Ex Parte 7,778,595 et al

Patent Trial and Appeal Board

Nov 24, 2014

95001782 (P.T.A.B. Nov. 24, 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.
95/001,782 10/13/2011 7,778,595 AFF.0004B9US 3368
21906 7590 11/25/2014
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
BASEHOAR, ADAM L
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/25/2014 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

v.

AFFINITY LABS OF TEXAS, LLC
Patent Owner and Appellant
____________

Appeal 2014-007361
Reexamination Control 95/001,782
Patent 7,778,595 B2
Technology Center 3900
____________

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

BRANCH, Administrative Patent Judge.
DECISION ON APPEAL

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BACKGROUND
Volkswagen Group of America, Inc. (“Requester”) filed a Request for
Inter Partes Reexamination (“Request”), on October 13, 2011, of United
States Patent 7,778,595 B2 (hereinafter the “’595 patent”).1 The ’595 patent
includes claims 1–25. The Examiner rejected claims 1, 3–11, 14–19, and
21–23, and confirmed claims 2, 12, 13, 20, 24, and 25.

DECISION ON APPEAL
Patent Owner, Affinity Labs of Texas, LLC (“Patent Owner”), appeals
under 35 U.S.C. §§ 134 and 315 the Examiner’s decision to reject claims 1,
3–11, 14–19, and 21–23. PO App. Br. 11–31.2
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm the
Examiner’s decision to reject claims 1, 3–11, 14–19, and 21–23.

STATEMENT OF THE CASE
The ’595 patent describes an audio system including a detachable
electronic device having a device interface that couples the electronic device
to an existing sound system. See generally ’595 patent, Abstract. Claim 1 is
illustrative of the claimed subject matter:

1 The ’595 patent issued to White, et al., on August 17, 2010, from
Application 12/015,320, filed January 16, 2008.
2 Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed
October 2, 2013 (“RAN”); (2) Patent Owner’s Appeal Brief filed January 6,
2014 (“PO App. Br.”); (3) the Examiner’s Answer mailed March 13, 2014
(“Ans.”); and (4) Patent Owner’s Rebuttal Brief filed May 13, 2014 (“PO
Reb. Br.”).

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1. An audio system comprising:
a portable device having a single physical interface
configured to releasably engage a contacting portion of an
interconnection system to form at least a portion of a
communication path between the portable device and a separate
electronic device, wherein the physical interface has a generally
rectangular shape and is configured to couple a first conductive
element of the interconnection system with a component of the
portable device that outputs data and couple a second
conductive element of the interconnection system with a
recharging circuit of the portable device, wherein the portable
device is configured to accept an over the air download of an
application that allows the portable device to request an audio
stream representing a local broadcast signal for a channel
located remote from a then current location of the portable
device;
the portable device having a wireless communication
module operable to receive an incoming telephone call and the
audio stream; and
the portable device having an audio output engine
configured to output information representing a played audio
file to the separate electronic device via the physical interface
and to alter an outputting of the played audio file in connection
with a receipt of the incoming telephone call and configured to
output the audio stream.

RELATED PROCEEDINGS
We are informed of the related proceedings listed in Patent Owner’s
Appeal Brief. See PO App. Br. 4–5.

THE APPEALED REJECTIONS
Patent Owner appeals the Examiner’s rejecting the claims as follows:
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1. Claims 1, 3, 5–8, 10, 11, 14, 16–19, and 21 as obvious under 35
U.S.C. § 103(a) over Abecassis3 in view of Cooper.4
2. Claims 1, 3, 5–8, 10, 11, 14, 16–19, and 21 as obvious under 35 U.S.C
§ 103(a) over Abecassis in view of to Lilja.5
3. Claims 1, 3, 5–8, 10, 11, 14, 16–19, and 21 as obvious under 35 U.S.C
§ 103(a) over Abecassis in view of Chen.6
4. Claims 1, 3–8, 10, 11, 14, 16–19, and 21–23 as obvious under 35
U.S.C. § 103(a) over Qureshey7 in view of Cao.8
5. Claims 1, 3–8, 10, 11, 14, 16–19, and 21–23 as obvious under 35
U.S.C. § 103(a) over Qureshey in view of Cooper.
6. Claims 1, 3–8, 10, 11, 14, 16–19, and 21–23 as obvious under 35
U.S.C. § 103(a) over Qureshey in view of Chen.
7. Claims 9 and 15 as obvious under 35 U.S.C. § 103(a) over Qureshey
in view of Cooper, and further in view of empeg. 9
PO App. Br. 6.

THE REJECTIONS OVER QURESHEY AND COOPER
Patent Owner argues that no combination with Qureshey renders the
claims obvious because Qureshey is not portable (PO App. Br. 20–22; see
also PO Reb. 2), Qureshey does not have a recharging circuit (PO App. Br.
22), and Qureshey does not show information output via a single physical
interface (id. at 23–24). We are unpersuaded of error.
Patent Owner’s argument that Qureshey is not portable is
unpersuasive because Qureshey explicitly discloses that, in some

