Ex Parte Vidal et al

Board of Patent Appeals and Interferences

Sep 28, 2009

10996329 (B.P.A.I. Sep. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TECHSEARCH, LLC,
Appellant and Patent Owner
____________

Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
Patent 6,215,754 B1
Technology Center 2600
____________

Decided: September 28, 2009
____________

Before KENNETH W. HAIRSTON, SCOTT R. BOALICK, and KEVIN F.
TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
TechSearch, LLC1 appeals under 35 U.S.C. §§ 134(b) from a final
rejection of claims 1-9, 85-92, 107-113, 134, and 135 in the first reissue
application2, and from a final rejection of claims 10-22, 31-84, 93-106, 114-

1 TechSearch, LLC is the real party in interest and the current owner of the
patent under reexamination. Appellant’s Reply Brief indicates that
TechSearch, LLC is a wholly-owned subsidiary of Acacia Global
Acquisitions, LLC (Reply Br. 1; both cases).
2 Reissue application 10/409,700, see below.
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

2
125, and 132-134 in the second reissue application.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
This proceeding arose, in part, from a Director Initiated Order for
Reexamination, Reexamination Control 90/006,170, mailed January 24,
2002, of United States Patent 6,215,754 B1 (“'754 Patent”) issued to Joel
Vidal and Ari Krashin on April 10, 2001, based on United States
Application 09/000,743 filed December 30, 1997.
This proceeding also arose from reissue applications 10/409,700
(“'700 Application”), filed April 9, 2003, and 10/996,329 (“'329
Application”), filed November 24, 2004, where the reexamination and the
latter reissue applications were merged into the first reissue application. Per
the Decision Merging the reexamination and reissue proceedings, mailed
May 26, 2005, the merged examination was to be conducted on the basis of
the rules relating to the broader, reissue application examination, with the
Examiner applying the reissue statute, rules, and case law to the merged
proceeding. Also per that Decision, prosecution of the reissue applications
was to be conducted independently, but simultaneously.4 As such, this

3 Reissue application 10/996,329, see below.
4 That same decision also indicated that the reexamination file should remain
dormant so that no papers would be made of record in that file. As such,
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

3
appeal has two sets of Briefs and Answers, and we address the issues in each
of the '700 and '329 applications separately.
Because of the multiple Briefs and Answers, we use the following
nomenclature in reference thereto:
'700 Application:
Appeal Brief filed Jun. 7, 2007 “App. Br. I”
Answer mailed Jun. 24, 2008 “Ans. I”
Reply Brief filed Aug. 25, 2008 “Reply Br. I”
'329 Application:
Appeal Brief filed Jun. 7, 2007 “App. Br. II”
Answer mailed Ju1. 1, 2008 “Ans. II”
Reply Brief filed Sep. 2, 2008 “Reply Br. II”
Patentee’s invention relates to a high capacity compact disk (CD)
player, where the player includes an integrated circuit chip which can
decompress Moving Picture Expert Group (MPEG) Layer-3 digital audio
data in real time and produces a non-compressed audio output (Spec. col. 2,
ll. 7-18). In alternate embodiments, the player is a personal CD player not
associated with a personal computer (id. at col. 5, ll. 21-26) and a method is
disclosed for playing MPEG Layer-3 recordable CDs (id. at col. 5, ll. 1-4).
In addition, a CD recording system is disclosed which reads audio data from
a conventional CD, compresses those data and writes the same to a
recordable CD in another drive (id. at col. 5, l. 50 – col. 6, l. 3).

there are no issues raised with respect to the reexamination.
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

4
'700 Application
Claims 1-9, 85-92, 107-113, 134, and 135 are pending in this
application. Independent claims 1, 85 and 107, which we deem to be
representative, read as follows:
1. A CD player, comprising:
a CD drive, which receives a CD and reads MPEG
Layer-3 compressed digital audio data recorded thereon;
and
an integrated circuit chip, which decompresses the
MPEG Layer-3 compressed data in real time and
produces a non-compressed audio output.

85. A CD player that does not comprise a
personal computer, comprising:
a CD drive, which receives a CD and reads MPEG
Layer-3 compressed digital audio data recorded thereon;
and
an integrated circuit chip, which decompresses the
MPEG Layer-3 compressed data in real time and
produces a non-compressed audio output;
wherein, said CD player can play both
conventional CDs and MPEG Layer-3 CDs.

107. A method for playing an MPEG Layer-3
recordable CD, comprising:
reading MPEG Layer-3 compressed digital audio
data from the CD;
decompressing the MPEG Layer-3 compressed
data in real time using an integrated circuit chip;
converting the resulting decompressed data to
analog form; and
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

5
wherein, said chip can produce non-compressed
audio output from both said MPEG Layer-3 recordable
CD and a conventional audio CD.

