Ex Parte 7277765 et al

Board of Patent Appeals and Interferences

Aug 3, 2012

95001260 (B.P.A.I. Aug. 3, 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.
95/001,260 12/04/2009 7277765 51200-86407 4766
26162 7590 08/06/2012
FISH & RICHARDSON PC
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/06/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

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

v.

BOSE CORPORATION
Patent Owner and Appellant
____________

Appeal 2012-002336
Reexamination Control 95/001,260
Patent 7,277,7651
Technology Center 3900
____________

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

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent involved in this reexamination appeal proceeding
(hereinafter the “’765 Patent”) issued to Beckmann et al. on October 2,
2007.
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A. STATEMENT OF THE CASE
Summary
Patent Owner Bose Corporation (“Bose”)2 appeals under 35 U.S.C.
§§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-43.3 Third-
Party Requesters DPI, Inc., Memorex Products Inc., and Imation Corp.
(collectively “DPI”) urge that the Examiner’s decision must be affirmed.4
An oral hearing was held on May 2, 2012. A transcript of the hearing
was made of record on June 5, 2012.
We affirm the Examiner’s decision to reject claims 1-43.
Related Judicial and Other Proceedings
We are informed of the following additional proceedings involving
the ‘765 Patent (App. Br., 1; Resp. Br. 1):
(1) Litigation pending in the Massachusetts District Court styled Bose
Corp. v. SDI Technologies, Inc. et al., Civil Action No. 1:09-cv11439-PBS
(D. Mass.); and

2 See Patent Assignment Abstract of Title, Reel 011476 Frame 0822 which
was entered into the record of this proceeding as “Title Report” on
December 14, 2009.

3 See Bose’s “Brief on Appeal” filed December 17, 2010 (“App. Br.”) and
“Patent Owner’s Rebuttal Brief on Appeal” filed October 28, 2011 (“Reb.
Br.”).

4 See DPI’s “Respondents’ Brief on Appeal” filed January 18, 2011 (“Resp.
Br.”).

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(2) A separate inter partes reexamination proceeding of the ‘765
Patent (95/001,332), which was denied on the grounds that the cited
references in that proceeding did not raise a substantial new ground of
patentability with respect to claims 1-43.5

The Invention
Claim 1, which is illustrative of the appealed subject matter, reads as
follows (App. Br., 31 Claims App’x.):
1. An audio reproduction system comprising:

(i) an audio source device comprising:

a storage device configured to store a plurality of music files,
each music file including at least a first and second type of metadata
that characterizes the music file; and

a display for displaying a user interface configured to present a
first assemblage of the plurality of music files in a first set groups
according to the first type of metadata associated with the music files,
and, in response to a user selection of a group in the first assemblage,
present a second assemblage of the music files in the selected group,
wherein the second assemblage presents the music files in the selected
group in a second set of groups according to the second type of
metadata associated with the music files in the selected group;

(ii) an enclosure comprising:

a powered speaker; an interface configured to operably couple
the audio source device with the powered speaker; and

5 See “Order Granting/Denying Request for Inter Partes
Reexamination” mailed May 7, 2010 as a part of the record in the
95/001,332 proceeding.
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control circuitry for receiving control signals; and

(iii) a remote control configured to produce at least a first control
signal that controls an operation of the audio source device, wherein
the first control signal is received by the control circuitry and
transmitted to the audio source device via the interface.
The Prior Art
Cluts 5,616,876 Apr. 1, 1997
Grewe et al. (“Grewe”) 5,670,730 Sep. 23, 1997
Frank et al. (“Frank”) 6,026,150 Feb. 15, 2000
Kaganas et al. (“Kaganas”) 6,425,018 Jul. 23, 2002
Van Der Meulen 6,563,769 May 13, 2003
Quarmby GB 2 325 547 Nov. 11, 1998

The Involved Rejections
The Examiner rejected claims 25-29 and 31-36 under 35 U.S.C.
§ 102(b) as anticipated by Cluts.
The Examiner rejected claims 1-43 under 35 U.S.C. § 103(a) as
unpatentable over Cluts.
The Examiner rejected claims 1-43 under 35 U.S.C. § 103(a) as
unpatentable over Kaganas, Quarmby, and Grewe.
The Examiner rejected claims 1-43 under 35 U.S.C. § 103(a) as
unpatentable over Frank and Van Der Meulen.
B. ISSUES
1. Does the record show that the Examiner was incorrect in
rejecting Bose’s claims based on Cluts?
2. Does the record show that the Examiner was incorrect in
rejecting Bose’s claims based on the combination of Kaganas, Quarmby, and
Grewe?
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3. Does the record show that the Examiner was incorrect in
rejecting Bose’s claims based on the combination of Frank and Van Der
Meulen?
C. ANALYSIS
I. THE REJECTIONS INVOLVING KAGANAS, QUARMBY, AND GREWE
In challenging the Examiner’s rejection based on the combination of
Kaganas, Quarmby, and Grewe (K/Q/G), Bose argues the claims in four
groupings: (1) claims 1-43; (2) claims 1-24, 30, and 35-43; (3) claims 1-24
and 35-43; and (4) claims 3 and 25. We observe that in support of the
arguments it advances, Bose relies on declaration testimony of inventor Paul
E. Beckman6.
(1) Claims 1-43 – K/Q/G
Claims 1, 25, 35, and 37 are independent claims. Each of those
claims is directed to an “audio reproduction system” which includes either
“a remote control” or “a remote control device.” (App. Br., Claims App’x.)
Bose first contends that the K/Q/G combination lacks a “remote control”
which controls operation of the audio source device as required by claims 1-
43. (App. Br., pp. 18-20.) The Examiner determined that the required
remote control feature is disclosed in Kaganas. Kaganas discloses a portable
music player, designated, for instance, as component 10 in its figures.
(Kaganas, Abstract; 1:60-61.) In accounting for the “remote control”

