Ex Parte 7,634,228 et al

Patent Trial and Appeal Board

Jun 30, 2014

95001281 (P.T.A.B. Jun. 30, 2014)

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.
95/001,281 02/03/2010 7,634,228 AFF.0004B7US 5149
21906 7590 12/30/2015
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
LAROSE, COLIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/30/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VOLKSWAGEN GROUP OF AMERICA, INC.
Requester, Appellant, and Cross-Respondent

v.

AFFINITY LABS OF TEXAS, LLC
Patent Owner, Respondent, and Cross-Appellant
____________

Appeal 2014-002024
Reexamination Control 95/001,281
Patent 7,634,228 B2
Technology Center 3900
____________

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

BRANCH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Patent Owner submits under 37 C.F.R. § 41.79(b) a Request for
Rehearing (“Request”) from the Opinion of the Patent Trial and Appeal
Board, dated June 30, 2014 (“Decision”) regarding U.S. 7,634,228 B2 (the
’228 Patent).

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Patent 7,634,228 B2

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In the Decision, we affirmed the Examiner’s decision to reject claims
1, 3, 7–10, 12, 13, 16–19, and 21, as anticipated by and/or obvious over
Ohmura;1 we affirmed the Examiner’s decision to reject claims 1–5,7–
12,14–27, 29, and 30, as obvious over either Lind ’982 or Lind ’993 and
empeg;4 we entered a new ground of rejection against claims 22 and 24–30
as obvious over Ohmura in view of our officially noticed facts;5 and we
entered a new ground of rejection against claim 6 as obvious over either
Lind ’98 or Lind ’99 and empeg in view of our officially noticed facts. See,
generally, Decision.
“The request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked in rendering the
Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b) (1).

1 Ohmura et al., EPA Publication No.1 146 674, published Oct. 17, 2001.
2 R. Lind et al., The Network Vehicle - A Glimpse into the Future of
Mobile Multi-Media, 17th DASC The AlAA/IEEE/SAE Digital Avionics
Systems Conference Proceedings, Oct. 31–Nov. 7, 1998, at I21–I21–8.
3 R. Lind et al., The Network Vehicle - A Glimpse into the Future of Mobile
Multi-Media, IEEE Aerospace and Electronics Systems Magazine, ISSN
0885-8985, Volume 14, Number 9, pages 27-32, September 1999.
4 empeg car, digital audio player user guide.
5 “[P]ortable electronic devices (e.g., Apple iPod) were well known as of
[March 2, 2007] and that such devices were known to have rechargeable
batteries capable of being recharged via a cable (e.g., USB) that allows for
communication of data and power.” Decision 18.
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Issue 1(a): Because a different panel of the Board in a
different reexamination proceeding6 of a related patent7 found
that the ’812 application,8 from which the ’228 Patent depends,
reasonably would have conveyed to one with ordinary skill in
the art that, when the ’812 application was filed, Patent Owner
“possessed the ability to transfer data from a portable audio
player to a different electronic device, which in turn allowed the
different electronic device to present a selectable representation
of an audio file on a display associated therewith,” are we
compelled to vacate our finding that the claims of the instant
patent are not entitled to the filing date of the ’812 application
because we misapprehended or overlooked this fact?

Issue 1(b): Does it matter that the Examiner in the
companion ex parte reexamination of the ’228 patent9 relied on
the Board’s finding above to find that “the claims of the ’228
patent are [] supported by the ’812 application”?

Analysis: Issue 1(a) and Issue 1(b)
Even if we were to accept all of Patent Owner’s assertions as true
(Request 2–3), we would not be bound by a non-precedential decision of a
different panel of the Board.
But we do not accept as true Patent Owner’s assertions that “in the
related reexamination of [the ’926 Patent] the current Examiner had made
the same rejection” (id. at 2), that “the Board has already determined that
subject matter at issue in the ’228 Patent is entitled to a March 28, 2000

6 Control No. 95/001,263.
7 US 7,486,926 B2, issued Feb. 3, 2009.
8 Patent Application Serial No. 09/537,812, filed March 28, 2000.
9 US 7,634,228 B2, issued Dec. 15, 2009.
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Patent 7,634,228 B2

