Ex Parte 7395090 et al

Patent Trial and Appeal Board

Feb 19, 2013

95001369 (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.
95/001,369 06/03/2010 7395090 21716-0013RX2 5862
22913 7590 02/20/2013
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
02/20/2013 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 2012-012690
Reexamination Control 95/001,369
Patent 7,395,090 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
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Patent 7,395,090 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 1-74. 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 7,395,090 B2, titled “Personal Portable
Integrator for Music Player and Mobile Phone,” and issued to Richard P.
Alden on July 1, 2008 (the ‘090 patent). We heard oral arguments on
January 23, 2013.
The ‘090 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 apparatus for integrating a two-way communication
device and an audio delivery device, wherein the portable 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 apparatus, the apparatus
comprising:
a first electrical connector configured to receive a first audio signal
from a substantially arbitrarily selectable audio delivery device;
a second electrical connector configured to receive 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, the coupling device connected to receive the first
and second audio signals, and to transmit a third audio signal comprising at
least one of the first or second audio signals; and
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an acoustic device adapted to convert the third audio signal to an
acoustic wave having an audio range corresponding to a hearing range of a
user;
wherein:
the coupling device comprises at least two physically separate
devices; and
the at least two physically separate devices comprise means for
enabling wireless communication between the at least two physically
separate devices.

Appellant appeals the Examiner’s refusal to adopt the proposed
rejections of claims 1, 2, 4, 5, 7-10, 17, 18, 20, 22, 24, 25, 27, 29, 31-33, 35,
59-66, and 71-74 under 35 U.S.C. §§ 102(a) and 102(b) as anticipated by
GB 2357663A (“Smith”); claim 23 under 35 U.S.C. § 103(a) as unpatentable
over Smith; claims 6, 11-14, 21, 26, 28, 34, 36-38, 40-46, and 49-58 under
35 U.S.C. § 103(a) as unpatentable over Smith and U.S. Patent No.
6,006,115 (“Wingate”); claims 15 and 47 under 35 U.S.C. § 103(a) as
unpatentable over Smith, Wingate, and GB 2296157A (“TCC”); claims 16,
30, and 48 under 35 U.S.C. § 103(a) as unpatentable over Smith, Wingate,
and U.S. Patent No. 4,882,745 (“Silver”); claim 19 under 35 U.S.C. § 103(a)
as unpatentable over Smith and EP 1068997 A2 (“Ford”); claim 3 under 35
U.S.C. § 103(a) as unpatentable over Smith and WO 00/70779 (“Lee”);
claim 39 under 35 U.S.C. § 103(a) as unpatentable over Smith, Wingate, and
Lee; claims 59-70 under 35 U.S.C. § 102(b) as anticipated by Wingate;
claims 59-66 and 71-74 under 35 U.S.C. § 102(b) as anticipated by U.S.
Patent No. 6,873,862 B2 (“Reshefsky”); claims 67-70 under 35 U.S.C.
§ 103(a) as unpatentable over Ban and one of Smith, Wingate, or Reshefsky;
claims 59-74 under 35 U.S.C. § 103(a) as unpatentable over one of Smith,
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Wingate, and/or Reshefsky and one of U.S. Patent No. 6,985,592 B1
(“Ban”), EP 1176783 A2 (“Samsung”) and/or D.M. Bakker and Diane
McMichael Gilster, “Bluetooth End to End,” M&T Books, 2002 (“Bakker”);
and claims 59-74 under 35 U.S.C. § 112, first paragraph as lacking written
description support in the original specification.

ISSUE

Did the Examiner err in refusing to reject claims 1-74?