6 See “Declaration Under Rule 1.132 of Dr. Paul E. Beckman” dated
March 15, 2010. A copy of the declaration is included in the Evidence
Appendix of Bose’s Appeal Brief.

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feature, the Examiner provided two rationales in connection with Kaganas’
disclosure. The Examiner first found that Kaganas describes a remote
control component for its music player at column 5, lines 4-14. (Right of
Appeal Notice (“RAN”)7, pp. 47, ll. 9-15.) As an alternate position, the
Examiner explained the following (id. at p. 47, l. 16 - p. 48, l. 2.)
Alternately, Kaganas describes a mode in which a keyboard may be
connected to a feature card #38 with a cellular telephone connected to
another feature card, both inserted in the cartridge 37, thereby
allowing the keyboard #41 and display #41a to control
operation/access and transfer information between the cellular
telephone and the device #10 (Kaganas, 2:62-3:23, 3:38-4:4, Fig. 3).
In this way, the keyboard functions as a remote control controlling
operation of the cellular telephone via the interface. The keyboard in
Figure 3 is a hardwired connection and may be wireless. (Kaganas,
2:62-3:4).

We do not discern that Bose has addressed the first of the Examiner’s
positions with respect to a remote control in Kaganas. The portion of
Kaganas at column 5 relied on by the Examiner describes operation of
“playback controls” which control the operation of portable player 10.
Kaganas further conveys that the controls may take the form of a variety of
interactive communication control devices, including those characterized as
“wireless.” (Kaganas, 5:9-14.) It is not evident, and Bose does not explain,
why the disclosure of a wireless communication control device for a portable

7 The Examiner’s Answer mailed September 28, 2011 states that “all of
the grounds of rejection…and explanations set forth in the RAN” are
incorporated by reference. In this opinion, citation to the Examiner’s
rejections and explanations are to the RAN.
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music player is not readily understood as setting forth a remote control
device which controls the player.
Moreover, we are also not persuaded that the Examiner’s alternative
position does not reasonably account for the recitation in the claims of a
remote control. Kaganas describes that the portable music player 10
includes a cartridge 37 for receiving memory cards 39 or feature cards 48.
(Kaganas, 2:55-62.) The feature cards include operating components
including, for instance, proprietary firmware, hardware, and software, which
“enable features and/or functions” of the portable player. (Id. at 2:59-62.)
Those “features” are provided by external devices connected to the feature
cards, including via a wireless connection. (Id. at 2:62-3:50.) Examples of
such devices are a portable telephone 40 or a keyboard 41. (Id.) Thus,
Kaganas clearly provides that an external or remote component may interact
with a feature card which forms part of portable player 10 and controls
features of the player. Although, the Examiner’s statements of rejection
allude to control of the portable telephone via the keyboard, we do not
discern why the keyboard and telephone in each providing control of the
feature cards of the portable player itself do not each account for the “remote
control” required by the claims.
However, even assuming that the Examiner’s rejection is premised on
control of portable telephone 40 via keyboard 41, we are not persuaded that
no control of the telephone 40 by keyboard 41 results, which is apparently
the position of Bose. Kaganas explains that the operating systems for the
telephone and keyboard may be provided on a single feature card 38.
(Kaganas, 3:41-44.) Keyboard 41 is operated to provide various
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communications, e.g., e-mail, fax communications, and internet access,
which are expressed as “go[ing] through” portable telephone 40. (Id. at
3:24-41.) Indeed, Kaganas describes that once keyboard 41 is turned on that
triggers download of the keyboard’s operating system on feature card 38 to a
computational device 30 associated with music player 10. (Id. at 3:57-60)
The computation device then also checks to find the operating system for
telephone 40. (Id. at 3:60-61.) Communications originating from keyboard
41 then “will take place through” telephone 40. (Id. at 3:65-66.) In our
view, the interaction between the keyboard and telephone to facilitate
communications originating from the keyboard demonstrates a measure of
control of the telephone by the keyboard.
Accordingly, for the foregoing reasons, we are not persuaded that the
“remote control” and its operation required by the claims is not adequately
disclosed in the pertinent prior art.
(2) Claims 1-24, 30, and 35-43 – K/Q/G
Bose also contends that, in connection with claims 1-24, 30, and 35-
43, the combination of Kaganas, Quarmby, and Grewe does not teach an
“enclosure” that includes a powered speaker as required by each of those
claims.8 (App. Br., pp. 20-21.) The Examiner urges otherwise. (E.g., RAN,
pp. 12-13.)
It is self-evident that operation of a device as a “music player”
necessitates the incorporation of audio components capable of outputting
sound or music. Indeed, to that end, Kaganas provides that a suitable audio

