UNIVERSAL ELECTRONICS INC.Download PDFPatent Trials and Appeals BoardNov 3, 202014728027 - (D) (P.T.A.B. Nov. 3, 2020) 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. 14/728,027 06/02/2015 Marcel Hilbrink 81230.107US5 2303 34018 7590 11/03/2020 Greenberg Traurig, LLP 77 W. Wacker Drive Suite 3100 CHICAGO, IL 60601-1732 EXAMINER KHAN, OMER S ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 11/03/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): chiipmail@gtlaw.com clairt@gtlaw.com jarosikg@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARCEL HILBRINK, PATRICK H. HAYES, and JEREMY K. BLACK ____________ Appeal 2019-004439 Application 14/728,027 Technology Center 2600 ____________ Before JEAN R. HOMERE, JEFFREY S. SMITH, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–15, which are all the claims pending and rejected in the application. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Universal Electronics Inc. as the real party in interest. Appeal Br. 2. Appeal 2019-004439 Application 14/728,027 2 STATEMENT OF THE CASE Introduction The present claimed subject matter relates to “media rendering devices.” Spec. 1:12–13. In particular, an advanced control device . . . is able to play back rendered media files on a users entertainment appliance(s). As a user operates the onboard media rendering capabilities of the advanced control device, the current media content being rendered may be played back on the users entertainment appliance(s) by placing the control device in the associated docking station. Based on detection by the control device of docked or undocked states, various additional control and media playback functions may be effected. Spec. 2:25–3:7. Claim 1 is exemplary: 1. A method for using a wireless interface device interfaced to an appliance to facilitate play a media stream, comprising: receiving at a portable electronic device the media stream; causing the portable electronic device to route the received media stream for a playing of the received media stream by the portable electronic device; detecting by the portable electronic device that the portable electronic device has been placed into wireless communication with the wireless interface device interfaced to the appliance; and in response to the portable electronic device detecting that the portable electronic device has been placed into wireless communication with the wireless interface device interfaced to the appliance, causing the portable electronic device to automatically reroute the received media stream to the Appeal 2019-004439 Application 14/728,027 3 wireless interface device interfaced to the appliance for a playing of the received media stream by the appliance instead of routing the received media stream for the playing of the received media steam by the portable electronic device. References and Rejections2 Claims Rejected 35 U.S.C. § References 1–3, 6–11, 15 112 (written description) 1–7, 10–13 103 Falcon (US 2004/0098571 A1; May 20, 2004), Dua (US 2006/0258289 A1; Nov. 16, 2006) 8–9, 14–15 103 Falcon, Dua, Komori (US 2011/0162014 A1; Jun. 30, 2011 ) RELATED APPEALS U.S. Patent Application No. 11/179,289 (PTAB affirmed the Examiner’s decision) U.S. Patent Application No. 13/801,801 (PTAB affirmed the Examiner’s decision) U.S. Patent Application No. 15/341,777 (PTAB affirmed the Examiner’s decision) 2 Throughout this opinion, we refer to the (1) Non-Final Office Action dated November 30, 2018 (“Final Act.”); (2) Appeal Brief dated February 27, 2019 (“Appeal Br.”); (3) Examiner’s Answer dated March 25, 2019(“Ans.”); and (4) Reply Brief dated May 16, 2019 (“Reply Br.”). Appeal 2019-004439 Application 14/728,027 4 ANALYSIS Written Description Claim 1 The Examiner determines the limitation in response to the portable electronic device detecting that the portable electronic device has been placed into wireless communication with the wireless interface device interfaced to the appliance, causing the portable electronic device to automatically reroute the received media stream to the wireless interface device interfaced to the appliance, as recited in claim 1, does not meet the written description requirement. See Final Act. 4–7; 13–15. In particular, the Examiner determines: Applicant states, “the only difference in the systems being that Fig. 8 illustrates a wired interface while Fig. 9 illustrates a wireless interface, it is evident that any description with respect to the operation of the system shown in Fig. 8 is equally applicable to the operation of the system shown in Fig. 9 with the only difference in the operation being the use of wired communications between the portable electronic device and the interface in the system of Fig. 8 and the use of wireless communications between the portable electronic device” . . . . This argument is not persuasive because . . . PHOSITA[] would know that the possession of (A) placing the portable electronic device into wireless communication with the wireless interface device, in response to the portable electronic device . . . detecting that the portable electronic device has been placed into wireless communication with the wireless interface device and then causing the portable electronic device to automatically reroute the received media stream to the wireless interface device would require additional programming than (B) merely placing the portable electronic device into wired communication with the docking station, in response to the docking station . . . detecting that the portable electronic device detecting that the portable electronic device has been placed Appeal 2019-004439 Application 14/728,027 5 into wired communication with the docking station and then causing the portable electronic device to automatically reroute the received media stream to the docking station. Where A is the claimed languages and B is the disclosed possession. The difference of this magnitude is not meek, and a PHOSITA conceiving and reducing the claimed invention to practice would have explicitly shown the possession in their disclosure at the time of invention . . . . For this reason, Applicant conclusory opinion and argument is not persuasive . . . . Final Act. 6–7 (emphases omitted). Appellant provides a Declaration of Patrick Hayes dated February 19, 2018 (“Declaration”), which explains: Because Fig. 8 and Fig. 9 of the subject application, as shown