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`sub—genus created by the express exclusion of certain species in the CIP were not supported by
`
`the description of the broader genus in the parent specification. Again, the situation with the
`
`present reexamination differs significantly from the cited case law. Claims 1 and 4 recite a non-
`
`volatile storage portion of a memory that is not a tape or CD. This is exactly what is described
`
`at page 2, lines 23 to 26 of the originally filed specification. In short, the negative limitation
`
`recited in Claims 1 and 4 is expressly disclosed in the specification of the parent application.
`
`Thus, in the instant case, the scope of the disclosure in the specification was never narrowed
`
`with respect to this element, contrary to the situation in Johnson. Therefore, the recitation of a
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`non-volatile storage portion of a memory that is not a tape or CD is fully supported by the
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`originally filed specification, as well as the specification of the ‘573 Patent as issued.
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`With respect to the other elements recited in Claims 1 through 6, the issue of written
`
`support for the claimed matter previously was addressed by Examiner Nguyen during the initial
`
`examination of Claims 1 through 6, as recognized by the Office in the Office Action dated
`
`A March 17, 2007. Moreover, Appellant has thoroughly demonstrated in Sections III(C)(l)(ii)
`
`and III(C)(2) above that each element in Claims 1 through 6 is fully supported and enabled by
`
`the original specification as filed, as well as the specification for ‘573 Patent as issued.
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`Therefore, the Board should reverse the Examiner’s rejections of Claims 1 through 6 under 35
`
`U.S.C. § 112, first paragraph.
`
`V.
`
`BASED ON THE PROPER PRIORITY DATE FOR THE CLAIMS IN
`
`REEXAMINATION, THE REJECTIONS OF CLAIMS 1 THROUGH 6 AND 44
`THROUGH 49 BASED ON COHEN ARE IMPROPER
`
`As set forth above, the proper priority for Claims 1 through 6 and 44 through 49 in
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`reexamination is June 13, 1988. Therefore, any rejections under Sections 102 or 103 which rely
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`on references that are not prior art based on the June 13, 1988 priority date are improper and
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`should be reversed. U.S. Patent 4,949,187 to Cohen (Cohen) issued on August 14, 1990 from
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`an application filed on December 16, 1988. Therefore, Cohen does not qualify as prior art for
`
`the purposes of Sections 102 and 103.
`
`A.
`
`Rejection Of Claims 1, 2, 4, 5, 44, 45, 47 And 48 Under 35 U.S.C. § 102(e) As
`Anticipated By Cohen -
`
`Claims 1, 2, 4, 5, 44, 45, 47 and 48 have been rejected under 35 U.S.C. § 102(e) as
`
`anticipated by Cohen. Because Cohen is not available as prior art based on the proper priority
`
`date of June 13, 1988 for the ‘573 Patent, the instant rejection is improper. Therefore, the
`
`Board should reverse this rejection.
`
`B.
`
`Rejection Of Claims 1 Through 6 and 44 Through 49 Under 35 U.S.C. § 103(a)
`Over Bush In View Of Cohen
`
`Claims 1 through 6 and 44 through 49 have been rejected under 35 U.S.C. § l03(a) as
`
`obvious over the combination of U.S. Patent 4,789,863 to Bush (Bush) in view of Cohen.
`
`Because Cohen does not qualify as prior art based on the proper June 13, 1988 priority date of
`
`the ‘573 Patent, a combination of Cohen and another reference cannot provide a proper basis for
`
`an obviousness rejection. As a result, the rejection of Claims 1 through 6 and 44 through 49
`
`based on a combination of Bush and Cohen is improper. Therefore, the Board should reverse
`
`this rejection.
`
`C.
`
`Rejection Of Claims 3, 6, 46 and 49 Under 35 U.S.C. § 103 (a) Over Cohen In View
`Of Bush
`
`Claims 3, 6, 46 and 49 have been rejected under 35 U.S.C. § 103(a) over Cohen in view
`
`of Bush. Because Cohen does not qualify as prior art based on the proper June 13, 1988 priority
`
`date of the ‘573 Patent, a combination of Cohen and another reference cannot provide a proper
`
`basis for an obviousness rejection. As a result, the rejection of Claims 3, 6, 46 and 49 based on
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`a combination of Bush and Cohen is improper. Therefore, the Board should reverse this
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`rejection.