8 We observe that in connection with claim 30, rather reciting
“enclosure,” the claims uses the term “housing.”
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output may be “typically an earphone jack (51), or external speaker with
amplification (not shown).” (Kaganas, 5:35-36.) Bose takes the position that
the “enclosure” feature of its claims requires that a speaker must be
contained within the recited enclosure and must not be a component viewed
as separate from the audio source device. (App. Br., p. 21, l. 22.) According
to Bose, Kaganas’ recitation of an “external” speaker means that the speaker
is separate from its music player and does not satisfy the claims.
At the outset, we are not persuaded by Bose’s position as to the
requirement of the “enclosure” feature of its claims. Claim 1 calls for the
separate features of an “audio source device” and an “enclosure,” each of
which form part of an overall “audio reproduction system.” (App. Br. 31,
Claims App’x.) The enclosure itself comprises a speaker, and an interface
which couples the audio source device with a speaker. There is no
requirement that the enclosure and the audio source must be integral or a
single unit, as is seemingly argued by Bose. A speaker that may be external,
yet interfaces with a music player, is encompassed, in our view, by Bose’s
claim 1.
In any event, even assuming that Bose’s claims exclude from their
scope a speaker that is external, we observe that Kaganas’ recitations of an
“external” speaker and an “earphone jack” are presented simply as examples
of what may “typically” suffice for an audio output. (Kaganas, 5:35-36.) As
the Supreme Court has advised in conducting an obviousness analysis, it is
not necessary to find precise teachings in the prior art directed to the specific
subject matter claimed because inferences and creative steps that a person of
ordinary skill in the art would employ can be taken into account. KSR Int’l
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Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the use of the term
“external” is generally understood as a juxtaposition with the term
“internal.” That is, that the term “speaker” is qualified with the term
“external” reasonably conveys that internal speakers were also known. The
obviousness inquiry does not rely simply on what a prior art reference
describes as its particular invention. EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985). Instead, the inquiry must consider
everything the reference teaches by way of technology. Id. In our view,
Kaganas disclosure taken as a whole manifestly demonstrates that a skilled
artisan would have appreciated that a “portable music player” may include a
variety of configurations in connection with the arrangement of the
components which make the music player portable and operable. That
embodiments of Kaganas’ particular invention may seek to employ an
external speaker does not itself convey that a speaker which is not external,
and thus understood as enclosed within the device which supplies audio
content to the speaker, would not have been appreciated by one with
ordinary skill in the art as a viable and available option, even if perhaps less
desired or less typical.
We have considered Bose’s arguments but are not persuaded that one
of ordinary skill in the art would not reasonably have appreciated from the
teachings of the prior art that a speaker may be included as a part of a
“enclosure” associated with an audio source device such as a portable music
player.
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(3) Claims 1-24 and 35-43 – K/Q/G
In connection with claims 1-24 and 35-43, Bose submits that the
Kaganas/Quarmby/Grewe combination lacks disclosure of the assemblages
of music files required by those claims. (App. Br., p. 22.) A portion of
Bose’s argument is reproduced below (id. at ll. 4-10):
The claims recite “a user interface configured to present a first
assemblage… and in response to a user selection of a group in the first
assemblage, present a second assemblage of the music files in the
selected group.” The plain ordinary meaning of this language is that
the first assemblage must be assembled prior to the second
assemblage because presenting the second assemblage relies on the
user’s selection of a group of music files in the first assemblage. In
other words, the user interface cannot present a second assemblage
unless and until the first assemblage has already been presented.

