Ex Parte Huang et al

Patent Trial and Appeal BoardMar 31, 2016

13027785 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/027,785 02/15/2011 Steve LanPing Huang 34018 7590 04/04/2016 GREENBERG TRAURIG, LLP 77 WEST WACKER DRIVE SUITE 3100 CHICAGO, IL 60601-1732 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. 81230.71US9 7463 EXAMINER PITARO,RYANF ART UNIT PAPER NUMBER 2171 NOTIFICATION DATE DELIVERY MODE 04/04/2016 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): 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 STEVE LANPING HUANG, CHERYL SCOTT, and WAYNE SCOTT Appeal2014-001814 Application 13/027,785 Technology Center 2100 Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and MARC S. HOFF, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1--4. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. STATEMENT OF THE CASE Appellants' invention is a handheld electronic device with a graphical user interface that can, among other things, set up an application to control appliances remotely and access favorites. See generally Abstract. Claim 1 is illustrative: 1. A non-transient, electronically readable media having embedded instructions executable by a processing device of a hand held device for displaying information to a user of Appeal2014-001814 Application 13/027,785 the hand held device, the instructions performing steps compnsmg: allowing a plurality of lists of media favorites to be defined for display in a display of the hand held device, wherein each of the plurality of lists of media favorites corresponds to a one of a plurality of appliance control modes of the hand held device; and accepting input into the hand held device that specifies to the hand held device that the hand held device is to be placed into a one of the plurality of appliance control modes of the hand held device to thereby allow the hand held device to be used to control at least one of a plurality of home appliances that has been associated with the one of the plurality of appliance control modes of the hand held device; and selecting a one of the plurality of lists of media favorites that corresponds to the one of a plurality of appliance control modes of the hand. held device whereby the user may interact with the one of the plurality of lists of media favorites when displayed in the display of the hand held device to cause the hand held device to transmit one or more command codes to the at least one of the plurality of home appliances that has been associated with the one of the plurality of appliance control modes of the hand held device for f the purpose of causing the at least one of the plurality of home appliances to initiate a rendering of a media favorite represented on the displayed one of the plurality of lists of media favorites. THE REJECTIONS The Examiner rejected claim 1under35 U.S.C. Â§ 103(a) as unpatentable over Baker (US 6,597,374 Bl; issued July 22, 2003; filed Nov. 12, 1998), Knudson (US 7,254,823 B2; issued Aug. 7, 2007; eff. filed Aug. 2 Appeal2014-001814 Application 13/027,785 17, 1999), and Dubil (US 6748,462 B2; issued June 8, 2004; filed Dec. 20, 2001 ). Final Act. 2-5. 1 The Examiner rejected claims 2--4 under 35 U.S.C. Â§ 103(a) as unpatentable over Baker, Knudson, Dubil, and Candelore (US 2002/0104081 Al; pub. Aug. 1, 2002; filed Dec. 4, 2000). Final Act. 5---6. RELATED APPEAL As Appellants indicate (App. Br. 2), this appeal is related to an appeal filed in related U.S. Application 10/288,727 where another panel of this Board reversed the Examiner's obviousness rejections over prior art references different from those at issue in this appeal. See Ex parte Dresti, No. 2009-004828 (BPAI May 17, 2010). In short, the issues in the related appeal are not germane to those before us in the present appeal. THE REJECTION OVER BAKER, KNUDSON, AND DUBIL The Examiner finds that Baker discloses many recited elements of claim 1 including allowing a list of media favorites to be defined for display on a handheld device, namely by the user adding new channels to a favorite list in Figures 7 a to 7 c. Final Act. 2-3. Although the Examiner acknowledges that Baker lacks plural lists, the Examiner cites Knudson's preference profile functionality in Figure 16 that stores lists of favorite channels for different users, respectively. Final Act. 3; Ans. 2. Although 1 Throughout this opinion, we refer to (1) the Final Rejection mailed December 17, 2012 ("Final Act."); (2) the Appeal Brief filed June 11, 2013 ("App. Br."); (3) the Examiner's Answer mailed October 9, 2013 ("Ans."); and (4) the Reply Brief filed November 20, 2013 ("Reply Br."). 3 Appeal2014-001814 Application 13/027,785 the Examiner acknowledges that the lists of the Baker/Knudson system are associated with users-not appliance control modes-the Examiner nevertheless cites Dubil' s Figure 4 for teaching such an association, namely by associating lists of presets to various activity-based control modes. Final Act. 4; Ans. 2-3. In light of these collective teachings, the Examiner concludes that it would have been obvious to include a list of favorite channels in Dubil's mode-based presets and, therefore, each such favorite list corresponds to an appliance control mode as claimed. Final Act. 4--5; Ans. 2--4. Appellants argue, among other things, that Dubil' s preset list is not a list of media favorites, let alone a selectable such list, but rather is a list of executable commands associated with respective activities that, when executed, place system components in a particular state. App. Br. 4--7; Reply Br. 2-3. As such, Appellants contend, the Examiner's position that different channels could be presented in different modes is based on impermissible hindsight reasoning using knowledge gleaned only from Appellants' disclosure. App. Br. 7; Reply Br. 3--4. ISSUES (1) Under Â§ 103, has the Examiner erred in rejecting claim 1 by finding that Baker, Knudson, and Dubil collectively would have taught or suggested allowing plural lists of media favorites to be defined in a handheld device display, where each list corresponds to one of plural appliance control modes of the device? 