8014540 et al.

Patent Trials and Appeals Board

Aug 29, 2019

90013998 - (D) (P.T.A.B. Aug. 29, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/013,998 08/18/2017 8014540 21362-33375 8231
72822 7590 08/29/2019
Weiss & Arons LLP
63 South Main Street
Spring Valley, NY 10977
EXAMINER
SAGER, MARK ALAN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/29/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AAMP OF AMERICA
Patent Owner and Appellant
____________

Appeal 2019-004850
Reexamination Control 90/013,998
United States Patent US 8,014,540 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and KRISTEN L.
DROESCH, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

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DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s
decision to reject claims 1–16. We have jurisdiction under 35 U.S.C. §§ 134
and 306, and we heard the appeal on August 21, 2018. We reverse.

STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on August 18, 2017 of United States Patent 8,014,540 (“the ’540 patent”),
issued to Riggs on September 6, 2011.
The ’540 patent describes an interface device for interconnecting
fixed controls of a vehicle to a replacement stereo. The interface device can
receive control signals from fixed controls, such as steering wheel controls,
and then transmit corresponding control signals to the replacement stereo.
See generally Abstract. Claim 1 is illustrative of the invention and is
reproduced below:
l. An aftermarket stereo control interface device adapted to be
installed in a vehicle and to facilitate communication between a local stereo
control configured to produce signals in a first format and a stereo receiver
configured to receive signals in a second format, the aftermarket stereo
control interface device comprising:

a receiver adapted to receive at least one input signal, the at least one
input signal comprising a control signal in the first format configured to
control the stereo receiver;

1 Appellant identifies the real party in interest as AAMP of Florida, Inc.
App. Br. 2.
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a transmitter adapted to produce and broadcast to the stereo receiver
an output signal in the second format, the output signal being based on the
input signal; and

a memory;

wherein:

the local stereo control is mounted in the vehicle at a location remote
from the stereo receiver;

the aftermarket stereo control interface device translates signals in the
first format to signals in the second format so that the local stereo control
can be operated to control the operation of the stereo receiver via the
aftermarket stereo control interlace, and the aftermarket stereo control
interface is programmable to store in the memory output signals
corresponding to the local stereo control such that subsequent activation of
the local stereo control results in the aftermarket stereo control interface
recalling from the memory at least one output signal corresponding to the
local stereo control and wherein the stereo receiver is an after-market stereo
receiver and wherein the aftermarket stereo control interface is
programmable so that the interface can be adapted for use with a plurality of
different types of aftermarket stereo receivers.

RELATED PROCEEDINGS
This appeal is said to be related to various proceedings. First, the
’540 patent is a continuation of U.S. Application No. 11/181,601, filed July
13, 2005 that is a continuation of Application No. 09/442,627, filed
November 17, 1999 (“’627 application”), that issued as U.S. Patent
6,956,952 (“’952 patent”), and its corresponding provisional Application
No. 60/108,711 filed November 17, 1998 (“’711 provisional application”).
App. Br. 2.
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The ’540 patent was the subject of another ex parte reexamination
proceeding (90/012,739) that was denied. Id. 3.
The ’540 patent is also related to U.S. Patent 8,184,825 B1 (“’825
patent”) that shares a common ancestor with the ’540 patent, namely the
’952 patent. Id. The ’825 patent was the subject of an ex parte
reexamination proceeding (No. 90/013,891) where we affirmed the
Examiner’s decision to reject the claims based on prior art that included the
Daly reference—the very reference at issue here. See Ex parte AAMP of
America, No. 2018-006347 (PTAB Aug. 27, 2018) (“Bd. Dec.”). That
decision is on appeal before the U.S. Court of Appeals for the Federal
Circuit. App. Br. 3.
The ’540 patent is also related to U.S. Patent 9,165,593 (“’593
patent”) that was the subject of an inter partes review proceeding (IPR2016-
00061) that was terminated. Id.

THE REJECTIONS
The Examiner rejected claims 1, 5, 6, 8, 9, 13, 14, and 16 under 35
U.S.C. § 102(e) as anticipated by Daly (US 2011/0046788 A1; published
Feb. 24, 2011; filed Aug. 21, 2009). Ans. 3–9.2
The Examiner rejected claims 2–4 and 10–12 under 35 U.S.C. § 103
as unpatentable over Daly and either Yaroch (US 5,790,065; issued Aug. 4,
1998) or Barreira (US 5,515,345; issued May 7, 1996). Ans. 9–10.

2 Throughout this opinion, we refer to (1) the Appeal Brief filed February
14, 2019 (“App. Br.”); (2) the Examiner’s Answer mailed April 10, 2019
(“Ans.”); and (3) the Reply Brief filed June 7, 2019 (“Reply Br.”).
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The Examiner rejected claims 7 and 15 under 35 U.S.C. § 103 as
unpatentable over Daly and Ase (US 6,225,584 Bl; issued May 1, 2001).
Ans. 10–11.