Bose concludes that its claims thus require that the recited
assemblages be “created in a particular order” such that the “first assemblage
must be created before the second assemblage.” (Id. at ll. 16-20.)
We observe that none of Bose’s claims include the term “create” in
connection with assemblages. Rather, the claims simply require that that the
displayed user interface be configured to “present” a first assemblage and
then in response to a user selection of a group in the first assemblage,
“present” a second assemblage. There is no requirement that the
assemblages must not yet exist until presented. That is, the claims do not
preclude the presentation of first and second assemblages that have
previously been created or generated.
The Examiner determined that Grewe discloses the use and display of
multiple assemblages of music files, including first and second assemblages.
(RAN, pp. 13-14; 50-51.) Bose does not dispute that determination. As
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discussed above, Bose’s challenge to the Examiner’s position with respect to
the teachings of Grewe is predicated on an incorrect assessment of the
requirement of the claims. To the extent that there is a temporal nature with
respect to the “present[ation]” of the first and second assemblages, Bose
does not meaningfully explain why Grewe’s disclosure of the display of first
and second assemblages does not suitably account for that requirement.
We are not persuaded that the Examiner has not adequately accounted
in the prior art for the above-noted claim requirement.
(4) Claims 3 and 25 – K/Q/G
Claims 3 is ultimately dependent on claim 1, and claim 25 is an
independent claim drawn to an audio reproduction system. Each of claims 3
and 25 includes a feature directed to “automatically updating” first and
second groups of music files. (App. Br., pp. 32, 35, Claims App’x.) Bose
argues that the combination of Kaganas, Quarmby, and Grewe does not
disclose the “automatically updating” feature. (App. Br., 23-24.)
In accounting for the pertinent feature, the Examiner relied on the
teachings of Grewe and Quarmby. Grewe describes a “music chip 10” with
content that includes “prerecorded music or other like audio material stored
in a compressed digital format.” (Grewe, 2:34-36.) The chip also includes
header information and a table of contents. (Id. at 3:12-25.) Grewe explains
that upon insertion of the chip into an audio player/juke box device is
“downloaded.” (Id. at 3:26-28.) That downloading operation is expressed as
occurring “automatically.” (Id. at Abstract.) The Examiner pointed to
Quarmby as disclosing that a jukebox may incorporate multiple memory
devices and the music content may be downloaded to those memory devices
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via coupling to a computer which may be connected to a network. (RAN,
pp. 14-15.) The Examiner’s determination for accounting for the
“automatically updating” feature of the claims based on the teachings of
Grewe and Quarmby appears in the RAN as follows (id.):
Thus, multiple storage devices as described in Grewe may be loaded
into a jukebox/multichanger facility as described by Quarmby and as
storages devices are loaded and unloaded from the juke box/
multichanger facility, the file information is automatically updated
and available for display on the display of the juke box/multichanger
facility.

Bose’s challenge to the Examiner’s determination rests on the theory
that any updating of music files accomplished in the above-noted prior art,
specifically Grewe, requires a manual step of insertion of a chip into the
audio player in order to direct the content of the chip to an audio player. In
Bose’s view, the “automatically updating” feature of the claims precludes
any operation associated with such updating that constitutes or involves a
manual action. (App. Br., p. 23.) We do not agree.
Even assuming that Bose is correct that the pertinent prior art requires
some manual operation before a chip downloads its content to an audio
player, we do not discern that the term “automatically” necessarily precludes
any action by a user. Grewe makes clear that the download of content from
the chip to the audio player occurs “automatically.” (Grewe, Abstract.) Bose
does not contend that such downloading does not entail updating of file
information within Grewe’s jukebox. That the downloading may first be
initiated by a user action, such as the insertion of a chip, does not preclude
the downloading action from constituting the “automatically updating”
operation of the claims.
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Summary – K/Q/G

We have fully considered arguments made and evidence proffered by
Bose in connection with the rejection of claims 1-43 based on the combined
teachings of Kaganas, Grewe, and Quarmby. For the foregoing reasons,
however, we are not persuaded that the Examiner’s rejection was incorrect.
II. THE REJECTIONS OVER CLUTS
The Examiner rejected all of Bose’s claims on appeal, i.e., claims 1-
43, as unpatentable over Cluts. The Examiner also separately rejected
certain of those claims, i.e., 25-29 and 31-36, as anticipated by Cluts. In
challenging those rejections, Bose takes the position that the Examiner
incorrectly determined that Cluts discloses certain features of the claims. To
that end, Bose argues the claims in five separate groupings: (1) claims 1-24
and 35-43; (2) claims 1-43; (3) claims 25-34; (4) claims 3 and 25; and (5)
claims 20, 35, 36, and 41.
(1) Claims 1-24 and 35-43 – Cluts
Claims 2-24, 36, and 38-43 are ultimately dependent on one of
independent claims 1, 35, and 37. Each of those independent claims is
drawn to an audio reproduction system and requires an “audio source
device” having (App. Br., 31, 37, 38, Claims App’x.):
a display for displaying a user interface configured to present a
first assemblage of the plurality of music files in a first set groups
according to the first type of metadata associated with the music files,
and, in response to a user selection of a group in the first assemblage,
present a second assemblage of the music files in the selected group,
wherein the second assemblage presents the music files in the selected
group in a second set of groups according to the second type of
metadata associated with the music files in the selected group[.]
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Bose submits that Cluts lacks the “display” required by its claims.
(App. Br., p. 5.)
The above-noted “display” is a component that operates “for
displaying a user interface,” where the user interface is configured to present
assemblages of music files. That the display is “for displaying” such an
interface means that the display must simply be capable of, or operable to,
display such a user interface. In its Rebuttal Brief, Bose responds to that
position, urging that (Reb. Br., p. 2, l. 25 - p. 3, l. 3):
[T]he use of the phrase “configured to” means that the claimed
display must do more than merely be capable of displaying some user
interface—it must be intentionally and specifically made to display
the particular claimed user interface.

