BLITZSAFE TEXAS LLC et al.Download PDFPatent Trials and Appeals BoardDec 1, 20212021005301 (P.T.A.B. Dec. 1, 2021) Copy Citation 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. 90/020,128 03/22/2019 8155342 2509 172615 7590 12/01/2021 Fabricant LLP 411 Theodore Fremd Road Suite 206 South Rye, NY 10580 EXAMINER FOSTER, ROLAND G ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/01/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BLITZSAFE TEXAS, LLC Patent Owner and Appellant Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 Technology Center 3900 Before ERIC B. CHEN, MIRIAM L. QUINN, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(b) and 306, Appellant appeals from the Examiner’s rejection of claims 49–53, 55–57, 60, 62–64, 66, 68, 70, 71, 73– 80, 84, 88, 95, 97, 99–103, 106, 109–11, 113, 115, and 120. A hearing was held by video on October 21, 2021. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter new grounds of rejection under 37 C.F.R. § 41.50(b). Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 2 TECHNOLOGY The application relates to “a multimedia device integration system for integrating after-market components such as satellite receivers, CD players, . . . MP3 players, . . . cellular telephones, and other devices for use with factory-installed (OEM) or after-market car stereo and video systems.” ’342 patent, 1:19–28. ILLUSTRATIVE CLAIM Claim 49 is illustrative and reproduced below with the limitations at issue emphasized. Whitespace and bracketed labels have been added. 49. A multimedia device integration system, comprising: [(1)] an integration subsystem in communication with a car audio/video system; and [(2)] a first wireless interface in communication with said integration subsystem, [(2)(a)] said first wireless interface establishing a wireless communication link with a second wireless interface in communication with a portable device external to the car audio/video system, [(3)] wherein said integration subsystem [(3)(a)] obtains, using said wireless communication link, information about an audio file stored on the portable device, [(3)(b)] transmits the information to the car audio/video system for subsequent display of the information on a display of the car audio/video system, [(3)(c)] instructs the portable device to play the audio file in response to a user selecting the audio file using controls of the car audio/video system, and Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 3 [(3)(d)] receives audio generated by the portable device over said wireless communication link for playing on the car audio/video system. RELATED PROCEEDINGS According to Appellant, the ’342 patent has been involved in four district court litigations in the Eastern District of Texas and fifteen inter partes review petitions that were either denied institution or terminated prior to a final written decision. Appeal Br. 1 (listing IPR2016-00118, IPR2016- 00418, IPR2016-00419, IPR2016-01445, IPR2016-01449, IPR2016-01473, IPR2016-01533, IPR2016-01557, IPR2016-01560, IPR2016-01476, IPR2018-00090, IPR2018-00544, IPR2018-00926, IPR2018-00927, IPR2018-01209). REFERENCES The Examiner relies on the following references as prior art: Name Number Date Chen US 2003/0101052 A1 May 29, 2003 Gioscia US 6,421,305 B1 July 16, 2002 Marlowe1 US 2003/0215102 A1 Nov. 20, 2003 Shearer US 2003/0224726 A1 Dec. 4, 2003 1 Appellant and the Examiner refer to the Marlowe prior art reference as the “Marlowe Publication” and the ’342 patent as the “Marlowe Patent.” To more clearly distinguish them, we refer to “Marlowe” solely for the prior art. Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 4 REJECTIONS The Examiner makes the following rejections under 35 U.S.C. § 103: Claims References Final Act. 49–53, 56, 60, 62, 63, 66, 70, 71, 73–78, 84, 88, 95, 97, 99– 101, 106, 109–11, 113, 120 Marlowe, Shearer 6–12 55, 57, 64, 79, 80, 102, 103 Marlowe, Shearer, Chen 12–13 68, 115 Marlowe, Shearer, Gioscia 13 ISSUES 1. Did the Examiner err in finding the combination of Marlowe and Shearer teaches or suggests (A) an “integration subsystem” and (B) “receives audio generated by the portable device over said wireless communication link for playing on the car audio/video system,” as recited in claim 49? 2. Did the Examiner err in finding a person of ordinary skill in the art would have had reason to combine Marlowe and Shearer? ANALYSIS Overview Although we agree with the Examiner’s ultimate conclusions of obviousness based on the cited references, we rely on additional or different reasoning than the Examiner for portions of the independent claims. Accordingly, we reverse the Examiner’s rejections, but using our authority under 37 C.F.R. § 41.50(b), we designate new grounds of rejection under 35 U.S.C. § 103 based on the same combinations of references against the same claims. For limitations and claims not disputed by Appellant, we rely on the undisputed findings and conclusions of the Examiner in the rejections. Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 5 Rejection #1: Marlowe & Shearer (Claims 49–53, 56, 60, 62, 63, 66, 70, 71, 73–78, 84, 88, 95, 97, 99–101, 106, 109–11, 113, and 120) The ’342 patent and Marlowe come from the same patent family. The ’342 patent claims priority to the application for Marlowe through a series of continuations-in-part. See ’342 patent, code (63); Marlowe, code (21). However, the claims challenged here are not entitled to Marlowe’s priority date due to new material added in the continuations-in-part, including material related to wireless communication. Final Act. 4–5. Marlowe therefore is prior art to the challenged claims. Id. Nevertheless, the ’342 patent and Marlowe “often share identical disclosure.” Id. at 4, 6. Because of this significant overlap, the Examiner finds that Marlowe discloses all of the limitations in independent claim 49 “except for ‘wireless’ communication.” Id. at 6–8. For wireless communication, the Examiner relies on Shearer, which “teaches wireless communication between a car audio/video system [and] a Bluetooth device, including a MP3 player or a cellular telephone.” Final Act. 9 (citing Shearer Fig. 1, ¶¶ 28, 30). The Examiner determines that “it would have been obvious to replace the wired interface taught by the car stereo system of the Marlowe Publication with a wireless interface associated with a Bluetooth device, including a MP3 player or a cellular telephone, as taught by the car stereo system of Shearer.” Id. at 10. Thus, in the Examiner’s combination, the only change being made to Marlowe is changing a single wired connection to a wireless connection. Ans. 26. For example, in Figure 2b of Marlowe (which is identical to Figure 2b of the ’342 patent other than being hand-drawn), the Examiner Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 6 replaces the wired connection between interface 20 and MP3 player 30 with a wireless Bluetooth connection to an MP3 player, as disclosed in Shearer. Appellant makes three primary arguments. First, Appellant argues that Marlowe’s interface does not teach the claimed “integration subsystem” because Marlowe’s interface “is not subordinate to another system.” Appeal Br. 18. Second, Appellant argues that although “Shearer discloses a wireless communication system designed for telephone calls,” Shearer “does not teach a wireless communications link for transmitting audio generated by a portable device from an audio file.” Id. at 22 (emphases added). Third, Appellant argues that the Examiner has not shown a person of ordinary skill in the art would have had reason to combine Marlowe and Shearer, particularly given Shearer’s focus on a cell phone embodiment. Id. at 23– 34. Although we do not agree with all of the Examiner’s reasoning, we agree with the Examiner’s ultimate conclusion of obviousness and we are not persuaded by Appellant’s arguments. First, Marlowe’s interface 20 teaches or suggests an “integration subsystem” as claimed. The term “integration” is expressly defined in the ’342 patent to require four specific functions. ’342 patent, 8:64–9:3; see also IPR2016-00419, Paper 13, at 14– 15. There is no dispute that Marlowe’s interface 20 provides these functions when connected to a car radio and an audio device. Hearing Tr. 15:11–14 (Oct. 21, 2021; mailed Nov. 17, 2021). Instead, the sole dispute is whether Marlowe’s interface 20 is a “subsystem.” The construction of “subsystem” was addressed in prior proceedings on the ’342 patent. For example, in denying institution for inter partes Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 7 review on the ’342 patent, a previous PTAB panel held that “subsystem” means a “system which is subordinate to another system.” IPR2016-01473, Paper 9, at 12 (Jan. 24, 2017). Appellant does not dispute that Marlowe’s interface 20 is a “system.” Hearing Tr. 7:18–22. Instead, Appellant argues that Marlowe’s interface 20 is not “subordinate to another system” because it is not a component of (or located within) either car radio 10 or the audio device, such as MP3 player 30. Appeal Br. 18; see also ’342 patent, Figs. 18–19. We begin with a closer analysis of the “systems” in the ’342 patent and Marlowe. In the ’342 patent, independent claim 49 recites: 49. A multimedia device integration system, comprising: an integration subsystem in communication with a car audio/video system . . . . Thus, the claimed “integration subsystem” is part of the claimed “multimedia device integration system.” Marlowe teaches the same arrangement. In Marlowe, independent claim 1 recites: 1. An audio device integration system comprising: a car stereo; an audio device external to the car stereo; an interface connected between the car stereo and the audio device . . . . Thus, in Marlowe, the “interface” is part of a larger system, specifically the “audio device integration system.” See also Reply Br. 4 (“As described in paragraphs 14 and 41 of the Marlowe Publication, and in the claims, the ‘audio device integration system’ is the entire system shown in Figure 1”). Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 8 Given that Appellant agrees Marlowe’s interface is a “system,” Marlowe’s interface therefore is a subsystem within a larger system, i.e., a system subordinate to a larger system, specifically the audio device integration system. See also IPR2016-01476, Paper 12, at 9 (Jan. 24, 2017) (elaborating on “subsystem” based on dictionary definitions such as “[a] system which is a part of, or assists, a larger system” and “a portion of a system that can be treated as a single element in the main system, but that can also be considered a distinct system itself”). In the Reply Brief, Appellant argues that “the physical location of the interface 20” must be “within the car radio 10.” Reply Br. 2. However, independent claim 49 does not require this. To the contrary, dependent claim 50, which depends from claim 49, adds the further limitation that “said integration subsystem is positioned within the car audio/video system.” Claim differentiation therefore strongly suggests that independent claim 49 is not so limited.2 Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1391 (Fed. Cir. 2016) (“A construction that would cause two differently worded claims to cover exactly the same claim scope would render one of the claims superfluous, so we apply a presumption against such constructions.”). The combination of Marlowe and Shearer also teaches an “integration subsystem” for a separate reason. In independent claim 49, the claimed “multimedia device integration system” comprises two components: (1) an 2 Appellant does not argue dependent claim 50 separately here. Should the issue arise in further prosecution, the Examiner may wish to consider whether it would have been obvious to physically combine Marlowe’s interface 20 with car radio 10, especially in a combination in which interface 20 connects with an audio device wirelessly. Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 9 “integration subsystem” in communication with a car audio/video system and (2) a “first wireless interface” in communication with said integration subsystem that establishes a wireless communication link with a second wireless interface of a portable device (e.g., a mobile phone or MP3 player). The ’342 patent discloses the “wireless interface” as a “transceiver.” ’342 patent, 33:61–34:3 (“a wireless interface or transceiver 916” in Fig. 18; “The wireless interface 916 could comprise an AT76C551 Bluetooth transceiver”), 34:11–16 (same for 926 in Fig. 18), 36:31–33 (same for 1316 in Fig. 22). The prior art teaches the same two components. Marlowe teaches an interface 20 in communication with a car audio/video system and Shearer teaches a Bluetooth transceiver for establishing a wireless communication with a portable device (e.g., a mobile phone or MP3 player). Thus, in combination, Marlowe’s interface 20 and Shearer’s Bluetooth transceiver collectively form a “multimedia device integration system” in which Marlowe’s interface 20 is a system that provides the claimed “integration” functionalities and therefore is an “integration subsystem.” Second, we are not persuaded by Appellant’s argument that Shearer fails to teach or suggest the limitation “receives audio generated by the portable device over said wireless communication link for playing on the car audio/video system.” In particular, Appellant argues that although “Shearer discloses a wireless communication system designed for telephone calls,” it “does not teach a wireless communications link for transmitting audio generated by a portable device from an audio file.” Appeal Br. 21–23 (emphases added). Other than the communication being “wireless,” the Examiner relies on Marlowe for teaching this limitation, not Shearer. Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 10 Ans. 26. Thus, Appellant’s argument based solely on Shearer does not address the Examiner’s rejection. Moreover, even if the Examiner were relying on Shearer for this limitation, we further agree with the Examiner that Shearer also teaches this limitation because “Shearer teaches receiving an audio signal and using a signal converter and transducer (both of which are not decoders) to convert the low frequency Bluetooth signal into another form of a signal, namely an analog magnetic signal compatible with the tape media.” Ans. 28. As the Examiner points out, converting a Bluetooth signal into an analog signal is the same process used as the ’342 patent. Id. (citing ’342 patent, 28:3–6, 34:43–48, Fig. 19). Appellant has provided no rational reason or persuasive factual