95000384 (P.T.A.B. Dec. 30, 2013)

Ex Parte 6829672 et al

Patent Trial and Appeal BoardDec 30, 2013

95000384 (P.T.A.B. Dec. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/000,384 07/09/2008 6829672 237325-000005 4170 84310 7590 12/31/2013 Troutman Sanders LLP The Chrysler Building 405 Lexington Avenue New York, NY 10174 EXAMINER REICHLE, KARIN M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/31/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SANDISK CORPORATION Requester and Respondent v. NETAC TECHNOLOGY CO., LTD. Patent Owner and Appellant ____________________ Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 Technology Center 3900 ____________ Before HOWARD B. BLANKENSHIP, STANLEY M. WEINBERG, and JOHN A. EVANS, Administrative Patent Judges. BLANKENSHIP, Administrative Patent Judge. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 2 DECISION ON APPEAL STATEMENT OF THE CASE In this inter partes reexamination proceeding, Patent Owner Netac Technology Co., LTD appeals under 35 U.S.C. § 134(b) (2002) from the final decision of the Examiner unfavorable to the patentability of claims 1- 22 of US patent 6,829,672, which are all the claims in the patent. Requester SanDisk Corporation responds. Oral hearing was on May 8, 2013.1 We have jurisdiction under 35 U.S.C. § 315 (2002). We affirm. Invention The '672 patent relates to an electronic flash memory external storage method for data processing systems. '672 patent Abstract. Power for the external device is provided by the host via a USB (Universal System Bus) or IEEE1394 bus, and the data exchange is in accordance with the USB or IEEE1394 standard. '672 patent col. 6, ll. 28-47. When the external flash memory storage device is plugged into the data processing host, a driver coordinates with firmware that resides in the electronic flash device. The driver coordinates with the firmware to initialize the device and assign a display symbol for the external device. The driver processes operation requests in magnetic disk operation format that are sent from the operating system to the external device. The driver converts the operation instructions into a format for execution by the firmware. Id. at col. 4, ll. 27-67. 1 According to Requester, this proceeding is related to Reexamination Control No. 95/001,747. Oral Hearing Tr. 39-40. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 3 Figure 7 of the '672 patent is reproduced below. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 4 Figure 7 is said to be a software flowchart of a driver that is loaded between the bottom layer operating system and the upper layer operating system. '672 patent col. 8, ll. 34-49. FIG. 7 shows an initialization block S1 in response to the device being plugged in, a notifying the operating system to assign an external storage driver block S2, a waiting for operation request block S3, an operate the magnetic disk block S4, a plug-and-play or other supportable operation block S9, a processing operation block S10, a return process inform of result or state block S11, an operation for converting magnetic disc operation into electronic flash memory external storage device block S5, an operate electronic flash memory external storage device to package it in the format defined by USB block S6, a send the packaged operation to the firmware via the operating system and wait for operation return block S7, a return process information of result or state block S8, and a notify the operating system to remove the movable storage device block S12 in response to the external device being unplugged. Id. at col. 8, ll. 49- 64. Claims Claim 1 is representative. 1. An electronic flash memory external storage method, comprising the steps of: establishing data exchange channel between a data processing system and a portable external storage device based on USB or IEEE1394 bus upon plug said portable external storage device into said USB or IEEE 1394 bus interface of said data processing system; Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 5 acquiring a DC power supply from said data processing system for said external storage device through said USB or IEEE1394 bus upon plug said portable external storage device into said USB or IEEE 1394 bus interface; configuring a flash memory storage module built-in said external storage device, wherein the data storage structure of the flash memory storage module is arranged on a block basis; directly accessing data or information in the said flash memory storage module based on USB or lEEE1394 bus standard through said established data exchange channel by implementing and processing the data access operation requests issued by users, wherein said data processing system assigning and displaying a device symbol for said external storage device and processing the operation request in magnetic disk operation format issued from users upon plug said external storage device into said USB or IEEE 1394 interface of said data processing system. Prior Art Ban US 5,404,485 Apr. 04, 1995 (“Ban II”) Gupta US 5,822,245 Oct. 13, 1998 Sartore US 6,012,103 Jan. 04, 2000 Ban2 US 6,148,354 Nov. 14, 2000 Terasaki US 6,292,863 B1 Sep. 18, 2001 Margalit US 6,763,399 B2 Jul. 13, 2004 Kikuchi WO 98/03915 Jan. 29, 1998 2 Patent Owner contests the status of Ban, Terasaki, and Margalit as prior art. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 6 Paul McFedries, The Unauthorized Guide to Windows® 98 Second Edition (1999). (“Guide”). Compaq Computer Corp., et al., Universal Serial Bus Specification (Revision 1.1), September 23, 1998. (“USB 1.1”). Fuji Photo Film (Europe) G.m.b.H., Image Memory Card Reader SM-R1: for Windows®98/ Macintosh (Owner’s Manual), April 1, 1999. (“FujiFilm”). RATOC Systems, Inc., USB Port SmartMedia Reader/ Writer SMA03U, User Guide (Rev. 1.1), May 1999. (“RATOC”). Advertisement for Netac Tech. Co., Ltd., “‘A Very Small Floppy’–the ONLY DISC,” appearing in China Computerworld, October 4, 1999 (with English translation). (“Netac”). Appellant’s Contentions Appellant contends that the Examiner erred in adopting any of 52 rejections under 35 U.S.C. § 103(a) that were proposed by the Requester, over prior art applied against the claims as shown in the tables below. The rejections are based on various combinations of art that are denoted as “primary” and “secondary” references. Ban, Terasaki, Margalit, and Sartore are the “primary” or base references. The claim charts from the original reexamination request are provided in the Patent Owner’s Appeal Brief’s Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 7 Evidence Appendix as Exhibits 47, 48, 49, and 50--“Ex. 47, 48, 49, and 50.”3 “Primary” References Ban Terasaki Margalit Sartore “Secondary” References Ban II USB 1.1 FujiFilm RATOC Guide Netac Kikuchi Gupta The references are applied under 35 U.S.C. § 103(a) against the claims as follows: 3 Unless otherwise indicated, in this opinion “Ex.” will refer to the corresponding exhibit in the Evidence Appendix of the Appeal Brief. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 8 References Claims Ban, Guide 1-6 and 15-18 Ban, Netac 1-6 and 15-18 Ban, FujiFilm 1-6, 11, and 15-18 Ban, RATOC 1-6, 11, and 15-18 Ban, Guide, Gupta 7-10 and 19-22 Ban, Netac, Gupta 7-10 and 19-22 Ban, FujiFilm, Gupta 7-10 and 19-22 Ban, RATOC, Gupta 7-10 and 19-22 Ban, Guide, Kikuchi 11-14 Ban, Netac, Kikuchi 11-14 Ban, FujiFilm, Kikuchi 11-14 Ban, RATOC, Kikuchi 11-14 Terasaki, Ban II, Guide 1, 16, and 17 Terasaki, Ban II, Netac 1, 16, and 17 Terasaki, Ban II, FujiFilm 1, 11, 16, and 17 Terasaki, Ban II, RATOC 1, 11, 16, and 17 Terasaki, Ban II, USB 1.1, Guide 1-5 and 15-18 Terasaki, Ban II, USB 1.1, Netac 1-5 and 15-18 Terasaki, Ban II, USB 1.1, FujiFilm 1-5, 11, and 15-18 Terasaki, Ban II, USB 1.1, RATOC 1-5, 11, and 15-18 Terasaki, Ban II, USB 1.1, Guide, Gupta 6-10 and 19-22 Terasaki, Ban II, USB 1.1, Netac, Gupta 6-10 and 19-22 Terasaki, Ban II, USB 1.1, FujiFilm, Gupta 6-10 and 19-22 Terasaki, Ban II, USB 1.1, RATOC, Gupta 6-10 and 19-22 Terasaki, Ban II, Guide, Kikuchi 11-14 Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 9 References Claims Terasaki, Ban II, Netac, Kikuchi 11-14 Terasaki, Ban II, FujiFilm, Kikuchi 11-14 Terasaki, Ban II, RATOC, Kikuchi 11-14 Margalit, Ban II, Guide 1-6 and 15-18 Margalit, Ban II, Netac 1-6 and 15-18 Margalit, Ban II, FujiFilm 1-6 and 15-18 Margalit, Ban II, RATOC 1-6 and 15-18 Margalit, Ban II, Guide, Gupta 7-10 and 19-22 Margalit, Ban II, Netac, Gupta 7-10 and 19-22 Margalit, Ban II, FujiFilm, Gupta 7-10 and 19-22 Margalit, Ban II, RATOC, Gupta 7-10 and 19-22 Margalit, Ban II, Guide, Kikuchi 11-14 Margalit, Ban II, Netac, Kikuchi 11-14 Margalit, Ban II, FujiFilm, Kikuchi 11-14 Margalit, Ban II, RATOC, Kikuchi 11-14 Sartore, Ban II, USB 1.1, Guide 1-5 and 15-18 Sartore, Ban II, USB 1.1, Netac 1-5 and 15-18 Sartore, Ban II, USB 1.1, FujiFilm 1-5, 11, and 15-18 Sartore, Ban II, USB 1.1, RATOC 1-5, 11, and 15-18 Sartore, Ban II, USB 1.1, Guide, Gupta 6-10 and 19-22 Sartore, Ban II, USB 1.1, Netac, Gupta 6-10 and 19-22 Sartore, Ban II, USB 1.1, FujiFilm, Gupta 6-10 and 19-22 Sartore, Ban II, USB 1.1, RATOC, Gupta 6-10 and 19-22 Sartore, Ban II, USB 1.1, Guide, Kikuchi 11-14 Sartore, Ban II, USB 1.1, Netac, Kikuchi 11-14 Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 10 References Claims Sartore, Ban II, USB 1.1, FujiFilm, Kikuchi 11-14 Sartore, Ban II, USB 1.1, RATOC, Kikuchi 11-14 Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 11 ANALYSIS We have considered the arguments and evidence provided by Patent Owner but we are not persuaded of error in any of the applied rejections. For any of Patent Owner’s timely arguments that are not specifically addressed in this opinion, we refer to the persuasive response to the arguments in Respondent’s Brief. Claims 1, 19, 20, 21, and 22 are independent. In this opinion, in view of Appellant’s arguments in the Appeal Brief, unless we indicate otherwise, we will address claim 1 as representative of the invention. See 37 C.F.R. § 41.67(c)(1)(vii). Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 12 Sartore Figure 2 of Sartore is reproduced below.4 Figure 2 is said to be a diagram illustrating a USB system. Sartore col. 3, ll. 41-42. Computer system 50 includes a host computer 52 connected to a peripheral device 54 by a USB 60. One or more peripheral device drivers may be stored in the host computer’s operating system. The 4 Sartore is prior art under 35 U.S.C. § 102(e)(2) (2002). Patent Owner has made no attempt to antedate Sartore, which has a § 102(e) date of July 2, 1997. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 13 operating system may also include configuration data for a particular peripheral device, such as which device driver to use. Id. at col. 4, ll. 52-66. Peripheral device 54 includes a USB interface system 71 and a USB interface circuit 76. Memory 74 in the interface circuit may contain an identification code to indicate which configuration information set should be downloaded to the peripheral device. The USB circuit is designed to meet USB standard specifications, such as communications protocols and electrical specifications. Id. at col. 5, ll. 6-24. Figure 4 of Sartore is reproduced below. Figure 4 is said to be a diagram illustrating a USB interface circuit that permits the peripheral device to be electronically disconnected and/or reconnected to the USB without physically disconnecting and reconnecting Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 14 the peripheral device from the USB (i.e., simulating an electrical disconnect/connect cycle). Sartore col. 6, ll. 34-40. As with the conventional USB interface, the host computer USB interface circuit 100 includes two USB data leads 102, 103 (D+ and D-). The peripheral USB interface circuit 120 includes a buffer output 124 labeled D+ and a second buffer output 126 labeled D-. The D+ data lead is connected to a supply voltage (e.g., 3.3 volts) through a 1.5 kΩ resistor 128 and an electrical switch 130. Id. at ll. 40-56. When a peripheral device is connected to the USB, the electrical switch permits the peripheral device to disconnect and then reconnect itself to the USB without the physical disconnection of the peripheral device from the USB. If the peripheral device is physically connected to the USB but the electrical switch is open, the D+ data lead is no longer connected to the supply voltage and the host computer determines that the peripheral device has been disconnected even though the peripheral device remains physically connected to the USB. Similarly, when the electrical switch is closed again, the D+ data lead is again connected to the supply voltage, and the host computer will detect that the peripheral device has been reconnected to the USB. Sartore col. 6, l. 65-col. 7, l. 7. USB 1.1 The USB transfers signal and power over a four-wire cable. USB 1.1 at 17. Figure 4.2 of USB 1.1 is reproduced below. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 15 Figure 4.2 depicts a USB cable. The cable carries VBUS--nominally, 5 Volts at the source--and GND wires to deliver power to devices. USB 1.1 at 17. The host supplies power for use by USB devices that are directly connected, although any USB device may have its own power supply. USB devices that rely totally on power from the cable are called bus-powered devices. Id. at 18; see also id. at 134 et seq. (§ 7.2, Power Distribution). Sartore and the Secondary References Patent Owner argues, in essence, that none of the limitations of claim 1 are taught by the applied prior art. Although Patent Owner’s Appeal Brief is replete with the phrase that the applied prior art “teaches away,” Patent Owner provides little or no evidence or reasoning in support of the allegations. “A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Para-Ordnance Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (alteration in original) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Patent Owner’s allegations of “teaching away” are based on the Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 16 view that the references contain some teachings that might be not directly related to the claimed subject matter. However, the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the alternatives when the disclosure does not criticize, discredit, or otherwise discourage the solution claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). We will consider the claim 1 features that Patent Owner alleges to be not taught by Sartore and the secondary references. I. Acquiring a DC Power Supply . . . Through Said USB or IEEE 1394 Bus Patent Owner alleges that Sartore “teaches away” from acquiring a DC power supply from the USB interface. Patent Owner submits that Sartore discloses that the USB interface circuit connects to the two data lines (D+ and D-) and that the D+ line is connected to a 3.3 Volt supply voltage. According to Patent Owner, the 3.3 Volt supply voltage “is clearly not in conformity with the 5.0 volts standard voltage that is supplied from the USB power line.” App. Br. 53. However, the 3.3 Volt supply voltage described by Sartore is voltage at the peripheral device for raising and lowering the voltage of the D+ data lead. We agree with Patent Owner to the extent that Sartore’s Figure 4 is silent with respect to the peripheral device’s source of power. But the USB 1.1 standard allows for a host to power a peripheral device via the USB interface. One of ordinary skill in the art would have appreciated that the Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 17 3.3 Volt supply voltage at the peripheral device could easily be derived from a 5 Volt source from the host. Moreover, Sartore discloses, expressly, that the peripheral device may utilize the electrical power supplied by the bus, such that the device does not require its own electrical power source. Sartore col. 2, ll. 57-65. Patent Owner also argues that if Sartore’s (Fig. 4) interface circuit acquires DC power from the USB interface, then an additional switch must be included to turn on/off the DC power from the USB interface, complicating the circuit design. App. Br. 53. Patent Owner does not further explain the position nor provide evidence in support of the theory. We do not see why an “additional switch” would be necessary for turning power on or off from the USB interface, when physically connecting and disconnecting the peripheral device would turn on and turn off power in a bus-powered device. Further, as we have noted, Sartore teaches that the invention provides the advantage of maintaining the DC power to the peripheral device, even when the host does not recognize that the peripheral device is connected. Sartore col. 2, ll. 57-65. We agree with the Examiner and Requester that Sartore does not “teach away” from acquiring DC power from the USB interface and, indeed, in view of Sartore’s disclosure and the details provided in the USB 1.1 specification, teaches acquiring DC power from the USB interface. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 18 II. Said Data Processing System Assigning and Displaying a Device Symbol for Said External Storage Device Each of FujiFilm and RATOC provides evidence that it would have been obvious to assign and display a device symbol for the external storage device. FujiFilm 12; RATOC 25. We agree with the Examiner and Requester that Patent Owner’s arguments that FujiFilm and RATOC are directed to memory card readers are inapposite, as the rejections rely on the references’ teachings with respect to display of an icon on a computer display, rather than the details of the external storage device. Resp. Br. 14. Patent Owner argues that FujiFilm and RATOC “teach away” from the claimed invention because the references teach a type of protocol conversion that was allegedly disclaimed during prosecution of the original patent. App. Br. 30-31. We will address that position, infra, in our discussion of Terasaki. For the purposes of the rejections based on Sartore, we agree with Requester that Patent Owner’s arguments are inapposite because the rejections do not rely on FujiFilm or RATOC as teaching “directly accessing” data or information in the flash memory storage module as claimed. Resp. Br. 14. Patent Owner’s “teaching away” arguments are based on the idea of bodily incorporating the entire structure of FujiFilm or RATOC with the base references such as Sartore, which is not responsive to the proposed rejections. Even assuming that the phrase “directly accessing” in claim 1 distinguishes over a protocol conversion as taught by FujiFilm and RATOC, Patent Owner has not identified any warning to the artisan in the references to avoid accessing data in flash memory without performing a protocol conversion. Cf. Para-Ordnance Mfg, 73 F.3d at 1090. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 19 III. Configuring a Flash Memory Storage Module . . . Wherein the Data Storage Structure of the Flash Memory Storage Module is Arranged on a Block Basis We agree with the Examiner and Requester that Ban II discloses that its memory is arranged on a block basis (e.g., col. 2, ll. 1-30). Individual blocks are addressed and accessed for read and write commands (Ban II, e.g., col. 5, ll. 18-52), and memory is addressed by block number (id. at col. 4, ll. 32-37). As Requester indicates, Patent Owner has not demonstrated that the claim language distinguishes over blocks being organized, additionally, into units or other structures. Resp. Br. 17. Further, Patent Owner’s argument that Ban II is not enabling because it does not expressly describe how to “configure” the flash memory is not consistent with the '672 patent disclosure, which also fails to expressly describe how to “configure” the memory. That is, the claimed configuration must be within the knowledge of one of ordinary skill in the art. Id. at 18. See In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (Board’s observation that appellant did not provide the type of detail in his specification that he now argues is necessary in prior art references supports the Board’s finding that one skilled in the art would have known how to implement the features of the references). Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 20 IV. Establishing Data Exchange Channel Between a Data Processing System and a Portable External Storage Device Based on USB or IEEE 1394 Bus Upon Plug Said Portable External Storage Device Into Said USB or IEEE 1394 Bus Interface of Said Data Processing System Patent Owner contends (e.g., App. Br. 36) that the “establishing a data exchange channel” language requires that the data channel must span from the requests issued by users to the flash memory module. We agree with the Examiner and Requester that there is insufficient basis for that interpretation of the claims. The data channel as claimed may exist anywhere between the host and the external storage device (e.g., Resp. Br. 18). V. Processing the Operation Request in Magnetic Disk Operation Format Issued From Users Upon Plug Said External Storage Device Into Said USB or IEEE 1394 Interface of Said Data Processing System Ban II teaches a computer system in which flash memory emulates disk memory. Ban II col. 3, l. 51 - col. 4, l. 10. Patent Owner argues that the prior art does not teach processing the operation request “issued from users.” App. Br. 47. However, one of ordinary skill in the art would appreciate that the principal purpose of a disk drive is to store and retrieve data for applications in response to user commands, such as storing and retrieving a word processing document in disk memory. We find Patent Owner’s argument to be not persuasive. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 21 Sartore, the Secondary References, and Dependent Claims At page 56 of the Appeal Brief, Patent Owner repeats previously considered arguments in defense of dependent claims. Patent Owner asserts, in addition, that Sartore fails to teach the limitations of claims 2, 3, and 4, as if Sartore alone were to be applied against the claims. However, non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Patent Owner’s Rule 131 Effort I. The Rule 131 Evidence Considered Patent Owner submits that it has filed declarations pursuant to 37 C.F.R. § 1.131 to show that the invention claimed in the '672 patent was conceived before November 1, 1998, or at least as early as February 2, 1999. App. Br. 6-7. Patent Owner further submits that the conception was coupled with due diligence to a reduction to practice of the invention in July 1999. Id. at 12. Proof of conception as early as February 2, 1999, with proof of the later activities would remove Ban from consideration as prior art in this proceeding. Proof of conception before November 1, 1998, with the further necessary proofs would remove Ban, Terasaki, and Margalit from consideration as prior art. First, however, we must determine what Rule 131 evidence is before us. The Examiner considered declarations by the inventors of the '672 patent as indicated in the Action Closing Prosecution (“ACP”; mailed Jan. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 22 13, 2010). On March 15, 2010, after the close of prosecution, Patent Owner submitted several “supplemental” declarations that Patent Owner relies upon in the Appeal Brief. Requester in the Respondent Brief does not address the “supplemental” declarations.5 Requester contends that the evidence submitted after the ACP was not considered by the Examiner, and properly so, in accordance with the applicable rules and procedures. Resp. Br. 2. Patent Owner acknowledges that the Examiner did not consider the declarations filed after the ACP. Rebuttal Br. 1-2; see also Right of Appeal Notice (“RAN”; mailed Sept. 7, 2010) at 4-5. Patent Owner argues, however, that the Examiner’s failure to consider the evidence is appealable because it is directly related to the merits of the “rejections of the Patent Owner’s priority claims.” Rebuttal Br. 2. Patent Owner also submits that the two Rule 131 declarations that were considered by the Examiner should be sufficient to antedate Ban, Terasaki, and Margalit. Id. at 4. Entry of an affidavit or other evidence submitted after an action closing prosecution is not a matter of right. An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113 ) in an application or in an ex parte reexamination filed under § 1.510 , or an action closing prosecution (§ 1.949 ) in an inter partes reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. 5 The Respondent Brief does, however, submit as “Exhibit L” an “Analysis of Improperly Submitted New Evidence,” which Respondent reports was submitted as “Appendix A” to Requester’s April 2010 Comments, and contends was incorporated by reference in the Right of Appeal Notice. Resp. Br. “Evidence Appendix.” Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 23 37 C.F.R. § 1.116(e) (emphasis modified). The Examiner’s decision to not consider Patent Owner’s proffered evidence does not go to the merits of the rejections on appeal but relates to the propriety of the procedural action of not entering evidence that was filed after an action closing prosecution. The Examiner’s failure to enter and consider Patent Owner’s evidence submitted after the ACP is not an appealable matter. Patent Owner’s remedy, not elected, was to petition for supervisory review of the Examiner’s application of the procedure set forth in § 1.116(e). Further, we will not, in the first instance, evaluate evidence that was not considered by the Examiner in our determination as to whether the Examiner erred in concluding that Patent Owner has failed to show applied patents to be antedated. Thus, Patent Owner’s Rule 131 evidence before us in this appeal consists of the Rule 131 declarations, and exhibits referenced therein, that were submitted to the Examiner prior to the ACP.6 App. Br. 68 (Ex. 9-13). The evidence includes the “Deng Declaration” (executed Feb. 3, 2009; Ex. 9) and the “Cheng Declaration” (executed Feb. 3, 2009; Ex. 10). The evidence also includes the declaration by Mr. Feng Xiang (executed Feb. 3, 1999; Ex. 11). The declarations filed after the ACP, and the arguments in Patent Owner’s briefs that are based thereon, have not been considered. 6 Patent Owner is correct (App. Br. 9) that the ACP and RAN erroneously refer to the declarations being filed on July 9, 2008, which is the date of the original reexamination request. The declarations were filed on February 3, 2009. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 24 App. Br. 69 (Ex. 15-20). See also 37 C.F.R. § 41.67(c)(1)(ix) (“Reference to unentered evidence is not permitted in the brief.”).7 II. Rule 131 37 C.F.R. § 1.131 provides in pertinent part: (b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained. 7 In any event, it appears from Patent Owner’s Appeal Brief that the “supplemental” declarations were submitted, in the main, as evidence tending to show that inventive activity occurred in Singapore rather than in China. For reasons set forth infra, we need not determine where the activity occurred. The March 15, 2010 submission also included, apparently, material filed under seal in an envelope, which the panel has not reviewed and does not possess. See “Artifact Sheet” notice mailed March 15, 2010; App. Br. 70, Evidence Appendix items 29, 30 (“not produced”). Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 25 III. Evidence of Conception “Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is therefore to be applied in practice.” Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003) (internal quotation marks omitted) (quoting Kridl v. McCormick, 105 F.3d 1446, 1449 (Fed. Cir. 1997). Initially, we need to determine the critical date that Patent Owner alleges with regard to conception. Patent Owner faults the Examiner for not evaluating the evidence to determine if it is sufficient to show conception at least as early as February 2, 1999. App. Br. 19-20. However, the inventors- -those who should know--allege conception prior to November 1, 1998. Deng Decl. ¶ 4; Cheng Decl. ¶¶ 4, 11. It is not surprising that the Examiner evaluated the evidence for a showing of conception prior to November 1, 1998. In any event, we will consider the evidence in view of both dates that are alleged by Patent Owner’s counsel. Next, we need to determine what it is that the inventors allege conception of and how that may relate to the claimed invention of the '672 patent. Unfortunately, the inventor’s declarations do not specifically address the claims of the patent. The declarations, instead, allege strings of features that were “conceived of” before November 1, 1998. Deng Decl. ¶ 4; Cheng Decl. ¶ 4. Those paragraphs do not, however, refer to any evidence in support of the allegations. “It has long been the case that an inventor’s allegations of earlier invention alone are insufficient--an alleged date of Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 26 invention must be corroborated.” In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011) (citations omitted). Because it is a mental act, an inventor’s testimony regarding conception must be corroborated by “‘evidence which shows that the inventor disclosed to others his completed thought expressed in such clear terms as to enable those skilled in the art to make the invention.’” Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1356 (Fed. Cir. 2010) (quoting Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985)). The Cheng Declaration (¶ 11) refers to email correspondence with a journalist as evidence of conception of “the invention” prior to November 1, 1998--“Exhibit E,” provided as Ex. 27. According to the provided English translation, Mr. Cheng, in an email apparently dated November 25, 1999,8 answered that “[t]he idea was developed in October 1998.” Insofar as the email can be considered corroborating evidence of conception, neither the email nor the Cheng Declaration details how the “idea” may relate to the claimed invention of the '672 patent. The Deng Declaration (¶ 11) refers to a discussion with Mr. Feng Xiang concerning “the invention.” The Xiang Declaration (executed Feb. 3, 1999; Ex. 11) avers that Mr. Xiang is the Chief Technical Officer of Patent Owner. Mr. Xiang testifies about a conversation in February 1999 with co- inventor Deng. We do not attach great weight to the testimony of an officer of the company that owns the subject patent, concerning a conversation that occurred ten years prior, absent supporting documentary evidence of the 8 As Requester notes (Resp. Br. 9), the date of the email response appears to be prior to the date of the email to which it responds. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 27 items discussed in the conversation. In any event, the Xiang Declaration allegations do not extend to a “complete and operative” invention as claimed. The alleged conversation did not include discussion of, for example, establishing a data exchange channel between a data processing system and a portable external storage device based on USB or IEEE 1394 bus upon plugging the device into the bus interface nor the data storage structure of the flash memory storage module being arranged on a block basis (e.g., '672 patent Claim 1). Nor do the inventors’ declarations explain, or otherwise remedy, the deficiency in showing prior disclosure of the complete and operative invention that is claimed. Further, the mere naming of other features does not indicate that the inventive idea was so clearly defined in co-inventor Deng’s mind that “only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994) (citing Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). The inventors’ declarations also provide and address two single-page documents that might be considered evidence of conception prior to April 5, 1999 (the filing date of Ban), although the declarations do not rely on the documents as evidence of conception. The documents, labeled “UFD Software/firmware Block Diagram” and “Memory Mapping of UFD,” are provided as Ex. 12 and 13, respectively. Each bears the date of February 2, 1999. However, the declarations do not allege, let alone show, that the content of the documents was known to anyone other than the co-inventors. Nor do the documents themselves indicate otherwise. The documents are Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 28 not corroborating evidence of conception. In short, there is insufficient evidence to demonstrate that the inventors “disclosed to others [their] completed thought expressed in such clear terms as to enable those skilled in the art to make the invention.” Spansion, 629 F.3d at1356.9 IV. Evidence of Diligence and Reduction to Practice “The Patent Office must have such facts as will enable it and its reviewing courts to judge whether there was construction and when it occurred, or whether there was diligence.” In re Harry, 333 F.2d 920, 922 (CCPA 1964). We do not reach consideration of Patent Owner’s evidence of due diligence from prior to the effective date of Terasaki, Margalit, or Ban to a subsequent reduction to practice. Patent Owner has not provided, on this record, the critical showing of conception prior to any of the effective dates. Patent Owner’s evidence of the alleged reduction to practice in July 1999 is, quite simply, deficient. “To show actual reduction to practice, an inventor must demonstrate that the invention is suitable for its intended purpose.” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (citing Scott v. Finney, 34 F.3d 1058, 1061 (Fed. Cir. 1994)). The co-inventors merely allege that, with respect to a third prototype, they “got it to work in July, 1999.” Cheng Decl. ¶ 7; Deng Decl. ¶ 7. The undated photographs (Ex. 21) 9 Even if Ex. 12 and 13 were to evidence conception of something, we agree with Requester that it would not be the claimed invention of the '672 patent. Resp. Br. 9-10. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 29 of the “prototypes” do not demonstrate that the claimed invention of the '672 patent was tested and determined to work as intended, at any time.10 V. Rule 131 - Conclusion We agree with the Examiner that none of the art applied in this appeal has been antedated. Specifically, in view of the character and weight of the evidence that Patent Owner provides, none of the challenged references of Ban, Terasaki, and Margalit has been antedated. 10 For reasons unstated, Patent Owner alleges that “due diligence” existed for periods after the alleged reduction to practice. App. Br. 23-24. Assuming that, contrary to the inventor’s declarations, Patent Owner is alleging due diligence to the filing of the Chinese patent application(s), the evidence to which Patent Owner refers (id.) does not support diligence to a constructive reduction to practice. No evidence is proffered to show diligence in preparing a patent application between August 1999 and November 14, 1999, the filing date of the first of the Chinese patent applications. See Deng Decl. ¶ 19; Cheng Decl. ¶ 18. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 30 Ban Figure 5 of Ban is reproduced below. Figure 5 is said to be a schematic block diagram of the main components of a flash memory device. Ban col. 6, ll. 7-9. A flash memory system 42 includes a host platform 44 that operates a USB flash device 46 as non-volatile storage space. Host platform 44 connects to USB flash device 46 through USB host connector 50, USB cable 48, and USB flash device connector 52. Host platform 44 includes USB host controller 54, and flash device 46 includes USB flash device controller 56. Flash device 46 contains flash memory module 58, in which the data is stored. Id. at ll. 9-27. Patent Owner contends that Ban “teaches away” from acquiring DC power from the USB interface of the data processing system “by suggesting that the power is acquired from the USB flash device controller within the Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 31 external storage device.” App. Br. 32-33. However, we agree with Requester that Ban’s disclosure that the USB flash device controller controls the power of the flash memory module (Ban col. 6, ll. 51-52) does not necessarily mean that the flash memory has its own power supply. Moreover, and more important--and contrary to Patent Owner’s arguments-- USB 1.1 cannot “teach away” from using DC power from the USB interface because it expressly discloses that DC power can be supplied to the USB device from the USB interface as part of the USB specification itself. See USB 1.1 at 134 et seq. (§ 7.2, Power Distribution). Claim 2 Patent Owner submits that claim 2 requires loading a driver of the external storage device in the data processing system “for implementing operation request” to the external storage device cooperating with the firmware. App. Br. 37. “Thus, according to Claim 2, the driver being loaded must be a driver for the specific external storage device and must be able to implement operation request.” Id. Patent Owner further alleges that USB 1.1 describes a “generic” device driver that is not “driver specific” for any device and “simply cannot implement any operation request.” Id. Requester responds that the driver being “specific” to the external storage device is not required by the claim. Resp. Br. 19. Requester continues: In any case . . . Ban discloses a driver specific for its external storage device that is used to implement read and write operation requests (see, e.g., Col. 9, ll. 1-5 and 26-29) and USB 1.1 provides the details of where such a driver is loaded in the data processing system (between the client layer/ “upper layer Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 32 operating system” and the USB bus interface/“lower layer operating system” such that software entities in the client layer can communicate with a USB device coupled to the host via the USB bus interface (see, e.g., § 10.1.1). Resp. Br. 19. In response, Patent Owner again discusses USB 1.1 (Rebuttal Br. 18- 19) but does not address the specific teachings relied upon in Ban. In particular, Ban describes the host platform uploading a USB client driver for the USB flash device, with the device drivers issuing read and write commands to the USB flash device with the application commands. Ban col. 9, ll. 1-29. Claim 4 Requester submits that each of Guide, Netac, FujiFilm, and RATOC teaches synchronously (i.e., when the USB device is plugged in) instructing the operating system to assign a drive symbol consistent with the requirements of claim 4. Resp. Br. 19-20. Patent Owner responds that none of these secondary references discloses symbol assignment for the external storage device as claimed. Rebuttal Br. 19. However, as noted supra, at least each of FujiFilm and RATOC demonstrates that it would have been obvious to assign and display a device symbol for the external storage device. FujiFilm 12; RATOC 25. Claim 5 We agree with Requester that Ban describes plug-and-play operation (col. 1, l. 62 - col. 2, l. 3) in more detail than does the '672 patent disclosure. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 33 Resp. Br. 20. We therefore disagree with Patent Owner (Rebuttal Br. 19) that the prior art fails to teach a driver for a USB external storage device with built-in flash memory that processes plug-and-play coordinating with the operating system. See, e.g., Ban col. 1, l. 62 - col. 2, l. 3; col. 9, ll. 1-29. Claim 6 Patent Owner argues that Ban teaches read commands issued from a driver, but not from a user. App. Br. 39-40. However, Ban teaches emulating a disk drive. Ban col. 8, ll. 29-36. As we have previously noted, one of ordinary skill in the art would appreciate that the principal purpose of a disk drive is to store and retrieve data for applications in response to user commands, such as storing and retrieving a word processing document in disk memory. Patent Owner also argues that Ban does not teach the driver converting the read command into a special read instruction that can be understood and executed by the firmware. App. Br. 39-40. However, while Ban might not use the word “converts” in describing the operation, the reference teaches converting read commands into special read instructions that can be understood and executed by the firmware, at least at column 9, lines 26 through 29 and column 10, lines 1 through 23. Claim 15 Patent Owner asserts that USB 1.1, sections 7.1.7.4 and 7.1.7.5, “do not disclose” how to implement “the suspend and resume functionality required by claim 15.” App. Br. 40. Patent Owner admits, however, that the Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 34 sections disclose how the USB standard interface supports suspend and resume operations. Id. We agree with the Examiner and Requester that USB 1.1 renders obvious, at the least, the functionality of “adopting” a suspend/resume circuit consistent with the method of claim 15. The USB 1.1 disclosure indicates that suspend/resume circuits were readily available to one of ordinary skill in the art and, at the least, suggests “adopting,” as claimed, a suspend/resume circuit in the external storage device. Claims 11-14 Patent Owner argues that “each of Fujifilm, RATOC and Kikuchi discloses a card reader and an indication relating only to the memory card that is inserted into the card reader (not the operating state of the external storage device as required by Claim 11).” App. Br. 43. The rejection, however, relies on Kikuchi to show the use of an LED to indicate the operating status of a storage device--the device in Kikuchi is an external storage device when the memory card is installed. Resp. Br. 22. Patent Owner further argues that claims 12 through 14 are patentable because Kikuchi does not disclose an external storage device having a “built-in” flash memory module. App Br. 43-44. However, the rejection does not offer Kikuchi as teaching an external storage device having a “built-in” flash memory module, because Ban does. See Ban, e.g., Fig. 1. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d at1097. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 35 Claims 7-10 The proposed rejection adds Gupta to the combination applied against claim 7, and claims 8 through 10 which depend therefrom. Patent Owner has not shown that Gupta “teaches away” from the flash memory structure of the claimed invention being arranged on a block basis. App. Br. 41. Moreover, Patent Owner has not provided any reasoning or evidence to demonstrate that the “pages” described by Gupta might differ in substance from the “blocks” described by the '384 patent. See id. Patent Owner’s remarks in support of dependent claims 8 through 10 consist of no more than statements of what the claims recite and assertions that the recitations are not found in the applied prior art. Merely pointing out what a claim recites followed by a naked assertion that there is no corresponding step or structure in the references is not a substantive argument as to the separate patentability of the claims. See 37 C.F.R. § 41.67(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). In particular, Patent Owner does not address the description (i.e., the factual basis) in the applied references (e.g., Gupta) upon which the original inter partes reexamination request relies. See RAN 7. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (reasonable to interpret Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art). Patent Owner thus has not provided substantive arguments for separate patentability with respect to any of claims 8 through 10. Claims 8 through 10 thus stand or fall with claim 7. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 36 Terasaki Figure 4 of Terasaki is reproduced below. Figure 4 is said to show a schematic structure of a PC card. Terasaki col. 6, ll. 21-22. The card 40 includes a PC card physical layer interface 42, a USB physical interface 43, a flash controller 46, and flash memory 41-1, 41-2, and 41-3. A USB line driver/receiver 44-1, an IDE (Integrated Device Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 37 Electronics) command decoder 44-2 and an IDE host interface 44-3 are provided in the USB interface 44. The flash controller 46 is arranged between the flash memory, the PCMCIA ATA (Personal Computer Memory Card International Association AT Attachment) interface 45, and the IDE interface 47 by control signal lines C. Id. at col. 13, ll. 35-49. The PC card 40 can be operated as the IDE drive connected to the USB port of the desktop PC. Id. at col. 14, ll. 42-44. Patent Owner submits that Terasaki “teaches away” from “directly accessing” the flash memory as claimed because Terasaki performs a USB- to-IDE communication protocol conversion “as disclaimed by Patent Owner.” App. Br. 45. According to Patent Owner, “due to Patent Owner’s prosecution history disclaimer,” the claim term “directly