Ex Parte Haughawout et al

Patent Trial and Appeal Board

Mar 30, 2017

12974231 (P.T.A.B. Mar. 30, 2017)

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
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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.
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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”).
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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