below, both illustrate the same system that allows a portable electronic device to be interfaced to an appliance, with the only difference in the systems being that Fig. 8 illustrates a wired interface while Fig. 9 illustrates a wireless interface, it is evident that any description with respect to the operation of the system shown in Fig. 8 is equally applicable to the operation of the system shown in Fig. 9 with the only difference in the operation being the use of wired communications between the portable electronic device and the interface in the system of Fig. 8 and the use of wireless communications between the portable electronic device and the interface in the system of Fig. 9. Declaration ¶ 35. We agree with Appellant. To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed” and Appeal 2019-004439 Application 14/728,027 6 the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. . . . . [T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. For generic claims, we have set forth a number of factors for evaluating the adequacy of the disclosure, including “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. (internal quotations and citations omitted). [T]he description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba . . . . Id. at 1352 (citations omitted). In this case, the Specification discloses: For example, when docking station 700 is configured without wireless communication means as shown in FIG. 4 and is essentially a signal pass through for remote control 10, programming on remote control 10 may be configured to play rendered media from onboard display or speaker elements (local playback mode) when in an undocked state, and upon initiation of a dock event, to reroute the currently playing media information from the onboard display or speaker elements to the signal contacts 104 for playback on the users entertainment appliance(s) ( external playback mode) connected to connection interface 714 of the docking station. In this way a user may easily switch between the local playback mode and external playback mode by simply docking and undocking the remote control as desired. Additionally, programming on the remote control 10 may implement command and control events for the entertainment appliance(s) on which media information is to be played in response to detection of dock and undock states. For Appeal 2019-004439 Application 14/728,027 7 example, in order that an audio file being played back locally on the remote control 10 begins playing externally on the users desired audio receiver connected to the docking station when a dock event occurs without further intervention by the user, the remote control may be programmed to power on the audio receiver and select the correct input mode upon detection of a dock event. . . . . For systems in which the docking station includes wireless and/or other functional capabilities as generally described in connection with FIG. 6 above, additional features and functions may be accomplished. For example, as shown generally in FIG. 9, a wireless capable docking station may be configured to receive media information from remote control 10 wirelessly before output to entertainment appliances 12. Spec. 12:8–13:15 (emphasis added). As shown above, “[f]or systems in which the docking station includes wireless and/or other functional capabilities . . . additional features and functions may be accomplished.” Spec. 13:11–13 (describing the system of Figure 9). That description of the wireless system (shown in Figure 9) immediately follows the description of the wired system. Therefore, one skilled in the art would understand that the wireless system has the features and functions of the wired system described in the previous paragraph (quoted above starting with “[f]or example”), as well as “additional features and functions” such as wireless capabilities. The Examiner’s finding that “causing the portable electronic device to automatically reroute the received media stream to the wireless interface device would require additional programming” (Final Act. 6 (emphasis omitted)) is unpersuasive. According to the Federal Circuit, “the level of detail required to satisfy the written description requirement varies Appeal 2019-004439 Application 14/728,027 8 depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351. Consistent with the Specification (Spec. 13:11–13), Appellant’s declarant, Mr. Patrick Hayes, testifies that “any description with respect to the operation of the system shown in Fig. 8 is equally applicable to the operation of the system shown in Fig. 9 with the only difference in the operation being . . . the use of wireless communications.” Declaration ¶ 35. That testimony suggests the details of using wireless (instead of wired) communications were not particularly complex or unpredictable, and the Examiner does not persuasively explain why one skilled in the art would need to see such details in the Specification to determine the inventors actually invented the claimed method. Further, “written description is about whether the skilled reader of the patent disclosure can recognize that what was claimed corresponds to what was described; it is not about whether the patentee has proven to the skilled reader that the invention works, or how to make it work, which is an enablement issue.” Centrak, Inc. v. Sonitor Technologies, Inc., 915 F.1360, 1366 (Fed. Cir. 2014). Here, one skilled in the art would recognize that the claimed “causing the portable electronic device to automatically reroute the received media stream to the wireless interface device interfaced to the appliance” corresponds to the Specification’s disclosure of rerouting currently playing media using the functions and features of the wireless system of Figure 9, as the wireless system includes the functions and features of the wired system. See Spec. 12:8–13:15. Therefore, we agree with Appellant that the Specification reasonably conveys to skilled artisans that as of the filing date, Appellant possessed the Appeal 2019-004439 Application 14/728,027 9 claimed invention with respect to the above claim limitation. See Ariad Pharms., 598 F.3d at 1351; Declaration ¶¶ 30–36. As a result, the “specification . . . describe[s] an invention understandable to th[e] skilled artisan and show[s] that the inventor actually invented the invention claimed” with respect to the limitation