Ex Parte 7486926 et al

Patent Trial and Appeal Board

Oct 31, 2012

95001263 (P.T.A.B. Oct. 31, 2012)

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.
95/001,263 11/13/2009 7486926 AFF.0004B6US 6721
21906 7590 11/01/2012
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
11/01/2012 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 and Appellant
______________

Appeal 2012-010420
Reexamination Control No. 95/001,263
U.S. Patent No. 7,486,926 B2
Technology Center 3900
______________

Before HOWARD B. BLANKENSHIP, MICHAEL R. ZECHER, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner Affinity Labs of Texas, LLC, (hereinafter “Appellant”)1
appeals under 35 U.S.C. §§ 134(b) and 315(a)(1) from the Examiner’s rejection of
original claims 1-20 of U.S. Patent No. 7,486,926 B2 (hereinafter “the ‘926

1
  Appellant’s “Appeal Brief” (hereinafter “App. Br.”) filed March 5, 2012, at 2.
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

2

patent”) and newly added claims 21-37, proposed and entered during this
reexamination proceeding.2 Third Party Requester Apple Inc. has not filed any
briefs with respect to this appeal.
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315.
We AFFIRM.

I. STATEMENT OF THE CASE
A. Related litigation
The following civil action has been identified as related to this
reexamination proceeding: Affinity Labs of Texas LLC v. Apple Inc., Case No. cv-
09-44-36-CW. App. Br. at 2.
B. This Reexamination Proceeding
1. This proceeding arose from a “Request for Inter Partes
Reexamination of U.S. Patent 7,486,926” (hereinafter “Request”), filed November
13, 2009. The ‘926 patent issued on February 3, 2009, with claims 1-20. The
Request proposed fifty-five grounds of rejection of claims 1-20 under 35 U.S.C.
§ 103(a), which are designated as obviousness rejections A-CCC. Request at 23-
380.
2. Reexamination was ordered in an “Order Granting/Denying Request
for Inter Partes Reexamination” (hereinafter “Order”), filed February 5, 2010.
The Order was followed by a first, Non-final Office action (hereinafter “Non-final
Action”), mailed July 9, 2010, in which the Examiner:

2 The ‘926 patent issued to inventors Russell W. White and Kevin R. Imes on
February 3, 2009, is based on patent application 11/681,452, filed March 2, 2007.
The ‘926 patent is a continuation of patent application 09/537,812 (“the ‘812
application”), filed March 28, 2000—now U.S. Patent No. 7,187,947 B1. 
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

3

(a) designated the obviousness rejections proposed in the Request as
rejections A-CCC (see Non-final Action at 3-15); and
(b) adopted and entered obviousness rejections A-F for claims 1-10 (id. at
3-4);
(c) refused to adopt obviousness rejections B, G, H, I, J, K for claims 11-
20 (id. at 5);
(d) adopted and entered obviousness rejections L-P for claims 1-10 (id. at
6-7);
(e) refused to adopt obviousness rejections L and N-R for claims 11-20
(id. at 8);
(f) adopted and entered obviousness rejections S-X for claims 1-10 (id. at
9-10);
(g) refused to adopt obviousness rejections Y-DD for claims 11-20 (id. at
10-11);
(h) adopted and entered obviousness rejections EE-MM for claims 1-20
(id. at 11-12);
(i) adopted and entered obviousness rejections NN-TT for claims 1-20
(id. at 13-14); and
(j) adopted and entered obviousness rejections UU-CCC for claims 1-20
(id. at 14-15).
All of the above entered obviousness rejections are before us, plus some
obviousness rejections of new claims 21-37 discussed below.
3. In the Arguments/Remarks filed September 9, 2010, Appellant
presented arguments directed to the obviousness rejections adopted and entered by
the Examiner listed above. In the Claims filed concurrently, Appellant added new
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

4

dependent claims 21-37. In addition, Appellant filed a Declaration of Russell W.
White—the first-named inventor in the ‘926 patent, in addition to Founder and
Vice President of the assignee—on September 9, 2010, as evidence to support their
argument pertaining to secondary considerations of nonobviousness.
4. In response to Appellant’s Reply filed September 9, 2010, the Third
Party Requester submitted comments (“Third Party Requester Comments”) on
October 12, 2010, addressing Appellant’s arguments/remarks and arguing that
newly added dependent claims 21-37 are unpatentable under 35 U.S.C. § 103(a) in
light of the proposed obviousness rejections initially discussed in the Request.
5. In the “Action Closing Prosecution” (hereinafter “ACP”), mailed
August 17, 2011, the Examiner:
(a) repeated the obviousness rejections of claims 1-20 adopted, adopted-
in-part, and entered in the Non-final Action (ACP at 23-35); and
(b) entered the following new obviousness rejections:
(i) claims 21-27 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Rio 500 and Kumar (id. at 36);
(ii) claims 21-27 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of SoundJam, Rio 500, and Kumar (id.);
(iii) claims 22, 23, and 25 were rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of SoundJam, Rio 500, and Naughton
(id.);
(iv) claims 21-31were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of SoundJam, Rio 500, Naughton, and
Abecassis (id. at 37);
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

