Ex Parte Hayes et al

Patent Trial and Appeal Board

Sep 26, 2012

11088694 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte PATRICK H. HAYES, STEVE LANPING HUANG,
WEIDONG WILLIAM WANG, HAN-SHENG YUH,
JONATHAN CHRISTIAN LIM, and JOYCE M. PRESSEAU
____________________

Appeal 2010-004657
Application 11/088,694
Technology Center 2100
____________________

Before: MAHSHID D. SAADAT, ERIC S. FRAHM, and TREVOR M.
JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
10 and 25-35. Claims 11-24 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a system and method for using a mark-up
language page to command an appliance through a browser application in a
hand held device. Spec. Abstract. Claims 1, reproduced below with disputed
limitations in italics, is illustrative of the claimed subject matter:
1. A computer-readable media having computer executable
instructions for displaying information in a display, the
instructions performing steps comprising:
retrieving a mark-up language formatted page having an
first embedded mark-up language formatted page tag
comprised of a first field containing first information indicative
of a command code to be transmitted upon activation of a first
hyperlink displayed on the display and a second embedded
mark-up language formatted page tag comprised of an address
for an Internet network server for use in retrieving a further
mark-up language formatted page upon activation of a second
hyperlink displayed on the display;
using a browser application to display the mark-up
language formatted page including the first hyperlink and the
second hyperlink in the display;
determining if either the first hyperlink or the second
hyperlink has been activated; and
if the first hyperlink has been activated causing the
browser application to send to a transmission application a
command message that includes the first information in the first
field to thereby initiate a transmission of the command code to
a consumer appliance and if the second hyperlink has been
activated causing the browser application to send a command
message that includes the address for the Internet network
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server to thereby initiate a retrieval of the further mark-up
language formatted page from the Internet network server.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mitani
Beezer
Allport
US 6,466,233 B1
US 6,826,725 B1
WO 99/34564
Oct. 15, 2002
Nov. 30, 2004
Jul. 8, 1999

REJECTIONS
The Examiner made the following rejections:
Claims 1-10 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Mitani and Beezer. Ans. 3-8.
Claims 25-35 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Mitani and Allport. Ans. 8-13.
Appellants argue the rejection of claims 1-10 as a group and
separately argue the rejection of claims 25-35 as a group. We select claim 1
as representative and claims 2-10 stand or fall with claim 1. Similarly, we
select claim 25 as representative and claims 26-35 stand or fall with claim
25.
ISSUES
Does Mitani in combination with Beezer suggest or disclose “a first
field containing first information indicative of a command code to be
transmitted upon activation of a first hyperlink displayed on the display” or
“if the first hyperlink has been activated causing the browser application to
send to a transmission application a command message that includes the first
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information in the first field to thereby initiate a transmission of the
command code to a consumer appliance,” as required in claim 1?
Does the combination of Allport with Mitani in the rejection of claim
25 alter the principle by which the system of Mitani operates such that it
rebuts the Examiner’s prima facie case of obviousness or that Allport
teaches away from their combination?

