Ex Parte Hardacker et al

Patent Trial and Appeal Board

Sep 30, 2013

11970858 (P.T.A.B. Sep. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT HARDACKER, ROLF TOFT, and
RYUICHI IWAMURA
____________________

Appeal 2012-007118
Application 11/970,8581
Technology Center 2400
____________________

Before THU A. DANG, JAMES R. HUGHES, and
JEFFREY S. SMITH, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed January 8, 2008, claiming benefit of U.S. Patent
Application No. 11/726,560 filed March 22, 2007. The real party in interest
is Sony Corp. and Sony Electronics, Inc.
Appeal 2012-007118
Application 11/970,858

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 2, and 4-20. Claim 3 was canceled. (App.
Br. 2.)2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Related Appeal
This appeal is related to Appeal No. 2012-004488 corresponding to
U.S. Patent Application No. 11/726,560 (App. Br. 2) that has been decided.
See Ex parte Hardacker, No. 2012-004488 (non-precedential) (reversing
Examiner’s anticipation rejection), available at
http://efoia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd201200448
8-08-30-2013-1.
Appellants’ Invention
The invention at issue on appeal concerns remote controls, systems,
and methods for facilitating simultaneous control of multiple devices.
(Spec. 1-4; Abstract.)
Representative Claim
Independent claim 1, reproduced below, with disputed limitations
italicized, further illustrates the invention:
1. A system, comprising:
at least one TV;

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed December 22, 2011; and Reply Brief (“Reply Br.”) filed March 26,
2012. We also refer to the Examiner’s Answer (“Ans.”) mailed February 29,
2012.
Appeal 2012-007118
Application 11/970,858

3

at least one remote control configured for communicating
with the TV;
at least one component configured for communicating
with the TV to cause the TV to display at least video
information from the component and/or to cause the component
to display at least audio information from the TV; and
at least one mode element on the remote control, the
remote control sending at least one command to the TV and at
least one command to the component in response to a single
manipulation of the mode element, the command being
established at least in part based on information from the TV,
the information from the TV that is used to establish the
commands being received by the TV over the internet from a
server and/or a server database, the commands being
established at least in part by identifying at least the component
using device information conveyed on a high definition
multimedia interface (HDMI) link between the TV and the
component, wherein device information from one or more
connected devices communicating with the TV is conveyed to
the TV on the HDMI link in consumer electronics control
(CEC) protocol, the device information including functions of
various buttons on the remote control pertaining to a
component sending the device information along with signaling
methods, or the device information including identifying
information that divulges at least type, model number,
manufacturer of the component sending the device information.
Rejections on Appeal3
1. The Examiner rejects claims 1, 2, and 4-6 under 35 U.S.C.
§ 103(a) as being unpatentable over U.S. Patent App. Pub. No.

3 Appellants do not appeal the provisional non-statutory obviousness-type
double patenting rejection of claim 1 over co-pending U.S. Application
No. 11/726,560 in view of Woolgar and Day (Final Rejection, 3-6). (See
App. Br. 2). Accordingly, we summarily affirm the provisional non-
statutory obviousness-type double patenting rejection of claim 1.
Appeal 2012-007118
Application 11/970,858

4

2004/0070491 A1, published Apr. 15, 2004 (“Huang”); U.S. Patent App.
Pub. No. 2005/0168658 A1, published Aug. 4, 2005 (“Woolgar”); and U.S.
Patent No. 7,893,941 B2, issued Feb. 22, 2011 (filed Sep. 15, 2006) (“Day”).
2. The Examiner rejects claims 7-14 under 35 U.S.C. § 103(a) as
being unpatentable over Huang, Woolgar, and U.S. Patent App. Pub. No.
2008/0001773 A1, published Jan. 3, 2008 (filed Oct. 25, 2006) (“Rye”).
3. The Examiner rejects claims 15-20 under 35 U.S.C. § 103(a) as
being unpatentable over Huang, Woolgar, and U.S. Patent App. Pub. No.
2005/0231414 A1, published Oct. 20, 2005 (“Chu”).

ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follow:
1. Does the Examiner err in concluding that the combination of
Huang, Woolgar, and Day teaches or would have suggested “at least one
mode element on the remote control, the remote control sending at least one
command to the TV and at least one command to the component in response
to a single manipulation of the mode element, the command being
established at least in part based on information from the TV” as recited in
claim 1 and the commensurate limitation of claim 15?
2. Does the Examiner err in concluding that Huang, Woolgar, and
Day are properly combinable, and the combination of Huang, Woolgar, and
Day teaches or would have suggested:
wherein device information from one or more connected
devices communicating with the TV is conveyed to the TV on
the HDMI link in consumer electronics control (CEC) protocol,
Appeal 2012-007118
Application 11/970,858

5

the device information including functions of various buttons
on the remote control pertaining to a component sending the
device information along with signaling methods, or the device
information including identifying information that divulges at
least type, model number, manufacturer of the component
sending the device information
as recited in claim 1?
3. Does the Examiner err in concluding that Huang, Woolgar, and
Rye are properly combinable, and the combination of Huang, Woolgar, and
Rye teaches or would have suggested “a remote control device, wherein the
control information includes a suggested default configuration which is a
reduced function configuration for each connected device as well as control
codes” as recited in claim 7?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed November 18, 2011 as our own, except as to those findings
that we expressly overturn or set aside in the Analysis that follows.

ANALYSIS
Based on Appellants’ arguments (App. Br. 5-9), we select
independent claims 1 and 7 as representative of Appellants’ arguments and
groupings with respect to claims 1, 2, and 4-20. 37 C.F.R. § 41.37(c)(1)(vii)
(2004).4

4 See also MPEP Rev. 8, July 2010. Note: In the instant appeal, Appellants
filed a Notice of Appeal on December 22, 2011. The date of filing of the
Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004

Appeal 2012-007118
Application 11/970,858

6

Claim 1 – Huang
Appellants initially contend that Huang does not teach or suggest the
disputed features recited in claim 1. (App. Br. 5-7; Reply Br. 1-6.)
Specifically, Appellants contend that “[c]laim 1 specifically requires that the
remote control send at least one command to the TV and at least one
command to the component in response to a single manipulation of the
mode element and Huang utterly fails to teach or suggest” this feature.
(App. Br. 5.) In particular, Appellants contend that Huang does not teach
“controlling two separate components with a single key press.” (App. Br.
5.) Appellants further contend that Huang’s “home theater” and “room”
modes (App. Br. 6) and Huang’s “macros” (Reply Br. 3-6) do not teach this
feature and the Examiner’s citation to the Dresti reference (U.S. Patent
Application Publication No. 2003/0103088 A1) (Ans. 23) is improper.
(App. Br. 6; Reply Br. 3-6.)
The Examiner sets forth a detailed explanation of the obviousness
rejections in the Examiner’s Answer with respect to each of the claims (Ans.
5-30), and, in particular, the rejection of claim 1 (Ans. 5-9, 20-26).
Specifically, the Examiner provides a detailed explanation with respect to
Huang’s description of controlling multiple appliances in a “home theater”
or “room” mode, assigning appliances to various modes and keys of the
remote control, user programming of remote control keys, assigning related
variable functions to a single designator, and user created macro
instructions. (Ans. 6, 22-23 (citing Huang, ¶¶ [0029]-[0033], [0048]-[0051],

version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal.
Appeal 2012-007118
Application 11/970,858

7

[0065]-[0068], [0098]; Figs. 9 and 12).) The Examiner further explains that
Huang is a continuation-in-part of the Dresti reference, which describes
configuring macros to control multiple appliances using a sequence of
commands by pressing a single button. (Ans. 23 (citing Dresti, ¶¶ [0161]-
[0167]; Fig. 16).) From these findings, the Examiner concludes that Huang
would have taught or suggested the disputed features of Appellants’ claim 1.
(Ans. 5-9, 20-26.) We adopt these findings and this reasoning as our own.
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings and conclusions that Huang would
have taught or suggested the disputed features of claim 1. Accordingly, we
sustain the Examiner’s rejection of claim 1 for the reasons set forth in the
Answer, which we incorporate herein by reference. (Ans. 5-9, 20-26.) Our
additional analysis will be limited to the following points of emphasis.
We initially note that the argued limitation fails to distinguish the
claimed invention from the prior art either structurally or functionally.
Specifically, the recited feature argued by Appellants – that the “at least one
mode element” of the remote control transmit (send) “at least one command
to the TV and at least one command to the component in response to a single
manipulation of the mode element ” is essentially a statement of intended
use of the mode element (i.e., remote control button) which “usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003).
Appeal 2012-007118
Application 11/970,858