5

(v) claims 21-37 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lau, Naim, and Lee (id. at 38);
(vi) claims 21-27 and 32-34 were rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Looney, Dwyer, and Kumar (id.);
and
(vii) claims 28, 29, and 35 were rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Looney, Dwyer, Kumar, and Leeke or
Kaplan. Id.
6. In the Patent Owner’s Response filed on September 16, 2011,
Appellant presented arguments directed to the obviousness rejections adopted,
adopted-in-part, and entered by the Examiner with respect to claims 1-37, all the
claims now pending in this reexamination proceeding.
7. Shortly thereafter the Third Party Requestor filed a Miscellaneous
document on October 3, 2011, indicating that they reached an agreement with
Appellant and they would no longer be participating in this reexamination
proceeding.
8. In the “Right of Notice of Appeal” (hereinafter “RAN”) filed
December 6, 2011, the Examiner repeated all of the obviousness rejections
adopted, adopted-in-part, and entered with respect to claims 1-37 from the ACP.
RAN at 6-38.
9. Appellant timely filed a “Notice of Appeal” on January 5, 2012.
10. Appellant’s timely filed the Appeal Brief on March 5, 2011,
accompanied with an additional copy of the White Declaration.
11. The Examiner timely mailed an Answer (hereinafter “Ans.) on May
15, 2012, that incorporates by reference the RAN. Ans. at 4.
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

6

C. The ‘926 Patent
The invention at issue in the ‘926 patent generally relates to a content
delivery system and method. Spec. 1: 13-15. In particular, the invention includes
communicating selective information to an electronic device, such as an audio
player, MP3 player, personal digital assistant (“PDA”) device, etc. Spec. 2: 44-46;
see also spec. 7: 65-spec. 8: 10. The invention uses a general system—commonly
referred to as personal computer—to format, segment, compress, and modify
several songs or titles into an audio file (spec. 3: 14-63), and communicate the
audio file to the electronic device (spec. 7: 8-10). The electronic device receives
the audio file and communicates the file to a different electronic device, such as an
automobile sound system, home stereo, etc. Spec. 8, ll. 16-20.
Figure 9 of the ‘926 patent is reproduced below.
Appeal
Reexam
U.S. Pa

Figure 9
contact
10-22.
the audi
thereby
31-34.
T
as follow
1
2012-0104
ination Co
tent No. 7,
illustrate
906—othe
Electronic
o file disc
allowing a
he origina
s:
. A con
20
ntrol 95/0
486,926 B
s an autom
rwise con
device 90
ussed abov
prospecti
l independ
tent deliv
01,263
2
obile cons
sidered a m
7 commun
e, to the a
ve user to
D. Cla
ent claims
ery system
7
ole 900 co
ount—fo
icates sele
utomobile
listen to se
ims on App
on appeal
, comprisi
nnected to
r electroni
cted audio
audio sys
lected aud
eal
are claim
ng:
interface
c device 9
informati
tem via in
io inform
s 1 and 11
904 and
07. Spec.
on, such a
terface 901
ation. Id.
, which re

17:
s
,
at
ad
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

8

a software application configured for storage on a storage
medium of a personal computer, the software application further
configured to maintain a collection of audio files saved locally to the
personal computer, to allow a user to create a playlist, to initiate a
downloading of an audio file included in the playlist from the personal
computer to a portable audio file player, to initiate sending a request
for a different audio file to a network based resource, to receive the
different audio file, to locally save the different audio file at the
personal computer, and to initiate presentation of a graphical user
interface (GUI) at the personal computer, wherein the GUI is
configured to operate as a user interface for the network based
resource, further wherein the GUI is configured to present a collection
of selectable functions associated with audio information;
the portable audio file player having a processor, a display, and
a memory configured to store a plurality of audio files; and
a collection of instructions saved locally at the portable audio
file player, the collection of instructions operable to direct the
processor to maintain an updateable user interface comprising a menu
of selectable icons, to modify the updateable user interface in
connection with receiving a particular audio file from the personal
computer such that a particular selectable icon is linked to the
particular audio file, to initiate presentation of the menu on the
display, to communicate data to a different electronic device that has
an associated display to allow the different electronic device to
present a selectable representation of the particular selectable icon on
the associated display, and to begin playing the particular audio file at
the portable audio file player in connection with a user selecting the
selectable representation from the associated display.
Claims Appendix—App. Br. at 31 (emphasis added).
11. A content delivery system, comprising:
a network based resource accessible by a user computer system,
the network based resource maintaining a plurality of selectable songs
formatted in a digital format;
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