That position, however, attributes the “configured to” language of the
claims to configuration of the display rather than to the configuration of the
user interface. The display is not set forth as having any required
configuration. Indeed, as discussed above, its role is simply “for displaying”
a user interface where it is the user interface that has a particular
configuration. It is not apparent why displays generally known in the art at
the time of Bose’s invention would have lacked the capability of displaying
a user interface so configured.
In any event, even assuming that the configuration of the “user
interface” were construed as somehow imposing a particular corresponding
configuration requirement for the display, we are not persuaded that such a
requirement distinguishes the claims over the prior art. DPI takes the
position that Cluts provides disclosure of a display for displaying a user
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interface set forth in the claims in its disclosure of “workstation 32.” (Resp.
Br., pp. 7-8.) The Examiner expressed agreement with DPI’s position
(RAN, pp. 6-7.) The Examiner also alternatively pointed to Cluts’
disclosure of an output device 50 incorporating a display or monitor as
satisfying the display requirement of the claims. (Id. at p. 28.)
Cluts’ invention is directed to systems and methods of selecting music
on the basis of subjective content and is described as constituting an
interactive network which provides music to subscribers. (Cluts, 2:30-48.)
Cluts discloses the existence of a “headend system 12” as a part of the
network which distributes audio and video content to a subscriber or
consumer. (Id. at 5:62-6:37.) The headend system incorporates a
continuous media server (CMS) 22 which includes memory storage device
30 for storing the audio and video data. (Id. at 6:57-7:13.) Those data
which are ultimately supplied to a user are first edited by an operator at the
headend system so as to be separated into a variety of categories. (Id. at
cols. 14-15.) A user who receives the categorized content may, via
operation of a user interface at output device 50 (e.g., a computer with
display monitor), make selections in connection with the receiver. (Id. at
8:52-61). For instance, a user may select a particular artist form a list of
artists and then make a selection of a particular album from the selected
artist. (Id. at 12:41-54.) Bose does not dispute that the user interface
associated with output device 50 does not constitute the presentation and
selection of musical assemblage as is set forth in the claims.
Rather, the basis of Bose’s challenge is that output device 50 does not
constitute an “audio source device,” such that its display and user interface
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cannot constitute the display of the claims. (E.g., App. Br., p. 8.) Bose also
takes the position that the “computer workstation 32” of the headend system
is not disclosed in Cluts as incorporating any display that could perform the
functions set forth in the claims. (App. Br., pp. 6-8.)
With respect to Bose’ second position, we observe that while
“computer workstation 32” is not expressly disclosed as having a display,
one with ordinary skill in the art would reasonably have appreciated that a
“computer” would incorporate some form of display. That is evident from
Cluts itself which, in other portions of its disclosure, associates a display or
monitor with a computer system. (See Cluts, 8:49-61.)
However, to the extent that the display set forth in the claims must
have a particular configuration associated with the configuration of the “user
interface” in presenting assemblages of music, we do not discern that Cluts
reasonably conveys that the display of workstation 32 is so configured.
DPI’s and the Examiner’s rationale to the contrary is premised on an
assumption in conjunction with a display of workstation 32 where an
administrator compiles categories of musical content which is ultimately
selectable by a user at the user interface associated with output device 50.
According to DPI and the Examiner, the administrator’s display will
necessarily perform the same functions, and thus be so configured, as the
user’s display at output device 50. Neither DPI nor the Examiner points to
disclosure in Cluts which substantiates that position. We are cognizant of
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the declaration testimony of Daniel Cross9, offered in support of DPI’s
position. Mr. Cross testifies that (Cross Decl., p. 4, ll. 15-20):
It is my opinion that one of ordinary skill in the art prior to October
12, 1999, upon reviewing the Cluts patent would understand
functionality associated with the work station and the remote server,
and conclude that via the work station’s display, a system
administrator is enabled to organize music files into first and second
assemblages based upon data associated with the files, for instance, to
facilitate the system administration in adding editorial content into
style tables and playlists.

While we agree that Cluts’ computer workstation would reasonably
have been understood as incorporating a display, we do not agree with Mr.
Cross’ assessment with respect to the functionality of the display. Mr. Cross
does not meaningfully explain the basis for his opinion. The position of
DPI, the Examiner, and Mr. Cross amount to nothing to more that
unsupported conjecture.
However, we observe that, as discussed above, there is no dispute that
the user interface of output device 50 is displayed on its associated display
and presents a series of assemblages for selection by a user. Bose’s only
assertion as to why that display does not satisfy the “display” feature of the
claims is because that particular display is not part of an “audio storage
device.” Bose’s underlying rationale for that view is that the output device
50 allegedly “lacks the ability to store music files.” (Reb. Br., p. 3.) We do
not agree with that rationale.

9 The “Declaration of Daniel L. Cross Pursuant to 37 C.F.R. § 1.132”
was initially filed on April 14, 2010 (“Cross Decl.”) A copy of the
declaration was also filed with DPI’s Respondent Brief.
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Output device 50 is disclosed as being a computer system with a
display. (Cluts, 8:52-61.) Cluts’ disclosure establishes that conventional
computer systems are understood as incorporating memory storage devices.
(Id. at 5:3-18.) Such memory storage devices have the ability to store data,
such as music files. (E.g., id. at 6:57-7:27.) While the nature of the
invention is generally set forth as an “interactive network” which provides
music to subscribers (id. at Abstract), Cluts also discloses the following
(Cluts 23:1-7):
[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 computing device, including
general purpose computers, personal computer, notebook computers,
etc.

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
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displays a user interface for selection of assemblages of the music files in the
manner required by the claims.
For the foregoing reasons, we conclude that the pertinent “display”
feature of Bose’s claims does not patentably distinguish those claims over
the teachings and suggestions of Cluts. We are cognizant, however, that our
reasoning in reaching that conclusion differs in some regard from that
advanced by the Examiner in rejecting claims 1-24 and 35-43 over Cluts.
(2) Claims 1-43 – Cluts
With respect to claims 1-43 taken as a group, Bose contends that that
its claims recite a feature directed to including “metadata” in music files that
is not met by the disclosure of Cluts. (App. Br., pp. 8-9.) In particular, the
feature as it appears in claim 1 is advanced as being representative and is
reproduced below (Id. at p. 31, Claims App’x.):
A storage device configured to store a plurality of music files, each
music file including a least a first and second type of metadata that
characterizes the music file…

“Metadata,” in connection with a music file, is information about the
file and, as set forth in the ‘765 patent, may include information pertaining
to “the artist, the composer, the type of music, and others.” (‘765 Patent,
7:30-32.) According to Bose, the designation that the music file “includ[es]”
metadata means that the metadata must be “contained” within the music file.
(App. Br., p. 8, ll. 27-29.) Bose urges that, given that meaning of
“including,” Cluts does not account for the above-quoted claim feature. (Id.
at p. 9, ll. 9-21.)
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Even assuming that Bose’s position with respect to the meaning of
“including” is correct, we note that during oral argument, counsel for Bose
expressed that inclusion of metadata in a music file in the context of its ‘765
Patent does not require that the metadata and the music file must be in the
same physical location, and could, in fact, be in separate places. (Oral Hr’g
Tr., p. 48, l. 5, - p. 49, l. 1.)10 Thus, Bose’s apparent position is that even if
“including” means “contained” within, there is, none-the-less, no
requirement that the metadata and the music file must share the same
physical space. That is evidently also the position of the Examiner and DPI
(RAN, p. 10; Resp. Br., pp. 9-11). Cluts clearly provides that both a music
file and information or metadata associated with the music, e.g., title, artist
and album, may be stored on a server. (Cluts, 12:9-14; 15:14-25.) Given
that disclosure in Cluts and taken in light of Bose’s above-noted
representation that a music file and its associated metadata need not be in the

10 [MS. WHELAN] I want to address the point about metadata. Opposing counsel spoke
of metadata not being stored in the same physical location as the music file and alluded to
the District Court's claim construction.
The District Court actually declined to construe including although what the
District Court did say was it doesn't require the metadata and music file to be in the
same physical location. But we've never said it had to be in the same physical location,
that's not the issue. The metadata simply has to be part of the music file. That's what the
claim says and it's not found in any of the references.
JUDGE TURNER: Perhaps you could just explain that to me because that's where
maybe I'm missing something there. So it doesn't have to be part of the same physical
file. Does that mean the physical file is in two separate places?
MS. WHELAN: It could be.

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same location, we are not persuaded that Cluts does not account for the
pertinent feature of the claims.
(3) Claims 25-34- Cluts
Independent claim 25 requires a “sound reproduction device,” “an
interface unit” and “a music storage device.” (App. Br., p. 35, Claims
App’x.) The claims also requires (id):
a remote control device configured to transmit at least a first
command and a second command to the sound reproduction device,
wherein the first command is received at the sound reproduction
device and controls a function of the sound reproduction device and
the second command is received at the sound reproduction device and
communicated to the music storage device via the interface and
controls a function of the music storage device.

