Ex Parte 7324833 et al

Patent Trial and Appeal Board

Jun 30, 2015

95001264 (P.T.A.B. Jun. 30, 2015)

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.
95/001,264 11/13/2009 7324833 AFF.0004B5US 6910
21906 7590 06/30/2015
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
LAROSE, COLIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/30/2015 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
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.
90/010,333 11/07/2008 7324833 AFF.0004B1US 6333
21906 7590 06/30/2015
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
LAROSE, COLIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/30/2015 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
______________

APPLE INC.,
Third Party Requester and Respondent

v.

AFFINITY LABS OF TEXAS, LLC,
Patent Owner and Appellant
______________

Appeal 2015-004281
Reexaminations 95/001,264 and 90/010,333 (merged)1
United States Patent 7,324,833 B22
Technology Center 3900
______________

Before STEPHEN C. SIU, JEREMY J. CURCURI, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

1 On June 14, 2010, three pending reexamination proceedings (90/010,333,
95/001,223, and 95/001,264) were merged into the instant reexamination.
Decision, sua sponte, To Merge Reexamination Proceedings (June 14, 2010)
2–3. Subsequently, on February 22, 2013, the 95/001,223 reexamination
was severed from the instant proceeding. Decision on Petitions (Feb. 22,
2013) 2–3.
2 This patent (hereinafter “’833 patent”) issued to Russell W. White, et al.,
on January 29, 2008, based on Application 10/947,755, filed on September
23, 2004. The ’833 patent is the second in a chain of U.S. applications
beginning with Application 09/537,812 (now Patent 7,187,947), filed on
March 28, 2000. ’833 patent 1:6–9.
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DECISION ON APPEAL3
Patent Owner appeals the Examiner’s decision to reject original
claims 1–27 and new claims 37–42, 45, and 46, added during reexamination.
PO App. Br. 10–24. Claims 28–36, 43, 44, and 47–49 are confirmed,
patentable, or objected to. RAN 1.
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315.
We affirm the Examiner’s decision that claims 1–27 and new claims
37–42, 45, and 46 are unpatentable over the prior art.

I. STATEMENT OF THE CASE
A. Related Litigation and Reexamination Appeals
We are informed by Patent Owner of the related proceedings listed in
Patent Owner’s Appeal Brief. PO App. Br. 3 and Appendix XI.
B. These Merged Reexamination Proceedings
The original ’833 patent includes claims 1–35, of which claims 1 and
17 are independent claims. Claims 37–42, 45, and 46 were added by
amendment and depend from claim 1 or claim 17.

3 Throughout this decision, we refer to: Request for Ex Parte Reexamination
(control no. 90/010,333 “Request 1”), filed November 7, 2008; Third Party
Request for Inter Partes Reexamination (control no. 95/001,264, “Request
2”) filed November 13, 2009; Action Closing Prosecution (“ACP”), mailed
November 5, 2012; Right of Appeal Notice (“RAN”), mailed September 17,
2013; Patent Owners’ Appeal Brief (“PO App. Br.”) filed, December 13,
2013; Examiner’s Answer (“Ans.”), mailed September 10, 2014; and Patent
Owner Rebuttal Brief (“PO Reb. Br.”), filed November 10, 2014.
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C. The Rejections Entered by the Examiner
Patent Owner appeals the Examiner rejecting the claims as follows
(PO App. Br. 4–5; accord Ans. 2–4; RAN 58–64):
Claims 1, 2, 6, 9, 13, 14, 16, 17, 21, 23, and 27 under § 102(a) and
§ 102(e) over Dwyer4 (Ground A).
Claims 4, 7, 10, 12, 15, 18, 19, 22, 24, and 26 under § 103(a) over
Dwyer and knowledge of a person of ordinary skill (Ground B).
Claims 3, 5, 20, and 25 under § 103(a) over Dwyer and Lee5 (Ground
C).
Claim 25 under § 103(a) over Dwyer and Rio 5006 (Ground D).
Claims 7, 12, and 24 under § 103(a) over Dwyer and Schulhof7
(Ground F).
Claims 15 and 22 under § 103(a) over Dwyer and Treyz8 (Ground H).
Claims 4 and 18 under § 103(a) over Dwyer and Naim9 (Ground I).
Claims 8, 11, and 19 under § 103(a) over Dwyer and Looney10
(Ground J).

