www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/646,715
`
`03/12/2020
`
`Yuuki OKAMOTO
`
`070469-0966
`
`2135
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`CHIN, RICKY
`
`2424
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/03/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/646,715
`
`03/12/2020
`
`Yuuki OKAMOTO
`
`070469-0966
`
`2135
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`CHIN, RICKY
`
`2424
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/03/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Application Number: 16/646,715
`Filing Date: 12 Mar 2020
`Appellant(s): PANASONIC INTELLECTUAL PROPERTY MANAGEMENTCoO.,
`
`LTD.
`
`Takashi Saito, Registration No.69,536
`For Appellant
`
`EXAMINER’S ANSWER
`
`This is in response to the appealbrief filed June 8, 2023.
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 3
`
`1. Every ground of rejection set forth in the Office action dated February 22, 2023
`
`from which the appeal is taken is being maintained by the examiner exceptfor the
`
`grounds ofrejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.”
`
`New groundsofrejection (if any) are provided underthe subheading “NEW GROUNDS
`
`OF REJECTION.”
`
`2. The following ground(s) of rejection are applicable to the appealed claims.
`
`Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable overStark et
`
`al., US 2006/0253874 in view of Yu, US 2017/0064383, and in further view of Patel
`
`et al., US 2012/0019400.
`
`Regarding claim 1, Stark teaches of a renderer device to be controlled by a
`
`controller device connected to a predetermined communication network (See Fig.3A,
`
`element 350 and [0026]-[0031], [0040], and [0065] which discloses the STB/media
`
`center whichis a renderer device whichis controlled via the computing
`
`system/controller device which is connected through a network communication), the
`
`renderer device comprising:
`
`a memoryunit that stores information used by the controller device (See [0007],
`
`[0019], [0024], and [0026]-[0029] the set-top box having at least a memoryfor at least
`
`epg data and menu options as well as for content receiving/transmitting/recording and
`
`transmitting metadata to the computing device) and to establish a direct connection
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 4
`
`from the controller device to a device to be controlled by the controller device (See
`
`[0028], [0039]-[0043], [0062], [0065], [0069], and [0072] teaches of the CM system
`
`comprising of the GUI and metadata of content/EPG metadata for controlling the
`
`presentation devices in at least selection/displaying/recording/transmitting of content
`
`whereit is clearly disclosed that the presentation devices may be controlled directly
`
`from the GUI of the CM system of element 300/controller device without intermediary
`
`devices. Therefore, information such as EPG data/information and menu
`
`data/information is used for establishing a direct connection from the computing device
`
`to a device to be controlled by the controller device since the menu options and
`
`content/epg data commands are transmitted and communicated without the
`
`intermediary device for controlling the device to be controlled by the controller device
`
`such as the presentation of content to the presentation device directly); and
`
`a detector that detects whether each of monitor devices is connected to the
`
`renderer device via the predetermined communication network (See [0021]-[0022];
`
`[0028]-[0035]; [0040]; [0051]; [0054] [0065]-[0070]; [01 12]-[0119] and figs.2 which
`
`discloses of device searching and device refreshing for finding and detecting the
`
`connected devices within the network. Further, it should be noted that the STB/media
`
`center is connected to the presentation devices/tvs and therefore in order to display
`
`content through the intermediary device of the media center to be displayed on the
`
`monitors, the monitors must befirst detected to know whereto display the content).
`
`Stark is silent with respect to the stored information being that of network
`
`connection information which indicates a connection destination of the controller device
`
`to establish a connection from the controller device to a device to be controlled by the
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 5
`
`controller device; an information update unit that updates the connection destination
`
`indicated by the network connection information stored in the memoryunit so that the
`
`connection destination indicates a monitor device among the monitor devices, when the
`
`detector has detected that the monitor device is connected via the predetermined
`
`communication network; and a communication unit that sends the network connection
`
`information indicating the monitor device as the connection destination stored in the
`
`memoryunit to the controller device.
`
`However, in the same field of endeavor, Yu teaches the stored information being
`
`that of network connection information which indicates a connection destination of the
`
`controller device to establish a connection from the controller device to a device to be
`
`controlled by the controller device (See Fig.1; [0051]-[0065]; [0071]-[0072], [0107];
`
`[0120]-[0121]; [0127], and [0133]-[0136] which discloses of storing network connection
`
`information at the hub such as a device being detected and turned on andofvirtual
`
`icon/user interface information to send to remote controller which the remote controller
`
`uses to establish a connection from the controller device to control the desired device);
`
`an information update unit that updates the connection destination indicated by the
`
`network connection information stored in the memory unit so that the connection
`
`destination indicates a monitor device among the monitor devices, when the detector
`
`has detected that the monitor device is connected via the predetermined communication
`
`network; and a communication unit that sends the network connection information
`
`indicating the monitor device as the connection destination stored in the memory unit to
`
`the controller device, (See Fig.1; [0051 ]-[0065]; [0071]-[0072], [0107]; [0120]-[0121];
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 6
`
`[0127], and [0133]-[0136] which discloses of sending updated and most recent network
`
`information of the states of the display/monitor/presentation devices to the remote
`
`controller device based on the most recent and updated stored state information).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified the teachings of Stark to have
`
`incorporated the teachings of Yu for the mere benefit of providing bi-directional
`
`information from the renderer device and controller device as to better provide
`
`synchronization and control functionality.
`
`The combination of Stark and Yuis silent with respect to the network information
`
`used by the controller device to establish a direct connection from the controller device
`
`to a device to be controlled by the controller device and of sending the network
`
`connection information when receiving a request.
`
`However, in the same field of endeavor, Patel teaches of the network information
`
`used by the controller device to establish a direct connection from the controller device
`
`to a device to be controlled by the controller device and of sending the network
`
`connection information when receiving a request (See Fig.3 [0038]-[0039];
`
`[0054];[0064]-[0065]; and [0077]-[0085] which discloses of the network information
`
`being of information that is used for the controller device to establish a direct connection
`
`whichis provided by the hub/second device suchthat the remote controller can control
`
`the other devices/know what other devices exist and know how to communicate with
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 7
`
`them without the hub/second device. Moreover, it is disclosed that the information may
`
`be provided upon request from the remote control to request the information about
`
`target device from the second media device in order to communicate with the target
`
`device).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified the teachings of Stark and Yu to
`
`have incorporated the teachings of Patel for the mere benefit of being able to more
`
`quickly control a device by bypassing the hub/intermediary device to control the devices
`
`directly.
`
`Regarding claim 9, the claim has been analyzed and rejected for the same reasons
`
`set forth in the rejection of claim 1.
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`3. Response to Arguments
`
`Page 8
`
`A. Rejection of Claims 1 and 9 Under 35 U.S.C. 103 over Stark et al., US
`
`2006/0253874 in view of Yu, US 2017/0064383, and in further view of Patel etal.,
`
`US 2012/0019400.
`
`i) Appellant argues that the Examiner’s mapping of the claimed features on Stark is
`
`erroneous and the Examiner failed to consider the disclosure of Stark when providing
`
`motivation to have the alleged memory unit of Stark to store the network connection
`
`information. In particular, the Appellant argues that Stark does not teachthe limitation of
`
`“a memoryunit that stores network connection information which indicates a connection
`
`destination of the controller device and is used bythe controller device to establish a
`
`direct connection from the controller device to a device to be controlled by the controller
`
`device” since there is no factual basis that the memoryunit in the STB stores network
`
`connection information which indicates a connection destination of the controller device
`
`to establish a direct connection from the controller device to a device to be controlled by
`
`the controller device.
`
`The Appellants arguments have been noted. However, as indicated in the Office
`
`Action of February 22, 2023 (pages 4-5) and restated above, Stark is merely relied upon
`
`for the teachings of a memoryunit that stores information used by the controller device
`
`and to establish a direct connection from the controller device to a device to be
`
`controlled by the controller device whereas Yu and Patel are relied upon for the network
`
`connection information indicating a connection destination of the controller device to
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 9
`
`establish a direct connection from the controller device to a device to be controlled by
`
`the controller device. With regards to Stark, Stark teaches of the rendering device of a
`
`Set-top box/media center having a memoryunit that stores information (See Fig.3A,
`
`element 350; [0019], and [0026]-[0028] which discloses the STB receiving and
`
`possessing program content data, EPG metadata, metadata information for the content,
`
`and scheduling/availability information which is then transmitted and passed on to the
`
`CM system, whereby the STB possessing a memory unit for at least storage of this
`
`information). This information from the STB is received by the CM system ([See [0019],
`
`and [0026]-[0028] which discloses of the CM system receiving the information from the
`
`STB; Fig.3A element 300 CM system, where in some embodiments, the CM system is a
`
`handheld device/smartphone, [0030]). This information is then used by the controller
`
`device andto establish a direct connection from the controller device to a device
`
`to be controlled by the controller device (See [0019] and [0026]-[0028] which
`
`discloses that the CM system/controller device usesthe information of the EPG
`
`metadata, content metadata, and programming content in order to select content for
`
`presentation, live control of the presentation, schedule recordings of the content, and
`
`direct control of the presentation to the display device/device to be controlled by the
`
`controller device (Fig.3A, elements 370 and 380 which discloses the
`
`presentation/display device(s) to be controlled by the controller device); Moreover,
`
`[0065], and [0072] explicitly states that the CM system/controller device directing of the
`
`presentation of the selected content on the selected content presentation device
`
`maybe directly or via one or more intermediary devices). In other words, Stark
`
`teaches of where stored information at the STB/media center such as EPG
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 10
`
`information/content metadata is used by the CM system/smartphone devicein order to
`
`establish a direct connection from the CM system/smartphone in order to be able to
`
`select content and have the content directly presented on the selected presentation
`
`devices/device to be controlled by the controller device without intermediary devices.
`
`The Examiner acknowledges and agrees with Appellant in that Stark is silent with
`
`respect to the information being network connection information which indicates a
`
`connection destination of the controller device and is used bythe controller device to
`
`establish a direct connection from the controller device to a device to be controlled by
`
`the controller as the Examiner indicated in the Office Action of February 22, 2023
`
`(pages 5-8), also restated above. However, it should be noted that the Examiner had
`
`relied upon the combination of Stark, Yu, and Patel as a combination to meetthe claim
`
`limitation and not solely and individually by Stark. As detailed in the claim rejection, the
`
`Examiner relies on Yu to teach the stored information being that of network connection
`
`information which indicates a connection destination of the controller device to establish
`
`a connection from the controller device to a device to be controlled by the controller
`
`device (See Fig.1, whichillustrates a portable device/remote control 110 AV hub/media
`
`center 112 which is connected to display/entertainment device 114-1; [0057], [0059]-
`
`[0062]; [0121]; [0127], and [0133]-[0136] which discloses of storing in memory, network
`
`connection information at the hub/media center which is sent to the portable electronic
`
`device 110 and indicates a connection destination of at least the type of coupled
`
`entertainment device and/or input connector or port which is electrically connected to
`
`HDMI cable for providing commandsto the entertainment/display device, thereby being
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 11
`
`indicative of a connection destination of the controller device. Further, it is disclosed that
`
`the stored device state/network connection information consists of display device states,
`
`identification of the device, presence information, information of devices being detected
`
`and turned on, and of virtual icon/user interface information to send to the electronic
`
`portable device/remote controller associated with the state of the entertainment/display
`
`device suchthat the portable electronic device/remote controller uses to establish a
`
`connection from the portable electronic device/controller device to control the device to
`
`be controlled by the controlling device with commands suchasplay, fast forward,
`
`reverse, etc.). Stated another way, the Examiner had relied on Yu to teach the
`
`limitations that Stark is silent on, which includes the stored information being that of
`
`network connection information which indicates a connection destination of the
`
`controller device to establish a connection from the controller device to a device to be
`
`controlled by the controller device since Yu teaches of a memory at the AV hub which
`
`stores state information indicative of HDMI port/input connectors/connection destination
`
`of the display/entertainment devices which is sent to the portable device and usedto
`
`establish connection from the portable device issuing commands through the user
`
`interface/icons to control the display/entertainment device through the AV hub.
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified the teachings of Stark to have
`
`incorporated the teachings of Yu for the mere benefit of providing bi-directional
`
`information from the renderer device and controller device as to better provide
`
`synchronization and control functionality as well as to leverage knowledge of the current
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 12
`
`state of entertainment/display devices to improve user experience (See Yu, [0058] and
`
`[0060] improving user experience and providing bi-directional communication).
`
`The Examiner further states in Office Action dated February 22, 2023 (pages 7-8),
`
`that the combination of Stark and Yuis silent with respect to the networkinformation
`
`used by the controller device to establish a direct connection from the controller device
`
`to a device to be controlled by the controller device and of sending the network
`
`connection information when receiving a request.
`
`Thus, the Examiner relied on Patel for the teachings of the network information
`
`used by the controller device to establish a direct connection from the controller device
`
`to a device to be controlled by the controller device and of sending the network
`
`connection information when receiving a request (See Fig.3 and [0081 ]-[0085] which
`
`discloses of the network information being of information that is used for the remote
`
`controller device to establish a direct connection to the target media device whichis
`
`provided by the hub/second device such that the remote controller can control the other
`
`devices/know whatother devices exist and know how to communicate with them without
`
`the hub/second device. Moreover, it is disclosed that the information may be provided
`
`upon request from the remote control to request the information about target device
`
`from the second media device or pushed to the remote control from the second media
`
`device in order to directly communicate with the target device).
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 13
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified the teachings of Stark and Yu to
`
`have incorporated the teachings of Patel for the mere benefit of being able to more
`
`quickly control a device by bypassing the hub/intermediary device to control the devices
`
`directly and for providing bi-directional communication in response to a single user
`
`command(See Patel, [0085)).
`
`Hence, Appellants argumentthat Stark does not store network connection
`
`information which indicates a connection destination of the controller device and is used
`
`by the controller device to establish a direct connection from the controller device to a
`
`device to be controlled by the controller device is rendered moot since the Examiner
`
`had relied upon the combination of Stark, Yu, and Patel in order to teach the claim
`
`limitations Appellant argues Stark is silent on.
`
`ii) Appellant further argues that with respectto claim 1, that the Examiner's cited
`
`detector of the claim limitation “a detector that detects whether each of the monitor
`
`devices is connectedto the renderer device via the predetermined communication
`
`network” would not necessarily detect whether each of monitor devices is connected to
`
`the renderer device (CM 330) via the predetermined communication network to which
`
`the controller device is connected and at most would detect a monitor that is connected
`
`to the STB. With regards to Appellants mapping of the argument, it should first be noted
`
`that the STB is the renderer device (See Appeal Brief, page 6 and analysis of claim 1)
`
`and therefore the renderer device should be element 350 of Fig.3A and not CM 330.
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 14
`
`Moreover, the Examiner construes the predetermined networkto be that of the
`
`entire network which connects STB/media center 350, presentation devices 370/380,
`
`and computing system 300. The claim does not specifically recite what the
`
`predetermined communication network encompasses. Hence, it does not preclude
`
`Stark (See [0021]-[0022]; [0028]-[0035]; [0040]; [0051]; [0054]; [0065]-[0070); [01 12)-
`
`[0119] and fig.2, refresh devices, device search, and direct content options; 3A,
`
`elements 350 and presentation 370/380) from reading on the detector that detects
`
`whether each presentation device/monitors is connected to the renderer device via the
`
`predetermined communication network to which the controller device is connected since
`
`all of the elements of the STB/media center, presentation devices, and CM system are
`
`all connected throughout the same predetermined communication home network.
`
`Moreover,in order for the CM system/portable remote device to direct content through
`
`the intermediary device of the STB/media center to a presentation device, the STB
`
`would haveto detect the presentation device before being able to display the content to
`
`the presentation device by user commandfrom the CM system/remote portable device,
`
`thereby also meeting the claim limitation of detecting whether each of the monitor
`
`device is connected to the STB bythe predetermined communication network to which
`
`the controller device is connected since the commandoriginates from the controller
`
`device. Furthermore, in addition to Stark teaching the detector, Yu, (See [0054] and
`
`[0060] [0054] and [0060]) and Patel (See [0081 ]-[0085]) also teachesof the remote
`
`control device receiving the status of presentation devices from the intermediary
`
`devices/hubs through a request from the remote controller, thereby also reading on the
`
`detector that detects whether each presentation device/monitors is connected to the
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 15
`
`renderer device via the predetermined communication network to which the controller
`
`device is connected.
`
`iii) Appellant further argues that even if Patel disclosed the networkinformation that
`
`there is no motivation or suggestion for one of ordinary skill in the art to store such
`
`information in the STB of Stark. The Examiner respectfully disagrees. Stark (See [0049]
`
`which teaches of displaying status of devices; Fig.2A, 235; device search, refresh
`
`devices, direct content) whichillustrates that Stark detects and displays network
`
`information for devices and Stark (See [0019], and [0026]-[0028]) clearly disclosesof
`
`information that is sent from the STB to the controller device. Hence, storage of
`
`additional information in the STB suchas status/information of connected presentation
`
`devices would have at least been obvious for one of ordinaryskill in the art before the
`
`effective filing date of the claimed invention to have incorporated into the STB of Stark
`
`for the mere benefit of conserving bandwidth and resources of the remote controller
`
`such that the data need not be stored at the remote controller and can be requested
`
`upon demand from the STB/media center/intermediary device (See Patel, [0081] and
`
`[0085] remote control device requests the information).
`
`iv)
`
`Lastly, Appellant argues that Stark is mostly directed to the CM system and that
`
`the STB has no important function in Stark’s invention and therefore would havelikely
`
`stored the alleged network connection information, if any, to the computing system
`
`rather than the STB/media center. Appellant also states that there is no reason for the
`
`STB/media center to include the alleged information update unit and communication
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 16
`
`unit and wouldlikely be included in the computer system instead. The Examiner
`
`respectfully disagrees. Stark’s STB/media center is responsible for receiving information
`
`such as content metadata, programming content, EPG data,etc. that is sent to the CM
`
`system such that the CM system canutilize to select content and schedule recordings
`
`(See Stark, [0019], [0026]-[0028]). Furthermore, The STB/media center of Stark also
`
`presents content to the presentation devices, (See Fig.3A, elements, 350, 370/380
`
`presentation devices) and therefore has a vital importance to the system of Stark.
`
`Moreover, Stark (See [0049] which teaches of displaying status of devices; Fig.2A, 235;
`
`device search, refresh devices, direct content) whichillustrates that Stark detects and
`
`displays network information for devices and Stark (See [0019], and [0026]-[0028])
`
`clearly discloses of information that is sent from the STB to the controller device. Hence,
`
`storage and functionality of additional information in the STB and detecting, updating,
`
`and communicating status/information of connected presentation devices would have at
`
`least been obvious for one of ordinary skill in the art before the effective filing date of the
`
`claimed invention to have incorporated into the STB of Stark for the mere benefit of
`
`conserving bandwidth and resources of the remote controller such that the data need
`
`not be stored or the function not need be performed at the remote controller and can be
`
`requested upon demandfrom the STB/media center/intermediary device (See Patel,
`
`[0081] and [0085] remote control device requests the information).
`
`
`
`Application/Control Number: 16/646,715
`Art Unit: 2424
`
`Page 17
`
`For the above reasons, it is believed that the rejections should be sustained.
`
`Respectfully submitted,
`
`Ricky Chin
`
`/Ricky Chin/
`
`Primary Examiner, AU 2424
`
`Conferees:
`
`/JEFFEREY F HAROLD/
`Supervisory Patent Examiner, Art Unit 2424
`
`/Brian T Pendleton/
`Supervisory Patent Examiner, Art Unit 2425
`
`4.
`
`Requirementto pay appeal forwarding fee.
`
`In order to avoid dismissal of the
`
`instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45
`
`requires payment of an appeal forwarding fee within the time permitted by 37 CFR
`
`41.45(a), unless appellant had timely paid the feefor filing a brief required by 37 CFR
`
`41.20(b) in effect on March 18, 2013.
`
`
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