Universal Electronics Inc.

Patent Trials and Appeals Board

Oct 8, 2021

2020004505 (P.T.A.B. Oct. 8, 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.
15/962,451 04/25/2018 Olav B.M. Pouw 81230.148US4 5641
34018 7590 10/08/2021
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
10/08/2021 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 OLAV B.M. POUW and PATRICK H. HAYES
____________

Appeal 2020-004505
Application 15/962,451
Technology Center 2400
____________

Before ROBERT E. NAPPI, CATHERINE SHIANG, and
TERRENCE W. McMILLIN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–12, which are all the claims pending and rejected in the
application. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Universal Electronics Inc. as the real party in interest.
Appeal Br. 2.

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STATEMENT OF THE CASE
Introduction
The invention relates to “providing an adaptive user interface on an
electronic appliance.” Title (capitalization omitted).
Consumer electronic appliances such as set top boxes for
receiving and decoding cable and satellite signals, televisions,
DVD players, game systems, etc. are well known in the art, as
are the hand held controlling devices, for example remote
controls, which may be provided for use in issuing commands to
these appliances. In some instances these controlling devices
may be made available in various forms, for example coded to
assist in recognition of individual users in a household;
optimized for a specific function such as game playing, web
browsing, or movie watching; or specially adapted to the needs
of the elderly or of children. While such controlling devices may
serve the purposes for which they were intended, in some
instances it would be advantageous if the controlled appliance
were further enabled to recognize the nature of the controlling
device currently in use and adapt its appliance configuration,
menuing system, GUI, etc. accordingly.

Spec. 1:11–21. Claims 1 and 5 are exemplary:
l. A method performed by a switching device that is operable to
connect at least one of a plurality of source devices to a sink device, the
method comprising:
detecting an infrared (IR) signal transmitted by a remote control
device, wherein the IR signal transmitted by the remote control device
comprises a protocol and a command value that is directly recognizable by a
first device among the plurality of source devices and the sink device;
in response to the detection of the IR signal, determining that the
remote control device is in use; and
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in response to determining that the remote control device is in use,
controlling a connection between the at least one of the plurality of source
devices and the sink device as a function of the detected IR signal.
5. A switching device, comprising:
a plurality of audio/video (AV) ports;
a receiver; and
control logic that is operable to selectively connect at least one of a
plurality of source devices to a sink device each of which is connected to a
corresponding one of the plurality of AV ports, the control logic being
configured to:
determine that the receiver has received an infrared (IR) signal
transmitted by a remote control device, wherein the IR signal transmitted by
the remote control device comprises a protocol and a command value that is
directly recognizable by a first device among the plurality of source devices
and the sink device;
in response to determining that the receiver has received the IR signal,
determine that the remote control device is in use; and
in response to at least determining that the remote control device is in
use, controlling a connection between the at least one of the plurality of
source devices and the sink devices as a function of the detected IR signal.

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Application 15/962,451

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References and Rejections2

Claims
Rejected
35 U.S.C. § References
1, 3, 5, 7, 9,
11
103(a) Garg (US 2007/0220150 A1, Sep. 20, 2007),
Igoe (US 2013/0187767 A1, Jul. 25, 2013)
2, 4, 6, 8, 10,
12
103(a) Garg, Igoe, Tzeng (US 2008/0291074 A1, Nov. 27,
2008)

PRINCIPLES OF LAW
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006).
“[T]he ‘mere disclosure of alternative designs does not teach away’”
and “just because better alternatives exist in the prior art does not mean that
an inferior combination is inapt for obviousness purposes.” In re Mouttet,
686 F.3d 1322, 1334 (Fed. Cir. 2012).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable

2 Throughout this opinion, we refer to the (1) Non-Final Office Action dated
August 22, 2019 (“Non-Final Act.”); (2) Appeal Brief dated December 6,
2019 (“Appeal Br.”); (3) Examiner’s Answer dated April 3, 2020 (“Ans.”);
and (4) Reply Brief dated May 28, 2020 (“Reply Br.”).
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simply because it has been described as somewhat inferior to
some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

ANALYSIS
Obviousness
We have reviewed and considered Appellant’s arguments, but such
arguments are unpersuasive. To the extent consistent with our analysis
below, we adopt the Examiner’s findings and conclusions in (i) the action
from which this appeal is taken and (ii) the Answer.
Further, to the extent Appellant advances new arguments in the Reply
Brief without showing good cause, Appellant has waived such arguments.
See 37 C.F.R. § 41.41(b)(2).

