`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addnss: COMMISSIONER FOR PATENTS
`Po. Box 1450
`Alexandnx. Virginia 22313-1450
`www.uspto.gnv
`
`95/001,263
`
`1 1/13/2009
`
`1
`
`7486926
`
`AFF.000486US
`
`6721
`
`TRop,pRUNER&HU,p.c. —
`1616 S. VOSS ROAD, SUITE 750 ‘
`“ROSE COLIN M
`HOUSTON,,TX 77057—2631
`PAPER NUMBER
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`12/06/201 1
`
`DEL1VERY 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.
`
`p'r0L-90A (Rev, 04/07)
`
`Samsung EX. 1020 p. l
`
`Samsung Ex. 1020 p. 1
`
`

`

`‘
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.0.Box I450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`Date:
`
`NOVAK DRUCE & QUIGG, LLC
`(NDQ REEXAMINATION GROUP)
`1000 LOUISIANA STREET, FIFTY-THIRD FLOOR
`
`HOUSTON, TX 77002
`
`MAILED
`
`DEC 0 6 20”
`mmumou umr
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95001263
`
`PATENT NO. : 7486926
`
`TECHNOLOGY CENTER : 3999
`
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`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 the communication enclosed with this transmittal.
`
`PTOL-2070(Re-v.07-O4)
`
`Samsung EX. 1020 p. 2
`
`Samsung Ex. 1020 p. 2
`
`

`

`
`
`Control No.
`
`Patent Under Reexamination
`
`
`
`95/001,263
`Examiner
`
`7486926
`Art Unit
`
`COLIN LAROSE
`
`3992
`
`Patent Owner on 16 September, 2011
`Third Party(ies) on
`
` Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adversedecision
`
`with payment of the fee set forth in 37 CFR 41.20(b)(1) within one-month or thirty-days (whichever is
`longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
`41 .20(b)(1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
`MPEP 2672.
`
`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.
`
`
`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
`
`concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1 997 in
`accordance with this Office action.
`
`*Reasons for non-entry are given in the body of this notice.
`
`IE will be entered
`
`2. E] Claims __ have been cancelled.
`
`D Claims _ are confirmed. [Unamended patent claims].
`
`
`are patentable. [Amended or new claims].
`
`El Claims
`
`
`
`
`
`Right of Appeal Notice
`(37 CFR 1.953)
`
`
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
` Responsive to the communication(s) filed by:
`
`
`
`
`
`
`
`
` The proposed amendment filed 16 September, 2011
`
`[:I will not be entered*
`
`
`
`1a. g Claims Lg are subject to reexamination.
`1b. E] Claims __ are not subject to reexamination.
`
`
`
`
`
`
`
`
`
`
`
`$09°N97¢§>P°
`
`XI Claims Jfl are rejected.
`
`E] Claims __ are objected to.
`[:1 are not acceptable.
`E] The drawings filed on __ 1:] are acceptable.
`
`E] The drawing correction request filed on
`is [3 approved.
`[:1 disapproved.
`E] Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
`has:
`1: been'received.
`101:] Other
`
`[J not been received.
`
`[:1 been filed in Application/Control No.
`
`
`
`
` Attachments
`
`
`1. E] Notice of References Cited by Examiner, PTO-892
`2.
`[:1 Information Disclosure Citation, PTO/SB/08
`
`3E]
`
`
`
`US. Patent and Trademark Office
`PTOL—2066 (08-06)
`
`Right of Appeal Notice (37 CFR 1.953)
`
`Part of Paper No. 20111128
`
`Samsung EX. 1020 p. 3
`
`Samsung Ex. 1020 p. 3
`
`

`

`.
`
`.
`
`_
`
`Third Party Requester
`.
`.
`
`Inter Partes Reexamination COLIN LAROSE
`
`Control No.
`
`95/001263
`Examiner
`
`Patent Under Reexamination
`
`7485925
`Art Unit
`
`3992
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above—identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`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 the
`communication enclosed with this transmittal.
`
`
`
`US. Patent and Trademark Office
`PTOL-2070 (5/04)
`
`Paper No. 20111128
`
`Samsung EX. 1020 p. 4
`
`Samsung Ex. 1020 p. 4
`
`

