Ex Parte 6381575 et alDownload PDFBoard of Patent Appeals and InterferencesMar 8, 201190010097 (B.P.A.I. Mar. 8, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/010,097 02/01/2008 6381575 8246.002.000000 9772 7590 03/09/2011 McANDREWS HELD & MALLOY LTD 500 WEST MADISON STREET 34TH FLOOR CHICAGO, IL 60661 EXAMINER BROWNE, LYNNE HAMBLETON ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/09/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ARACHNID, INC.1, Appellant and Patent Owner ____________ Appeal 2010-007096 Reexamination Control 90/010,097 Patent US 6,381,575 B12 Technology Center 3900 ____________ Before SCOTT R. BOALICK, KARL D. EASTHOM, and KEVIN F. TURNER, Administrative Patent Judges. TURNER, Administrative Patent Judge DECISION ON APPEAL3 ARACHNID, INC. appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of 1-57. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM. 1 ARACHNID, INC. is the Patent Owner and the real party in interest (App. Br. 1). 2 Issued April 30, 2002 to John R. Martin et al. 3 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 2 RELATED APPEALS AND PRIORITY This proceeding arose from a request for ex parte reexamination filed by Stephen C. Durant on behalf of Ecast, Inc., on February 1, 2008, of United States Patent 6,381,575 B1 (the '575 Patent) issued to John R. Martin et al. on April 30, 2002. This appeal is related to other pending appeals in related reexamination proceedings as provided in the diagram below, where claimed priority of the subject patents is also listed: 07/538,981 (06/15/1990); abandoned │ └ CIP 07/846,707 (03/06/1992); U.S. Patent No. 5,355,302 │ └ CONT 08/268,782 (06/30/1994); abandoned │ └ CONT 08/584,253 (01/11/1996); U.S. Patent No. 5,781,889 │ ├ CIP 08/638,022 (04/25/1996); U.S. Patent No. 5,848,398 │ │ Reexam Control No. 90/010,147; (Appeal No. 2010-5899) │ │ │ └ CIP 08/975,612 (11/21/1997); U.S. Patent No. 5,930,765 │ │ │ └ CONT 09/309,400 (05/11/1999); abandoned │ │ │ └ CONT 10/300,147 (11/20/2002); U.S. Patent No. 6,970,834 │ Reexam Control No. 90/010,095; (Appeal No. 2010-5434) │ └ CONT 09/076,849 (05/12/1998); U.S. Patent No. 6,397,189 │ Reexam Control No. 90/010,094; (Appeal No. 2010-9156) │ └ CONT 09/502,875 (02/11/2000); U.S. Patent No. 6,381,575 Reexam Control No. 90/010,097; (Appeal No. 2010-7096) Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 3 The '575 Patent4, along with the '834, the '189, and the '398 Patents, was asserted in litigation, namely Rowe Int'l. Corp. v. Ecast, C.A. No. 06- 2703 (N.D. Ill. 2006), where Requestor Ecast was a defendant in that litigation and the parties thereto settled and stipulated to dismiss the suit on November 28, 2008. The '575 Patent, along with the '834, the '189, and the '398 Patents, was also asserted in a counterclaim in litigation, namely Touchtunes Music Corp. v. Rowe Int'l. Corp., 07 Civ. 11450 (S.D.N.Y. 2007), which is ongoing. Additionally, in a Supplemental Brief, Appellant acknowledged that all four of the patents on appeal expired on June 15, 2010 (1st Supp. Br. 2). With respect to the '575 Patent, claims 28-57, added through amendment, are withdrawn, as no amendment may be proposed for entry in an expired patent. See 37 C.F.R. § 1.530(j). As such, we evaluate the propriety of the rejection of claims 1-27, as originally issued with the '575 Patent. We heard oral arguments from Appellant on September 15, 2010, a transcript5 of which is part of the record. 6 4 U.S. Patents 5,848,398, 6,970,834, 6,397,189, and 6,381,575 are respectively referred to the '398, '834, '189 and '575 patents throughout this opinion. 5 Record of Oral Hearing (hereinafter Oral Hr’g Tr.) 6 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed October 13, 2009), Reply Brief (“Reply Br.,” filed February 17, 2010), First Supplemental Brief (“1st Supp. Br.,” filed September 28, 2010, and Second Supplemental Brief (“2nd Supp. Br.,” filed October 7, 2010), and the Examiner’s Answer (“Ans.,” mailed December 17, 2009). Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 4 CLAIMED INVENTION Patentee’s invention relates to a jukebox system and to computer jukeboxes which can be managed from a remote location (Spec. Col. 1, ll. 15-18). The jukeboxes also operates in a user attract mode through the display of graphic images on the visual display when no song selection is playing (id. at col. 6, l. 39 – col. 7, l. 5; Fig. 1). Claim 1, which we deem to be representative, reads as follows: 1. A computer jukebox for playing songs transferred to and stored in the computer jukebox, the computer jukebox comprising: at least one communication interface for receiving digitized song data and for receiving an associated song record, the song record including song identity data comprising at least one of a song title, a song category, song address, song size, graphics address, graphics size, and play count; a memory storing the digitized song data and the song identity data; a display adapted for presenting song selections based on the song identity data and a user attract mode; a song selector for determining from the song selections a selected digitized song to be played on the computer jukebox; at least one audio speaker; a processor operative to present on the display at least one of a user attract mode and song selections based on song identity data, and operative to retrieve digitized song data corresponding to the selected digitized song, and operative to store the digitized song data and the song identity data Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 5 received by the at least one communication interface in the memory; and a digital to analog converter coupled between the processor and the audio speaker to convert the digitized song data to an analog signal for the audio speaker. PRIOR ART REJECTIONS The prior art references relied upon by the Examiner in rejecting the claims are: Korn 4,766,581 Aug. 23, 1988 Tsumura 5,046,004 Sep. 3, 1991 Vogel 5,117,407 May 26, 1992 Frank WO 92/01342 Jan. 23, 1992 The Examiner rejected claims on the following bases:7,8 i) claims 1-3, 7-13, 15, 17-20, 22-24, and 27 under 35 U.S.C. § 103(a) as unpatentable over Frank and Vogel (Ans. 3-14); and ii) claims 4-6, 21, and 25 under 35 U.S.C. § 103(a) as unpatentable over Frank, Vogel, and Korn (Ans. 27-29). Appellant relies upon the following declarations, in addition to other references, in rebuttal to the Examiner’s rejections: 7 Many claims were also rejected over Tsumura in the Final Office Action, but those rejections were withdrawn by the Examiner in the Answer (Ans. 29-30). As such, claims 14, 16, and 26 are no longer rejected over prior art and are presumptively confirmed. 8 Claims 28-57 were also rejected over prior art, but their rejections are now moot given the withdrawal of those claims, as discussed supra. Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 6 Declaration of Patrick Rice, dated March 17, 2009 (Evidence Appendix, Exhibit 1 of Exhibit N, “Rice Decl.”). Declaration of John R. Martin, dated March 16, 2009 (Evidence Appendix, Exhibit 2 of Exhibit N, “Martin Decl.”). Expert Report of Bradley W. Dickinson Regarding the Validity of U.S. Patent nos. 5,355,302, 5,781,889, 5,848,398, 6,381,575, 6,397,189, 6,970,834 and 6,598,230, dated October 19, 2007 (Evidence Appendix, Exhibit 4 of Exhibit N, “Dickinson Report”). ISSUES Appellant argues that the Examiner has failed to make out a prima facie case of obviousness because the Examiner failed to determine the level of ordinary skill in the art in 1992 (App. Br. 63, 80-81), and that the case is based on conclusory statements (App. Br. 64). Appellant also argues that the combination of Frank and Vogel fails to teach or suggest: 1) that a single display presents song selections and a user attract mode (App. Br. 65-66; 137-138), 2) that digitized song data are retrieved and stored (App. Br. 66- 68, 138-139), and 3) that the patter disclosed in Vogel is local to the jukebox only and not downloaded as required by the claims (App. Br. 68, 140). Appellant also argues that specific elements of claims 8, 10, 11, 18, and 23 are neither taught nor suggested by Frank and Vogel (App. Br. 69-70). Appellant also argues that the rejections themselves fail to point out where or how specific limitations are disclosed (App. 73-75, 81-82), and that the rejections employ improper hindsight and combine incomparable devices, and that the Examiner improperly fails to find that the secondary Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 7 considerations of nonobviousness outweigh the findings of obviousness (App. Br. 75-77). The Examiner finds that the level of skill in the art was determined and taken into account in the prior art rejections (Ans. 36), and that the Examiner relied upon supported facts in those rejections (Ans. 37). The Examiner also finds that the independent claims do not require a single display that presents both song selections and a user attract mode, and even considering such an interpretation of the claims, a single display would have been obvious in view of Frank and Vogel (Ans. 38-39). The Examiner also finds that while Frank does not explicitly recite a processor, the functions of Frank’s system requires some sort of processor (Ans. 40), and that Frank discloses digitized song data and song identity data (Ans. 41). The Examiner also finds that the use of user attract data was within the capabilities of one of ordinary skill in the art and that such data would be transmitted from a central management system under the combination of Frank and Vogel (Ans. 41-42). The Examiner also finds that other specific limitations argued by Appellant to be missing are disclosed or rendered obvious and that the rejections made are proper (Ans. 43-44, 47-52). With respect to the evidence of secondary considerations of nonobviousness, Appellant alleges evidence of: a) long felt need and failure or others to formulate the instant invention (App. Br. 83-87, 148), b) commercial success of the instant invention (App. Br. 87-92), c) copying of the invention and praise of others (App. Br. 92-98), d) skepticism of others Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 8 (App. Br. 98-100), e) licensing of the instant invention (App. Br. 100-101), and f) the litigation history of Appellant’s patents showing the nonobviousness of those patents (App. Br. 102). Overall, the Examiner finds that a majority of the evidence has no nexus with the specific claims of the '575 Patent, that some of the evidence is insufficient to support the assertions of Appellant, and that some of the evidence is not pertinent to the obviousness rejections (Ans. 54-76). We have considered in this decision only those arguments that Appellant actually raised in the Briefs. Arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Thus, the issues arising from the respective positions of Appellant and the Examiner are: (i) Do Frank and Vogel teach or suggest all of the elements of independent claims 1, 9, 15, and 22? (ii) Do Frank and Vogel teach or suggest all of the elements of dependent claims 2, 3, 7, 8, 10-13, 17-20, 23, 24, and 27? (iii) Do Frank, Vogel, and Korn teach or suggest all of the elements of dependent claims 4-6, 21, and 25? (iv) Did the Examiner properly consider all evidence of secondary considerations of nonobviousness proffered by Appellant? Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 9 FINDINGS OF FACT 1. The Specification of the '575 Patent discloses a jukebox system and computer jukeboxes which can be managed from a remote location (Spec. Col. 1, ll. 15-18). The jukeboxes can operate in a user attract mode through the display of graphic images on the visual display when no song selection is playing (id. at col. 6, l. 39 – col. 7, l. 5; Fig. 1). 2. Frank is directed to a coin-operated music playing machine or jukebox, which is connected to a central music store via a remote data transmission line to receive music, and has a screen unit capable of presenting sound films (Frank, Abs., Fig. 1). 3. The individual jukebox contains digital/analog converters and amplifiers to convert received music (Frank, p. 4, ll. 4-5), and can also contain a microcomputer to store and process user data, including use of the jukebox and the frequency of playing of individual titles (Frank, p. 6, ll. 14-18). 4. In the case of frequently selected titles, the jukebox can be equipped with a separate storage unit that stores files locally so that they can also be played directly (Frank, p. 5, ll. 11-15). 5. The screen display unit can display pieces of music which can be played by the jukebox, where those pieces can be stored and sorted “according to title, artist, hit list and the like,” and additionally images and video (Frank, p. 7, ll. 2-7; p. 8, ll. 4-8). Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 10 6. Vogel is directed to a vending machine adapted to reproduce audio and video messages (“patter”) relating to products being dispensed, where the machine can also be a music jukebox (Vogel, Abs.). 7. The patter of a cartoon-like disk-jockey is presented on video display 114 and song selection is made through control panel 406 which can comprise a touch-activated screen (Vogel, col. 3, l. 59 – col. 4, l. 14). 8. The patters are stored in the form of data descriptive of words spoken and movements enacted, to minimize storage requirements and to allow for updates in the form of floppy-disks (Vogel, col. 4, ll. 14-27). PRINCIPLES OF LAW Interpretation of Expired Patent Claims Patent claims in a reexamination proceeding in the USPTO are ordinarily given their broadest reasonable interpretation consistent with the patent disclosure. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). When the patent has not expired, construing claims of an unexpired patent broadly is not unfair to the patentee because the patentee has the opportunity to amend the claims to obtain more precise claim coverage. See id. However, patent claims of an expired patent may not be amended. 37 C.F.R. § 1.530(j). The standard of claim construction for the claims of an expired patent Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 11 in reexamination was addressed in Ex parte Papst-Motoren, 1 USPQ2d 1655 (BPAI 1986). The Board noted that In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984), held that claims in a reexamination proceeding should be given their broadest reasonable interpretation, consistent with the specification, because applicants had the right to amend, whereas in a district court, “claims should be so construed, if possible, as to sustain their validity.” Yamamoto, 740 F.2d at 1571 n.* (citing ACH Hosp. Systems, Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)). The Board held: [I]n reexamination proceedings in which the PTO is considering the patentability of claims of an expired patent which are not subject to amendment, a policy of liberal claim construction may properly and should be applied. Such a policy favors a construction of a patent claim that will render it valid, i.e., a narrow construction, over a broad construction that would render it invalid. Papst-Motoren, 1 USPQ2d at 1656; Ex parte Bowles, 23 USPQ2d 1015, 1017 (BPAI 1991) (both nonprecedential9). The Board also held in both Papst-Motoren and Bowles that it would be error to read “inferential limitations” into the claims. Papst-Motoren, 1 USPQ2d at 1657; Bowles, 23 USPQ2d at 1017. Papst-Motoren’s holding that “claims should be so construed, if possible, as to sustain their validity” is another way of saying that the 9 Although Papst-Motoren is not designated as precedential, it was decided by an expanded panel of the Board of Patent Appeals and Interferences, including the Commissioner, the Deputy Commissioner, the Chairman of the Board, and an Examiner-in-Chief. Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 12 USPTO does not apply the “broadest reasonable interpretation” in construing the claims of an expired patent in a reexamination proceeding. The policy reason is that the claims in an expired patent cannot be amended. However, the maxim that “claims should be so construed, if possible, as to sustain their validity” is sometimes misunderstood and the Federal Circuit has clarified the maxim since Papst-Motoren. In accordance with those cases, it is clear that any claim construction must be in accord with the rules of claim construction and claims may not be redrafted. See Generation II Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001) (“[C]laims can only be construed to preserve their validity where the proposed claim construction is ‘practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”); Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1215-16 (Fed. Cir. 2008) (“This court has repeatedly held that courts may not redraft claims to cure a drafting error made by the patentee, whether to make them operable or to sustain their validity . . . . To do so ‘would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention.’”) (citations and footnote omitted). The maxim is limited “to cases in which ‘the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.’” Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc) (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004)). Importantly, it is “error . . . to use the Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 13 possible invalidity of those claims, if broadly construed, as a basis for construing them narrowly.” The Saunders Group, Inc. v. ComforTrac, Inc., 492 F.3d 1326, 1335 (Fed. Cir. 2007); Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357, 1367 (Fed. Cir. 2002) (“Fairness and the public notice function of the patent law require courts to afford patentees the full breadth of clear claim language, and bind them to it as well. Consequently, where such claim language clearly reads on prior art, the patent is invalid.”); Phillips, 415 F.3d at 1327 (“[W]e have certainly not endorsed a regime in which validity analysis is a regular component of claim construction.”); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999) (“[I]f the only claim construction that is consistent with the claim’s language and the written description renders the claim invalid, then the axiom does not apply and the claim is simply invalid.”). The maxim does not mean that claims should be construed more narrowly than is required by the rules of claim construction, as is sometimes misunderstood from cases such as In re Prater, 415 F.2d 1393, 1404 n.30 (CCPA 1969) (“By construing a claim as covering only patentable subject matter, courts are able, in appropriate cases, to hold claims valid in order to protect the inventive concept or the inventor’s contribution to the art. The patentee at that time usually may not amend the claims to obtain protection commensurate with his actual contribution to the art.”) and Yamamoto, 740 F.2d at 1572 (“District courts may find it necessary to interpret claims to protect only that which constitutes patentable subject matter to do justice Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 14 between the parties.”). Papst-Motoren does not describe what sources of claim construction can be used. We assume for this appeal that a patentee is entitled to rely on any of the various intrinsic and extrinsic sources of claim meaning discussed in Phillips. It is patentee’s burden to show how an argued claim construction is supported by the evidence. Papst-Motoren also does not state what methodology of claim construction should be used, e.g., whether the USPTO should consider all sources of evidence considered by district courts. Nevertheless, the USPTO always considers the specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[I]t would be unreasonable for the PTO to ignore any interpretive guidance afforded by the applicant’s written description . . . .”). For purposes of this appeal, we assume that any type of evidence of claim meaning identified by Phillips, including prosecution history of the original patent, can be considered since patentee may not amend. Anticipation and Obviousness Rejections Anticipation is established when a single prior art reference discloses, expressly or under the principles of inherency, each and every limitation of the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 15 that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Consideration of Evidence of Secondary Considerations of Nonobviousness Objective evidence of nonobviousness (also called “secondary considerations”) must always be considered in making an obviousness determination, Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983), but it is not necessarily conclusive, Ashland Oil, Inc. v. Delta Resins & Refrac., Inc., 776 F.2d 281, 