IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Attorney Docket No.:
`§
`Inventor: Hair
`§
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` 104677-‐5005-‐801
`United States Patent No.: 5,966,440
`§
`Customer No. 28120
`Formerly Application No.: 08/471,964
`Issue Date: October 12, 1999
`§
`Petitioner: Apple Inc.
`Filing Date: June 6, 1995
`§
`Former Group Art Unit: 380
`§
`Former Examiner: Hoa T. Nguyen §
` For: Method for Transmitting a Desired Digital Video or Audio Signal
` MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-‐1450
`
`
`DECLARATION OF DR. JOHN P. J. KELLY IN SUPPORT OF APPLE
`INC.’S PETITION FOR COVERED BUSINESS METHOD PATENT
`REVIEW OF UNITED STATES PATENT NO. 5,191,573 PURSUANT TO 35
`U.S.C. § 321, 37 C.F.R. § 42.304
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`Attorney Docket No.:
`§
`Inventor: Hair
`§
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` 104677-‐5005-‐801
`United States Patent No.: 5,966,440
`§
`Customer No. 28120
`Formerly Application No.: 08/471,964
`Issue Date: October 12, 1999
`§
`Petitioner: Apple Inc.
`Filing Date: June 6, 1995
`§
`Former Group Art Unit: 380
`§
`Former Examiner: Hoa T. Nguyen §
` For: Method for Transmitting a Desired Digital Video or Audio Signal
` MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-‐1450
`
`
`DECLARATION OF DR. JOHN P. J. KELLY IN SUPPORT OF APPLE
`INC.’S PETITION FOR COVERED BUSINESS METHOD PATENT
`REVIEW OF UNITED STATES PATENT NO. 5,191,573 PURSUANT TO 35
`U.S.C. § 321, 37 C.F.R. § 42.304
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`I, John Kelly, hereby declare as follows:
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`I. INTRODUCTION
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`1.
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`I have been retained to provide assistance regarding U.S. Patent No.
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`5,191,573 (“’573 patent”). Attached hereto as Appendix A is a true and correct
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`copy of my Curriculum Vitae describing my background and experience. I have
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`personal knowledge of the facts and opinions set forth in this declaration, and, if
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`called upon to do so, I would testify competently thereto.
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`2.
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`I hold Bachelor of Arts and Master of Arts degrees with Honors in
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`Mathematics from the University of Cambridge, England. I hold a Ph.D. in
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`Computer Science from U.C.L.A. From 1982 through 1986, I was a professor in
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`the Computer Science Department at U.C.L.A. From 1986 through 1997, I was a
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`professor in the Electrical and Computer Engineering Department of the University
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`of California, Santa Barbara, where I held tenure.
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`3.
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`I am the principal of Kelly Computing, Inc. I teach and consult in
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`many different aspects of computer science and engineering, including computer
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`hardware and software architecture and design, software engineering and fault
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`tolerance. My particular areas of expertise include computer architecture, software
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`engineering and “clean-room” development and evaluation, reverse engineering,
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`operating systems (including real-time and embedded), network computing
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`(including Internet computing), storage systems, fault tolerance, parallel and
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`distributed computing systems, transaction processing systems, database systems,
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`and program management.
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`4.
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`As a result of my education and professional experience, I have
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`extensive development experience and knowledge of computer operating systems
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`including access control concepts, data encryption/decryption techniques,
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`networking technologies, database systems, communication protocols including
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`network communication protocols, user interfaces including graphical user
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`interfaces and computer hardware design, and software analysis, design, and
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`development. I have developed computer software and hardware for many
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`different computer systems and applications including programming
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`microprocessors. I have also analyzed several software products related to access
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`control, audio and video playback, network transmission of audio and video,
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`storage of audio and video in multimedia databases, and content delivery networks
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`and distribution systems. For example, I have analyzed databases and repositories
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`used to store and access audio file repositories, network based distribution of
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`electronic media, set top boxes, and content delivery network architecture of
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`leading content delivery network providers. I have also analyzed the source code
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`for computer operating systems such as Apple’s Mac OS X, Microsoft Windows,
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`Linux, etc. I have also testified in Court on several occasions as a computer
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`science expert to report my analysis and opinions.
