Ex Parte 6381575 et al

Board of Patent Appeals and Interferences

Mar 8, 2011

90010097 (B.P.A.I. Mar. 8, 2011)

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.
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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)

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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).
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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
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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.
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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
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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
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(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?

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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).
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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
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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.
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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
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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
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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
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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
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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
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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.
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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).
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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
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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.
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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
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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
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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
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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
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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.

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(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.
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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
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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).
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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
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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.
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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
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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
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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,
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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
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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.
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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).
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AFFIRMED

ack

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