9

an application configured to execute at the user computer
system, the application operable to direct the user computer system to
communicatively couple with the network based resource to allow
user selection of an audio file from the network based resource, to
receive the audio file, to locally save the audio file, and to initiate
presentation of a graphical user interface (GUI) at the user computer
system; the GUI configured to present a collection of selectable
functions associated with audio information, the selectable functions
comprising: a song purchase function;
a song search function, a playlist creation function; and
a naming function that allows a user to assign a user-defined
name to a given playlist; and a different application configured to
execute at a portable media player, the different application operable
to direct the portable media player to receive the user-defined name,
to associate the user-defined name with at least one audio file, and to
communicate data representing the user-defined name to a different
audio system to allow the different audio system to present a soft
button comprising the user-defined name on an associated display of
the different audio system.
Id. at 32-33.
Appellant acknowledges the similarity of the limitations at issue in claim 1
(e.g., “a personal computer,” “a portable audio file player,” and “a different
electronic device”) to recitations in claim 11 (e.g., “a user computer system,” “a
portable media player,” and “a different audio system”). App. Br. 5 at FN 1.
Similar to Appellant, our analysis will use the terminology of claim 1. Id.
E. Prior Art Relied Upon

Naughton US 6,160,551 Dec. 12, 2000
(filed Mar. 20, 1995)
Looney US 6,232,539 B1 May 15, 2001
(filed Oct. 18, 1999)
Gioscia US 6,407,750 B1 June 18, 2002
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

10

(filed Jan. 8, 1999)
Van Zoest US 6,609,105 B2 Aug. 19, 2003
(effectively filed Jan. 7, 2000)
Dwyer US 6,671,567 B1 Dec. 30, 2003
(filed Nov. 12, 1998)
Naim US 6,694,200 B1 Feb. 17, 2004
(filed Nov. 16, 1999)
Lau US 6,772,212 B1 Aug. 3, 2004
(filed Mar. 8, 2000)
Lee US 6,728,531 B1 Apr. 27, 2004
(effectively filed Sept. 22, 1999)
Kumar US 7,120,462 B2 Oct. 10, 2006
(effectively filed Apr. 7, 1999)

Rio 500, “Getting Started Guide for Windows® 98 and Macintosh® OS
8.6,” (1999) (“Rio 500”).

Jeffery Robbin and Bill Kincaid, “SoundJam™ MP Digital Audio System,”
(Casady & Greene, Inc. 1999) (“SoundJam”).

F. The Rejections
Appellant contends in the Appeal Brief that the Examiner erred in rejecting
claims 1-37 under 35 U.S.C. § 103(a) for a number reasons. In particular,
Appellant presents multiple allegations of error for the following obviousness
rejections of independent claims 1 and 11:
1. Obviousness rejection A—claim 1 was rejected under 35 U.S.C.
§ 103(a) over the combination of Rio 500 and Kumar (App. Br. at 6-10);
2. Obviousness rejection L— claim 1 was rejected under 35 U.S.C.
§ 103(a) over combination of SoundJam, Rio 500, and Kumar (id. at 10-11);
3. Obviousness rejection S— claim 1 was rejected under 35 U.S.C.
§ 103(a) over combination of SoundJam, Rio 500, and Naughton (id. at 11-13);
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

11

4. Obviousness rejection EE— claims 1 and 11 were rejected under 35
U.S.C. § 103(a) over combination of Lau, Naim, and Lee (id. at 13-17);
5. Obviousness rejection NN— claims 1 and 11 were rejected under 35
U.S.C. §103(a) over combination of Van Zoest, Gioscia, and the knowledge of an
ordinarily skilled artisan (id. at 17-19); and
6. Obviousness ejection UU— claims 1 and 11 were rejected under 35
U.S.C. § 103(a) over the combination of Looney, Dwyer, and Kumar (id. at 19-23).
In addition, Appellant contends that claims 1-37 of the ‘926 patent should be
accorded the benefit date of March 28, 2000, the filing date of the ‘812 application.
Id. at 23, 25-29. Appellants also asserts that the Examiner is not authorized to
consider the issue of written description in this reexamination proceeding. Id. at
23-25. Finally, Appellant argues that secondary considerations of
nonobviousness—namely commercial success—provide strong evidence to rebut
the obviousness rejections adopted, adopted-in-part, or maintained by the
Examiner. Id. at 29-30.
We begin our analysis by addressing the threshold 35 U.S.C. § 120 priority
issue and corresponding written description issue. Next, because the resolution of
obviousness rejection A—based on the combination of Rio 500 and Kumar—and
obvious rejection EE—based on the combination of Lau, Naim, and Lee—are
dispositive with respect to all the claims now pending on appeal, we will address
those rejections in turn. Finally, we will address Appellant’s argument that
secondary considerations such as commercial success provide strong evidence of
nonobviousness with respect to the invention claimed in the ‘926 patent.

Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

12

II. ANALYSIS
A. 35 U.S.C. § 120 Priority With Respect To The ‘926 Patent
Appellant asserts that the ‘926 patent should be accorded the benefit date of
March 28, 2000, because the ‘926 patent is a continuation of the ‘812 application.
App. Br. at 23. Based on the accorded benefit date of March 28, 2000, Appellant
further argues that both Kumar and Van Zoest do not qualify as prior art. Id.
Moreover, Appellant contends that an Examiner in an inter partes reexamination is
not permitted to reexamine original patent claims for compliance with the written
description requirement under 35 U.S.C. § 112. App. Br. at 23-24. In particular,
Appellant argues that because no new subject matter has been added to or deleted
from original claims 1-20, these original claims can only be examined in a
reexamination proceeding on the basis of prior art patents and printed publications.
Id. We do not agree with Appellant.
Generally, substantial new questions of patentability in a reexamination
proceeding must be based on prior art patents or printed publications. See Manual
of Patent Examining Procedure (“MPEP”) § 2617, 8th ed., Rev. 8, July 2010.
Other patentability issues, such as prior public use or sale, inventorship,
compliance with 35 U.S.C. § 101, 35 U.S.C. § 112, etc., normally should not be
considered when making the determination on the reexamination request and
should not be presented in the request. See id. However, there are exceptions. For
example, where appropriate, an Examiner may need to reach the issue of whether
the claims in a patent subject to reexamination are only entitled to the filing date of
an earlier foreign or U.S. patent application. See id. In this reexamination
proceeding, the Examiner concluded that the claims in the ‘926 patent are only
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

13

entitled to the filing date of March 2, 2007, because such claims are not fully
supported by the ‘812 patent application filed on March 28, 2000. RAN at 2-5.
In other words, in order to be entitled to the benefit of the ‘812 application,
one requirement is that the invention claimed in the ‘926 patent must have been
disclosed in the ‘812 application in the manner provided by 35 U.S.C. § 112, first
paragraph. See 35 U.S.C. § 120; In re Lukach, 442 F.2d 967, 968-69 (CCPA
1971). The Federal Circuit has held that there is no statutory prohibition from
conducting such a priority analysis in a reexamination proceeding. In re NTP, Inc.,
654 F.3d 1268, 1277 (Fed. Cir. 2011). That is, nothing in 35 U.S.C. §§ 301 et seq.,
the statutes which govern reexamination proceedings, prohibits the Examiner from
determining whether or not a priority date was properly claimed during the original
examination of the ‘926 patent. See id. As a result, the Examiner may consider
whether the ‘926 patent should be accorded the benefit date of the ‘812
application, which in turn encompasses considering both the ‘926 patent and the
‘812 application on the basis of written description.
Next, Appellant contends that the written description of the ‘812 application
fully supports the claims of the ‘926 patent—specifically the following claim
limitations recited in claim 1, and similarly recited in claim 11:
the collection of instructions operable to direct the processor . . . to
communicate data to a different electronics device that has an
associated display to allow the different electronic device to present a
selectable representation of the particular selectable icon on the
associated display, and to begin playing the particular audio file at the
portable audio file player in connection with a user selecting the
selectable representation from the associated display.

App. Br. at 25-28. Based on that written description analysis, Appellant argues
that the ‘926 patent should be accorded the benefit date of March 28, 2000, and the
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

14

obviousness rejections based on Kumar and Van Zoest should be withdrawn
because those references do not qualify as prior art. App. Br. at 28-29. We do not
agree with Appellant.
Even assuming that the written description of the ‘812 application fully
supports the disputed claim limitations recited in claim 1, and similarly recited in
claim 11, the ‘926 patent would only be accorded the benefit date of March 28,
2000. However, both Kumar and Van Zoest have effective filing dates that pre-
date March 28, 2000—(1) Kumar claims priority to provisional application
60/128,138, filed April 7, 1999 (“the ‘138 provisional application”); and (2) Van
Zoest claims priority to provisional application 60/175,159, filed January 7, 2000
(“the ‘159 provisional application”). We note that the Examiner may rely on the
effective filing dates of the ‘138 provisional application and the ‘159 provisional
application unless Appellant demonstrates that those provisional applications fail
to support Kumar and Van Zoest in accordance with 35 U.S.C. § 112, first
paragraph. See In re Giacomini, 612 F.3d 1380, 1383-85 (Fed. Cir. 2010); see also
Ex parte Yamaguchi, 88 USPQ2d 1606, 1609 (BPAI 2008) (precedential); MPEP
§§ 2136.03(III), 706.02(VI)(D). In this case, Appellant does not assert that it
would have been improper for the Examiner to rely upon the effective filing dates
of the ‘138 provisional application and the ‘159 provisional application because
those provisional applications do not reasonably support the subject matter relied
upon by the Examiner in Kumar and Van Zoest.
Nonetheless, we find that the ‘138 provisional application and the ‘159
provisional application reasonably support the subject matter relied upon by the
Examiner in Kumar and Van Zoest, respectively. With respect to the ‘138
provisional application, Figures 1, 2, and 5, and the corresponding description at
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