'329 Application
Claims 10-22, 31-84, 93-106, 114-125, and 132-134 are pending in
this application. Independent claims 10 and 64, which we deem to be
representative, read as follows:
10. A CD recording system, comprising:
a read drive, which receives and reads a first CD
having audio data recorded thereon;
compression circuitry, which receives and
compresses the audio data from the read drive by MPEG
Layer-3 compression in real time; and
a write drive, which receives the audio data
compressed by MPEG Layer-3 compression and records
the audio data compressed by MPEG Layer-3
compression on a second, recordable CD.

64. A portable CD player, comprising:
a read drive, which receives and reads a first CD
having audio data recorded thereon;
compression circuitry, which receives and
compresses the audio data from the read drive by MPEG
Layer-3 compression in real time; and
a write drive, which receives the audio data
compressed by MPEG Layer-3 compression and records
the audio data compressed by MPEG Layer-3
compression on a second, recordable CD.

Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

6
The prior art references relied upon by the Examiner in rejecting the
claims in both applications are:
Cabler 5,442,309 Aug. 15, 1995
Yonemitsu 5,734,787 Mar. 31, 1998
Dockes 5,959,944 Sep. 28, 1999
Takagi 6,115,337 Sep. 5, 2000

Witte et al., “Single Chip Implementation of an ISO/MPEG Layer III
Decoder” 96th Convention of the Audio Engineering Society, Feb. 26 –
Mar. 1, 1994 (hereinafter “Witte”).

The Examiner references Appellant’s discussion of the prior art in the
issued patent (Spec. col. 1, ll. 9-51) as admitted prior art (“APA-I”) in the
prior art rejections in both applications. Additionally, the Examiner
references, in the '329 Application, the known MPEG Layer-3 encoding
discussed in the issued patent (id. at col. 5, l. 57 – col. 6, l. 3) as admitted
prior art (“APA-II”).

'700 Application
The Examiner rejected claims 85-92 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement; rejected
claims 1-9, 85-92, 107-113, 134, and 135 under 35 U.S.C. § 103(a) as
unpatentable over Witte and Cabler; rejected claims 1-7, 107-109, 113, 134,
and 135 under 35 U.S.C. § 103(a) as unpatentable over APA-I and Witte;
rejected claims 8, 9, and 110-112 under 35 U.S.C. § 103(a) as unpatentable
over APA-I, Witte and Takagi; rejected claims 1-7, 107-109, 113, 134, and
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

7
135 under 35 U.S.C. § 103(a) as unpatentable over Yonemitsu and Witte;
and rejected claims 8, 9, and 110-112 under 35 U.S.C. § 103(a) as
unpatentable over Yonemitsu, Witte, and Takagi (Ans. I 3-10).

'329 Application
The Examiner rejected claims 38-42, 49-56, 64-68, and 75-82 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement; rejected claims 10-20, 93-96, 100-102, 114-116,
120-122, and 134 under 35 U.S.C. § 103(a) as unpatentable over Yonemitsu
and Witte; rejected claims 21, 22, 31-84, 97-99, 103-106, 123, 124, 132, and
133 under 35 U.S.C. § 103(a) as unpatentable over Yonemitsu, Witte, and
Takagi; rejected claims 10-20, 93-96, 100-102, 114-116, and 120-122 under
35 U.S.C. § 103(a) as unpatentable over APA-I and Witte; rejected claims
21, 22, 31-84, 97-99, 103-106, 123, 124, and 132-134 under 35 U.S.C. §
103(a) as unpatentable over APA-I, Witte and Takagi; and rejected claims
10-14 under 35 U.S.C. § 103(a) as unpatentable over APA-II (Ans. II 3-12).5

In both applications, Appellant relied upon the following, submitted in
each application, in rebuttal to the Examiner’s rejections:
Supplemental Declaration under 37 C.F.R. § 1.132 of John Snell, executed

5 Rejections were also made to claims 23-30, 126-131, and 135, applying
Dockes, where those claims were cancelled by Appellant in an Amendment
dated November 20, 2008, approved and entered by the Examiner, per the
Communication mailed February 10, 2009.
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

8
July 10, 2006 (App. Br. I & II, Evidence App’x, Exhibit A) (“Snell Decl.”).
Declaration under 37 C.F.R. § 1.132 of Anthony O. Brown, executed August
11, 2002 (App. Br. I & II, Evidence App’x, Exhibit B) (“Brown Decl.”).

