Patrick H. Hayes et al.

Patent Trials and Appeals Board

Sep 30, 2019

13687100 - (D) (P.T.A.B. Sep. 30, 2019)

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.
13/687,100 11/28/2012 Patrick H. Hayes 81230.62US7 8094
34018 7590 09/30/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
PAN, YONGJIA
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
chiipmail@gtlaw.com
clairt@gtlaw.com
jarosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

Appeal 2017-010061
Application 13/687,100
Technology Center 2100

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

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–22. Non-Final Act. 1.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Universal Electronics Inc. Appeal Brief (“Appeal Br.”) 1 (filed Feb. 27,
2017). We also refer to the Appellant’s Reply Brief (“Reply Br.”) dated July
20, 2017.
2 We refer to the Examiner’s Answer (“Ans.”) dated May 23, 2017, and the
Non-Final Office Action (“Non-Final Act.”) dated Dec. 14, 2016.
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CLAIMED SUBJECT MATTER
The claims are directed to a system and method for using a mark-up
language page to command an appliance. Specifically, a hand-held device
with a display and browser supports a full screen tag to display a link, which
when activated causes the device to transmit a command to a consumer
appliance. Abstract. Claim 11, reproduced below, is illustrative of the
claimed subject matter:
11. A non-transitory computer-readable media having
computer executable instructions for displaying information in
a display, the instructions performing steps, when executed by a
processing device of a controlling device having the display,
comprising:
retrieving a mark-up language formatted page having an
embedded mark-up language formatted page tag comprised of a
data field containing data having a value indicative of at least
one consumer appliance function to be controlled and a second
data field containing data for displaying an activable hyperlink
in the display;
displaying the mark-up language formatted page
including the hyperlink in the display;
in response to the hyperlink being activated, providing
the value indicative of the at least one consumer appliance
function to be controlled contained in the data field of the
embedded mark-up language page tag to a transmission
controller associated with the controlling device;
using by the transmission controller the value indicative
of the at least one consumer appliance function to be controlled
to select one or more command codes from a one of a plurality
of command code sets wherein each of the plurality of
command code sets includes one or more command codes
supportive of the at least one consumer appliance function to be
controlled and wherein the one of the plurality of command
code sets is the one of the plurality of command code sets that
was provisioned for use by the transmission controller at a time
of activation of the hyperlink; and
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using by the transmission controller the selected one or
more command codes to transmit at least one command
communication to a consumer appliance.
REFERENCES
The prior art relied upon by the Examiner is:
Goldstein
Humpleman
Mitani
Dubil
US 5,410,326
US 2001/0011284 A1
US 6,466,233 B1
US 8,132,105 B1
Apr. 25, 1995
Aug. 2, 2001
Oct. 15, 2002
Mar. 6, 2012
REJECTIONS
Claims 11, 15, 21, and 22 stand rejected under 35 U.S.C. § 112
second paragraph as being indefinite. Ans. 2; Non-Final Act. 3.
Claims 11, 12, 14–16, and 18–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mitani, Dubil, and Goldstein. Ans. 5;
Non-Final Act. 6.
Claims 13 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mitani, Dubil, Goldstein, and Humpleman. Non-Final
Act. 14.
OPINION
Indefiniteness Claims 11, 15, 21, and 22
The Examiner finds that claim 11’s recitation of “wherein the one of
the plurality of command code sets is the one of the plurality of command
code sets that was provisioned for use by the transmission controller at a
time of activation of the hyperlink” is indefinite because “command code
sets” are not “provisioned” for use at a time of activation of the hyperlink.
Ans. 3; Non-Final Act. 3. The Examiner argues that “it is unclear how a
command code set is provisioned for use at a time of activation of the
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hyperlink as the instant [S]pecification and the [A]pplicant themselves state
activation of a hyperlink results in looking up a command code not
provisioning a command code set to be transmitted.” Ans. 5. Appellant
argues the rejection of claims 11, 15, 21, and 22 as a group. We select claim
11 as representative and claims 15, 21, and 22 stand or fall with claim 11.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
Appellant contends that the Examiner erred because the activation in
the hyperlink in claim 11 “results in the transmission of a command from a
command code set that was provisioned for use by the transmission
controller at a time of activation of the hyperlink.” Appeal Br. 5. Appellant
argues that the Specification supports the well-known use of a command
code set that is activated by mode buttons to access commands for a code set
that was provisioned for use. Id. Thus, Appellant argues the Examiner erred
in stating that claim 11 “recite[s] a singular process of activation of a
hyperlink to provision command code set and transmit a control function 'in
response to the hyperlink being activated.” Reply Br. 2 (quoting Ans. 3
(emphasis added)). Instead, Appellant argues that the plain language of the