in response to the portable electronic device detecting that the portable electronic device has been placed into wireless communication with the wireless interface device interfaced to the appliance, causing the portable electronic device to automatically reroute the received media stream to the wireless interface device interfaced to the appliance, as recited in claim 1. See Ariad Pharms., 598 F.3d at 1351. Accordingly, we reverse the Examiner’s written description rejection of claim 1. Claims 2 and 8 The Examiner determines the limitation wherein, in response to the portable electronic device detecting that the portable electronic device has been placed into wireless communication with the wireless interface device interfaced to the appliance, further causing the appliance to be automatically placed into an operating state appropriate for the playing of the received media stream by the appliance, as recited in claim 2, and wherein causing the appliance to be automatically placed into the operating state appropriate for the playing of the received media stream by the appliance comprises causing the appliance to be automatically placed into a powered on state, Appeal 2019-004439 Application 14/728,027 10 as recited in claim 8, do not meet the written description requirement. See Final Act. 7–8, 15, 17–18. In particular, the Examiner finds: Applicant’s arguments are not persuasive because although the application shows possession of “an audio file being played back locally on the remote control 10 begins playing externally on the users desired audio receiver connected to the docking station when a dock event occurs without further intervention by the user, the remote control may be programmed to power on the audio receiver and select the correct input mode upon detection of a dock event.” This is not equivalent to the claimed subject matter of [the disputed limitations] in claim 2 and . . . claim 8. The difference of this magnitude is not meek, and a PHOSITA conceiving and reducing the claimed invention to practice would have explicitly shown the possession in their disclosure at the time of invention, and therefore placing the public on notice with the metes of the bounds of their invention. Final Act. 7–8. Appellant points to the Declaration, which explains: 38. The subject application describes that, to facilitate the rerouting of the media to the appliance from the portable electronic device, when a docking event is detected the programmable electronic device may be programmed to additionally power on the audio receiver and select the correct input mode, (Pg. 12, line 19-Pg. 13, line 1). 39. . . . because the subject application describes a portable electronic device which responds to a detected docking event by placing an appliance into a given operating state, e.g., powered on, and describes a portable electronic device in which the wireless receipt of an address signifies to the portable electronic device that the portable electronic device is docked with, i.e., has been placed into wireless communication with, the docking station acting as a wireless interface for an appliance . . . to one of skill in the art . . . the subject application Appeal 2019-004439 Application 14/728,027 11 shows, with reasonable clarity, possession by the inventors of the [disputed] feature of . . . claim 2 . . . . 40. . . . because the subject application describes a portable electronic device which responds to a detected docking event by placing an appliance into a given operating state, e.g., powered on, and describes a portable electronic device in which the wireless receipt of an address signifies to the portable electronic device that the portable electronic device is docked with, i.e., has been placed into wireless communication with, the docking station acting as a wireless interface for the appliance . . . to one of skill in the art . . . the subject application shows, with reasonable clarity, possession by the inventors of the [disputed] feature of . . . claim 8 . . . . Declaration ¶¶ 38–40. We agree with Appellant that the cited excerpts of the Specification reasonably conveys to skilled artisans that as of the filing date, Appellant possessed the claimed invention with respect to the above claim limitations. See Ariad Pharms., 598 F.3d at 1351; Declaration ¶¶ 38–40. In particular, in addition to the discussions above with respect to claim 1, the Specification describes in order that an audio file being played back locally on the remote control 10 begins playing externally on the users desired audio receiver connected to the docking station when a dock event occurs without further intervention by the user, the remote control may be programmed to power on the audio receiver and select the correct input mode upon detection of a dock event. Spec. 12:20–13:1. Therefore, the “specification . . . describe[s] an invention understandable to th[e] skilled artisan and show[s] that the inventor actually invented the invention claimed” with respect to Appeal 2019-004439 Application 14/728,027 12 wherein, in response to the portable electronic device detecting that the portable electronic device has been placed into wireless communication with the wireless interface device interfaced to the appliance, further causing the appliance to be automatically placed into an operating state appropriate for the playing of the received media stream by the appliance, as recited in claim 2, and wherein causing the appliance to be automatically placed into the operating state appropriate for the playing of the received media stream by the appliance comprises causing the appliance to be automatically placed into a powered on state, as recited in claim 8. See Ariad Pharms., 598 F.3d at 1351. Accordingly, we reverse the Examiner’s written description rejection of claims 2 and 8. Claims 3 and 9 The Examiner determines the limitation comprising causing the portable electronic device to transmit a command to the appliance to cause the appliance to be placed into the operating mode and wherein the command is automatically caused to be transmitted by the portable electronic device in response to the portable electronic device detecting that the portable electronic device has been placed into wireless communication with the wireless interface device interfaced to the appliance, as recited in claim 3, and wherein causing the appliance