3 Abecassis, US Patent No. 6,192,340, issued Feb. 20, 2001.
4 Cooper, U.S. Patent No. 5,774,793, issued June 30, 1998.
5 Lilja, U.S. Patent No. 5,991,640, Nov. 23, 1999.
6 Chen, U.S. Patent No. 6,349,223, Feb. 19, 2002.
7 Qureshey, PCT Patent Publication No. WO 1999/038266, published July
29, 1999.
8 Cao, U.S. Patent No. 7,945,284, issued May 17, 2011.
9 empeg Car User Guide, 1999.
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embodiments, “the intelligent radio apparatus is adapted to be a portable
device much like a conventional transistor radio.” Qureshey p. 2, ll. 22–23.
Patent Owner’s contention that Qureshey’s disclosure is “non-
enabling” with respect to portability (PO App. Br. 22) is unpersuasive
because it amounts to a bald assertion without persuasive argument or
evidence that the disclosure of Qureshey would not have taught one skilled
in the art to make and use the invention without undue experimentation. See
In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). Moreover, what is
known in the art need not be disclosed (See, e.g., Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1463 (Fed.Cir.1984)), and Patent Owner has not established that portability
was unknown prior to Patent Owner’s invention.
Patent Owner argues that Qureshey’s device is “tethered,” which
places its teaching outside a binding definition of portable. PO App. Br. 20–
22 (citing Reply to Office Action in U.S. Patent Application No.
10/1947,755 mailed March 21, 2006 at 18, which states “Portable electronic
devices are well known in the art of electronics as devices or systems that
may allow a user to operate a device, for example, in a mobile environment
independent or untethered to another system” (emphasis omitted)). This
argument is unpersuasive at least because the definition is not binding on
this reexamination proceeding, the definition includes a device being
“independent” as an alternative to being tethered, which Patent Owner’s
arguments do not address, and the features of independence and untethered
are offered as examples of portability, not an absolute test for portability, in
the cited definition.
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Patent Owner’s assertion that Qureshey does not have a recharging
circuit is unpersuasive of error because Cooper is also cited. Cooper
discloses a recharging circuit. Cooper 4:21–29. Similarly, Patent Owner’s
argument that Qureshey does not show information output via a single
physical interface is unpersuasive because Cooper discloses this. See, e.g.,
Fig. 2 and 3:29–33, 4:21–29. Patent Owner’s arguments in this regard
amount to an unpersuasive attack on an individual reference when the
rejection is based on what the combined teachings of multiple references
would have taught or suggested to one skilled in the art. See In re Keller,
642 F.2d 413 (CCPA 1981).
Patent Owner’s argument that Qureshey teaches away from a
recharging circuit because “[o]ne of ordinary skill would have recognized
the danger of recharging a disposable battery” (PO App. 22) is unpersuasive
because it fails to establish persuasively the factual premise that “[i]n 2000,
[transistor radios] ran on [non-rechargeable] D cell batteries.”
Patent Owner assets a lack of motivation to combine Qureshey and
Cooper based on Requester’s expert’s comments. PO App. Br. 27. Patent
Owner asserts hindsight reconstruction and Federal Circuit law in arguing
that combining functionality found in separate references in order to have all
of the functionality of the claim is circular and improper. Id. at 27–28
(citing Kinetic Concepts v. Smith & Nephew, 688 F.3d l342, l369 (Fed. Cir.
2012). We are unpersuaded of error at least because Patent Owner’s
arguments fail to consider the numerous and thorough reasons for combining
Qureshey and Cooper in the Request. See Request p. 59.
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Patent Owner also argues that the proffered “significant evidence of
secondary considerations of nonobviousness” must be considered and render
the rejections improper. PO App. Br. 28–31. We are unpersuaded at least
for the reasons stated by the Examiner. Ans. 26–28. For emphasis we note
that Patent Owner’s evidence of secondary considerations fails to establish
the required nexus between the claimed features and the evidence of
secondary considerations. See, e.g., In re Huang, 100 F.3d 135, 140 (Fed.
Cir. 1996). We adopt the Examiner’s findings as to the evidence of
secondary considerations (Ans. 26–28) and the Examiner’s conclusion that
the evidence fails to overcome the obviousness rejections.
In view of the foregoing, we are unpersuaded of error in the
Examiner’s rejection of claims 1, 3–8, 10, 11, 14, 16–19, and 21–23 as
obvious over Qureshey and Cooper. Patent Owner does not separately argue
the rejection of claims 9 and 15 as obvious over Qureshey, Cooper, and
empeg. Accordingly, we affirm the Examiner’s decision to reject claims 1,
3–11, 14–19, and 21–23, all claims subject to reexamination.

CONCLUSIONS
The Examiner did not err in rejecting claims 1, 3–8, 10, 11, 14, 16–19,
and 21–23 as obvious over Qureshey and Cooper and did not err in rejecting
claims 9 and 15 as obvious over Qureshey, Cooper, and empeg.
In view of our affirmance of the Examiner’s decision to reject claims
1, 3–8, 10, 11, 14, 16–19, and 21–23 as obvious over Qureshey and Cooper
and claims 9 and 15 as obvious over Qureshey, Cooper, and empeg, it is
unnecessary to reach the remaining rejections, as all claims subject to
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reexamination have been addressed and found unpatentable. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional
obviousness rejections).
DECISION
We sustain the Examiner’s decision to reject claims 1, 3–8, 10, 11, 14,
16–19, and 21–23.
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 (c) of this
section, and for submitting comments under paragraph (b) 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
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).
This is a final decision. Parties to the proceeding seeking
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judicial review of the decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2. For judicial review of decisions arising
out of proceedings referenced in 37 C.F.R. § 90.1, the notice and service
requirements are governed by the pertinent regulations in effect on July 1,
2012.

AFFIRMED

Patent Owner:

Trop, Pruner & Hu, P.C.
1616 S. Voss Road
Suite 750
Houston, TX 77057-2631

Third Party Requester:

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