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`5.
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`I have worked in the area of computer software, hardware and system
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`design and development for over thirty-five years. I have extensive experience in
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`the design and development of small and large scale software systems. I have been
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`involved in the specification, development, integration, and testing of computer
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`systems with a wide range of requirements, sizes and types. These have included,
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`by way of example, custom hardware and software for a US Air Force fighter
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`plane, a distributed real-time system for US FAA air traffic control, and a
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`distributed geographical information system for the US Department of Energy.
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`6.
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`From 1978 to 1995, I specified, designed and implemented distributed
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`database architectures, systems and applications for Los Alamos National
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`Laboratory and NASA’s Jet Propulsion Laboratory and database machine design
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`and implementation at Transaction Technology Incorporated, Ordain, Inc. and
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`Teradata.
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`7.
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`From 1985 to 1998, I consulted for AT&T GIS, NCR, Symbios Logic,
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`and LSI Logic, including working as a member of the AT&T GIS Science
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`Advisory Committee (“SAC”). The SAC evaluated AT&T’s organization,
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`technical direction and product strategy and made recommendations to the Vice
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`President of Technology and Development.
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`8.
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`A listing of testimony that I have provided in the last four years and
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`my compensation is attached hereto as Appendix B. I am being compensated for
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`my time spent in connection with this case. I have no financial interest in the
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`outcome of this case.
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`9.
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`In preparing my opinions, I have considered the following materials:
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`• ’573 patent [Ex. 1001],
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`• ’573 patent file history [Ex. 1002],
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`• ’573 patent reexamination [Ex. 1003],
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`• United States Patent 5,966,440 file history [Ex. 1006],
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`• Larry Israelite, Home Computing: Scenarios for Success, Billboard, Dec. 15,
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`1984 (“Israelite article”) [Ex. 1008],
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`• Claim constructions entered by the U.S. District Court in the matter of
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`SightSound Technologies, LLC v. Apple, Inc. (“Claim Construction
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`Recommendation”) [Exs. 1014, 1015],
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`• Jennifer Sullivan, “The Battle Over Online Music,” Wired.com (Jan. 29,
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`1999) [Ex. 1019],
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`• Arthur Hair Dec. 11, 2012 Dep. Tr. [Ex. 1027],
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`• Scott Sander Dec. 18-19, 2012 Dep. Tr. [Ex. 1028],
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`• Don Crabb, “A Beginner’s Guide to the Ins and Outs of Appletalk LANs,”
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`InfoWorld, April 10, 1989 (“Crabb article”) [Ex. 1030]
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`• Inside Macintosh Volumes I, II and III, 1985 (“Inside Macintosh”) [Ex.
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`1031],
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`• The Technical Development of Internet Email” by Craig Partridge, IEEE
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`Annals of the History of Computing (Berlin: IEEE Computer Society) 30
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`(2): 3–29 (“Partridge article” [Ex. 1032],
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`• PC Magazine, Vol. 11, No. 9, May 12, 1992 (“PC Magazine”) [Ex. 1033],
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`• United States Patent No. 4,124,773 (“Elkins patent”) [Ex. 1034],
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`• U.S. Patent 4,667,088 (“Kramer patent”) [Ex. 1035],
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`• U.S. Patent No. 4,528, 643 (“Freeny patent”) [Ex. 1036],
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`• Wide Area High Speed Networks by Dr. Sidnie Feit, MacMillan Technical
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`Publishing, 1999 (“Feit book”) [Ex. 1038],
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`• The Ethernet: A Local Area Network – Data Link Layer and Physical Layer
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`Specifications, Version 2.0 dated November, 1982 (“The Ethernet
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`Specifications”) [Ex. 1039],
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`• Apple IIGS Owner’s Guide, 1988 [Ex. 1040],
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`• Hyun Heinz Sohn, A High Speed Telecommunications Interface for Digital
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`Audio Transmission and Reception, 76th AES Convention, Oct. 1984 (“Sohn
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`article”) [Ex. 1041],
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`• 1987 Stanford lecture (“Stanford lecture”) [Ex. 1042],
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`• Second Declaration of Dr. John P.J. Kelly, dated Sept. 28, 2012 [Ex. 1043],
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`• U.S. Patent No. 4,682,248 (“Schwartz patent”) [Ex. 1044].