Bose contends that the Examiner’s rejection of claim 25 involving
Cluts requires that the “sound reproduction device” be formed from multiple
separate devices or components rather than a single such device. In
particular, Bose submits that, in the context of claim 25, the Examiner relies
on Cluts’ disclosure of a set-top terminal 48 taken with the output device 50
as collectively constituting the required “sound reproduction device.” (App.
Br., pp. 9-11.) Bose further contends that because set top terminal 48 is not
a sound reproduction device but is the component which receives signals
from a remote control, Cluts does not disclose that a “sound reproduction
device” receives signals from a remote control in the manner required by
claim 25. (Id. at pp. 11-12.)
We do not agree with Bose. During reexamination proceedings, claim
terms are given their broadest reasonable interpretation consistent with the
specification of the reexamined patent. In re Yamamoto, 740 F.2d 1569,
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1571 (Fed. Cir. 1984). Here, the Specification of the ‘765 Patent does not
give the term “device” any special meaning. We do not discern that the
ordinary meaning of “device” excludes a collection of associated
components performing a function. Indeed, Cluts sets forth that its output
device 50 can constitute a single component, such as a computer, but can
also constitute multiple components, such as a receiver and a monitor.
(Cluts, 8:57-61.) Cluts describes that set-top terminal 48 and output device
50 operate as a functional unit in which signals carrying programming
information are received by the set-top terminal and the received
programming information is then presented by the output device. (Id. at
8:49-52.) “Programming information” would have been readily understood
as including sound reproduction. Given the broadest reasonable meaning of
the term “device,” we reject Bose’s position that the set-top terminal 48 and
output device 50 do not together constitute a sound reproduction device.
Moreover, even assuming that set-top terminal component 48 and
output device component 50 are separate devices that cannot together be
considered a single device that is a sound reproduction device, in our view, a
person of ordinary skill in the art would not have taken Cluts’ disclosure as
requiring that those components must remain separate. Those components
work in coordination with one another to convey programming content, e.g.,
sound content, to a user. A skilled artisan would have reasonably
appreciated that components performing coordinated functions, such as the
programming information receipt and presentation of set-top terminal 48 and
output device 50, may be combined into a single component that is a sound
reproduction device.
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We have considered Bose’s arguments in connection with the above-
noted feature of claim 25-34 but are not persuaded that Cluts does not
account for the feature.
(4) Claims 3 and 25 – Cluts
Bose’s argument in connection with the grouping of claims 3 and 25
is directed to the feature of those claims associated with “automatically
updat[ing]” first and second groups of music files. Bose does not dispute
that Cluts discloses updating of groups of music files. Rather, the premise of
Bose’s argument is that “automatically update” requires the absence of any
action by a user and Cluts does not disclose any updating operation which
does not involve user input. (App. Br., p. 12.)
In accounting for the “automatically updating” requirement, the
Examiner pointed to portions of Cluts describing that additional musical
content may be loaded into an existing playlist at the request or direction of
a user. (RAN, p. 32.) Although Bose is apparently of the view that the
loading operation is not something considered “automatic” because the user
may have initiated the loading request, that view is based on a meaning of
“automatically,” which, as discussed above in connection with the rejection
involving Kaganas, Quarmby, and Grewe, we reject.
We are not persuaded that the Examiner did not adequately account in
Cluts for the “automatically update” requirement of claims 3 and 25.
(5) Claims 20, 35, 36, and 41- Cluts
Claims 20, 35, 36, and 41 each require an “enclosure” which includes
a “powered speaker” and a “radio turner.” Although the Examiner at one
point seemingly equated Cluts’ disclosure of a television receiver of output
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device 50 as constituting a radio turner (RAN, p. 36, ll. 16-19), we observe
that the Examiner also taken a separate position of obviousness in
connection with the above-noted feature of claims 20, 35, 36, and 41 (id. at
p. 4, l. 18 – p. 5, l. 4.)
While we do not agree that one with ordinary skill in the art would
necessarily have considered a television receiver as a radio turner, we
conclude that a skilled artisan would have appreciated that a radio turner
may be included as a part of Cluts’ output device. Cluts makes clear that its
invention may be used to support delivery of a variety of programming
information to a user including radio broadcasts. (Cluts, 4:55-64.) A
disclosed purpose of the output device is for receiving “program-related
information.” (Id. at 8:52-56.) In our view, a skilled artisan would have
readily understood that where the desired programming to be received at
output device 50 is radio programming, a radio turner would be included
within the output device for that purpose.
Summary – Cluts
In conclusion, after consideration of Bose’s arguments and evidence
in conjunction with the rejections involving Cluts, we are not persuaded that
the reference does not anticipate claims 25-29 and 31-36 or render obvious
claims 1-43. Because our reasoning in affirming the obviousness rejections
with respect to claims 1-24 and 35-43 differs from that which was advanced
by the Examiner in connection with the “display” feature of those claims, we
exercise our authority under 37 CFR 41.77(b) and hereby designate that
expanded reasoning as constituting a new ground of rejection.
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III. THE REJECTIONS INVOLVING FRANK AND VAN DER MEULEN
In challenging the Examiner’s rejection based on the combination of
Frank and Van Der Meulen (F/V), Bose argues the claims in four groupings:
(1) claims 1-43; (2) claims 24; (3) claims 3 and 25; and (4) claims 20, 35,
36, and 41.
(1) Claims 1-43 – F/V
As it did in connection with the rejections involving Cluts, Bose
contends that the Frank and Van Der Meulen combination lacks music files
that “include” metadata. (App. Br., pp. 24-25.) The basis for that contention
is that Van Der Meulen, which was the reference relied upon by the
Examiner for the pertinent feature, includes metadata in a database that is
“separate” from the storage location of music files. (Id.) However, as we
have already observed, the term “include” in the context of Bose’s claims
