UNIVERSAL ELECTRONICS INC.

Patent Trials and Appeals Board

Nov 3, 2020

2019004439 (P.T.A.B. Nov. 3, 2020)

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.
14/728,027 06/02/2015 Marcel Hilbrink 81230.107US5 2303
34018 7590 11/03/2020
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
KHAN, OMER S
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
11/03/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chiipmail@gtlaw.com
clairt@gtlaw.com
jarosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCEL HILBRINK, PATRICK H. HAYES, and
JEREMY K. BLACK
____________

Appeal 2019-004439
Application 14/728,027
Technology Center 2600
____________

Before JEAN R. HOMERE, JEFFREY S. SMITH, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–15, which are all the claims pending and rejected in the
application. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Universal Electronics Inc. as the real party in interest.
Appeal Br. 2.

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STATEMENT OF THE CASE
Introduction
The present claimed subject matter relates to “media rendering
devices.” Spec. 1:12–13. In particular,
an advanced control device . . . is able to play back rendered
media files on a users entertainment appliance(s). As a user
operates the onboard media rendering capabilities of the
advanced control device, the current media content being
rendered may be played back on the users entertainment
appliance(s) by placing the control device in the associated
docking station. Based on detection by the control device of
docked or undocked states, various additional control and
media playback functions may be effected.

Spec. 2:25–3:7. Claim 1 is exemplary:
1. A method for using a wireless interface device interfaced to an
appliance to facilitate play a media stream, comprising:
receiving at a portable electronic device the media stream;
causing the portable electronic device to route the received media
stream for a playing of the received media stream by the portable electronic
device;
detecting by the portable electronic device that the portable electronic
device has been placed into wireless communication with the wireless
interface device interfaced to the appliance; and
in response to the portable electronic device detecting that the portable
electronic device has been placed into wireless communication with the
wireless interface device interfaced to the appliance, causing the portable
electronic device to automatically reroute the received media stream to the
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wireless interface device interfaced to the appliance for a playing of the
received media stream by the appliance instead of routing the received
media stream for the playing of the received media steam by the portable
electronic device.

References and Rejections2

Claims
Rejected
35 U.S.C. § References
1–3, 6–11, 15 112 (written
description)

1–7, 10–13 103 Falcon (US 2004/0098571 A1; May 20, 2004), Dua
(US 2006/0258289 A1; Nov. 16, 2006)
8–9, 14–15 103 Falcon, Dua, Komori (US 2011/0162014 A1; Jun.
30, 2011 )

RELATED APPEALS

U.S. Patent Application No. 11/179,289 (PTAB affirmed the
Examiner’s decision)
U.S. Patent Application No. 13/801,801 (PTAB affirmed the
Examiner’s decision)
U.S. Patent Application No. 15/341,777 (PTAB affirmed the
Examiner’s decision)

2 Throughout this opinion, we refer to the (1) Non-Final Office Action dated
November 30, 2018 (“Final Act.”); (2) Appeal Brief dated February 27,
2019 (“Appeal Br.”); (3) Examiner’s Answer dated March 25, 2019(“Ans.”);
and (4) Reply Brief dated May 16, 2019 (“Reply Br.”).
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ANALYSIS
Written Description
Claim 1
The Examiner determines the limitation
in response to the portable electronic device detecting that the
portable electronic device has been placed into wireless
communication with the wireless interface device interfaced to
the appliance, causing the portable electronic device to
automatically reroute the received media stream to the wireless
interface device interfaced to the appliance,

as recited in claim 1, does not meet the written description requirement. See
Final Act. 4–7; 13–15. In particular, the Examiner determines:

Applicant states, “the only difference in the systems being that
Fig. 8 illustrates a wired interface while Fig. 9 illustrates a
wireless interface, it is evident that any description with respect
to the operation of the system shown in Fig. 8 is equally
applicable to the operation of the system shown in Fig. 9 with
the only difference in the operation being the use of wired
communications between the portable electronic device and the
interface in the system of Fig. 8 and the use of wireless
communications between the portable electronic device” . . . .
This argument is not persuasive because . . . PHOSITA[] would
know that the possession of (A) placing the portable electronic
device into wireless communication with the wireless interface
device, in response to the portable electronic device . . .
detecting that the portable electronic device has been placed
into wireless communication with the wireless interface device
and then causing the portable electronic device to automatically
reroute the received media stream to the wireless interface
device would require additional programming than (B) merely
placing the portable electronic device into wired
communication with the docking station, in response to the
docking station . . . detecting that the portable electronic device
detecting that the portable electronic device has been placed
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into wired communication with the docking station and then
causing the portable electronic device to automatically reroute
the received media stream to the docking station. Where A is
the claimed languages and B is the disclosed possession. The
difference of this magnitude is not meek, and a PHOSITA
conceiving and reducing the claimed invention to practice
would have explicitly shown the possession in their disclosure
at the time of invention . . . . For this reason, Applicant
conclusory opinion and argument is not persuasive . . . .

