Ex Parte Langer

Patent Trial and Appeal BoardNov 23, 2016

13706239 (P.T.A.B. Nov. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/706,239 12/05/2012 70336 7590 11/23/2016 Seed IP Law Group LLP/EchoStar (290110) 701 FIFTH A VENUE SUITE 5400 SEATTLE, WA 98104 FIRST NAMED INVENTOR Paul Langer 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. P2012-05-20/290110.554 7934 EXAMINER EUSTAQUIO, CAL J ART UNIT PAPER NUMBER 2683 MAILDATE DELIVERY MODE 11/23/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL LANGER Appeal2016-000733 Application 13/706,239 1 Technology Center 2600 Before STEPHEN C. SIU, JOYCE CRAIG, and ALEX S. YAP, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1, 2, and 4--20, which constitute of all the claims pending in this application. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 According to Appellant, the real party in interest is EchoStar Technologies L.L.C. App. Br. 1. 2 Claim 3 has been canceled. App. Br. 14. Appeal2016-000733 Application 13/706,239 fNVENTION Appellant's invention relates to detection of remote control for configuration of a universal remote. Abstract. Claim 1 is illustrative and reads as follows: 1. A method of programming a remote control, instructing a user to transmit an identifying signal from a first remote control; receiving the identifying signal from the first remote control; comparing the received identifying signal to a database of remote control signals; selecting a remote control programming code from the database based on the comparison of the received identifying signal and the database of remote control signals; displaying the selected remote control programming code on a display; and programming a second remote control with the remote control programming code. REJECTIONS Claims 1, 2, 4--9, and 11-20 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Drimusz et al. (US 2008/0174467 A 1; published July 24, 2008) ("Drimusz") and Kohanek (US 2012/0212680 Al; published Aug. 23, 2012). Claim 10 stands rejected under 35 U.S.C. Â§ 103(a) as obvious over the combination ofDrimusz, Kohanek, and Huang et al. (US 2007/0296552 Al; published Dec. 27, 2007) ("Huang"). 2 Appeal2016-000733 Application 13/706,239 ANALYSIS We have considered Appellant's arguments, but do not find them persuasive of error. We agree with and adopt as our own the Examiner's findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We provide the following explanation for emphasis. In rejecting claim 1, the Examiner found that Drimusz teaches or suggests all of the recited limitations except "displaying the selected remote control programming code on a display," for which the Examiner relied on Kohanek. Final Act. 2--4 (citing Drimusz Figs. 3, 5, i-fi-123, 25, 27, 29, 30, 33, and 34; Kohanek i129). Appellant contends the cited portions of Drimusz and Kohanek do not teach the limitation "displaying the selected remote control programming code on a display," recited in claim 1. App. Br. 11. Appellant argues that "if the device disclosed in Drimusz were modified based on the teachings in Kohanek, the resulting device would not display a command code on a display." Id. Appellant further argues that, because Drimusz teaches that a command code does not uniquely identify a command, merely displaying a command code assigned to a key of a controlling device on a display would not confirm to a user what command is issued by the controlling device upon activation of the key of a controlling device, as claim 1 requires. Id. at 11- 12. Appellant's arguments do not persuade us of Examiner error. "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 3 Appeal2016-000733 Application 13/706,239 suggested to those of ordinary skill in the art." See In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner found that Drimusz provides the structure and function of a remote control programming system in which a remote control includes command codes and corresponding control buttons, each associated with a particular command code. Ans. 5. The Examiner further found that Kohanek provides the structure and function of re- displaying to a user what key functions are assigned to a controlling device. Id. The Examiner explained that the control programming code and its corresponding key function are equal representations of a particular remote control function used to control an appliance, and displaying one or the other is the same. Id. Appellant present no persuasive explanation or evidence to rebut the Examiner's findings. Additionally, we agree with the Examiner's findings and conclusion (Final Act. 4, Ans. 5---6) that the proposed combination is based on the predictable use of prior art elements according to their established functions and thus, would have been obvious to one of ordinary skill in the art. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." See KSR Int'! v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Regarding Appellant's further contentions challenging the propriety of combining the references (App. Br. 12), we also agree with the Examiner's analysis and reasoning. We specifically find that the Examiner has articulated (see Final Act. 2--4, Ans. 4--5) how the claimed features are met by the reference teachings with some rational underpinning to combine Drimusz's teachings with Kohanek. KSR, 550 U.S. at 418. Moreover, Appellant has not presented evidence sufficient to show that combining 4 Appeal2016-000733 Application 13/706,239 Drimusz with Kohanek would have been "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Drimusz and Kohanek teaches or suggests the limitations of claim 1. Accordingly, we sustain the 35 U.S.C. Â§ 103(a) rejection of independent claim 1, as well as the 35 U.S.C. Â§ 103(a) rejection of independent claims 11 and 15, which Appellant argues are patentable for similar reasons. App. Br. 12. We also sustain the Examiner's rejection of dependent claims 2-10, 12-14, and 16-20, for which Appellant makes no additional arguments. Id. at 12-13. DECISION We affirm the decision of the Examiner rejecting 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. Â§ 1.136(a)(l )(iv). AFFIRMED 5