ISSUES
'700 Application
Appellant contends that the Examiner’s rejections are in error because
the rejected claims satisfied the enablement requirement of §112 at the time
of filing (App. Br. I 4). Appellant argues that the special purpose chips were
known, cites Snell’s Declaration, and indicates that programming a chip
with the disclosed software instructions would have been enabled (App. Br. I
4-6). The Examiner argues that such use would not have been enabled by
the originally filed Specification (Ans. I 4).
Appellant argues that the chip disclosed in Witte was directed to be
used in personal computers, does not disclose the use of the chip in a
portable or non-computer device, or decompression in real-time (App. Br. I
11-12). Appellant further argues that there would have been no motivation
to combine Witte and Cabler because Witte fails to appreciate home stereo
or portable applications and is directed to use in personal computers only
(App. Br. I 13-16). The Examiner finds that Witte does not disclose use of
the chip only in a personal computer or exclude the use of the chip in
portable devices (Ans. I 11).
Appellant also argues that the background of the '754 patent does not
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

9
describe a CD player capable of playing CDs with MPEG Layer-3 data, and
argues that APA-I is limited to use of a hard drive, reading uncompressed
data, and does not disclose the use of an integrated circuit chip (Reply Br. I
15-16). The Examiner finds that since APA-I discloses the use of a CD
player, portable devices and decoding and encoding MPEG Layer-3 data, the
incorporation of Witte therein would have been obvious (Ans. I 12).
Appellant also argues that Takagi fails to cure the deficiencies of
APA-I and Witte (App. Br. I 18-19) or the deficiencies of Yonemitsu and
Witte (App. Br. I 22). Appellant argues that Yonemitsu is concerned with
deficiencies of conventional CDs and is solely focused on computer
applications including DVDs (App. Br. I 20). Appellant also argues that
neither Yonemitsu nor Witte make obvious the CD player embodiments of
the claimed invention (id.).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the briefs have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are:
1a) Has Appellant shown reversible error in the Examiner’s
determination that claims 85-92 fail to comply with the enablement
requirement under 35 U.S.C. § 112, first paragraph?
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

10
1b) Has Appellant shown reversible error in the Examiner’s
determination that claims 1-9, 85-92, 107-113, 134, and 135 are obvious
over Witte and Cabler?
1c) Has Appellant shown reversible error in the Examiner’s
determination that claims 1-7, 107-109, 113, 134, and 135 are obvious over
APA-I and Witte?
1d) Has Appellant shown reversible error in the Examiner’s
determination that claims 8, 9, and 110-112 are obvious over APA-I, Witte
and Takagi?
1e) Has Appellant shown reversible error in the Examiner’s
determination that claims 1-7, 107-109, 113, 134, and 135 are obvious over
Yonemitsu and Witte?
1f) Has Appellant shown reversible error in the Examiner’s
determination that claims 8, 9, and 110-112 are obvious over Yonemitsu,
Witte, and Takagi?

'329 Application
Appellant contends that the Examiner’s rejections are in error because
the rejected claims are supported by the Specification as filed (App. Br. II
8). Specifically, Appellant argues that the rejection is improper because the
Specification presents each of the features in a non-limiting way and the
limitations as claimed are within the metes and bounds of the Specification
(App. Br. II 9). The Examiner finds that the standard is not whether it would
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

11
have been obvious in view of the Specification, and that all recitations in the
Specification using a MPEG Layer-3 encoded CD in a home entertainment,
portable CD player, or automobile entertainment reproducing apparatus do
not involve a recording apparatus (Ans. II 12-13).
Appellant also argues that the computer-based focus of Yonemitsu is
the same as that of Witte, such that there is no suggestion a system that
would use conventional CDs or recordable/writable CDs (App. Br. II 16).
Appellant also argues that Yonemitsu teaches away from the instant
invention because it describes the disadvantages of standard CDs (id.).
Appellant also insists that neither Yonemitsu nor Witte mentions playing
compressed music on a home stereo or portable system, and that Yonemitsu
is directed to disks that are more like DVDs than conventional CDs (App.
Br. II 17). The Examiner finds that Appellant has not provided any
meaningful distinctions in the optical disks of Yonemitsu that would
distinguish them from “conventional CDs,” and that Yonemitsu is not solely
focused on computer-based applications (Ans. II 14-15).
Appellant argues that the combination of Yonemitsu, Witte, and
Takagi would not have been obvious because nothing in Yonemitsu and
Witte would make them obvious for use in a portable CD player, and that the
combination is motivated by impermissible hindsight (App. Br. II 20).
Appellant also argues that Witte teaches away from use with the portable
device of Takagi (Reply Br. II 16).
Appellant argues that APA-II does not indicate that a CD recording
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