Claim 5

On this record, the Examiner did not err in rejecting claim 5.
I
Appellant contends “the requirements for presenting a prima facie
case of obviousness have not been met.” Appeal Br. 6. In particular,
Appellant argues “the Office has failed to: a) evidence that all of the claimed
elements were known in the art;3 or c) even conclude that the combination of
Garg and Igoe would lead one of skill in the art to the exact invention
claimed.” Appeal Br. 6. Appellant further argues:

3 Item b) is discussed below in Section II.
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In the rejection of claims, it was acknowledged that Garg does
not disclose, teach, or suggest a switching device that is operable
to detect/receive and respond to an infrared (IR) signal
transmitted by a remote control device wherein the IR signal
transmitted by the remote control device comprises a protocol
and a command value that is directly recognizable by a first
device among the plurality of source devices and the sink device
that are connected to the switching device. (OA, pgs. 3-4, 5-6,
and 9-10).

It has not been asserted that Igoe discloses, teaches, or suggests
a switching device or any other element that is operable to
detect/receive and respond to such an IR signal. Rather, it has
only been asserted that Igoe discloses “an IR signal transmitted
by the remote control device comprises a protocol and a
command value that is directly recognizable by first device
among the plurality of source device and sink device,” (OA, pgs.
4, 6, and 10).

Appeal Br. 5 (emphases omitted); see also Reply Br. 3–5.

Appellant has not persuaded us of error. It is well settled that:
[The USPTO] satisfies its initial burden of production by
adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond. In other
words, the PTO 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.
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and
quotation marks omitted).
Specifically, the Jung Court finds:
the examiner’s discussion of the theory of invalidity
(anticipation), the prior art basis for the rejection (Kalnitsky),
and the identification of where each limitation of the rejected
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claims is shown in the prior art reference by specific column
and line number was more than sufficient to meet this burden.
Id. at 1363 (emphasis added).
Here, the Examiner’s rejection clearly satisfies the requirement of
35 U.S.C. § 132 to establish a prima facie case of unpatentability. The
rejection identifies: the theory of unpatentability (obviousness); the prior art
basis for the rejection (Garg and Igoe); where each limitation of claim 5 is
shown in the references by paragraph and figure numbers, plus additional
explanation about how the prior art features are mapped to the claim. See
Jung, 637 F.3d at 1363; Non-Final Act. 5–7; Ans. 3–7. Similar to the
Examiner in Jung, the Examiner has done “more than sufficient to meet this
burden [of establishing the prima facie case].” The burden then shifts to
Appellant to rebut the Examiner’s case.
In order to rebut a prima facie case of unpatentability, Appellant must
distinctly and specifically point out the supposed Examiner errors, and the
specific distinctions believed to render the claims patentable over the applied
reference. See 37 C.F.R. § 1.111(b).
Appellant has not carried the burden. In particular, Appellant’s
argument that “[i]t has not been asserted that Igoe discloses, teaches, or
suggests a switching device or any other element that is operable to
detect/receive and respond to” (Appeal Br. 5) (emphases omitted) is
unpersuasive because it is not directed to the Examiner’s specific findings.
The Examiner finds—and Appellant does not persuasively dispute—Garg
teaches:
A switching device . . .
. . .
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determine that the receiver has received an infrared (IR) signal
transmitted by a remote control device, . . . a first device among
the plurality of source devices and the sink device;

in response to determining that the receiver has received the IR
signal, determine that the remote control device is in use; and

in response to at least determining that the remote control
device is in use, controlling a connection between the at least
one of the plurality of source devices and the sink devices as a
function of the detected IR signal.

See Non-Final Act. 5–6; Ans. 4, 6.4 Therefore, Igoe does not need to teach
those limitations again.
Similarly, Appellant’s unsubstantiated argument that the proposed
combination is not the claimed invention (Reply Br. 3–5) is unpersuasive,
because it is not directed to the Examiner’s specific findings and
conclusions. Further, Appellant’s attorney arguments (Reply Br. 3–5) are
speculative and unpersuasive of Examiner error, as Appellant does not
provide sufficient objective evidence to support the arguments. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“attorney argument [is] not
the kind of factual evidence that is required to rebut a prima facie case of
obviousness”); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)
(“Argument of counsel cannot take the place of evidence lacking in the
record.”).
Finally, Appellant repeatedly mischaracterizes the Examiner’s
statements (see, e.g., Appeal Br. 5, 7; Reply Br. 4–5), which is unhelpful and

4 Although we map the preamble for completeness, Appellant has not
demonstrated the preamble is limiting.
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fails to show Examiner error. For example, Appellant’s assertion that on
page 6 of the Answer, “the Office has further acknowledged that modifying
Garg according to the relied upon teaching in Igoe would not result in the
exact invention claimed” (Reply Br. 5) plainly contradicts the record, as the
cited page is devoid of such acknowledgement.