Final Act. 6–7 (emphases omitted).
Appellant provides a Declaration of Patrick Hayes dated February 19,
2018 (“Declaration”), which explains:
Because Fig. 8 and Fig. 9 of the subject application, as shown
below, both illustrate the same system that allows a portable
electronic device to be interfaced to an appliance, with the only
difference in the systems being that Fig. 8 illustrates a wired
interface while Fig. 9 illustrates a wireless interface, it is
evident that any description with respect to the operation of the
system shown in Fig. 8 is equally applicable to the operation of
the system shown in Fig. 9 with the only difference in the
operation being the use of wired communications between the
portable electronic device and the interface in the system of Fig.
8 and the use of wireless communications between the portable
electronic device and the interface in the system of Fig. 9.

Declaration ¶ 35.
We agree with Appellant. To satisfy the written description
requirement, the disclosure must reasonably convey to skilled artisans that
Appellant possessed the claimed invention as of the filing date. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). Specifically, the description must “clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed” and
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the test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
. . . . [T]he level of detail required to satisfy the written
description requirement varies depending on the nature and
scope of the claims and on the complexity and predictability of
the relevant technology. For generic claims, we have set forth a
number of factors for evaluating the adequacy of the disclosure,
including “the existing knowledge in the particular field, the
extent and content of the prior art, the maturity of the science or
technology, [and] the predictability of the aspect at issue.”
Id. (internal quotations and citations omitted).
[T]he description requirement does not demand any particular
form of disclosure, or that the specification recite the claimed
invention in haec verba . . . .
Id. at 1352 (citations omitted).
In this case, the Specification discloses:

For example, when docking station 700 is configured without
wireless communication means as shown in FIG. 4 and is
essentially a signal pass through for remote control 10,
programming on remote control 10 may be configured to play
rendered media from onboard display or speaker elements
(local playback mode) when in an undocked state, and upon
initiation of a dock event, to reroute the currently playing media
information from the onboard display or speaker elements to
the signal contacts 104 for playback on the users entertainment
appliance(s) ( external playback mode) connected to connection
interface 714 of the docking station. In this way a user may
easily switch between the local playback mode and external
playback mode by simply docking and undocking the remote
control as desired. Additionally, programming on the remote
control 10 may implement command and control events for the
entertainment appliance(s) on which media information is to be
played in response to detection of dock and undock states. For
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example, in order that an audio file being played back locally
on the remote control 10 begins playing externally on the users
desired audio receiver connected to the docking station when a
dock event occurs without further intervention by the user, the
remote control may be programmed to power on the audio
receiver and select the correct input mode upon detection of a
dock event. . . . .

For systems in which the docking station includes wireless
and/or other functional capabilities as generally described in
connection with FIG. 6 above, additional features and functions
may be accomplished. For example, as shown generally in FIG.
9, a wireless capable docking station may be configured to
receive media information from remote control 10 wirelessly
before output to entertainment appliances 12.

Spec. 12:8–13:15 (emphasis added).
As shown above, “[f]or systems in which the docking station includes
wireless and/or other functional capabilities . . . additional features and
functions may be accomplished.” Spec. 13:11–13 (describing the system of
Figure 9). That description of the wireless system (shown in Figure 9)
immediately follows the description of the wired system. Therefore, one
skilled in the art would understand that the wireless system has the features
and functions of the wired system described in the previous paragraph
(quoted above starting with “[f]or example”), as well as “additional features
and functions” such as wireless capabilities.
The Examiner’s finding that “causing the portable electronic device to
automatically reroute the received media stream to the wireless interface
device would require additional programming” (Final Act. 6 (emphasis
omitted)) is unpersuasive. According to the Federal Circuit, “the level of
detail required to satisfy the written description requirement varies
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depending on the nature and scope of the claims and on the complexity and
predictability of the relevant technology.” Ariad, 598 F.3d at 1351.
Consistent with the Specification (Spec. 13:11–13), Appellant’s declarant,
Mr. Patrick Hayes, testifies that “any description with respect to the
operation of the system shown in Fig. 8 is equally applicable to the operation
of the system shown in Fig. 9 with the only difference in the operation being
. . . the use of wireless communications.” Declaration ¶ 35. That testimony
suggests the details of using wireless (instead of wired) communications
were not particularly complex or unpredictable, and the Examiner does not
persuasively explain why one skilled in the art would need to see such
details in the Specification to determine the inventors actually invented the
claimed method.
Further, “written description is about whether the skilled reader of the
patent disclosure can recognize that what was claimed corresponds to what
was described; it is not about whether the patentee has proven to the skilled
reader that the invention works, or how to make it work, which is an
enablement issue.” Centrak, Inc. v. Sonitor Technologies, Inc., 915 F.1360,
1366 (Fed. Cir. 2014). Here, one skilled in the art would recognize that the
claimed “causing the portable electronic device to automatically reroute the
received media stream to the wireless interface device interfaced to the
appliance” corresponds to the Specification’s disclosure of rerouting
currently playing media using the functions and features of the wireless
system of Figure 9, as the wireless system includes the functions and
features of the wired system. See Spec. 12:8–13:15.
Therefore, we agree with Appellant that the Specification reasonably
conveys to skilled artisans that as of the filing date, Appellant possessed the
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claimed invention with respect to the above claim limitation. See Ariad
Pharms., 598 F.3d at 1351; Declaration ¶¶ 30–36. As a result, the
“specification . . . describe[s] an invention understandable to th[e] skilled
artisan and show[s] that the inventor actually invented the invention
claimed” with respect to the limitation
in response to the portable electronic device detecting that the
portable electronic device has been placed into wireless
communication with the wireless interface device interfaced to
the appliance, causing the portable electronic device to
automatically reroute the received media stream to the wireless
interface device interfaced to the appliance,
as recited in claim 1. See Ariad Pharms., 598 F.3d at 1351.
Accordingly, we reverse the Examiner’s written description
rejection of claim 1.

