Ex Parte 7440772 et al

Patent Trial and Appeal Board

Aug 26, 2015

95001266 (P.T.A.B. Aug. 26, 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.
95/001,266 11/13/2009 7440772 AFF.0004B4US 7020
21906 7590 08/26/2015
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
08/26/2015 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

v.

AFFINITY LABS OF TEXAS, LLC,
Patent Owner
______________

Appeal 2014-003542
Reexamination 95/001,266
United States Patent 7,440,772 B2
1

Technology Center 3900
______________

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

BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
2

1
This patent (hereinafter “’772 patent”) issued to Russell W. White, et al.,
on October 21, 2008 based on Application 10/947,754, filed on September
23, 2004. The ’772 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. ’772 patent p. 1.
2
Throughout this decision, we refer to: Request for Inter Partes
Reexamination (control no. 95/001,266 “Request”), filed November 13,
2009; Right of Appeal Notice (“RAN”), mailed October 1, 2012; Patent
Owners’ Appeal Brief (“PO App. Br.”) filed, December 31, 2012;
Examiner’s Answer (“Ans.”), mailed May 14, 2013; and Patent Owner
(Continued on next page.)
Appeal 2014-003542
Patent 7,440,772 B2
Reexamination No. 95/001,266

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Patent Owner appeals the Examiner’s decision to reject claims 2–42,
all pending claims, of which claims 4, 22, 32, and 36 are the independent
claims.
3
PO App. Br. 4.
We have jurisdiction under 35 U.S.C. §§ 134, and 315.
We affirm the Examiner’s decision that claims 2–42 are unpatentable
over the prior art.

I. STATEMENT OF THE CASE
A. Related Proceedings
We are informed by Patent Owner of the related proceedings listed in
Patent Owner’s Appeal Brief. PO App. Br. 3 and 24 (Appendix XI).
B. The Rejections Entered by the Examiner
Patent Owner appeals the Examiner rejecting the claims as follows
(PO App. Br. 8–14; accord RAN 14, 19):
Claims 4, 5, 6, 11–16, 18, 20, 22, 23, 26, 32, 36, and 40–42 under 35
U.S.C. § 103(a) as unpatentable over Brooks, US Patent

Rebuttal Brief (“PO Reb. Br.”), filed June 13, 2013.
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Patent Owner informs us that claim 1 was canceled and claims 2–7, 10, 11,
13, 14, and 17–21 were amended in response to the Action Closing
Prosecution (ACP). The Examiner entered the amendments in the RAN.
Claim 4 was amended to include the language recited in independent claim 1
(now canceled) and claims 2, 3, and 5–21 were amended to change their
dependency from claim 1 to claim 4. No new claims have been added. PO
App. Br. 4; accord RAN 1.
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Patent 7,440,772 B2
Reexamination No. 95/001,266

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7,339,993 B1 issued March 4, 2008 and Rolf, US Patent
7,065,342 B1 issued June 20, 2006 (Ground C);
Claims 19, 24, 25, and 37–39 under 35 U.S.C. § l03(a) as unpatentable
over Brooks, Rolf, and RealJukeBox, RealJukebox Plus Manual,
Real Networks, Inc. (1999) (Ground D);
Claims 40–42 under 35 U.S.C § 103(a) as unpatentable over Brooks,
Rolf, and Mansour, US Patent 6,353,637 B1 issued March 5,
2002(Ground E);
Claims 2–16, 18, 19, 21–29, and 32–36 under 35 U.S.C. § 103(a) as
unpatentable over Rolf and Van Zoest, US Patent 6,609,105 B2
issued August 19, 2003 (Ground Z);
Claims 17, 30, 31, and 37–39 under 35 U.S.C. § 103(a) as
unpatentable over Rolf and Van Zoest (Ground AA);
Claims 37–39 under 35 U.S.C. § 103(a) as unpatentable over Rolf,
Van Zoest, and RealJukeBox (Ground BB);
Claims 17, 30, and 31 under 35 U.S.C. § 103(a) as unpatentable over
Rolf, Van Zoest, and Ozluturk, US Patent 6,157,619 issued
December 5, 2000 (Ground CC);
Claim 20 is under 35 U.S.C. § 103(a) as unpatentable over Rolf, Van
Zoest, and Leeke, US Patent 6,587,127 B1, issued July 1, 2003
(Ground DD);
Claims 40–42 under 35 U.S.C. § 103(a) as unpatentable over Rolf in
view of Van Zoest, and Mansour (Ground EE).

Appeal 2014-003542
Patent 7,440,772 B2
Reexamination No. 95/001,266

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C. The Subject Matter Described in the ’772 Patent
The ’772 patent relates to an audio download system and method,
including a user interface, wherein the same content is made available to
different user devices in different formats. Abstract.

D. The Claims on Appeal
Claim 4, which is representative of the independent claims, reads as
follows:
4. A content delivery method comprising:
maintaining a user interface page that is accessible to a
wireless user device that has a player configured to execute a
specific format of content file, the user interface page
configured to present a user with a first graphical element
associated with a piece of selectable content;
recognizing receipt of a request for the piece of selectable
content from the wireless user device;
in response to receiving the request, making a first
version of the piece of selectable content available for
downloading to the wireless user device and a second version of
the piece of selectable content available for downloading to a
personal computer of the user, wherein the first version has the
specific format and the second version has a different format
playable by the personal computer;
sending the first version of the piece of selectable content
to the wireless user device; and
sending the second version of the piece of selectable
content to the personal computer [the last three elements
collectively “the dual download feature”].

Appeal 2014-003542
Patent 7,440,772 B2
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II. ISSUES
Patent Owner’s arguments (PO App. Br. 9–14; PO Reb. Br. 2–5) raise
the following issues:
1. Under 35 U.S.C. § 103, are the Examiner’s proposed rejections over
Brooks and Rolf supported by some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness?
2. Under 35 U.S.C. § 103, has the Examiner established that Brooks and
Rolf collectively would have taught or suggested the dual download
feature?
3. Under 35 U.S.C. § 103, has the Examiner established that Rolf and
Van Zoest collectively would have taught or suggested the dual
download feature?
4. Does Patent Owner’s evidence of commercial success overcome the
Examiner’s prima facie case that the claims are obvious?

III. ANALYSIS
A. The Dual Download Feature
Patent Owner argues that the dual download feature is not obvious
over either Brooks and Rolf (rejection C) or Rolf and Van Zoest (rejection Z)
for essentially the same reasons. PO App. Br. 9–13; PO Reb. 3–5. Namely,
Patent Owner asserts that Rolf does not teach or suggest that content is
simultaneously made available to two different devices in response to a
single request. PO App. Br. 9–13. We disagree with Patent Owner for at
least the reasons stated by the Examiner. Ans. 9–14.
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We note specifically the Examiner’s finding that Rolf discloses “the
purchased recording or album may be downloaded to the wireless
communications device 12 (if memory space suffices) or, alternatively, may
be downloaded to the user’s personal storage unit 16.” Ans. 10 (citing Rolf
7:12–16 (underlining omitted)). We agree with the Examiner that, according
to Rolf, “before the user selects a destination device, the recording is made
available for downloading to both devices inasmuch as the user is allowed to
select either device as a destination for sending the content.” Id. at 11.
To the extent Patent Owner argues that the dual download feature
requires both the first and second versions actually to be downloaded in
response to the same request (PO Reb. 3–4), we disagree with Patent Owner
and agree with the Examiner that one of the downloads may be made
following a subsequent request and meet the limitation (Ans. 11–12). Patent
Owner’s argument that the subsequent request would result in different
versions, which are necessarily not the same versions made available in
response to the prior request (PO Reb. Br. 3–4), is unavailing because it is
premised on “making available” meaning preparing, as if the first and second
versions would not, for example, pre-exist the initial request and are only
prepared in response to a request. We do not find such a narrow construction
warranted, but in any case, Patent Owner’s arguments do not persuade us of
error in the Examiner’s proposed scenario (Ans. 11–12). Nor are we
persuaded that such a modification, even if Patent Owner’s construction were
the correct construction, would have been beyond the skill of an ordinarily
skilled artisan in view of the combined teachings of either Brooks and Rolf
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Patent 7,440,772 B2
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or Rolf and Van Zoest and therefore obvious. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (“if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”).
Accordingly, we are unpersuaded of error in the Examiner’s
determination that both the combined teachings of Brooks and Rolf
(rejections C) and the combined teachings of Rolf and Van Zoest (rejections
Z) would have taught or suggested the dual download feature. We therefore
find no error in rejections C–E or Z–EE based on the foregoing.

B. The Combination of Brooks and Rolf
Patent Owner argues that the Examiner’s proposed combination of
Brooks and Rolf (rejections C–E) is not supported by some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. PO App. Br. 9–10; PO Reb. Br. 2–3. We disagree for at least
the reasons stated by the Examiner. Ans. 7–9. We note the following for
emphasis.
Patent Owner notes the Examiner’s observation that “[t]here is no
teaching or suggestion in Brooks that it would be desirable, beneficial, or
even optional to provide data to both a requesting device and a non-
requesting device based on a single request” (PO App. Br. 9 (citing RAN 8)),
and argues that this statement negates the Examiner’s finding that “Brooks
recognizes the inherent advantages of formatting the same content in
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different ways for different devices” (id. (citing RAN 11 and the Examiner’s
reference to Brooks 7:21–33)). We are not persuaded the statements are in
conflict; Patent Owner’s assertion is simply unfounded. Brooks is
simultaneously capable of teaching the formatting of content for different
devices (“gateway computer 100 is configured to receive video data from
computer system 110 and to provide video data to each device according to
that device's bandwidth limitations, and in the output format desired”
(Brooks 7:22–25)) while also not teaching that the differently formatted
content is provided to a requesting device and a non-requesting device based
on a single request. We also do not find the Examiner to have provided a
mere conclusory statement as Patent Owner asserts without foundation. PO
App. Br. 9.
We also are not persuaded of error by Patent Owner’s naked assertion
that “the idea to modify Brooks with parts of Rolf . . . comes from the
guiding hand of hindsight.” Id. at 10.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, Patent Owner
provides insufficient persuasive argument or evidence that the Examiner has
engaged in impermissible hindsight reasoning. The Request articulates a
clear line of reasoning why it would have been obvious for one of ordinary
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Patent 7,440,772 B2
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skill in the art to have combined Brooks and Rolf (Request 31), which the
Examiner adopted (Action Closing Prosecution 16 (mailed June 27, 2011);
accord RAN 14). The reasoning (e.g., “[t]he combination of Brooks with
Rolf would have been obvious to a person of ordinary skill in the art because
they both allow a server to format content for portable devices and personal
computers”; and “they both have web based user interfaces that facilitate the
user accessing the remotely stored content,” Request 31) is not based on
hindsight gleaned from Patent Owner’s Specification, but instead shows the
claimed invention amounts to no more than a combination of then familiar
elements. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Patent Owner also asserts that because Brooks requires a request from
each download device, it teaches away from providing a choice of destination
devices. PO Reb. Br. 2. Building on that argument, Patent Owner asserts
error because a secondary reference cannot cure a teaching away in a primary
reference. Id. We are not persuaded that Brooks teaches away from Patent
Owner’s claimed invention.
“A reference may be said to teach away when a person of ordinary
skill, upon reading 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.” Ricoh Co., Ltd. v. Quanta Computer,
Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A reference
does not teach away if it merely expresses a general preference for an
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alternative invention from amongst options available to the ordinarily skilled
artisan, and the reference does not discredit or discourage investigation into
the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Patent Owner has not persuasively established that, by teaching that
individual download devices each request content, Brooks discredits or
discourages content being made available to multiple devices in response to a
single request.
In view of the foregoing, we are not persuaded that the Examiner’s
proposed combination of Brooks and Rolf is unsupported by some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness and are thus unpersuaded of error in the Examiner’s rejections
based on Brooks and Rolf (rejections C–E) in this regard.

C. Evidence of Commercial Success
Patent Owner argues that Patent Owner has provided sufficient
evidence of commercial success to overcome the Examiner’s determination
of obviousness. App. Br. 13–14; PO Reb. Br. 5. We disagree for at least the
reasons stated by the Examiner. Ans. 15–17. We do not find the Examiner
to have failed to consider the evidence, as Appellant asserts. PO Reb. Br. 5.
The Examiner found the Evidence insufficient. Ans. 15. We also are
unpersuaded of error by Appellant’s assertion that the Examiner relied on
Requester’s representation that it did not practice the invention in reaching
the conclusion that the evidence of commercial success was insufficient to
overcome obviousness. PO Reb. Br. 5. We find no error in the Examiner’s
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Patent 7,440,772 B2
Reexamination No. 95/001,266

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determination even in the face of Requester’s decision to take a license and
withdraw from this proceeding.

Accordingly, in view of the foregoing and because Patent Owner does
not otherwise argue the rejections with particularity, we are unpersuaded of
error in rejections C–E and Z–EE.

VII. DECISION
The Examiner’s decision that claims 2–42 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 2014-003542
Patent 7,440,772 B2
Reexamination No. 95/001,266

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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:

Novak Druce & Quigg, LLP
1000 Louisiana Street
53
rd
Floor
Houston, TX 77002