Ex Parte 7187948 et al

Patent Trial and Appeal Board

Feb 19, 2013

95001305 (P.T.A.B. Feb. 19, 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.
95/001,305 02/02/2010 7187948 21716-0013RX1 4686
22913 7590 02/21/2013
Workman Nydegger
1000 Eagle Gate Tower
60 East South Temple
Salt Lake City, UT 84111
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/21/2013 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
____________

CSR PLC
Requester and Appellant

v.

SKULLCANDY, INC.
Patent Owner and Respondent
____________

Appeal 2013-000114
Reexamination Control 95/001,305
Patent 7,187,948 B2
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, ROBERT E. NAPPI, and
STEPHEN C. SIU Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2013-000114
Reexamination Control 95/001,305
Patent 7,187,948 B2

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Third Party Requester/Appellant CSR plc appeals under 35 U.S.C.
§§ 134(c) and 315(b) the Examiner’s decision not to reject claims 1-6. We
have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b).

STATEMENT OF THE CASE
This proceeding arose from a request by CSR plc for an inter partes
reexamination of U.S. Patent 7,187,948 B2, titled “Personal Portable
Integrator for Music Player and Mobile Phone,” and issued to Richard P.
Alden on July 1, 2008 (the ‘948 patent). We heard oral arguments on
January 23, 2013.
The ‘948 patent describes integration of services provided by a
personal music player and a mobile phone (col. 1, ll. 20-23).

Claim 1 reads as follows:

1. A portable and wireless apparatus for wirelessly integrating a two-
way communication device and an audio delivery device, wherein the
portable and wireless apparatus is configured in size and shape to be
portably carried in either a hand of a user or an article of clothing during use
of the portable and wireless apparatus, the portable and wireless apparatus
comprising:
means for wirelessly receiving a first audio signal from a substantially
arbitrarily selectable audio delivery device;
means for wirelessly receiving a second audio signal from a
substantially arbitrarily selectable two-way communication device;
a coupling device independent from the audio and two-way
communication devices, wherein the second audio signal is characterized by
a threshold value, the second audio signal is accorded priority relative to the
first audio signal, and the second audio signal interrupts the first audio signal
upon reaching the threshold value, the coupling device comprising said
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means for receiving said first and second audio signals, said coupling means
further comprising:
means for transmitting a third audio signal comprising at least one of
the first or second audio signals to an acoustic device adapted to convert the
third acoustic wave to an audio range corresponding to a hearing range of a
user.

Appellant appeals the Examiner’s refusal to adopt the following
proposed rejections:
1) claims 1 and 4 under 35 U.S.C. §§ 102(a) and 102(b) as anticipated
by GB 2357663A (“Smith”);
2) claims 2, 3, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over
Smith and U.S. Patent No. 6,006,115 (“Wingate”); and
3) claims 4-6 under 35 U.S.C. § 112, first paragraph as failing the
written description requirement.
ISSUE

Did the Examiner err in refusing to reject claims 1-6?

PRINCIPLES OF LAW

Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to the
artisan that, as of the filing date of the application, the inventor had
possession of the later claimed subject matter. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
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Patent 7,187,948 B2

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claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Claims 4-6
Appellant argues that newly added claims 4-6 recite a coupling device
that is “portable with the audio and two-way communication devices by
the same user during use of the coupling device” but that such a limitation
“was not previously contained in the ‘948 patent” (App. Br. 25).
Respondent argues that the Specification discloses this claimed feature. We
agree with Respondent.
As Respondent points out, the Specification discloses an “audio
device”1 and a “two-way communication device”2 in communication with a
“coupling device”3 that can “route the signals . . to an acoustic device, such

1 E.g., element 16, Fig. 2 or Fig. 8.
2 E.g., element 18, Fig. 2 or Fig. 8.
3 E.g., element 28, Fig. 2 or element 28a (and element 28b), Fig. 8.
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as headphones.”4 The audio device and two-way communication device are
both “portable” devices5 and both communicate6 with the coupling device
using “wireless technology such as Bluetooth”7. In other words, the
Specification discloses the disputed claim features of a portable audio device
and a portable two-way communication device communicating wirelessly
with a coupling device, the audio and two-way communication device being
used by a user during use of the coupling device.
One of skill in the art would have also understood that a “portable”
device is “portable” with a user during use since one of skill in the art would
have understood that a “portable” device does not cease being portable when
being used and that the coupling device transmitting signals to one acoustic
device (e.g., headphones) as illustrated in Figs. 2 and 8 would be used by a
“same user.”
Appellant argues that the Specification fails to disclose the disputed
claim features because “Figs. 1 and 2 have nothing to do with the wireless
embodiment” (App. Br. 26). However, as described above, the Specification
explicitly discloses that both the audio device and the two-way
communication device communicate with the coupling device via “wireless
technology.” Appellant has not explained how devices communicating
wirelessly “have nothing to do with” a wireless embodiment.