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
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).
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“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 59-74
Requester argues that the Specification fails to disclose the coupling
device being “portable with the audio and two-way communication
devices by the same user during use of the coupling device” (App. Br.
33). Claim 59, for example, recites the coupling device is portable with the
audio delivery device and the two-way communication device by the same
user during use of the coupling device. However, we agree with the
Examiner that the Specification discloses this claimed feature for at least the
reasons set forth by the Examiner (RAN 18-19).
For example, 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 as
headphones.”4 The audio device and two-way communication device are
both “portable” devices5 and both communicate6 with the coupling device

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. 1 or element 28a (and element 28b), Fig. 8.
4 E.g., col. 4, ll. 1-2; see also, Figs. 2 and 8.
5 E.g., col. 3, l. 37 – a “mobile phone 18” and col. 3, ll. 38-39 – “a portable
MP3 player or CD player.”
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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.”
Requester also argues that claims 59, 60, and 62 (and, presumably,
claims 61 and 63-74) each recites only features that “cannot properly be
accorded patentable weight” (p. 38). It is unclear what statutory ground of
rejection Requester proposes for claims 59, 60 and 62 (and, presumably
claims 61 and 63-74) since Requester has not stated a specific statutory
ground of rejection associated with these arguments.
Since Requester provides these arguments immediately following
arguments pertaining to the proposed rejection under 35 U.S.C. § 112, first
paragraph as lacking written description, one possibility is that Requester
proposes claims 59, 60, and 62 (and claims 61 and 63-74) should be rejected
as unpatentable under 35 U.S.C. § 112, first paragraph as lacking written

6 E.g., col. 3, ll. 49-53: “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. 58-59.
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description because claims 59, 60, and 62 allegedly fail to recite features that
can be accorded patentable weight. However, even assuming that claims 59,
60, and 62 recite features that cannot be accorded patentable weight,
Requester has not demonstrated that reciting features that cannot be
accorded patentable weight would indicate a lack of written description in
the Specification under 35 U.S.C. § 112, first paragraph.
Even assuming that a claim that recites features not accorded
patentable weight would indicate that the claim lacks written description (or
should be rejected under some other unspecified ground), we do not agree
with Requester that claims 59, 60, and 62 recite only features that cannot be
accorded patentable weight for at least the reasons set forth by the Examiner
(see, e.g., RAN 19) and Patent Owner (see, e.g., Resp. Br. 14-15). For
example, claim 59, which depends from claim 1, for example, recites the
coupling device is portable with the audio delivery device and the two-way
communication device by the same user during use of the coupling device.
Even assuming Requester’s statement to be true that “the audio delivery and
communication devices simply are not part of that [claimed] apparatus” (p.
36), we note that claim 59 recites specific features of the “coupling device”
(i.e., being portable by the same user during use) as opposed to features only
associated with either the “audio delivery device” or the “communication
device.” Claims 60 and 62 recite similar features as claim 59.
Claims 61 and 63-74 each recite additional features that Requester
does not demonstrate or assert lack written description in the Specification
and/or are all features that “cannot be accorded patentable weight.”