support for its contention that Shearer’s MP3 player embodiment (¶¶ 28, 30) would send “audio files” to its dummy cassette tape rather than sending “audio” as in its mobile phone embodiment. See also IPR2016- 00418, Paper 47, Hearing Tr. 35:3–21 (Mar. 7, 2017) (following up on the question “JUDGE QUINN: Where is it described here that you have this MP3 player, which are ubiquitous in the art anyway, that . . . is sending audio rather than sending the file?” with “JUDGE QUINN: So the conversion [from an ‘audio file’ to ‘audio’] is inherent here in that this is how MP3 players operated in order to send audio out through its output port?” and the response from Patent Owner’s counsel “MR. RUBINO: That’s correct, Your Honor.”). Third, we are unpersuaded by Appellant’s arguments against the Examiner’s reasons to combine Marlowe and Shearer. Appeal Br. 23–34. Contrary to Appellant’s assertions that the Examiner’s reasons are “too Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 11 generic” (id. at 23–26), the Examiner properly cites Shearer for its teachings that a wirelessly connected audio device can increase user convenience and safety of the driver. Ans. 29–30 (citing Shearer ¶¶ 4, 9). Although some of these benefits are described in the context of Shearer’s preferred embodiment of a mobile phone, substantially similar reasoning applies to Shearer’s alternate embodiment enabling the hands-free connection of a portable MP3 player to a car’s audio system. For example, when driving a car, the acts of searching for a device in a purse, plugging wires into that device, and staring at the screen of that device all may be inconvenient and dangerous, regardless of whether the device is a mobile phone or an MP3 player. Appellant also relies on expert testimony in arguing that the Bluetooth “Hands-Free Profile” taught by Shearer “for use with a cell phone” “would not have been capable of transmitting the information required by the claimed invention,” such as commands used to play an audio file rather than control a mobile phone. Appeal Br. 28–30 (citing Stern Decl. ¶¶ 38–46, 48– 51). This argument and expert testimony is not persuasive because they are conclusory (e.g., Stern Decl. ¶ 51) and improperly rely on bodily incorporation of a preferred embodiment. Contrary to Appellant’s argument, “[a]ll the disclosures in a reference must be evaluated, including nonpreferred embodiments, and a reference is not limited to the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation omitted). Here, although much of Shearer discusses a preferred embodiment of a cell phone communicating with a dummy tape via Bluetooth and Shearer Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 12 twice discusses Bluetooth’s Hands-Free Profile as a protocol for “operating a phone via an in-car device” (¶¶ 6, 19), Shearer also expressly discloses alternatives to a cell phone, specifically including an MP3 player communicating via Bluetooth: [T]he apparatus 200 is not necessarily a cell-phone as described previously. The invention also encompasses other Bluetooth devices, e.g. PDAs, MP3 players, pager, for which a received audio or text data signal will be forwarded to the device 100 and rendered by the tape player 310 or ancillary devices coupled to it when the device 100 is inserted in the tape player 310. Shearer ¶ 28 (emphasis added). It is also within the scope of the invention to consider an embodiment where several Bluetooth cellphones or other Bluetooth-enabled consumer electronic devices, such as a PDA or an MP3 player, are within the receiving range of the Bluetooth module 130. In such embodiment, any incoming audio data received by one of such devices will be rendered through the device 100 when inserted in a tape player according to a method of the invention. Shearer ¶ 30 (emphasis added). Thus, Shearer mentions an “MP3 player” with Bluetooth in exactly the same number of paragraphs as it mentions a “Hands-Free Profile” for cell phones. Notably, none of the claims in Shearer (or its issued patent, US 7,117,021 B2) require the Hands-Free Profile; they only require the “Bluetooth” protocol. Moreover, a “cell- phone” is not required by any independent claim in Shearer and instead is only recited in dependent claims 3 and 4. In fact, Shearer expressly discloses that “the chip 210 may be configured to forward to the device 100 data representative of . . . songs.” Shearer ¶ 24. Therefore, in considering all the embodiments of Shearer, a person of ordinary skill in the art would have understood Shearer to expressly disclose Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 13 an MP3 player communicating audio (e.g., songs) via Bluetooth. A person of ordinary skill in the art would not have limited Shearer to its preferred embodiment of a cell phone using the Hands-Free Profile. Appellant’s argument that Shearer’s MP3 player embodiment lacked enablement because the Hands-Free Profile was limited to phones is even less persuasive. Appeal Br. 30–32 (citing Stern Decl. ¶¶ 55–58). “[A] prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.” In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012). Here, Shearer expressly discloses an alternative embodiment of an MP3 player communicating via Bluetooth. Shearer ¶¶ 28, 30. Thus, the burden is on Appellant to show why this alternative embodiment of Shearer is not enabled. Appellant has not met this burden. Appellant also fails to explain why a person of ordinary skill in the art implementing Shearer’s alternative embodiment of an MP3 player with Bluetooth would have limited themselves to bodily incorporating the Hands- Free Profile of Shearer’s preferred embodiment. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). To the extent a Bluetooth connection on an MP3 player required a profile other than the Hands-Free Profile, a person of ordinary skill in this field would have known that and been capable of implementing Shearer’s expressly disclosed embodiment of Bluetooth on an MP3 player. Indeed, we note that the ’342 patent itself does not appear to identify any Bluetooth profile—let alone one specifically designed for audio or Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 14 video. Thus, if Appellant’s argument were right that a person of ordinary skill in the art would not know how to implement Bluetooth for an MP3 player absent the identification of a Bluetooth profile specifically designed for audio or video, then the claims of the ’342 patent also would not be enabled. The cursory disclosure of Bluetooth in the ’342 patent therefore contradicts the level of disclosure demanded by Appellant in the prior art. In fact, in arguing the ’342 patent was entitled to an earlier priority date in one of the inter partes reviews, Patent Owner even argued that the disclosure of Bluetooth alone “would have been understood by one of ordinary skill in the art to be sufficient to show the inventor had possession of wireless links in place of each and every wired link.” IPR2016-00418, Paper 47, Hearing Tr. 55:13–56:1 (Mar. 7, 2017). Moreover, even if the Hands-Free Profile were used, Appellant fails to rebut the Examiner’s findings that the Hands-Free Profile can be used to transmit raw data, regardless of whether that data is audio, metadata, or commands. E.g., Ans. 31–34; Reply Br. 11–12. Put another way, the integration subsystem and portable device are agnostic as to any intervening communication protocol—whether serial or USB as in Marlowe or Bluetooth as in Shearer—so long as the raw data at the beginning and end are the same. The ’342 patent itself is equally agnostic as to the specific protocol used for the communication. E.g., ’342 patent, 38:15–18 (“the wireless link could be any suitable wireless communications link, such as a Bluetooth wireless link, an IEEE 802.11 link, or any other suitable link”), 27:1–6 (“Any known bus technology can be utilized to interface with any portable audio or video device contained within the docking station 400, Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 15 such as FIREWIRE, D2B, MOST, CAN, USB/USB2, IE Bus, T Bus, I Bus, or any other bus technology known in the art.”), 35:14–16 (“The device presence can be transmitted to the car system 910 using the wireless link 922 or, optionally, the non-wireless connection 930.”). Patent Owner confirmed this in arguing the ’342 patent was entitled to an earlier priority date in one of the inter partes reviews when it argued that “those wired links could be replaced with wireless interfaces via Bluetooth protocol to transfer data just as it would be sent over the wire.” IPR2016-00418, Paper 47, Hearing Tr. 56:9–11 (Mar. 7, 2017) (emphasis added). Appellant’s argument about Petitioner’s expert providing contradictory testimony in a prior inter partes review also is not persuasive. Appeal Br. 26–28. There is no contradiction in stating that the claimed invention also would have been obvious over the Bluetooth A2DP profile. If anything, Appellant’s argument reaffirms that a person of ordinary skill in the art looking to implement Shearer’s alternative embodiment of an MP3 player with Bluetooth would have known that Bluetooth profiles other than the Hands-Free Profile would have been reasonable implementation options. Finally, it is worth reiterating that the only change to Marlowe in the proposed combination is replacing a single wired connection between Marlowe’s interface 20 and MP3 player 30 (as shown in Figures 1 and 2) with a wireless connection to an MP3 player, specifically a Bluetooth connection such as disclosed in Shearer. Marlowe itself is agnostic as to what protocol is used for this connection: “Any known bus technology can be utilized to interface with any portable audio or video device . . . , such as FIREWIRE, D2B, MOST, CAN, USB/USB2, IE Bus, T Bus, I Bus, or any Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 16 other bus technology known in the art.” Marlowe ¶ 102. Shearer merely proposes an additional known technology (Bluetooth) that can be utilized to interface with an MP3 player. Shearer ¶¶ 28, 30, 24. There is nothing “uniquely challenging or difficult for one of ordinary skill in the art” in replacing Marlowe’s wired communication with a wireless communication, such as Bluetooth. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). The Examiner also has set forth clear and predictable design incentives that would have motivated a person of ordinary skill in the art to try a wireless connection, including user convenience (e.g., no wires to plug in) and safety (e.g., not having to dig through a purse to find a device while driving).3 Ans. 29–35; Final Act. 9–10; KSR, 550 U.S. at 417. The ’342 patent itself suggests that the same communication can be made interchangeably on wired or wireless connections, e.g., ’342 patent, 35:14–16 (“The device presence can be transmitted to the car system 910 using the wireless link 922 or, optionally, the non-wireless connection 930.”), and a person of ordinary skill in the art would have known that, as evidenced by Appellant’s own arguments for priority in a previous inter partes review. IPR2016-00418, Paper 47, Hearing Tr. (Mar. 7, 2017), 3 Indeed, the obviousness of replacing Marlowe’s wired connection with a wireless one entails substantially the same reasoning applied more than a decade ago when the application for the ’342 patent was rejected for double patenting over the patent that issued from Marlowe’s application (US 7,489,786). See Final Rejection 2–3 (Mar. 5, 2010) (“they are not patentably distinct from each other because it is well known in the art that direct electrical communication lines may be replaced by wireless interfaces that achieve the same functions of communicating data”); Terminal Disclaimer (Apr. 30, 2010); Terminal Disclaimer Review Decision (May 14, 2010). Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 17 55:13–56:1, 56:9–11(“those wired links could be replaced with wireless interfaces via Bluetooth protocol to transfer data just as it would be sent over the wire”). Thus, the record shows that modifying Marlowe’s wired connection with Shearer’s wireless connection would have been obvious. Because we rely on additional or different reasoning than the Examiner for portions of the independent claims, we reverse the Examiner’s rejections, but using our authority under 37 C.F.R. § 41.50(b), we designate this a new ground of rejection under 35 U.S.C. § 103 based on the same combinations of references against the same claims. Rejection #2: Marlowe, Shearer, & Chen (Claims 55, 57, 64, 79, 80, 102, and 103) Appellant argues that Chen does not cure the deficiencies of Marlowe and Shearer. Appeal Br. 34. We are not persuaded there are deficiencies in Marlowe or Shearer for the reasons discussed above. Nevertheless, because these are dependent claims, we reverse the Examiner’s rejection and designate our rejection as a new ground of rejection using our authority under 37 C.F.R. § 41.50(b). Rejection #3: Marlowe, Shearer, & Gioscia (Claims 68 and 115) Appellant argues that Gioscia does not cure the deficiencies of Marlowe and Shearer. Appeal Br. 34. We are not persuaded there are deficiencies in Marlowe or Shearer for the reasons discussed above. Nevertheless, because these are dependent claims, we reverse the Examiner’s rejection and designate our rejection as a new ground of rejection using our authority under 37 C.F.R. § 41.50(b). Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 18 OUTCOME The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 49–53, 56, 60, 62, 63, 66, 70, 71, 73–78, 84, 88, 95, 97, 99–101, 106, 109–11, 113, 120 103 Marlowe, Shearer 49–53, 56, 60, 62, 63, 66, 70, 71, 73–78, 84, 88, 95, 97, 99–101, 106, 109–11, 113, 120 49–53, 56, 60, 62, 63, 66, 70, 71, 73–78, 84, 88, 95, 97, 99–101, 106, 109–11, 113, 120 55, 57, 64, 79, 80, 102, 103 103 Marlowe, Shearer, Chen 55, 57, 64, 79, 80, 102, 103 55, 57, 64, 79, 80, 102, 103 68, 115 103 Marlowe, Shearer, Gioscia 68, 115 68, 115 Overall Outcome 49–53, 55– 57, 60, 62– 64, 66, 68, 70, 71, 73– 80, 84, 88, 95, 97, 99– 103, 106, 109–11, 113, 115, 120 49–53, 55– 57, 60, 62– 64, 66, 68, 70, 71, 73– 80, 84, 88, 95, 97, 99– 103, 106, 109–11, 113, 115, 120 TIME TO RESPOND This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 19 one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). REVERSED; 37 C.F.R. § 41.50(b) Appeal 2021-005301 Reexamination Control 90/020,128 Patent 8,155,342 20 cc Third Party Requester: QUINN EMANUEL 1300 I STREET, NW, SUITE 900 WASHINGTON, DC 20005 Copy with citationCopy as parenthetical citation