15

pages 3 and 4, illustrate and disclose a docking display unit. Therefore, we
conclude that the cited disclosure in the ‘138 provisional application reasonably
supports the Examiner’s reliance upon Kumar’s docking display unit. RAN at 7.
With respect to the ‘159 provisional application, we agree with the Examiner’s
position that the ‘159 provisional application reasonably supports the subject
matter relied upon by the Examiner in Van Zoest. RAN at 21; see also Third Party
Requestor Comments at 25-33. As a result, the obviousness rejections based in
part on Kumar and Van Zoest that were adopted, adopted-in-part, or maintained by
the Examiner should not be withdrawn because these references would qualify as
prior art even if we were to accord the ‘926 patent the benefit date of March 28,
2000.
B. 35 U.S.C. § 103(a) Rejection of Claim 1—Combination of Rio 500 and Kumar
First, Appellant contends that both Rio 500 and Kumar are only directed to
two-device systems, whereas the invention claimed in the ‘926 patent describes
three devices: (1) “a personal computer;” (2) “a portable audio file;” and (3) “a
different electronic device.” App. Br. at 7. Appellant argues that Rio 500
describes two devices: (1) a personal computer; and (2) a digital audio player—a
simple device that is controlled by the RioPort Audio Manager running on the
personal computer. Id. Appellant also argues that Kumar discloses a handset unit,
which is a stand-alone computer that connects to a network resource. Id. In
contrast, Appellant asserts that the claimed “portable audio file player” is an
intermediate device of mid-level complexity that is neither a simple device like Rio
500’s digital audio player nor a stand-alone computer like Kumar’s handset unit.
App. Br. at 8. Appellant alleges that neither Rio 500 nor Kumar teaches a device
similar to the claimed “portable audio file player”—an intermediate device that
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

16

interfaces with two other devices—the claimed “personal computer” and “different
electronic device”. Id. We do not agree with Appellant.
The Examiner relies upon Rio 500’s disclosure of connecting the digital
audio player to a personal computer (Rio 500 at 1) to teach both the claimed
“portable audio file” and “personal computer.” RAN at 23-24. In addition, the
Examiner relies upon Kumar’s docking display unit (col. 2, ll. 44-51) to teach the
claimed “different electronic device.” Id. Therefore, the Examiner’s adoption of
this obviousness rejection is based on the combination of Rio 500 and Kumar, not
Rio 500 or Kumar individually. We note that the test for obviousness is what the
combined teachings of Rio 500 and Kumar would have suggested to an ordinarily
skilled artisan. Accordingly, Appellant cannot show nonobviousness by attacking
Rio 500 and Kumar individually where the rejection is predicated on the
combination. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Consequently,
we find no error in the Examiner reliance upon the Rio 500’s audio digital player
and personal computer, in conjunction with Kumar’s docking display unit, because
the Examiner’s analysis properly accounts for the three claimed devices—(1) “a
personal computer;” (2) “a portable audio file;” and (3) “a different electronic
device.”
Moreover, we note that Kumar acknowledges that Rio’s digital audio player
fulfills the portable entertainment needs of consumers by playing MP3 compatible
audio content downloaded from the Internet. Col. 2, ll. 9-13. Further, Kumar
discloses docking a detachable handset unit or portable device into the docking
display unit. Col. 2, ll. 31-51. Because Kumar’s detachable handset unit is a
portable device similar to Rio 500’s digital audio player, we conclude that an
ordinarily skilled artisan would have readily appreciated that the Rio 500’s digital
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

17

audio player not only possesses the capability to interface with Rio 500’s personal
computer, but also possesses the capability to interface with Kumar’s docking
display unit. Therefore, contrary to Appellant’s argument, we find that Rio 500’s
digital audio player meets the claimed “portable audio player” limitation because it
amounts to an intermediate device that possesses the capability to interface with
two other devices—(1) Rio 500’s personal computer; and (2) Kumar’s docking
display unit.
Second, Appellant contends that Kumar does not teach presenting “a
selectable representation of the particular selectable icon on the [portable audio file
player’s] display” recited in claim 1 because Kumar’s docking display unit does
nothing more than replicate the display of the handset unit being docked. App. Br.
at 8. We do not agree with Appellant.
Kumar’s Figure 3 illustrates that when the detachable handset unit is docked
into the docking display unit, the video interface of the detachable handset unit
connects to the auxiliary display of the docking display unit. Col. 4, ll. 26-51.
Kumar also disclose that the detachable handset unit becomes the controller for the
entire portable device (i.e., the combined detachable handset unit and docking
display unit). Col. 5, ll. 16-19. In light of our analysis above, we conclude that an
ordinarily skilled artisan would have recognized that the Rio 500’s digital audio
player may also become the controller for Kumar’s docking display unit.
Moreover, we conclude that an ordinarily skilled artisan would have understood
that Rio’s digital audio player could present the selectable icons or equivalent
visual representations associated with song/book titles and artists (Rio 500 at 1—
Liquid Crystal Display) while docked into Kumar’s docking display unit.
Therefore, we find that the combination of Rio 500 and Kumar teaches “a
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