Claims 2 and 8
The Examiner determines the limitation
wherein, in response to the portable electronic device detecting
that the portable electronic device has been placed into wireless
communication with the wireless interface device interfaced to
the appliance, further causing the appliance to be automatically
placed into an operating state appropriate for the playing of the
received media stream by the appliance,

as recited in claim 2, and
wherein causing the appliance to be automatically placed into
the operating state appropriate for the playing of the received
media stream by the appliance comprises causing the appliance
to be automatically placed into a powered on state,
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as recited in claim 8, do not meet the written description requirement. See
Final Act. 7–8, 15, 17–18. In particular, the Examiner finds:
Applicant’s arguments are not persuasive because although the
application shows possession of “an audio file being played
back locally on the remote control 10 begins playing externally
on the users desired audio receiver connected to the docking
station when a dock event occurs without further intervention
by the user, the remote control may be programmed to power
on the audio receiver and select the correct input mode upon
detection of a dock event.” This is not equivalent to the claimed
subject matter of [the disputed limitations] in claim 2 and . . .
claim 8. The difference of this magnitude is not meek, and a
PHOSITA conceiving and reducing the claimed invention to
practice would have explicitly shown the possession in their
disclosure at the time of invention, and therefore placing the
public on notice with the metes of the bounds of their invention.

Final Act. 7–8.
Appellant points to the Declaration, which explains:
38. The subject application describes that, to facilitate the
rerouting of the media to the appliance from the portable
electronic device, when a docking event is detected the
programmable electronic device may be programmed to
additionally power on the audio receiver and select the correct
input mode, (Pg. 12, line 19-Pg. 13, line 1).

39. . . . because the subject application describes a portable
electronic device which responds to a detected docking event
by placing an appliance into a given operating state, e.g.,
powered on, and describes a portable electronic device in which
the wireless receipt of an address signifies to the portable
electronic device that the portable electronic device is docked
with, i.e., has been placed into wireless communication with,
the docking station acting as a wireless interface for an
appliance . . . to one of skill in the art . . . the subject application
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shows, with reasonable clarity, possession by the inventors of
the [disputed] feature of . . . claim 2 . . . .

40. . . . because the subject application describes a portable
electronic device which responds to a detected docking event
by placing an appliance into a given operating state, e.g.,
powered on, and describes a portable electronic device in which
the wireless receipt of an address signifies to the portable
electronic device that the portable electronic device is docked
with, i.e., has been placed into wireless communication with,
the docking station acting as a wireless interface for the
appliance . . . to one of skill in the art . . . the subject application
shows, with reasonable clarity, possession by the inventors of
the [disputed] feature of . . . claim 8 . . . .

Declaration ¶¶ 38–40.
We agree with Appellant that the cited excerpts of the Specification
reasonably conveys to skilled artisans that as of the filing date, Appellant
possessed the claimed invention with respect to the above claim limitations.
See Ariad Pharms., 598 F.3d at 1351; Declaration ¶¶ 38–40. In particular, in
addition to the discussions above with respect to claim 1, the Specification
describes
in order that an audio file being played back locally on the
remote control 10 begins playing externally on the users desired
audio receiver connected to the docking station when a dock
event occurs without further intervention by the user, the
remote control may be programmed to power on the audio
receiver and select the correct input mode upon detection of a
dock event.
Spec. 12:20–13:1.
Therefore, the “specification . . . describe[s] an invention
understandable to th[e] skilled artisan and show[s] that the inventor actually
invented the invention claimed” with respect to
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wherein, in response to the portable electronic device detecting
that the portable electronic device has been placed into wireless
communication with the wireless interface device interfaced to
the appliance, further causing the appliance to be automatically
placed into an operating state appropriate for the playing of the
received media stream by the appliance,

as recited in claim 2, and
wherein causing the appliance to be automatically placed into
the operating state appropriate for the playing of the received
media stream by the appliance comprises causing the appliance
to be automatically placed into a powered on state,

as recited in claim 8. See Ariad Pharms., 598 F.3d at 1351.
Accordingly, we reverse the Examiner’s written description
rejection of claims 2 and 8.