THE ANTICIPATION REJECTION
The Examiner finds that Daly discloses a stereo control interface
device with every recited element of the independent claims, including a
transmitter adapted to produce and broadcast to a stereo receiver an output
signal in a second format, where the output signal is based on the input
signal (“the second format limitation”) recited in independent claim 1, and
similar limitations in independent claim 9. Ans. 3–9.
Appellant does not dispute these findings, but rather contends that
Daly does not qualify as prior art to the ’540 patent because the ’540
patent’s priority date, namely the November 17, 1999 filing date of its
grandparent ’627 application and corresponding ’952 patent, predates Daly’s
filing date. See App. Br. 11–29; Reply Br. 2–5. According to Appellant, the
’540 patent’s claimed invention is entitled to the 1999 filing date because,
among other things, the ’952 patent supports wired embodiments expressly,
and record evidence—including Daly—shows that ordinarily skilled artisans
understood the ’952 patent’s disclosure conveyed the recited subject matter,
including the second format limitation, to show possession of that subject
matter. See App. Br. 11–29.
Appellant further contends that not only do broadening statements in
the written descriptions of the ’952 and ’540 patents inherently teach
hardwired outputs, but record evidence shows the only two viable
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possibilities taught by the ’952 patent’s broadening statement are wired and
infrared (IR) wireless implementations. App. Br. 11–20. Appellant adds
that although the ’711 provisional application required equipping an
aftermarket stereo with an infrared remote control, this requirement was
deleted in the ’952 patent’s disclosure. App. Br. 19–22. According to
Appellant, the ’952 and ’540 patents—unlike the ’711 provisional
application—refers to wireless transmission as merely one embodiment and,
therefore, is not so limited. App. Br. 20–22.

ISSUE
Did the Examiner err in relying on Daly in rejecting claims 1, 5, 6, 8,
9, 13, 14, and 16 under § 102? This issue turns on whether Daly qualifies as
prior art to the ’540 patent.

ANALYSIS
The ’540 patent that is the subject of the present reexamination
proceeding issued from U.S. Application 12/605,950, filed October 26, 2009
(“’950 application”), which is a continuation of U.S. Application
11/181,601, filed July 13, 2005 (“’601 application”), which is a continuation
of U.S. Application 09/442,627, filed November 17, 1999, the latter
application claiming priority to U.S. Provisional Application 60/108,711,
filed November 17, 1998. ’540 patent, col. 1, ll. 7–12.
The Daly reference is a U.S. application that published on February
24, 2011, but was filed on August 21, 2009, which is before the ’950
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application’s filing date. Daly’s filing date, however, is after the filing dates
of all other applications in the ’540 patent’s priority chain.
Turning to the ’540 patent’s claim 1, we note a significant difference
in the relevant claim language at issue here compared to the claims at issue
in earlier related proceedings. Notably, the claims at issue in our earlier
decision involving the related ’825 patent explicitly called for, among other
things, a stereo control interface device adapted to (1) produce output signals
in a second format, and (2) transmit the output signals via hardwire
connection to a replacement aftermarket stereo receiver. See Bd. Dec. 2–3
(emphasizing the hardwire connection clause when reproducing the ’825
patent’s claim 1). A similar explicit hardwire connection clause was in the
claims at issue before another panel of this Board in an inter partes review
proceeding of the related ’593 patent. See Automotive Data Solutions, Inc.
v. AAMP of Florida, Inc., IPR2016-00061 (PTAB May 13, 2016) (“’061
IPR”), at 4 (reproducing the ’593 patent’s claim 1).
But the ’540 patent’s claim 1 has no hardwire connection clause.
Rather, the claim recites, in pertinent part, (1) a transmitter adapted to
produce and broadcast to a stereo receiver an output signal in a second
format, where the output signal is based on an input signal comprising a
control signal in a first format configured to control the stereo receiver, and
(2) the aftermarket stereo control interface translates signals in the first
format to signals in the second format so that the local stereo control can be
operated to control the stereo receiver’s operation via the interface. Our
emphasis underscores that instead of transmitting the output signal to the
stereo receiver via a hardwire connection as in the related patents, the ’540
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patent’s claim 1 merely recites that the transmitter can produce and
broadcast an output signal in a second format that resulted from the recited
first-to-second format translation.
This functionality is supported by the ’540 patent’s grandparent ’627
application that best reflects the corresponding ’952 patent’s disclosure as
originally filed. In the “Summary of the Invention” section, the ’627
application explains that the disclosed stereo control interface device
is adapted to receive signals from local stereo control devices
located at positions within a vehicle that are remote from the
stereo control unit or receiver and then produce output signals
which can be provided to a replacement stereo unit so that the
device will translate the signal from the existing local stereo
control device into a format which can be used to change the
function of the replacement stereo in the same manner that
manipulation of the local controls would change the original
stereo.