12
system includes a read drive, compression circuitry, and a write drive is
known in the art (Reply Br. II 23). While Appellant acknowledges that
APA-II details that MPEG Layer-3 encoding is known in the art, Appellant
argues that the rest of the components of claim 10 are not detailed therein as
being prior art (id.).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the briefs have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are:
2a) Has Appellant shown reversible error in the Examiner’s
determination that claims 38-42, 49-56, 64-68, and 75-82 fail to comply with
the written description requirement under 35 U.S.C. § 112, first paragraph?
2b) Has Appellant shown reversible error in the Examiner’s
determination that claims 10-20, 93-96, 100-102, 114-116, 120-122, and 134
are obvious over Yonemitsu and Witte?
2c) Has Appellant shown reversible error in the Examiner’s
determination that claims 21, 22, 31-84, 97-99, 103-106, 123, 124, 132, and
133 are obvious over Yonemitsu, Witte, and Takagi?
2d) Has Appellant shown reversible error in the Examiner’s
determination that claims 10-20, 93-96, 100-102, 114-116, and 120-122 are
obvious over APA-I and Witte?
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

13
2e) Has Appellant shown reversible error in the Examiner’s
determination that claims 21, 22, 31-84, 97-99, 103-106, 123, 124, and 132-
134 are obvious over APA-I, Witte and Takagi?
2f) Has Appellant shown reversible error in the Examiner’s
determination that claims 10-14 are obvious over APA-II?

FINDINGS OF FACT
Specification of the '754 Patent
1. The Specification of the '754 Patent describes a high capacity
compact disk (CD) player, where the player includes an integrated
circuit chip which can decompress MPEG Layer-3 digital audio
data in real time and produces a non-compressed audio output
(Spec. col. 2, ll. 7-18). In alternate embodiments, the player is a
personal CD player not associated with a personal computer (id. at
col. 5, ll. 21-26) and a method is disclosed for playing MPEG
Layer-3 recordable CDs (id. at col. 5, ll. 1-4).
2. The Specification of the '754 Patent describes the MPEG standards
for encoding audio signals, including Layer-3, which provides a
10- to 12-fold compression of the uncompressed digital audio data
(id. at col. 1, ll. 20-34).
3. The Specification of the '754 Patent also describes that “MPEG
Layer-3 audio encoding is also available for use in computers,
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

14
network-based radio, and other applications that require large
audio signal data bases” (id. at col. 1, ll. 41-44).
4. The Specification of the '754 Patent describes a prior art digital
portable stereo headphone player for recording and playback of
compressed audio data on a mini-disk (id. at col. 1, ll. 52-54).
5. The Specification of the '754 Patent also provides that methods of
real-time decoding of MPEG Layer-3 digital audio data are known
in the art (id. at col. 5, ll. 35-36).

Witte
6. Witte describes the implementation of an ISO/MPEG IS-11172
Layer III decoder on a single MASC 3500 chip that is “well suited
for consumer applications” (Witte 1, Abstract; Fig. 1).
7. Witte discloses that the decoder based on the MASC 3500 may be
used in different environments, including controlled by a micro-
controller, where it acts as a stand alone chip to convert
compressed audio data received from a digital data transmission
(Witte 5-6, Application Examples; Fig. 10).

Yonemitsu
8. Yonemitsu is directed to an optical disk having a particular format
to store user-selected data (Yonemitsu Abstract). Comparing the
disclosed format of the optical disk to a conventional audio CD,
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

15
the recording capacity of the disclosed disk is 5.5 times the
recording capacity of an audio CD (Yonemitsu col. 6, ll. 57-67).
The process of creating a master disk to allow for the creation of
copies thereof is also disclosed (id. at col. 9, ll. 8-13).
9. Yonemitsu discloses that video data are recorded as compressed
video data, and that audio data are compressed according to MPEG
or other developed formats on optical disks (id. at col. 31, l. 62 –
col. 32, l. 15).

Takagi
10. Takagi is directed to a vibration-resistant playback device which
reduces the number of read returns and power consumption
compared to prior devices. The device is disclosed to be
applicable to portable and mobile playback devices of optical
information media (Takagi col. 1, ll. 6-14).

Cabler
11. Cabler is directed to a low distortion output stage that is usable
with personal computers, compact disk players, and other portable
audio devices in high quality, low power audio applications
(Cabler col. 1, ll. 6-13).

Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

16
Snell Decl.
12. Snell declares that prior to the '754 patent, is was not possible to
play MPEG Layer-3 compressed audio files on a home stereo or
mobile audio CD player, and that a consumer only recorded MPEG
Layer-3 files for playback on a computer (Snell Decl. ¶ 9).
13. Snell alleges that it was not obvious that consumers would
appreciate MPEG Layer-3 compresses audio in a home stereo
environment before the '754 patent and speculates about the
motivations of the inventors of the '754 patent (id. at ¶ 13).
14. Snell declares that it was well understood by those of ordinary skill
in the art that custom chips could be implemented which would be
able to perform the functions of a given piece of software in
portable or stationary devices (id. at ¶ 34).
15. Snell also declares that MPEG Layer-3 playback is a significant
selling point for any consumer device capable of CD music
playback and declares it has become a critical feature (id. at 38).

