Ex Parte 7395090 et al

Patent Trials and Appeals Board

Feb 19, 2013

95001369 - (R) (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 08/06/2013
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/06/2013 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

v.

SKULLCANDY, INC.
Patent Owner
____________________

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 REQUEST FOR REHEARING
Patent Owner submits a request for rehearing under
37 C.F.R. §§ 41.77(b)(2) and 41.79(b) (dated March 20, 2013) and
Requester submits a request for rehearing (dated April 22, 2013) from the
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Opinion of the Board of Patent Trial and Appeal Board, dated
February 20, 2013 (“Decision”).
In the Decision, the Board affirmed the Examiner’s refusal to adopt
the proposed rejection of claim 5
1
as anticipated by Smith but reversed the
Examiner’s refusal to adopt the proposed rejection of claims 1-4 and 6-74
2

over other grounds (see Decision 19-20).
A “request for rehearing must state with particularity the points
believed to have been misapprehend or overlooked in rendering the Board’s
opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1).

Requester’s Request for Rehearing
With respect to claim 5, Requester argues that Smith discloses a
connector that is physically detached from the coupling device (3PR Req.
Reh’g. 2-6). In particular, Requester adapts illustrations from the Smith
reference showing a connector that is physically detached from a cell phone
(3PR Req. Reh’g 6). However, we do not find each portion of Requester’s
reproduced illustration in the Smith reference. For example, the cell phone

1
As the parties point out, a typographical error in the Decision erroneously
indicates that claim 5 is subject to a new ground of rejection as anticipated
by Smith (Decision 20).
2
As Patent Owner points out (PO Req. Reh’g 19), a typographical error in
the Decision erroneously indicates that claims 62 and 67 are subject to a new
ground of rejection as anticipated by Smith and that claim 62 is not subject
to a new ground of rejection as obvious over Smith, Wingate, Reshefsky,
Ban, Samsung, and Bakker.
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and “Remote Wireless Communication Adapter” as illustrated in
Requester’s adapted illustration do not appear to be disclosed (or illustrated)
in the Smith reference. Thus, we disagree with Requester for at least the
previously stated reasons (Decision 15-16) and we need not consider if
Requester’s proposed cell phone and “Remote Wireless Communication
Adapter” anticipates the claimed feature of a connector that is physically
detached from the coupling device.