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priority date” (id. at 3), and that “Ohmura and empeg2 therefore do not
qualify as prior art” (id.).
The Examiner did not make “the same rejection” (id. at 2) in the
related ex parte reexamination of the ’926 Patent because different claims
were at issue there. Similarly, Patent Owner does not provide sufficient
persuasive argument or evidence that the claims at issue in the respective
cases are identical such that “the Board has already determined that subject
matter at issue in the ’228 Patent is entitled to a March 28, 2000 priority
date.” Request 3 (emphasis added). Moreover, other than implying that the
relevant limitation of claim 1of the ’926 Patent10 is substantially the same
subject matter as the relevant limitation of claim 1 of the ’228 Patent,11
Patent Owner does not persuasively establish this to be the case.
Accordingly, we are not persuaded that “the ’228 Patent is entitled to
a March 28, 2000 priority date” or that “Ohmura and empeg2 therefore do
not qualify as prior art,” and we see no reason to modify our decision in
view of the foregoing.

10 “to communicate data to a different electronic device that has an
associated display to allow the different electronic device to present a
selectable representation of the particular selectable icon on the associated
display, and to begin playing the particular audio file at the portable audio
file player in connection with a user selecting the selectable representation
from the associated display.”
11 “communicating at least some of the collection from the portable hand-
held device to a different electronic device in order to allow a user to view a
soft button comprising the name on an associated display of the different
electronic device; and thereafter receiving a signal in the portable hand-held
device to begin playing the media file by the portable hand-held device in
response to a selection of the soft button at the different electronic device.”
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Issue 2: Because it was decided that the Office would not
maintain any rejection in this reexamination proceeding, which
is presently applied against any of claims 3 and 22–30,12 must
we modify our Decision accordingly?

Analysis: Issue 2
We agree with Patent Owner that the Decision on Petition mailed on
July 19, 2013, compels us to modify our decision such that the then pending
rejections are not maintained. We therefore vacate our decision to affirm the
Examiner’s decision to reject claim 3 as anticipated by and/or obvious over
Ohmura and the Examiner’s decision to reject claims 3, 22–27, 29, and 30 as
obvious over either Lind ’98 or Lind ’99 and empeg. We also vacate our
new ground of rejection against claims 22 and 24–30 as obvious over
Ohmura in view of our officially noticed facts.

Issue 3: Is the ’228 Patent entitled to the filing date of the
’812 application because either:
a) the Office found written support during an earlier
prosecution for viewing a name on an associated device;
b) a district court jury and judge found the claims not
invalid under 35 U.S.C. § 112, ¶ 1; or
c) other patents continue to issue from the ’812
application with “name” and “soft button” in the claims?

12 Decision on Petition mailed July 19, 2013.
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Analysis: Issue 3
We disagree with Patent Owner that “it is impermissible for the
reexamination Examiner to have reconsidered the written support issue”
(Request 6), even giving weight to all assertions of fact Patent Owner makes
in support of this conclusion (id. at 5–6). At least because Patent Owner has
not persuasively established the original Examiner “decided” the issue of
written description support during initial examination, we are unpersuaded
that we have misapprehended or overlooked anything. The Examiner not
having raised an issue is not the same as having decided a specific question.
Moreover, “[n]othing in 35 U.S.C. §§ 301 et seq. entitles a patentee to a
claim of right to its earliest priority date.” In re NTP, 654 F.3d 1268 (Fed.
Cir. 2011) (“There is no statutory limitation during a reexamination
proceeding prohibiting the examiner from conducting a priority analysis.”).
Whether a District Court found the claims of the ’228 Patent not
invalid under 35 U.S.C. § 112, ¶ 1 (see Request 6–7) is not binding upon us,
at least because the Office was not a party to that proceeding and did not
have “a full and fair opportunity” to litigate the issue. In re Trans Texas
Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007); see also In re Construction
Equipment Company, 665 F.3d 1254 (Fed. Cir. 2011) (majority declining to
adopt the dissent view that reexamination was barred by claim preclusion
(res judicata) or issue preclusion (collateral estoppel)).
Moreover, whether a claim survives a 35 U.S.C. § 112, ¶ 1, written
description requirement as to its specification is not at all relevant to whether
a claim is entitled to an earlier priority date by virtue of a 35 U.S.C § 112,
¶ 1, analysis as to a parent’s specification for purposes of applying
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intervening prior art. Patent Owner makes no attempt to establish that the
latter, rather than the former question, was at issue before the subject Court
in Patent Owner’s argument. In the event the Court answered the former
question, in addition to being irrelevant for the reasons mentioned above,
Patent Owner’s argument is disingenuous.
It is also irrelevant whether other patents with “name” and/or “soft
buttons” in the claims have issued because the Board is not bound by the
decisions of examiners.
Accordingly, we are not convinced that we must modify our decision
based on having misapprehended or overlooked anything with respect to the
foregoing.