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`VI.
`
`CLAIMS 1 THROUGH 6 AND 44 THROUGH 49 ARE PATENTABLE OVER
`THE REFERENCES OF RECORD THAT ARE PROPER PRIOR ART
`
`The Office has also presented rejections under 35 U.S.C. § 103(a) that are based on
`
`references that qualify as prior art based on the June 13, 1988 priority date for the claims in
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`reexamination. However, the Office has notestablished a prima facie case of obviousness of
`
`any of Claims 1 through 6 or 44 through 49 based on these references.
`
`A.
`
`Rejection Of Claims 1 Through 6 And 44 Through 49 Under 35 U.S.C. § 103(a)
`Over Bush In View Of Freeny I
`
`Claims 1 through 6 and 44 through 49 have been rejected under 35 U.S.C. § 103(a) as
`
`obvious over the combination of Bush in view of U.S. Patent 4,837,797 to Freeny (Freeny 1).
`
`The Office admits that Bush does not disclose storing digital audio signals or digital
`
`video signals in a non-volatile storage portion of a second memory that is not a tape or a CD as
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`recited in Claims 1 and 4. As further admitted by the Office, Bush does not disclose storing
`
`digital audio signals or digital video signals in a second party hard disk as recited in Claims 44
`
`and 49.
`
`Freeny I discloses a message controller for receiving voice messages and machine
`
`readable messages over telephone lines. The apparatus of Freeny I is capable of differentiating
`
`between voice messages and machine readable messages received over standard telephone
`
`equipment, i. e. a telephone. When the apparatus of Freeny 1 determines that a received call is a
`
`voice message, it causes the user’s telephone to ring, thereby alerting the user. When the
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`apparatus of Freeny 1 determines that a received call is a machine readable message, it converts
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`the message to human readable form using a standard printer or display unit. One embodiment
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`of the apparatus of Freeny I indicates it is capable of receiving machine readable messages and
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`storing them on a storage medium that may be a memory chip or hard disk.
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`However, Freeny I does not discuss transmission of digital audio or digital video signals
`
`from a first memory to a second memory, let alone the sale of such digital video or digital audio
`
`signals. Thus, Freeny 1 bears no relation to the disclosure of Bush or the invention recited in
`
`Claims 1 through 6 and 44 through 49. The Office apparently has recognized this deficiency in _
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`Freeny I, because the Office must cite to Cohen to show motivation to combine Bush and
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`Freenyil. However, as set forth above, Cohen is not available as prior art based on the priority
`date 0fJune 13, 1988 for the ‘S73 Patent.
`0
`
`The Supreme Court’s recent holding in KSR Int’L Co.
`
`v. Teleflex Inc., 127 S. Ct. 1727
`
`(U.S. 2007), does not relieve the Office of the obligation to show motivation to combine two
`
`separate references in making out a primafacie case of obviousness. Quite to the contrary, the
`
`Supreme Court stated: “[t]o determine whether there was an apparent reason to combine the
`
`known elements in the way a patent claims, it will often be necessary to look to interrelated
`
`teachings of multiple patents; to the effects of demands known to the design community or
`
`present in the marketplace; and to the background knowledge possessed by a person having
`
`ordinary skill in the art. Tofacilitale review, this analysis should be made explicit.” KSR, 127
`
`S. Ct. at 1731 (emphasis added).
`
`Since the Office has not shown any motivation to combine Bush and Freeny I, a prima
`
`facie case of obviousness has not been established. Therefore, the Board should reverse this
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`rejection.
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`B.
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`Rejection Of Claims 1 Through 6 And 44 Through 49 Under 35 U.S.C. § 103(a)
`OverAkashi In View Of Freeny II
`
`Claims 1 through 6 and 44 through 49 have been rejected over Japanese Patent
`
`Application No. 62-284496 (Akashi) in view of U.S. Patent 4,528,643 to Freeny (Freeny I1).
`
`Such a rejection is unfounded. First, the combination of Akashi and Freeny [1 would not reach
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`the presently claimed invention. Second, there is no motivation to combine Akashi and
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`Freeny II.