Patent Owner’s Request for Rehearing
Patent Owner indicates that the Decision contains “an error with
respect to claim 5” in stating that “it ‘reverse[s] the Examiner’s decision not
to adopt the following proposed rejections, each of which is denominated as
a new ground of rejection’ and includes claim 5 as being anticipated by
Smith in the list that follows (Decision, pp. 19-20)” (PO Req. Reh’g 1). We
agree. The Decision is amended to eliminate claim 5 from the list of claims
rejected as anticipated by Smith at page 20 of the Decision.
With respect to claims 1-4 and 6-74, Patent Owner states that the
Board “picks and chooses elements from two separate embodiments in
Smith” (PO Req. Reh’g 2). In particular, Patent Owner argues that the
portable wireless communication adapter that contains only one
“connector 1c” is one embodiment but that the portable wireless
communication adapter that contains “several connectors 1c” and can
connect to “several legacy units” is a different embodiment. We disagree
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with Patent Owner. As explained in the Decision, Smith discloses that the
portable wireless communication adapter (e.g., Figs. 4-5) may contain
“several connectors 1c” (see e.g., Decision 8-11). Hence, the Decision
refers to one embodiment in Smith in which a portable wireless
communication adapter with several connectors 1c is used. We also
disagree with Patent Owner for at least the reasons provided by Requester
(Requester’s Comments, filed April 22, 2013, p. 2-3).
Patent Owner cites a “preferred embodiment” in Smith in which,
according to Patent Owner, a “non portable” “remote hi-fidelity unit” is used
(PO Req. Reh’g 3). However, Patent Owner does not point out with
particularity any specific points overlooked or misapprehended by the Board
which would indicate that Smith fails to disclose a portable wireless
communication adapter (e.g., Figs 4-5) that contains “several connectors 1c”
(see e.g., Decision 8-11).
Patent Owner argues that Smith fails to provide a “disclosure that the
‘several connectors 1c’ associated with adapter/module 2d in the ‘another
embodiment’ or the connector 1c associated with adapter/module 2c in the
‘preferred embodiment’ are portable” and therefore, according to Patent
Owner, “[t]he only way to get two portable-during-use connectors is to
impermissibly pick and choose from two separate and distinct embodiments”
(PO Req. Reh’g. 5). We disagree with Patent Owner for at least the reasons
previously stated (see e.g., Decision 8-10). In any event, we also disagree
with Patent Owner’s new contention that “claim 1 requires two portable
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connectors” (PO Req. Reh’g 5). Instead, claim 1 merely recites a “portable
apparatus.”
Patent Owner argues that the home hi-fidelity unit of Smith is not
“portable” (Req. Reh’g 6). We need not re-address whether the home hi-
fidelity unit of Smith would have been considered “portable” to one of
ordinary skill in the art or not because, as was previously stated in the
Decision, “Patent Owner has not sufficiently demonstrated that the
adapter/module of Smith is also not portable” (Decision 10). While Patent
Owner argues that “it is not Patent Owner’s burden to demonstrate that a
given adapter/module in Smith is not portable” (PO Req. Reh’g 6), Patent
Owner does not explain how the adapter/module that is explicitly disclosed
by Smith as being “portable” (see Decision 9-10) is somehow not portable.
Patent Owner argues that Smith fails to disclose “a second electrical
connector configured to receive a second audio signal from a substantially
arbitrarily selectable two-way communication device” because, according
to Patent Owner, the “‘connector 1c’ . . . is already connected to the
headphones and therefore is not available for connection to the phone” (PO
Req. Reh’g 7). Patent Owner reiterates this argument with respect to
claim 25 (PO Req. Reh’g 9-11) and claim 36 (PO Req. Reh’g 12-13).
However, as previously stated in the Decision, the adapter or module of
Smith includes “several connectors 1c” that connect to “several legacy
units” (Decision 8). Patent Owner does not persuasively demonstrate that
the “several connectors 1c” are each “not available for connection to the
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phone.” We also disagree with Patent Owner for reasons set forth by
Requester (Requester’s Comments, filed April 22, 2013, 4).
Patent Owner argues that “[t]here is no disclosure [in Smith] of the
use of any phone” or a “selectable phone” (PO Req. Reh’g. 7). We disagree
with Patent Owner for at least the reasons set forth in the Decision (see e.g.,
Decision 8, 10-11).
Patent Owner argues that “there is no disclosure in Smith as to how
the phone is connected to the portable adapter/module – absolutely none”
(PO Req. Reh’g 7). Patent Owner reiterates this argument with respect to
claim 25 (PO Req. Reh’g. 11). Claim 1 recites a connector configured to
receive an audio signal from a communication device. Claim 1 does not
appear to recite “how” the communication device (or phone) must be
connected to the adapter/module. Because claim 1 does not appear to recite
any special requirements regarding any presumed “connection” between an
apparatus and a phone, we disagree with Patent Owner that Smith fails to
disclose claim 1.
With respect to claim 25, Patent Owner argues that Smith fails to
disclose “that the phone . . . communicates via connector 1c . . . wirelessly”
(PO Req. Reh’g. 10). Patent Owner reiterates this argument with respect to
claim 36 (PO Req. Reh’g. 13). We disagree with Patent Owner for at least
the previously stated reasons (see e.g., Decision 12) and the reasons set forth
by Requester (Requester’s Comments, filed April 22, 2013, 4-5).
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With respect to claim 59-66 and 71-74, Patent Owner argues that
Smith fails to disclose devices are “all portable together ‘by the same user
during use” (PO Req. Reh’g 14). We disagree with Patent Owner for at least
the reasons previously set forth in the Decision (see e.g., Decision 13-14).
Regarding claims 2, 38, 63, and 66, Patent Owner argues that Smith
fails to disclose “selectively switching between the first and second audio
signals” (PO Req. Reh’g 16-17). We disagree with Patent Owner for at least
the reasons previously set forth in the Decision (see e.g., Decision 15).
Regarding claims 22 and 24, Patent Owner argues that Smith fails to
disclose “the portable CD player and phone . . . integrated into the same
‘article of clothing or . . . personal carrier device’” (PO Req. Reh’g. 17). We
disagree with Patent Owner for at least the reasons previously set forth in the
Decision (see e.g., Decision 16).
Regarding claims 29, 71, and 72, Patent Owner argues that Smith fails
to disclose “changing audio delivery devices” (PO Req. Reh’g 18). We
disagree with Patent Owner for at least the reasons previously set forth in the
Decision (see e.g., Decision 17-18).
Regarding claim 37, Patent Owner argues that Wingate fails to
disclose “that the user is able to choose the volume of audio programming
relative to an incoming call” (PO Req. Reh’g. 18). We disagree with Patent
Owner for at least the reasons previously set forth in the Decision (see e.g.,
Decision 18).
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With respect to claim 37, Patent Owner also argues that claim 27
recites “a means-plus-function element” and “the ‘corresponding structure’
for performing the recited function is volume controller 72, as seen in
Figure 7 of the ‘090 patent” (PO Req. Reh’g. 18). Patent Owner argues that
“there is no structure disclosed in Wingate that is the same as [or equivalent
to] volume controller 72” (id.). “The use of the word ‘means,’ which is part
of the classic template for functional claim elements, gives rise to ‘a
presumption that the inventor used the term advisedly to invoke the statutory
mandates for means-plus-functions clauses’.” Sage Products, Inc. v. Devon
Industries, Inc., 126 F.3d 1420, 1427 (Fed. Cir. 1997) citing York Prods.,
Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir.
1996).
We disagree with Patent Owner’s contention that the combination of
Smith and Wingate fails to disclose or suggest a structure equivalent to the
“volume controller 72” as disclosed in the ‘090 patent. The Specification
discloses a coupling device “may include a volume controller 72 to control
the volume” (col. 5, ll. 48-49) and illustrates the “volume controller 72” as a
generalized box (Fig. 7). Patent Owner does not point to any additional
disclosure of the structure of “volume controller 72” in the Specification. As
previously described, Wingate also discloses a generalized structure (capable
of being depicted as a box) for adjusting (or “decreasing”) “the volume of
the programming” (see e.g., Decision 18). Patent Owner asserts that the
structure that adjusts the volume disclosed by Wingate is somehow not
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equivalent to the generalized structure (illustrated as a generalized box) that
controls volume in the ‘090 Specification (PO Req. Reh’g 18). Because we
find no difference in the two generalized structures (i.e., the “structure” of
Wingate vs. that of the ‘090 patent) that perform the same function, and
because Patent Owner has not pointed out any specific differences
supporting the assertion of non-equivalence, we cannot agree with Patent
Owner.
Patent Owner argues that the rejection of claims 62 and 66 is improper
because “Requester did not propose an anticipation rejection for claim 36
from which these claims depend” (PO Req. Reh’g. 19). We agree. We
rejected claim 36 as obvious over Smith and Wingate and claim 67, which
depends from claims 36 and 62, as obvious over Smith, Wingate, Reshefsky,
Ban, Samsung, and Bakker. We inadvertently omitted claim 62 as being
rejected over the same ground as claim 67, which depends from claim 62.
Hence, we modify the Decision to reflect that we do not reverse the
Examiner’s decision not to adopt a rejection of claims 62 and 67 as
anticipated by Smith (no such rejection having been proposed) but we
reverse the Examiner’s decision not to adopt the proposed rejection of
claims 62 and 67-70 as obvious over Smith, Wingate, Reshefsky, Ban,
Samsung, and Bakker.
Regarding claims 6, 11-14, 21, 26, 28, 34, 36-58 and 70, Patent
Owner argues that it would not have been obvious to one of ordinary skill in
the art to have combined the teachings of Smith and Wingate (PO Req.
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Reh’g. 19-21). Patent Owner also argues that it would not have been obvious
to one of ordinary skill in the art to have combined the teachings of Smith
and Wingate with the TCC Publication (PO Req. Reh’g. 22). None of these
arguments were previously raised by the Patent Owner. We disagree with
Patent Owner that we overlooked or misapprehended points regarding the
combinability of the Smith, Wingate, and/or TCC Publication at least
because such points were not previously raised. In any event, we disagree
with Patent Owner’s newly raised contentions regarding the combinability of
the Smith, Wingate, and/or TCC Publication references at least for the
reasons set forth by Requester (Requester’s Comments, filed April 22, 2013,
5-6).
With respect to claim 25, Patent Owner argues that the Board
overlooked the fact that “claimed elements must be arranged in the prior art
as they are arranged in the claim” (PO Req. Reh’g 9). We disagree with
Patent Owner’s contention that Smith fails to disclose claim 25. For at least
the reasons set forth in the Decision, we continue to find that Smith
anticipates claim 25 (Decision 11-12).

CONCLUSION
For the foregoing reasons, Requester’s Request for Rehearing has
been considered and is DENIED. Patent Owner’s Request for Rehearing has
been considered and is GRANTED to the extent that we amend the Decision
to reflect the following:
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1) We reverse the Examiner’s decision not to adopt the rejection of
claims 1, 2, 4, 7-10, 17, 18, 20, 22, 24, 25, 27, 29, 31-33, 35, 59-
61, 63-66, and 71-74 under 35 U.S.C. §§ 102(a) and 102(b) as
anticipated by Smith; and
2) We reverse the Examiner’s decision not to adopt the rejection of
claims 62 and 67-70 under 35 U.S.C. § 103(a) as unpatentable over
Smith, Wingate, Reshefsky, Ban, Samsung, and Bakker.
Patent Owner’s Request for Rehearing is otherwise DENIED. The
reversal of the Examiner’s decision not to adopt rejections of claims over
other grounds as stated in the Decision (Decision 20) remains unchanged.
Accordingly, the Request for rehearings are GRANTED-IN-PART.

GRANTED-IN-PART

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ak

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, PC
P.O. Box 1022
Minneapolis, MN 55440-1022