Brown Decl.
16. Brown declares that the licensing of the '754 patent has occurred
with various major consumer-electronics manufacturers and
estimates that at least forty percent of the major-brand MP3-CD
players were sold by those licensees in 2001 (Brown Decl. ¶¶ 1-6).

Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

17
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). Id. at 419 (“The
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents.”).

ANALYSIS
'700 Application
Rejection under 35 U.S.C. § 112, first paragraph
claims 85-92
Appellant argues that the rejected claims satisfied the enablement
requirement of §112 at the time of filing (App. Br. I 4). Appellant argues
that the special purpose chips were known, cites Snell’s Declaration (Snell
Decl. ¶¶ 34-37), and indicates that programming a chip with the disclosed
software instructions would have been enabled (App. Br. I 4-6). The
Examiner argues that “[t]he specification must clearly state that the portable
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

18
CD is used in a home entertainment unit, a car . . . etc and not in terms of
whether it would have been obvious to one of ordinary skill in the art” (Ans.
I 10), although the Examiner’s rejection recites that “the use of the ‘chip’
within a portable device is not within the level of ordinary skill in the art
without undue experimentation” (Ans. I 4). It appears that the Examiner is
confusing the enablement and written description requirements, because
Appellant has shown that producing a special purpose chip encoded with the
disclosed software was within the ordinary level of skill in the art. We do
not find that implementing a chip to be used in a portable device requires
undue experimentation. As such, we find this rejection to have been made in
error.

Obviousness Rejections in View of Secondary Considerations
With respect to the rejections under §103, Appellant argues that both
commercial success and industry recognition have been proven, establishing
nonobviousness through the remarks provided in the Declarations (App. Br.
I 9-10; App. Br. II 11-12). Appellant argues that “[l]icenses are among the
most compelling evidence of non-obviousness,” especially since they were
taken during the pendency of the present applications (App. Br. I 9; App. Br.
II 11). We do not agree.
The Federal Circuit specifically requires affirmative evidence of
nexus where the evidence of commercial success presented is a license,
because it is often “cheaper to take licenses than to defend infringement
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

19
suits.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir.
1985). Without a showing of nexus, “the mere existence of . . . licenses is
insufficient to overcome the conclusion of obviousness” when there is a
strong prima facie case of obviousness. SIBIA Neurosciences, Inc. v. Cadus
Pharm. Corp., 225 F.3d 1349, 1358 (Fed. Cir. 2000). In the instant case,
Appellant has failed to show a nexus between the licenses and the claimed
invention. While Brown discusses his belief that the licensees recognized
that their products were covered by the instant claims (Brown Decl. ¶ 5), we
find this to be mere speculation. In addition, given that a majority of the
listed licenses were the result of litigation by Appellant, there may be other
factors, unrelated to the claims, which resulted in the parties taking those
licenses. Without the showing of a nexus, the fact that the Appellant is still
apparently licensing the '754 patent has no greater currency.
Appellant also argues that the Declaration by Snell shows that the
MPEG Layer-3 CD playback has become a significant selling point for any
consumer device capable of CD music playback (App. Br. I 10; App. Br. II
12). However, we find Snell’s declaration, at least in this regard, to be
speculative, offering hypotheticals, i.e. “[t]he MPEG Layer-3 CD playback
feature was one of the features used to drive demand of new CD and DVD
players in 2002,” without any supporting evidence (Snell Decl. ¶ 38). While
Mr. Snell argues that it is presently a “critical feature,” we do not find his
remarks to be dispositive of commercial success sufficient to overcome a
prima facie case of obviousness.
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

20

Rejection over Witte and Cabler
claims 1-9, 85-92, 107-113, 134, and 135
Appellant argues that the chip disclosed in Witte was directed to be
used in personal computers (App. Br. I 11), and does not disclose the use of
the chip in a portable or non-computer device, or decompression in real-time
(App. Br. I 12). Appellant further argues that there would have been no
motivation to combine Witte and Cabler because Witte fails to appreciate
home stereo or portable applications and is directed to use in personal
computers only (App. Br. I 13-16). The Examiner finds that Witte does not
disclose use of the chip only in a personal computer or exclude the use of the
chip in portable devices (Ans. I 11). We generally agree with the Examiner.
Witte discloses that the application of its chip can be made to
consumer applications (FF 6) and in different environments, controlled by a
microcontroller (FF 7). We do not find Witte as being limited solely to the
environment of a personal computer and we do not find stipulations therein
that suggest that it could not be used in portable devices. As such, we do not
find that Witte “teaches away” from a combination with Cabler, as alleged
by Appellant (Reply Br. I 12). Cabler clearly provides for portable audio
devices, and the use of the chip in Witte in such a portable device would
have been an obvious modification. This modification is nothing more than
the simple substitution of one known element for another, or the mere
application of a known technique to a piece of prior art ready for the
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