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`The Office asserts that Akashi shows a system for transmitting recorded music from a
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`host computer that stores recorded music data to a personal computer. The Office then asserts
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`that Akashi “does not expressly detail. . .whether the data is stored on a non-volatile portion of a
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`second memory that is not a tape or CD.” This is incorrect. Akashi explicitly discloses a record
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`reproducing device that is a compact disk deck or a digital audio tape recorder. See Akashi
`
`Translation, p. 2 (Embodiment). In other words, Akashi is not ambiguous at all on this point.
`
`Thus, not only does Akashi fail to disclose transmitting digital audio signals or digital video
`
`signals from a first memory to a second memory and storing the digital audio signals or digital
`
`video signals in pa non-volatile portion of the second memory that is not a tape or CD, Akashi
`
`expressly teaches away by specifically disclosing and requiring a tape recorder or CD deck.
`
`The Office asserts the deficiencies of Akashi are cured by Freeny II. Specifically, the
`
`Office asserts that Freeny I1 discloses transmitting digital audio signals or digital video signals
`
`from _a first memory in control and possession of a first party to a second memory in control and
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`possession of a second party, and storing the digital audio signals or digital video signals in a
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`non-volatile storage that is not a tape or CD. The Office further asserts it would have been
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`obvious to implement the non-volatile storage of Freeny 11 in the system of Akashi because 0
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`“[t]he use of a hard disk would have allowed the user to more efficiently access audio and video
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`files.” The Office bases its position on the conclusion that “a hard-disk, would have also
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`increased the security and reliability of the stored data.”
`
`For several reasons, it would not have been obvious to combine the teachings ofAkashi '
`
`and Freeny II to arrive at the invention recited in Claims 1 through 6 and 44 through 49. First,
`
`Freerzy II discloses a kiosk-type system for producing “material objects” at a point of sale
`
`location where it is the “material object” that is sold to consumers. Freeny 11, Abstract. Thus,
`
`like Akashi, Freeny II expressly teaches away from storing digital audio signals or digital video
`
`signals on a non—volatile storage portion of a second memory that is not a tape or CD in
`
`possession and control of a second party. Further, in Freeny II, the second memory
`
`_ (information manufacturing machine) for storing the information that is transformed into
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`material objects is in possession and control of the first party. The first party controls access to
`
`the information on the second memory by requiring a fee to be paid for the consumer (second
`
`party) to access the information stored on the second memory. After the fee is paid, the second
`
`. party has limited access to the specific information requested for the purpose of making a copy
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`in the form of a material object. In the case of audio or video information, the material object
`
`would be in the form of a tape or CD. Therefore, again, both Akashi and Freeny 11 contemplate
`
`and require supplying audio information to the consumer in the form of a tape or CD. Thus,
`
`like Akashi, Freeny II expressly teaches away from storing digital audio signals or digital video
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`signals on non—volatile storage portion of a second memory that is not a tape or CD in
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`possession and control of a second party.
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`Additionally, in Freeny II, the necessary material object containing the digital audio or
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`digital video signals is produced by accessing information stored on the second memory. The
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`first memory (information control machine) simply supplies reproduction authorization codes in
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`A
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`response to a request for reproduction from the information manufacturing machine. The
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`second party never has access to the first memory, as recited in present Claims 2, 5, 45 and 48.
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`Both Akashi and Freeny II solve the same problem: providing audio information, and
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`video information in the case of Freeny II, to a consumer in the form of a material object, such
`
`as a tape or CD. Akashi and Freeny I] solve this common problem in different and unrelated
`
`ways. Nonetheless, neither of the references teaches or discloses the benefits of transmitting
`
`digital audio signals or digital video signals from a first memory to a second memory and
`
`storing those digital audio signals or digital video signals in a non-volatile portion of the second
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`memory that is not a tape or CD, which is in possession and controlof a consumer, 1'.e. a
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`second, financially distinct, party. Therefore, the combination of Akashi and Freeny 11 does not
`
`teach or suggest every limitation of Claims 1 through 6 or 44 through 49. In fact, because both
`
`Akashi and Freerzy II expressly require storing digital audio signals or digital video signals on a
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`tape or CD, they teach away from the invention recited in Claims l through 6 and 44 through
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`49. “[W]hen the prior art teaches away from combining certain known elements, discovery of
`
`a successful means of combining them is more likely to be nonobvious.” KSR, 127 S. Ct. at
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`1740. As a result, these references cannot be combined to render Claims 1 through 6 obvious.
`
`Even if the combination of Akashi and Freeny 11 did teach each and every element of
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`Claims 1 through 6 or 44 through 49 — which they do not — the motivations cited by the Office
`
`for combining and/or modifying Akashi and Freeny 11 are not found in those references.
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`Moreover, the Office has not cited to any other references or knowledge available to one of
`
`ordinary skill in the art in 1988 that would have motivated a skilled artisan to combine and/or
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`modify Akashi and Freeny II as suggested by the Office. Rather, the Office simply has made
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`vague statements that the security and reliability of hard disks would have been well known at
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`the time. Such general allegations are insufficient to show motivation to combine these
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`references, particularly since neither one of them even hints at such a modified combination.
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`Again, as the Supreme Court has just admonished: “[a] patent composed of several elements is
`
`not proved obvious merely by demonstrating that each element was, independently, known in
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`the prior art.” KSR, 127 S. Ct. at 1731.
`
`Based on all of the foregoing, the Office has not established a prima facie case of
`
`obviousness of Claims 1 through 6 and 44 through 49 over the combination ofAkashi and
`
`Freeny 11. Therefore, the Board should reverse this rejection.
`
`C.
`
`The Secondary Considerations Of Non-Obviousness Support The Finding OfNon-
`Obviousness Of Claims 1 Through 6 And 44 Through 49
`
`Although a showing of secondary considerations is not strictly necessary to establish the
`
`non-obviousness of Appel1ant’s invention, such secondary considerations in fact do exist.
`
`The CAFC has explicitly set forth the factors, such as commercial success, long felt but
`
`unresolved needs, skepticism by experts, and copying by competitors that can be used to
`
`establish non-obviousness. Brown & Williamson Tobacco Corp. v.iPhilz'p Morris Inc., 229 F.
`
`3d 1120, 1129 (Fed. Cir. 2000). The CAFC has held that a nexus must be established between
`
`the merits of a claimed invention and the evidence of non-obviousness offered if that evidence
`
`is to be given substantial weight enroute to a conclusion of non-obviousness. Ex parte Remark,‘
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`15 U.S.P.Q.2d 1498, 1502 (Bd. Pat. App. & Interfer. 1990). The CAFC has also held, however,
`
`that copying of a patented feature or features of an invention, while other unpatented features
`
`are not copied, gives rise to an inference that there is a nexus between the patented feature and
`
`the commercial success. Hughes Tool Co. v. Dresser Industries, Inc., 816 F.2d 1549, 1556
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`(Fed. Cir. 1987). Moreover, it is well established that copying ofa patented invention, rather
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`than one within the public domain, is by itself indicative of non-obviousness. See Windsurfing
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`Int’l Inc., v. AMF, Inc., 782 F.2d 995, 1000 (Fed. Cir. 1986).
`
`The invention recited in Claims 1-6 (and Claims 44-49) generally comprises transferring
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`“for pay” digital video or digital audio signals between a first memory controlled by a seller and
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`a second memory at a remote location controlled by a buyer over a telecommunication line.
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`The invention has in the past achieved significant commercial success. See, e. g., Declaration of
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`Arthur R. Hair submitted with Appellant’s Response dated December 27, 2005.
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`Moreover, the invention continues to achieve commercial success in that it has been
`
`copied by a major participant in the field. The features of the invention generally included in
`
`Claims 1-6 (and Claims 44-49) have been copied by at least one commercially successful
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`system available today: Napster Light. The Napster Light system (“Napster”) for purchasing
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`digital music files online at www.napster.com is a commercially successful system that
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`embodies the features of the claimed invention. The Declaration of Justin Douglas Tygar,
`
`Ph;D. (“Tygar Dec. 2005”), a copy of which is filed herewith, supports the assertion that
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`Napster is commercially successful and has copied the claimed invention.
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`Dr. Tygar determined that Napster has achieved a level of commercial success. See
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`Tygar Dec. 2005, para. 6. Further, Dr. Tygar compared Napster to the invention recited in
`
`Claims 1-6 and determined Napster copied the invention. Specifically, Dr. Tygar found that
`
`Napster operates a music download system incorporating servers having hard disks and
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`memory, through which it sells digital music files to a buyer for download over the Internet.
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`See Tygar Dec. 2005, para. 10. The buyer using Napster has a computer at a home, office, or
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`other location remote from Napster. See Tygar Dec. 2005, para. 11. The buyer forms a
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`connection between his or her computer and Napster via the Internet, selects digital music
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`f1le(s) he or she wishes to purchase, provides a credit card number, and receives the music file
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`via a download process where the file is transferred from Napster’s server to the buyer’s
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`computer and stored on the hard drive. The buyer can then play the file using his or her
`computer system. See Tygar Dec. 2005, paras. 12-16. In view of this comparison, Dr. Tygar
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`properly concludes that Napster has copied the features taught by the present invention. See
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`Tygar Dec. 2005, para. 19.
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`Additionally, Napster does not copy the alleged closest prior art cited by the Examiner,
`
`i.e., Freeny and Akashi. Freeny teaches a point-of-sale device (e.g., a kiosk) that dispenses a
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`material object (e.g., tape) containing the music purchased. See Freeny, col. 1, line 64 to col. 2,
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`line 12. These features of Freerzy are plainly not found in Napster. See Tygar Dec. 2005, para.
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`16. Akashi teaches writing data to a digital audio tape recorder or a compact disk deck that
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`employs a write—once, read-many times recordable optical disk which allows data to be read
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`immediately after the data is written. The user downloads data to a RAM and then the data is
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`written directly from the RAM to a recordable optical disk. See Akashi para. 6. This process of
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`Akashi is not how Napster operates. See Tygar Dec. 2005, para. 18.
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`Therefore, it is apparent that Napster chose to copy the system taught by the ‘573 patent.
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`See Tygar Dec. 2005, para. 19. lt is also apparent that Napster chose not to copy the prior art
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`systems of Freeny and Akashi. See Tygar Dec. 2005, para. 20 and 21. This selective copying
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`by Napster of the invention recited in Claims 1-6 (and Claims 44-49), while Napster ignored the
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`systems of Freeny and Akas/11', provides a sound basis upon which the required nexus between
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`commercial success and Appellant’s claimed invention can be found. See Hughes Tool, 816
`
`F.2d at 1556. Additionally, Napster’s selective copying of Appellant’s invention, coupled with
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`Napster’s disregard of the Freeny and Akashi systems, is itself substantive evidence of a
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`recognized secondary indication of non—obviousness. See Windsurfing International Inc., 782
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`F.2d 995 (Fed. Cir. 1986).
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`The foregoing remarks and the Declaration of Dr. Tygar establish the requisite nexus
`
`between the commercial success of Napster and Appellant’s claimed invention. These remarks
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`and the Declaration of Dr. Tygar similarly have established copying by Napster as a secondary
`
`indicia of non—obviousness.
`
`Conclusion
`
`Based on the foregoing, the Board should reverse the rejections of Claims 1 through 6
`
`and 44 through 49 under 35 U.S.C. §§ 102(e) and lO3(a). Also based on the foregoing, the
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`Board should reverse the rejection of Claims 1 through 6 and 44 through 49 under 35“U.S.C. §
`
`1 12, first paragraph.
`
`Respectf
`
`Koons, Jr., Esq.
`be
`Attorney for Appellant
`Reg. No. 32,474
`
`Drinker Biddle & Reath LLP
`
`One Logan Square
`18”‘ and Cherry Streets
`Philadelphia, PA 19103-6996
`Telephone (215) 988-3392
`Facsimile (215) 988-2757
`Date: December 15, 2008
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`CLAIMS APPENDIX
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`l.(Amended) A method for transmitting a desired digital audio signal stored on a
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`first memory of a first party to a second memory of a second party comprising the steps of:
`
`transferring money electronically. via a telecommunication line to the first party at
`
`a location remote from the second memory and controlling use of the first memory
`
`from the second party financially distinct from the first party, said second party
`
`controlling use and in possession of the second memory;
`
`connecting electronically via a telecommunications line the first memory with the
`
`second memory such that the desired digital audio signal can pass there-between;
`
`transmitting the desired digital audio signal from the first memory with a
`
`transmitter in control and possession of the first party to a receiver having the
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`second memory at a location determined by the second party, said receiver in
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`possession and control of the second party; and
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`storing the digital signal in a non-volatile storage portion of the second memory:
`
`wherein the non-volatile storage portion is not a tape or CD.