to be automatically placed into the powered on state comprises causing the portable electronic device to automatically transmit a power control command to the appliance, Appeal 2019-004439 Application 14/728,027 13 as recited in claim 9, do not meet the written description requirement. See Final Act. 9–10; 15–16, 18. In particular, the Examiner finds: Applicant cites page 12 line 17 - page 13 line 1 of the subject application ’027: “programming on the remote control 10 may implement command and control events for the entertainment appliance(s) on which media information is to be played in response to detection of dock and undock states. For example, in order that an audio file being played back locally on the remote control 10 begins playing externally on the users desired audio receiver connected to the docking station when a dock event occurs without further intervention by the user, the remote control may be programmed to power on the audio receiver and select the correct input mode upon detection of a dock event.” Applicant cites page 2 lines 9-10 “the HP iPaq rx3xxx series of Pocket PC’s is able to function as a wireless control device using onboard software and wireless communication (IR and/or RF) capabilities, and also incorporates media rendering capabilities in that it can stream and playback media content from a server.” Unfortunately, none of this shows that Applicant had the possession of [the disputed limitations of] claim 3 and . . . claim 9. Final Act. 9–10 (emphases omitted). Appellant points to the Declaration, which explains: 43. The subject application describes that, to facilitate the rerouting of the media to the appliance from the portable electronic device, when a docking event is detected the portable electronic device may be programmed to implement command and control and, thereby to additionally power on the audio receiver and select the correct input mode for the audio receiver. (Pg. 12, line 17-Pg. 13, line 1). 44. The subject application describes that the portable electronic device is able to function as a wireless control device using onboard software and wireless communication capabilities (Pg. 2, lines 940) and that the portable electronic Appeal 2019-004439 Application 14/728,027 14 device is adapted to transmit recognizable command codes in the format appropriate for a target appliance. (Pg. 7, line 8-Pg. 8, line 10). 45. . . . because the subject application describes a portable electronic device being programmed to respond to a detected docking event by placing an appliance into a given operating state, e.g., to command the device to power on or to select an input, and describes a portable electronic device in which the wireless receipt of an address signifies a docking event to the portable electronic device, i.e., that the portable electronic device has been placed into wireless communication with the docking station acting as a wireless interface for the appliance, . . . to one of skill in the art . . . the subject application shows, with reasonable clarity, possession by the inventors of the claimed feature of . . . claim 3 . . . . 46. . . . because the subject application describes a portable electronic device being programmed to respond to a detected docking event by placing an appliance into a given operating state, e.g., to command the device to power on or to select an input, and describes a portable electronic device in which the wireless receipt of an address signifies a docking event to the portable electronic device, i.e., that the portable electronic device has been placed into wireless communication with the docking station acting as a wireless interface for the appliance, . . . to one of skill in the art . . . the subject application shows, with reasonable clarity, possession by the inventors of the claimed feature of . . . claim 9 . . . . Declaration ¶¶ 43–46. We agree with Appellant that the cited excerpts of the Specification reasonably conveys to skilled artisans that as of the filing date, Appellant possessed the claimed invention with respect to the above claim limitations. See Ariad Pharms., 598 F.3d at 1351; Declaration ¶¶ 43–46. In particular, in Appeal 2019-004439 Application 14/728,027 15 addition to the discussions above with respect to claim 1, the Specification describes Additionally, programming on the remote control 10 may implement command and control events for the entertainment appliance(s) on which media information is to be played in response to detection of dock and undock states. For example, in order that an audio file being played back locally on the remote control 10 begins playing externally on the users desired audio receiver connected to the docking station when a dock event occurs without further intervention by the user, the remote control may be programmed to power on the audio receiver and select the correct input mode upon detection of a dock event. Spec. 12:17–13:1. Therefore, the “specification . . . describe[s] an invention understandable to th[e] skilled artisan and show[s] that the inventor actually invented the invention claimed” with respect to comprising causing the portable electronic device to transmit a command to the appliance to cause the appliance to be placed into the operating mode and wherein the command is automatically caused to be transmitted by the portable electronic device in response to the portable electronic device detecting that the portable electronic device has been placed into wireless communication with the wireless interface device interfaced to the appliance, as recited in claim 3, and wherein causing the appliance to be automatically placed into the powered on state comprises causing the portable electronic device to automatically transmit a power control command to the appliance, Appeal 2019-004439 Application 14/728,027 16 as recited in claim 9. See Ariad Pharms., 598 F.3d at 1351. Accordingly, we reverse the Examiner’s written description rejection of claims 3 and 9. Claims 6 and 73 On this record, the Examiner did not err in rejecting claims 6 and 7. We have reviewed and considered Appellant’s arguments, but such arguments are unpersuasive. To the extent consistent with our analysis below, we adopt the Examiner’s findings and conclusions in (i) the action from which this appeal is taken and (ii) the Answer. The Examiner determines the limitation “causing the