UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/010,333
`
`11/07/2008
`
`7324833
`
`AFF.0004B I US
`
`6333
`
`7590
`21906
`TROP,. PRUNER & HU, P.C.
`1616 S. VOSS ROAD, SUITE 750
`HOUSTON, TX 77057-2631
`
`10/05/2012
`
`EXAMINER
`
`LAROSE, COLIN M
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`10/05/2012
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
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`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE, CA 92614
`
`Page 1 of 1
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`Date:
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO.: 90010333
`PATENT NO. : 7324833
`ART UNIT: 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR l.SSO(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
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`

`

`ACTION CLOSING PROSECUTION
`(37 CFR 1.949)
`
`Control No.
`<;'$ vv\ l:t "1
`90/01 0' 333
`Examiner
`
`'f• 5 \)..) i "1.(;'-(
`
`COLIN LAROSE
`
`Patent Under Reexamination
`
`7324833
`Art Unit
`
`3992
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 14 September. 2010
`Third Party(ies) on 20 December. 2010
`
`Patent owner may once file a submission under 37 CFR 1.951(a) within 1 month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951 (b) within 30-days (not extendable- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`·
`Right of Appeal Notice under 37 CFR 1.953. ·
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`1. 0 Notice of References Cited by Examiner, PT0-892
`2. ~ Information Disclosure Citation, PTO/SB/08
`3.0 __
`
`PART II. SUMMARY OF ACTION:
`1 a. ~ Claims 1-49 are subject to reexamination.
`1 b. 0 Claims __ are not subject to reexamination.
`2. 0 Claims __ have been canceled.
`3. 0 Claims __ are confirmed. [Unamended patent claims]
`4. ~Claims 43.44 and 47 are patentable. [Amended or new claims]
`5. ~ Claims 1-42,45,46.48 and 49 are rejected.
`6. 0 Claims __ . _ are objected· to. ·
`0 are not acceptable.
`0 are acceptable
`7. 0 The drawings filed on
`8 0 The drawing correction request filed on __ is: 0 approved. 0 disapproved.
`9 0 Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-( d). The certified copy has:
`D been received.
`D been filed in Application/Control No __
`0 not been received.
`10.0 Other __
`
`U.S. Patent and Trademark Office
`PTOL-2065 (08/06)
`
`Paper No. 20120730
`
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`Application/Control Ntimbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 2
`
`ACTION CLOSING PROSECUTION
`
`1.
`
`The following Office action is being written for the merged proceeding of reexamination
`
`proceedings Control Numbers 90/010,333, 95/001,223, and 95/001,264, which proceedings have
`
`been previously merged. This 90/010,333 action is in response to Patent Owner's amendments
`
`and remarks dated 9/14/2010 and Third Party Requester's (Apple's) remarks dated 12/20/2010.
`
`The treatment of issues in 90/010,333 begins on p. 12.
`
`The treatment of issues in 95/001,223 begins on p. 13.
`
`The treatment of issues in 95/001 ,264 begins on p. 40.
`
`Documents Cited Herein
`
`2.
`
`In the '333 proceeding:
`
`U.S. Patent 6,622,083 ("Knockeart");
`
`"1200 Song MP3 Portable is a Milestone Player" ("Newswire");
`
`U.S. Patent 6,282,464 ("Obradovich"); and
`
`U.S. Patent 6,396,164 ("Barnea").
`
`3.
`
`In the '223 proceeding:
`
`EP 0 982 732 AI ("Hahm");
`
`U.S. Patent 6,407,750 ("Gioscia '750");
`
`U.S. Patent 6,559,773 ("Berry");
`
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`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 3
`
`"The Network Vehicle-A Glimpse Into the Future of Mobile Multi-Media"
`
`("Lind");
`
`U.S. Patent 6,526,335 ("Treyz");
`
`U.S. Patent 6,192,640 ("Abecassis");
`
`U.S. Patent 6,185,491 ("Gray);
`
`U.S. Patent Application Publication 2003/0215102 ("Marlowe '1 02");
`
`Neo Car Jukebox Installation and Instruction Manual ("Neo Car Jukebox");
`
`EP 1 146 674 A2 ("Ohmura");
`
`U.S. Patent 6,282,464 ("Obradovich");
`
`U.S. Patent 6,255,961 ("Van Ryzin");
`
`U.S. Patent 6,421,305 ("Gioscia '305");
`
`U.S. Patent 6, 15 7, 725 ("Becker '725 ");
`
`German Patent Publication 196 51 308 A1 ("Becker '308");
`
`Yamaha Music Sequencer QY70 Owner's Manual ("Yamaha QY Music
`
`Sequencer");
`
`Yamaha QY Data Filer Owner's Manual ("Yamaha QY Data Filer"); and
`
`German Patent Publication 102 05 641 ("Wengelnik").
`
`4.
`
`In the '264 proceeding:
`
`U.S. Patent 6.671.567 ("Dwyer");
`
`U.S. Patent 6,728,531 ("Lee");
`
`Rio 500 Getting Started Guide ("Rio 500");
`
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`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 4
`
`U.S. Patent 5,557,451 ("Schulhof');
`
`U.S. Patent 6,526,335 ("Treyz");
`
`U.S. Patent 6,694,200 ("Nairn");
`
`U.S. Patent 6,232,539 ("Looney");
`
`U.S. Patent 7,120,462 ("Kumar");
`
`Japanese Patent Application No. H08-79814 ("Konishi");
`
`U.S. Patent 6,160,551 ("Naughton");
`
`U.S. Patent 6,192,340 ("Abecassis");
`
`Korean Publication No. 1999-0073234 ("Young-Man Lee"); and
`
`RealJukebox Plus Manual ("RealJukebox").
`
`5.
`
`Newly Relied-Upon Prior Art:
`
`Nokia, "Quick Guide- Accessories Guide," Copyright 1999.
`
`U.S. Patent 7,549,007 ("Smith");
`
`U.S. Patent 6,772,212 ("Lau"); and
`
`U.S. Patent 7,711,838 ("Boulter").
`
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`