Issue 4: Did we misapprehend or overlook any points
with respect to Patent Owner’s objective evidence of non-
obviousness?

Analysis: Issue 4
We have reviewed Patent Owner’s arguments with respect to
objective evidence (Request 8–9) and do not find a persuasive argument that
we misapprehended or overlooked a point which compels us to modify our
Decision. See 37 C.F.R. § 41.79(b) (1).

Issue 5: Must our New Grounds of Rejection be vacated?

Analysis: Issue 5
Except as modified by our decision with respect to Issue 2 supra, we
are unpersuaded that we misapprehended or overlooked any points with
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respect to our New Grounds of Rejection (see Request 10–11). We
specifically address Patent Owner’s assertion that we improperly took
Official Notice that “portable electronic devices (e.g., Apple iPod) were well
known as of [March 2, 2007] and that such devices were known to have
rechargeable batteries capable of being recharged via a cable (e.g., USB)
that allows for communication of data and power.” Decision 18.
We respectfully note Patent Owner’s misstatement that “[i]t is a fact
that water boils at 100° C,” (Request 10) to the extent that this is not a “fact”
at various pressures other than standard. Whether a particular well-known
product with specific features was in common use at a given date is
notoriously well know, such that it is capable of such instant and
unquestionable demonstration as to defy dispute. See In re Ahlert, 424 F.2d
1088, 1091 (CCPA 1970).
Patent Owner does not squarely rebut our officially noticed fact but
instead obfuscates the degree to which we applied Official Notice in
rejecting the claims. Request 10–11. An adequate traverse must contain
adequate information or argument to create on its face, a reasonable doubt
regarding the circumstances justifying notice of what is well known to one
of ordinary skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971).
Because Patent Owner did not challenge our officially noticed fact
with, for example, an easily-obtainable product release history for Apple
iPods (see, e.g., https://en.wikipedia.org/wiki/IPod and associated links
(detailing the features of iPod generations 1–5, which predate Patent
Owner’s earliest priority date)) and identify therein the absence of the
features detailed in our officially noticed fact, we do not find Patent Owner’s
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arguments to be a persuasive rebuttal to our rejection. Stated differently,
Patent Owner’s traversal did not specifically point out the supposed errors in
our officially noticed fact, including stating why the noticed fact is not
considered to be common knowledge or well-known in the art. See MPEP
§ 2144.03.
Patent Owner further argues that
This panel has taken notice of a conclusion, not of a fact
that can be objectively verified. In the long list of references of
record, none show the combination of features that the panel
maintains is beyond dispute. The deficiencies of the cited
references cannot be remedied by general conclusions about
what is basic knowledge or common sense. [] Patent Owner
therefore requests documentary evidence if this rejection is
maintained, as required by MPEP 2144.03(c). Moreover, the
panel has failed to provide any explanation for why one of
ordinary skill would be motivated to combine these features
(even if well known) with the other features recited in the
respective claims.

Request 10–11. (citations omitted).
We do not find a compelling reason to modify our Decision in this
regard, at least because our officially noticed fact was not a conclusion as
Patent Owner asserts. Id. We dispute Patent Owner’s general allegation that
“the panel has failed to provide any explanation for why one of ordinary
skill would be motivated to combine these features (even if well known)
with the other features recited in the respective claims” (Id. at 11), and note
our finding that
it would have been obvious to one skilled in the art at the time
of Patent Owner’s invention to substitute, for example, Apple’s
iPod for the empeg car player (empeg p. 3) and to connect the
player to the car via, for example, a USB cable as disclosed
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(id.). As such, the resulting arrangement would have allowed
the player to receive a play signal and to recharge the battery as
in claim 6. The arrangement would have been a combination of
familiar elements performing their known functions with
predictable results (See KSR [Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 416 (2007)] and combining them would not have been
uniquely challenging or difficult (see Leapfrog [Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)].

Decision 26.

In view of the foregoing, we grant Requester’s request for rehearing to
the extent that we vacate the pending rejections of claims 3 and 22–30. We
otherwise do not modify our decision.

GRANTED-IN-PART

FOR PATENT OWNER:

TROP, PRUNER & HU, P.C.
1616 S. Voss Road, Suite 750
Houston, TX 77057-2631

FOR THIRD-PARTY REQUESTER:

Clifford A. Ulrich
KENYON & KENYON LLP
One Broadway
New York, NY 10004