portable electronic device to receive the media stream from a server device via a wide area network,” as recited in claim 6; and “causing the portable electronic device to receive the media stream from a server device via a local area network,” as recited in claim 7, do not meet the written description requirement. See Final Act. 10, 16–17. In particular, the Examiner finds: Applicant cites page 5 line 1-2 and page 1 line 12-15 and Fig. 9 of the subject application ’027: “IR and/or RF communication links, and media rendering functions (Many consumers have begun storing digital media files such as photos, audio files, video files, and multimedia files on personal computers, laptops, servers, or other computing devices for playback and sharing purposes . . . i.e., Audio/video streaming and playback from a remote server). One example of such advanced control devices is the iPaq rx3xxx series of Pocket PC’s by Hewlett Packard Corp . . .” Claimed WAN wide area network and LAN 3 To the extent Appellant advances new arguments in the Reply Brief without showing good cause with respect to claims 6 and 7, Appellant has waived such arguments. See 37 C.F.R. § 41.41(b)(2). Appeal 2019-004439 Application 14/728,027 17 local area network are specific terms of art and they are not interchangeable substituted by “IR and/or RF communication links.” Nonetheless, cited sections fails to show possession of [the disputed limitations of] claim 6 and . . . claim 7. Final Act. 10 (emphases omitted). Appellant points to the Declaration, which explains: 49. The subject application describes that the portable electronic device includes media rendering functionality for allowing the portable electronic device to perform audio/video streaming and playback from a remote server. (Pg. 5, lines 1-2), Additionally, the subject application describes that it is known in the art that digital media files to be played back on a device may be retrieved from personal computers, laptops, servers, or other computing devices. (Pg. 1, lines 12-15; Fig. 9). Furthermore, the subject application describes that the server may be any remote computing device from which media files may be made accessible to the portable electronic device for streaming and/or media rendering purposes. (Pg. 12, lines 2-4). 50. . . . because the subject application describes a remote server and those of skill in the art . . . will readily appreciate that remote media providing servers are conventionally provided on the internet, e.g., are part of a wide area network, and/or are conventionally provided within a home, e.g., are part of local area network, by simply describing that the media files are to be retrieved from a server . . . to one of skill in the art . . . the subject application shows, with reasonable clarity, possession by the inventors of the claimed feature of . . . claim 6 . . . . 51. . . . because the subject application describes a remote server and those of skill in the art . . . will readily appreciate that remote media providing servers are conventionally provided on the Internet, e.g., are part of a wide area network, and/or are conventionally provided within a home, e.g., are part of local area network, by simply describing that the media files are to be retrieved from a server, interface . . . to one of skill in Appeal 2019-004439 Application 14/728,027 18 the art . . . the subject application shows, with reasonable clarity, possession by the inventors of the claimed feature of . . . claim 7 . . . . Declaration ¶¶ 49–51. We disagree with Appellant, because the written description statute “requires that the written description actually or inherently disclose the claim element.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008). [I]t is []not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device[]. . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (internal quotation marks and citations omitted) (emphases added). The cited excerpts of the Specification explain: RF communication links, and media rendering functions (i.e., Audio/video streaming and playback from a remote server). One example of such advanced control devices is the iPaq . . . . Spec. 5:1–2. Many consumers have begun storing digital media files such as photos, audio files, video files, and multimedia files on personal computers, laptops, servers, or other computing devices for playback and sharing purposes. These consumers also typically have one or more . . . . Spec. 1:12–15. receiver 54 of docking station 700. It will be understood that server 90 may be any remote computing device, from which media files may be made accessible to remote control 10 for Appeal 2019-004439 Application 14/728,027 19 streaming and/or media rendering purposes as contemplated by the present invention. Spec. 12:2–4. As shown above, the cited excerpts of the Specification do not actually or inherently disclose “causing the portable electronic device to receive the media stream from a server device via a wide area network” and “causing the portable electronic device to receive the media stream from a server device via a local area network,” as recited in claims 6 and 7 (emphases added), respectively. See PowerOasis, 522 F.3d at 1306–07. Therefore, the cited excerpts of the Specification do not “describe an invention understandable to th[e] skilled artisan” and do not “show that the inventor actually invented the invention claimed” with respect to claims 6 and 7. See Ariad Pharms., 598 F.3d at 1351. Because the cited excerpts of the Specification do not reasonably convey to skilled artisans that as of the filing date, Appellant possessed the subject matter of claims 6 and 7, we affirm the Examiner’s written description rejection of claims 6 and 7. Claims 10 and 11 The Examiner determines the limitation causing the appliance to be automatically placed into the operating state appropriate for the playing of the received media stream on the appliance comprises causing the appliance to be automatically placed into a selected input mode state, as recited in claim 10, and causing the appliance to be automatically placed into a selected input mode state comprises causing the portable electronic Appeal 2019-004439 Application 14/728,027 20 device to automatically transmit an input mode selection command to the appliance as recited in claim 11, do not meet the written description requirement. See Final