21
improvement. See KSR, 550 U.S. at 417. Accordingly, we find this
argument unpersuasive.
And while Appellant is correct that “it is well-known that a PC and
CD player utilize very different chips” (Reply Br. I 12), that does not
address whether one of ordinary skill in the art would have been motivated
to provide a similarly functioning chip in a portable device, such as the one
disclosed in Cabler. Declarant Snell says as much (FF 14). In addition,
while Witte may not disclose the real-time decompression of MPEG Layer-3
data, Appellant has previously acknowledged that methods of real-time
decoding of MPEG Layer-3 digital audio data are known in the art (FF 5).
As such, we find the operation of the chip in Witte performing its function in
real-time to be an obvious variation, as identified by the Examiner (Ans. I
10-11).

Rejection over APA-I and Witte
claims 1-7, 107-109, 113, 134, and 135
With respect to this rejection, Appellant initially asserts that the
background of the '754 patent does not describe a conventional CD having
MPEG Layer-3 data encoded thereon (App. Br. I 16), but later clarifies that
“the background of the '754 patent does not describe a CD player capable of
playing CDs with MPEG Layer-3 data” (Reply Br. I 15). Appellant also
discusses the differences between CD and DVD players (App. Br. I 17) and
argues that APA-I is limited to use of a hard drive, reading uncompressed
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

22
data and does not disclose the use of an integrated circuit chip (Reply Br. I
15-16). The Examiner finds that since APA-I discloses the use of a CD
player, portable devices, and decoding and encoding MPEG Layer-3 data,
the incorporation of Witte therein would have been obvious (Ans. I 12). We
agree with the Examiner.
We agree with the Examiner that the background of the '754 patent
discloses the MPEG standards for encoding audio signals, its use in other
applications, CD players, and digital portable headphone players (FF 2-4).
Appellant’s clarification in the Reply Brief points out that MPEG Layer-3
encoded CDs were known at the time the application for the '754 patent was
filed. Taken together, we agree with the Examiner that the APA-I discloses
all of the elements of claims 1 and 107, save the use of an integrated circuit
chip for audio data reduction or compression (Ans. I 6). As we found supra,
Witte discloses such a chip and we find the integration of such a chip into
the APA-I would have been the mere application of a known technique to a
piece of prior art ready for the improvement. As such, we find no error in
the Examiner’s rejection.
Appellant also argues that even if the APA-I disclosed a CD player for
playing compressed data, Witte is focused on a single chip for incorporation
within a larger PC-based system (Reply Br. I 17). However, as discussed
supra, we do not find Witte to be so limited and similarly find the
combination of Witte with the APA-I to be obvious.

Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

23
Rejection over APA-I, Witte and Takagi
claims 8, 9, and 110-112
With respect to this rejection, Appellant argues that Takagi fails to
cure the deficiencies of APA-I and Witte (App. Br. I 18-19). Since we do
not agree with Appellant as to those deficiencies, this argument is
immaterial. Appellant also argues that Takagi fails to teach or suggest
playback in real-time and that Takagi fails to disclose compression or
decompression under the MPEG Layer-3 standard (App. Br. I 19).
However, since those aspects are acknowledged by Appellant to be generally
known in the prior art (FF 2, 5), we find Appellant's allegation that Takagi
does not teach or suggest those aspects to be no detriment to the rejection.
As such, we do not find Appellant’s arguments to be compelling.

Rejection over Yonemitsu and Witte
claims 1-7, 107-109, 113, 134, and 135
Appellant argues that Yonemitsu is concerned with deficiencies of
conventional CDs and is solely focused on computer applications including
DVDs (App. Br. I 20). Appellant argues that neither Yonemitsu nor Witte
make obvious the CD player embodiments of the claimed invention (id.).
However, Yonemitsu does disclose the use of conventional disks (FF 8),
although that is not the focus of that patent, and inherently discloses players
of those conventional disks. Yonemitsu also discloses that audio data can be
compressed according to MPEG formats (FF 9), and taken with Appellant’s
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

24
acknowledgement that MPEG Layer-3 encoded CDs were known at the time
the application for the '754 patent was filed, as discussed supra, the use of
MPEG Layer-3 encoded CDs in the system of Yonemitsu would have been
obvious in that timeframe. Taken with Witte, the use of a single chip to
accomplish the same would have been obvious, as found in the rejection. In
addition, we agree with the Examiner’s definition of “recordable CD” (Ans.
I 8) and find it reasonable in the context of the instant claims.
In addition, Appellant argues that Yonemitsu is directed to a new form
of optical disk and fails to describe conventional CDs or recordable/
writeable CDs for MPEG Layer-3 compression and teaches away from the
use of conventional CDs (App. Br. I 20-21). We cannot agree with
Appellant that Yonemitsu teaches away from Witte or the instant claims, as
we do not find that Yonemitsu disparages conventional CDs and, indeed,
Yonemitsu would likely seek compatibility with the same. While
Yonemitsu might clearly have a preference for the format disclosed in that
reference, we do not find that Yonemitsu teaches away. As such, we find no
error in the rejection.