`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 5
`
`Response to Arguments of a General Nature
`
`6.
`
`The priority date ofthe '833 patent
`
`(see Patent Owner remarks, pp .. 1 0-17; Requester remarks, pp. 6-11)
`
`In the '223 proceeding, the Request asserted that the claims ofthe '833 patent are not
`
`supported by the specification of parent applica::on 09/537,812. In the previous Office action for
`
`this merged proceeding, it was agreed that is not clear how the disclosure of the '812 application
`
`fully supports the claims ofthe '833 patent. Therefore, it was determined that no claims in the
`
`'833 patent should be entitled to benefit ofthe filing date ofthe '812 application. For examination
`
`purposes, all claims in the '833 patent were given an earliest effective date of September 23,
`
`2004.
`
`Under 35 U.S.C. § 120, an application for patent may refer to previous application(s) for
`
`patent and receive benefit of the filing date of the parent application(s) if certain requirements
`
`are met:
`
`An application for patent for an invention disclosed in the manner provided by
`the first paragraph of section 112 of this title in an application previously filed in
`the United States, or as provided by section 363 of this title, which is filed by an
`inventor or inventors named in the previously filed application shaH have the
`same effect, as to such invention, as though filed on the same date of the prior
`application, if filed before the patenting or abandonment of or termination of
`proceedings on the first application or on an application similarly entitled to the
`benefit of the filing date of the first application and if it contains or is amended
`to contain a specific reference to the earlier filed application.
`
`For a patent that is a child to one or more parent applications, it may be necessary during
`
`the course of examination or reexamination to determine the earliest effective filing date that the
`
`claims in question are entitled to. That is, it may be necessary to conduct an analysis under § 120
`
`to determine whether the claims' are entitled to the earlier effective date. This is so primarily
`
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`