Act. 8–9, 18–19. In particular, the Examiner finds: Applicant states “portable electronic device in which the wireless receipt of an address signifies to the portable electronic device that the portable electronic device is docked with, i.e., has been placed into wireless communication with, the docking station acting as a wireless interface.” . . . . The subject application describes physical connection between the remote control 10 with a docking station 700 as a docking event and removing of the remote control 10 from the docking station 700 as an “undock” event. And now . . . Applicant is suggesting that “portable electronic device in which the wireless receipt of an address signifies to the portable electronic device that the portable electronic device is docked with, i.e., has been placed into wireless communication with, the docking station acting as a wireless interface.” Applicant is suggesting that mere wireless receipt of an address to the portable electronic device from the docking station can show the possession of [disputed limitation of claim 10.] Examiner . . . disagrees, because mere possession of disclosure (A) wireless receipt of an address to the portable electronic device from the docking station does not show possession of claimed limitation (B) appliance to be automatically placed into a powered on state comprises causing the portable electronic device to automatically transmit a power control command to the appliance . . . in response to the portable electronic device detecting that the portable electronic device has been placed into wireless communication with the with the wireless interface device interfaced. Arguments with respect to claim 11 is not persuasive for the same reason. Final Act. 8–9 (emphases omitted). Appellant points to the Declaration, which explains: 41. . . . because the subject application describes a portable electronic device which responds to a detected docking event Appeal 2019-004439 Application 14/728,027 21 by placing an appliance into a given operating state, e.g., an input mode selected, and describes a portable electronic device in which the wireless receipt of an address signifies to the portable electronic device that the portable electronic device is docked with, i.e., has been placed into wireless communication with, the docking station acting as a wireless interface for an appliance . . . to one of skill in the art . . . the subject application shows, with reasonable clarity, possession by the inventors of the claimed feature of . . . claim 10 . . . . 47. . . . because the subject application describes a portable electronic device being programmed to respond to a detected docking event by placing an appliance into a given operating state, e.g., to command the device to power on or to select an input, and describes a portable electronic device in which the wireless receipt of an address signifies a docking event to the portable electronic device, i.e., that the portable electronic device has been placed into wireless communication with the docking station acting as a wireless Interface for the appliance . . . to one of skill in the art . . . the subject application shows, with reasonable clarity, possession by the inventors of the claimed feature of . . . claim 11. Declaration ¶¶ 41, 47. We agree with Appellant that the cited excerpts of the Specification reasonably conveys to skilled artisans that as of the filing date, Appellant possessed the claimed invention with respect to the above claim limitations. See Ariad Pharms., 598 F.3d at 1351; Declaration ¶¶ 41–47. In particular, in addition to the discussions above with respect to claims 1 and 2, the Specification describes Additionally, programming on the remote control 10 may implement command and control events for the entertainment appliance(s) on which media information is to be played in response to detection of dock and undock states. For example, in order that an audio file being played back locally on the Appeal 2019-004439 Application 14/728,027 22 remote control 10 begins playing externally on the users desired audio receiver connected to the docking station when a dock event occurs without further intervention by the user, the remote control may be programmed to power on the audio receiver and select the correct input mode upon detection of a dock event. Spec. 12:17–12:1. Therefore, the “specification . . . describe[s] an invention understandable to th[e] skilled artisan and show[s] that the inventor actually invented the invention claimed” with respect to causing the appliance to be automatically placed into the operating state appropriate for the playing of the received media stream on the appliance comprises causing the appliance to be automatically placed into a selected input mode state, as recited in claim 10, and causing the appliance to be automatically placed into a selected input mode state comprises causing the portable electronic device to automatically transmit an input mode selection command to the appliance, as recited in claim 11. See Ariad Pharms., 598 F.3d at 1351. Accordingly, we reverse the Examiner’s written description rejection of claims 10 and 11. Claim 15 The Examiner determines the limitation Appeal 2019-004439 Application 14/728,027 23 causing the wireless interface device interfaced to the appliance to convert the rerouted media stream received by the wireless interface device interfaced to the appliance into a format appropriate for the playing of the media stream by the appliance, as recited in claim 15, does not meet the written description requirement. See Final Act. 10–11; 19–20. In particular, the Examiner finds: Applicant cites page 9 lines 13-18 and page 11 line 8-7 and Fig. 9 . . .: “output interface 714 could be any connection type, including but not limited to RCA, Optical TOS, S-Video, Component Video, DVI, Coaxial, HDMI, etc. Additionally, circuitry and other signal conversion means may be implemented with docking station 700 to enable the output of a wide variety of signals, digital or analog, from docking station 700 without departing from the spirit and scope of the current invention . . . due to the wide variety of communication methods and protocols that may be required to adequately communicate information to and/or from the docking station, the ability of the remote control and/or docking station to dynamically transmit