18

selectable representation of the particular selectable icon on the [portable audio file
player’s] display,” as recited in claim 1.
Third, Appellant contends that even if Rio 500 and Kumar were successfully
combined, the functionality of the combined system would be performed in the
wrong device. App. Br. at 9. That is, Appellant argues that the claimed
functionalities of “maintain[ing] an updatable user interface” and “modify[ing] the
updatable user interface” are performed by the claimed “portable audio file player”
and not the RioPort Audio Manager stored and run on Rio 500’s personal
computer. Id. We do not agree with Appellant.
Rio 500 discloses that the RioPort Audio Manager is software uploaded to
the personal computer. Rio 500 at 1. We find that the RioPort Audio Manager
maintains and modifies the display on Rio 500’s digital audio player (id.), such that
a prospective user can maintain menus of song/book titles and artists, and modify
such menus in connection to receiving or downloading a new audio file from Rio
500’s personal computer. Therefore, we find that that Rio 500’s digital audio
player performs the claimed functionalities of “maintain[ing] an updatable user
interface” and “modify[ing] the updatable user interface.”
Fourth, Appellant contends that Kumar teaches away from the proffered
combination. App. Br. at 9. In particular, Appellant argues that there is no reason
to add Kumar’s docking display unit to Rio 500’s digital audio player to make it
behave like a personal computer because the Rio 500 system already has a personal
computer associated therewith. Id. We do not agree with Appellant.
As explained above, the Examiner identifies Rio 500’s digital audio player
and personal computer (Rio 500 at 1) as the claimed “portable audio file” and
“personal computer,” respectively. In addition, the Examiner identifies Kumar’s
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

19

docking display unit (col. 2, ll. 44-51) as the claimed “different electronic device.”
The Examiner’s obviousness rejection adds Kumar’s docking display unit to Rio
500’s digital audio player and personal computer in order to communicate data to a
“different electronic device,” as required by claim 1. RAN at 23-24. We note that
Appellant has not pointed to an explicit disclosure within Kumar that acts to
“criticize, discredit, or otherwise discourage” docking a digital audio player, such
as Rio 500’s digital audio player, into Kumar’s docking display unit. In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Conversely, Appellant has not pointed to an
explicit disclosure within Rio 500 that acts to “criticize, discredit, or otherwise
discourage” docking Rio 500’s digital audio player into a docking station, such as
Kumar’s docking display unit. Id. Therefore, we are not convinced that Kumar
teaches away from the proffered combination just because Rio 500’s digital audio
player is already associated with a personal computer.
For the foregoing reasons, we see no error in the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a) over the combination of Rio 500 and Kumar, or
in the obviousness rejections based in whole or in part on Rio 500 and Kumar over
claims 2-10 and 21-27, which are not separately argued. App. Br. at 9-10. See 37
C.F.R. § 41.67(c)(1)(vii) (“When multiple claims subject to the same ground of
rejection are argued as a group by appellant, the Board may select a single claim
from the group of claims that are argued together to decide the appeal with respect
to the group of claims as to the ground of rejection on the basis of the selected
claim alone.”).

Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

20

C. 35 U.S.C. § 103(a) Rejection of Claims 1 and 11—Combination of Lau, Naim,
and Lee

First, Appellant contends that Lau’s mounted music server does not
constitute the claimed “portable audio file player” recited in claim 1, and similarly
recited in claim 11. App. Br. at 14. In particular, Appellant argues that the
Examiner contradicts his own definition of portable (i.e., a portable item is
generally recognized as something that is capable of being carried or moved about)
when the Examiner takes the position that Lau’s music server constitutes a
“portable audio file player” that is small enough to be mounted in the trunk of an
automobile. Id. (citing to the RAN at 14-15). Appellant asserts that mounting
Lau’s music server in the trunk of an automobile negates any size considerations
and, therefore, the music server is not portable. Id. We do not agree with
Appellant.
We begin our analysis by first considering the scope and meaning of the
claim term “portable,” which must be given its broadest reasonable interpretation
consistent with Appellant’s disclosure in the ‘926 patent. See In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) (stating that during examination “claims must be interpreted as broadly as
their terms reasonably allow”). Upon reviewing Appellant’s disclosure, we fail to
find an explicit definition for the claim term “portable.” Therefore, we look to its
ordinary and customary meaning. See Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (claim terms are “generally given their ordinary and
customary meaning”). The Examiner indicates that the ordinary and customary
meaning of the claim term “portable” is something that is capable of being carried
or moved about. RAN at 14. Appellant does not provide a definition of the claim
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

21

term “portable” that is contrary to the Examiner’s definition. We agree with the
Examiner’s broadest reasonable interpretation of the claim term “portable.” With
this claim construction in mind, we turn to the merits of Appellant’s argument that
Lau’s mounted music server is not a “portable audio file player.”
We are not persuaded that because Lau’s music server is mounted in the
trunk of a car, it negates any size considerations and, therefore, renders the music
server not portable. Lau does in fact disclose mounting the music server in the
trunk of a car. Col. 5, ll. 8-13. However, we conclude that an ordinarily skilled
artisan would have recognized that mounting Lau’s music server in the trunk of the
car necessarily involves carrying or moving the music server to the trunk of the car
before mounting it. Alternatively, we conclude that an ordinarily skilled artisan
would have appreciated that because the car carries and moves about passengers,
the car carries and moves about Lau’s music server mounted in the trunk.
Therefore, consistent with the claim construction above, we find that the Examiner
was correct in identifying Lau’s music server as the claimed “portable audio file
player.”
Second, Appellant contends that Lau’s music server lacks many of the
elements of the claimed “portable audio file player,” including “an updateable user
interface comprising a menu of selectable icons.” App. Br. at 14. In particular,
Appellant argues that there is no reason why Lau’s music server mounted in the
trunk of a car would have a display with a menu of selectable icons. Id. We do not
agree with Appellant.
Lau discloses that the music server is in communication with a head unit
mounted in the dashboard of the car. Col. 5, ll. 8-13. Further, Lau discloses that a
prospective user operates the head unit, which in turn sends commands to the
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