`

`Applicatiori/Control Numbers: 90/01 0,333; 95/001 ,223;
`95/001,264
`Art Unit: 3992
`
`Page 6
`
`when a particular prior art reference to be applied against the claims intervenes the non-
`
`provisional filing date of the patent and the filing date of a parent application.
`
`Section 120 imposes several requirements in order for an application to properly receive
`
`benefit of an earlier application's filing date:
`
`-the disclosed invention was "disclosed in the manner provided by the first paragraph of
`
`section 112 , .. in an application previously filed in the United States, or as provided by section
`
`363";
`
`-the application for patent is "filed by an inventor or inventors named in the previously
`
`filed application";
`
`-the application for patent is "filed before the patenting or abandonment of or
`
`termination of proceedings on the first application or on an application similarly entitled to the
`
`benefit of the filing date of the first application"; and
`
`-the application seeking benefit of an earlier-filed application includes a "specific
`
`reference to the earlier filed application."
`
`-
`Patent Owner argues that the § 120 priority issue has been foreclosed because the issue of
`
`compliance with§ 112, 1st paragraph, has already been addressed by the examiner during the
`
`initial examination ofthe '833 patent. This argument is persuasive.
`
`In the examination ofthe '833 patent (serial no. 10/947,755), § 112, l 5
`t paragraph,
`
`rejections were tendered by the examiner in a non-final action of 5/24/2007, and in a final
`
`rejection on 8/16/2007. In both instances, all pending claims were rejected for failing to comply
`
`with the written description requirement.
`
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`

`Application/Control Numbers: 90/01 0,333; 95/001 ,223;
`95/001,264
`Art Unit: 3992
`
`Page 7
`
`On 10/4/2007, an interview was conducted, and according to the Interview Summary by
`
`the examiner, the § 112 rejections were discussed and the "Applicant provided an explanation
`
`along with pertinent portions of the specification providing support for the written description
`
`requirement." The surrimary also indicated that the "Exa.'Tiiner agreed that the 112 rejection [sic]
`
`should be withdrawn."
`
`.
`
`.
`
`The Federal Circuit has confirmed that determinations of priority under§ 120 are
`.·
`.
`.
`.
`.
`.
`.
`-
`permissible in reexamination proceedings. See In re NTP, 99 USPQ2d 1500, 1506 (Fed. Cir.
`
`.
`
`.
`
`2011) ("[t]here is no statutory limitation during a reexamination proceeding prohibiting the
`
`examiner from conducting a priority analysis"). Priority determinations are separate and distinct
`
`from written description determinations:
`
`Deciding whether a patent application satisfies § 112 requires a distinct and
`separate analysis from deciding whether that application satisfies § 120. When
`an examiner decides whether an· application satisfies § 112, the examiner
`reviews only the application. Deciding whether that same application is entitled
`to an earlier priority date requires the examiner to determine whether pending
`claims are supported by the written description of the parent application. 35
`U.S.C. § 120. While a continuation application is required to have an identical
`written description to that of its parent, this can only be determined by
`examining the parent application. Here, it is undisputed that the examiner made
`no such examination of the Parent Application. Indeed, "[i]n the absence of an
`interference or rejection which would require the PTO to make a determination
`of priority, the PTO does not make such fmdings as a matter of course in ·
`prosecution.-'' PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 [86
`USPQ2d 1385] (Fed. Cir. 2008) (footnote omitted).
`
`See NTP at 1507.
`
`In the initial examination, no§ 120 priority determinations were made by the examiner.
`
`However, the§ 112 written description issue was squarely addressed. Since the disclosures of the
`
`'833 patent and its parent application are substantially identical, it can be argued that the
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`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 8
`
`examiner implicitly found that the '833 patent was entitled to claim priority to its parent
`
`application. [ Cf NTP at 1507, where no implicit § 120 determination was made where the
`
`requirements§ 112 were not squarely addressed by the examiner.]
`
`Whether an examiner considered an issue must be context-specific, and here, there is
`
`evidence that the examiner actually considered whether the claims of the '833 patent satisfy the
`
`requirements of§ 112. Two separate§ 112 rejections were made and then withdrawn based on
`
`an interview with the applicant. Although the reasons for the withdrawl are not entirely clear, the
`
`written description issue was addressed in any event.
`
`The priority issues raised by the Request of the '223 reexamination turn on§ 112 issues
`
`that were previously addressed and therefore constitute "matters that were decided in the original
`
`examination [and] barred from reexamination," In re Recreative Technologies Corp., 83 F.3d
`
`1394 (Fed. Cir. 1996). During the examination of the '833 patent, the examiner initially found
`
`that the specification did not support the claim limitations related to the portable electronic
`
`device "displaying a graphical interface item comprising a name associated with an audio file
`
`wherein the portable electronic device is communicatively coupled to a different electronic
`
`device and the portable electronic device communicate·s a representation of the graphical
`
`interface item to the different electronic device for display on said different electronic device"
`
`(see 10/947,755 at pp. 2-3 of Office action dated 5/24/2007, and at pp. 2-3 of Final Rejection
`
`dated 8/16/2007). Subsequently, those rejections were withdrawn in view of applicant's
`
`arguments during an interview. Furthermore, application claiil,ls 50, 57, and 65, which were
`
`directed to the "soft button" limitations, were indicated as allowable subject matter by the
`
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`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 9
`
`examiner in the Office action dated 11/9/2007, and those limitations were added to the
`
`independent claims accordingly.
`
`By all accounts, compliance with the written description requirements of§ 112 has
`
`already been determined in the initial examination. Since the disclosures of the '833 patent and
`
`its parent are substantially identical, this determination extends to the § 120 priority issue, which
`
`necessarily includes an examination of the parent application for compliance with § 112.
`
`Accordingly, the§ 120 priority issue has been implicitly decided during the initial examination
`
`and cannot be revisited on reexamination.
`
`For these reasons, the claims of the '833 patent are entitled to the priority date of
`
`3/28/2000.
`
`7.
`
`Evidence of Secondary Considerations
`
`(see Patent Owner remarks, pp. 41-43; Requester remarks, pp. 35-37)
`
`Patent Owner's proffered evidence of commercial success of the claimed invention and
`
`of increased sales of automobiles being attributed to the claimed invention has been considered.
`
`This evidence, however, is not dispositive with respect to the alleged unobviousness of the
`
`claimed invention. Requester's rebuttal notes that there is, at best, a tenuous nexus between the
`
`claimed invention and the increased sales of automobiles. Primarily, there are numerous and
`
`varied factors that contribute to the sales of automobiles, and the evidence presented does not
`
`tend to show that there is a strong correlation between the increase of sales and the benefits of
`
`the claimed invention. None ofthe other of countless market forces, technologies, and economic
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`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 10
`
`considerations has been ruled out as the principle cause(s) of increased consumer demand.
`
`Furthermore, no clear nexus between the commercial success of Apple's iPod system and
`
`features of the claimed invention has been established. The various impacts of advertising,
`
`goodwill, price, competition, branding, design, other technological features, government
`
`regulations, and so forth have not been addressed and ruled out as primary factors in the iPod's
`
`commercial success. The evidence presented by the Patent Owner is at best inconclusive as
`
`presented for its stated purpose.
`
`8.
`
`Requirements of37 C.F.R. § 1.111 for claims 1, 17, 19, and 36-49
`
`(see Requester remarks, pp. 37-38)
`
`Requester asserts that the latest claim amendments should not be entered because Patent
`
`Owner allegedly has failed to present arguments pointing out the specific distinctions believed to
`
`render amended claims 1, 17, and 19, and the new claims 36-49 patentable over any applied
`
`references. However, it appears that Patent Owner has complied with the requirements of
`
`§ 1.111 since rebuttals to each and every outstanding rejection have been submitted. New claims
`
`36-49 all depend directly or indirectly from the originally patented claims and need not be
`
`separately argued. Furthermore, the claim amendments to claims 1 and 1 7 were proper for
`
`maintaining the same claims in each of the three reexamination proceedings, as required by the
`
`Decision Merging Proceedings mailed 6114/2010.
`
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`