8

Even if we arguendo ascribe some patentable weight to the limitation,
as explained by the Examiner (Ans. 22-23), Huang describes controlling
multiple appliances in a “home theater” or “room” mode, as well as user
programming of remote control keys, assigning appliances to various remote
control modes, creating macros, and assigning related variable functions to a
single designator. (See Huang, ¶¶ [0030], [0031], [0048], [0049], [0068],
and [0098].) Further, as explained by the Examiner (Ans. 23), it is known in
the prior art to use macros to control multiple appliances using a sequence of
commands by pressing a single button, as demonstrated by Dresti (¶¶[0161]-
[0167]). Thus, we conclude, as the Examiner does, that Huang (as further
described in Dresti) would have at least suggested controlling multiple
components using a single remote control button press.
We find Appellants’ arguments against Dresti (Reply Br. 4-5)
unavailing of error. Dresti demonstrates that the control of multiple
components using the press of a single button is known in the art. Further,
Huang is a continuation-in-part of Dresti, and as such, is not a newly cited
reference or a new basis for rejection.
Claim 1 – Day
Appellants next contend that Day does not teach the recited features
of claim 1 (App. Br. 6-7; Reply Br. 5-6) and is not properly combinable with
Huang (and Woolgar) (Reply Br. 5-6). In particular, Appellants argue that
day doesn’t teach “device information exchanged over HDMI” which
includes “functions of various buttons on the remote control,” “or
identifying information” that includes (divulges) “at least type, model
number, [and] manufacturer of the component.” (App. Br. 6-7.) We
disagree.
Appeal 2012-007118
Application 11/970,858

9

We initially note that the argued limitations fail to distinguish the
claimed invention from the prior art either structurally or functionally.
Specifically, the recited features argued by Appellants – that the “device
information” exchanged over HDMI includes “functions of various buttons
on the remote control” or “identifying information” that further includes “at
least type, model number, manufacturer of the component” – essentially
consist of non-functional descriptive material – i.e., data. The content of the
various data – device information which further included remote button
functions or component identifying information – does not change the
structure or functionality of the claimed system. The recited structure
(HDMI interface connecting components and TV) and functionality
(“establish[ing]” commands, “identifying” the component (using device
information), “convey[ing]” device information (on an HDMI) link) remain
the same regardless of what the data constitutes, how the data may be
named, or the relationship among the data and do not further limit the
claimed invention either functionally or structurally.
The informational content of the data thus represents non-functional
descriptive material, which “does not lend patentability to an otherwise
unpatentable computer-implemented product or process.” Ex parte Nehls,
88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No.
2006-1003), aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in
databases and communicated on distributed network did not functionally
change either the data storage system or the communication system used in
the claimed method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
Appeal 2012-007118
Application 11/970,858

10

2004); Nehls, 88 USPQ2d at 1887-90 (discussing non-functional descriptive
material).
Even if we arguendo ascribe some patentable weight to the
limitations, as explained by the Examiner (Ans. 23-26), Day describes
providing “remote control functions” (col. 7, ll. 59-60) over an HDMI
interface according to the CEC protocol (Day, col. 7, l. 34 to col. 8, l. 17).
This disclosure would at least suggest “functions of various buttons on the
remote control.” Further, as explained by the Examiner, Woolgar, which is
not addressed by Appellants, teaches the recited “identifying information”
(Ans. 25-26). Because Appellants’ claim recites that the device information
includes either the remote control button functions or the “identifying
information,” Appellants’ arguments concerning Day are unpersuasive.
With respect to Appellants’ combinability arguments in the Reply
Brief (Reply Br. 5-6), these arguments are presented for the first time in the
Reply Brief. We deem the newly presented arguments to be waived. See Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“informative”) (absent
a showing of good cause, the Board is not required to address arguments in
the Reply Brief that could have been presented in the principal Brief).
Even so, we note that it would have been well with the skill of one
skilled in the art to combine such known techniques to provide remote
control data over an HDMI interface as taught by Day with known
techniques of data transmission across an HDMI interface as taught by
Huang (and Woolgar). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (“[I]f a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
Appeal 2012-007118
Application 11/970,858