Rejection over Yonemitsu, Witte, and Takagi
claims 8, 9, and 110-112
With respect to this rejection, Appellant repeats the arguments made
against the combination of the APA-I, Witte and Takagi (App. Br. I 22). We
find them no more compelling with respect to this latter combination.
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

25

'328 Application
Rejection under 35 U.S.C. § 112, first paragraph
claims 38-42, 49-56, 64-68, and 75-82
Appellant argues that the rejected claims are supported by the
Specification as filed (App. Br. II 8). Specifically, Appellant argues that the
rejection is improper because the Specification presents each of the features
in a non-limiting way and the limitations as claimed are within the metes and
bounds of the Specification (App. Br. II 9). The Examiner finds that the
standard is not whether it would have been obvious in view of the
Specification, and that all recitations in the Specification using a MPEG
Layer-3 encoded CD in a home entertainment, portable CD player, or
automobile entertainment reproducing apparatus do not involve a recording
apparatus (Ans. II 12-13). We agree with the Examiner.
Appellant’s arguments point out the distinction, as Appellant
references “CD player” and “CD recording system” separately (App. Br. II
9) such that it is clear that they are directed to separate disclosed
embodiments. While it is clear that the “CD recording system” would have
a write feature and an encoder, such a system is not disclosed as being used
in a portable device, an automobile, or a home entertainment system. While
Appellant may be correct that providing a write feature in such system
would have been obvious, that does not necessarily satisfy the written
description requirement. As such, we agree with the Examiner that the
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

26
disclosure does not convey that the recording system is incorporated within a
portable or automobile entertainment unit as claimed. Thus, we do not find
Appellant’s argument to be compelling and we find no error in the rejection.

Rejection over Yonemitsu and Witte
claims 10-20, 93-96, 100-102, 114-116, 120-122, and 134
Appellant argues that the computer-based focus of Yonemitsu is the
same as that of Witte, such that there is no suggestion in either of a system
that would use conventional CDs or recordable/writable CDs (App. Br. II
16). Appellant also argues that Yonemitsu teaches away from the instant
invention because it describes the disadvantages of standard CDs (Id.).
Appellant also insists that neither Yonemitsu nor Witte mentions playing
compressed music on a home stereo or portable system, and that Yonemitsu
is directed to disks that are more like DVDs than conventional CDs (App.
Br. II 17). The Examiner finds that Appellant has not provided any
meaningful distinctions in the optical disks of Yonemitsu that would
distinguish them from “conventional CDs,” and that Yonemitsu is not solely
focused on computer-based applications (Ans. II 14-15). We generally
agree with the Examiner.
Yonemitsu does disclose the use of conventional disks (FF 8),
although that is not the focus of that patent, and inherently discloses players
and recorders of those conventional disks. We disagree with Appellant’s
argument that Yonemitsu and Witte are focused solely on personal
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

27
computer-based applications, as we have discussed supra (FF 6-8). We
agree with the Examiner’s definition of “recordable CD” (Ans. II 6) and find
it reasonable in the context of the instant claims.
We also cannot agree with Appellant that Yonemitsu teaches away
from Witte or the instant claims, as we do not find that Yonemitsu
disparages conventional CDs and, indeed, Yonemitsu would likely seek
compatibility with the same. While Yonemitsu might clearly have a
preference for the format disclosed in that reference, we do not find that
Yonemitsu teaches away.
In addition, Appellant also argues that Yonemitsu and Witte fail to
disclose or render obvious reading from a first drive and recording to a
second (App. Br. II 17-19; Reply Br. II 12-13). However, we agree with the
Examiner (Ans. II 4) that Yonemitsu discloses a recording operation by
reading data from a master disk and recording data onto a CD (FF 8). As
such, we do not find that Appellant has shown that the Examiner erred with
respect to this rejection.

Rejection over Yonemitsu, Witte, and Takagi
claims 21, 22, 31-84, 97-99, 103-106, 123, 124, 132, and 133
With respect to this rejection, Appellant repeats many of the same
arguments with respect to Takagi addressed above, which we do not find to
be compelling. In addition, Appellant argues that the combination of
Yonemitsu, Witte, and Takagi would not have been obvious because nothing
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

28
in Yonemitsu and Witte would make them obvious for use in a portable CD
player, and the combination is motivated by impermissible hindsight (App.
Br. II 20). Appellant also argues that Witte teaches away from use with the
portable device of Takagi (Reply Br. II 16). As discussed supra, we do not
find Witte to be confined to use in a personal computer (FF 6, 7) and we do
not find that Witte teaches away from use of its chip in mobile applications.
Takagi provides the basis that portable CD players were available and we
find the Examiner’s motivation (Ans. II 10) to be both sufficient and not
guided by impermissible hindsight. Thus, we do not find Appellant’s
argument to be compelling and we find no error in the rejection.