Claims 3 and 9
The Examiner determines the limitation

comprising causing the portable electronic device to transmit a
command to the appliance to cause the appliance to be placed
into the operating mode and wherein the command is
automatically caused to be transmitted by the portable
electronic device in response to the portable electronic device
detecting that the portable electronic device has been placed
into wireless communication with the wireless interface device
interfaced to the appliance,

as recited in claim 3, and
wherein causing the appliance to be automatically placed into
the powered on state comprises causing the portable electronic
device to automatically transmit a power control command to
the appliance,
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as recited in claim 9, do not meet the written description requirement. See
Final Act. 9–10; 15–16, 18. In particular, the Examiner finds:
Applicant cites page 12 line 17 - page 13 line 1 of the subject
application ’027: “programming on the remote control 10 may
implement command and control events for the entertainment
appliance(s) on which media information is to be played in
response to detection of dock and undock states. For example,
in order that an audio file being played back locally on the
remote control 10 begins playing externally on the users desired
audio receiver connected to the docking station when a dock
event occurs without further intervention by the user, the
remote control may be programmed to power on the audio
receiver and select the correct input mode upon detection of a
dock event.” Applicant cites page 2 lines 9-10 “the HP iPaq
rx3xxx series of Pocket PC’s is able to function as a wireless
control device using onboard software and wireless
communication (IR and/or RF) capabilities, and also
incorporates media rendering capabilities in that it can stream
and playback media content from a server.” Unfortunately,
none of this shows that Applicant had the possession of [the
disputed limitations of] claim 3 and . . . claim 9.

Final Act. 9–10 (emphases omitted).
Appellant points to the Declaration, which explains:
43. The subject application describes that, to facilitate the
rerouting of the media to the appliance from the portable
electronic device, when a docking event is detected the portable
electronic device may be programmed to implement command
and control and, thereby to additionally power on the audio
receiver and select the correct input mode for the audio
receiver. (Pg. 12, line 17-Pg. 13, line 1).

44. The subject application describes that the portable
electronic device is able to function as a wireless control device
using onboard software and wireless communication
capabilities (Pg. 2, lines 940) and that the portable electronic
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device is adapted to transmit recognizable command codes in
the format appropriate for a target appliance. (Pg. 7, line 8-Pg.
8, line 10).

45. . . . because the subject application describes a portable
electronic device being programmed to respond to a detected
docking event by placing an appliance into a given operating
state, e.g., to command the device to power on or to select an
input, and describes a portable electronic device in which the
wireless receipt of an address signifies a docking event to the
portable electronic device, i.e., that the portable electronic
device has been placed into wireless communication with the
docking station acting as a wireless interface for the appliance, .
. . to one of skill in the art . . . the subject application shows,
with reasonable clarity, possession by the inventors of the
claimed feature of . . . claim 3 . . . .

46. . . . because the subject application describes a portable
electronic device being programmed to respond to a detected
docking event by placing an appliance into a given operating
state, e.g., to command the device to power on or to select an
input, and describes a portable electronic device in which the
wireless receipt of an address signifies a docking event to the
portable electronic device, i.e., that the portable electronic
device has been placed into wireless communication with the
docking station acting as a wireless interface for the appliance, .
. . to one of skill in the art . . . the subject application shows,
with reasonable clarity, possession by the inventors of the
claimed feature of . . . claim 9 . . . .

Declaration ¶¶ 43–46.
We agree with Appellant that the cited excerpts of the Specification
reasonably conveys to skilled artisans that as of the filing date, Appellant
possessed the claimed invention with respect to the above claim limitations.
See Ariad Pharms., 598 F.3d at 1351; Declaration ¶¶ 43–46. In particular, in
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addition to the discussions above with respect to claim 1, the Specification
describes
Additionally, programming on the remote control 10 may
implement command and control events for the entertainment
appliance(s) on which media information is to be played in
response to detection of dock and undock states. For example,
in order that an audio file being played back locally on the
remote control 10 begins playing externally on the users desired
audio receiver connected to the docking station when a dock
event occurs without further intervention by the user, the
remote control may be programmed to power on the audio
receiver and select the correct input mode upon detection of a
dock event.

Spec. 12:17–13:1.
Therefore, the “specification . . . describe[s] an invention
understandable to th[e] skilled artisan and show[s] that the inventor actually
invented the invention claimed” with respect to
comprising causing the portable electronic device to transmit a
command to the appliance to cause the appliance to be placed
into the operating mode and wherein the command is
automatically caused to be transmitted by the portable
electronic device in response to the portable electronic device
detecting that the portable electronic device has been placed
into wireless communication with the wireless interface device
interfaced to the appliance,

as recited in claim 3, and
wherein causing the appliance to be automatically placed into
the powered on state comprises causing the portable electronic
device to automatically transmit a power control command to
the appliance,
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as recited in claim 9. See Ariad Pharms., 598 F.3d at 1351.
Accordingly, we reverse the Examiner’s written description rejection
of claims 3 and 9.