II
Appellant argues the Examiner has not provided the requisite rationale
for combining the teachings of Garg and Igoe to teach claim 5. See Appeal
Br. 5–6; Reply Br. 2–3. In particular, Appellant argues:
while it was concluded that “it would have been obvious to one
of ordinary skill in the art at the time the invention was made to
incorporate the system/method of sending control command to
DVD as disclosed by Igoe to the remote controller as disclosed
by Garg in order to communicate with external devices via
remote controller” (OA, pgs. 5, 7, and 10) . . ., it was not asserted
that it would have been obvious, based on the teachings of Igoe,
to modify the switching_device of Garg such that the
switching_device of Garg would be operable to detect/receive
and respond to an infrared (IR) signal transmitted by a remote
control device wherein the IR signal transmitted by the remote
control device comprises a protocol and a command value that is
directly recognizable by a first device among the plurality of
source devices and the sink device, i.e., the invention claimed.

Appeal Br. 5–6 (emphases omitted); see also Reply Br. 2–3.
We disagree. The U.S. Supreme Court has held “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). Contrary to Appellant’s arguments, “[i]f the
claim extends to what is obvious, it is invalid under § 103” and “the analysis
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need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418–19.
The Examiner has provided articulated reasoning with a rational
underpinning as to why one skilled in the art would have found it obvious to
combine the teachings of Garg and Igoe. See Non-Final Act. 7; Ans. 4. In
particular, the Examiner finds one skilled in the art would have modified
Garg’s system to incorporate Igoe’s feature in order to facilitate
communications with the remote controller. See Ans. 4. Appellant does not
persuasively show why such reasoning is incorrect. Appellant’s argument
that the “reasoning does not assert that Igoe discloses, teaches, or suggests a
switching device that is able to detect 5 and act upon transmissions that are
intended for reception by devices other than the switching device itself
(which Igoe does not)” (Reply Br. 3 (emphasis omitted)) is unpersuasive,
because it is not directed to the Examiner’s specific findings. As discussed
above, the Examiner cites Garg—not Igoe—for teaching the determining
limitation (as recited in claim 5) and the detecting limitation (as recited in
claim 1). See Non-Final Act. 3, 5. Further, Appellant’s attorney argument
that “the Office has admitted that Igoe adds nothing to the disclosure within
Garg” (Reply Br. 5) plainly contradicts the record. See Ans. 4 (stating the
opposite of what Appellant argues).
The Examiner’s findings and conclusion are reasonable because the
skilled artisan would “be able to fit the teachings of multiple patents together

5 While claim 1 recites a detecting limitation, claim 5 recites “determine
. . . .” See claims 1 and 5.
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like pieces of a puzzle,” as the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420–21. Appellant does not
present adequate evidence that the resulting arrangements would have been
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418–19).
Accordingly, we agree with the Examiner that applying Igoe’s feature
in the Garg system would have predictably used prior art elements according
to their established functions—an obvious improvement. See KSR, 550 U.S.
at 417.
Finally, Appellant’s argument (Appeal Br. 5–6) is moot in light of the
Examiner’s refined rationale for the proposed combination. See Ans. 4.
Appellant’s assertion that the Examiner should withdraw the rejection
because the Examiner refined the reasoning in the Answer (Reply Br. 3) is
unpersuasive, as Appellant cites no basis for that assertion. To the extent
Appellant is arguing the refined reasoning constitutes a new ground of
rejection, that argument is a petitionable—not appealable—matter and is
therefore, not before us. See 37 C.F.R. § 41.40(a) (“Any request to seek
review of the primary examiner’s failure to designate a rejection as a new
ground of rejection in an examiner’s answer must be by way of a petition to
the Director under § 1.181 of this title filed within two months from the
entry of the examiner’s answer and before the filing of any reply brief.
Failure of appellant to timely file such a petition will constitute a waiver of
any arguments that a rejection must be designated as a new ground of
rejection.”); see also MPEP § 1002.02(c) (Petitions and Requests Decided
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by the Technology Center Directors); see also MPEP § 1201 (“The Board
will not ordinarily hear a question that should be decided by the Director on
petition . . . .”).

III
Appellant argues the proposed combination would cause Garg’s
switching device to “be rendered inoperable.” Appeal Br. 8; see also Appeal
Br. 7–8; Reply Br. 5.
An argument that the system is rendered “inoperable for its intended
purpose” is a “teach away” argument. In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (The court concluded that in effect, “French teaches away
from the board’s proposed modification” because “if the French apparatus
were turned upside down, it would be rendered inoperable for its intended
purpose”).
In this case, Appellant’s following attorney arguments are speculative
and unpersuasive, as Appellant does not provide sufficient objective
evidence to support the arguments. See Geisler, 116 F.3d at 1470; Meitzner,
549 F.2d at 782:
Garg discloses a system that includes a switching device, to
which is connected a plurality of source devices and a sink
device, and an IR remote controller that is operable to transmit
an IR signal to the switching device for the purpose of
commanding the switching device to connect a particular source
device to the sink device through the switching device.

Appeal Br. 6 (emphases omitted);

It is further respectfully submitted that, because nothing within
Garg discloses, teaches, or suggests that the switching device of
Garg is intended to detect/receive an IR signal that is operable to
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control a device other than the switching device (e.g., Garg does
not disclose the switching device detecting a command
transmitted for purposes of controlling a TV or a set-top box),
Garg must also fail to disclose, teach, or suggest a switching
device that will respond to the detection/reception of the IR
signal (that is operable to control a one of plurality of source
devices and the sink device) to thereby determine that the remote
control device is in use as further claimed.

Accordingly, based on the disclosure within Garg and the
acknowledgements set forth in the rejection of the claims as to
what is missing from within Garg in the first instance, it must be
taken as fact that the switching device of Garg is incapable of
detecting/receiving and responding to an IR signal transmitted by
the remote control device when the IR signal transmitted by the
remote control device comprises a protocol and a command
value that is directly recognizable by a first device among a
plurality of source devices and the sink device that are coupled
to the switching device, e.g., when a remote control is used to
transmit a command to a DVD player.

In view of the foregoing, it is respectfully submitted that, if the
remote controller of Garg were to be modified to send control
signals using a protocol and a command value that is directly
recognizable by the DVD player as asserted and relied upon in
rejecting the claims at issue, the switching device of Garg, which
is incapable of detecting and responding to such control signals,
would be rendered inoperable, i.e., the switching device of Garg
would no longer be capable of being operated by the remote
controller so modified as the switching device of Garg would--
;as is conventional-–ignore an IR signal that is intended for
receipt by the DVD player.

(Appeal Br. 7–8 (emphases omitted)).
Additionally, Appellant argues that Garg’s paragraph 55 and 64–66
[d]escribe[] that the switching device can be commanded to
connect a source device to the sink device by a user interacting
with a front panel provided to the switching device and/or by
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the user using the remote controller to transmit to the switching
device an IR signal having an AV input selection command,
i.e., an IR signal that is intended to be received and acted up by
the switching device to thereby control the AV input selection
functional operation of the switching device.

Appeal Br. 6–7 (emphases omitted).
However, according to Garg:

FIG. 4 illustrates one embodiment of a source switching
method when manual and/or remote selection of the source
devices is supported and currently enabled. If at least one
source device is detected (in step 320), the method of FIG. 4
may detect whether or not the user has selected a particular
source device via manual or remote selection means (in step
340). For example . . . .

Garg ¶ 55.

In some cases, the front panel may include remote selection
means for connecting a particular source device to the sink. For
example . . . .

In some cases, the front panel may include manual selection
means for connecting a particular source device to the sink in
addition, or alternative to, the remote selection means
mentioned above. For example . . . .

In some embodiments, the manual/remote selection means
provided on the front panel of the hub may be used to assign
priority data to the connected source devices. In one example . .
. .
Garg ¶¶ 64–66.
Appellant has not persuasively explained that Appellant’s
description (Appeal Br. 6–7) accurately reflects the substance of the
above paragraphs. In any event, regardless of whether the description
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is indeed accurate, Appellant does not persuasively explain why that
description demonstrates Examiner error.
In short, Appellant’s teaching away arguments are unpersuasive
because Appellant fails to provide adequate analysis under the case law.
Appellant fails to show one skilled in the art “would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” Kahn, 441 F.3d at
990.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 5.
For effective resolution of issues, we encourage Appellant to state
precisely which claim limitation is missing in the Examiner’s mappings,
analyze the reference portions cited by the Examiner for that limitation, and
clearly explain why the reference portions cited by the Examiner—not
merely explanation from the Examiner—do not teach that limitation. We
also recommend clear, concise sentences with reasonable length. Contra
Appeal Br. 5–6 (including a paragraph with only a single sentence, which
lasts 10 lines); Reply Br. 4 (including a paragraph with only a single
sentence, which lasts 9 lines).

Claims 1–4 and 6–12

For similar reasons discussed above with respect to claim 5, we
sustain the Examiner’s rejection of independent claims 1 and 9.
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We also sustain the Examiner’s rejection of corresponding dependent
claims 2–4, 6–8, and 10–12, as Appellant does not advance separate
substantive arguments about those claims. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–12 under 35
U.S.C. § 103.

DECISION SUMMARY

In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5, 7, 9,
11
103 Garg, Igoe 1, 3, 5, 7, 9,
11

2, 4, 6, 8,
10, 12
103 Garg, Igoe, Tzeng 2, 4, 6, 8,
10, 12

Overall
Outcome
1–12

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). See 37
C.F.R. § 41.50(f).

AFFIRMED