`Application/Control Numbers: 90/01 0,333; 95/001 ,223;
`95/001,264
`Art Unit: 3992
`
`Page 11
`
`Claim Rejections- 35 USC§ 112
`
`9.
`
`The previous § 112, 1st paragraph, rejections of claims 1-27 have been withdrawn since
`
`Patent Owner has amended the claims to correspond to the original patent claims.
`
`Also, the previous § 112, second paragraph, rejections of claims 1-27 have been withdrawn since
`
`Patent Owner has filed claim amendments that make the claims in all three reexamination
`
`proceedings identical.
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the
`subject matter which the applicant regards as his invention.
`
`Claims 37, 41, 42, and 46 are rejected under 35 U.S.C. 112, second paragraph, as being
`
`indefinite for failing to particularly point out and distinctly claim the subject matter which
`
`applicant regards as the invention.
`
`Claims 37, 41, 42, and 46 recite the limitation "the automobile." There is insufficient
`
`antecedent basis for this limitation in the claims.
`
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`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 12
`
`Response to Arguments Concerning 901010,333
`
`10.
`
`§ 1 03(a) rejections of claims 28, 29, and 33-35 over Knockeart and Newswire
`
`(see Patent Owner remarks, pp. 19-24; Requester remarks, pp. 12-16)
`
`Regarding the§ 103 rejections based on Knockeart, Patent Owner asserts that Knockeart
`
`does not qualify as prior art because the portions relied upon in Knockeart are not supported by
`
`the provisional applications from which Knockeart claims benefit. It does appear that
`
`Knockeart's provisional applications (filed in 1999) do not support the portions relied upon in the
`
`previous Office action, and Knockeart's non-provisional filing date of 611/2000, does not
`
`antedate the 3/28/2000 earliest effective date of the '833 patent. Accordingly, Knockeart does not.
`
`qualify as prior art under any of 35 U.S.C. §§ 102(a), (b), and (e), and the previous rejections of
`
`claims 28-35 based on Knockeart have been withdrawn.
`
`11.
`
`§ 1 03(a) rejections of claims 30-32 over Knockeart. Newswire, and Obradovich
`
`(see Patent Owner remarks, pp. 24-25; Requester remarks, pp. 16-17)
`
`These rejections are withdrawn because, as indicated above, Knockeart does not qualify
`
`as prior art.
`
`Disposition of Rejections from 90/010,333
`
`12.
`
`Claims 28, 29, and 33-35 are not rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Knockeart in view ofNewswire.
`
`These rejections have been withdrawn because Knockeart does not qualify as prior art.
`
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`IPR2014-01181 EXHIBIT 2017 – 14
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`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 13
`
`13.
`
`Claims 30-32 are not rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Knockeart in view ofNewswire and Obradovich.
`
`These rejections have been withdrawn because Knockeart does not qualify as prior art.
`
`Response to Arguments Concerning 951001,223
`
`14.
`
`§ 103(a) rejections of claims 1-5, 13. 14, 16-18,20.23.25-28, and 34 over Berry
`
`(Ground C)
`
`(see Patent Owner remarks, pp. 25-30; Requester remarks, pp. 17-21)
`
`Patent Owner traverses the rejections of Ground C and alleges several deficiencies in
`
`Berry with respect to the claims. Requester responds by alleging that Berry does in fact teach the
`
`claim limitations, or at the very least, renders the claim limitations obvious based on what one
`
`skilled in the art would have understood about Berry's disclosure. Requester's rebuttal, however,
`
`is not sufficient to sustain a prima facie case of obviousness. Requester appears to extrapolate the
`
`basic teachings of Berry in an attempt to fill in the gaps of Berry so that it covers what is claimed
`
`in the '833 patent.
`
`Berry teaches that numerous devices can be connected to the reconfigurable display of
`
`figure 1 and that the soft buttons presented on the display to the user for controlling the portable
`
`device "depend upon the functionality ofthe particular electronic accessory device" (column
`
`5/56-63). Previously, it was found that based on this teaching, those skilled in the art would have
`
`known that the teconfigurable display would have been supplied with soft buttons that
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`SAMSUNG ELECTRONICS CO., LTD., v. AFFINITY LABS OF TEXAS, LLC
`IPR2014-01181 EXHIBIT 2017 – 15
`
`