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Claim 1
The Examiner does not adopt the proposed rejection of claim 1 as
anticipated by Smith (Right of Appeal Notice (“RAN”) 14-15). Claim 1
recites a coupling device that comprises at least two physically separate
devices that comprise means for enabling wireless communication between
the physically separate devices and audio and two-way communication
devices that are independent from the coupling device.
Smith discloses a “portable version” (p. 8, l. 1) of a “wireless
communication adapter or module 2” (p. 6, l. 7; Figs 4-6) that contains a
“connector 1c” (p. 6, l. 16; Fig. 4) through which the adapter or module “can
be connected to a set of legacy headphones” (p. 7, ll. 21-22; Figs 4-5), can
“receive incoming telephone calls from a [mobile] phone” (p. 8, ll. 3-4), and
can connect to “several legacy units” (p. 8, ll. 18; Fig. 6) through “several
connectors 1c” (p. 8, l. 17; Fig. 4), the “several legacy units” including, for
example, a “portable compact disc player 6a, or portable mini disc player 6b,
or portable DVD player . . .” (p. 8, ll. 27-28; Fig. 6).
Smith also discloses that the wireless communication adapter or
module 2 “can also interface to [a] home hi-fidelity unit 6d or 6e” (p. 8, ll.
32-33; Fig. 6) wirelessly (see, e.g., p. 7, ll. 25-26 – “legacy equipment 6d
with a wireless communication adapter or module 2c attached so it could
communicate and transfer the signals to the user wireless communication
adapter or module”; Fig. 6).
In other words, Smith discloses a portable adapter/module that
receives signals from “several legacy units” (e.g., audio delivery devices
such as a compact disc player and/or a two-way communication device such
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as a mobile phone) and communicates a signal wirelessly with a remote
module, or portion of the adapter/module (i.e., a communication adapter or
module 2c attached to legacy equipment 6d). We agree with the Requester
that Smith discloses the features recited in claim 1.
The Examiner states that “the coupling device [in Smith] would not be
‘independent’ from the audio and two-way (mobile telephone) devices
themselves, as required by the claims” (RAN 14). Claim 1 recites that the
“coupling device” is “independent from the audio and two-way
communication devices.” The Examiner presumably equates the portable
compact disc player of Smith, for example, with the “audio delivery device”
recited in claim 1 and the mobile telephone of Smith with the “two-way
communication device” recited in claim 1. Even assuming the Examiner’s
assumptions to be correct, while the mobile telephone and compact disc
player of Smith may be connected to the adapter, the Examiner has not
demonstrated that the phone and compact disc player are dependent on the
adapter. For example, one of skill in the art would have understood that
both the phone and the compact disc player of Smith would be individually
fully operational (i.e., the compact disc player would still be able to play
compact discs and the phone would still be able to enable two-way
communication for a user) whether the adapter of Smith was connected or
not. We therefore do not agree with the Examiner that the phone and
compact disc player of Smith are dependent (i.e., not independent) on the
adapter.
Patent Owner argues that Smith fails to disclose an apparatus that is
“portable” (Appeal Brief for Respondent-Patentee, filed March 6, 2012
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(“Resp. Br.”), p. 10). We disagree with Patent Owner at least because Smith
explicitly discloses the adapter/module to be “portable” – e.g., Smith
discloses a “portable version” (p. 8, l. 1) of a “wireless communication
adapter or module 2” (p. 6, l. 7; Figs 4-6).
While Patent Owner argues that Smith discloses the “home hi-fidelity
unit” as being “non portable” (Resp. Br. 10, citing Smith, p. 7, ¶ 4; p. 8, ¶ 2;
and p. 3, ¶ 7), Patent Owner does not indicate an explicit definition of the
term “portable” in the Specification. Utilizing a plain and customary
definition, one of ordinary skill in the art would have understood the term
“portable” to indicate that the component was capable of being transported.
Since the hi-fidelity unit of Smith is a “home” hi-fidelity unit, the hi-fidelity
unit must have been transported into the home. As such the hi-fidelity unit
of Smith is capable of being transported and it therefore “portable.”
Even assuming the “hi-fidelity unit” of Smith is not “portable” as
Patent Owner asserts, Patent Owner has not sufficiently demonstrated that
the adapter/module of Smith is also not portable (note that claim 1 recites a
“portable apparatus” but does not require a “portable hi-fidelity unit”). In
fact, as described above, Smith explicitly discloses that the adapter/module
is portable.
Patent Owner also argues that Smith fails to disclose “a substantially
arbitrarily selectable two-way communication device” because the adapter is
not disclosed by Smith as being ‘capable of working with any one of a
number of phones” or permitting “the user to arbitrarily select between . . .
phones” (Resp. Br. 10). We disagree with Patent Owner.
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Smith discloses that the adapter/module contains a “connector 1c”
(see, e.g., p. 6, l. 16) that may “be changed to that required to interface to the
desired legacy equipment” (p. 6, ll. 20-21). Hence, the adapter/module may
be changed to accommodate any type of equipment or device to
communicate with the equipment or device (by, for example, modifying the
connector 1c to a corresponding device). Smith does not disclose any
specific limitations in modifying the interface to accommodate different
devices or which devices may communicate with the adapter/module – e.g.,
any “desired” legacy equipment may interface with the adapter/module, as
described above.
Patent Owner does not provide additional arguments in support of
claims 3, 4, 6, 7-11, 14-21, and 23, or arguments with respect to Wingate,
Lee, TCC, Silver, or Ford.