does not exclude metadata and music files from being located in different
places.
Van Der Meulen discloses a virtual jukebox. (Van Der Meulen,
Abstract.) Music recordings are stored in a collection 390 and metadata
about the music, such as title, author, performer, and genre, are stored in a
catalog 300. (Id. at 4:26-54; 7:23-51.) Van Der Meulen describes that a
retriever 370 uses the catalog 300 to retrieve recordings from the collection
390. (Id. at 7:52-53.) On this record, we are not persuaded that Van Der
Meulen does not disclose music files that “include” metadata associated with
the content of the music files.
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(2) Claim 24 – F/V
Claim 24 is dependent on claim 1 and includes the requirement that
“the audio source device is configured to transmit an analog representations
[sic] of the respective music files to the sound reproduction device via the
interface.” (App. Br., 34, Claims App’x.) In accounting for that feature, the
Examiner pointed to the teachings of Frank. (RAN., pp. 16, 68.) The issue
centers on the requirement of an audio source device that is configured to
transmit an “analog” representation of music files.
Frank discloses an in-home network for consumer electronic devices.
(Frank, Abstract.) Frank describes that a tuner component called “V.IP
tuner 18” “transmits analog signal bursts containing audio information to
V.IP speakers 11 and 12.” (Id. at 11:55-57.) Although Bose, in its Appeal
Brief, references that disclosure in Frank, Bose proceeds to characterize it as
a disclosure of supplying audio information “in the form of digital data
packets” with citation to other portions of Frank which do not refer to tuner
18 or analog signals. (App. Br., 26.) Bose thus concludes that Frank lacks
disclosure of an audio source device which is configured to transmit analog
signals.
In our view, a person of ordinary skill in the art would have readily
appreciated that an audio source device, such as Frank’s V.IP tuner 18,
which transmits “analog burst signals” is configured to transmit analog
representations of music. We have fully considered Bose’s arguments with
respect to claim 24 but are un-persuaded of error in the Examiner’s rejection.
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(3) Claims 3 and 25 – F/V
As it did with the rejections involving Cluts and the
Kaganas/Quarmby/Grewe combination, Bose argues that the Frank/Van Der
Meulen combination lacks the feature of “automatically updating” music
assemblages. (App. Br., pp. 27-28.)
The Examiner pointed to Van Der Meulen in accounting for the
above-noted feature. (RAN, pp. 16-17.) Bose does not contend that Van
Der Meulen lacks disclosure of updating music files. Rather, Bose’s
argument is once again based on the premise that the meaning of
“automatic” excludes any user action. (Id.) We do not agree. Although,
updating of music files may occur in Van Der Meulen after some action by a
user, that does not preclude the actual updating operation from being viewed
as occuring “automatically.”
We are not persuaded that the combination of Frank and Van Der
Meulen does not satisfy the “automatically updating” feature of claims 3 and
25.
(4) Claims 20, 35, 36, and 41 – F/V
With respect to claims 20, 35, 36, and 41, Bose asserts that the
combination of Frank and Van Der Meulen lacks an “enclosure” that
includes a “powered speaker” and “radio tuner.” (App. Br., pp. 28-29.)
According to Bose, the deficiency in the Examiner’s rejection stems from
Frank’s depiction of tuner 18 and speaker 12 as separate devices not
contained within a single “enclosure.” (Id.) The Examiner reasoned that
one with ordinary skill in the art would have understood that networked
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consumer electronics may be contained within a single enclosure. (RAN, p.
17.)
We note that Frank’s disclosure does not require that the tuner 18 and
speaker 12 must be separate components necessarily contained in separate
housings. Frank’s tuner 18 and speaker 12 are disclosed as units functioning
together in that the tuner sends signals containing audio information to the
speaker. (Frank, 11:55-57.) To the extent that Frank does not set forth that
those components be contained in the same housing or enclosure, the
rejection advanced by the Examiner is one based on obviousness. In
assessing obviousness, the inferences and creative steps that a person of
ordinary skill in the art would employ should be taken into account . KSR
Int’l Co., 550 U.S. at 418. In our view, a person of ordinary skill it the art
would have reasonably inferred that components such as a tuner and speaker
which operate in conjunction with one another to fulfill a sound reproduction
function may be configured in a common enclosure.
We therefore reject Bose’s argument that the feature of claims 20, 35,
36, and 41 directed to an enclosure containing a tuner and speaker
distinguishes those claims over the combination of Frank and Van Der
Meulen.
(5) Summary – F/V
We have considered Bose’s arguments and evidence in connection
with the claim rejections over the combination Frank and Van Der Meulen.
However, for the foregoing reasons, we are not persuaded that the Examiner
was incorrect in rejecting claims 1-43 over that combination.
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D. CONCLUSION
1. The record does not show that the Examiner was incorrect in
rejecting Bose’s claims based on Cluts.
2. The record does not show that the Examiner was incorrect in
rejecting Bose’s claims based on the combination of Kaganas, Quarmby, and
Grewe.
3. The record does not show that the Examiner was incorrect in
rejecting Bose’s claims based on the combination of Frank and Van Der
Meulen.
E. ORDER
The Examiner’s decision to reject claims 25-29 and 31-36 under 35
U.S.C. § 102(b) as anticipated by Cluts is affirmed.
The Examiner’s decision to reject claims 1-43 under 35 U.S.C.
§ 103(a) as unpatentable over Cluts is affirmed, but our reasoning for
affirming is designated a new ground of rejection.
The Examiner’s decision to reject claims 1-43 under 35 U.S.C.
§ 103(a) as unpatentable over Kaganas, Quarmby, and Grewe is affirmed.
The Examiner’s decision to reject claims 1-43 under 35 U.S.C.
§ 103(a) as unpatentable over Frank and Van Der Meulen is affirmed.

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.77(b). That section states “[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” The section also provides that the Patentee, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
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of the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner….

(2) Request rehearing. Request that the proceeding be
reheard under § 41.79 by the Board upon the same
record….

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
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appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).

AFFIRMED:
New Ground of Rejection 37 C.F.R § 41.77(b)

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