`

`Application/Control Number: 95/001,263
`
`Page 2
`
`Art Unit: 3992
`
`RIGHT OF APPEAL NOTICE
`
`Receipt ofRemarks
`
`1.
`
`Patent Owner’s amendments and remarks dated 9/16/2011, have been entered and made
`
`of record. Third Party remarks in response to Patent Owner's submission have not been received.
`
`Response to Arguments
`
`2.
`
`Section 120 Priority Issues
`
`(see Patent Owner remarks, pp. 9-16)
`
`Patent Owner argues that “the Office is prohibited from re—considering the priority date
`
`issue, which is really a §1 12 issue, by both statute and the Federal Circuit case law" (P.O.
`
`Remarks, p. 9). However, the CAFC has recently held that“ there is no such prohibition. See In re
`
`NTP, 2010—1277; I‘August 201 1, (Slip 0p. at 14-15):
`
`Nothing in 35 U.S.C. §§ 301 et seq. entitles a patentee to a claim of
`right to its earliest priority date. Under § 120, a patent is entitled to
`the priority date of an earlier filed application if (1) the written
`description of the earlier filed application discloses the invention
`claimed in the later filed application sufficient
`to satisfy the
`requirements of § 112;
`(2)
`the applications have at
`least one
`common inventor;
`(3)
`the later application is filed before the
`issuance or abandonment of the earlier filed application; and (4)
`the later application contains a reference to the earlier
`filed
`application. In addition, if the later filed application claims priority
`through the heredity of a chain of applications, each application in
`the chain must satisfy § 112. Lockwood v. Am. Airlines, Inc, 107
`F.3d 1565,,1571 (Fed. Cir. 1997).
`
`Thus, when a patentee argues that its claims are entitled to the
`priority date of an earlier filed application,
`the examiner must
`
`Samsung EX. 1020 p. 5
`
`Samsung Ex. 1020 p. 5
`
`

`

`
`
`, Application/Control Number: 95/001,263
`
`Page 3
`
`Art Unit: 3992
`
`undertake a priority analysis to determine if the patentee meets the
`requirements of § 120. There is no statutory limitation during a
`reexamination
`proceeding
`prohibiting
`the
`examiner
`from
`conducting a priority analysis. Otherwise, the examiner would be
`stripped of a critical
`legal
`tool needed in performing a proper
`reexamination. Nothing in §§ 301 et seq. prohibits an examiner
`from determining whether or not a priority date was properly
`claimed during the original examination of the application.
`
`Also, neither the Section 120 priority requirements nor the Section 112 written description
`
`requirements were considered by the Examiner during the previous examination of the '926
`
`patent, therefore, reexamination with respect to the Section 120 priority issues is not improper.
`
`See NTP at 15-19.
`
`Patent Owner argues that “there is complete support for the claimed subject matter in the '812
`
`parent application, which is also present verbatim in the '926 Specification" (P.O. remarks, p.
`
`12). Specifically, Patent Owner asserts that there is sufficient support in the parent patent
`
`7,187,947 for the following limitations:
`
`
`Claim 1'
`
`to
`the collection of instructions operable to direct the processor
`communicate data to a different electronic device that has an
`
`associated display to allow the different electronic device to
`present a selectable representation of the particular selectable icon
`on the associated display, and to begin playing the particular audio
`file at the portable audio file player in connection with a user
`selecting the selectable representation from the associated display
`
`Claim 11
`
`the portable media
`the different application operable to direct
`player
`to communicate data representing the user—defined name
`
`Samsung EX. 1020 p. 6
`
`Samsung Ex. 1020 p. 6
`
`