Claim 25
The Examiner does not adopt the proposed rejection of claim 25 as
anticipated by Smith. The Examiner states that Smith fails to disclose that
the portable apparatus communicates at least two of the first, second, and
third audio signals wirelessly because “the hi-fidelity amplifier must read
upon the claimed audio delivery device” but the “hi-fidelity amplifier” of
Smith is “non-portable” (RAN 17). Patent Owner concurs with the
Examiner (Resp. Br. 11-12).
We disagree with the Examiner and Patent Owner’s contention that
Smith fails to disclose a “portable” device for reasons already discussed.
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Patent Owner argues that Smith fails to disclose a “substantially
arbitrarily selectable” device (Resp. Br. 12). We disagree with Patent
Owner for at least the reasons previously discussed.
Patent Owner argues that “there is no disclosure [in Smith] that the
adapter/module 2a receives the alleged ‘second signal’ from a telephone
wirelessly” (Resp. Br. 12). As described above, Smith discloses an
adapter/module (e.g., Fig. 4) in communication connected with legacy
equipment (e.g., headphones (Fig. 5), compact disc player, mini disc player,
etc.), a mobile telephone, and/or a hi-fidelity amplifier (e.g., component 6d
or 6e in Fig. 6). Smith also discloses that the devices “communicate as a
group” via “Bluetooth [that] allows a so called piconet to have . . . units
communicating with each other” (p. 7, last paragraph). One of ordinary skill
in the art would have understood that devices that communicate in a piconet
via Bluetooth would be communicating “wirelessly” since one of ordinary
skill in the art would have understood “Bluetooth” to be a brand name for a
type of wireless network technology and because Smith confirms that
Bluetooth is, in fact, a wireless standard explicitly disclosing “wireless
standards, such as Bluetooth . . .” (p. 2, l. 8).
Patent Owner does not provide additional arguments in support of
claims 26, 28, 30, 32, or 35, which depend from claim 25, or arguments with
respect to Wingate or Silver.

Claims 36-58, 62, 66, and 70
The Examiner does not adopt the proposed rejection of claims 36-38,
40-46, and 49-58 as obvious over the combination of Smith and Wingate;
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claim 39 as obvious over the combination of Smith, Wingate, and Lee; claim
47 as obvious over the combination of smith, Wingate, and TCC; claim 48
as obvious over the combination of Smith Wingate, and Silver; claims 62
and 66 as anticipated by Smith; or claim 70 as obvious over the combination
of Smith, Wingate, Reshefsky, and Ban.
Patent Owner argues that the combination of Smith and Wingate fails
to disclose or suggest “a substantially arbitrarily selectable two-way
communication device” and does not disclose or suggest that
“adapter/module 2a receives a signal from the phone ‘wirelessly’” (Resp. Br.
13). We are not persuaded by Patent Owner’s arguments for at least the
reasons stated above.

Claims 59-74
The Examiner does not adopt the proposed rejection of claims 59-66
as anticipated by Smith or the proposed rejection of claims 67-64 as obvious
over at least one of Smith, Wingate, and/or Reshefsky in combination with
at least one of Ban, Samsung, and Bakker.
Patent Owner argues that Smith fails to disclose “a portable audio
delivery device” (Resp. Br. 13) because Smith discloses “home hi-fidelity
unit[s]” that “are ‘non portable’” (id.) and the phone embodiment of Smith
“is also part of a ‘non portable’ system” (id. at 14). We disagree with Patent
Owner. As stated above, Smith discloses a portable adapter/module that
receives signals from “several legacy units” (e.g., audio delivery devices
such as a compact disc player and/or a two-way communication device such
as a mobile phone). Smith discloses that the compact disc player, for
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example, is a “portable compact disc player.” One of ordinary skill in the art
would have understood a “portable compact disc player,” for example, to be
“portable” since the compact disc player is explicitly disclosed as being
“portable.” In addition, one of ordinary skill in the art would have
understood that a compact disc player delivers audio signals to a user and is
therefore an “audio delivery device.”
Patent Owner also argues that Smith fails to disclose that “the
coupling device [is] ‘portable with the audio and two-way communication
devices by the same user during use of the coupling device’” (Resp. Br. 14).
However, since Smith discloses that the audio delivery device is portable
(e.g., a “portable compact disc player” or “portable mini disc player” or
“portable radio receiver”) and the adapter module in communication with
the portable audio delivery device is also portable (e.g., a “portable version”
(p. 8, l. 1) of a “wireless communication adapter or module 2” (p. 6, l. 7;
Figs 4-6)), one of ordinary skill in the art would have understood that the
different portable devices in communication with each other would be
portable by the same user during use. Patent Owner does not sufficiently
demonstrate or assert that two portable devices would each somehow
become non-portable when used at the same time.