and receive a greater number of protocols will enable compatibility for media rendering and streaming operations with a greater number of media types and formats. It will additionally be appreciated that programming on the remote control and/or or docking station may be used for making determinations as to which communication methods and protocols may be used for a given media format to most effectively bring about desired media rendering operations, as described in greater detail below.” Cited sections fails to show possession of [the disputed limitation of] claim 15. Final Act. 10–11 (emphases omitted). Appellant points to the Declaration, which explains: 53. The subject application describes a docking station that will use a wide variety of communication protocols to communicate information from the docking station to thereby enable compatibility for media rendering and streaming operations Appeal 2019-004439 Application 14/728,027 24 with a greater number of media types and formats, that the docking station will make determinations as to which communication protocols to use for a given media format to most effectively bring about a desired media rendering operation, and that the docking station will receive media from the portable electronic device via use of a RF communication protocol and will transfer the received media to the appliance(s) via use of a wired communication protocol (Pg. 9, lines 13-18; Pg. 11, lines 8-17). 54. . . . because the subject application shows possession of the docking station being a wireless interface to an appliance and because the subject application describes that the docking station may be programmed to use a wide variety of protocols to thereby enable compatibility for media rendering, including converting a media received via a wireless protocol format into a media appropriate for transmission using a wired protocol format, the subject application shows, with reasonable clarity, possession . . . of the claimed feature of . . . claim 15. Declaration ¶¶ 53–54. We agree with Appellant that the cited excerpts of the Specification reasonably conveys to skilled artisans that as of the filing date, Appellant possessed the claimed invention with respect to the above claim limitation. See Ariad Pharms., 598 F.3d at 1351; Declaration ¶¶ 53–54. In particular, in addition to the discussions above with respect to claim 1, the Specification describes It will be understood that output interface 714 could be any connection type, including but not limited to RCA, Optical TOS, S-Video, Component Video, DVI, Coaxial, HDMI, etc. Additionally, circuitry and other signal conversion means may be implemented with docking station 700 to enable the output of a wide variety of signals, digital or analog, from docking station 700 without departing from the spirit and scope of the current invention. Appeal 2019-004439 Application 14/728,027 25 Spec. 9:12–17 (emphases added). It will be appreciated that due to the wide variety of communication methods and protocols that may be required to adequately communicate information to and/or from the docking station, the ability of the remote control and/or docking station to dynamically transmit and receive a greater number of protocols will enable compatibility for media rendering and streaming operations with a greater number of media types and formats. It will additionally be appreciated that programming on the remote control and/or or docking station may be used for making determinations as to which communication methods and protocols may be used for a given media format to most effectively bring about desired media rendering operations, as described in greater detail below. Spec. 11:8–17 (emphasis added). As shown above in the italicized text and the discussions about claim 1, the “specification . . . describe[s] an invention understandable to th[e] skilled artisan and show[s] that the inventor actually invented the invention claimed” with respect to causing the wireless interface device interfaced to the appliance to convert the rerouted media stream received by the wireless interface device interfaced to the appliance into a format appropriate for the playing of the media stream by the appliance, as recited in claim 15. See Ariad Pharms., 598 F.3d at 1351. Accordingly, we reverse the Examiner’s written description rejection of claim 15. Appeal 2019-004439 Application 14/728,027 26 Obviousness Appellant contends Dua is not prior art because “Dua - which was filed on May 12, 2005 - fails to be prior art with respect to the subject application - which is entitled to a filing date at least as early as July 16, 2004.” Appeal Br. 12. The Examiner determines Dua is prior art. See Final Act. 13–14. The Examiner determines claim 1 is not entitled to the priority date of the Provisional Application, because the Provisional Application does not disclose in response to the portable electronic device detecting that the portable electronic device has been placed into wireless communication with the wireless interface device interfaced to the appliance, causing the portable electronic device to automatically reroute the received media stream to the wireless interface device interfaced to the appliance for a playing of the received media stream by the appliance, as recited in claim 1. See Final Act. 13–14. We disagree with the Examiner. The present application was filed on June 2, 2015, and the “application claims the benefit of and is a continuation of U.S. Application No. 11/179,289, filed July 11, 2005 [’289 application], which application claims the benefit of U.S. Provisional Application No. 60/588,523, filed on July 16, 2004 [Provisional Application].” Spec. 1:5–8. The Provisional Application explains: For example, when docking station 700 is configured without wireless communication means as shown in Fig. 4 and is essentially a signal pass through for remote control 10, programming on remote control 10 may be configured to play rendered media from on board display or speaker elements (local playback mode) when in an undocked state, and upon Appeal 2019-004439 Application 14/728,027 27 initiation of a dock event, to reroute the currently playing media information from the onboard display or speaker elements to the signal contacts 104 for playback on the users entertainment appliance(s) (external playback mode) connected to connection