22

music server requesting music desired by the user. Col. 8, ll. 49-52. We conclude
that an ordinarily skilled artisan would have understood that Lau’s music server
works in conjunction with the head unit to communicate a menu of icons or
equivalent visual representations (e.g., song titles and artists) to the user for
operating purposes. Therefore, we find that Lau’s music server already has a user
interface with a menu of selectable icons associated therewith, as required by
claims 1 and 11.
Alternatively, the Examiner indicates that Naim’s Figure 1A illustrates a
portable device with a corresponding on-board display. RAN at 17. We agree
with the Examiner that an ordinarily skilled artisan would have appreciated
incorporating the on-board display in Naim’s portable device into Lau’s music
server, thereby allowing a prospective user to operate the music server using the
on-board display. See id. Moreover, we conclude that an ordinarily skilled artisan
would have appreciated that operating Lau’s music server using Naim’s on-board
display necessary encompasses displaying a menu of icons or equivalent visual
representations of song titles or artists so that the user may select a desired song
title or artist. Such a creative application of display functionality for a menu of
selectable icons is well within the level of an ordinarily skilled artisan. See KSR
Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is
also a person of ordinary creativity, not an automaton.”). Therefore, we agree with
the Examiner that the combination of Lau and Naim also teaches the claimed
“portable audio file player” that includes “an updateable user interface comprising
a menu of selectable icons.” RAN at 16-17.
Third, Appellant contends that the ‘926 patent distinguishes a Compact Disc
(“CD”) player mounted in a conventional audio system of a car from the claimed
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

23

“portable audio player.” App. Br. at 14. Appellant argues that in light of the ʾ926
specification, the broadest reasonable interpretation of that term excludes a
mounted CD player, like Lau’s music server. Id. at 14-15. We do not agree with
Appellant.
As discussed above, we agree with the broadest reasonable interpretation of
the claim term “portable” proffered by the Examiner, and therefore, agree with the
Examiner’s determination that Lau’s music server amounts to the claimed
“portable audio player.” Moreover, we note that Appellant’s reference to a
mounted CD player in the ‘926 specification does not distinguish Lau’s music
server from the claimed “portable audio file player.” While Lau discloses that the
music server emulates a disc changer—commonly referred to as a CD player—Lau
explicitly discloses that the “music server [] is not an actual disk changer.” Col. 4,
ll. 30-34. Therefore, contrary to Appellant’s argument, we find Lau’s music
server and a CD player amount to separate and distinct audio players.
Fourth, Appellant contends that Lau is only directed to a two-device system,
whereas the invention claimed in the ‘926 patent describes three devices: (1) “a
personal computer;” (2) “a portable audio file;” and (3) “a different electronic
device.” App. Br. at 15. In particular, Appellant argues because Lau’s car audio
system includes both the music server and head unit, the car audio system amounts
to a single device. Id. Therefore, Appellant asserts that Lau does not teach the
intermediate device—the portable audio file player that includes a display, as
required by claims 1 and 11. We do not agree with Appellant.
As discussed above, we agree with the Examiner’s determination that Lau’s
music server amounts to the claimed “portable audio player.” Moreover, Lau’s
Figure 1 illustrates that the head unit amounts to a standard car stereo head unit
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

24

that works in conjunction with the car’s audio system. Col. 4, ll. 27-39. Therefore,
we find that Lau’s car audio system constitutes the claimed “different electronic
device.” Further, Lau’s Figure 13 illustrates software operating on a personal
computer that allows a prospective user to create playlists, add or remove tracks
from the playlist, and configure the music server accordingly. Col. 12, l. 64-col.
13, l. 1. As such, we find that Lau teaches the claimed “personal computer.”
Therefore, contrary to Appellant’s argument, Lau is directed to a three-device
system—(1) a personal computer that connects to (2) the music server, which in
turn connects to (3) an automobile audio system via a head unit—similar to the
three-device system required by claims 1 and 11.
Fifth, Appellant contends that even if Lau, Naim, and Lee were combined,
the functionality of the combined system is performed in the wrong device. App.
Br. at 15. That is, Appellant argues that the claimed functionalities of
“maintain[ing] an updatable user interface” and “modify[ing] the updatable user
interface” are performed by the claimed “portable audio file player” and not the
Lau’s music server or Graphical User Interface (“GUI”) 1200. App. Br. at 15-16.
We do not agree with Appellant.
Lau discloses that the technology for creating and updating playlists on a
personal computer is capable of being implemented on the music server. Col. 18,
ll. 12-18. Based on that disclosure, and in light of our analysis above, we conclude
that an ordinarily skilled artisan would have understood that Lau’s music server
and corresponding head unit are capable of maintaining menus of song titles and
artists, and modifying such menus in connection with receiving playlists from
Lau’s personal computer. Therefore, Lau’s music server and corresponding head
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

