Universal Electronics Inc.

Patent Trials and Appeals Board

Oct 2, 2020

2019004387 (P.T.A.B. Oct. 2, 2020)

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.
15/455,411 03/10/2017 Brian Barnett 81230.154US4 2495
34018 7590 10/02/2020
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
MONSHI, SAMIRA
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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 BRIAN BARNETT, ARSHAM HATAMBEIKI, REX XU, and
JESUS PEREZ
Appeal 2019-004387
Application 15/455,411
Technology Center 2400
Before MAHSHID D. SAADAT, MARC S. HOFF, and SCOTT E. BAIN,
Administrative Patent Judges.

BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–8, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 Br. 2.
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BACKGROUND
The Claimed Invention
The invention relates to a universal remote control “configured for use
in conjunction with multiple interconnected consumer electronic
appliances.” Spec. 1–2. Claim 1, the sole independent claim, is illustrative
of the invention and the subject matter in dispute, and reads as follows:
1. A method for configuring a controlling device to control
a functional operation of a second controllable appliance that is
communicatively coupled to a first controllable appliance,
comprising:
receiving at the controlling device from the first
controllable appliance data indicative of a communications port
of the second controllable appliance to which the first
controllable appliance is communicatively coupled;
using by the controlling device the data indicative of the
communication port of the second controllable appliance as
received from the first controllable appliance to automatically
configure an input element of the controlling device whereupon
a subsequent activation of the input element of the controlling
device will cause the controlling device to transmit a command
for causing the second controllable appliance to make active the
communications port of the second controllable appliance to
which the first controllable appliance is communicatively
coupled.
Appeal Br. 11 (Claims App.).
References
The references relied upon by the Examiner are:
Name Reference Date
Petersson US 2010/0135279 A1 June 3, 2010
Inoue US 2011/0125301 A1 May 26, 2011

