Universal Electronics Inc.

Patent Trials and Appeals Board

Mar 15, 2021

2019006961 (P.T.A.B. Mar. 15, 2021)

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.
15/864,339 01/08/2018 Daniel SauFu Mui 81230.708US5 1630
34018 7590 03/15/2021
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
BROWN, VERNAL U
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
03/15/2021 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 DANIEL SAUFU MUI

Appeal 2019-006961
Application 15/864,339
Technology Center 2600

Before JOHN A. JEFFERY, KRISTEN L. DROESCH, and
MICHAEL T. CYGAN, Administrative Patent Judges.

DROESCH, 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 rejecting claims 1–8. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant indicates the real party in interest is Universal
Electronics Inc. Appeal Br. 2.
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BACKGROUND
The disclosed invention relates to an apparatus and method for
relaying key code signals through a remote control device to operate an
electronic consumer device. See Abstract, ¶ 2.
CLAIMED SUBJECT MATTER
Claim 1, which is representative of the subject matter of the appeal
and is reproduced from the Claims Appendix of the Appeal Brief, reads as
follows:
1. A first device for transmitting a command signal to control a
functional operation of a second device, the first device
comprising:
a receiver;
a transmitter;
a processing device coupled to the receiver and the
transmitter; and
a memory storing a plurality of command data codesets
and instructions executable by the processing device;
wherein the instructions cause the processing device to
determine a one of the plurality of command data codesets that
is appropriate for at least a type and model of the second device
that is to be controlled via use of the first device and to transmit
the command signal to the second device, via use of the
transmitter, in response to receiving, via use of the receiver, an
activation signal having data indicative of an input element of a
third device that has been activated by a user, wherein the
transmitted command signal has a format that is recognizable
by the second device, and the formatted command signal
comprises a command data which is selected from the one of
the plurality of command data codesets stored in the memory of
the first device via use of the received data indicative of the
input element of the third device that has been activated by the
user.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Pope US 5,963,624 Oct. 5, 1999
Arling et al. (“Arling”) US 2005/0096753 A1 May 5, 2005
Kellum et al. (“Kellum”) US 8,601,514 B1 Dec. 3, 2013
REJECTIONS ON APPEAL
Claims 1–6 and 8 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pope and Arling. Final Act. 2–4.
Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable over
Pope, Arling, and Kellum. Final Act. 4–5.
ANALYSIS
Unpatentability of Claims 1–6 and 8
Appellant argues claims 1–6 and 8 together as a group. See Appeal
Br. 3–8; Reply Br. 2–5. Consequently, we choose independent claim 1 as
representative of the group. 37 C.F.R. § 41.37(c)(1)(iv). We have reviewed
the Examiner’s rejections in light of Appellant’s arguments in the Appeal
Brief and the Reply Brief, as well as the Examiner’s Answer. Appellant’s
arguments are not persuasive of Examiner error. We highlight and address
specific findings and arguments below for emphasis.
The Examiner finds that Pope teaches all of the limitations of claim 1,
with the exception of “wherein the instructions cause the processing device
to determine a one of the plurality of command data codesets that is
appropriate for at least a type and model of the second device that is to be
controlled via use of the first device.” See Final Act. 2–3. The Examiner
finds that Arling teaches the aforementioned limitation. See id. at 3 (citing
Arling ¶¶ 41, 56, 64). The Examiner concludes that “[i]t would have been
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obvious to one of ordinary skill in the art to modify the system of Pope as
disclosed by Arling because such modification provide[s] for a flexible and
adaptable remote control system that can control appliances of various types
and models.” Id.
Appellant argues that neither Pope nor Arling disclose, teach, or
suggest a device that determines a one of a plurality of command data
codesets stored in the memory of the device that is appropriate for at least a
type and model of a second device that is to be controlled via use of the
device in response to receiving, via use of a receiver of the device, an
activation signal having data indicative of an input element of a third device.
See Appeal Br. 4–6; Reply Br. 2–5.
We are not persuaded by Appellant’s arguments. Claim 1 recites,
wherein the instructions cause the processing device to
determine a one of the plurality of command data codesets that
is appropriate for at least a type and model of the second device
that is to be controlled via use of the first device [(“determining
limitation”)] and to transmit the command signal to the second
device, via use of the transmitter [(“transmitting limitation)], in