interface 714 of the docking station. In this way a user may easily switch between the local playback mode and external playback mode by simply docking and undocking the remote control as desired. Additionally, programming on the remote control 10 may implement command and control events for the entertainment appliance(s) on which media information is to be played in response to detection of dock and undock states. For example, in order that an audio file being played back locally on the remote control 10 begins playing externally on the users desired audio receiver connected to the docking station when a dock event occurs without further intervention by the user, the remote control may be programmed to power on the audio receiver and select the correct input mode upon detection of a dock event. . . . . For systems in which the docking station includes wireless and/or other functional capabilities as generally described in connection with Fig. 6 above, additional features and functions may be accomplished. For example, as shown generally in Fig. 9, a wireless capable docking station may be configured to receive media information from remote control 10 wirelessly before output to entertainment appliances 12. Spec. 11:20–13:3 (emphases added). Similar to the discussion above with respect to the written description rejection of claim 1, the above excerpts of the Provisional Application reasonably convey to skilled artisans that as of the filing date, Appellant possessed the claimed invention with respect to the “in response to” limitation of claim 1. See Ariad Pharms., 598 F.3d at 1351. Therefore, the “in response to” limitation is entitled to the Provisional Application’s priority date of July 16, 2004. Because the Examiner does not dispute Appeal 2019-004439 Application 14/728,027 28 Appellant’s representation that the remaining limitations of claim 1 are entitled to the Provisional Application’s priority date, claim 1 has a priority date of July 16, 2004. As a result, Dua does not qualify as prior art for claim 1, because Dua was filed on May 12, 2005—after July 16, 2004. Because the Examiner erred in using Dua to reject claim 1, we reverse the Examiner’s obviousness rejection of independent claim 1. For similar reasons, we reverse the Examiner’s obviousness rejection of corresponding dependent claims 2–14. Additional Arguments Appellant raises additional arguments regarding the qualification of Komori as prior art, and the obviousness rejection of claim 8. See Appeal Br. 12–13. Because the identified issue of Dua is dispositive of the appeal with respect to the prior art rejections of claim 1–15, we do not address the additional arguments. Objections to the Specification The Examiner finds: Examination of this application has determined that the Claim 1-15 has earliest support as of 06/02/2015, the filing date of 14/728,027. With respect to claims 1-15, claim 1 recites, “. . . in response to the portable electronic device detecting that the portable electronic device has been placed into wireless communication with the wireless interface device interfaced to the appliance, causing the portable electronic device to automatically reroute the received media stream to the wireless interface device interfaced to the appliance for a playing of the received media stream by the appliance . . .” Applicant has not discloses this subject matter pre-AIA, and claims 2, 3, 8-11 has subject matter that was not disclosed pre-AIA; therefore, this Appeal 2019-004439 Application 14/728,027 29 Application should be examine under AIA. Applicant is requested to correct the pre-AIA status to AIA and continuity status to CIP for this application by filing a statement under 37 CFR 1.55 or 1.78. Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: for the purpose of examination, . . . 14/728,027 filed on 06/02/2015 are being considered CIP of 11 /179,289 because . . . original claims 1-15 of 027 were new matter introduced for the very first time on 06/02/2015. Applicant is requested to correct the continuity status, for . . . 14/728,027. Final Act. 2–3. We disagree with the Examiner. According to the MPEP: A rejection of claims is reviewable by the Patent Trial and Appeal Board, whereas an objection and requirement to delete new matter is subject to supervisory review by petition under 37 CFR 1.181. If both the claims and specification contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition. MPEP § 2163.06 (Relationship of Written Description Requirement to New Matter) (II). As discussed above, we agree with Appellant that the Provisional Application discloses the “in response to” limitation of claim 1. Further, although the Examiner asserts “claims 2, 3, 8-11 has subject matter that was not disclosed pre-AIA” (Final Act. 2), the Examiner does not explain exactly which subject matter of those claims is not disclosed in the Provisional Appeal 2019-004439 Application 14/728,027 30 Application. In any event, we have reviewed the Provisional Application, and it is substantively similar to the Specification with respect to the disclosures of claims 2, 3, and 8–11. Therefore, for similar reasons discussed above with respect to the written description rejections, the Provisional Application discloses claims 2, 3, and 8–11. Therefore, we reverse the Examiner’s objections to the Specification.4 CONCLUSION We reverse the Examiner’s decision rejecting claims 1–3, 8–11, and 15 under 35 U.S.C. § 112 (written description). We affirm the Examiner’s decision rejecting claims 6 and 7 under 35 U.S.C. § 112 (written description). We reverse the Examiner’s decision rejecting claims 1–15 under 35 U.S.C. § 103. We reverse the Examiner’s decision objecting to the Specification. Because we affirm at least one ground of rejection with respect to claims 6 and 7 on appeal, we affirm the Examiner’s decision rejecting claims 6 and 7. See 37 C.F.R. § 41.50(a)(1). 4 If prosecution reopens, we leave it to the Examiner to determine whether each of the Provisional Application and the ’289 application discloses claims 6 and 7. Appeal 2019-004439 Application 14/728,027 31 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6–11, 15 112 (written description) 6–7 1–3, 8–11, 15 1–7, 10–13 103 Falcon, Dua 1–7, 10–13 8–9, 14–15 103 Falcon, Dua, Komori 8–9, 14–15 Overall Outcome 6–7 1–5, 8–15 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation