BLITZSAFE TEXAS LLC et al.

Patent Trials and Appeals Board

Dec 1, 2021

2021005301 (P.T.A.B. Dec. 1, 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.
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