Rejection over APA-I and Witte
claims 10-20, 93-96, 100-102, 114-116, and 120-122
With respect to this rejection, Appellant repeats many of the same
arguments with respect to APA-I and Witte addressed above, which we do
not find to be compelling. In addition, Appellant incorporates the arguments
made against Yonemitsu and Witte discussed above (App. Br. II 23-24). We
do not find these arguments to be any more availing against APA-I and
Witte than we did against Yonemitsu and Witte. In addition, separate from
the arguments made against this rejection in the '700 Application, Appellant
also argues that APA-I fails to disclose or render obvious reading from a
first drive and recording to a second (App. Br. II 24-25; Reply Br. II 18-19).
However, we agree with the Examiner (Ans. II 7-9) that any recording
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

29
system would have to be able to read from one source and write to some
medium to produce a recording. As such, we do not find that Appellant has
shown that the Examiner erred with respect to this rejection.

Rejection over APA-I, Witte and Takagi
claims 21, 22, 31-84, 97-99, 103-106, 123, 124, and 132-134
With respect to this rejection, Appellant repeats the arguments made
against the combination of Yonemitsu, Witte, and Takagi (App. Br. II 25-
26). We find them no more compelling with respect to this latter
combination.

Rejection over APA-II
claims 10-14
Appellant argues that APA-II does not indicate that a CD recording
system includes a read drive, compression circuitry, and a write drive is
known in the art (Reply Br. II 23). While Appellant acknowledges that
APA-II details that MPEG Layer-3 encoding is known in the art, the rest of
the components of claim 10 are not detailed therein as being prior art (Id.).
We agree with Appellant.
The only section of APA-II that explicitly addresses known processes
is the use of MPEG Layer-3 encoding. The rest of APA-II details an
embodiment of the invention and cannot be utilized as prior art. The
Examiner may indeed be correct that the read and write drives, as well as the
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

30
circuitry, were all known in the art, but the Examiner must show that
through the weight of evidence or official notice. Because the Examiner has
done neither, we find the Examiner erred in making this rejection.

CONCLUSIONS
With respect to the '700 Application, Appellant has failed to show that
the Examiner reversibly erred in determining that: (i) claims 1-9, 85-92, 107-
113, 134, and 135 are unpatentable over Witte and Cabler; (ii) claims 1-7,
107-109, 113, 134, and 135 are unpatentable over APA-I and Witte; (iii)
claims 8, 9, and 110-112 are unpatentable over APA-I, Witte and Takagi;
(iv) claims 1-7, 107-109, 113, 134, and 135 are unpatentable over
Yonemitsu and Witte; and (v) claims 8, 9, and 110-112 are unpatentable
over Yonemitsu, Witte, and Takagi. However, Appellant has shown that the
Examiner reversibly erred in determining that claims 85-92 fail to comply
with the enablement requirement under 35 U.S.C. § 112, first paragraph.
With respect to the '329 Application, Appellant has failed to show that
the Examiner reversibly erred in determining that: (i) claims 38-42, 49-56,
64-68, and 75-82 fail to comply with the written description requirement
under 35 U.S.C. § 112, first paragraph; (ii) claims 10-20, 93-96, 100-102,
114-116, 120-122, and 134 are unpatentable over Yonemitsu and Witte; (iii)
claims 21, 22, 31-84, 97-99, 103-106, 123, 124, 132, and 133 are
unpatentable over Yonemitsu, Witte, and Takagi; (iv) claims 10-20, 93-96,
100-102, 114-116, and 120-122 are unpatentable over APA-I and Witte; (v)
Appeal 2009-011103
Reissue Application Nos. 10/409,700 & 10/996,329
Reexamination Control No. 90/006,170
United States Patent 6,215,754 B1

31
claims 21, 22, 31-84, 97-99, 103-106, 123, 124, and 132-134 are
unpatentable over APA-I, Witte and Takagi. However, Appellant has shown
that the Examiner reversibly erred in determining that claims 10-14 are
unpatentable over APA-II.

DECISION
The decision of the Examiner, with respect to the '700 Application, to
reject claims 1-9, 85-92, 107-113, 134, and 135 is AFFIRMED.
The decision of the Examiner, with respect to the '329 Application, to
reject claims 10-22, 31-84, 93-106, 114-125, and 132-134 is AFFIRMED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

saw

cc:
PATENT OWNER’S ADDRESS:
MARTIN & FERRARO, LLP
1557 LAKE O’PINES STREET, NE
HARTVILLE, OH 44632