response to receiving, via use of the receiver, an activation
signal having data indicative of an input element of a third
device that has been activated by a user, . . .
Appellant’s arguments are premised on the determining limitation being
responsive to receiving an activation signal indicative of input activated by a
user of a third device. At first blush, the claim is amenable to two alterative
constructions: (1) the determining limitation and the transmitting limitation
both being in response to receiving an activation signal indicative of input
activated by a user of a third device; or (2) the determining limitation not
being required to be in response to receiving an activation signal indicative
of input activated by a user of a third device, but only the transmitting
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limitation being in response to receiving an activation signal indicative of
input activated by a user of a third device.
Appellant cites paragraphs 22, 23, 25, 27, 40–44, 52, and 54 of the
Specification for disclosing the aforementioned limitations of claim 1. See
Appeal Br. 2–3. We have reviewed paragraphs 22, 23, 25, 27, 40–44, 52,
and 54 of the Specification, cited by Appellant, and do not find that the
Specification discloses the determining limitation being in response to
receiving an activation signal indicative of input activated by a user of a
third device, as argued by Appellant. In particular, we note that the
Specification discloses a method in which, during first step 100, the key
code generator device determines the appropriate codeset that controls the
type, brand, and model of the particular device that is to be controlled based
on a user identifying the type, brand, and model of the particular consumer
device by using the remote control to highlight the selected device on an on-
screen display. See Spec. ¶¶ 21–22, Fig. 2: step 100. In the second step 101,
the user presses a key on the remote control device that is associated with a
function that the user wants performed by the electronic device and a
keystroke indicator signal is transmitted from remote control to key code
generator device. See Spec. ¶¶ 23–26, Fig. 2: step 101. In the next step 102,
the key code generator device determines which key code of the codeset
previously identified in step 100 corresponds to the pressed key. See Spec.
¶ 27, Fig. 2: step 102. Next, the key code generator device, in step 103,
generates a first key code signal, and, in step 104, transmits the first key
code signal to the remote control device. See Spec. ¶¶ 29, 36, Fig. 2:
steps 103, 104. In the next step 105, the remote control receives the key
code signal and relays the first key code signal to the selected device to be
controlled in the form of a second key code signal. See Spec. ¶ 37, Fig. 2:
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step 105. Finally, in steps 106 and 107, the second key code is received by
the selected device to be controlled, and the selected device performs the
function desired by the user. See Spec. ¶¶ 38, 39, Fig. 2: steps 106, 107. In
sum, the Specification discloses that the key code generator determines the
appropriate codeset that controls the type, brand, and model of the particular
device that is to be controlled in response to a user highlighting the
particular device on a display using a remote control, and, thereafter,
transmitting command codes to the selected device in response to a user
pressing a key on the remote control that is associated with a function of the
particular device.
Assuming arguendo that the Specification’s disclosure of the key
code generator device determining the appropriate codeset that controls the
type, brand, and model of the particular device that is to be controlled is “in
response to receiving, via use of the receiver, an activation signal having
data indicative of an input element of a third device that has been activated
by a user,” on the basis that the Specification discloses the user identifying
the type, brand, and model of the particular consumer device by highlighting
the selected device on an on-screen display using a remote control, is not
supported by the limitations of claim 1. Instead, the “activation signal
having data indicative of an input element of a third device that has been
activated by a user” is inextricably linked to the “command signal” and
“command data” recited in claim 1. This is because claim 1 further recites
the formatted command signal comprises a command data
which is selected from the one of the plurality of command data
codesets stored in the memory of the first device via use of the
received data indicative of the input element of the third device
that has been activated by the user.
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This finding is consistent with Appellant’s position equating “an activation
signal having data indicative of an input element of a third device that has
been activated by a user” with “an input element of the remote control is
activated to control a functional operation of a device.” See Reply Br. 4–5.
In sum, consistent with the Specification, “wherein the instructions
cause the processing device to determine a one of the plurality of command