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`II. LEGAL STANDARDS
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`A.
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`UNPATENTABLE SUBJECT MATTER
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`10.
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`I understand that claims of a patent are unpatentable if they are
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`directed to an abstract idea. This is because, in part, claims directed to an abstract
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`idea may be preemptive of a fundamental concept or idea that would foreclose
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`innovation in an area. Even if the claims limit an abstract idea to one field of use
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`or add insignificant extra-solution elements, they are not patentable if the abstract
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`idea is combined with nothing more than well-understood, routine, conventional
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`activities. I understand that mere implementation of an abstract idea with the
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`Internet and/or a general purpose computer does not make the abstract idea
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`patentable. I also understand that the “machine or transformation” test can be an
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`important tool in determining the patentability of claims. The “machine or
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`transformation” test examines whether the claims are tied to a particular machine
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`or apparatus, or transform a particular article into a different state or thing. If
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`neither, then the test points to unpatentability. I understand that a general purpose
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`computer is not a “particular machine or apparatus” under this test.
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`B. WRITTEN DESCRIPTION
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`11.
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`It is my understanding that a patent claim is invalid if the patent fails
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`to provide adequate written description. I understand that to satisfy the written
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`description requirement, the disclosure of the specification must convey with
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`reasonable clarity to those skilled in the art that, as of the filing date sought, the
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`inventor was in possession of the invention. I understand that the invention is, for
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`purposes of the written description inquiry, whatever is claimed. I further
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`understand that the description must do more than merely disclose that which
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`would render the claimed invention obvious.
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`12.
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`It is my understanding that materials may be incorporated by
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`reference in the specification of a patent, but only if there is an express statement
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`of incorporation by reference. That statement of incorporation must express a clear
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`intent to incorporate by reference by using the root words “incorporat(e)” and
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`“reference” (e.g., “incorporate by reference”). “Essential material” in a patent
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`(which includes the material required by 35 U.S.C. § 112) must either be included
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`in the specification or incorporated by reference from a U.S. patent or U.S. patent
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`application publication, but only if the patent or patent application publication that
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`is incorporated by reference does not itself incorporate such essential material by
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`reference. All of the material that an applicant seeks to have included in an
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`application must be present or incorporated by reference in the initial application
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`or it will be considered “new matter” and not given the benefit of the original
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`priority date, with one exception: an application that claims priority to a previous
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`application may, during prosecution, be amended to include material that is present
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`in the previous application but inadvertently omitted from the pending application.
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`But any such amendment to include subject matter that appears in a previous
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`application must be done before the close of prosecution. In sum, it is my
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`understanding that the disclosure of a written patent includes the information that
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`actually appears in the issued patent and the material that is expressly incorporated
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`by reference in the issued patent (using those words), and nothing more.
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`III. OPINIONS REGARDING A PERSON OF ORDINARY SKILL IN THE
`ART
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`13.
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`I understand that the factors considered in determining the ordinary
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`level of skill in the art include the level of education and experience of persons
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`working in the field; the types of problems encountered in the field; and the
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`sophistication of the technology.
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`14.
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`In my opinion, a person of ordinary skill in the art relating to the
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`technology of the ’573 patent at the time at which the patent was filed would have
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`had a bachelor’s degree or equivalent in computer engineering or computer science
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`and approximately two years of experience in developing software and hardware
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`that transmit and receive files over a network.
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`15.
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`I understand that the U.S. District Court in the matter of SightSound
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`Technologies, LLC v. Apple, Inc. has determined that a person of ordinary skill in
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`the art relating to the technology of the asserted patents at the time at which the
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`patents were filed is a person having an undergraduate degree in electrical
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`engineering or computer science and/or approximately 2-4 years of industry
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`experience in the design of systems and methods for storing and transmitting
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`digital information. [See Ex. 1015 (Claim Construction Recommendation) at p.
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`12, fn.12; see also Ex. 1014]
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`16.
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`In 1988, I would have exceeded the level of skill required by either
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`definition, and I am in a position to opine on the understanding of a person of
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`ordinary skill in the art. In addition, my opinions are the same under both
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`definitions.