306 (Fed. Cir. 1985). A “nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A “nexus” is required between the merits of the claimed invention and the evidence of secondary considerations in order for the evidence to be given substantial weight in an obviousness decision. In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); Stratoflex, 713 F.2d at 1539. The burden of proving commercial success (and other types of secondary considerations, such as long felt need) during prosecution is on the applicant or patent owner. See In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996) (“In the ex parte process of examining a patent application . . . the PTO lacks the means or resources to gather evidence which supports Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 16 or refutes the applicant's assertion that the sales constitute commercial success.”). The burden of proving a nexus between the commercial success and the merits of the claimed invention during prosecution is also on the applicant or patent owner. Huang, 100 F.3d at 140 (“In sum, Huang simply has not carried his burden to prove that a nexus existed between any commercial success and the novel features claimed in the application.”). “It is well settled ‘that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (citing In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). The objective evidence is not commensurate (coextensive) in scope with the claimed subject matter if the claims are broader in scope than the scope of the objective evidence, e.g., if the product included elements or features not recited in the claims which may be responsible for the commercial success or praise. See Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 229-30 (D.D.C. 1990) (and cases cited therein). This is related to the nexus requirement – where the objective evidence of nonobviousness is not commensurate in scope with the claimed invention, it is more difficult (but not impossible) to show that objective evidence is due to the merits of the claimed invention as opposed to unclaimed features. [E]vidence of commercial success alone is not sufficient to demonstrate nonobviousness of a claimed invention. Rather, the proponent must offer proof “that the sales were a direct result of the unique characteristics of the claimed invention—as opposed Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 17 to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (citations omitted). ANALYSIS (i) Obviousness of Independent Claims 1, 9, 15, and 22 over Frank and Vogel Appellant argues that the Examiner has failed to make out a prima facie case of obviousness because the Examiner failed to determine the level of ordinary skill in the art in 1992 (App. Br. 63, 80-81), and that the case is based on conclusory statements (App. Br. 64). The Examiner responds that the level of skill in the art was determined and taken into account in the prior art rejections (Ans. 36), and that the Examiner relied upon supported facts in those rejections (Ans. 37). We agree with the Examiner. As the Examiner notes, the level of ordinary skill in the pertinent art needed not be determined overtly, as long as it is considered in the review of the applied prior art (Ans. 36). We further concur with the Examiner that since rejections over Tsumura (concerning karaoke machines) were withdrawn, the distinction drawn by Appellant is moot in view of the rejections over Frank (id.). With respect to Appellant’s allegation that the rejections are based merely on conclusory statements, we also agree with the Examiner that the rejections provide a proper rationale for combining the references under section 103, based on facts cited in the grounds thereof. Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 18 We do not find Appellant’s arguments about a lack of a prima facie case of obviousness to be compelling. Appellant argues that the combination of Frank and Vogel fails to teach or suggest that a single display presents song selections and a user attract mode (App. Br. 65-66; 137-138). The Examiner finds that the independent claims do not require a single display that presents both song selections and a user attract mode, and even considering such an interpretation of the claims, a single display would have been obvious in view of Frank and Vogel (Ans. 38-39). We generally agree with the Examiner. While the Examiner is correct that the limitation in claims 1, 15, and 22, namely “a display adapted for presenting song selections based on song identity data and a user attract mode,” or similar, could be interpreted as a display capable of displaying song selections based on either criterion (i.e., song identity data or a user attract mode) (Ans. 38), as Appellant points out (Reply Br. 10-11), both claims also recite that the processor presents “a user attract mode.” This suggests, buttressed by the disclosure of the Specification, that the user attract mode does not formulate song selections and is its own separate mode. As such, we think that the clear and proper reading of claims 1, 15, and 22 is that a single display is adapted to present song selections, as well as a user attract mode. However, we agree with the Examiner that even under this interpretation, the use of a single display would have been obvious (Ans. 38). Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 19 Appellant argues that given the multiple displays in Vogel, i.e., video display 114 and a control panel 406 (FF 7), and combination of Frank and Vogel would have had two types of displays, or else the use of a single display by the combination would have defeated the purpose of Vogel (App. Br. 65-66; Reply Br. 13-14). As the Examiner suggests, however, the application of the user attract mode of Vogel to the jukebox of Frank would have occurred by presenting that mode on the existing screen of Frank (Ans. 38-39). This would have involved the use of a known technique to improve the same device. It is also clear that the screen display of Frank, capable of displaying “sound films” (FF 2), is also capable of providing a user attract mode, such as described in Vogel. We also note that the disk-jockey embodiment, which delivers patter before, during or after playing of music, is but one embodiment of Vogel, such that if the combination of Frank and Vogel failed to provide the exact functionality, it would not likely frustrate the purpose of Vogel. As such, we find that it would have been obvious to have incorporated the user attract mode of Vogel using the display screen of Frank to attract potential users to the device. Thus, we do not find Appellant’s arguments to be compelling. Appellant argues that the combination of Frank and Vogel fails to teach or suggest that digitized song data are retrieved and stored (App. Br. 66-68, 138-139). The Examiner finds that while Frank does not explicitly recite a processor, the functions