4 Appeal2014-001814 Application 13/027,785 (2) ls the Examiner's combining the teachings of these references supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion? ANALYSIS We begin by noting that the present application is a continuation of Application 11/340,442, filed January 26, 2006, which is a divisional of Application 10/288,727, filed November 6, 2002. The '727 application claims benefit of two U.S. provisional applications, namely (1) Application 60/344,020, filed December 20, 2001, and (2) Application 60/334,774, filed November 20, 2001. Appellants have not contested whether the references cited in the Examiner's rejections qualify as prior art. We note, however, that the Dubil patent's underlying application was filed on December 20, 2001: the same day that Appellants' '020 provisional application was filed, and after the filing of Appellants' '774 provisional application. Therefore, if these provisional applications adequately provide (1) a written description of the subject matter of Appellants' claimed invention, and (2) an enabling disclosure to permit ordinarily skilled artisans to make and use the claimed invention, then Appellants would be entitled to the filing dates of those provisional applications and, consequently, Dubil would not qualify as prior art. See New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002); see also Manual of Patent Examining Procedure (MPEP) Â§Â§ 211.05(I)(A), 706.02(VI)(C). But there has been no such entitlement shown on this record, nor will we presume as much, for we have no basis on this record for doing so. See 5 Appeal2014-001814 Application 13/027,785 Dynamic Drinkware, LLC v. Nat'! Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) ("[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application."). Accordingly, we presume that Dubil qualifies as prior art-a fact that is undisputed. Turning to the rejection, we see no error in the Examiner's position that, in light of Knudson's storing favorite channel lists for particular users in Figure 16, it would have been obvious to include a list of favorite channels (i.e., "media favorites") in connection with Dubil's mode-based presets 405 in Figure 4 such that each such favorite list corresponds to an appliance control mode. Final Act. 4--5; Ans. 2--4. Leaving aside Dubil's exemplary and permissive language in connection with these presets, 2 we see no reason why they could not include channel-based functionality involving lists of users' favorite channels, even if the presets were limited to executable commands as Appellants seem to suggest. See App. Br. 5-7; Reply Br. 2-3. That is, we see no reason why functionality associated with a list of favorite channels could not be provided in lieu of, or in addition to, the particular commands associated with Dubil' s appliance control modes which include the "Watch TV" activity and its respective "News" and "Sports" genres as the Examiner indicates. See Ans. 3. As the Examiner explains, 2 See, e.g., Dubil, col. 5, 11. 31-34 ("[P]resets 405 may include,for example, a sequence of commands that are communicated to the individual components of the system to effect the indicated activity set.") (emphasis added). 6 Appeal2014-001814 Application 13/027,785 such a modification would, among other things, present those channels corresponding to a particular user's favorites in a particular appliance control mode. Id. Notably, under the Examiner's proposed modification, Dubil's channel-based presets could still be associated with executable commands such as those indicated in column 5, lines 38 to 67, or even commands to (1) operate a favorite key (Ans. 4), or (2) tune to a specific channel within a particular user's favorites for a particular preset-all of which yield predictable results. To the extent that Appellants contend that the Baker/Knudson/Dubil system is incapable of such command-based functionality under the Examiner's proposed modification, no persuasive evidence has been provided on this record to prove such incapability. Appellants' arguments regarding Dubil's individual shortcomings pertaining to its command-based preset functionalty (App. Br. 5-7; Reply Br. 2-3) do not show nonobviousness where, as here, the rejection is not based on Dubil alone, but rather the cited references' collective teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner's proposed combination, then, is not the result of impermissible hindsight as Appellants contend (App. Br. 7; Reply Br. 3--4), but rather uses prior art elements predictably according to their established functions-an obvious improvement. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). We, therefore, find that the Examiner's proposed combination is supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion. Accordingly, we are not persuaded that the Examiner erred in rejecting claim 1. 7 Appeal2014-001814 Application 13/027,785 THE OTHER OBVIOUSNESS REJECTION We also sustain the Examiner's obviousness rejection of claims 2--4 over Baker, Knudson, Dubil, and Candelore. Final Act. 5---6. Appellants present no arguments pertaining to this rejection. See App. Br. 4--7; Reply Br. 2-3. Nevertheless, to the extent that Appellants' earlier arguments pertain to this rejection, we are not persuaded by these arguments for the reasons previously discussed. CONCLUSION The Examiner did not err in rejecting claims 1--4 underÂ§ 103. DECISION The Examiner's decision rejecting claims 1--4 is affirmed. 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 8