmitted signal containing command information indicative of the first command to the first selected device, wherein the first selected device is controlled by the apparatus. 22. An apparatus comprising: a transceiver configured to receive a signal from a remote controller and to send configuration data to the remote controller; a processor configured to: determine whether the remote controller is in a learning mode; indicate when a match occurs between the remote controller and the apparatus; when the match occurs and the remote controller is in the learning mode, send a predetermined command list contained in the configuration data to the remote controller through the transceiver of the apparatus, wherein the predetermined command list includes a plurality of commands for controlling the apparatus; and perform a command from the remote controller when the command is one of the plurality of commands from the command list. Appeal Br. 31, 36 (Claims App.). B. The Rejections on Appeal The Examiner rejects claims 1-2, 4--5, 7-8, 10-11, 13-21, and 23 under 35 U.S.C. Â§ 103(a) as unpatentable over Rosenberg (US 2006/0241864 Al; publ. Oct. 26, 2006), in view ofWikipedia 3 Appeal2014-003915 Application 12/051,618 ( Wikipedia -Remote Play, http://en.wikipedia.org/w/index.php?title=Remote_Play&oldid=l97747814) (last visited June 14, 2012), further in view of Wilson (US 2009/0198354 Al; publ. Aug. 6, 2009), and further in view of Wilson798 (US 2010/0138798 Al; publ. June 3, 2010). Final Act. 2-16. The Examiner rejects claim 3 under 35 U.S.C. Â§ 103(a) as unpatentable over Rosenberg, Wikipedia, Wilson, Wilson798, and further in view ofRosenberg583 (US 2007/0273583 Al; publ. Nov. 29, 2007). Final Act. 16-17. The Examiner rejects claim 12 under 35 U.S.C. Â§ 103(a) as unpatentable over Rosenberg, Wikipedia, Wilson, Wilson798, and further in view of Rabin (US 2008/0291160 Al; publ. Nov. 27, 2008). Final Act. 17. The Examiner rejects claim 22 under 35 U.S.C. Â§ 103(a) as unpatentable over Wikipedia.2 Final Act. 18. ANALYSIS A. Claims 1-5, 7-8, 10-12, and 14--21 Appellants argue that the combination of Rosenberg, Wikipedia, Wilson, and Wilson798 fails to teach or suggest the claimed limitation, "receive a received signal with a first predetermined command list containing a plurality of commands from the first selected device through the receiver of the apparatus over a two-way communications channel, wherein the plurality of commands are supported by the first selected device to control the first selected device," as recited in independent claim 1, and 2 Wikipedia is identified as "Remote Play" in the Final Office Action. Final Act. 18. 4 Appeal2014-003915 Application 12/051,618 similarly recited in independent claims 14 and 18. Appeal Br. 17, 19-23. More specifically, Appellants argue that, while Wikipedia discusses sending instructions from a PlayStation Portable ("PSP") to a PlayStation 3 ("PS3") to be executed on the PS3, Wikipedia fails to teach or suggest sending a command list from the PS3 to the PSP, where the commands are executed on the PS3. Appeal Br. 19, 21, 23. We do not find Appellants' argument persuasive. The Examiner found Wikipedia teaches that a PSP receives an encoded video/audio stream of an output image from a PS3, where the output image is an image of a command list, and where the command list includes a plurality of commands are supported by the PS3 to control the PS3. Final Act. 4; Ans. 2-3 (citing Wikipedia 1 ). Under the broadest reasonable interpretation in light of Appellants' Specification, a "received signal with a first predetermined command list containing a plurality of commands" includes a signal with image data describing an image of a predetermined command list containing a plurality of commands. Appellants' Specification supports this construction as it describes an embodiment involving a two-way communication channel between a remote controller and a controlled device, where the controlled device can send configuration information (e.g., a command list supported by the control device) to the remote controller. Spec. i-f 19. Thus, we agree with the Examiner that Wikipedia's feature of receiving a video/audio stream containing image data that defines an image of a command list containing commands supported by the PS3 to control the PS3 teaches the aforementioned claimed limitation. 5 Appeal2014-003915 Application 12/051,618 Accordingly, we sustain the Examiner's rejections of independent claims 1, 14, and 18, and claims 2-5, 7-8, 10-12, 15-17, and 19-21, not argued separately. B. Claim 22 Appellants argue that Wikipedia fails to teach or suggest the claimed limitation, "when the match occurs and the remote controller is in the learning mode, send a predetermined command list contained in the configuration data to the remote controller through the transceiver of the apparatus, wherein the predetermined command list includes a plurality of commands for controlling the apparatus," as recited in independent claim 22. Appeal Br. 24. More specifically, similar to Appellants' arguments regarding independent claims 1, 14, and 18, Appellants argue that Wikipedia fails to teach or suggest sending a command list from the PS3 to the PSP. Appeal Br. 26. Additionally, Appellants argue that the Examiner concedes that Wikipedia fails to expressly teach a processor configured to determine whether a remote control is in a learning mode, and further fails to cite any prior art references that teach or suggest the aforementioned feature. Id. Regarding Appellants' argument that Wikipedia fails to teach or suggest sending a command list from the PS3 to the PSP, we do not find this argument persuasive for the reasons described above with respect to independent claims 1, 14, and 18. Regarding Appellants' argument that Wikipedia fails to teach or suggest a "learning mode," we do not find this argument persuasive either. Appellants' Specification describes an embodiment where, in a "learning mode," a remote control receives a command list from a controlled device. Spec. i-f 30. Thus, under the 6 Appeal2014-003915 Application 12/051,618 broadest reasonable interpretation in light of Appellants' Specification, a "learning mode" can be a mode where a remote controller receives data from a controlled device. We agree with the Examiner that Wikipedia teaches that the PSP employs a mode (characterized by the Examiner as a "listening mode") where the PSP receives data (i.e., the audio/video stream) from the PS3. Ans. 4. Thus, we agree that Wikipedia teaches the claimed "learning mode." Accordingly, we sustain the Examiner's rejection of claim 22. C. Claim 13 3 Appellants argue that the combination of Rosenberg, Wikipedia, Wilson, and Wilson798 fails to teach or suggest the claimed limitations, "determine an amount of acceleration from the accelerometer data," and "adjust a level of the first command based on the amount of acceleration," as recited in claim 13. Appeal Br. 26-27. More specifically, Appellants argue Wilson merely discusses a matching process that compares gestures in terms of speed and amplitude to match a sequence to a command, and, thus: (a) Wilson teaches determining speed, not acceleration, and one of ordinary skill in the art would appreciate that acceleration is different from speed; and (b) Wilson fails to teach or suggest anything about a level of a command, much less about adjusting a level of the command based on an amount of 3 Claim 13 recites "the accelerometer data." However, there is no antecedent basis for "accelerometer data." We find that one of ordinary skill in the art would understand "the accelerometer data" to be the "accelerometer information" from independent claim 1. Should there be further prosecution of claim 13, Appellants may wish to amend the claim to clarify. Similar antecedent basis issues appear in claims 11, 16-17, and 20- 21. 7 Appeal2014-003915 Application 12/051,618 acceleration. Appeal Br. 27 n.2. We are persuaded by these arguments. Accordingly, we do not sustain the Examiner's rejection of claim 13. D. Claim 23 Appellants argue that the combination of Rosenberg, Wikipedia, Wilson, and Wilson798 fails to teach or suggest the claimed limitations, "select a second selected device from the plurality of controlled devices" and "receive a second predetermined command list from the second selected device through the receiver, wherein the second predetermined command list is different from the first predetermined command list," as recited in claim 23. Appeal Br. 27. More specifically, Appellants argue that: (a) Rosenberg merely discusses storing functionality information about other electronic devices in a local memory; (b) Rosenberg fails to suggest that a data file from a source electronic file contains anything about "a second predetermined command list," much less suggest that a second predetermined command list is received from a second selected device; and (c) the combination of Rosenberg, Wikipedia, Wilson, and Wilson798 fails to suggest "a first predetermined command list," much less a "second predetermined command list." Appeal Br. 29; Reply Br. 6. We do not find Appellants' arguments persuasive. We agree with the Examiner that Rosenberg teaches selecting a desired device from a plurality of devices. Final Act. 15; Ans. 5. Selecting a second selected device from the plurality of devices is merely a repetition of the known selection functionality disclosed in Rosenberg and is not, therefore, a patentable distinction. See In re Harza, 274 F.2d 669, 671(CCPA1960) (holding that that the mere duplication of parts has no patentable significance unless a 8 Appeal2014-003915 Application 12/051,618 new and unexpected result is produced). Thus, we agree that the claimed limitation "select a second selected device from the plurality of controlled devices" would have been obvious to one of ordinary skill in the art at the time of the invention, in light of the combination of Rosenberg, Wikipedia, Wilson, and Wilson798. Final Act. 15. Further, as described above with respect to independent claims 1, 14, and 18, we agree with the Examiner that Wikipedia teaches receiving a predetermined command list. Final Act. 4; Ans. 2 (citing Wikipedia 1 ). Receiving a second predetermined command list is merely the repetition of the receiving functionality disclosed in Wikipedia with a different command list. Thus, we agree that the claimed limitation "receive a second predetermined command list from the second selected device through the receiver, wherein the second predetermined command list is different from the first predetermined command list," would also have been obvious to one of ordinary skill in the art, at the time the claimed invention was made, in light of the combination of Rosenberg, Wikipedia, Wilson, and Wilson798. Final Act. 15-16. Accordingly, we sustain the Examiner's rejection of claim 23. DECISION We affirm the Examiner's rejections of claims 1-5, 7-8, 10-12, and 14--23 under 35 U.S.C. Â§ 103(a). We reverse the Examiner's rejection of claim 13 under 35 U.S.C. Â§ 103(a). 9 Appeal2014-003915 Application 12/051,618 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 10