of Frank’s system requires some sort of Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 20 processor (Ans. 40), and that Frank discloses digitized song data and song identity data (Ans. 41). We generally agree with the Examiner. As the Examiner finds (Ans. 40-41), the functions performed by Frank’s jukebox, i.e., calling up music from a central music storage unit (FF 2), digital-to-analog conversion (FF 3), local storage of songs (FF 4), and sorting of display information (FF 5), would require a “processor” of some kind. The processor recited in claims 1 and 15 is operative to store and retrieve digitized song data, as well as store song identity data, which are functions Frank clearly discloses (FF 2, 5). While Frank does not disclose that a processor performs those functions, Frank does disclose that the jukebox can contain a microcomputer (FF 3), and we agree with the Examiner that is would have been obvious to have the microcomputer perform those functions. Thus, we do not find Appellant’s argument to be compelling. Appellant argues that the combination of Frank and Vogel fails to teach or suggest that the patter used for the user attract mode is downloaded as required by the claims, whereas Vogel provides that the patter is local to the jukebox only (App. Br. 68, 140). The Examiner finds that the use of user attract data was within the capabilities of one of ordinary skill in the art and that such data would be transmitted from a central management system under the combination of Frank and Vogel (Ans. 41-42). We agree with the Examiner. Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 21 While we acknowledge that Vogel only discloses that the patter for its video display is saved locally (FF 8), there is no central music store as there is in Frank (FF 2). Considering Vogel alone, there would be no reason to have a central repository for the patter used, but the rejection is not over Vogel alone. Since the rejection is over the combination of Frank and Vogel, we find that it would have been obvious to have transferred such patter information along with the song data from a central repository. Given that successful patter would relate to the music being played, which in Frank is received from the central music store, it would only be logical to have the germane patter information arrive along the same distribution channel. As such, we do not find Appellant’s argument to be compelling. Appellant also argues that the rejections themselves fail to point out where or how specific limitations are disclosed (App. 73-75), and that the rejections employ improper hindsight, combine incomparable devices, and fails to find that the secondary considerations of nonobviousness outweigh the findings of obviousness (App. Br. 75-77). The Examiner finds that other specific limitations argued by Appellant to be missing are disclosed or rendered obvious and that the rejections made are proper (Ans. 43-44, 47- 52). We agree with the Examiner. Appellant argues that information relating to the sort categories in Frank is not disclosed to be transmitted from the central storage unit (App. Br. 73-74), but if the data received from the central storage unit do not include such category information, i.e., it is just the digitized song, there Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 22 would be nothing to use for the sorting (FF 5). Since Frank generally receives all of its song data from the central storage unit (FF 2), and the data are not disclosed to be entered locally, we find that the sort categories would be transferred with the other information. Appellant argues that Frank’s jukebox only stores “audio signals” and not digitized song data (App. Br. 74), but sortable data about the songs are stored (FF 5), such that we find that this meets the recitations of claims 1, 15, and 22. Appellant also argues that there is no disclosure in Frank that the central management system stores “title” or artist” information (App. Br. 74), but as discussed supra, we find that the central storage unit would be the obvious source of such information for the jukebox, and storing such information there would have been obvious. Appellant also argues that it is not clear from Frank whether a frequency of selection is determined at the jukebox or at the central storage unit (App. Br. 74), but Franks’ jukebox processes user data, including use of the frequency of playing of individual titles (FF 5), and it would have been obvious to have relayed such information to the central storage unit. Appellant also argues that Frank does not specify the creation of money intake data for the selections (App. Br. 75), but we find this to be an obvious variation if frequency of selections and the costs of those selections are both known. Appellant also argues that there is no disclosure in Frank of the central storage unit builds an associated song record using the song Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 23 identity data (App. Br. 75), but we find the creation of such a record obvious in view of the other findings made supra. Appellant also argues that the rejections employ improper hindsight and combine incomparable devices (App. Br. 75-77). However, we agree with the Examiner (Ans. 51) in that we find no improper hindsight was needed or applied in making the rejections over Frank and Vogel. Additionally, while Appellant suggests that Frank and Vogel do not teach “comparable devices” (App. Br. 66), we find that both disclose jukeboxes and it would have been obvious to have employed techniques from one, such as customer attraction, to the other. As the Examiner points out (Ans. 52), the jukeboxes disclosed in Frank and Vogel were roughly contemporaries of each other, such that incorporation of elements from one would not have been viewed as looking to older style mechanical jukeboxes. As such, we do not find Appellant’s arguments to be compelling. (ii) Obviousness of the Dependent Claims over Frank and Vogel Claims 8 and 18 Appellant argues that claims 8 and 18 recite that the processor is operative to transfer the associated money intake data and the play count to the remote location for accounting through the jukebox’s communication interface, and Frank and Vogel fail to teach or suggest the same (App. Br. 69). The Examiner responds that claims 8 and 18 only require that the data be used “for accounting,” which is met by Frank (Ans. 43). Frank discloses Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 24 that the frequency of playing of individual titles is determined explicitly (FF 3). As discussed supra, if frequency of selections and the costs of those selections are both known, then the money intake data would also be known. We find that transferring such information to the central storage unit in Frank would have been obvious given the nature of the network found in Frank. As such, we do not find Appellant’s argument