ANALYSIS
Independent Claim 1
With respect to claim 1, Appellants contend that Mitani does not
disclose “any information being included in a tag that is embedded in a
mark-up language formatted page” or “information indicative of a command
code to be transmitted upon activation of a first hyperlink.” App. Br. 7
(emphasis omitted). Furthermore, Mitani does not “describe a browser
application sending to a transmission application a command message that
includes information read from a field of a tag that is embedded in a mark-
up language page to thereby initiate a transmission of a command code to a
consumer appliance. App. Br. 7.
Appellants contend that “Mitani discloses a touch screen remote
control that operates in the manner of a conventional touch screen remote
control … that does not and need not have command code information
included as a component part.” App. Br. 7-8 (emphasis omitted). Because it
operates as a conventional remote, Mitani merely shows that the “operation
detection signal” received by the CPU when a user touches part of the
display screen merely indicates that a part of the screen has been touched
and does not refer to a command code information being embedded in
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HTML page tags or links included in the “‘operational detection signal’ that
is received by the CPU.” App. Br. 8-9. Appellants contend this touch
screen activation and signal is different than the operation detection signal
that is provided to the CPU from activation of buttons or jog dials disclosed
in Mitani. App. Br. 9.
The Examiner responds that Mitani discloses a browser to display
mark-up formatted language that operates to control remote devices. Ans.
13. The Examiner found that this mark-up language formatted page
included information indicative of a command code that is detected when
activation of a link results in transmission of a command code to control a
remote device. Ans. 14 (citing Mitani col. 2 ll. 26-29). The Examiner
further argues that Mitani alternatively reads on the limitation “if the first
hyperlink has been activated causing the browser application to send to a
transmission application a command message that includes the first
information in the first field to thereby initiate a transmission of the
command code to a consumer appliance” when the user interacts with the
touchscreen and selects a location that causes the CPU to read a command
and transmit the command to the appliance. Ans. 15-16.
We have reviewed Appellants’ contentions in light of the Examiner’s
rejection and response and we agree with the Examiner. Mitani expressly
states that “the graphical-user-interface data include command codes for
controlling the electronic devices, and the command codes correspond to
control buttons displayed as the graphical user interfaces.” Mitani, col. 2 ll.
26-29; see also Ans. 14. Thus we agree with the Examiner that the
“graphical user interfaces (GUIs) supplied from the electronic devices in the
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form of hypertext markup language (HTML)” includes command codes.
Mitani, col. 1, ll. 57-58, col. 5, ll. 8-10.
We agree with the Examiner that Mitani discloses command codes
being activated by the selection of touch screen GUIs. See Ans. 14, 15. The
interface in Mitani provides a GUI in HTML with included commands
(Mitani, col. 2 ll. 26-29) that upon activation of a link displayed in the
display panel via the browser, transmits a code to control a remote device
(Mitani col. 7, ll. 5-12). Further, touching a graphical interface button is
detected and the CPU reads a command code (included in the GUI data) that
corresponds to the graphical interface button. Ans. 14 (citing Mitani col. 7,
ll. 5-12). Accordingly, we find no support in Mitani for Appellants’
assertion that activating a graphical interface button is merely the detection
of a particular location on the touch screen (App. Br. 8), or that command
code information is not included in the component of the GUI (App. Br. 9).
Appellants also assert that because Mitani does not use the terms
“tag,” “embedded” or “hyperlink” in its Specification it cannot disclose the
limitations of claim 1. App. Br. 7. We disagree with Appellants. In the
present case, Mitani expressly discusses HTML, a term that Appellants’
Specification uses throughout to refer to data that is tagged (Spec. 30:3-4),
embedded (Spec. 45:7) or hyperlinked (Spec. 39:25). Indeed, Appellants do
not dispute the Examiner’s definition that HTML is an abbreviation of
Hypertext Markup Language in computer science. Ans. 14.
Contrary to Appellants’ position, it is not a question of whether Mitani
in combination with Beezer or Allport inherently discloses the disputed
claim limitations. See Reply Br. 2-4; see also In re Napier, 55 F.3d 610, 613
(Fed. Cir. 1995) (stating that “[t]he inherent teaching of a prior art reference,
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a question of fact, arises both in the context of anticipation and
obviousness.”). A determination of obviousness does not require the
claimed invention to be expressly suggested by any one or all of the
references. See e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here,
applying the broadest reasonable interpretation of the claims, we find that
the references in Mitani to HTML GUIs with command codes included for
browser application encompass Appellants’ use of tag, embed and hyperlink,
as found in claim 1.
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C §103(a) of claim 1 over Mitani and Beezer.

Claim 25 – Allport in Combination with Mitani
Appellants contend that combining the teachings of Allport with
Mitani would replace the command codes in Mitani with the command
codes provided in Allport. App. Br. 11. To do so, Appellants argue, would
“change[] the very principle by which the system of Mitani is intended to
operate and cannot be said to support a prima facie case of obviousness.”
App. Br. 11 (citing MPEP § 2143.01 (VI)).
We disagree with Appellants. The Supreme Court in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007), rejected the rigid requirement of a
teaching or suggestion or motivation to combine known elements in order to
show obviousness. Id. at 415. The Court noted that an obviousness analysis
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418. The Examiner has provided an articulated line of reasoning with a
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rational underpinning to support the conclusion of obviousness with respect
to the proposed combination of Allport and Mitani to maintain a prima facie
case of obviousness. Ans. 17 (stating that Mitani and Allport “both teach a
system and method for remote control of consumer appliances”).
Finally, to the extent that Appellants contend that the references teach
away from their combination, we note that Allport does not criticize or
discredit the Mitani approach; it merely offers a different solution to an
analogous problem. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(stating that prior art does not teach away from claimed subject matter
merely by disclosing a different solution to a similar problem unless the
prior art also criticizes, discredits, or otherwise discourages the solution
claimed); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (stating that “[a] reference does not teach away
[...] if it merely expresses a general preference for an alternative invention
but does not ‘criticize, discredit, or otherwise discourage’ investigation into
the invention claimed.”)(internal quotation omitted).
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C §103(a) of claim 25 over Mitani and Allport.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-10 as unpatentable
under 35 U.S.C §103(a) by concluding that Mitani and Beezer teaches or
suggests the claim 1 limitations requiring “a first field containing first
information indicative of a command code to be transmitted upon activation
of a first hyperlink displayed on the display” and that “if the first hyperlink
has been activated causing the browser application to send to a transmission
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application a command message that includes the first information in the
first field to thereby initiate a transmission of the command code to a
consumer appliance.”
The Examiner did not err in rejecting claims 25-35 as unpatentable
under 35 U.S.C §103(a) by providing sufficient motivation to combine
Mitani and Allport.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-10 and
25-35 are affirmed

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

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