`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 14
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`correspond to the known functionality of a conventional MP3 player attached theret~.g.,
`
`browsing, selecting, and playing audio files. However, Berry's disclosure does not appear to
`
`support such a conclusion for several reasons.
`
`Patent Owner notes that Berry only nominally discloses an MP3 player and does not
`
`teach any further details about it. Therefore, Berry's MP3 player is not disclosed as having a
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`display. In response, Requester asserts that "one of ordinary skill ... would have understood that
`
`an MP3 player may include a display as one of the relevant design choices" (Requester remarks,
`
`p. 18). While it may be true that MP3 players may include displays, Berry is silent to such a
`
`teaching, and there is otherwise no basis for asserting that displays are an inherent feature of all
`
`MP3 players. A prima facie case of obviousness is not normally based on what a prior art
`
`teaching could possibly be; it is based on what the prior art actually teaches or reasonably infers.
`
`The mere fact that MP3 players could have displays, or that some types of MP3 players are
`
`known to have displays, is not a sufficient basis for holding that the nominal disclosure of a
`
`generic MP3 player renders obvious all species of MP3 players having displays.
`
`Requester additionally asserts that the claimed "first portion of software" for displaying
`
`graphical interface items on the display of the portable device would have been obvious in view
`
`of Berry's disclosure because those skilled in the art would have allegedly recognized that all
`
`portable electronic devices disclosed by Berry (such as cell phones, MP3 players, palm-sized
`
`PCs, and PDAs) "necessarily included such types of software" (id. ). However, this assertion fails
`
`because it is unreasonable to conclude that an MP3 player having a display can be inferred from
`
`or otherwise rendered obvious by Berry's disclosure, and because there is insufficient basis for
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`SAMSUNG ELECTRONICS CO., LTD., v. AFFINITY LABS OF TEXAS, LLC
`IPR2014-01181 EXHIBIT 2017 – 16
`
`

