Ex Parte Lee et al

Patent Trial and Appeal Board

Mar 17, 2017

13463589 (P.T.A.B. Mar. 17, 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.
13/463,589 05/03/2012 Jonathan Lee 81230.711US4 5525
34018 7590 03/21/2017
GREENBERG TRAURIG, LLP
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732
EXAMINER
ALAM, MUSHFIKH I
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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 JONATHAN LEE, OSCAR C. MIRAMONTES, and
DANIEL SAUFU MUI
Appeal 2016-007176
Application 13/463,589
Technology Center 2400
Before BRUCE R. WINSOR, JEREMY J. CURCURI, and
IRVIN E. BRANCH, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—3, 7—11, 14, and 15. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
Claims 1—3, 7—11, 14, and 15 are rejected under 35 U.S.C. § 103(a)
obvious over Higgins et al. (US 2004/0119894 Al; June 24, 2004)
(“Higgins”), Harris et al. (US 7,436,319 Bl; Oct. 14, 2008) (“Harris”),
Griesau et al. (US 2003/0053002 Al; Mar. 20, 2003) (“Griesau”), and
Sekhri et al. (US 2008/0302582 Al; Dec. 11, 2008) (“Sekhri”). Final Act.
2-7.
We affirm.
Appeal 2016-007176
Application 13/463,589
STATEMENT OF THE CASE
Appellants’ invention relates to “protecting codeset data used by
remote control devices to operate electronic consumer devices.” Spec. 1:14—
15. Claim 1 is illustrative and reproduced below, with the key disputed
limitations emphasized:
1. A method comprising:
causing a first electronic consumer device to display a navigable menu
in response to the first electronic consumer device receiving from a remote
control device a configuration signal, the navigable menu providing a
plurality of selectable brand and model selection criteria for use in
identifying a second electronic consumer device;
receiving at the first electronic consumer device user input provided to
select from the navigable menu one or more of the plurality of selectable
brand and model selection criteria;
causing the first electronic consumer device to send data indicative of
the selected one or more of the plurality of selectable brand and model
selection criteria to a web server to thereby cause the web server to identify
in a database associated with the web server a codeset that is already stored
in a memory of the remote control device;
receiving at the first electronic consumer device from the web server
data indicative of the identified codeset;
causing the first electronic consumer device to transmit to the remote
control device data indicative of at least one code that is found within the
identified codeset, wherein the at least one code corresponds to at least one
controllable function of the second electronic consumer device;
using by the remote control device the data indicative of the at least
one code that is found within the identified codeset to identify within a
plurality of codesets already stored within the memory of the remote control
device the identified codeset; and
causing the identified codeset as identified within the plurality of
codesets already stored within the memory of the remote control device to
be automatically used by the remote control device when the remote control
device is placed into a remote control device operating mode in which
functional operations of the second electronic consumer device are to be
controlled in response to activations of one or more input elements of the
remote control device.
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Appeal 2016-007176
Application 13/463,589
ANALYSIS
The Examiner finds Higgins, Harris, Griesau, and Sekhri teach all
limitations of claim 1. Final Act. 2—6; see also Ans. 2—5. The Examiner
finds Higgins teaches the key disputed limitations. Final Act. 3 (citing
Higgins 141).
Higgins (141) (emphasis added) discloses:
Once a device has been added or deleted from the
configuration file, the user is prompted as to whether the user
desires to initiate reprogramming the user’s PRC to reflect the
revised configuration 172. If the user chooses to initiate
programming the PRC, the process continues with the issuance
of programming instructions 128. If the user elects not to
program the PRC, revision of the user configuration file ends 188
and a check is made to determine if the user has other tasks to
perform 192. If no other tasks are to be performed, then the
session with the service provider ends 196. If other tasks are to
be performed, then the user is again asked to choose between
programming a remote or creating or modifying a user
configuration file 124.
Appellants present the following principal argument in the Appeal
Brief: Higgins does not disclose the key disputed limitations because
Higgins’s configuration file provides a complete codeset for a device rather
than allowing an already-stored codeset to be identified. See App. Br. 5—8.
In the Reply Brief, Appellants further argue that Higgins merely loads
the newly received instruction set into memory. See Reply Br. 2—3.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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Appeal 2016-007176
Application 13/463,589
We do not see any error in the contested findings and reasons of the
Examiner. Nor do we see any error in the Examiner’s conclusion of
obviousness.
In Higgins, a configuration file in the PRC allows the PRC to control
multiple devices. In the case where a device is added, a new configuration
file is sent to the PRC to replace the old configuration file. The new
configuration file then includes the new device, as well as the old devices
from the old configuration file. Thus, when the new configuration file is
received by the PRC, the new configuration file instructs the PRC to control
the new, added, device, and also instructs the PRC to control the old
devices. See Higgins 141.
Thus, we find Higgins discloses (claim 1): “causing the first
electronic consumer device to transmit to the remote control device data
indicative of at least one code that is found within the identified codeset,
wherein the at least one code corresponds to at least one controllable
function of the second electronic consumer device” (Higgins’s new
configuration file includes the identified codeset for an old device); “using
by the remote control device the data indicative of the at least one code that
is found within the identified codeset to identify within a plurality of
codesets already stored within the memory of the remote control device the
identified codeset” (Higgins’s new configuration file’s included identified
codeset for the old device identifies within a plurality of codesets already
stored within the memory of the remote control device the identified codeset
because Higgin’s old configuration file also includes the identified codeset
for the old device).
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Appeal 2016-007176
Application 13/463,589
With regard to Appellants’ further argument in the Reply Brief (Reply
Br. 2—3), to the extent Higgins merely loads the new configuration file, this
still does not change our decision. In reaching our conclusion, we emphasis
that because, with respect to old devices, Higgins’s new configuration file
and old configuration file are the same, with respect to old devices,
Higgins’s new configuration file still identifies Higgins’s old configuration
file. That is, the broad claim language does not require that the transmitted
data indicative of the identified codeset be something different than the
identified codeset. Therefore, when Higgins re-sends a codeset for an old
device as part of a modified configuration file, this teaches the broad claim
language.
We, therefore, sustain the Examiner’s rejection of claim 1, as well as
claims 2, 3, 7, and 8, which are not separately argued with particularity.
Regarding claim 9, Appellants argue that the Examiner “fails to
provide some articulated reasoning with some rational underpinning as is
required to support the legal conclusion of obviousness.” App. Br. 8; see
also Reply Br. 3.
Claim 1 recites a method, while claim 9 recites a set top box
programmed to perform various steps. With respect to claim 9, the
Examiner states “Claim 9 is analyzed and interpreted as an apparatus of
claim 1.” Final Act. 7. The PTAB carries its procedural burden of
establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132,
in “notify[ing] the applicant. . . [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” 35 U.S.C. § 132. This section “‘is violated when a
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Application 13/463,589
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.’” In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) citing Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990). In the instant case, the Examiner has made reasonable,
informative findings supported by evidence. Appellants have not
particularly rebutted these findings. Nor do we see any error in the
Examiner’s conclusion of obviousness.
We, therefore, sustain the Examiner’s rejection of claim 9, as well as
claims 10, 11, 14, and 15, which are not separately argued with particularity.
ORDER
The Examiner’s decision rejecting claims 1—3, 7—11, 14, and 15 is
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).
AFFIRMED
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