claim states that there is a two-step process wherein the command code set
was provisioned previously for use by the transmission controller and upon
activation of the hyperlink a command is then selected. Reply Br. 2–3.
We agree with Appellant that the indication that the command code set “was
provisioned” indicates that the activation has already occurred. In this case,
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the provisioning step resolves the ambiguity identified by the Examiner.
Accordingly, we do not sustain the Examiner’s rejection of claims 11, 15,
21, and 22 stand rejected under 35 U.S.C. § 112 second paragraph as being
indefinite.
Claims 11, 12, 14–16, and 18–20—
Obviousness over Mitani, Dubil, and Goldstein
The Examiner rejected claims 11, 12, 14–16, and 18–20 over Mitani,
Dubil, and Goldstein. Ans. 5; Non-Final Act. 6. Appellant argues the
rejection of claims 11, 12, 14–16, and 18–20 as a group. We select claim 11
as representative and claims 12, 14–16, and 18–20 stand or fall with claim
11.
Appellant argues that “the claimed invention has the advantage of
being flexible in that the mark-up language formatted page is not tied to any
particular command codes or . . . sets when it is initially provided to a
controlling device.” Appeal Br. 6. Appellant argues that the Examiner
admits
that Mitani does not expressly or inherently disclose the
claimed element of a mark-up language formatted page having
an embedded mark-up language formatted tag where the mark-
up language formatted tag is comprised of a data field in which
is contained data having a value indicative of at least one
consumer appliance function to be controlled.
Id. at 7. Appellant then asserts that Dubil and Goldstein fail to teach the
limitations not disclosed by Mitani. Id. at 7–8. Appellant asserts that Dubil
discloses an inflexible system using a specific command code and that
Goldstein’s touch screen teachings fail to teach modifying Mitani or Dubil to
teach the limitations of claim 11. Id.
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We have reviewed Appellant’s contentions in light of the Examiner’s
rejection and response and we agree with the Examiner. We adopt the
Examiner’s Answer (Ans. 5–11) and Non-Final Rejection (Non-Final Act.
6–9). We agree with the Examiner that Appellant’s emphasis on the claims
disclosing “a flexible mark-up language formatted page that is not tied to a
particular command code set and the same mark-up language formatted page
can be used to control a plurality of different appliances” is not supported by
the Specification or Appellant’s arguments. Ans. 6–7. In addition,
Appellant has not persuasively shown that the claims support this flexible
architecture.
We agree with the Examiner that Mitani discloses selecting a mode
for a device and a command, and retrieving a mark-up language formatted
page with embedded tags. Ans. 8–9 (citing Mitani 2:13–21, 2:26–29, 6:55–
67, 7:1–12, Fig. 9). The Examiner shows that Dubil teaches “an embedded
mark-up language formatted page tag comprising of a data field that contains
a value indicative of a least one consumer appliance function to be
controlled and transmission to control a consumer appliance” by using codes
described in XML tags. Id. at 9–10 (citing Dubil 4:14–40, 5:18–26).
Finally, we also agree with the Examiner that Goldstein discloses decoding
and selecting a code from a plurality of codes. Id. at 10 (citing Dubil 13:25–
35).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Appellant’s arguments fail to address the teachings
of Mitani cited by the Examiner (see Non-Final Act. 6–16) and merely
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attack the Dubil and Goldstein references separately without reference to
what they teach in combination with Mitani. Upon reviewing the
Examiner’s Answer and Non-Final Rejection we agree that:
In this case Mitani, Dubil, and Goldstein teach a system and
method for controlling home devices, it would have been
obvious to one of skilled in the art to modify Mitani to include
Dubil’s indicative value and Goldstein’s command identifiers to
achieve the predictable result of providing a means to indicate a
device to be controlled and providing a means to identify and
retrieve correct command codes.
Ans. 11.
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C § 103(a) of claim 11 over Mitani, Dubil, and Goldstein. Appellant
does not present arguments for claims 12, 14–16, and 18–20. Accordingly,
we find that the Examiner did not err in rejecting claims 12, 14–16, and 18–
20 as unpatentable under 35 U.S.C § 103(a) over Mitani, Dubil, and
Goldstein.
Claims 13 and 17
Obviousness over Mitani, Dubil, Goldstein, and Humpleman
Appellant does not present arguments for the Examiner’s rejection of
claim 13 and 17. See Non-Final Act. 14–15. Accordingly, we sustain the
Examiner’s rejection. See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
The Examiner’s rejections of claims 11, 12, 14–16, and 18–20 under
35 U.S.C §103(a) over Mitani, Dubil, and Goldstein is AFFIRMED
The Examiner’s rejections of claims 13 and 17 under 35 U.S.C
§103(a) over Mitani, Dubil, Goldstein, and Humpleman, is AFFIRMED.
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The Examiner’s rejection of claims 11, 15, 21, and 22 under 35 U.S.C.
§ 112 second paragraph is REVERSED.

DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
11, 12, 14–
16, and 18–
20
§ 103(a) 11, 12, 14–
16, and
18–20

13 and 17 § 103(a) 13 and 17
11, 15, 21,
and 22
§ 112 second
paragraph
11, 15, 21,
and 22

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART