Ex Parte 7,634,228 et al

Patent Trial and Appeal Board

Jun 30, 2014

95001281 (P.T.A.B. Jun. 30, 2014)

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.
95/001,281 02/03/2010 7,634,228 AFF.0004B7US 5149
21906 7590 06/30/2014
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
LAROSE, COLIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/30/2014 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
____________

VOLKSWAGEN GROUP OF AMERICA, INC.
Requester, Appellant, and Cross-Respondent

v.

AFFINITY LABS OF TEXAS, LLC
Patent Owner, Respondent, and Cross-Appellant
____________

Appeal 2014-002024
Reexamination Control 95/001,281
Patent 7,634,228
Technology Center 3900
____________

Before STEPHEN C. SIU, JEREMY J. CURCURI, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge

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Patent 7,634,228

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BACKGROUND
An inter partes reexamination was filed on behalf of Third Party
Requester, Volkswagen Group of America, Inc. (“Requester”), on February
3, 2010, of United States Patent 7,634,228 B2 (hereinafter the “’228
patent”).1 The ’228 patent includes claims 1–30. The Examiner rejected
claims 1–5, 7–27, 29, and 30, and confirmed claims 6 and 28.
DECISION ON APPEAL
Requester appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
decision declining to adopt Requester’s proposed rejections of claims 1–30
over various references. TPR App. Br. 4–29.
2
Patent Owner, Affinity Labs
of Texas, LLC (“Patent Owner”), cross-appeals under 35 U.S.C. §§ 134 and
315 the Examiner’s decision to reject claims 1–5, 7–27, 29, and 30, under
different grounds. PO App. Br. 6–22.
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm-in-
part, affirming the Examiner’s decision to reject claims 1–5, 7–27, 29, and
30, and reversing the Examiner’s decision not to reject claims 6 and 28.

1
The ’228 patent issued to White, et al., on December 15, 2009, from
Application 11/681,444, filed March 2, 2007.
2
Throughout this opinion, we refer to (1) the Right of Appeal Notice
mailed October 22, 2011 (“RAN”); (2) Requester’s Appeal Brief filed
January 23, 2012 (“TPR App. Br.”); (3) Patent Owner Respondent’s Brief
filed February 22, 2012 (“PO Resp. Br.”); (4) the Examiner’s Answer
mailed May 15, 2012 (“Ans.”) (incorporating the RAN by reference); (5)
Patent Owner’s Appeal Brief filed January 20, 2012 (“PO App. Br.”); and
(6) Requester’s Respondent Brief filed February 21, 2012 (“TPR Resp.
Br.”).

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STATEMENT OF THE CASE
The ’228 patent describes supplying content (e.g., a media file) from a
portable electronic device to a different electronic device through which the
content is played. The separate device at least partially controls the portable
device. See generally ’228 patent, Abstract. Claim 1 is illustrative of the
claimed subject matter:
1. A media managing method comprising:
storing a media file in a memory system of a portable
hand-held device that is not a conventional personal computer
or a laptop computer, wherein the portable hand-held device
further has a display and a processor;
storing a collection of information about the media file in
the memory system, wherein the collection includes data
representing a name for the media file;
communicating at least some of the collection from the
portable hand-held device to a different electronic device in
order to allow a user to view a soft button comprising the name
on an associated display of the different electronic device; and
thereafter receiving a signal in the portable hand-held
device to begin playing the media file by the portable hand-held
device in response to a selection of the soft button at the
different electronic device; and
outputting a played version of the media file across a
physical interface of the portable hand-held device while the
media file remains stored on the portable hand-held device,
wherein the physical interface is configured to facilitate a
communicative coupling of the portable handheld device and
the different electronic device, further wherein the physical
interface is not circular and has a width dimension and a length
dimension that is longer than the width dimension.

RELATED PROCEEDINGS
We are informed this appeal is related to the following proceedings:
(1) Affinity Labs of Texas, LLC v. BMW North America, LLC, et al., Case
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No. 9:08-cv-00164-RC (E.D. Tex.), involving the '228 patent and U.S.
Patent No. 7,324,833 (the “’833 patent”); (2) Affinity Labs of Texas, LLC v.
Dice Electronics, LLC, et al., Case No. 9:08-cv-00163-RC (E.D. Tex.),
involving the ’833 patent; (3) Affinity Labs of Texas, LLC v. Alpine
Electronics of America, Inc., et al., Case No. 9:08-cv-00171-RC (E.D. Tex.),
involving the ’228 and ’833 patents; (4) Affinity Labs of Texas, LLC v.
Volkswagen Group of America, Inc., et al., Case No. 1:11-cv-00036-RC
(E.D. Tex.), involving the ’228 and ’833 patents and U.S. Patent No.
7,778,595 (the “’595 patent”); (5) Affinity Labs of Texas, LLC v. Hyundai
Motor America, Inc., et al., Appeal Nos. 2011-1350, - 1365, -1386 (Fed.
Cir.), involving the ’228 and ’833 patents; (6) Affinity Labs of Texas, LLC v.
Apple Inc. and AAMP of Florida, Inc., Case No. 11-cv-00349 (E.D. Tex.),
involving the ’228 and ’595 patents; and (7) Reexamination Control No.
95/001,263, involving U.S. Patent No. 7,486,926 (Bd. Pat. Appeals &
Inter.).
See TPR App. Br. 1.

THE APPEALED REJECTIONS AND PROPOSED REJECTIONS
Requester appeals the Examiner’s not adopting the following
proposed rejections:
A. Claims 1–30 as anticipated by Abecassis
3
under 35 U.S.C. §
102(b);

B. Claims 1, 3, 4, 6–10, 12, 14, 16–19, and 21, as anticipated by
Schulhof et al. (“Schulhof”)
4
under 35 U.S.C. § 102(b);

3
Abecassis, US Patent No. 6,192,340, issued Feb. 20, 2001.
4
Schulhof et al., US Patent No. 5,557,541, issued Sep. 17, 1996.
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C. Claims 16–22 and 24–30 as anticipated by Treyz et al.
(“Treyz”)
5
under 35 U.S.C. § 102(b);

D. Claims 1, 2, 7, 8, 16, 21, 22, 24, and 26, as anticipated by
Hahm
6
under 35 U.S.C. § 102(b);

E. Claims 16–19 and 21 as anticipated by Berry
7
under 35 U.S.C.
§ 102(b);

F. Claims 22 and 24–30 as anticipated by Ohmura et al.
(“Ohmura”)
8
under 35 U.S.C. § 102(b);

G. Claims 1, 3, 7, 8, 16–22, and 24–29, as anticipated by Marlowe
9

under 35 U.S.C. § 102(b);

H. Claims 9, 10, and 14, as anticipated by Gioscia et al.
(“Gioscia”)
10
under 35 U.S.C. § 102(b);

I. Claim 28 as obvious in view of the combination of Lind et al.
(“Lind ’98”)
11
and the Empeg Car User Guide (“empeg”)
12

under 35 U.S.C. § 103(a);

J. Claim 28 as obvious in view of the combination of Lind et al
(“Lind ’99”)
13
and the empeg under 35 U.S.C. § 103(a);

5
Treyz et al., US Patent No. 6,526,335, issued Feb. 25, 2003.
6
Yeong Ook Hahm, EPA Publication No. 0 982 732, published Mar. 1,
2000.
7
Berry, U.S. Patent No. 6,559,772, issued May 6, 2003.
8
Ohmura et al., EPA Publication No.1 146 674, published Oct. 17, 2001.
9
Marlowe, US 2003/0215102 A1, published Nov. 20, 2003.
10
Gioscia et al., US Patent No. 6,407,750, issued Jun. 18, 2002.
11
R. Lind et al., The Network Vehicle - A Glimpse into the Future of
Mobile Multi-Media, 17
th
DASC The AIAA/IEEE/SAE Digital Avionics
Systems Conference Proceedings, Oct. 31–Nov. 7, 1998, at I21–I21–8.
12
empeg car, digital audio player user guide.
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K. Claims 1–4, 6–10, 12–14, 16–19, 21, 22, and 24–30, as obvious
in view of the combination of Kikinis et al. (“Kikinis”)
14
and
Schulhof under 35 U.S.C. § 103(a);

L. Claims 1–4, 6–14, 16–19, 21, 22, 24–27, 29, and 30, as obvious
in view of the combination of Dwyer et al. (“Dwyer”)
15
and
Schulhof under 35 U.S.C. § 103(a);

M. Claims 1–3, 7–13, and 15–30, as obvious in view of the
combination of Berry and Treyz under 35 U.S.C. § 103(a).
Id. at 4–5.
Patent Owner cross-appeals the Examiner’s rejecting the claims as
follows:
1. Claims 1, 3, 7–10, 12, 13, 16–19, and 21, as anticipated by
Ohmura under 35 U.S.C. §§102(a) and (b) or, alternatively, obvious
under § 103(a) in view of Ohmura;

2. Claims 1–5, 7–12, 14–27, 29, and 30, as obvious under § 103(a)
over Lind ’98 in view of empeg; and

3. Claims 1–5, 7–12, 14–27, 29, and 30, as obvious under §103(a)
over Lind ’99 in view of empeg.

PO App. Br. 6.

13
R. Lind et al., The Network Vehicle - A Glimpse into the Future of
Mobile Multi-Media, IEEE Aerospace and Electronics Systems Magazine,
ISSN 0885-8985, Volume 14, Number 9, pages 27-32, September 1999.
14
Kikinis et al., US Patent No. 5,812,870, issued on Sep. 22, 1998.
15
Dwyer et al., US Patent No. 6,671,567, issued Dec. 30, 2003.
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THE REJECTION OF CLAIMS 1, 3, 7–10, 12, 13, 16–19, AND 21, OVER
OHMURA
Patent Owner argues that claims 1, 3, 7–10, 12, 13, 16–19, and 21, are
neither anticipated by nor obvious over Ohmura.
Ohmura discloses “[a]n audio apparatus for a vehicle made up of a
carmounted [sic] audio apparatus 100 and portable audio apparatuses 200a
and 200b transmits/receives contents data such as music via radio
communication.” Ohmura p. 1. Ohmura was published on October 17,
2001.
Patent Owner first asserts the rejection is improper because Ohmura is
not prior art. PO App. Br. 6–11. Patent Owner argues the Examiner
engaged in an improper 35 U.S.C. § 112 analysis, resulting in an incorrect
determination that the claims of the ’228 patent are not supported by the
application from which it claims priority.
16
Id.
Patent Owner also argues the rejection is improper because “Ohmura
does not disclose ‘storing a media file . . . ;’ ‘storing a collection of
information . . . ;’ ‘playing the media file by the portable hand-held device . .
. ;’ ‘outputting a played version of the media file across a physical interface
of the portable hand-held device . . . ;’ and ‘the physical interface is not
circular and has a width dimension and a length dimension that is longer
than the width dimension.’” Id. at 12; see also id. at 12–15.

16
The ’228 patent claims priority to U.S. Application Number
09/537,812 (the “’812 application”), now US 7,187,947.
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Patent Owner further argues the Examiner’s obviousness rejection is
improper because it provides “no reasons why the claimed invention would
have been obvious.” Id. at 15. Patent Owner also presents evidence of
secondary considerations, arguing they should be found persuasive in
determining the claims of the ’228 patent were not obvious. Id. at 20–22.
Issue
Whether the Examiner erred in rejecting claims 1, 3, 7–10, 12, 13, 16–
19, and 21, as anticipated by or obvious over Ohmura.
Analysis
We are persuaded the Examiner did not err in rejecting claims 1, 3, 7–
10, 12, 13, 16–19, and 21, as anticipated by or obvious over Ohmura.
Initially, regarding the Examiner’s priority date determination, in the
Action Closing Prosecution (“ACP” mailed August 18, 2011), the Examiner
finds “in order to reexamine a patent on the basis of intervening prior art, it
is appropriate to conduct a § 120 analysis with respect to the claims if such
analysis has not already been conducted.” ACP 6. The Examiner further
finds “Patent Owner had not identified sufficient support in the ’812
application for ‘communicating at least some of the collection from the
portable hand-held device to a different electronic device in order to allow a
user to view a soft button comprising the name on an associated display of
the different electronic device.’” Id. at 6–7. The Examiner also finds “the
’817 application does not teach ‘receiving a signal in the portable hand-held
device to begin playing the media file by the portable hand-held device in
response to a selection of the soft button at the different electronic device.’”
Id. at 8. In view of the foregoing, the Examiner concludes that because
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similar limitations appear in all independent claims (1, 9, 16, and 22) of the
’228 patent, “no claims in the ’228 patent are entitled to the benefit of the
3/28/2000 filing date under 35 U.S.C. § 120.” Id. We see no error in the
Examiner’s determination.
Specifically, we disagree with the Patent Owner that the Examiner is
“precluded from reassessing the priority date of the ’228 patent” and that
“all prior art determinations must be based upon the March 28, 2000 filing
date of the parent application.” PO App. Br. 7. Third Party Requester
correctly points out “the Federal Circuit stated that ‘[n]othing in 35 U.S.C.
§§ 301 et seq. entitles a patentee to a claim of right to its earliest priority
date.’” TPR Resp. Br. 3 (quoting In re NTP, 654 F.3d 1268 (Fed. Cir. 2011)
(“There is no statutory limitation during a reexamination proceeding
prohibiting the examiner from conducting a priority analysis.”)). Further,
whether “It is impermissible for a reexamination Examiner to reconsider an
issue that was decided by the original Examiner,” as Patent Owner asserts
(PO App. Br. 8), is not an issue here because Patent Owner has not
persuasively established the original Examiner “decided” the issue of written
description support during initial examination.
Further, we are unpersuaded by Patent Owner that the original ’812
application Specification supports “communicating at least some of the
collection from the portable hand-held device to a different electronic device
in order to allow a user to view a soft button comprising the name on an
associated display of the different electronic device.” PO App. Br. 9. Patent
Owner’s reference to the ’812 application’s Specification describing a
Graphical User Interface (GUI) at Fig. 4 (id. at 10 (referring to the ’228
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patent Fig. 4 and col. 9:52–56)) is unpersuasive because, as the Examiner
points out, “The user interface of figure 4 is, by all accounts, embodied only
in the portable audio that is connected to the automobile sound system rather
than both the portable player and the automobile sound system,” and “There
is no teaching, either explicitly or implicitly, that the automobile sound
system –– or any other ‘different electronic device’ –– with which the
portable audio player communicates is capable of receiving audio
information from the portable device and then displaying soft buttons
comprising a name on an associated display, as claimed.” ACP 7.
Accordingly, for at least the reasons stated by the Examiner (ACP 2–8), we
are unpersuaded the ’228 patent is entitled to the benefit of the March 28,
2000, filing date of its parent application. Instead, on the record before us,
the ’228 patent’s priority date is no earlier than March 2, 2007, its filing
date.
As to the “storing” limitations of claim 1, Patent Owner argues
“Ohmura does not disclose the method step of storing media or a collection
of information in a memory of the portable audio apparatuses 200a and
200b.” PO App. Br. 12. For at least the reasons stated by the Examiner
(ACP 8), we disagree with Patent Owner and find that the limitation is
taught or suggested. The Examiner finds that Ohmura discloses “portable
audio device 200a includes memory 204 for storing music data (i.e., music
files),” “the music file contents of the portable audio device are displayed,
i.e., title list (D67) of external player A (D66) shows the names of the
various music files stored on the portable audio player.” ACP at 8 (citing
Ohmura Figs. 1, 2, and 12; and ¶¶ 66, 67, and 93). Accordingly, we are
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persuaded the “storing a media file in a memory system of a portable hand-
held device . . . ” and “storing a collection of information about the media
file in the memory system . . .” limitations are taught or suggested by
Ohmura.
Regarding the “playing . . .” and “outputting . . .” limitations, Patent
Owner argues “a portable hand-held device of Ohmura never plays the
media file or outputs a played version of the media file.” PO App. Br. 13.
This is unpersuasive of error because Ohmura discloses “the music data
retained in the portable audio apparatus 200a of the external player A is sent
to the audio apparatus 100 and the passenger can replay the music data in the
vehicle in real time.” Ohmura ¶ 129. To the extent Patent Owner argues
playing does not include sending music data to the memory of the car audio
apparatus, after which it is decoded, reproduced, and output (PO App. Br. at
13 (referring to Ohmura ¶¶ 108–108)), we are unpersuaded that the
Examiner has construed “playing” unreasonably broadly or that the
Examiner erred in determining that “playing” is met by Ohmura’s sending
the music data from a portable device to a car audio system, which outputs it
audibly. ACP 9.
Regarding the physical interface limitations, Patent Owner argues “the
term ‘physical interface’ can not [sic] be interpreted to include the wireless
connection disclosed by Ohmura.” PO App. Br. 13. The Examiner finds
that the claimed ‘physical interface’ does not necessarily preclude a wireless
connection because “a ‘physical interface’ of the portable audio player could
constitute the physical interface (e.g., hardware) through which the wireless
connection is maintained.” ACP 9. We agree and further note Ohmura also
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discloses a “wired connection port” and “connect[ing] [the portable device]
to an in-car audio apparatus via a cable [] to take the music data of portable
audio apparatuses of all models into the in-car audio apparatus.” Ohmura ¶
23 (cited in TPR request (p. 96) and adopted by the Examiner (RAN 6)).
Regarding the dimensions of the physical interface, we agree with the
Examiner that “the actual shape of such a component would have been an
arbitrary design consideration not amounting to a patentable distinction in
the absence of unexpected results or advantages of employing one shape
over another.” ACP 9–10. Further, the Examiner cited Ohmura’s non-
square, non-circular “transmission/reception module” (Fig. 2, element 210),
which forms a portion of Ohmura’s wireless connection. Id. at10. We see
no error; the claimed physical interface is not limited to a single component
or link forming the interface, and the Examiner has shown at least a portion
of Ohmura’s interface (the transmission/reception module) meets the
dimension limitations of the claim.
We also see no error in the Examiner taking Official Notice of “the
fact that a wireless hardware component in a portable device would have
been known to take the form of a non-circular, non-square shape.” ACP 9.
We are unpersuaded by Patent Owner’s arguments to the contrary (PO App.
Br. 13–15).
17
Patent Owner does not persuasively rebut the Examiner’s

17
While not a part of our decision as to the rejection of claims 1, 3, 7–
10, 12, 13, 16–19, and 21, as anticipated by or obvious over Ohmura, we
note the Universal Serial Bus standard (herein “USB”), introduced in 1995
(see, e.g., http://en.wikipedia.org/wiki/USB), was, at the time of Patent
Owner’s invention, known to provide a physical interface between electronic
components for communicating both data and power. A common USB
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officially noticed fact, but instead challenges the Examiner’s use of official
notice on procedural grounds. Id. See MPEP § 2144; see also 37 C.F.R. §
1.111(b). Patent Owner’s challenges of record, however, are insufficient to
demonstrate that the Examiner erred in taking official notice. Hence, to the
extent the Examiner’s obviousness rejection relies on this officially-noticed
fact, we see no error.
Further to the obviousness rejection, Patent Owner’s argument that
“The ACP provides no reasons why the claimed invention would have been
obvious and thus, the obviousness rejections based upon Ohmura should be
withdrawn” (PO App. Br. 15) is unpersuasive. For example, the Examiner
indicates that Ohmura discloses an interface and “does not expressly
disclose any particular shape” of the interface but that “those skilled in that
art would have known such hardware to generally take a . . . non-circular,
non-square shape” (ACP 9). The predictable result of a combination of
known elements, such as the combination of the known interface of Ohmura
and the known standard form factors, such as “non-circular, non-square”
shapes, each performing a known function to achieve the predictable and
expected result of an interface with a desired shape, would have been
obvious to one of ordinary skill in the art. “[W]hen a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR Int’l Co., 550 U.S. at 416
(citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)).

cable has a non-circular and non-square portion (i.e., the ubiquitous
rectangular USB plug).
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Patent Owner also disputes the Examiner’s finding that Patent
Owner’s evidence of secondary considerations is insufficient to overcome
the obviousness rejection. PO App. Br. 20–22. The Examiner’s finding is
based in part on the ’228 patent not being entitled to March 28, 2000 priority
date, upon which Patent Owner’s secondary considerations evidence is
based. ACP 18–19. Patent Owner asserts error because the claims are
entitled to the March 28, 2000, filing date and because “a clear and
unmistakable nexus between [seamless integration required by the claims]
and [] consumer demand exists.” PO App. Br. 21. Moreover, Patent Owner
asserts the evidence of secondary considerations demonstrates that the
seamless integration required by the claims “solved a long felt need in the
industry, as commercial implementations did not appear on the market for a
number of years after the introduction of portable MP3 players such as the
iPod” (id.); that TPR and others infringe the patent (id. at 22); and that
“evidence of the commercial success of seamless integration can be seen in
advertising of TPR that describes that its adapter ‘connects iPods with the
latest generation of Volkswagen Genuine car radios or radio-navigation
systems, which are then used for control or audio output.. . even the battery
is charged when using it via the adapter . . . ’” (id.).
We recognize that evidence of secondary considerations must always
be considered en route to the determination of obviousness, but its existence
alone does not control the conclusion of obviousness. Richardson-Vicks v.
Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. (Del.) 1997). The weight given
to evidence of secondary considerations is dependent upon whether there is a
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nexus between the merits of the claimed invention and the evidence offered.
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).
For at least the reasons stated by the Examiner (ACP 18–19), we
agree with the Examiner that Patent Owner has not provided a sufficient
showing of a nexus between any specific feature of the claimed invention
and the evidence alleging secondary considerations. See, e.g., ACP 19
(“Without a more complete market analysis of a product that embodies the
claimed invention versus comparable products that do not, it is difficult, if
not impossible, to attribute the commercial success of the iPod to any
particular factor or set of factors.”). Patent Owner does not assert or
demonstrate persuasively a nexus between any specific claim feature and the
offered evidence alleging secondary considerations. See, e.g., PO App. Br.
20–22.
Patent Owner argues claims 9 and 16 based on “deficiencies in
Ohmura identified above for claim 1,” adding for claim 9, without
elaboration, “Ohmura further fails to disclose saving the media file in the
memory of portable electronic device after the media file is received via an
over the air download.” PO App. Br. 15–16. We find no deficiencies in the
Examiner’s rejection of claim 1 and are unpersuaded by Patent Owner’s
naked assertion regarding claim 9. Patent Owner does not argue with
particularity the Examiner’s rejection of claims 3, 7, 8, 10, 12, 13, 17–19,
and 21, over Ohmura. Accordingly, we are not persuaded of error in the
Examiner’s decision to reject claims 1, 3, 7–10, 12, 13, 16–19, and 21, as
anticipated by or obvious over Ohmura. We sustain the Examiner’s
rejection.
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THE PROPOSED REJECTION OF CLAIMS 22 AND 24–30 OVER
OHMURA
Requester appeals the Examiner’s decision not to reject claims 22 and
24–30 as anticipated by Ohmura. TPR App. Br. 14–16.
Claim 22 recites in pertinent part, “an electronic device having a non-
circular portable device interface that allows for communication of data and
power.” Claim 28 depends from claim 22 and recites, in pertinent part, a
“cable [that] provides at least a portion of the link between the electronic
device and the portable electronic device [] wherein a battery of the portable
electronic device can be recharged via the cable.” The Examiner does not
adopt Third Party Requester’s proposed rejection of claims 22 and 24–30 as
anticipated by Ohmura because Ohmura does not teach the “communicating
power” limitation of claim 22. ACP 11.
Third Party Requester argues Ohmura discloses that portable devices
are powered by batteries. TPR App. Br. 15 (citing Ohmura ¶ 237 (“Note,
that the portable audio terminal 3 is driven by a power supply supplied by a
battery (not shown) in the terminal.”)). Third Party Requester argues further
that claim 22’s interface does not preclude a wireless interface and “a
wireless interface that allows for the communication of data between a
portable electronic device and another electronic device, and that allows for
the communication of power between a power supply and the wireless
interface teaches the above-recited language of claim 22.” Id. Third Party
Requester also argues “a wireless interface that communicates data also
communicates power in the form of the digital signals themselves.” Id.
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Regarding claim 28, Third Party Requester argues Ohmura discloses
“connecting a device to an in-car audio apparatus via a cable.” TPR App.
Br. 15. Third Party Requester further argues that it was well known at the
time of Patent Owner’s invention for “portable electronic devices [to]
included rechargeable batteries that could be charged using a cable.” Id.
(citing the Apple iPod, referred to at ACP 18, as an example of a portable
electronic device known to include a rechargeable battery that could be
recharged by a cable (USB or FireWire) capable of communicating both data
and power).
Patent Owner argues “[t]he ’228 patent specification clearly precludes
an interpretation in which a wireless connection could be a portable device
interface with the physical characteristics as claimed because the
specification expressly distinguishes communication via a physical interface
mount from wireless communication.” PO Resp. Br. 9. Patent Owner also
argues “[a] conventional wireless data signal as disclosed in Ohmura cannot
be reasonably interpreted as communicating both data and power.” Id.
Patent Owner argues further that Ohmura does not disclose “the audio file
can be played by the portable electronic device and to [sic] be output via
the electronic device while the audio file remains stored on the portable
electronic device” as further recited in claim 22. Id. at 10.
Regarding claim 28, Patent Owner argues “Ohmura provides no
disclosure of a battery of the portable electronic device that can be
recharged via a cable interfaced with a physical interface of the portable
electronic device that is also not circular” and “There is absolutely no
indication that the portable audio apparatuses of Ohmura have batteries that
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can be recharged, particularly via a cable that links the portable apparatuses
with the car audio apparatus.” PO Resp. Br. 10.
Issue
Whether the Examiner erred in not rejecting claims 22 and 24–30 as
anticipated by Ohmura.
Analysis
On the record before us, we are persuaded the Examiner did not err in
deciding not to reject claims 22 and 24–30 as anticipated over Ohmura
because Ohmura does not describe “a non-circular portable device interface
that allows for communication of data and power” as recited in claim 22.
Instead, we enter a new ground of rejection against claims 22 and 24–30 as
obvious over Ohmura.
In determining claims 22 and 24–30 to be obvious over Ohmura, we
take official notice of the fact that portable electronic devices (e.g., Apple
iPod) were well known as of the earliest priority date of the ’228 patent
(March 2, 2007; see our discussion of priority date supra) and that such
devices were known to have rechargeable batteries capable of being
recharged via a cable (e.g., USB) that allows for communication of data and
power. We also adopt Requester’s proposed findings as to claims 22 and
24–30. Third Party Request for Inter Partes Reexamination Appendix G,
pp. 111–119.
We find it would have been obvious to one skilled in the art at the
time of Patent Owner’s invention for, for example, Apple’s iPod to be one of
Ohmura’s “portable audio apparatuses (200, 200a, 200b)” (Ohmura ¶ 31 and
Fig. 1) and for the apparatus to be connected to the “audio apparatus (100)
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mounted in the vehicle” (id.) via a USB interface using a USB cable. As
such, the device interface would have allowed for communication of data
and power as in claim 22 and the arrangement would have met the additional
limitations of claims 24–30, particularly claim 28’s recharging and
dimensional limitations. The resulting arrangement would have been a
combination of familiar elements performing their known functions with
predictable results (See KSR 550 U.S. at 416) and combining them would
not have been uniquely challenging or difficult (see Leapfrog 485 F.3d at
1162).

THE REJECTION OF CLAIMS 1–5, 7–12, 14–27, 29, AND 30, OVER
EITHER LIND ’98 OR LIND ’99 AND EMPEG
Patent Owner argues the Examiner erred in rejecting claims 1–5, 7–
12, 14–27, 29, and 30, over Lind ’98 in view of empeg for several reasons.
PO App. Br. 16–20. Patent Owner asserts empeg is not prior art. Id. at 16.
Patent Owner also asserts the references do not teach several limitations of
claim 1: “a portable hand-held device” capable of “playing the media file;”
“receiving a signal in the portable hand-held device to begin playing the
media file by the portable hand-held device in response to a selection of the
soft button at the different electronic device;” “physical interface of the
portable hand-held device” for “communicative coupling of the portable
hand-held device and the different electronic device” and across which a
“played version of the media file” is output; and “the physical interface is
not circular and has a width dimension and a length dimension that is longer
than the width dimension.” Id. at 16–18. Patent Owner further argues
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“there is no reason a person of ordinary skill in the art would combine the
teachings of [the reference] as suggested in the TPR’s improper hindsight
reconstruction.” Id. at 16, 18–20.
Issue
Whether the Examiner erred in rejecting claims 1–5, 7–12, 14–27, 29,
and 30, as obvious over Lind ’98 or Lind ’99 in view of empeg.
Analysis
We are persuaded the Examiner did not err in rejecting claims 1–5, 7–
12, 14–27, 29, and 30, as obvious over Lind ’98 or Lind ’99 in view of
empeg.
Having found unpersuasive Patent Owner’s argument that the ’228
patent is entitled to the priority date of its patent (supra), here we address
Patent Owner’s arguments regarding the teachings of the prior art.
Empeg discloses a car digital audio player onto which MP3 audio files
may be loaded. The player can be mounted in a car head unit or can be
connected to a computer for loading MP3 audio files. See, e.g., empeg 2, 5,
11, and 19–26.
Lind ’98 discloses a vehicle entertainment system, including a
network computer that links up several sub-networks within the vehicle and
provides access to entertainment sources inside (CD player) and outside
(satellite TV) the vehicle. Lind ’98 pp. I21-1–4. “The disclosure of Lind
’99 is substantially similar to that of Lind ’98.” PO App. Br. 20.
Accordingly, we analyze Patent Owner’s arguments vis-à-vis Lind ’98.
We are unpersuaded by Patent Owner’s argument that “the digital
audio car player of [empeg] is far too large to be considered ‘hand-held’
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under a reasonable interpretation of that term” because Patent Owner does
not provide persuasive argument or evidence that the Examiner has
improperly construed “hand-held” or that empeg’s car player is not “hand-
held.” Moreover, empeg discloses that the car player has a handle (empeg
3), which undermines Patent Owner’s argument. PO App. Br. 17.
To the extent Patent Owner argues empeg does not disclose “the
portable hand-held device is capable of ‘playing the media file’” because
“the head unit must be installed [] into a combination car audio system or
into a home stereo system so that the media file can be played (PO App. Br.
17), we are unpersuaded of error because the claims do not require the
device to play while uninstalled. Thus, Patent Owner’s arguments are not
commensurate with the scope of the claim.
Patent Owner argues the references do not disclose “receiving a signal
in the portable hand-held device to begin playing the media file by the
portable hand-held device in response to a selection of the soft button at the
different electronic device.” PO App. Br. 17 (referring to the Examiner’s
finding at ACP 15 that Lind ’98 teaches “receiving a signal in the CD player
to begin playing the media file by the CD player in response to a selection of
the soft button at the different electronic device”). We are unpersuaded that
“control of the CD player [of Lind ’98] occurs via the CD player’s own LCD
based control screen - not a different electronic device” (id.) because, as
Requester notes, “Lind [’98] discloses receiving a signal at a CD player to
begin playing the media file in response to a selection of the soft button at a
display device.” TPR Resp. Br. 13; see also Lind ’98 pp. 3, 6, and Fig. 2
and ACP 13–14. We are unpersuaded of error based on Patent Owner’s
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assertion that “control of the Empeg player occurs via control buttons on the
unit itself” (PO App. Br. 17–18) because, as Requester points out, empeg
also discloses “a remote control (a different electronic device) including a
‘play’ button that initiates the playing of a media file on the empeg car
player. TPR Resp. Br. 13 (referring to empeg 20: “The infra red remote
control provides fast access to many of the player's popular functions”).
Patent Owner does not present argument or evidence sufficient to persuaded
us of error in the Examiner’s finding that “replacing this conventional car
CD player of Lind ’98 with the Empeg MP3 player would achieve the
claimed invention—the Empeg player being the ‘portable hand-held device’
and the touch screen and associated circuitry of Lind ’98 being the ‘different
electronic device.’” ACP 14.
Patent Owner argues Lind ’98 and empeg “fail[] to disclose
[outputting a played version of the media file across a physical interface
configured to facilitate a communicative coupling of the portable handheld
device and the different electronic device] because neither reference, nor the
combination, discloses that a played version of a media file is output across
a physical interface.” PO App. Br. 18. Patent Owner adds “the CD player
of Lind ’98 does not have a physical interface for outputting a CD track to a
different electronic device and particularly not the CD player’s own LCD
based control screen.” Id. We find this unpersuasive for at least the reasons
stated by Requester. TPR Resp. Br. 13–14. Specifically, Lind ’98 discloses
RS-232 and Ethernet connections (Fig. 2), which are also disclosed in empeg
(p. 3), thus allow the empeg player to replace Lind ’98’s CD player. We
agree with the Examiner that replacing Lind ’98’s CD player with the empeg
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player would allow the network vehicle interface of Lind ’98 to
communicate with the portable hand-held empeg device “so as to display, on
the in-vehicle LCD screen, soft buttons associated with songs on the Empeg
device and to play songs in response to a user’s selection of corresponding
soft buttons.” ACP 17.
We are also unpersuaded by Patent Owner’s arguments that Lind ’98
and empeg fail to disclose the interface dimensions of claim 1 (“wherein the
physical interface is not circular and has a width dimension and a length
dimension that is longer than the width dimension”). At least empeg’s car
docking connector, USB connector, Ethernet connector, and RS-232 serial
connector (p. 3) meet the limitations as pointed out by Requester. TPR
Resp. Br. 14.
Regarding combining Lind ’98 and empeg, Patent Owner argues
It is unclear, and the Examiner has provided insufficient reason,
why one of ordinary skill in the art would modify the fully
integrated Network Vehicle of Lind ’98, which allows for an
infinite choice of music selections, to include the heavy,
cumbersome Empeg player that requires removal and
connection to a home computer for downloading music. Any
such a combination can be based only on hindsight
construction, and is therefore impermissible.

PO App. Br 19.
We recognize that
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
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In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). We agree with the
Examiner that a skilled artisan at the time of Patent Owner’s invention
would have been motivated to replace Lind ’98’s CD player with the empeg
player to thereby allow the network vehicle interface of Lind ’98 to
communicate with the portable hand-held empeg device “so as to display, on
the in-vehicle LCD screen, soft buttons associated with songs on the Empeg
device and to play songs in response to a user’s selection of corresponding
soft buttons.” ACP 17. Patent Owner does not present argument or
evidence sufficient to persuade us that the Examiner’s reasoning includes
“knowledge gleaned only from applicant’s disclosure” or that the Examiner
has taken into account more than “knowledge which was within the level of
ordinary skill at the time the claimed invention was made.”
Moreover, the Examiner has shown all elements were known at the
time of Patent Owner’s invention. Patent Owner does not assert nor
demonstrate persuasively that combining the familiar elements identified by
the Examiner would have been “uniquely challenging or difficult for one of
ordinary skill in the art.” See Leapfrog Enterprises, Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Accordingly, we are unpersuaded the Examiner erred in finding claim
1 obvious over Lind ’98 and empeg. We sustain the Examiner’s decision to
reject claim 1 and claims 2–5, 7, and 8, which Patent Owner does not
separately argue. PO App. Br. 19. We also sustain the Examiner’s decision
to reject claims 16–27, 29, and 30, which Patent Owner argues on the same
basis as claim 1. Id.
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Claim 9 recites in pertinent part “receiving an over the air download
of a media file.” Patent Owner argues error because the Examiner is said to
have improperly taken Official Notice of the fact that “adapting the Empeg
player to wirelessly communicate with a computer would have been an
obvious expedient that was well within the knowledge of those skilled in the
art.” PO App. Br. 19 (referring to ACP 18). We see no error in the
Examiner taking Official Notice of this fact. We are unpersuaded by Patent
Owner’s arguments to the contrary (PO App. Br. 19–20). Patent Owner
does not persuasively rebut the Examiner’s officially noticed fact, but
instead challenges the Examiner’s use of official notice on procedural
grounds. Id. See MPEP § 2144; see also 37 C.F.R. § 1.111(b). The
Examiner did not err in applying official notice. Accordingly, we sustain the
Examiner’s decision to reject claim 9 and claims 10–12, 14, and 15, which
Patent Owner does not argue separately. PO App. Br. 20.

CLAIM 6
Claim 6 depends from claim 1 and recites “receiving the signal to
begin playing via the physical interface of the portable hand-held device;
and recharging a battery of the portable hand-held device from a power
source electrically coupled to the portable hand-held device via the physical
interface.” The Examiner confirmed claim 6. RAN 1.
Requester proposes rejecting claim 6 on numerous grounds. See, e.g.,
TPR App. Br. 7, 9, 23, and 25. In view of our officially noticed facts supra,
however, we find claim 6 would have obvious over either Lind ’98 or Lind
’99 and empeg.
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We find it would have been obvious to one skilled in the art at the
time of Patent Owner’s invention to substitute, for example, Apple’s iPod
for the empeg car player (empeg p. 3) and to connect the player to the car
via, for example, a USB cable as disclosed (id.). As such, the resulting
arrangement would have allowed the player to receive a play signal and to
recharge the battery as in claim 6. The arrangement would have been a
combination of familiar elements performing their known functions with
predictable results (See KSR 550 U.S. at 416) and combining them would
not have been uniquely challenging or difficult (see Leapfrog 485 F.3d at
1162).

CONCLUSIONS
The Examiner did not err in rejecting claims 1, 3, 7–10, 12, 13, 16–19,
and 21, as anticipated by Ohmura under 35 U.S.C. §§102(a) and (b) or,
alternatively, obvious under 35 U.S.C. § 103(a) over Ohmura.
The Examiner did not err in rejecting claims 1–5, 7–12, 14–27, 29, and
30, under 35 U.S.C. § 103(a) as obvious over either Lind ’98 or Lind ’99 and
empeg.
Claims 22 and 24–30 are unpatentable under 35 U.S.C. § 103(a) as
obvious over Ohmura in view of our officially noticed facts.
Claim 6 is unpatentable under 35 U.S.C. § 103(a) as obvious over
either Lind ’98 or Lind ’99 and empeg in view of our officially noticed facts.
In view of the foregoing (our affirmance of the Examiner’s decision to
reject claims 1–5, 7–27, 29, and 30; our decision to reject claims 22 and 24–
30 as obvious over Ohmura in view of our officially noticed facts; our
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affirmance of the Examiner’s decision to reject claims 1–5, 7–12, 14–27, 29,
and 30, under 35 U.S.C. § 103(a) as obvious over either Lind ’98 or Lind ’99
and empeg; and our decision to reject claim 6 as obvious over Lind ’98 or
Lind ’99 and empeg in view of our officially noticed facts) it is unnecessary
to reach the remaining rejections, as all claims subject to reexamination have
been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331,
1338 (Fed. Cir. 2009) (not reaching additional obviousness rejections).
DECISION
We sustain the Examiner’s decision to reject claims 1, 3, 7–10, 12, 13,
16–19, and 21, as anticipated by Ohmura under 35 U.S.C. §§102(a) and (b)
or, alternatively, obvious under 35 U.S.C. § 103(a) over Ohmura.
We sustain the Examiner’s decision to reject claims 1–5, 7–12, 14–27,
29, and 30, under 35 U.S.C. § 103(a) as obvious over either Lind ’98 or Lind
’99 and empeg.
We enter a new ground of rejection against claims 22 and 24–30
under 35 U.S.C. § 103(a) as obvious over Ohmura in view of our officially
noticed facts.
We enter a new ground of rejection against claim 6 under 35 U.S.C.
§ 103(a) as obvious over either Lind ’98 or Lind ’99 and empeg in view of
our officially noticed facts.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted rejections of claims
6, 22, and 24–30, constitute new grounds of rejection. Section 41.77(b)
provides that “[a] new ground of rejection . . . shall not be considered final
for judicial review.” That section also provides that Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
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of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such a
response must be either an amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that
the proceeding be reheard under § 41.79 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.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37
C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of
this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
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been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED-IN-PART

alw

Patent Owner:

Trop, Pruner & Hu, P.C.
1616 S. Voss Road
Suite 750
Houston, TX 77057-2631

Third Party Requester:

Clifford A. Ulrich
Kenyon & Kenyon LLP
One Broadway
New York, NY 10004