data codesets that is appropriate for at least a type and model of the second
device that is to be controlled via use of the first device” is not required to
occur “in response to receiving, via use of the receiver, an activation signal
having data indicative of an input element of a third device that has been
activated by a user.” Instead, claim 1 requires only the limitation “wherein
the instructions cause the processing device . . . to transmit the command
signal to the second device, via use of the transmitter,” to occur “in response
to receiving, via use of the receiver, an activation signal having data
indicative of an input element of a third device that has been activated by a
user.” Therefore, Appellant’s arguments that neither Pope nor Arling
disclose, teach, or suggest the determining limitation is “in response to
receiving, via use of a receiver of the device, an activation signal having data
indicative of an input element of a third device,” are not commensurate in
scope with the limitations of claim 1.
Appellant further asserts that the proposed modification of Pope
would change the principle of operation of Pope. See Appeal Br. 7.
Appellant contends that Pope operates on the principle of storing a variety of
appliance codes in a digital handset. See id. Appellant asserts that the
proposed modification is to have Pope’s base unit determine one of a
plurality of command data codesets stored in the memory of the base unit
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that is appropriate for at least a type and model of the second device that is
to be controlled via use of the digital handset. See id.
Appellant’s arguments are not persuasive of Examiner error because
the Examiner does not propose modifying the teachings of Pope to eliminate
the storage of a variety of appliance control codes in the digital handset. See
Final Act. 3. We understand the Examiner’s proposed modification to be
additive––to store command data codesets in the memory of the base unit in
addition to storing a variety of appliance codes in the digital handset, and
determine the appropriate codeset from the codesets stored in the base unit
memory. See id.
Appellant argues, “to the extent it has been asserted that it would have
been obvious to modify the system of Pope as disclosed by Arling ‘because
such modification provide for a flexible and adaptable remote control system
that can control appliances of various types and models,’ . . . the system of
Pope already has the capability of controlling appliances of various types
and models.” Appeal Br. 7 (citing Abstract); see Reply Br. 5. Appellant
contends that it is well settled that no reason to combine can exist if the
primary reference already had the capabilities that the secondary reference
provided with its added disclosures. See Appeal Br. 7 (citing Square, Inc. v
Cooper, IPR2017-00158, Paper 8 at 30 (PTAB May 15, 2014)); Reply Br. 5
(citing Square, Inc. v Cooper, IPR2014-00158, Paper 8 at 30 (PTAB May
15, 2014)).
Appellant’s arguments are not persuasive of Examiner error.
Appellant’s argument focuses on “controlling appliances of various types
and models,” while overlooking that the Examiner’s proposed modification
would also “provide for a flexible and adaptable remote control system.”
See Final Act. 3. Indeed, the provision of a flexible and adaptable remote
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control system is supported by the Examiner’s proposed modification––to
store command data codesets in the memory of the base unit in addition to
storing a variety of appliance codes in the digital handset, and have the base
unit determine one of a plurality of command data codesets stored in the
base unit memory that is appropriate for at least a type and model of the
second device that is to be controlled via use of the digital handset. In
addition, Appellant’s argument is not persuasive of Examiner error because
Appellant does not direct us to binding authority to support its argument.
For support, Appellant instead directs us to a non-precedential Board
decision on institution in an inter partes review proceeding.
Accordingly, for all of the foregoing reasons we are not persuaded the
Examiner erred in rejecting claims 1–6 and 8 under 35 U.S.C. § 103 as
unpatentable over Pope and Arling. Therefore, we sustain the rejection of
claims 1–6 and 8.
Unpatentability of Claim 7
Appellant does not present substantive arguments addressing the
limitations of claim 7. See Appeal Br. 3–8. Therefore, for the same reasons
as those reasons discussed immediately above addressing claims 1–6 and 8,
we are not persuaded the Examiner erred in rejecting claim 7 under
35 U.S.C. § 103 as unpatentable over Pope, Arling, and Kellum.
Accordingly, we sustain the rejection of claim 7.

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CONCLUSION
We affirm the Examiner’s rejections of claims 1–8 under 35 U.S.C.
§ 103.
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–6, 8 103 Pope, Arling 1–6, 8
7 103 Pope, Arling, Kellum 7
Overall
Outcome 1–8
TIME PERIOD FOR 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)(1)(iv).
AFFIRMED