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`2.(Original) A method as described in claim 1 including after the transferring step,
`
`the steps of searching the first memory for the desired digital audio signal; and selecting
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`the desired digital audio signal from the first memory.
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`3.(Original) A method as described in claim 2 wherein the transferring step
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`includes_ the steps of telephoning the first party controlling use of the first memory by the
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`second party; providing a credit card number of the second party controlling the second
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`memory to the first party controlling the first memory so the second party is charged
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`money.
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`4.(Amended) A method for transmitting a desired digital video signal stored on a
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`first memory of a first party to a second memory of a second party comprising the steps of:
`
`transferring money electronically via a telecommunications line to the first party at
`
`a location remote from the second memory and controlling use of the first memory,
`
`from a second party financially distinct from the first party, said second party in
`
`control and[in possession of the second memory;
`
`connecting electronically via a telecommunications line the first memory with the
`
`second memory such that the desired digital video signal can pass there-between;
`
`transmitting the desired digital video signal from the first memory with a
`
`transmitter in control and possession of the first party to a receiver having the
`
`second memory at a location determined by the second party, said receiver in
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`possession and control of the second party; and
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`storing the digital signal in a non-volatile storage portion of the second memory;
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`wherein the non-volatile storage portion is not a tape or a CD.
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`5.(Original) A method as described in claim 4 including after the transferring
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`money step, the step of searching the first memory for the desired digital signal and
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`selecting the desired digital signal from the first memory.
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`6.(Original) A method as described in claim 5 wherein the transferring step
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`includes the steps of telephoning the first party controlling use of the first memory by the
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`second party controlling the second memory; providing a credit card number of the second
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`party controlling the second memory to the first party controlling the first memory so the
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`second party controlling the second memory is charged money.
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`7-43 (Canceled)
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`44.1 flew) A method for transmitting a desired digital audio signal stored on a first
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`memory of a first party to a second memory of a second party comprising the steps of:
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`transferring money electronically Via a telecommunications line to the first party at
`
`a location remote from the second memory and controlling use of the first memory from
`
`the second party financially distinct from the first party, said second party controlling use
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`and in possession of the second memory;
`
`the second memory including a second party hard disk;
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`connecting electronically via a telecommunications line the first memory with the
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`second memory such that the desired digital audio signal can pass therebetween;
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`transmitting the desired digital audio signal from the first memory with a
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`transmitter in control and possession of the first party to a receiver having the second
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`memory at a location determined by the second party, said receiver in possession and
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`control of the second party;
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`and storing the digital signal in the second party hard disk.
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`l’l-llP/ 7252502
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`Page 01289
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`Express Mail No.: EV 320481168 US
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`Control No.: 90/007,402
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`45.(Ne_vy)_A method as described in claim 44 including after the transferring step,
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`the steps of searching the first memogg for the desired digital audio signal; and selecting
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`the desired digital audio signal from the first memory.
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`46.( flew) A method as described in claim 45 wherein the transferring step includes
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`the steps of telephoning the first party controlling use of the first memory by the second
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`party; providing a credit card number of the second party controlling the second memory
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`to the first party controlling_the first memory so the second party is charged money.
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`47.( lglew) A method for transmitting a desired digital video signal stored on a first memory
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`of a first party to a second memory of a second party comprising the steps of:
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`transferring money electronically via a telecommunications line to the first party at
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`a location remote from the second memory and controlling use of the first memory from '
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`the second party financially_distinct from the first party. said second party controlling use
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`and in possession of the second memory;
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`the second memory including a second party hard disk;
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`connecting electronically via a telecommunications line the first memory with the
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`second memory such that the desired digital video signal can pass therebetween;
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`transmitting the desired digital video signal from the first memory with a
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`transmitter in control and possession of the first party to a receiver having the second
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`memory at a location determined by the second party, said receiver in possession and
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`control of the second party;
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`and storing_the d_igi_tal signal in the second party hard disk.
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`Pl~llP/ 725250.2
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`Express Mail No.: EV 320481168 US
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`Control No.: 90/007,402
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`48.(New) A method as described in claim 47 including after the transferring step,
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`the steps of searching the first memory for the desired digital signal; and selecting the
`C
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`desired digital signal from the first memory.
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`49. gflcwl A method as described in claim 47 wherein the transferring step
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`includes the steps of telephoning the first party controlling use of the first memory by the
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`second party; providing a credit card number of the second party controlling the second
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`memory to the first party controlling the first memory so the second partv is charged
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`money.
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`Express Mail No.: EV 320481168 US
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`Control No.: 90/007,402
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`EVIDENCE APPENDIX
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`1) Declaration under 37 C.F.R. § 1.132 of Arthur R. Hair, submitted by Appellant in a
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`response dated December 27, 2005 (and again in a response dated February 6, 2006).
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`The Declaration was repeatedly cited on pages 20 to 23 of the February 6, 2006
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`response to support the argtunent for secondary considerations of non-obviousness,
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`including copying and commercial success. A copy of the Declaration was included in
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`the response as an exhibit. The Examiner, in an Office Action dated March 20, 2006,
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`considered the Declaration stating on page 5, “Applicant’s arguments with respect to
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`commercial success are not persuasive because commercial success may have been
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`attributable to extensive advertising and position as a market leader before the
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`introduction of the patented product.” Because (a) Appellant’s response having the
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`Declaration attached was entered into the record, (b) Appellant’s commercial success
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`argument was predicated in substantial part on the Declaration, and (c) the Examiner
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`stated he considered the commercial success arguments, it is apparent that the
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`Declaration was considered and entered.
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`Declaration under 37 C.F.R. § 1.132 of Dr. J. Douglas Tygar, submitted by Appellant
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`in a response dated December 27, 2005 (and again in a response dated February 6,
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`2006). The Declaration was repeatedly cited on pages 20 to 23 of the February 6, 2006
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`response to support the argument for secondary considerations of non—obvi0usness,
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`including copying and commercial success. A copy of the Declaration was included in
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`the response as an exhibit. The Examiner, in an Office Action dated March 20, 2006,
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`considered the Declaration stating on page 5, “Applicant’s arguments with respect to
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`PH l Pl 725250. 2
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`Control No.: 90/007,402
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`commercial success are not persuasive because commercial success may have been
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`attributable to extensive advertising and position as a market leader before the
`
`introduction of the patented product.” Because (a) Appellant’s response having the
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`Declaration attached was entered into the record, (b) Appellant’s commercial success
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`argument was predicated in substantial part on the Declaration, and (c) the Examiner
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`stated he considered the commercial success arguments, it is apparent that the
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`Declaration was considered and entered.
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`l’HlP/ 725250.2
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`) METHOD FOR TRANSMITTING A
`) DESIRED DIGITAL VIDEO OR
`) AUDIO SIGNALS
`
`) P
`
`ittsburgh, Pennsylvania 15213
`
`December 23, 2005
`
`In re Application of:
`
`ARTHUR R. HAIR
`
`Reexamination Control No. 90/007,402
`
`Reexamination Filed:
`
`January 31, 2005
`
`Patent Number: 5,191,573
`
`Examiner: Benjamin E. Lanier
`
`Mail Stop Ex Parte Reexamination
`Commissioner for Patents
`4
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`DECLARATION UNDER 37 C.F.R. §1'.132
`
`1, Arthur R; Hair, hereby declarethatz
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`1.
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`I am the sole inventor of United States Patent Nos. 5,191,573; 5,675,734; and 5,966,440.
`
`2.
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`I am Chairman of the Board and Chief Technology Officer of SightSound Technologies,
`
`Inc.
`
`I assigned my rights in United States Patent Nos. 5,l9l,573; 5,675,734; and 5,966,440 to
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`the company that ultimately became SightSound.Technologies, Inc (“SightSound.”).
`
`These patents served Sightsound Technologies well and were essential in raising the
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`capital necessary to launch a company that would build eCommerce systems protected by
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`the patents.
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`\
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`With the foregoing three patents in hand, Sightsound Technologies achieved many
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`notable firsts, including