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Claims 2, 33, 34, 38, and 63-66
The Examiner does not adopt the proposed rejection of claims 2, 33,
and 63-66 as anticipated by Smith and claims 34 and 38 as obvious over the
combination of Smith and Wingate.
Patent Owner argues that Smith discloses ‘automatically switching
between signals” but fails to disclose “switching between the first and
second audio signals, so that a user has the ability to choose the signal”
(Resp. Br. 15). Claims 2, 38, 63, and 66 recite “a first switch . . . to
selectively switch between the first and second audio signals” and claims 33,
34, 64, and 65 recite “selectively switching between the first and second
audio signals.” We note that none of claims 2, 33, 34, 38, and 63-66 recite
“a user has the ability to choose the signal.” We are therefore not persuaded
by Patent Owner’s argument that Smith fails to disclose this feature.

Claim 5
The Examiner does not adopt the proposed rejection of claim 5 as
anticipated by Smith. Patent Owner argues that Smith fails to disclose the
features of claim 5 (Resp. Br. 15). Appellant does not appear to address the
features recited in claim 5.
Claim 5 recites that the first or second electrical connector is
physically detached from the coupling device and wirelessly communicates
with the coupling device.
As Requester points out and as described above, Smith discloses a
“wireless communication adapter or module 2” (p. 6, l. 7; Figs 4-6) that
contains a “connector 1c” (p. 6, l. 16; Fig. 4) through which the adapter or
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module connects with devices. Appellant does not demonstrate that Smith
discloses that the “connector 1c,” for example, is “physically detached from
the coupling device and wirelessly communicates with the coupling device”
as required by claim 5. Instead, “connector 1c” of Smith appears to be
connected to (and not detached from) the adapter or module.

Claims 22 and 24
The Examiner does not adopt the proposed rejection of claims 22 and
24 as anticipated by Smith.
Patent Owner argues that Smith discloses that “‘home hi-fidelity
unit[s]’ . . . are ‘non portable’” but fails to disclose “that the audio delivery
device or the telephone [or the “home hi-fidelity unit”]. . . are also integrated
into the belt during use” (Resp. Br. 16). As described above, Smith discloses
a “portable version” of an adapter/module (e.g., Figs. 4-6) that connects to
various “desired” legacy devices (including a portable compact disc player,
for example – Fig. 6) and a mobile telephone. Since, according to Smith, the
“portable version” of the adapter/module is carried “within an article of
clothing” (see, e.g., Fig. 5 that illustrates the adapter/module being carried
on a user’s belt, the belt being an article of clothing), one of ordinary skill in
the art would have understood that a “portable compact disc player,” for
example, is also carried within an article of clothing, the compact disc player
being portable. Also, one of skill in the art would have understood that a
“mobile telephone” (being “portable”) is also carried in an “article of
clothing” of a user.

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Claim 27
The Examiner does not adopt the proposed rejection of claim 27 as
anticipated by Smith.
Patent Owner argues that Smith fails to disclose “selectively
controlling the volume of at least one of the first or second audio signals”
(Resp. Br. 16). Smith discloses that the adapter/module has “an integrated
keypad 2r to allow the user to transmit control message[s] . . . to control
certain functions” of connected devices (p. 7, ll. 31-33). One of ordinary
skill in the art would have understood that a portable compact disc, for
example, has a volume control feature. Since the adapter/module allows a
user to control connected devices, such as the portable compact disc, one of
ordinary skill in the art would have understood that the adapter/module (with
control keypad) controls the volume of audio received from the portable
compact disc player, the volume being a known controllable feature of the
compact disc player.

Claims 29, 31, and 71-74
The Examiner does not adopt the proposed rejection of claims 29, 31,
and 71-74 as anticipated by Smith.
Patent Owner argues that Smith fails to disclose “swapping an ‘audio
delivery device’ for another ‘audio delivery device’ or a ‘two-way
communication device’ for another ‘two-way communication device’”
(Resp. Br. 16). As described above, Smith discloses a “connector 1c” (see,
e.g., p. 6, l. 16) that may “be changed to that required to interface to the
desired legacy equipment” (p. 6, ll. 20-21). In other words, Smith discloses
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changing devices connected to the adapter/module. Patent Owner does not
point out sufficient differences between Smith and the disputed claim
feature.

Claims 12, 13, 37, 44, and 67-70
The Examiner does not adopt the proposed rejection of claims 12, 13,
37, and 44 as obvious over the combination of Smith and Wingate or the
proposed rejection of claims 67-70 as obvious over the combination of
Smith, Wingate, Reshefsky, Ban, Samsung, Bakker.
Patent Owner argues that Wingate discloses “mixing the audio alert
[with or] without a decrease in programming volume” but fails to disclose
“being able to adjust between them . . . [or the ability “to choose one of
them]” (Resp. Br. 17). Claim 12, for example, recites “selectably adjusting
and controlling a mixing weight of the first or second audio signals.” We
agree with Appellant that the combination of Smith and Wingate discloses or
suggests this feature. For example, as pointed out by Appellant, Wingate
discloses receiving “an incoming phone call on the audio programming
being played” and “decreasing the volume of the programming” in response
(col. 4, ll. 34-36). Patent Owner does not sufficiently demonstrate a
difference between adjusting the volume of audio programming being
played with respect to an incoming phone call of Wingate and adjusting a
“mixing weight” of two audio signals since in both cases, the relative weight
of two signals is being adjusted.

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Other Proposed Rejections
Reversing the Examiner’s decision not to reject the above-referenced
claims and applying rejections based upon the Smith reference renders it
unnecessary to reach the propriety of the Examiner’s decision not to reject
those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338
(Fed. Cir. 2009). As such, we need not reach the propriety of the rejection
of claims 59-70 under 35 U.S.C. § 102(b) as anticipated by Wingate; claims
59-66 and 71-74 under 35 U.S.C. § 102(b) as anticipated by Reshefsky;
claims 67-70 under 35 U.S.C. § 103(a) as unpatentable over Smith, Wingate,
and Reshefsky and Ban; claims 59-66 and 71-74 under 35 U.S.C. § 103(a) as
unpatentable over one of Smith, Wingate, Reshefsky, Ban, Samsung, and
Bakker.

CONCLUSION
The Examiner erred in refusing to reject claims 1-4 and 6-74 but did
not err in refusing to reject claim 5.
DECISION
We affirm the Examiner’s decision not to adopt the rejection of claim
5 as anticipated by Smith and the Examiner’s decision not to adopt the
rejection of claims 59-74 under 35 U.S.C. § 112, first paragraph as lacking
written description support in the Specification.
We reverse the Examiner’s decision not to adopt the following
proposed rejections, each of which is denominated as a new ground of
rejection pursuant to our authority under 37 C.F.R. § 41.77(b):
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1) claims 1, 2, 4, 5, 7-10, 17, 18, 20, 22, 24, 25, 27, 29, 31-33, 35, 59-
66, and 71-74 under 35 U.S.C. §§ 102(a) and 102(b) as anticipated
by Smith;
2) claim 23 under 35 U.S.C. § 103(a) as unpatentable over Smith;
claims 6, 11-14, 21, 26, 28, 34, 36-38, 40-46, and 49-58 under 35
U.S.C. § 103(a) as unpatentable over Smith and Wingate;
3) claims 15 and 47 under 35 U.S.C. § 103(a) as unpatentable over
Smith, Wingate, TCC;
4) claims 16, 30, and 48 under 35 U.S.C. § 103(a) as unpatentable
over Smith, Wingate, and Silver;
5) claim 19 under 35 U.S.C. § 103(a) as unpatentable over Smith and
Ford;
6) claim 3 under 35 U.S.C. § 103(a) as unpatentable over Smith and
Lee;
7) claim 39 under 35 U.S.C. § 103(a) as unpatentable over Smith,
Wingate, and Lee; and
8) claims 67-70 under 35 U.S.C. § 103(a) as unpatentable over Smith,
Wingate, Reshefsky, Ban, Samsung, Bakker.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
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21
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
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be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).
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-IN-PART
37 C.F.R. § 41.77(b)

cu
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Patent Owner:

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

Third Party Requester:

GILBERT H. HENNESSEY
FISH & RICHARDSON P.C.
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022