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The Rejections on Appeal
Claims 1 and 5–8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Petersson. Final Act. 2–5.
Claims 2–4 stand rejected under 35 U.S.C. § 103 as unpatentable over
Petersson and Inoue. Final Act. 5–7.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. On the record before us, we cannot
sustain the Examiner’s rejections.
Appellant argues the Examiner erred in finding Petersson discloses a
“controlling device” (e.g., a remote control) and first/second “controllable
appliance[s]” (e.g., set top box (STB), DVD player, television, etc.) as
recited in claim 1. Appeal Br. 4–5; Reply Br. 2–3. Specifically, Appellant
argues that Petersson does not disclose these elements in the configuration
recited in claim 1, i.e., where the controlling device (e.g., a remote control)
receives data from a first controllable appliance (e.g., the STB) regarding a
“communications port” on a second controllable appliance (e.g., an HDMI
port on a television connected to the STB), and the controlling device uses
such data to “automatically configure” an input element (e.g., a button)
which subsequently activates the communications port (e.g., the television’s
HDMI port connected to the STB). Appeal Br. 7–9; Reply Br. 4–5.
More generally, Appellant also argues that the Examiner’s mapping of
elements from Petersson to claim 1 is vague, incomplete, and internally
inconsistent. Appeal Br. 4–6; Reply Br. 2–3. Appellant argues that
Petersson is directed to controlling media “across local area networks” via
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gateways, and is fundamentally different from Appellant’s invention as
recited in claim 1, which involves remote control and configuration of
appliances such as STBs and televisions. Appeal Br. 6–7; Reply Br. 2. On
this record, we are persuaded by Appellant’s arguments.
As Appellant argues, Petersson discloses a “media transfer across
different local area networks” where a “device in one local network [can]
communicate media content with a device in another local network.”
Peterson ¶ 20. Examples of such “devices” in Petersson include computers,
STBs, televisions, and telephones. Id. at ¶ 8. Petersson explains that “in
order to provide IMS [IP Multimedia Subsystem] services for devices in the
local network, a multimedia gateway called HIGA (Home IMS Gateway),
has been defined that can emulate an IMS terminal from the local network
towards the IMS network, to access IMS services on behalf of any device in
the local network.” Id. (emphases added). Thus, Petersson discloses using
“gateways” with emulation properties to enable communication with
“devices” on respective networks. Id.
The Examiner, however, maps the “appliances” in Appellant’s claim 1
not to Petersson’s “devices” but rather to Petersson’s “gateways”
(sometimes in combination with Petersson’s “networks,” although the
Examiner’s explanation is unclear). Ans. 4–5; Final Act. 3. In the Final
Action, the Examiner finds “[Petersson] Fig. 5 . . . home media gateway 504
and local network 506” disclose the “first controllable appliance” in claim 1.
Final Act. 3. In the Answer, the Examiner appears to change positions,
finding that the “combination” of Petersson’s “gateway 504” and “second
local network 506” discloses the “second controllable appliance” recited in
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claim 1. Ans. 3–4 (emphasis added). We do not agree with either position
taken by the Examiner.
Although we give claims their broadest reasonable interpretation in
light of the Specification, In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004), we do not agree that a “gateway and network” as
disclosed in Petersson corresponds to an “appliance,” as recited in claim 1
and further described in Appellant’s Specification. The Specification
describes “appliances” as “consumer electronic[s]” devices “such as set top
boxes for receiving and decoding cable and satellite signals, televisions,
DVD players, game systems,” all of which are commonly controlled by
“hand held controlling devices, for example remote controls.” Spec. 1; see
also id. at 3 (describing a “controlling device . . . configurable to control
various appliances, such as a set top box (‘STB’) 104, a television 106, a
DVD player 108, and/or a game console 102”) (emphasis added).
Petersson similarly discusses STBs and televisions (referring to them
as “devices” rather than appliances), but expressly discloses them as being
distinct from “gateways” and “networks” used for bridging and
communications between devices/appliances. See supra. Thus, we do not
agree with the Examiner’s finding that a “gateway” and “network” in
Petersson (alone or in combination) discloses a “controllable appliance” as
recited in Appellant’s claim 1.
Even if Petersson’s gateway and network combination constituted an
“appliance,” however, we would still be persuaded of error. We cannot
discern from the Examiner’s mapping of elements how Petersson discloses
“configur[ing] an input element of the controlling device” (e.g., a button on
a remote), as further recited in claim 1. Appeal Br. 11. In response to
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Appellant’s argument regarding the “configure” element (Appeal Br. 8–9),
the Examiner simply responds that the rejection is supported for the “same
reasons” the Examiner had provided regarding the “appliances” elements.
Ans. 9. In the Final Action, the Examiner explained that Petersson
discloses:
an ordering unit 500d adapted to order the first device D1 to
execute a multimedia session with the second device by using
the received communication parameters for the second device
in the residential gateway of the second local network. [T]he
external IP address and port number of RGW 202a for media
server 202c received in step 2:5 are also provided here, to be
used by the TV set 200c in the forthcoming session with media
server 202c.
Final Act. 3–4 (citing Petersson ¶¶ 55, 88, Figs. 3, 5).
The foregoing description and corresponding illustrations, however,
merely describe devices communicating across networks in order to obtain
media, such as a video stream. The Examiner does not explain how this
passage, or any other in Petersson, discloses “configur[ing]” an input
element on a controlling device, much less configuring the element in the
manner further recited in claim 1 (i.e., “whereupon a subsequent activation
of the input element of the controlling device will cause the controlling
device to transmit a command for causing the second controllable appliance
to make active the communications port of the second controllable
appliance”). Appeal Br. 11.
Accordingly, for the foregoing reasons, we are persuaded of error
regarding the anticipation rejection of claim 1. We, therefore, do not sustain
the rejection. For the same reasons, we also do not sustain the anticipation
rejection of dependent claims 5–8.
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The remaining claims 2–4 also depend (directly or indirectly) from
claim 1, and the additional reference (Inoue) cited by the Examiner does not
address the deficiencies discussed above regarding Petersson. Thus, we are
persuaded of error regarding the obviousness rejection of claims 2–4. We,
therefore, do not sustain the Examiner’s obviousness rejection of claims 2–4.
CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–8.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5–8 102(b) Petersson 1, 5–8
2–4 103(a) Petersson, Inoue 2–4
Overall
Outcome
1–8

REVERSED