`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 15
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`asserting that the entire class of portable electronic devices disclosed by Berry necessarily
`
`includes software configured to display graphical interface items on the devices' displays.
`
`Patent Owner asserts that Berry does not teach or render obvious the displaying of a
`
`graphical interface item including a name associated with an audio file. In response, Requester
`
`draws a correspondence between "messages" received from a portable device and such names
`
`associated with audio files and asserts that "[ o]ne skilled in the art would recognize that names of
`
`audio files stored on an MP3 player are the types of 'messages' sent by an MP3 player to a
`
`remote display system so that a user could select a desired audio file for playback by using the
`
`remote display system" (id. ). The assertion, however, impermissibly extrapolates teachings that
`
`are unsupported by Berry's disclosure. Based on Berry's disclosure, there is no apparent nexus
`
`between a "message" and the name of an audio file. Requester analogizes Berry's senaing of
`
`messages with the claimed limitations of sending song information (seep. 19 of Requester's
`
`remarks), but simply drawing an analogy between the prior art and the claimed invention is not
`
`sufficient to render the claims obvious.
`
`Furthermore, Patent Owner asse~s that Berry's interface specifiers (human-machine
`
`interface HMis) are not saved at the MP3 player, as the claimed software is saved at the portable
`
`device. Rather, as shown in figure 2 ofBerry and as described as column 4:10-33, the HMis are
`
`stored in the memory of a reconfigurable display subsystem. Requester asserts that "one of skill
`
`in the art could pull additional aspects ofthe HMI from the player itself as a design choice" (see
`
`p. 19 of Requester's remarks), however, what one skilled in the art is merely capable of doing
`
`has little bearing on whether the prior art renders the claim obvious. There appears to be no
`
`teaching, suggestion, motivation, or other basis for contending that Berry's HMis stored in the
`
`SAMSUNG ELECTRONICS CO., LTD., v. AFFINITY LABS OF TEXAS, LLC
`IPR2014-01181 EXHIBIT 2017 – 17
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`

`

`Application/Control Numbers: 90/01 0,333; 95/001 ,223;
`95/001,264
`Art Unit: 3992
`
`Page 16
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`memory of a reconfigurable display renders obvious storing the same on the portable MP3
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`player.
`
`For these reasons, Patent Owner's arguments are persuasive, and the previous rejections
`
`of Ground C are withdrawn. Berry is not considered to render the claims obvious without
`
`resorting to impermissible hindsight ·and without employing improper extrapolation of the
`
`teachings therein.
`
`15.
`
`§ 102(b) rejection of claim 28 over Treyz (Ground F)
`
`(see Patent Owner remarks, pp. 31-32; Requester remarks, pp. 21-22)
`
`Patent Owner traverses the rejection of claim 28 over Treyz, and Requester's rebuttals to
`
`Patent Owner's arguments are not entirely persuasive. To summarize, Treyz teaches an
`
`automobile PC 14 that corresponds to the claimed "electronic device" and a handheld computing
`
`device 16 (or portable computer 18) that corresponds to the claimed "portable electronic device."
`
`The automobile PC and the portable device communicate with each other via a physical interface
`
`connected to the ports of each device. Figures i 05 and 1 06 show that a menu of audio files can
`
`be displayed on the portable device; the files are identified by name and a user can navigate the
`
`files and select desired ones to be transferred to the automobile PC:
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`SAMSUNG ELECTRONICS CO., LTD., v. AFFINITY LABS OF TEXAS, LLC
`IPR2014-01181 EXHIBIT 2017 – 18
`
`