accessing” means there is no communication protocol in the data accessing path. Id. In particular, Patent Owner alleges that a reference was distinguished, during original prosecution, as failing to teach “directly accessing” data in the flash memory because it required a USB/ATA conversion. App. Br. 30. However, in this proceeding, the claims are amenable to amendment. We need not attempt to determine whether remarks that accompanied amendments during original prosecution rose to the level of clear disclaimer of subject matter, in a reexamination proceeding where the claims can be amended commensurate with the alleged disclaimer. Under the required broadest reasonable interpretation (BRI) standard, it is the specification that informs the scope of the claims. Claim language in the instant proceeding must be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 38 1364 (Fed. Cir. 2004). The Office must apply the broadest reasonable meaning to the claim language, taking into account any definitions presented in the specification. Id. (citing In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)). “During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing American Academy, 367 F.3d at 1364) (emphasis added). When the claims can be amended, the specification outweighs remarks or actions made during prosecution. Patent Owner’s briefs cite no case in which prosecution history disclaimer made a difference (i.e., narrowed the claims) when BRI was required. Further, Patent Owner’s representative at the oral hearing could not identify such a case. See Oral Hearing Tr. at 38-39. In this case, Patent Owner submits that the “without any protocol conversion” feature, which is not expressly recited in the claims, is described by the '672 patent disclosure at Figures 7 through 8 and column 5, lines 3 through 11. App. Br. 4. However, we find no discussion of protocol conversion in the relied-upon material and, certainly, no disclosure that there must be no protocol conversion when accessing flash memory. In fact, the specification elsewhere suggests that the “directly accessing” language of the claims refers to firmware “directly” controlling access of flash memory (col. 4, ll. 27-30; col. 10, l. 67 - col. 11, l. 3), in much the same way that flash controller 46 of Terasaki (Fig. 4) directly controls access to the flash memory by signals sent on control signal lines C. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 39 We agree with Requester that Patent Owner’s additional arguments directed to the proposed rejections that include Terasaki are based on alleging individual deficiencies in Terasaki, rather than the applied teachings of the prior art. Resp. Br. 24. Margalit Figure 1 of Margalit is reproduced below. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 40 Figure 1 of Margalit is said to depict a USB key device with data storage capabilities. Margalit col. 2, ll. 34-36. The USB key device 10 includes a CPU 30, a USB interface device 40, firmware memory 50, RAM memory 60, and user data memory 70, which may comprise flash memory. Id. at ll. 37-56. Patent Owner’s additional arguments that are specific to the proposed rejections that include Margalit are based on an allegation that Margalit fails to incorporate-by-reference the USB 1.1 specification. App. Br. 49. We find Requester’s position to be persuasive. Resp. Br. 24-25. Further, we agree with Requester that Patent Owner has submitted arguments that are not responsive to the rejections proposed, i.e., which presume that Margalit alone must teach the claimed subject matter. Id. at 25. Secondary Considerations Patent Owner’s proffered evidence of commercial success consists of a Rule 132 declaration by Mr. Deng (“Deng Declaration II”; Ex. 14). Without any supporting evidence, the declaration alleges that Patent Owner’s flash drives that “fall within the scope of the claims” commanded, roughly, one per cent of the relevant market. Deng Decl. II, ¶¶ 3, 6, 7; Resp. Br. 28. Deng Declaration II also alleges (¶ 8) that USB flash memory drives sold by Patent Owner “and others” have achieved commercial success “because they include many beneficial features that result from the limitations that are recited in the claims of the '672 patent.” As Respondent notes (Resp. Br. 28 n.15), the “others” are not identified. In any event, we Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 41 do not credit the subjective belief of an interested party--a co-inventor and Patent Owner’s CEO--as to why purchasers might have bought USB flash drives, absent supporting evidence consistent with the allegations. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“This merely represents the inventor’s opinion as to the purchaser’s reason for buying the product, and, alone, is insufficient.”). The Declaration also alleges that the '672 patent has been licensed to other companies. Deng Decl. II, ¶ 9. However, the Declaration does not refer to any supporting evidence. Moreover, the Declaration fails to provide sufficient details of the licensing as to how it might relate to the merits of the claimed invention of the '672 patent. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983) (“Aeroquip has shown neither a nexus between the merits of the invention and the licenses of record, nor that those licenses arose out of recognition and acceptance of the patent.”). Thus, we find that the evidence of non-obviousness proffered by Patent Owner, even if it were presumed to establish commercial success, fails to show sufficient nexus between the merits of the methods claimed in the '672 patent and that commercial success. Summary/Conclusion In view of the foregoing, we find that the weight of the evidence, by a preponderance, supports the Examiner’s decision to enter and maintain each of the § 103(a) rejections proposed by Requester. Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 42 DECISION The Examiner’s decision unfavorable to the patentability of claims 1- 22 is affirmed. Requests for extensions of time in this proceeding are governed by 37 C.F.R. §§ 1.956 and 41.79(e). AFFIRMED peb Appeal 2013-004839 Reexamination Control 95/000,384 Patent US 6,829,672 B1 43 Patent Owner: Xin “Kevin” He TROUTMAN SANDERS LLP THE CHRYSLER BUILDING 405 LEXINGTON AVENUE NEW YORK, NY 10174 Third Party Requester: Brian W. Oaks BAKER BOTTS L.L.P. PATENT DEPARTMENT 98 SAN JACINTO BLVD., SUITE 1500 AUSTIN, TX 78701-4039