Claims 6 and 73
On this record, the Examiner did not err in rejecting claims 6 and 7.
We have reviewed and considered Appellant’s arguments, but such
arguments are unpersuasive. To the extent consistent with our analysis
below, we adopt the Examiner’s findings and conclusions in (i) the action
from which this appeal is taken and (ii) the Answer.
The Examiner determines the limitation “causing the portable
electronic device to receive the media stream from a server device via a wide
area network,” as recited in claim 6; and “causing the portable electronic
device to receive the media stream from a server device via a local area
network,” as recited in claim 7, do not meet the written description
requirement. See Final Act. 10, 16–17. In particular, the Examiner finds:
Applicant cites page 5 line 1-2 and page 1 line 12-15 and Fig. 9
of the subject application ’027: “IR and/or RF communication
links, and media rendering functions (Many consumers have
begun storing digital media files such as photos, audio files,
video files, and multimedia files on personal computers,
laptops, servers, or other computing devices for playback and
sharing purposes . . . i.e., Audio/video streaming and playback
from a remote server). One example of such advanced control
devices is the iPaq rx3xxx series of Pocket PC’s by Hewlett
Packard Corp . . .” Claimed WAN wide area network and LAN

3 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause with respect to claims 6 and 7, Appellant has
waived such arguments. See 37 C.F.R. § 41.41(b)(2).
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local area network are specific terms of art and they are not
interchangeable substituted by “IR and/or RF communication
links.” Nonetheless, cited sections fails to show possession of
[the disputed limitations of] claim 6 and . . . claim 7.

Final Act. 10 (emphases omitted).
Appellant points to the Declaration, which explains:
49. The subject application describes that the portable
electronic device includes media rendering functionality for
allowing the portable electronic device to perform audio/video
streaming and playback from a remote server. (Pg. 5, lines 1-2),
Additionally, the subject application describes that it is known
in the art that digital media files to be played back on a device
may be retrieved from personal computers, laptops, servers, or
other computing devices. (Pg. 1, lines 12-15; Fig. 9).
Furthermore, the subject application describes that the server
may be any remote computing device from which media files
may be made accessible to the portable electronic device for
streaming and/or media rendering purposes. (Pg. 12, lines 2-4).

50. . . . because the subject application describes a remote
server and those of skill in the art . . . will readily appreciate
that remote media providing servers are conventionally
provided on the internet, e.g., are part of a wide area network,
and/or are conventionally provided within a home, e.g., are part
of local area network, by simply describing that the media files
are to be retrieved from a server . . . to one of skill in the art . . .
the subject application shows, with reasonable clarity,
possession by the inventors of the claimed feature of . . . claim
6 . . . .

51. . . . because the subject application describes a remote
server and those of skill in the art . . . will readily appreciate
that remote media providing servers are conventionally
provided on the Internet, e.g., are part of a wide area network,
and/or are conventionally provided within a home, e.g., are part
of local area network, by simply describing that the media files
are to be retrieved from a server, interface . . . to one of skill in
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the art . . . the subject application shows, with reasonable
clarity, possession by the inventors of the claimed feature of . . .
claim 7 . . . .

Declaration ¶¶ 49–51.
We disagree with Appellant, because the written description statute
“requires that the written description actually or inherently disclose the
claim element.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
1306–07 (Fed. Cir. 2008).
[I]t is []not a question of whether one skilled in the art might be
able to construct the patentee’s device from the teachings of the
disclosure . . . . Rather, it is a question whether the application
necessarily discloses that particular device[]. . . . A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997) (internal quotation marks and citations omitted) (emphases added).
The cited excerpts of the Specification explain:
RF communication links, and media rendering functions (i.e.,
Audio/video streaming and playback from a remote server).
One example of such advanced control devices is the iPaq . . . .
Spec. 5:1–2.
Many consumers have begun storing digital media files such as
photos, audio files, video files, and multimedia files on personal
computers, laptops, servers, or other computing devices for
playback and sharing purposes. These consumers also typically
have one or more . . . .
Spec. 1:12–15.
receiver 54 of docking station 700. It will be understood that
server 90 may be any remote computing device, from which
media files may be made accessible to remote control 10 for
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streaming and/or media rendering purposes as contemplated by
the present invention.
Spec. 12:2–4.
As shown above, the cited excerpts of the Specification do not
actually or inherently disclose “causing the portable electronic device to
receive the media stream from a server device via a wide area network” and
“causing the portable electronic device to receive the media stream from a
server device via a local area network,” as recited in claims 6 and 7
(emphases added), respectively. See PowerOasis, 522 F.3d at 1306–07.
Therefore, the cited excerpts of the Specification do not “describe an
invention understandable to th[e] skilled artisan” and do not “show that the
inventor actually invented the invention claimed” with respect to claims 6
and 7. See Ariad Pharms., 598 F.3d at 1351.
Because the cited excerpts of the Specification do not reasonably
convey to skilled artisans that as of the filing date, Appellant possessed the
subject matter of claims 6 and 7, we affirm the Examiner’s written
description rejection of claims 6 and 7.

