Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardMar 17, 201713463589 (P.T.A.B. Mar. 17, 2017) Copy Citation 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. 2 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). 3 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). 4 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 5 Appeal 2016-007176 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 6 Copy with citationCopy as parenthetical citation