4 Dwyer et al. U.S. 6,671,567 B1 Dec. 30, 2003 (“Dwyer”)
5 Lee et al. U.S. 6,728,531 B1 Apr. 27, 2004 (“Lee”)
6 Rio 500, Getting Started Guide for Windows® 98 and Machintosh® OS
8.6, (1999) (“Rio 500”)
7 Schulhof et al. U.S. 5,557,541 Sept. 17, 1996
(“Shulhof”)
8 Treyz et al. U.S. 6,526,335 B1 Feb. 25, 2003 (“Treyz”)
9 Naim U.S. 6,694,200 B1 Feb. 17, 2004
10 Looney et al. U.S. 6,232,539 B1 May 15, 2001
(“Looney”)
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Claims 1–6, 8–11, 13, 14, 16–21, 23, 25, and 26 under § 103(a) over
Naim and Lee (Ground K).
Claims 7, 12, and 24 under §103(a) over Naim, Lee, and knowledge
of a person of ordinary skill (Ground L).
Claims 7, 12, and 24 under §103(a) over Naim, Lee, and Schulhof
(Ground M).
Claims 15 and 22 under §103(a) over Naim, Lee, and Treyz (Ground
N).
Claim 25 under § 103(a) over Naim, Lee, and Rio 500 (Ground O).
Claims 39 and 45 under § 103(a) over Dwyer and Lee.
Claims 37–42, 45, and 46 under § 103(a) over Naim and Lee.

E. The Subject Matter Described in the ’833 Patent
The ’833 patent relates to coupling a first electronic device, such as a
portable MP3 player, and a second electronic device, such as a car audio
system, so that content from the first device is playable via the second.
Abstract.

E. The Claims on Appeal
Claim 1, which is representative of the independent claims, reads as
follows:
1. An audio system, comprising:
a portable electronic device having a display, a memory, and an
audio file player;
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a first portion of software saved at the portable electronic
device and configured to initiate a displaying of a graphical interface
item on the display, the graphical interface item comprising a name
associated with an audio file saved in the memory;
a mounting location on the portable electronic device that
includes a physical interface configured to communicatively couple
the portable electronic device to a different electronic device having
an associated display; and
an other portion of software saved at the portable electronic
device and configured to communicate a representation of the
graphical interface item to the different electronic device via the
physical interface to facilitate a displaying of the representation on the
associated display, wherein the portable electronic device is
configured to communicate interface information to the different
electronic device in order to allow a user to view at least a partial
representation of a graphical user interface that includes the graphical
interface item on the associated display, wherein the graphical user
interface comprises a plurality of preprogrammed soft buttons that are
linked to respective audio information sources.

II. ISSUES
Patent Owner’s arguments (App. Br. 10–24; PO Reb. Br. 2–5) raise
the following issues:
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1. Under 35 U.S.C. § 102, has the Examiner erred by finding that Dwyer
describes the limitation that include 1) an icon comprising a name,
and 2) preprogramed soft buttons that are linked to respective audio
information sources?
2. Under 35 U.S.C. § 103, has the Examiner erred by finding that the
claims are obvious over combinations that include Naim and Lee?
3. Does Patent Owner’s evidence of commercial success overcome the
Examiner’s prima facie case that the claims are obvious?

