Ex Parte Haughawout et alDownload PDFPatent Trial and Appeal BoardMar 30, 201712974231 (P.T.A.B. Mar. 30, 2017) Copy Citation 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. 12/974,231 12/21/2010 Joseph Lee Haughawout 81230.143US2 3321 34018 7590 04/03/2017 GREENBERG TRAURIG, LLP 77 WEST WACKER DRIVE SUITE 3100 CHICAGO, IL 60601-1732 EXAMINER YANG, JAMES J ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 04/03/2017 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): j arosikg @ gtlaw .com chiipmail @ gtlaw .com escobedot@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH LEE HAUGHAWOUT, ARSHAM HATAMBEIKI, PAUL OGAZ, and JEFFREY KOHANEK Appeal 2016-0084751 Application 12/974,231 Technology Center 2600 Before JOHN A. EVANS, SCOTT E. BAIN, and ALEX S. YAP, Administrative Patent Judges. YAP, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1—6, 8, 9, 12—18, 20, 21, and 24, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b) We reverse. 1 According to Appellants, the real party in interest is Universal Electronics Inc. (App. Br. 2.) Appeal 2016-008475 Application 12/974,231 STATEMENT OF THE CASE Introduction Appellants’ invention “relates generally to remote control systems and, more particularly, to a system and method for setting up and configuring a universal remote control to command functions of one or more types of remotely controllable appliances of one or more manufacturers.” (December 21, 2010 Specification (“Spec.”) 1.) Claim 1 is illustrative, and is reproduced below: 1. A method for providing interactive instructions to a user to set up a controlling device used to command a controllable appliance, the method comprising: provisioning to a first appliance, wherein the first appliance has an associated display, programming for displaying on the display instructions for setting up the controlling device to command operations of a corresponding plurality of controllable appliances; receiving at the first appliance from the controlling device a series of communications, wherein the series of communications function to indicate to the programming a selection of a device type and a brand of at least one controllable appliance of the plurality of controllable appliances for which the controlling device is desired to be setup to command; and in response to the programming determining that the series of communications has resulted in a completion of the selection of the device type and the brand of the at least one controllable appliance of the plurality of controllable appliances for which the controlling device is desired to be setup to command, causing the programming to display in the display at least one suggested setup sequence comprised of a plurality of digit keys which will need to be activated on the controlling device to thereby setup the controlling device to command operations of the at least one controllable appliance of the plurality of appliances. 2 Appeal 2016-008475 Application 12/974,231 Prior Art and Rejections on Appeal The following table lists the prior art relied upon by the Examiner in rejecting the claims on appeal: Schultheiss O’Donnell et al. (“O’Donnell”) Claims 1, 2, 6, 8, 9, 12—14, 18, 20, 21, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over O’Donnell. (See Final Office Action (mailed Sept. 1, 2015) (“Final Act.”) 3—9.) Claims 3—5 and 15—17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over O’Donnell in view of Schultheiss. (See Final Act. 9-12.) US 6,208,384 B1 Mar. 27, 2001 US 6,650,248 B1 Nov. 18, 2003 ANAFYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We are persuaded that the Examiner erred in rejecting the claims on appeal. With respect to claim 1, the claim recites “display in the display at least one suggested setup sequence comprised of a plurality of digit keys which will need to be activated on the controlling device to thereby setup the controlling device.” The Examiner finds column 2, lines 45—62 of O’Donnell teaches or suggests the limitation at issue. According to the Examiner: Once the brand and type have been selected, the user may be prompted to test sub-codes, and in the example step 16, available formats are tested. The user presses the indicated key to determine if the device responds, and in response to a correct 3 Appeal 2016-008475 Application 12/974,231 code, the user is prompted to press and hold the same key. One of ordinary skill in the art would recognize that the multiple formats with corresponding button presses indicates a setup sequence. (Final Act. 4; Ans. 3; see also O’Donnell, 2:45—62.) Appellants contend that “O’Donnell does not describe a system that causes a display of a suggested setup code, i.e., a sequence comprised of plurality of digit keys which will need to be activated on the controlling device.” (App. Br. 5, emphasis omitted.) Specifically, Appellants contend O’Donnell does not teach or suggest a sequence comprised of plurality of digit keys, which will need to be activated on the controlling device to thereby setup the controlling device. {Id. at 5—6). In other words, the pressing of keys on the remote for testing is not the plurality of digit keys, which will need to be activated on the controlling device for setting up the controlling device. We agree with Appellants that the portions of O’Donnell cited by the Examiner do not teach or suggest the limitation at issue. Figure 5 of the Specification is reproduced below. 4 Appeal 2016-008475 Application 12/974,231 Figure 5 “illustrate[s] the system of Figure 1 at various stages during initial setup of the exemplary universal remote control.” (Spec. 4.) As discussed in Figure 7 of the Specification, the user “enters [the] device code number [(e.g., 20060)] using [the] numeric pad” of remote control 100. (Spec., Fig. 7.) “Upon entry of the final digit of the sequence, remote control 100: / c I on figures itself to transmit commands in the indicated infrared command format in response to actuation of function keys 206, 208, 210, etc.” (Spec. 10 , emphasis added.) The user can then proceed to test whether remote control 100 is set up properly. {Id. at 11; Fig. 7.) The claim limitation requires, that the sequence comprising of plurality of digit keys “be activated on the controlling device to thereby setup the controlling device.” (Emphases added.) Reading the claims in view of the Specification, discussed above, we do not find the pressing of keys on the remote to test whether the selected device code is correct as corresponding to “a plurality of digit keys which will need to be activated on the controlling device to thereby setup the controlling device” as claimed. In our view, the controlling device is setup by the sequence comprised of a plurality of digit keys prior to the testing of the remote control. For the foregoing reasons, we are persuaded of Examiner error in the rejection of claim 1 and do not sustain the 35 U.S.C. § 103 rejection of claim l.2 Independent claim 13 contains a similar limitation at issue and the Examiner cites to the same passages of O’Donnell for the limitation and 2 Because we do not sustain the Examiner’s rejection for the reasons discussed herein, we need not address Appellants’ further arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”). 5 Appeal 2016-008475 Application 12/974,231 makes similar findings. (Final Act. 7—8.) Thus, for the same reason, we do not sustain the 35 U.S.C. § 103 rejection of independent claim 13, as well as claims 2—6, 8, 9, 12, 14—18, 20, 21, and 24, which depend from either independent claim 1 or 13. DECISION The decision of the Examiner to reject claims 1—6, 8, 9, 12—18, 20, 21, and 24 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation