In Re: Rhoads

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
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IN RE: GEOFFREY B. RHOADS, NICOLE RHOADS,
Appellants
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2015-1972
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/498,709.
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Decided: May 4, 2016
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WILLIAM CONWELL, Digimarc Corp., Beaverton, OR,
for appellants.

THOMAS W. KRAUSE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Michelle K. Lee. Also represented by AMY J.
NELSON, BRIAN RACILLA, LORE A. UNT.
______________________

Before O'MALLEY, CLEVENGER, and BRYSON, Circuit Judg-
es.
CLEVENGER, Circuit Judge.
Geoffrey and Nicole Rhoads (collectively “Rhoads”)
appeal the decision of the Patent Trial and Appeal Board
(“the Board”) affirming the Examiner’s rejection of claim 8
2 IN RE: RHOADS

of Rhoads’ U.S. Patent Application No. 12/498,709 (“the
’709 Application”). For the reasons below, we affirm.
BACKGROUND
Rhoads’ ’709 Application, titled “Methods and systems
for cell phone interactions,” was filed July 7, 2009 and
claims priority to a provisional application filed April 14,
2009. The ’709 Application is directed to methods and
systems for implementing cell phone control over various
external devices such as thermostats or parking meters.
The invention allows a user to take a picture with their
cell phone camera of a device they would like to control.
After the device is identified by information captured in
the picture (such as a digital watermark), the user can
control the device via an interface on their cell phone that
uses the picture of the device as a graphical user interface
(“GUI”). For example, Figure 6 shows a captured image of
a thermostat displayed on the screen of a cell phone:

’709 Application at Figure 6.
When the user touches the region of the screen 64 or
66, the cell phone transmits commands to the thermostat
to increment or decrement, respectively, the temperature.
IN RE: RHOADS 3

’709 Application at ¶ 44. In this example, a “SET
TEMPERATURE” graphic is also displayed while the
command to the thermostat is pending, to be replaced by
a “confirmatory message” when the command has been
successfully completed. See id.
The only claim at issue in this appeal is claim 8. 1
Claim 8 reads as follows (bracketed letters added for ease
of reference):
8. A method comprising:
[a] through a user interface on a user’s cell
phone, receiving an instruction relating to
control of a device, the user interface be-
ing presented on a screen of the cell phone
in combination with a cell phone-captured
image of the device;
[b] transmitting electronic information
from the cell phone, destined for the de-
vice, to cause the device to execute said in-
struction;
[c] signaling information corresponding to
the instruction, to the user, in a first fash-
ion while the instruction is pending; and
[d] signaling information corresponding to
the instruction, to the user, in a second,
different fashion once the cell phone re-
ceives a signal sent by the device, said
signal indicating that the instruction has
been successfully performed.

1 Rhoads challenges only the rejection of claim 8,
and does not challenge the rejection below of claims 1-7 or
25. Appellant’s Br. at 3.
4 IN RE: RHOADS

During prosecution of the ’709 Application, on No-
vember 22, 2011, the Examiner issued a final office action
rejecting claim 8 under 35 U.S.C. § 103 as obvious over
U.S. Patent Publication 2009/0237546 to Bloebaum et. al.
(“Bloebaum”) in view of U.S. Patent Publication
2007/0108287 to Davis (“Davis”)2 and in further view of
U.S. Patent Publication 2003/0073412 to Meade
(“Meade”).
Bloebaum discloses a system in which a cell phone
captured image of a device is sent to a server for identifi-
cation, after which the server returns to the cell phone a
series of possible actions or tasks that may be performed
on or with that device. Bloebaum at ¶ 56. The user can
then select an action or task, causing the server to return
to the cell phone a list of steps or actions required to
complete the task. For example, Figure 4 of Bloebaum
depicts an embodiment wherein the user (1) took a picture
of car tire, (2) the server returned a series of tasks such as
“change the tire, check tire inflation, etc.,” (3) the user
selected “change the tire,” and (4) the server returns a list
of tasks associated with changing a tire that are displayed
on the user’s cell phone (e.g. “Remove jack from trunk,”
“Loosen lugnuts [sic]”). See Bloebaum at ¶¶ 69-70.

2 Appellant and ’709 Application co-inventor Geof-
frey B. Rhoads is one of the named inventors of Davis.
IN RE: RHOADS 5

Bloebaum, Fig. 4.
Bloebaum describes other examples of “objects” that
Bloebaum’s system can identify by various means and
provide instructions for, including a faucet, a cake (i.e. to
provide baking instructions), and a car radio or other
appliance. See Bloebaum at ¶¶ 64-66, 73-74. Bloebaum
however does not disclose sending information from a cell
phone to a device to control the device, instead relying on
the user to complete the tasks. Bloebaum also does not
disclose signaling to the user that an action performed on
a device has been successfully completed.
For those features of claim 8, the Examiner relied on
Davis and Meade. Davis discloses a system in which a
reader device (such as a camera-equipped phone) uses
images or other digital watermark information to identify
a device, receive control instructions for the device from a
server, and then remotely control the device with instruc-
tions issued by the reader device. See Davis at ¶¶ 97-99.
Meade discloses a system in which a mobile computing
device, such as a cell phone or PDA, can be used to re-
6 IN RE: RHOADS

motely control various other devices. See Meade at Ab-
stract. The cell phone in Meade stores content (e.g. music
or video files) and user preferences about a device (e.g.
favorite TV or radio stations) that can be manually or
automatically transmitted to and from devices (such as a
TV or radio) via a wireless connection between them. See
e.g. Meade at ¶¶ 31-35.
The Examiner further found that a person of ordinary
skill would be motivated to modify Bloebaum to receive
electronic device control instructions per Davis, and
transmit electronic device control instructions per Meade,
thereby providing a system in which a cell phone could be
used to control various appliances. The Examiner also
reasoned that “the combination of Bloebaum with Davis
and Meade as described is a combination of known ele-
ments by known methods with no change in respective
function, and the combination would have yielded nothing
more than predictable results.” J.A. 125.
Rhoads appealed the final rejection of claim 8 to the
Board, providing three reasons they believed the Examin-
er’s findings were wrong. First, Rhoads argued that the
“instruction” limitation in claim 8 requires that the “in-
struction” is a command sent to and executed by the
external device, whereas the “instruction” in Bloebaum is
performed manually by the user. Second, Rhoads argued
that Bloebaum failed to teach the “signaling” limitations
(i.e. limitations [c] and [d]) because Bloebaum did not
disclose two different fashions of signaling indicating that
an instruction was pending or performed. Finally, Rhoads
took issue with the Examiner’s explanation for the reason
to combine the references, arguing that Meade alone met
the “stated ambition” provided by the Examiner and thus
there would be no need to combine Meade with the other
references. Rhoads also argued that the Examiner’s
recitation that “the combination involves known elements,
with no change in function, and with nothing more than
predictable results” was unsupported by facts.
IN RE: RHOADS 7

The Board however adopted and affirmed the Exam-
iner’s findings and reasoning on claim 8 without further
explanation. J.A. 005. On request for rehearing, the
Board rejected Rhoads’ contention that Bloebaum failed to
teach the “signaling” limitations of claim 8 (i.e. elements
[c] and [d]), finding no error in the Examiner’s holding
that Bloebaum, Davis, and Meade met those limitations.
J.A. 012. This appeal followed, and we have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
STANDARD OF REVIEW
The Board’s conclusions of law are reviewed de novo
and its findings of fact are reviewed for substantial evi-
dence. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1297 (Fed. Cir. 2015) (citing In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000)). Substantial evidence is
such relevant evidence as a reasonable mind might accept
as adequate to support a conclusion. See In re Applied
Materials, Inc., 692 F.3d 1289, 1294 (Fed. Cir. 2012).
“[T]he possibility of drawing two inconsistent conclusions
from the evidence does not prevent an administrative
agency’s finding from being supported by substantial
evidence.” Id. (quoting Consolo v. Fed. Mar. Comm'n, 383
U.S. 607, 620 (1966)).
With respect to claim construction, intrinsic evidence
and the ultimate construction of the claim are reviewed
de novo. See Teva Pharmaceuticals U.S.A., Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015). Underlying
factual determinations concerning extrinsic evidence are
reviewed for substantial evidence. Id. In patent examina-
tions, claims in an application are to be given their broad-
est reasonable interpretation consistent with the
specification. See In re Bond, 910 F.2d 831, 833 (Fed. Cir.
1990).
While the ultimate determination of obviousness un-
der 35 U.S.C. § 103 is a question of law, it is based on
several underlying factual findings, including the differ-
8 IN RE: RHOADS

ences between the claimed invention and the prior art.
See In re Baxter Int'l, Inc., 678 F.3d 1357, 1361 (Fed. Cir.
2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966)). The scope and content of the prior art, and the
existence of a reason for a person of ordinary skill to
combine references, are determinations of fact that we
review for substantial evidence. See In re Mouttet, 686
F.3d 1322, 1330 (Fed. Cir. 2012); In re Constr. Equip. Co.,
665 F.3d 1254, 1255 (Fed. Cir. 2011).
DISCUSSION
On appeal, Rhoads generally raises the same three
arguments that were raised to the Board. The PTO re-
sponds that the Board’s conclusion that claim 8 would
have been obvious is supported by substantial evidence
and correct as a matter of law. As addressed below, we
find Rhoads’ arguments unpersuasive and thus affirm the
decision of the Board finding claim 8 obvious over the
combination of Bloebaum, Davis, and Meade.
A
Rhoads argues that the “instruction[s]” in Bloebaum
are instructions to the user about how to control a device
(e.g. instructions for changing a tire might begin with
“Remove jack from trunk”). But according to Rhoads, the
“instruction[s]” in claim 8 are defined as instructions to a
device that control said device (e.g. an “increase tempera-
ture” instruction sent to a thermostat). Rhoads thus
argues that Bloebaum cannot support a prima facie case
of obviousness.
We disagree. Rhoads points to elements [b], [c], and
[d] of the claims as evidencing a narrow construction of
the term “instruction” that limits the “instruction” to only
data that a device can execute. But a plain reading of
element [b] suggests otherwise: “transmitting electronic
information from the cell phone, destined for the device,
to cause the device to execute said instruction.” The claim
IN RE: RHOADS 9

language thus suggests that the “instruction” can be a
more abstract construct used to represent control of a
device (e.g. “turn up the volume,” “turn down the temper-
ature,” etc.), which is then converted or instantiated into
“electronic information” for transmission to the device.
Nothing in the claim language requires or even suggests
that the “instruction” is itself limited to the electronic
information.
Moreover, the specification broadly uses the term “in-
struction” to refer both to electronic commands sent to a
device and to human-readable interface elements. Com-
pare ’709 Application at ¶ 50 (“After the user has issued
an instruction via the cell phone, the command is relayed
to the thermostat as described above”) with ¶ 52 (“The
server returns UI instructions, optionally with status
information for that meter (e.g., time remaining; maxi-
mum allowable time). These data are displayed on the cell
phone UI, e.g., overlaid on the captured image of the cell
phone, together with controls/instructions for purchasing
time”). Thus, the broadest reasonable construction,
consistent with the specification, of the term “instruction”
in claim 8 includes both electronic commands sent to a
device and human-readable commands shown on a user
interface.
With that understanding of “instruction,” we turn to
Rhoads’ argument about Bloebaum. We agree with the
PTO that Rhoads’ argument misconstrues the basis for
the Examiner’s (and thus the Board’s) holding. The
Examiner found that while Bloebaum disclosed receiving
and displaying “instruction[s]” relating to a device,
Bloebaum failed to disclose transmitting electronic infor-
mation to the device to execute those “instruction[s].”
Contrary to Rhoads’ argument however, that does not end
the inquiry and require reversal, because the Examiner
made clear that he relied on Davis and Meade for trans-
mitting electronic information to the device to cause the
device to execute the “instruction.” Rhoads does not
10 IN RE: RHOADS

appear to dispute that holding at least with respect to
Meade. See Appellant’s Br. at 23. 3 Thus, Bloebaum’s lack
of ability to transmit and execute “instructions” on a
remote device does not undermine the Board’s conclusion.
B
Rhoads argues that neither Bloebaum nor Meade dis-
closes elements [c] or [d], which Rhoads refers to as the
“signaling” limitations. Specifically, Rhoads argues that
Bloebaum fails to disclose element [c], “signaling” to the
user “in a first fashion while the instruction is pending,” 4
and Meade fails to disclose element [d], signaling to the
user in a “second, different fashion” when the “instruction
has been successfully performed.”
With respect to Bloebaum and element [c], Rhoads
simply asserts in a conclusory fashion that nothing in
Bloebaum teaches that limitation but fails to provide any
further argument or explanation. See Appellant’s Br. at

3 Rhoads uses a somewhat misleading ellipsis to
suggest that the Examiner conceded that Davis did not
transmit electronic information to the device to cause the
device to execute an instruction. See Appellant’s Br. at 22.
That is not accurate. The Examiner found that Davis did
disclose that function, but that Davis did not disclose
signaling to the user that an instruction had been success-
fully performed. A123; see also Davis at ¶ 97 (“In applica-
tions where the object is a machine, the object reference
may also facilitate remote control and remote updating of
control instructions for the machine.”).
4 Rhoads also argues that Bloebaum does not dis-
close element [d], which the PTO appears to concede by
noting that the Board’s conclusion was based only on
Bloebaum disclosing element [c]. Appellee’s Br. at 21-22.
We thus assume for the sake of argument that the Board
relied on Bloebaum only for element [c].
IN RE: RHOADS 11

18, 22. Assuming for the sake of argument that Rhoads
did not waive this argument for failure to sufficiently
develop it on appeal, 5 we would still affirm the Board’s
holding on this point. The Examiner found this limitation
met by Bloebaum’s disclosure that in response to the
selection of a particular action from the displayed list of
possible tasks, the server in Bloebaum will return to the
cell phone a list of steps and/or items needed to complete
the task, i.e. “instruction[s],” which are displayed to the
user while the user is performing the task, i.e. while the
“instruction” is pending. J.A. 191. Rhoads does not
provide any explanation for why a reasonable mind might
not accept as adequate this support for the conclusion
that Bloebaum discloses element [c]. Thus, substantial
evidence supports the Board’s finding with respect to
Bloebaum and element [c].
Turning to element [d], Rhoads argues that Meade
does not teach signaling to the user that an instruction
has been successfully performed. Rhoads agrees that
Meade discloses two-way bi-directional communication
between a cell phone and a device, but argues that Meade
fails to disclose a specific signal that an instruction to a
device has been successfully executed. Appellant’s Reply
Br. at 13.
We disagree. As an initial matter, it is of course the
case that a “reference must be considered not only for
what it expressly teaches, but also for what it fairly
suggests.” In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)
(quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)).

5 See e.g. SmithKline Beecham Corp. v. Apotex
Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (holding an
argument waived because “mere statements of disagree-
ment with the district court as to the existence of factual
disputes do not amount to a developed argument.”)
12 IN RE: RHOADS

Here, even Rhoads does not dispute that “[t]here’s no
theoretical limit to the sorts of information that might be
conveyed” by the bi-directional communications link in
Bloebaum. We are thus skeptical of Rhoads’ suggestion
that a skilled artisan in 2009 would not understand to
implement a confirmation message when a remote com-
mand has been successfully executed, a common feature
of two-way bi-directional computer communications long
before the filing of the ’709 Application. See e.g. Christo-
pher S. Yoo, Protocol Layering and Internet Policy, 161 U.
Pa. L. Rev. 1707, 1743 (2013) (noting that the Internet’s
primary transport protocol since 1983, “Transmission
Control Protocol” or “TCP,” expects a confirmation mes-
sage for every packet sent). After all, “[a] person of ordi-
nary skill is also a person of ordinary creativity, not an
automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007).
We find the disclosures in Meade sufficient to support
the examiner’s conclusion. The Examiner found that
Meade discloses embodiments where the cell phone shows
the content available to be played on a device (e.g. a list of
songs or videos), and further found that the cell phone can
send an instruction to the remote device to play a particu-
lar piece of content. See e.g. Meade at ¶¶ 49, 70-71.
Meade further discloses an embodiment where a user
selects from their cell phone a radio program they wish to
play on an audio device; if the program is not available,
the cell phone informs the user when the program will be
available. Id. at ¶ 61. We agree with the PTO that the
disclosure in Meade would fairly suggest to one of skill in
the art that “signals are sent between the cell phone and
the device, and that the cell phone monitors performance
by the device and receive [sic] signals regarding the
same.” Appellee’s Br. at 22. Based on these disclosures,
we conclude that substantial evidence supports the
Board’s finding that Meade discloses element [d] of claim
8.
IN RE: RHOADS 13

C
Finally, Rhoads argues that the Board failed to articu-
late a sufficient reason to combine Bloebaum, Davis, and
Meade. We disagree.
First, Rhoads points to the Examiner’s statement that
a person of ordinary skill in the art would have been
motivated to combine Bloebaum, Davis, and Meade and
“thereby provid[e] an appliance control system in which a
computing device is configured for controlling various
appliances.” J.A. 125. Rhoads argues that this “stated
ambition” is flawed because Meade alone is capable of
that functionality, and thus, there would be no reason to
combine Bloebaum with Meade and Davis. Rhoads’
argument however mischaracterizes the basis for the
Examiner’s conclusion.
The Examiner found that a skilled artisan would be
motivated to modify Bloebaum with Meade and Davis so
that the instructions shown on the cell phone in
Bloebaum could be transmitted as electronic information
to a device to cause the device to execute the instructions
(rather than the user having to manually execute the
instructions). J.A. 193. Indeed, Meade itself teaches that
remote control of electronic devices is advantageous and
thus provides a motivation to combine Davis and Meade
with Bloebaum. See e.g. Meade at ¶ 138 (“Foremost, a
mobile computing device becomes the master of applianc-
es in its environment, controlling content and user prefer-
ences”); see also In re Thrift, 298 F.3d 1357, 1364 (Fed.
Cir. 2002) (reason to combine references may be found
within the references themselves). The phrase that
Rhoads quotes as the “stated ambition” is simply a state-
ment describing the system resulting from the combina-
tion, and not (as Rhoads contends) the Examiner’s sole
explanation of the reason to combine Bloebaum with
Davis and Meade.
14 IN RE: RHOADS

Second, Rhoads takes issue with the Examiner’s find-
ing that “the combination of Bloebaum with Davis and
Meade as described is a combination of known elements
by known methods with no change in respective function,
and the combination would have yielded nothing more
than predictable results.” Rhoads argues in response to
this statement that because the third and fourth claim
elements are missing from the cited art, the art cannot be
combined in the proposed fashion. Appellant’s Br. at 33.
As we have upheld the Board’s holding that the prior art
discloses each element of claim 8, we reject this argument
as well.
Third, Rhoads argues that it would be impossible to
modify Bloebaum with Davis and Meade because
Bloebaum is limited to physical or manual control of
devices. We disagree. Rhoads’ argument is based on an
overly narrow reading of Bloebaum’s disclosure. The fact
that Bloebaum discloses (as one example) instructions for
fixing a faucet does not limit the disclosure of Bloebaum
to only devices susceptible to manual control, because it is
clear that Bloebaum “fairly suggests” more than that. See
Baird, 16 F.3d at 383. Bloebaum consistently refers to
the devices for which it provides instructions with the
generic term “object,” indicating that the invention is not
limited in the manner suggested by Rhoads. See e.g.
Bloebaum at Figure 1 & ¶ 49 (“Using the camera 13, the
user of the wireless telephone 10 captures an image of an
object 40”). For example, Bloebaum discloses providing
instructions for control of a car radio (id. at ¶ 73), which is
exactly the kind of electronic device that would be com-
patible with the Davis or Meade systems. See e.g. Davis at
¶ 97 (“Consider examples where the object is a robot,
portable or desktop computer, consumer electronic device
(e.g., television, stereo component, etc.), telephone, em-
bedded computer on board a vehicle or some other ma-
chine, appliance, etc.”) (emphasis added); Meade at ¶ 26
(“An appliance control system of the present invention
IN RE: RHOADS 15

enables a mobile computing device, such as a personal
digital assistant, to control appliances like televisions,
radios, printers, etc.”) (emphasis added).
Therefore, we find that substantial evidence supports
the Board’s conclusion that a skilled artisan would be
motivated to combine Bloebaum, Davis, and Meade to
achieve the invention of claim 8.
CONCLUSION
For the reasons above, we affirm the Board’s conclu-
sion that claim 8 would have been obvious over Bloebaum
in light of Davis and Meade.
AFFIRMED
COSTS
No Costs.