’627 Appl’n 3–4 (emphases added). The ’627 application further
explains that, in one embodiment,
the local stereo control switches provide a signal to the interface
device via hardwiring and the interface is adapted to receive the
signal and then produce a corresponding wireless signal that is
transmitted to a wireless receiver on the after-market
replacement stereo control unit such that manipulation of the
local stereo controls results in a corresponding control signal
being sent to the after-market replacement stereo.

Id. 4 (emphases added).
This disclosed functionality in the ’627 application amply
supports the second format limitation in the ’540 patent’s claim 1.
Although this disclosed transmission of wireless signals is dispositive
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of this appeal, we nonetheless reiterate our finding from our decision
involving a similar issue with respect to the ’825 patent, namely that
“despite the ’627 application disclosing a wired connection on the
interface circuit’s input, there is no disclosure of a wired connection
on its output to the replacement stereo—only a wireless connection.”
Bd. Dec. 8 (emphasis in original). We reached this finding, as did the
Board in the related inter partes review proceeding, even if a wired
connection on the output to the stereo receiver in the ’627 application
would have been obvious, for it is well settled that obviousness is
insufficient to show written description support. See id. 9–10 (citing
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir.
2010) (en banc)). Accord ’061 IPR at 13 (noting this point). Rather
than repeat our detailed analysis of the ’627 application here, we
incorporate our associated findings regarding the ’627 application and
its underlying ’711 provisional application on pages 7 to 14 of our
earlier decision here by reference. See Bd. Dec. 7–14.
As we indicated in the related Board decision, the fact that the
’627 application on page 14, lines 1 to 6 states that the interface
circuit 110’s exact configuration can vary depending on the
configuration of the vehicle and replacement stereo receiver does not
change our conclusion in this regard. Bd. Dec. 9. Even assuming,
without deciding, that the purported intent of this statement was that
the interface could act with a wired connection as was tested (but not
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sold) as the inventor, Mr. Riggs, declares,3 ordinarily skilled artisans
would nevertheless have to somehow draw such an inference from the
broad and general statements in the above-noted passage from the
’627 application which, when read in the context of that disclosure,
falls short of showing possession in that regard. That is, even
assuming, without deciding, that ordinarily skilled artisans could
somehow infer an intention to use a wired connection from the broad
and general statements in this passage, such an intention would have,
at best, been obvious from that passage. But that is still insufficient to
show possession of that feature, for obviousness does not satisfy the
written description requirement as noted above. Accord Bd. Dec. 9–
10 (noting this point).
Nevertheless, the above-noted disclosed wireless transmission
functionality in the ’627 application amply supports the second format
limitation in the ’540 patent’s claim 1. We reach this finding noting
that nothing in the claim nor the disclosure as originally filed in the
’627 application precludes translating signals from a first wireless
format to a second wireless format, particularly in view of the recited
wireless input signal in the ’540 patent’s dependent claims 2 and 10
and associated disclosure in Figures 3 and 4A, and page 12 of the ’627
application.
For the foregoing reasons, then, the ’540 patent’s claim 1 is
supported by the ’627 application and, therefore, predates Daly’s

3 See Declaration of Brett D. Riggs Under 37 CFR 1.132, dated Mar. 19,
2018 (“Riggs. Decl.”).
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filing date. Because Daly does not qualify as prior art to the ’540
patent’s claim 1, the Examiner’s anticipation rejection of that claim is
erroneous.
Therefore, the Examiner erred in rejecting (1) independent claim 1;
(2) independent claim 9 that recites commensurate limitations; and (3)
dependent claims 5, 6, 8, 13, 14, and 16 for similar reasons. Because this
issue is dispositive regarding our reversing the Examiner’s rejection of these
claims, we need not address Appellant’s other associated arguments.

THE OBVIOUSNESS REJECTIONS
Because the Examiner’s obviousness rejections of dependent claims
2–4, 7, 10–12, and 15 rely on the disqualified Daly reference, the
Examiner’s obviousness rejections of these claims are likewise erroneous.

CONCLUSION
The Examiner erred in rejecting (1) claims 1, 5, 6, 8, 9, 13, 14, and 16
under § 102, and (2) claims 2–4, 7, 10–12, and 15 under § 103.

DECISION
The Examiner’s decision to reject claims 1–16 is reversed.

REVERSED

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PATENT OWNER:

WEISS & ARONS LLP
63 SOUTH MAIN STREET
SPING VALLEY, NY 10977

THIRD PARTY REQUESTER:

WILEY HORTON
215 SOUTH MONROE STREET
2ND FLOOR
TALLAHASSEE, FL 32301

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