4 E.g., col. 3, ll. 66-67; see also, Figs. 2 and 8.
5 E.g., col. 3, l. 35 – a “mobile phone 18” and col. 3, ll. 36-37 – “a portable
MP3 player or CD player.”
6 E.g., col. 3, ll. 47-51: “the connector 12 may . . . receive an audio signal . . .
from the audio device 16 . . . [and] may receive an audio signal 15 from the
communication device 18”
7 E.g., col. 3, ll. 56-57.
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Appellant also argues that claim 4 fails to provide a “further limitation
on the coupling device” (App. Br. 29). Claim 4 recites a coupling device
that not only receives the first and second audio signal but also is “portable
with the audio and two-way communication devices by the same user during
use of the coupling device.” As described above, the written description
requirement requires that the disclosure of the application relied upon must
reasonably convey to the artisan that the inventor had possession of the later
claimed subject matter. Vas-Cath Inc., 935 F.2d at 1563. Appellant has not
demonstrated that the written description requirement also requires that an
independent claim provide a “further limitation on the coupling device.”
In any event, even assuming that the written description requirement
required that claim 4 (an independent claim) provide a “further limitation on
the coupling device,” as Appellant appears to contend, we disagree with
Appellant’s contention that claim 4 fails to provide a “further limitation on
the coupling device” for at least the reasons set forth by the Examiner (RAN
9). For example, claim 4 recites the feature of being “portable with the
audio and two-way communication devices by the same user during use of
the coupling device,” which Appellant has not demonstrated to be recited in
other claims.
The Examiner did not err in refusing to adopt the proposed rejection
of claims 4-6 under 35 U.S.C. § 112, first paragraph as failing the written
description requirement.

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Claims 1-6
Respondent argues that Smith fails to disclose that “the second audio
signal interrupts the first audio signal upon reaching the threshold value”
(Resp. Br. 9). Claim 1 recites a means for receiving a first audio signal and
a means for receiving a second audio signal and that the second audio signal
is characterized by a threshold value and interrupts the first audio signal
upon reaching the threshold value. We agree with Respondent.
Smith discloses that “a user . . . could also receive incoming telephone
calls from a phone . . . [the calls being] directed to the user’s portable
wireless communication adapter or module and alter the user to the
incoming call . . . [such that] the other signal (music in this example) would
be stopped so the user and the person on the other end of the phone would
not hear the music” (p. 8, ll. 1-10). In other words, Smith discloses a user
receiving a phone call while listening to an audio signal (i.e., music) via an
adapter, the adapter stopping the music in response to receiving the phone
call. While Smith discloses stopping an audio signal responsive to receiving
a phone call, Appellant does not demonstrate that Smith also discloses the
signal from the phone call “reaching the threshold value.” In fact, Smith
does not appear to disclose a “threshold value” at all.
Appellant does not adequately argue or demonstrate that Wingate
provides this claim feature.
The Examiner did not err in refusing to adopt the proposed rejections
of claims 1 and 4 under 35 U.S.C. §§ 102(a) and 102(b) as anticipated by
Smith or claims 2, 3, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over
Smith and Wingate.
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CONCLUSION
The Examiner did not err in refusing to reject claims 1-6.
DECISION
We affirm the Examiner’s decision not to adopt the rejections of
claims 1 and 4 under 35 U.S.C. §§ 102(a) and 102(b) as anticipated by
Smith; claims 2, 3, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over
Smith and Wingate; and claims 4-6 under 35 U.S.C. § 112, first paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cu

Appeal 2013-000114
Reexamination Control 95/001,305
Patent 7,187,948 B2

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Patent Owner:

WORKMAN NYDEGGER
1000 EAGLE GATE TOWER
60 EAST SOUTH TEMPLE
SALT LAKE CITY, UT 84111

Third Party Requester:

FISH & RICHARDSON PC
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022