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`IV.
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`CLAIM CONSTRUCTION
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`17. For the purposes of this declaration, I have been asked to assume
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`constructions for certain claim terms as presented in the following table. For all
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`remaining claim terms, I have assumed their plain and ordinary meaning.
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`Term
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`First Party
`Second Party
`Telecommunication
`Lines
`Electronically
`“Connecting
`Electronically” Terms
`“Transferring
`Electronically” Terms
`“Transferring Money
`Electronically” Terms
`Digital Audio Signal
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`
`Claim Construction
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`a first entity, whether a corporation or a real
`person
`a second entity, whether a corporation or a real
`person
`an electronic medium for communicating between
`computers.
`through the flow of electrons.
`connecting through devices or systems which
`depend on the flow of electrons.
`transferring through devices or systems which
`depend on the flow of electrons.
`providing payment electronically (i.e., through
`devices or systems which depend on the flow of
`electrons).
`digital representations of sound waves
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`V. THE ’573 PATENT
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`A. OVERVIEW OF THE ’573 PATENT
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`Figure 1. Overview of the ‘573 patent. The first party’s system (components
`on the left side of the figure) are connected to the second party’s system
`(components on the right side of the figure) by telephone lines. [See Ex. 1001
`(’573 patent) at Fig. 1]
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`
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`18. The ’573 patent issued on March 2, 1993, from U.S. Patent
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`
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`Application No. 07/586,391 (“’391 application”), which was filed on Sept. 18,
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`1990. For the purpose of this declaration only, I have been asked to assume that
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`the priority date of the ’573 patent is June 13, 1988.
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`19. The ’573 patent is directed to a system and method for the sale and
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`transmission of audio and video signals. [See, e.g., Ex. 1001 (’573 patent) at
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`Abstract] The audio and/or video signals are stored on the system of the seller
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`(“first party”). [See, e.g., Ex. 1001 (’573 patent) at 3:60-63] A buyer (“second
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`party”) can purchase audio or video signals, transfer these signals over telephone
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`lines, and store the signals on the buyer’s system. [See, e.g., Ex. 1001 (’573
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`patent) at 3:44-4:47, Fig. 1] The buyer can then play the audio or video signals
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`stored on the buyer’s system. [See Ex. 1001 (’573 patent) at 4:52-5:2]
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`B.
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`FILE HISTORY OF THE ’573 PATENT
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`20. Prosecution of the claims that eventually issued in U.S. Patent No.
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`5,191,573 commenced with the filing of U.S. Patent Application No. 07/206,497
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`on June 13, 1988. The originally filed claims were directed to electronically
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`transferring the binary structure of Digital Audio Music via telephone lines from a
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`hard disk of a seller to the hard disk of a user in a software configuration that
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`allowed for repeated future playback. The originally filed claims made no
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`reference to electronic sale or digital video signals, and the application as a whole
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`made no reference to “telecommunication lines.”
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`21.
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`In a Preliminary Amendment filed on December 19, 1988, the
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`applicant cancelled all initially filed claims and added new claims 11-13. These
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`new claims introduced the steps of “transferring money to a party,” “searching the
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`first memory,” “selecting the desired digital audio music signal from the first
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`memory” and “providing a credit card number ... so the party controlling the
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`second memory is charged money.” Additionally, these new claims introduced the
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`limitations of “controlling use of the first memory” and “controlling use of the
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`second memory.”
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`22. The Examiner issued a first Office Action on November 30, 1989, in
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`which the Examiner objected to the specification and rejected pending claims 11-
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`13 as being anticipated by U.S. Patent No. 3,718,906 (“Lightner patent”).
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`23.
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`In response, on February 26, 1990, the applicant amended pending
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`independent claim 11 to specify that the “second party [is] financially distinct from
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`the first party,” added new independent claim 15 directed to “a method for
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`transmitting a desired digital, a video or audio music signal” and added new
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`dependent claims 16-20. The new claims introduced the steps of “charging a fee”
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`and “placing by the second party the second memory.” Finally, the applicant also
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`amended the abstract to refer to “Video” as well as “Digital Audio Music.” The
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`applicant also argued that “Lightner does not teach or suggest ‘transmitting the
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`digital signal from the first memory to the second memory’ with the ‘second party
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`controlling use of the second memory.’” Instead, in the Lightner patent, “the party
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`controlling the master recording is ‘controlling use of the second memory’ up until
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`transmission, and that “the second memory is in the possession of the vending
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`machine.” Additionally, the applicant argued that “Lightner teaches and suggests
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`that the vending machine is at a location determined by the ‘first party,’” whereas
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`new dependent claims 14, 17 and 19 require the second memory to be “at a
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`location determined by the second party.”
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`24. On May 14, 1990, the Examiner again rejected claims 11-18 in view
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`of the Lightner patent. In particular, the Examiner said, since the claims’ recitation
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`of “controlling” is interpreted to mean “authority to guide or manage,” and the
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`Lightner patent discusses that a second party can select information to be
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`duplicated onto the second memory, the claims are anticipated by the Lightner
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`patent. Additionally, the Examiner argued that a second party using Lightner’s
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`system can determine the location of the second memory, since the second party
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`can “pick which vending machine of the vending machines to use.” Finally, the
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`Examiner rejected claims 11, 14, 17, 19 and 20 as being anticipated by U.S. Patent
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`No. 3,990,710 (“the Hughes patent”).
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`25.
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`In response, on August 20, 1990, the applicant amended the
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`independent claims to recite that the second memory is “in possession and control
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`of the second party” and “at a location determined by the second party,” while a
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`transmitter is “in control and possession of the first party.” Applicant then argued
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`that neither the Lightner patent nor the Hughes patent discloses, and instead each
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`teaches away from, this limitation since the receiver is in the possession of the first
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`party.
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`26. The Examiner ruled on September 5, 1990, that the added limitation
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`of “the receiver in possession and control of the second party” was a new issue. In
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`order to continue prosecuting the rejected claims, on September 18, 1990, the
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`applicant filed a new application (U.S. Patent Application No. 07/586,391) as a
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`continuation of the ’497 application. The applicant also filed the amendments and
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`arguments presented in the August 20, 1990 response.
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`27. On September 9, 1991, the Examiner again rejected the pending
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`claims, stating that “Hughes fails to specifically teach the claimed method and
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`steps,” but that “the claimed method and steps are seen to obviously correspond to
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`the apparatus and its features show[n] by Hughes.”
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`28. An Examiner interview was conducted on October 21, 1991, in which
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`the applicant explained the claimed invention, and the Examiner explained “how
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`the references were applied against claim 11.” Subsequently, on December 9,
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`1991, the applicant amended the specification to introduce the term
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`“telecommunications line,” amended the specification and claims to introduce the
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`term “telecommunications link,” and inserted additional material into the
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`specification. Applicant then argued that Hughes fails to show “transferring
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`money (or fee) to a first party at a location remote from the second memory and
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`controlling use of the first memory from a second party financially distinct from
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`the first party,” which the applicant characterized as “critical to the operation of the
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`applicant’s invention,” since in Hughes money is instead stored locally at Hughes’
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`recording machine. Additionally, the applicant argued that the Hughes patent does
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`not teach or suggest “said receiver in possession and control of second party.”
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`29. On February 24, 1992, the Examiner issued an Office Action objected
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`to the specification “as failing to provide support for the now claimed invention”
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`and rejecting all pending claims. In particular, the Examiner indicated that the step
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`of “transferring money,” the phrase “second party financially distinct from the first
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`party,” the phrase “said receiver in possession … of the second party,” and the
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`steps of telephoning and providing a credit card “do not have basis in the original
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`specification.” The Examiner also objected to the material inserted into the
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`specification. Moreover, the Examiner rejected the claims for being indefinite
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`because “‘at a location remote from the second memory’ is unclear and confusing
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`as to what is meant by ‘at a remote location’” and because “‘telecommunication
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`link’ is not well connected in the system.” Finally, the Examiner repeated her
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`rejection of all pending claims in view of the Hughes patent.
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`30. On June 22, 1992, the applicant amended the pending independent
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`claims to require “transferring money electronically via a telecommunication line”
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`and added a new independent claim that required “selling electronically via
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`telecommunication lines.” The applicant also argued that the step of “transferring
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`money,” the phrase “second party financially distinct from the first party,” and the
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`steps of telephoning and providing a credit card are inherent in the phrase
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`“electronic sales.” The applicant also simultaneously filed a declaration by the
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`inventor, Arthur Hair, in support of these arguments. This declaration further
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`alleged that “the ‘second party’ must have a ‘receiver’ (the control IC of the user in
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`figure 1) in his ‘possession’ in order to receive the music electronically from the
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`hard disc of the agent over the telephone lines.” The applicant further argued that
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`“[t]he objectionable phrase ‘at a location remote from the second memory’ is
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`acceptable since[,] by definition … memories [that] are at different locations and
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`[that are] connected by telecommunication lines have to be remote” and by
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`pointing out that “‘link’ has been amended to the more familiar term ‘line.’”
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`Additionally, the applicant argued that the Hughes patent fails to teach or suggest
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`“transferring money electronically via a telecommunications line to the first party
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`from the second party,” because the Hughes patent performs the sale locally to the
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`recording machine by allowing the user to insert coins. The application also
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`argued that, unlike the recording machines in the Hughes patent, the claimed
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`receiver is in the possession and control of the second party and can be at a
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`location chosen by the second party. Finally, the applicant argued that these
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`limitations were also not shown by the Lightner patent.
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`31. On September 21, 1992, the Examiner indicated that pending claims
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`11-13, 15 and 21-22 were allowable over the prior art of record and that only
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`pending claim 23 was rejected as anticipated by the Lightner patent and for lacking
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`antecedent basis for the phrase “the second memory.” In allowing the claims that
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`issued, the Examiner explained that the claims were being allowed because the
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`prior art did not teach a transmitter that was “in control and possession of the first
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`party,” or a receiver “in possession and control of the second party” and with a
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`second memory “at a location determined by the second party.”
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`32. The applicant responded on September 30, 1992, by cancelling
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`rejected claim 23. The Examiner subsequently issued a Notice of Allowability on
`
`October 19, 1992, and the application issued as the ’573 patent on March 2, 1993.
`
`C.
`
`RE-EXAMINATION OF THE ’573 PATENT
`
`33. Napster, Inc. filed a request for Ex Parte re-examination for the ’573
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`patent on January 31, 2005. The request raised substantial new questions of
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`patentability due to Great Britain Patent No. 2 178 275 (“Gallagher patent”), U.S.
`
`Patent No. 4,499,568 (“Gremillet patent”), U.S. Patent No. 4,528,643 (“Freeny
`
`patent”) and other prior art.
`
`
`
` 19
`
`Page 00019
`
`
`
`
`
`34. On March 18, 2005, the Examiner granted the request because the
`
`Gallagher, Gremillet and Freeny patents “were not previously cited or considered
`
`by the Examiner during the prosecution of the ’573 patent or its application,” and
`
`because “[a] reasonable examiner would consider the Gallagher and Gremillet
`
`references important in deciding whether or not the claims are patentable.”
`
`35. Subsequently, on June 21, 2005, the Examiner rejected all issued
`
`claims of the ’573 patent as unpatentable over the Gallagher patent in view of the
`
`Freeny patent. In particular, the Examiner noted that the Gallagher patent
`
`disclosed the connecting, transmitting and storing steps of the claims of the ’573
`
`patent, but does not “go into specific detail about how this electronic sale of the
`
`digital data is made to the general public via their user units.” However, as the
`
`Examiner explained, “Freeny discloses a method of electronically distributing and
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`selling audio and video data by way of having the requesting user transmit a
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`consumer credit card number along with their request for the audio and video
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`data,” and that it would have been obvious to incorporate this into the system
`
`disclosed in the Gallagher patent because “this method of electronic sale allows the
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`owner of the information to receive directly the compensation for sale of a
`
`recording.”
`
`
`
` 20
`
`Page 00020
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`
`
`
`
`36. The Examiner was not persuaded by the patentee’s responses and
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`continued to reject the claims in view of Freeny and other prior art, including
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`Japanese Patent Application No. S62-284496 (“Akashi patent”).
`
`37. Subsequently, the case was transferred to a different Examiner, who
`
`vacated the Final Office Action and issued a new Office Action on September 29,
`
`2006. In the new Office Action, the Examiner asserted that the issued claims were
`
`not entitled to the claimed June 13, 1988 priority date, but were instead at best
`
`entitled to a September 18, 1990 priority date. In particular, the Examiner noted
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`that a significant amount of unsupported new text was added by amendment to the
`
`specification and claims after the claimed 1988 priority date. The Examiner
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`specifically concluded that “how money is transferred from a second party to the
`
`first party, a fee is charged, or how a credit card number is provided are not
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`disclosed or required by the original, generic statement ‘electronic sales and
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`distribution of music …’” The Examiner noted, for example, that an “electronic
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`sale” could involve money transferred by a third party, and that the claimed
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`transferring step was not inherently disclosed by the specification’s recitation of
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`“electronic sale.” The Examiner also concluded that “the ability to control and
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`possess a transmitter, a receiver, and memory and to determine the location to
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`which data is transmitted is not disclosed or required by the original, generic
`
`
`
` 21
`
`Page 00021
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`
`
`
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`statements such as ‘control unit of the user.’” Finally, the Examiner observed that
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`“[t]he specific video download features added to the original specification and
`
`claims by the above amendments are not disclosed nor required by the one
`
`sentence, generic statement at the end of the original specification that ‘this
`
`invention is not to be limited to Digital Audio Music and can include Digital Video
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`….’” The Examiner then rejected all pending claims due to U.S. Patent No.
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`4,789,863 (“Bush patent”), U.S. Patent No. 4,870,515 (“Stokes patent”), the
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`Akashi patent, the Freeny patent, and U.S. Patent No. 4,949,187 (“Cohen patent”).
`
`38.
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`In a series of responses, the patentee disputed the Examiner’s
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`authority to challenge the priority date and challenged the other bases for rejection.
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`The issue went to the Board of Patent Appeals and Interferences, which issued a
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`decision on September 4, 2009. The BPAI held that the Examiner’s 35 U.S.C. §
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`112 rejections were made in error because they addressed whether the claims were
`
`supported by the parent application instead of the present application.
`
`Additionally, the Board accepted appellant’s arguments that “the Examiner cannot
`
`be allowed to reexamine the sufficiency of the Specification,” because the fact
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`“[t]hat the original Examiner allowed the application after the Patentee’s response
`
`to the objection indicates to us that the original Examiner believed the issue to be
`
`resolved.” The BPAI also concluded that the Examiner improperly imported
`
`
`
` 22
`
`Page 00022
`
`
`
`
`
`requirements regarding “quality, size, or bandwidth” into the claims when rejecting
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`claims directed at digital video signals due to lack of enablement. Since the BPAI
`
`thus concluded that the ’573 patent is entitled to a June 13, 1988 priority date, it
`
`determined that the Cohen patent is not prior art and overturned rejections based on
`
`the Cohen patent. The Board overturned the remaining rejection by noting that
`
`“the combination of Akashi and Freeny II1 does not teach or suggest storing the
`
`digital signal in a non-volatile portion of the second memory that is not a tape or
`
`CD, where the second memory is controlled by and in the possession of the second
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`party.”
`
`39. Since the ’573 patent expired during reexamination, all amendments
`
`made during reexamination were effectively withdrawn. The Examiner
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`accordingly issued a new Office Action on March 25, 2010, reopening prosecution
`
`and rejecting all claims as anticipated by the Bush patent, as unpatentable over the
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`Gallagher patent in view of the Freeny patent, and as unpatentable over the Akashi
`
`patent in view of the Freeny patent. In doing so, the Examiner noted that
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`“telecommunications lines are reasonably interpreted to not be limited to the
`
`preferred embodiment – telephone lines,” and that this interpretation was
`
`“consistent” with the interpretation proffered by the patent owner, “who argues
`
`
`
`1 “Freeny II” is the Freeny patent, U.S. Patent No. 4,528,643.
`
`
` 23
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`Page 00023
`
`
`
`
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`‘telecommunication lines’ requires electronic mediums for communicating
`
`between computers, which requires end-to-end connectivity.” The Examiner relied
`
`on the Freeny patent to show the “transferring money” step. Ad
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