to be compelling. Claims 10 and 23 Appellant argues that Frank and Vogel fail to teach or suggest a memory for storing digitized song data in a digitized song library and song identity data in a song catalog, per claims 10 and 23 (App. Br. 69). The Examiner finds that Frank discloses that storage media therein store the pieces of music and constitute a digitized song library (Ans. 43). The Examiner also finds that in Frank, song data are stored as pieces of music, with lists of pointers to find that music, constituting a song catalog, and Frank allows for sorting of songs by title or artist, etc., such that cataloging must occur (Ans. 44). We concur with the Examiner and adopt the reasoning supplied. As such, we do not find Appellant’s argument to be compelling. Claim 11 Appellant argues that, per claim 11, Frank and Vogel fail to teach or suggest that the song identity data includes the graphics address identifying a graphic associated with a digitized song (App. Br. 69). Taking Appellant’s definition of “graphics” as excluding non-image data (App. Br. 70), the Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 25 Examiner finds that Frank discloses the use of image information and video signal transmission (Ans. 44; FF 5), such that the transmission and display of images would occur. Given the state of the art at the time of the priority filing date of the '575 Patent, we find the use of a graphics address to identify graphics associated with image information to have been obvious. Thus, we find no error in the rejection of claim 11 as being obvious over Frank and Vogel. As such, we do not find Appellant’s argument to be compelling. (iii) Obviousness of Claims 4-6, 21, and 25 over Frank, Vogel, and Korn Appellant argues that the Examiner has failed to make out a prima facie case of obviousness because the Examiner failed to determine the level of ordinary skill in the art in 1992 (App. Br. 80-81), and that the case is based on conclusory statements. These arguments are similar to those made with respect to the rejection over Frank and Vogel alone, and we do not find them to be any more compelling than as discussed supra. Appellant also argues that the rejections themselves fail to point out where or how specific limitations are disclosed (App. 81-82), but all of the elements argued are from claims that have been withdrawn by the expiration of the '575 Patent. As such, we do not find Appellant’s arguments to be compelling. Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 26 (iv) Evidence of Secondary Considerations of Nonobviousness With respect to the evidence of secondary considerations of nonobviousness, Appellant presents alleged evidence of: a) long felt need and failure or others to formulate the instant invention (App. Br. 83-87, 148), b) commercial success of the instant invention (App. Br. 87-92), c) copying of the invention and praise of others (App. Br. 92-98), d) skepticism of others (App. Br. 98-100), e) licensing of the instant invention (App. Br. 100-101), and f) the litigation history of Appellant’s patents showing the nonobviousness of those patents (App. Br. 102). Overall, the Examiner finds that a majority of the evidence has no nexus with the specific claims of the '575 Patent, that some of the evidence is insufficient to support the assertions of Appellant, and that some of the evidence is not pertinent the obviousness rejections (Ans. 54-76). We generally agree with the Examiner. Before addressing Appellant’s proffered evidence, we address the Examiner’s position that a majority of the evidence has no nexus with the specific claims of the '575 Patent (Ans. 54-76). In many instances, the evidence is presented as being related to a digital downloading jukebox, such as the long felt need thereof or the commercial success thereof, as examples (App. Br. 83, 87-90). However, the instant claims are not so broadly drawn; rather, they include recitations of displays based on user attract data or the use of specific graphics. Thus, for evidence purported to show the attributes and benefits of a digital downloading jukebox generally, such evidence would not be commensurate in scope with the instant claims. Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 27 While such evidence could have a nexus with more general claims, such as could be found in Appellant’s U.S. Patent No. 5,355,302 (the “parent patent” to the instant patent, App. Br. 101), we do not generally find a proper nexus between the instant claims and a majority of the evidence proffered, made with respect to a digital downloading jukebox. Where Appellant has made specific reference to all of the elements of the instant claims in the proffered evidence, we address those instances in our specific considerations of the evidence of secondary considerations below. a) Long Felt Need/Failure of Others Appellant argues that from the time of the first jukeboxes, there has been a long felt need for improved systems that did not have the drawbacks outlined in the Specification of the '575 Patent and in Appellant’s Brief (App. Br. 84-87). While we agree that those of ordinary skill in the art at the time of the priority date for Appellant’s patents knew of these drawbacks, and largely did not remedy the same, the drawbacks were solved by the creation of a “downloading jukebox” (App. Br. 87). While the claims of the '575 Patent certainly recite a computer jukebox which receives digitized song data through at least one communication interface, they recite other aspects of embodiments that Appellant has not shown long felt need or failure of others to invent, adopt or incorporate. Additionally, the evidence proffered by Appellant must also be evaluated in light of the disclosure of Frank, to which Appellant has not traversed its finding as being prior art. At the least, Frank shows that there Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 28 was not a failure of at least one inventor to perceive and overcome the prior art drawbacks also perceived by Appellant. As such, with respect to a downloading jukebox, we do not find failure of others to overcome the problems of the prior art. With respect to the other aspects of the claims not directly disclosed by Frank, since it is applied under 35 U.S.C. § 103(a), Appellant has not made a sufficient showing that those aspects have addressed a long felt need nor that there was failure of others to incorporate such aspects. As such, we do not find Appellant’s evidence of a felt need and failure or others to formulate the instant invention to be compelling or sufficient to overcome the finding of obviousness of the instant claims. b) Commercial Success Appellant also proffers evidence of the commercial success of products sold which were covered by Arachnid’s Patents (App. Br. 87-88). Appellant has proffered evidence that is alleged to show that products sold under Archnid’s patents are commercially successful, that such success is due to claimed features, and that infringing devices also enjoyed commercial success (App. Br. 88-92). The Examiner finds that Appellant has not attempted to address commercial success as it relates to the claims of the '575 Patent (Ans. 59, 61-63), and that the evidence lacks specificity to show actual commercial success (Ans. 59-61). We agree with the Examiner. Appellant argues that its evidence shows that Rowe, the exclusive licensee, operated more than 11,000 digital jukeboxes, and provided that there was strong acceptance of its Internet-access jukeboxes (App. Br. 88). Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 29 In addition, Appellant submits evidence that Ecast, alleged to be an infringer, had downloaded its 100 millionth song on its network, had 3,000, 7,500 or 10,000 jukeboxes across the country, was selling about 300 jukeboxes per month, and that the jukeboxes provide about $10 million in revenue (App. Br. 91). While we have no doubt about the numbers cited by Appellant, we find information about percentages of relevant markets or whether those numbers reflect the use of systems covered by the instant claims to be lacking. As the Examiner has pointed out, there is no context provided for the 11,000 jukeboxes operated by AMI Entertainment, under license to Appellant, such that it can be determined whether the number represents a significant portion of the relevant market, and it is not clear that those jukeboxes were covered by the specific claims of the '575 Patent (Ans. 59). The Examiner makes similar findings about the sales/use figures supplied for allegedly infringing jukeboxes (Ans. 63-64), which we accept. We do not see, nor has Appellant presented, a way of determining whether the revenue recited is expected for the stated periods, is due to other factors, such as marketing or pricing policies, or whether it is obtained through jukeboxes having features of the claims of the '575 Patent. As such, we find the evidence insufficient to show actual commercial success of products covered by the instant claims. Appellant also relies on the Report of Dr. Dickinson to assuage any potential concerns with the evidence proffered. Appellant alleges that the Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 30 Dickinson Report shows that Rowe’s jukeboxes contain embodiments of the instant patent and that sales figures show that the patented features were a motivating factor for purchasers (App. Br. 88). However, with respect to the Dickinson Report, Dr. Dickinson’s opinions do not appear to rely on sales figures, or market reports, or other objective evidence. Rather, we find his opinions to be conclusory (Dickinson Report pp. 165-166). Dr. Dickinson argues that “[t]he number of sales since Rowe first started selling digital jukeboxes demonstrates that the patented features were a motivating factor for purchasers” (id.), but we are unable to determine how Dr. Dickinson could arrive at such a conclusion. We are uncertain that sales numbers alone could be used to infer actual motivating factors for purchasers. As such, we do not find Dr. Dickinson’s opinions to be compelling, nor do we find them to buttress the other evidence proffered, which we find to be insufficient. Appellant also argues that the commercial success of the exclusive licensee Rowe’s products is due to claimed features (App. Br. 89-90). Appellant argues that the jukeboxes sold by Rowe are all embodiments of the jukeboxes claimed by the Archnid patents (App. Br. 89). However, we agree with the Examiner that even if Rowe is the exclusive licensee of the “Archnid patents,” that does not equate to the jukeboxes that they manufacture are necessarily commensurate in scope with the specific claims of the '575 Patent (Ans. 61-62). The aspect of Rowe’s jukeboxes touted by Appellant (App. Br. 89-90) are generally related to digital jukeboxes, with little tied to the instant claims. Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 31 With respect to aspects that could arguably be coincident with the instant claims, we do not find that these have been shown to be tied to or responsible for the alleged commercial success. Rowe’s press releases may make reference to “attract mode processing” or capability to store “cover art” (App. Br. 89), but we can find no persuasive evidence that these aspects are responsible for the alleged commercial success. Additionally, while Rowe’s press releases provide that its digital jukeboxes “also play on-screen promotions” (App. Br. 90), this also is only generally tied to the alleged commercial success. As such, we cannot say, in view of the evidence presented, that the success of Rowe’s jukeboxes is due to claimed features of the '575 Patent and not due to unclaimed features. Further, with respect to requests of executive’s of Rowe for digital jukeboxes before they were rolled out, i.e., “Rowe’s customers were ‘telling Rowe that there needs to be a digital product’” (App. Br. 90), the quotations all reference digital jukeboxes generally, and not systems necessarily falling within the scope of the instant claims. As discussed supra, we do not find evidence of commercial success of digital downloading jukeboxes generally, to be evidence which is commensurate in scope with the instant claims. c) Copying/Praise by Others Appellant argues that the “Arachnid digital jukebox patents are fundamental patents in the jukebox industry, and the fact that . . . [they] have been emulated and praised by many others in the industry” demonstrates that the claims are not obvious (App. Br. 92). Appellant lists many factors that Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 32 were allegedly copied by competitors (App. Br. 93-96), and also lists points of praise received by Appellant from those in the industry (App. Br. 96-98). The Examiner finds that the aspects allegedly copied are not commensurate with the scope of the claims of the '575 Patent, that those aspects also were not unique to Appellant’s jukeboxes, and that the praise by others was not praise of jukeboxes covered by the claims of the '575 Patent (Ans. 65-72). We agree with the Examiner. With respect to the allegations of copying, Appellant is no doubt aware that copying requires not only reproduction, but also knowledge of the thing that was allegedly copied. We can find no evidence that the competitors alleged to have copied had access to Appellant’s jukeboxes, other than TouchTunes, which is alleged to have visited Arachnid in 1995 (App. Br. 94; Martin Decl. ¶ 6). However, even in the latter case, Martin avers that representatives of TouchTunes visited Archnid, but there are no statements testifying that TouchTunes has any access to the digital jukeboxes so that they could have copied therefrom. As such, we do not find that the evidence supplied by Appellant can be taken as evidence of copying by others. With respect to the praise by others in the industry, we agree with the Examiner that the evidence presented lacks a proper nexus with the claims of the '575 Patent. As the Examiner points out, many of the articles demonstrating praise predate the filing date of the '575 Patent (Ans. 70-71), are related to other jukebox technologies (Ans. 71), and are not directed to Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 33 specific features set forth in the claims of the '575 Patent (Ans. 71-72). As such, we find that the evidence of praise by others of a digital downloading jukebox generally, is not evidence that is commensurate in scope with the instant claims. Thus, we do not find that this evidence shows nonobviousness nor overcomes the findings of the Examiner demonstrating obviousness of the instant claims. d) Skepticism by Others Appellant argues that many people affiliated with the major jukebox makers were skeptical of digital jukeboxes, and refers to many quotations of persons who were skeptical in the relevant time period (App. Br. 98-100). The Examiner finds that the time of skepticism considered as a secondary condition of nonobviousness is skepticism with respect to whether or not the claimed systems would work, and not the skepticism averred by Appellant, namely that computer jukeboxes would be accepted by the coin-op industry (Ans. 72-73). We agree with the Examiner. All of the persons quoted by Appellant (App. Br. 98-100), are concerned about an installed base of CD format jukeboxes being replaced, “being leery of anything new,” and issues with performance when compared to existing jukeboxes. While some quotations consider whether “it will work,” (App. Br. 100), we agree with the Examiner that the time frame of the quotations, i.e. the state of the technology in the late 1990’s, these quotations do not show that they would not likely be operable but rather doubt that they could act to replace an installed base of jukeboxes. As such, Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 34 we do not find the evidence of skepticism by others proffered by Appellant to demonstrate nonobviousness of the instant claims. e) Licensing With respect to licensing of the '575 Patent, Appellant argues that Rowe took a license to the patents involved in the instant reexaminations, and that TouchTunes sought but did not take a license of the “parent patent” (App. Br. 101). The Examiner finds that the evidence of licensing is inconclusive and not sufficient (Ans. 74). We agree with the Examiner. As the Examiner points out (id.), the failure of TouchTunes to license any patent in Appellant’s portfolio cannot be taken as dispositive of obviousness or nonobviousness. Even if TouchTunes did contemplate taking a license, we also do not find that it would counsel for nonobviousness. Also, we do not doubt that Rowe took a license based on Martin’s Declaration (Martin Decl. ¶¶ 5-6). However, the Examiner also points out that licensure of the '575 Patent may have occurred because Rowe wanted aspects of Appellant’s claimed invention found in other patents of the family and not for reasons related to aspects set forth in the instant claims (Ans. 74). Appellant has not refuted this, so that we cannot say that the licensure of the '575 Patent was related to the subject matter of the instant claims. Thus, Appellant has not shown a nexus between the licensure of all of the patents in Appellant’s portfolio and the specific claims of the '575 Patent. As such, we agree with the Examiner that the fact that Rowe licensed the '575 Patent does not constitute the necessary showing by Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 35 the preponderance of the evidence that this secondary consideration should overcome the obviousness finding made by the Examiner. f) Litigation History of Appellant’s Patents Appellant argues that since a federal court and an expert in the art did not find Appellant’s patents to be obvious over Frank, in one of the cases cited supra, and since the defendant settled the lawsuit rather than continuing with the trial, these are additional indicia of nonobviousness (App. Br. 102). The Examiner finds that since the patent has not been fully litigated, the court’s finding is of little import, and the evidence of settlement does not suggest nonobviousness (Ans. 75). We generally agree with the Examiner. As the Examiner has identified (Ans. 75-76), there are multiple reasons parties settle lawsuits, so evidence of settlement is not dispositive. Given that the terms of the settlement agreement are confidential (App. Br. 102), we cannot determine that the settlement was predicated on the opposing party’s belief that they would be unlikely to succeed at trial. As such, we do not find that settlement necessarily shows nonobviousness. Additionally, as provided by Appellant (id.), the district court refused to grant Ecast’s motion for summary judgment that the claims of the '575 Patent were invalid as obvious. We note that the finding of a summary judgment decision would have been made in consideration of all materials in the light most favorable to the party opposing the motion. We do not consider Appellant’s evidence in such a light in the instant reexamination. Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 36 In addition, summary judgment is not appropriate where there is a genuine issue of material fact, but the existence of such a genuine issue does not necessarily demonstrate non-obviousness. Thus, we do not find the district court’s denial of the summary judgment motion in the litigation to necessarily show nonobviousness in the instant proceedings. CONCLUSIONS We find that: (i) the Examiner did not err in finding that Frank and Vogel teach or suggest all of the elements of claims of independent claims 1, 9, 15, and 22 under 35 U.S.C. § 103(a); (ii) the Examiner also did not err in finding that Frank and Vogel teach or suggest all of the elements of claims of dependent claims 2, 3, 7, 8, 10-13, 17-20, 23, 24, and 27 under 35 U.S.C. § 103(a); (iii) the Examiner also did not err in finding that Frank, Vogel, and Korn teach or suggest all of the elements of claims 4-6, 21, and 25 under 35 U.S.C. § 103(a); and (iv) the Examiner properly considered all evidence of secondary considerations of nonobviousness proffered by Appellant and properly found that it did not outweigh the findings of obviousness. DECISION We affirm the Examiner’s decision to reject claims 1-13, 15, 17-25, and 27. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). Appeal 2010-007096 Reexamination Control 90/010,097 United States Patent 6,381,575 B1 37 AFFIRMED ack cc: FOR PATENT OWNER: McANDREWS, HELD & MALLOY, LTD. 500 WEST MADISON STREET, 34TH FLOOR CHICAGO, ILLINOIS 60661 FOR THE THIRD PARTY REQUESTOR: NOVAK DRUCE & QUIGG LLP 1000 LOUISIANA STREET, 53RD FLOOR HOUSTON, TX 77002 Copy with citationCopy as parenthetical citation