Ex Parte 7277765 et al

Patent Trial and Appeal Board

Sep 26, 2013

95001260 (P.T.A.B. Sep. 26, 2013)

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.
95/001,260 12/04/2009 7277765 51200-86407 4766
26162 7590 09/27/2013
FISH & RICHARDSON PC
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/27/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

DPI, INC., MEMOREX PRODUCTS, INC., and IMATION CORP.
Requesters

v.

BOSE CORPORATION
Patent Owner
____________

Appeal 2013-005703
Reexamination Control 95/001,260
Patent 7,277,765
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON EXAMINER’S DETERMINATION
UNDER 37 C.F.R. § 41.77(d)
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I. INTRODUCTION
In an earlier Decision mailed August 6, 2012 (BPAI 2012-002336)
(“Dec.”) the Board affirmed the Examiner’s final decision unfavorable to the
patentability of claims 1-43 of U.S. Patent No. 7,277,765 (the “’765
patent”). In particular, we affirmed the Examiner’s decision to reject claims
1-43 of the ’765 patent as unpatentable under 35 U.S.C. § 103(a) over
Cluts
1
. That affirmance was designated a new ground of rejection pursuant
to 37 C.F.R. § 41.77(b). Dec. 30.
2

Patent Owner, Bose, (“Bose”) elected to reopen prosecution and
submitted additional evidence in the form of a third declaration from
inventor Paul E. Beckmann in challenging the above-noted rejection based
on Cluts.
3
Following comments submitted by third party requesters DPI,
Inc., Memorex Products, Inc. and Imation Corp. (“Requesters”) on October

1
U.S. Patent No. 5,616,876 issued April 1, 1997.

2
We also affirmed the Examiner’s decision: (1) to reject claims 25-29 and
31-36 as anticipated by Cluts; (2) to reject claims 1-43 as unpatentable over
Kaganas, Quarmby, and Grewe; and (3) to reject claims 1-43 over Frank and
van Der Meulen. Those affirmances, however, did not constitute new
grounds of rejection.

3
See “Request to Re-open Prosecution Before the Examiner Under 37
C.F.R. § 41.77(b)(1)” (hereinafter “Bose Req.”) and the “Third Declaration
of Dr. Paul E. Beckmann under 37 CFR 1.132” (“3
rd
Beckmann Decl.”),
both filed September 6, 2012.

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4, 2012
4
, the proceeding was remanded to the Examiner. See Order mailed
November 21, 2012.
On November 23, 2012, the Examiner issued a determination under
37 C.F.R. § 41.77(d) maintaining the rejection of claims 1-43 as
unpatentable over Cluts.
5
Pursuant to 37 C.F.R. § 41.77(e), each of Bose
and Requesters submitted comments in response to the Examiner’s
determination.
6
This proceeding has been returned to the Board for a
decision pursuant to 37 C.F.R. § 41.77(f). The previous Board Decision,
BPAI 2012-002336, is a part of this new Decision except for any portions
specifically withdrawn.
We affirm the Examiner’s determination that claims 1-43 remain
unpatentable over Cluts.
II. ANALYSIS
In connection with the rejection of claims 1-43 as unpatentable over
Cluts, the issue centers on whether that reference conveys to one of ordinary
skill in the art that Cluts’ output device 50, which is disclosed as computer
system with a display (Cluts 8:52-61), may operate as the “audio storage
device” required by the claims and which displays assemblages of music

4
See “Requestors’ Reply to Patent Owner’s Request to Reopen Prosecution
Under 37 C.F.R. § 41.77(c)” (“Req. Reply”).

5
See “Examiner’s Determination Pursuant to 37 CFR 41.77(d)” (“Ex.
Determ.”).

6
See “Response to Examiner’s Determination Pursuant to 37 C.F.R.
§ 41.77(d)” filed December 21, 2012 (“Bose Resp.”) and “Requestors’
Reply to Patent Owner’s Response to Examiner’s Determination Pursuant to
37 C.F.R. § 41.77(d)” filed January 22, 2013 (“Req. Resp.”)
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files to a user. In our earlier Decision, we concluded that it does. Dec. 18-
20. Bose disagrees with that conclusion. As support for that disagreement,
Bose relies on the testimony of Dr. Beckmann. Bose Req. 2-4. In that
regard, Dr. Beckmann characterizes Cluts as disclosing a “‘music on
demand’ system” (3rd Beckman Decl. ¶ 8) requiring that music storage
components necessarily be “separate” from any output or display device (id.
at ¶¶ 9-12).
The Examiner, after considering Dr. Beckman’s testimony alongside
the evidence of obviousness, determined that the rejection of claims 1-43 as
unpatentable over Cluts should be maintained. Ex. Determ. 6-8. The
Requesters contend that the Examiner’s determination is correct. We agree
with the Examiner and the Requesters.
As we observed in our earlier Decision, Cluts discloses an
embodiment of its invention in which a “headend system12” operates as part
of an interactive network to distribute audio content to a user. Dec. 16. That
headend system incorporates a media server 22 which includes a memory
storage device 30 that stores audio content. Id. The computer system and
display that is output device 50 is then operated by a user to select, and have
presented, the audio content and information about that content. Id.
Although in that embodiment employing an “interactive network,” the
output device is not disclosed as itself storing the audio content, Cluts also
states the following:
[A]lthough the present invention has been described in the
context of an interactive network system, those skilled in the art
will understand that the principles of the present invention may
be applied to, and embodied in, any type of interactive
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computing device, including general purpose computers,
personal computer, notebook computers, etc.