Claims 10 and 11
The Examiner determines the limitation
causing the appliance to be automatically placed into the
operating state appropriate for the playing of the received media
stream on the appliance comprises causing the appliance to be
automatically placed into a selected input mode state,

as recited in claim 10, and
causing the appliance to be automatically placed into a selected
input mode state comprises causing the portable electronic
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device to automatically transmit an input mode selection
command to the appliance

as recited in claim 11, do not meet the written description requirement. See
Final Act. 8–9, 18–19. In particular, the Examiner finds:
Applicant states “portable electronic device in which the
wireless receipt of an address signifies to the portable electronic
device that the portable electronic device is docked with, i.e.,
has been placed into wireless communication with, the docking
station acting as a wireless interface.” . . . . The subject
application describes physical connection between the remote
control 10 with a docking station 700 as a docking event and
removing of the remote control 10 from the docking station 700
as an “undock” event. And now . . . Applicant is suggesting that
“portable electronic device in which the wireless receipt of an
address signifies to the portable electronic device that the
portable electronic device is docked with, i.e., has been placed
into wireless communication with, the docking station acting as
a wireless interface.” Applicant is suggesting that mere wireless
receipt of an address to the portable electronic device from the
docking station can show the possession of [disputed limitation
of claim 10.] Examiner . . . disagrees, because mere possession
of disclosure (A) wireless receipt of an address to the portable
electronic device from the docking station does not show
possession of claimed limitation (B) appliance to be
automatically placed into a powered on state comprises causing
the portable electronic device to automatically transmit a power
control command to the appliance . . . in response to the
portable electronic device detecting that the portable electronic
device has been placed into wireless communication with the
with the wireless interface device interfaced. Arguments with
respect to claim 11 is not persuasive for the same reason.

Final Act. 8–9 (emphases omitted).
Appellant points to the Declaration, which explains:
41. . . . because the subject application describes a portable
electronic device which responds to a detected docking event
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by placing an appliance into a given operating state, e.g., an
input mode selected, and describes a portable electronic device
in which the wireless receipt of an address signifies to the
portable electronic device that the portable electronic device is
docked with, i.e., has been placed into wireless communication
with, the docking station acting as a wireless interface for an
appliance . . . to one of skill in the art . . . the subject application
shows, with reasonable clarity, possession by the inventors of
the claimed feature of . . . claim 10 . . . .

47. . . . because the subject application describes a portable
electronic device being programmed to respond to a detected
docking event by placing an appliance into a given operating
state, e.g., to command the device to power on or to select an
input, and describes a portable electronic device in which the
wireless receipt of an address signifies a docking event to the
portable electronic device, i.e., that the portable electronic
device has been placed into wireless communication with the
docking station acting as a wireless Interface for the appliance .
. . to one of skill in the art . . . the subject application shows,
with reasonable clarity, possession by the inventors of the
claimed feature of . . . claim 11.

Declaration ¶¶ 41, 47.
We agree with Appellant that the cited excerpts of the Specification
reasonably conveys to skilled artisans that as of the filing date, Appellant
possessed the claimed invention with respect to the above claim limitations.
See Ariad Pharms., 598 F.3d at 1351; Declaration ¶¶ 41–47. In particular, in
addition to the discussions above with respect to claims 1 and 2, the
Specification describes
Additionally, programming on the remote control 10 may
implement command and control events for the entertainment
appliance(s) on which media information is to be played in
response to detection of dock and undock states. For example,
in order that an audio file being played back locally on the
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remote control 10 begins playing externally on the users desired
audio receiver connected to the docking station when a dock
event occurs without further intervention by the user, the
remote control may be programmed to power on the audio
receiver and select the correct input mode upon detection of a
dock event.

Spec. 12:17–12:1.
Therefore, the “specification . . . describe[s] an invention
understandable to th[e] skilled artisan and show[s] that the inventor actually
invented the invention claimed” with respect to
causing the appliance to be automatically placed into the
operating state appropriate for the playing of the received media
stream on the appliance comprises causing the appliance to be
automatically placed into a selected input mode state,

as recited in claim 10, and
causing the appliance to be automatically placed into a selected
input mode state comprises causing the portable electronic
device to automatically transmit an input mode selection
command to the appliance,

as recited in claim 11. See Ariad Pharms., 598 F.3d at 1351.
Accordingly, we reverse the Examiner’s written description rejection
of claims 10 and 11.

Claim 15
The Examiner determines the limitation
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causing the wireless interface device interfaced to the appliance
to convert the rerouted media stream received by the wireless
interface device interfaced to the appliance into a format
appropriate for the playing of the media stream by the
appliance,

as recited in claim 15, does not meet the written description requirement.
See Final Act. 10–11; 19–20. In particular, the Examiner finds:
Applicant cites page 9 lines 13-18 and page 11 line 8-7 and Fig.
9 . . .: “output interface 714 could be any connection type,
including but not limited to RCA, Optical TOS, S-Video,
Component Video, DVI, Coaxial, HDMI, etc. Additionally,
circuitry and other signal conversion means may be
implemented with docking station 700 to enable the output of a
wide variety of signals, digital or analog, from docking station
700 without departing from the spirit and scope of the current
invention . . . due to the wide variety of communication
methods and protocols that may be required to adequately
communicate information to and/or from the docking station,
the ability of the remote control and/or docking station to
dynamically transmit and receive a greater number of protocols
will enable compatibility for media rendering and streaming
operations with a greater number of media types and formats. It
will additionally be appreciated that programming on the
remote control and/or or docking station may be used for
making determinations as to which communication methods
and protocols may be used for a given media format to most
effectively bring about desired media rendering operations, as
described in greater detail below.” Cited sections fails to show
possession of [the disputed limitation of] claim 15.