`

`Application/Control Number: 95/001,263
`
`Page 4
`
`Art Unit: 3992
`
`to a different audio system to allow the different audio system to
`present a soft button comprising the user-defined name on an
`associated display of the different audio system
`
`Several passages in the ‘947 patent are identified by the Patent Owner as putatively
`
`providing the requisite support, including:
`
`In another embodiment, electronic device 300 may be operable as a PDA and/or a
`cellular phonethat may be mounted to an automobile’s console. Electronic device
`300 may then integrate with a user’s automobile to provide an all-encompassing
`communications device. For example, electronic device 300 configured as a PDA
`and cellular phone may allow for communication with a user's email account,
`voice mail account, the Internet, as well as allowing for the receipt of selected
`audio information via wireless communication. Electronic device 300 may be
`operable in a hands-free mode allowing a user
`to maintain safe driving
`fundamentals. During use, electronic device 300 may be processing selective
`audio information for communicating with an automobile audio system and may
`further be operating to receive incoming cellular calls.
`
`‘926 Patent, column 9, lines 21-35 (emphasis added) (see also, ‘947 Patent, column 10, lines 43-
`
`57).
`
`FIG. 4 illustrates a graphical user interface (GUI) for diSplaying selectable audio
`information according to one aspect of the present invention. The GUI may be
`operable with a computer system, cellular device, PDA. or other electronic
`devices or systems operable to display the GUI ofFIG. 4.
`
`‘926 Patent, column 9, lines 52—56 (emphasis added) (see also, ‘947 Patent, column 11, lines 6-
`
`l l).
`
`A user may also use a select a device feature that allows a user to select a
`destination device for communicating selected audio information. For example, a
`user may want to communicate a playlist to several different devices such as a
`PDA, a home computer system, a work computer system. etc.
`
`‘926 Patent, column 10, lines 43-48 (see also, ‘947 Patent, column 11, line 66 — column 12, line
`
`4).
`
`Samsung EX. 1020 p. 7
`
`Samsung Ex. 1020 p. 7
`
`

`

`Application/Control Number: 95/001,263
`
`Page 5
`
`Art Unit: 3992
`
`However, the above passages and others cited by the Patent Owner do not teach or
`
`otherwise suggest what is claimed in claim 1. For instance, disclosing that an “electronic device
`
`300 may then integrate with a user’s automobile to provide an all-encompassing communications
`
`device” does give rise to “communicat[ing] data to a different electronic device that has an
`
`associated display to allow the different electronic device to present a selectable representation
`
`of the particular selectable icon on the associated display.” Similarly, the teachings that the
`
`electronic device 300 operates in “hands-free mode” and processes “selective audio information
`
`for communicating with an automobile system" do not correspond to what is claimed; and the
`
`fact that “[t]he GUl may be operable with [various devices]” does not constitute communicating
`
`data such that a different electronic device can display selectable icons, as claimed.
`
`At best, the '947 patent teaches thata portable audio file player may be connected to the
`
`audio system of a boombox (figure 5A) or an automobile (figures 5B and 9) so that audio
`
`information can be transferred to the different device (i.e., the boombox or the car stereo system)
`
`for listening by a user (see e.g., US. Patent 7,187,947, column 18:64-66). However, there
`
`appears to be no teaching that any data transferred from the portable audio file player to the
`
`different electronic device allows the different electronic device to display selectable
`
`representations of an audio file in the portable audio file player. Since no selectable
`
`representation is displayed on the different electronic device, there can be no selection thereof
`
`(or playing of a file in response to the selection thereof).
`
`Accordingly, claim 1
`
`is not entitled to benefit ofthe filing date of the '812 application and
`
`is given an effective date of 3/2/2007, the non-provisional filing date of the '926 patent. See
`
`MPEP §§ 2258(I)(C) and 2658(1).
`
`Samsung EX. 1020 p. 8
`
`Samsung Ex. 1020 p. 8
`
`