Cluts 23:1-7. With that disclosure in mind, the Board concluded:
Thus, Cluts makes clear that the principles of the invention,
which are reasonably understood as including categorizing and
assembling collections of music for presentation to, and
selection by, a user via the user interface of a display, may be
embodied in a general purpose or personal type computing
device in lieu of incorporation in a network. In our view, a
person of ordinary skill in the art, who is also one of ordinary
creativity, KSR Int’l Co., 550 U.S. at 421 (2007), would have
readily appreciated from Cluts’ disclosure that the computer
that is Cluts’ output device 50, is capable of, and operable to,
incorporate audio music files in lieu of the music storage
components of the headend system which forms part of the
disclosed network. As discussed above, the display portion of
output device 50 displays a user interface for selection of
assemblages of the music files in the manner required by the
claims.

Dec. 19-20. Dr. Beckman disagrees with the Board, stating:
I disagree with the Board's reasoning. Based upon my
experience as an audio engineer, I understand this passage as
teaching that Cluts' "music on demand" functionality could be
achieved without using the interactive network that Cluts
illustrates. Specifically, I read this passage as teaching that the
basic functionality of Cluts' headend system-a computer system
having stored media and programmed for delivering that
content based on certain selection criteria-could be embodied in
an interactive computing device such as a media server that
communicates with one or more separately connected output
devices to enable subscribers to access that content. I do not
read this passage as suggesting in any way that the functions of
the headend system, including media storage, could be
embodied in output device 50, regardless of whether output
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device 50 is a computer. Although there may be separate
embodiments for each component of Cluts' system ("general
purpose computers, personal computer, notebook computer,
etc."), nowhere does he teach combining them all into a single
device.

3
rd
Beckman Decl. ¶ 10. Dr. Beckman also testifies:
A person of ordinary skill in the field of audio engineering,
reading Cluts, would understand that Cluts' output device 50,
regardless of whether it is a computer, is always a separate
device from the computer system storing the media, but that
Cluts' system need not be an interactive network system. This
person of ordinary skill would not read Cluts as suggesting that
output device 50 could be or should be configured to perform
the storage function of a media server, as the Board implies.
The "all-in-one" system that the Board proposes would defeat
Cluts' purpose of delivering "on demand" services to multiple
users and/or output devices.

Id. at ¶ 12. Thus, according to Dr. Beckman, despite Cluts’ disclosure that
its disclosed invention may be “applied to, and embodied in, any type of
interactive computing device, including general purpose computers, personal
computer, notebook computers, etc.” in juxtaposition with “an interactive
network system,” Dr. Beckman testifies that a skilled artisan would not have
appreciated that the computer and display system that is Cluts’ output device
50 may both store and display the audio content conveyed to a user.
We have considered the evidence of record, including Dr. Beckman’s
testimony, but share the Requesters’ and the Examiner’s view that Dr.
Beckman’s testimony does not outweigh the strong evidence of obviousness
presented by Cluts’ disclosure. Dr. Beckman’s testimony is predicated on an
understanding that Cluts mandates that the storage component must be a
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device, such as a “media server,” that is “separate” from the component with
which the user interacts, e.g., output computer device 50. Yet, Dr. Beckman
does not direct us to any portion of Cluts dictating that a separate
component, much less a particular separate server, is at all times required.
Indeed, the above-noted portion of Cluts at column 23, lines 1-7 expresses
that computer devices such as a “general purpose computer” or a “personal
computer” may embody the invention as opposed to a “network system,”
without any mention of a “server” requirement. The basis for Dr.
Beckman’s imposition of an intrinsic “separate” component or separate
“server” requirement as a part of Cluts’ disclosure is not explained
sufficiently. Nothing requires a fact finder to credit inadequately explained
testimony of an expert. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d
1089, 1092 (Fed. Cir. 1997).
We have evaluated the record before us. After such evaluation, and
for the foregoing reasons, we are not persuaded that Bose has demonstrated
error in the Examiner’s determination that claims 1-43 remain unpatentable
in light of Cluts.
III. CONCLUSION
We affirm the Examiner’s determination that claims 1-43 remain
unpatentable over Cluts. We do not modify our earlier decision (2012-
002336), which forms part of this present decision.

AFFIRMED

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PATENT OWNER:

FISH & RICHARDSON PC
PO BOX 1022
MINNEAPOLIS, MN 55440-1022

THIRD-PARTY REQUESTER:

THOMPSOM COBURN LLP
ONE US BANK PLAZA
SUITE 3500
ST LOUIS, MO 63101