Final Act. 10–11 (emphases omitted).
Appellant points to the Declaration, which explains:
53. The subject application describes a docking station that will
use a wide variety of communication protocols to communicate
information from the docking station to thereby enable
compatibility for media rendering and streaming operations
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with a greater number of media types and formats, that the
docking station will make determinations as to which
communication protocols to use for a given media format to
most effectively bring about a desired media rendering
operation, and that the docking station will receive media from
the portable electronic device via use of a RF communication
protocol and will transfer the received media to the appliance(s)
via use of a wired communication protocol (Pg. 9, lines 13-18;
Pg. 11, lines 8-17).

54. . . . because the subject application shows possession of the
docking station being a wireless interface to an appliance and
because the subject application describes that the docking
station may be programmed to use a wide variety of protocols
to thereby enable compatibility for media rendering, including
converting a media received via a wireless protocol format into
a media appropriate for transmission using a wired protocol
format, the subject application shows, with reasonable clarity,
possession . . . of the claimed feature of . . . claim 15.

Declaration ¶¶ 53–54.
We agree with Appellant that the cited excerpts of the Specification
reasonably conveys to skilled artisans that as of the filing date, Appellant
possessed the claimed invention with respect to the above claim limitation.
See Ariad Pharms., 598 F.3d at 1351; Declaration ¶¶ 53–54. In particular, in
addition to the discussions above with respect to claim 1, the Specification
describes
It will be understood that output interface 714 could be any
connection type, including but not limited to RCA, Optical
TOS, S-Video, Component Video, DVI, Coaxial, HDMI, etc.
Additionally, circuitry and other signal conversion means may
be implemented with docking station 700 to enable the output of
a wide variety of signals, digital or analog, from docking
station 700 without departing from the spirit and scope of the
current invention.
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Spec. 9:12–17 (emphases added).

It will be appreciated that due to the wide variety of
communication methods and protocols that may be required to
adequately communicate information to and/or from the
docking station, the ability of the remote control and/or docking
station to dynamically transmit and receive a greater number of
protocols will enable compatibility for media rendering and
streaming operations with a greater number of media types and
formats. It will additionally be appreciated that programming
on the remote control and/or or docking station may be used for
making determinations as to which communication methods
and protocols may be used for a given media format to most
effectively bring about desired media rendering operations, as
described in greater detail below.

Spec. 11:8–17 (emphasis added).
As shown above in the italicized text and the discussions about claim
1, the “specification . . . describe[s] an invention understandable to th[e]
skilled artisan and show[s] that the inventor actually invented the invention
claimed” with respect to
causing the wireless interface device interfaced to the appliance
to convert the rerouted media stream received by the wireless
interface device interfaced to the appliance into a format
appropriate for the playing of the media stream by the
appliance,

as recited in claim 15. See Ariad Pharms., 598 F.3d at 1351.
Accordingly, we reverse the Examiner’s written description rejection
of claim 15.
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Obviousness

Appellant contends Dua is not prior art because “Dua - which was
filed on May 12, 2005 - fails to be prior art with respect to the subject
application - which is entitled to a filing date at least as early as July 16,
2004.” Appeal Br. 12.
The Examiner determines Dua is prior art. See Final Act. 13–14. The
Examiner determines claim 1 is not entitled to the priority date of the
Provisional Application, because the Provisional Application does not
disclose
in response to the portable electronic device detecting that the
portable electronic device has been placed into wireless
communication with the wireless interface device interfaced to
the appliance, causing the portable electronic device to
automatically reroute the received media stream to the wireless
interface device interfaced to the appliance for a playing of the
received media stream by the appliance,

as recited in claim 1. See Final Act. 13–14.
We disagree with the Examiner. The present application was filed on
June 2, 2015, and the “application claims the benefit of and is a continuation
of U.S. Application No. 11/179,289, filed July 11, 2005 [’289 application],
which application claims the benefit of U.S. Provisional Application No.
60/588,523, filed on July 16, 2004 [Provisional Application].” Spec. 1:5–8.
The Provisional Application explains:
For example, when docking station 700 is configured without
wireless communication means as shown in Fig. 4 and is
essentially a signal pass through for remote control 10,
programming on remote control 10 may be configured to play
rendered media from on board display or speaker elements
(local playback mode) when in an undocked state, and upon
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initiation of a dock event, to reroute the currently playing media
information from the onboard display or speaker elements to
the signal contacts 104 for playback on the users entertainment
appliance(s) (external playback mode) connected to connection
interface 714 of the docking station. In this way a user may
easily switch between the local playback mode and external
playback mode by simply docking and undocking the remote
control as desired. Additionally, programming on the remote
control 10 may implement command and control events for the
entertainment appliance(s) on which media information is to be
played in response to detection of dock and undock states. For
example, in order that an audio file being played back locally
on the remote control 10 begins playing externally on the users
desired audio receiver connected to the docking station when a
dock event occurs without further intervention by the user, the
remote control may be programmed to power on the audio
receiver and select the correct input mode upon detection of a
dock event. . . . .

For systems in which the docking station includes wireless
and/or other functional capabilities as generally described in
connection with Fig. 6 above, additional features and functions
may be accomplished. For example, as shown generally in Fig.
9, a wireless capable docking station may be configured to
receive media information from remote control 10 wirelessly
before output to entertainment appliances 12.

Spec. 11:20–13:3 (emphases added).
Similar to the discussion above with respect to the written description
rejection of claim 1, the above excerpts of the Provisional Application
reasonably convey to skilled artisans that as of the filing date, Appellant
possessed the claimed invention with respect to the “in response to”
limitation of claim 1. See Ariad Pharms., 598 F.3d at 1351. Therefore, the
“in response to” limitation is entitled to the Provisional Application’s
priority date of July 16, 2004. Because the Examiner does not dispute
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Appellant’s representation that the remaining limitations of claim 1 are
entitled to the Provisional Application’s priority date, claim 1 has a priority
date of July 16, 2004. As a result, Dua does not qualify as prior art for claim
1, because Dua was filed on May 12, 2005—after July 16, 2004.
Because the Examiner erred in using Dua to reject claim 1, we reverse
the Examiner’s obviousness rejection of independent claim 1.
For similar reasons, we reverse the Examiner’s obviousness rejection
of corresponding dependent claims 2–14.

Additional Arguments
Appellant raises additional arguments regarding the qualification of
Komori as prior art, and the obviousness rejection of claim 8. See Appeal
Br. 12–13. Because the identified issue of Dua is dispositive of the appeal
with respect to the prior art rejections of claim 1–15, we do not address the
additional arguments.

Objections to the Specification
The Examiner finds:
Examination of this application has determined that the Claim
1-15 has earliest support as of 06/02/2015, the filing date of
14/728,027. With respect to claims 1-15, claim 1 recites, “. . . in
response to the portable electronic device detecting that the
portable electronic device has been placed into wireless
communication with the wireless interface device interfaced to
the appliance, causing the portable electronic device to
automatically reroute the received media stream to the wireless
interface device interfaced to the appliance for a playing of the
received media stream by the appliance . . .” Applicant has not
discloses this subject matter pre-AIA, and claims 2, 3, 8-11 has
subject matter that was not disclosed pre-AIA; therefore, this
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Application should be examine under AIA. Applicant is
requested to correct the pre-AIA status to AIA and continuity
status to CIP for this application by filing a statement under 37
CFR 1.55 or 1.78.

Applicant states that this application is a continuation or
divisional application of the prior-filed application. A
continuation or divisional application cannot include new
matter. Applicant is required to delete the benefit claim or
change the relationship (continuation or divisional application)
to continuation-in-part because this application contains the
following matter not disclosed in the prior-filed application: for
the purpose of examination, . . . 14/728,027 filed on
06/02/2015 are being considered CIP of 11 /179,289 because . .
. original claims 1-15 of 027 were new matter introduced for
the very first time on 06/02/2015. Applicant is requested to
correct the continuity status, for . . . 14/728,027.
Final Act. 2–3.
We disagree with the Examiner. According to the MPEP:
A rejection of claims is reviewable by the Patent Trial and
Appeal Board, whereas an objection and requirement to delete
new matter is subject to supervisory review by petition under
37 CFR 1.181. If both the claims and specification contain new
matter either directly or indirectly, and there has been both a
rejection and objection by the examiner, the issue becomes
appealable and should not be decided by petition.

MPEP § 2163.06 (Relationship of Written Description Requirement to New
Matter) (II).
As discussed above, we agree with Appellant that the Provisional
Application discloses the “in response to” limitation of claim 1. Further,
although the Examiner asserts “claims 2, 3, 8-11 has subject matter that was
not disclosed pre-AIA” (Final Act. 2), the Examiner does not explain exactly
which subject matter of those claims is not disclosed in the Provisional
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Application. In any event, we have reviewed the Provisional Application,
and it is substantively similar to the Specification with respect to the
disclosures of claims 2, 3, and 8–11. Therefore, for similar reasons
discussed above with respect to the written description rejections, the
Provisional Application discloses claims 2, 3, and 8–11.
Therefore, we reverse the Examiner’s objections to the Specification.4

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–3, 8–11, and
15 under 35 U.S.C. § 112 (written description).
We affirm the Examiner’s decision rejecting claims 6 and 7 under 35
U.S.C. § 112 (written description).
We reverse the Examiner’s decision rejecting claims 1–15 under 35
U.S.C. § 103.
We reverse the Examiner’s decision objecting to the Specification.
Because we affirm at least one ground of rejection with respect to
claims 6 and 7 on appeal, we affirm the Examiner’s decision rejecting claims
6 and 7. See 37 C.F.R. § 41.50(a)(1).

4 If prosecution reopens, we leave it to the Examiner to determine whether
each of the Provisional Application and the ’289 application discloses claims
6 and 7.
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In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–11,
15
112
(written
description)
6–7 1–3, 8–11,
15
1–7, 10–13 103 Falcon, Dua 1–7, 10–13
8–9, 14–15 103 Falcon, Dua,
Komori
8–9, 14–15
Overall
Outcome
6–7 1–5, 8–15

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED-IN-PART