11

application is beyond his or her skill” (citations omitted)). We are not
persuaded that combining the respective familiar elements of the cited
references in the manner proffered by the Examiner would have been
“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of Appellants’ invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Thus, Appellants do not persuade us of error in the Examiner’s
obvious rejection of representative independent claim 1, independent claim
15, or dependent claims 2, 4-6, and 16-20 not separately argued with
particularity (App. Br. 5-7, 9.) Accordingly, we affirm the Examiner’s
obviousness rejection of claims 1, 2, 4-6, and 15-20.
Claim 7
Appellants contend that Rye is not properly combinable with Huang
and Woolgar, Rye teaches away from Huang and Woolgar, and Rye does not
teach or suggest the disputed features recited in claim 7. (App. Br. 7-9;
Reply Br. 5-6.) Specifically, Appellants contend that “[w]hatever ‘reduced
functionality’ occurs in Rye is entirely defined by the user, not by any
information downloaded over the Internet. Rye thus leads one away from
downloading a pre-canned ‘reduced function configuration’” (App. Br. 8).
The Examiner sets forth a detailed explanation of the obviousness
rejection of claim 7 in the Examiner’s Answer. (Ans. 10-13, 26-29.)
Specifically, the Examiner provides a detailed explanation with respect to
Rye’s description of a “KidSafe” restrictive remote control operating mode
that provides a reduced function set. (Ans. 13, 29 (citing Rye, ¶ [0066]; Fig.
10).) The Examiner further provides a rationale for combining the
references (Ans. 13) and that Appellants improperly argue the individual
Appeal 2012-007118
Application 11/970,858

12

references (Ans. 27-29). We adopt these findings and this reasoning as our
own.
Accordingly, we sustain the Examiner’s rejection of claim 7 for the
reasons set forth in the Answer, which we incorporate herein by reference.
(Ans. 10-13, 26-29.) Our additional analysis will be limited to the following
points of emphasis.
Similar to claim 1 (supra), the argued limitation of claim 7 is directed
to non-functional descriptive material – the content of the “control
information” which includes “a suggested default configuration which is a
reduced function configuration,” which fails to distinguish the claimed
invention from the prior art either structurally or functionally. Even if we
arguendo ascribe some patentable weight to the limitations, as explained by
the Examiner (Ans. 29), Rye describes the recited information.
Further, we conclude that Rye is complimentary reference and does
not “teach away” from either the Huang or Woolgar references or
Appellants’ invention. The Examiner provides a rationale for combining the
references – “to provide the end user with greater control over system
functions, such as in the case of parental control (as Rye discusses in
Paragraph [0066])” (Ans. 13) – i.e., improved functionality. Therefore, the
Examiner has stated “some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S at 418 (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). Huang and Woolgar are both concerned
with remote control functionality, as is Rye. It is irrelevant that Rye
describes user programmability (as opposed to automatic program
downloads) and Huang describes downloading programming (see Ans. 27-
28). Specifically, it appears that Appellants fail to appreciate the teachings
Appeal 2012-007118
Application 11/970,858

13

of the combination of references. Appellants’ argument does not take into
account what the prior art would have suggested to one of ordinary skill in
the art – “The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
We further conclude that it would have been well with the skill of one
skilled in the art to combine such known techniques to provide a reduced
function set as taught by Rye in a remote control that downloads
programming as taught by Huang. See KSR, 550 U.S. at 417.
Thus, Appellants do not persuade us of error in the Examiner’s
obvious rejection of representative independent claim 7, or dependent claims
8-14 not separately argued with particularity (App. Br. 7-9.) Accordingly,
we affirm the Examiner’s obviousness rejection of claims 7-14.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1, 2, and 4-20 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1, 2, and 4-20.
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
llw