III. ANALYSIS
A. Rejections over Dwyer
Patent Owner argues the Examiner erred in rejecting claim 1 over
Dwyer because Dwyer does not describe “a graphical interface item [on a
display of a portable electronic device] comprising a name associated with
an audio file saved in the memory” as recited in claim 1. PO App. Br. 10–
12; PO Reb. Br. 2–3. Specifically, Patent Owner argues the Examiner erred
because there is no disclosure that a displayed icon necessarily includes a
name, or title, as part of the icon, or that a name is “always” included with
the file icon. App. Br. 10–11. Patent Owner argues essentially that the
Examiner’s inherency reasoning (RAN 6 (“Dwyer’s ‘file icons’ that are
displayed to a user are representative of audio files that are stored on
Dwyer’s portable digital recorder, and they necessarily include ‘a name
associated with the file.’”)) is erroneous because the allegedly missing
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limitation is not “necessarily” present. See In re Robertson, 169 F.3d 743
(Fed. Cir. 1999). App. Br. 10–11; PO Reb. Br. 2.
We begin by noting that the argued limitation does not require
displaying “a name associated with an audio file” but instead recites
software “configured to initiate displaying of a graphical interface item,”
which graphical interface item comprises a name. Next, we note that Dwyer
describes a touchscreen through which a user may interact with stored files.
Dwyer 4:66–5:3. Accord Request Claim Chart, Exhibit CC-A 2. Hence, we
are unpersuaded that Dwyer does not describe displaying a graphical
interface item specific to each file to thereby allow the user to interact with
the file. Moreover, because Dwyer describes (Fig. 5) “Header Data,”
including a title (i.e., name), associated with each file (5:16–18), we are
unpersuaded that Dwyer’s software is not configured to initiate displaying
the title as the graphical item. Accordingly, we are unpersuaded that Dwyer
does not describe software configured to initiate a displaying of a graphical
interface item on the display, the graphical interface item comprising a name
associated with an audio file saved in the memory.
We also are unpersuaded that Dwyer does not describe the claim 1
limitation of a graphical user interface that includes “a plurality of
preprogrammed soft buttons that are linked to respective audio information
sources,” for at least the reasons proposed by Requester and adopted by the
Examiner. Request Claim Chart, Exhibit CC-A 4–5; RAN 7–8.
We are unpersuaded that the Examiner improperly concluded that
claim 24 is obvious over Dwyer and the knowledge of one skilled in the art.
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See PO App. Br. 20–21; PO Reb. Br. 4. The Examiner found that Dwyer
discloses a USB (Universal Serial Bus) interface (Ans. 11–13 (citing Dwyer
10:61–63) and that it would have been widely known at the time of Patent
Owner’s invention that “USB interfaces are operative to couple the power
supplies of connected devices in order to distribute power.” Id. at 12. We
see no error.
In response to Patent Owner’s challenge that the Examiner had
improperly relied on “Official Notice,” the Examiner responded by citing the
Universal Serial Bus Specification (“USB Spec”), Revision 1.1 (September
23, 1998) at Chapter 7. Id. To the extent Patent Owner now argues error
because the Examiner has improperly issued a rejection based on new
grounds (PO Reb. Br.), we note that the issue is not properly before us
because whether prosecution should be reopened in view of a new ground of
rejection in an Examiner’s Answer is a matter to be decided by petition, not
appeal. See 37 C.F.R. § 1.181 or 1.182.
Patent Owner’s argument that the secondary references cited with
Dwyer against other claims fail to overcome the deficiencies of Dwyer (PO
App. Br. 12) are unavailing because we are not persuaded of deficiencies
with respect to Dwyer.
Patent Owner otherwise does not argue with particularity the
remaining rejections that include Dwyer. Accordingly, based on the record
before us, we are unpersuaded of error in the Examiner’s decision to reject
claims 1–27 and new claims 39 and 45 as anticipated by Dwyer and/or
obvious over combinations that include Dwyer.
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B. Rejections over combinations that include Naim and/or Lee
Patent Owner argues that, because the subject matter of Naim and Lee
was considered during original prosecution, no substantial new question of
patentability is raised by the obvious rejections over Naim and Lee. PO
App. Br. 13–16. For at least the reasons stated by the Examiner (Ans. 7–8),
we disagree. We note specifically the Examiner’s finding that “there is no
indication in the prosecution history of the ’833 patent suggesting that the
examiner ever considered the combination of Naim and Steele [which is
nearly identical to Lee] as a basis of unpatentability.” Id. at 7
Regarding the claim 1 limitation “a mounting location on the portable
electronic device that includes a physical interface configured to
communicatively couple the portable electronic device to a different
electronic device having an associated display,” Patent Owner argues that
Naim’s and Lee’s respective teachings of wireless interfaces negates their
applicability to the claimed “physical interface.” PO App. Br. 16–17. See
also PO Reb. Br. 3–4. We disagree. Instead, we agree with the Examiner
that the claim does not preclude a wireless interface formed by physical
components having a mounting location on the portable device. See Ans. 8–
9. In other words, without regard to whether the claimed communicative
coupling is wired or wireless, physical hardware is required (e.g., a cable
plug or a radio). The location on the device where the physical hardware is
mounted, whether referring to Naim or Lee, maps to the claimed “mounting
location.” Hence, the mounting location “includes a physical interface
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configured to communicatively couple the portable electronic device to a
different electronic device having an associated display.” We are, therefore,
unpersuaded of error for at least the reasons stated by the Examiner. Id.
Patent Owner argues error because neither Naim nor Lee discloses a
portable device sending a graphical representation comprising a name to a
different device, as required by claim 1. PO App. Br. 17–20; PO Reb. Br. 4.
For at least the reasons stated by the Examiner (Ans. 9–11) we are
unpersuaded of error.
Patent Owner’s argument that the secondary references fail to
overcome the deficiencies of Naim (PO App. Br. 21) are unavailing because
we are not persuaded of deficiencies with respect to Naim.
We also disagree with Patent Owner that the Examiner erred by
failing to consider Patent Owner’s evidence of non-obviousness. PO App.
Br. 22–24. It is clear that the Examiner considered the evidence but found it
unpersuasive. See, e.g., Ans. 13–14. For at least the reasons stated by the
Examiner (id.), Patent Owner has not persuaded us that the Examiner’s
decision, that the evidence of non-obviousness failed to overcome the
obviousness rejection, was erroneous.
Patent Owner does not argue separately with particularity the
remaining rejections that include Naim and/or Lee. Accordingly, based on
the record before us, we are unpersuaded of error in the Examiner’s decision
to reject claims 1–27 and new claims 37–42, 45, and 46 as obvious over
combinations that include Naim and/or Lee.

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VII. DECISION
The Examiner’s decision that claims 1–27 and new claims 37–42, 45,
and 46 are unpatentable over the prior art is affirmed.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

Appeal 2015-004281
Patent 7,324,833 B2
Merged Reexaminations 95/001,264 and 90/010,333

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For Patent Owner:

TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631

For Third Party Requesters:

KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET, FOURTEENTH FLOOR
IRVINE, CA 92614

NOVAK DRUCE & QUIGG, LLP
(NDQ REEXAMINATION GROUP)
1000 LOUISIANA STREET, 53rd FLOOR
HOUSTON, TX 77002