`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`.
`Art Unit: 3992
`
`Page 17
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`RETRIEVE AUDIO FILE (E.G .. MP3) LIST FROM
`
`DEVICE (E.G., HANDHELD COMPUTING DEVICE,
`PERSONAL COMPUTER, ETC.)
`
`AUTOMOBILE PERSONAL COMPUTER WITH USER tv
`
`106
`
`PRESENT USER WITH GRAPHICAL INTERFACE ON
`USER COMPUTING DEVICE THAT ALLOWS USER
`TO MOVE AND COPY AUDIO FILES BETWEEN USER
`
`DEVICE AND AUTOMOBILE PERSONAL COMPUTER l"v
`
`(E.G., OVER SERIAL BUS OR IR OR RF WIRELESS
`LINK, ETC.) AND TO OTHERWISE ORGANIZE FILES
`AND THAT ENSURES THAT COPY-PROTECTED
`FILES ARE NOT COPIED
`
`1108
`
`/1110
`
`....--1112
`
`AUDIO FILENAME
`
`AUDIO FILENAME
`
`-----------·
`
`DFIAG FILENAME
`TO DESTINAOON
`
`.-/1114
`
`I
`
`11~
`§ L
`
`AUDIO FILENAME
`
`AUDIO FILENAME
`
`AUDIO FILENAME
`
`AUDIO FILENAME
`
`r' AUDIO FILENAME
`
`AUDIO FILENAME
`
`DFIAG
`ORIGINAL
`TO COPY
`FILES TO E-MAIL
`
`B
`
`FIG. 105
`
`FIG. 106
`
`Audio files that are comunicated to the automobile PC can then be selected for
`
`processing, such as attaching audio files to emails:
`
`USE AUTOMOBILE PERSONAL COMPUTER TO
`PROVIDE USER WITH OPPORTUNITY TO SELECT
`DESIRED AUDIO FILE TO SEND AS E-MAIL OR OTHER
`
`SUCH AS FILES IN USER'S COLLECTION, NEWS FILES,
`WEATHER REPORT FILES, TRAFFIC REPORT FILES,
`MUSIC FILES THAT CONTAIN COLLECTIONS OF AUDIO
`CLIPS, ETC.) AND TO SELECT MESSAGE RECIPIENT
`
`MESSAGE (E.G., MP3 FILES OR OTHER AUDIO FILES tv
`
`890
`
`892
`
`APPEND VOICE OR TEXT MESSAGE AND SEND
`
`SELECTED FILE TO RECIPIENT
`
`l
`E-MAIL OR OTHER SUCH MESSAGE INCLUDING rv-
`l
`
`~
`894
`
`SEND MESSAGE
`
`FIG. 76
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`SAMSUNG ELECTRONICS CO., LTD., v. AFFINITY LABS OF TEXAS, LLC
`IPR2014-01181 EXHIBIT 2017 – 19
`
`

`

`Application/Control Numbers: 90/010,333; 95/001,223;
`95/001,264
`Art Unit: 3992
`
`Page 18
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`Those skilled in the art would have known that "providing the user with the opportunity
`
`to select a desired audio file" necessarily involves allowing a user to "navigate through a
`
`plurality of audio files." Inherently, there must be some mechanism by which a user can navigate
`
`through multiple files by differentiating one file from another. Likewise, it is inherent for the
`
`user to "view at least a partial representation of the menu on the display," namely, to view at
`
`least a partial listing of files that includes at least the name of the file to be selected. All personal
`
`computing devices ofthe type employed by Treyz are capable·ofproviding a list, or menu, of
`
`available files to a user.
`
`Notwithstanding these teachings of Treyz, Patent Owner asserts that Treyz does not
`
`present on the associated display a plurality of preprograrnmed soft buttons that are linked to
`
`respective audio information sources. In support of this limitation, Requester points to figure
`
`106, which appears to show multiple preprogrammed soft buttons related to audio files that allow
`
`a user to drag and drop the files as desired. However, the interface shown in figure 106 is not
`
`displayed on the "associated display" of the automobile PC. Rather, it