25

unit perform the claimed functionalities of “maintain[ing] an updatable user
interface” and “modify[ing] the updatable user interface.”
Alternatively, we conclude that an ordinarily skilled artisan would have
appreciated that Naim’s on-board display incorporated within Lau’s music server
is also capable of maintaining menus of song titles and artists, and modifying such
menus in connection with receiving playlists from Lau’s personal computer.
Therefore, we conclude that an ordinarily skilled artisan would have recognized
that Naim’s on-board display incorporated within Lau’s music server also performs
the claimed functionalities of “maintain[ing] an updatable user interface” and
“modify[ing] the updatable user interface.”
For the foregoing reasons, we are not persuaded of error in the Examiner’s
rejection of claims 1 and 11 under 35 U.S.C. § 103(a) over the combination of Lau,
Naim, and Lee , or in the obviousness rejections based in whole or in part on Lau,
Naim, and Lee over claims 2-10 and 12-37, which are not separately argued. App.
Br. at 16-17. See 37 C.F.R. § 41.67(c)(1)(vii).
D. Secondary Considerations of Nonobviousness—Commercial Success
We are not persuaded by Appellant’s argument that the White Declaration
provides objective evidence of nonobviousness because the “ecosystem” provided
by Apple iTunes and iPod environment is commercially successful. App. Br. at
29-30. When commercial success is asserted to support nonobviousness, there
must be a nexus (i.e., a legally and factually sufficient relationship) between the
commercial success and the claimed invention. Demaco Corp. v. F. Von
Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). Such evidence,
however, “must be commensurate in scope with the claims which the evidence is
offered to support.” In re Tiffin, 448 F.2d 791, 792 (CCPA 1971).
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

26

The White Declaration falls short of establishing the required nexus in
several respects. First, the Declaration fails to establish that the commercial
success of Apple’s “ecosystem” is directly attributable or even infringes claims 1
and 11 in the ‘926 patent. Even assuming, as Mr. White asserts, that Apple’s
ecosystem is covered by the scope of the claims 1 and 11 in the ‘926 patent, there
is insufficient evidence on the record that Apple’s commercial success is based on
the claim limitations explicitly recited in claim 1 and similarly recited in claim
11—namely (1) “a personal computer;” (2) “a portable audio file;” and (3) “a
different electronic device.” Second, we note that Mr. White does not discuss any
advertising, promotion, or other factors that may contribute to the commercial
success of Apple’s “ecosystem.” For instance, Mr. White references Exhibit K in
the Declaration at ¶ 13. Exhibit K is a magazine article that attributes the
commercial success of Apple’s ecosystem at least in part to “striking new deals
with copyright holders and leveraging the tight integration with iTunes.” Exhibit
K at 2. Based on the totality of the record before us, we conclude that the objective
evidence of nonobviousness presented by Appellant does not outweigh the
evidence of obviousness relied upon by the Examiner. Therefore, we will sustain
the obviousness rejections of claims 1-37 discussed above.
E. Remaining Obviousness Rejections
Our affirmance of the obviousness rejections of claims 1-10 and 21-27 based
in whole or in part on Rio 500 and Kumar, and claims 1-37 based in whole or in
part on Lau, Naim, and Lee, renders it unnecessary to reach the Examiner’s
obviousness rejections of the same claims on a different basis. Cf. In re Gleave,
560 F.3d at 1338 (not reaching other rejections after affirming an anticipation
Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

27

rejection). Therefore, we do not reach the merits of the remaining obviousness
rejections of claims 1-37 adopted, adopted-in-part, or maintained by the Examiner.

III. CONCLUSIONS
The Examiner did not err in adopting, adopting-in-part, or maintaining the
rejection of claims 1-10 and 21-27 under 35 U.S.C. § 103(a) based in whole or in
part on Rio 500 and Kumar. The Examiner did not err in adopting, adopting-in-
part, or maintaining the rejection of claims 1-37 under 35 U.S.C. § 103(a) based in
whole or in part on Lau, Naim, and Lee.

IV. DECISION
The Examiner’s decision to adopt, adopt-in-part, or maintain the
obviousness rejections of claims 1-37 of the ‘926 patent is affirmed.
Requests for extensions of time in inter partes reexamination proceedings
are governed by 37 C.F.R. § 1.956. See also 37 C.F.R. § 41.79(e) (“The times for
requesting rehearing under paragraph (a) of this section, for requesting further
rehearing under paragraph (c) of this section, and for submitting comments under
paragraph (b) of this section may not be extended.”).

AFFIRMED

Appeal 2012-010420
Reexamination Control 95/001,263
U.S. Patent No. 7,486,926 B2

28

For Patent Owner:

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

For Third Party Requester:

NOVAK DRUCE & QUIGG, LLP
1000 LOUISIANA ST.
53RD FLOOR
HOUSTON, TX 77002