`

`Application/Control Number: 95/001,263
`
`Page 6
`
`Art Unit: 3992
`
`Claim 1 1 recites a system that is analogous to that of claim 1: a portable media player
`
`receives audio information relating to the name of a playlist from a user computer system. The
`
`name information is then communicated from the portable media player to a "different audio
`
`system" so that the different audio system can display a soft button associated with the name.
`
`Substantially the same reasoning and analysis for claim 1, above, applies to claim 11 with
`
`respect to the issue of priority. Accordingly, claim 1 1 is also given an effective date of 3/2/2007.
`
`[Patent Owner asserts that the same § 112 Written description issues were addressed in a
`
`different patent, however, since such consideration was not given for the '926 patent, Patent
`
`Owner's argument is moot.]
`
`3.
`
`Rejections based in-part on Kumar gGrounds A—R, MM, 00, and UU—CCC)
`
`(see Patent Owner remarks, pp. 17-18)
`
`Patent Owner argues that Grounds A—R, MM, 00, and UU—CCC should be withdrawn
`
`because these grounds of rejection are based in-part on Kumar, which allegedly does not qualify
`
`as prior art. Patent Owner is correct in the assertion that Kumar's effective date corresponds to
`
`the filing of the national stage US. application (12/19/2005). Accordingly, Kumar does not
`
`antedate the filing date of the parent application of the '926 patent—Le, the 09/537,812
`
`application filed on 3/28/2000.
`
`However, as explained above, the claims are not entitled to such a priority date because
`
`they do not meet all of the requirements of 35 U.S.C. § 120.
`
`Samsung EX. 1020 p. 9
`
`Samsung Ex. 1020 p. 9
`
`

`

`Application/Control Number: 95/001 ,263
`
`Page 7
`
`Art Unit: 3992
`
`Patent Owner also argues that the rejections involving Kumar should be withdrawn
`
`because Kumar does not teach or suggest “data communication to the docking display unit to
`
`enable that unit to present a selectable representation of an icon and to begin playing an audio
`
`file in the audio file player in connection with the user selecting the selectable representation
`
`from the display” (P.O. Remarks, p. 17). Examiner disagrees with this characterization of
`
`Kumar.
`
`As explained in Kumar's disclosure, and as shown in figure 3, a communication interface
`
`17 of Kumar’s detachable handset unit interfaces with a wired communication circuit 33 of the
`
`docking display unit. Such a connection between the handset unit and the docking display unit is
`
`for communicating data between the two devices. Likewise, the auxiliary display 31 of the
`
`docking unit communicates with the video interface 15 of the handset unit in order to display
`
`information pertaining to the handset unit on the larger auxiliary display 31. In addition, the
`
`auxiliary keyboard 32 of the docking display unit is in communication with the keyboard
`
`interface 16 of the handset unit; this allows a user to enter commands via the auxiliary keyboard
`
`32 of the docking unit rather than the keypad 19 of the handset. Accordingly, Kumar discloses
`
`that data, GUI, and keyboard information are all communicated to the docking station so that a
`
`user can utilizethe docking station to select and play audio files when the handset is docked
`
`thereon.
`
`Samsung EX. 1020 p. 10
`
`Samsung Ex. 1020 p. 10
`
`

`

`Application/Control Number: 95/001,263
`
`Page 8
`
`Art Unit: 3992
`
`4.
`
`Other Prior Art Rejections
`
`Patent Owner incorporates by reference the previous remarks with respect to the
`
`remaining prior art rejections made in Patent Owner's remarks dated 9/9/2010. These remarks are
`
`not persuasive for the same reasons as previously given in the ACP dated 8/17/2011 (repeated
`
`below):
`
`1 6)
`
`Rejections based on SoundJam, Rio 500, and Naughton gGrounds S—DDt
`
`(see Patent Owner remarks, 9/9/2010, pp. 15-20; Requester remarks, 10/12/2010, pp. 9-
`
`First, Patent Owner asserts that the combination of Sound] am and Rio 500 does not teach
`
`a collection of instructions, saved locally at the portable player, that is operable to direct a
`
`processor of the player to "maintain an updateable user interface, and to modify such in
`
`connection with receiving an audio file from a personal computer so that the selectable icon is
`
`linked with the file" (see P.O. remarks, p. 16, first paragraph). Patent Owner asserts that such
`
`limitations are not taught by SoundJam and Rio 500 because "all of [the] contended support
`
`[identified at Exhibit CC-SS, pp. 14-16] regards the Rio Port audio manager, which is stored on
`
`the PC and operates only in the PC" (rather than in the portable audio file player, as required by
`
`the claims).
`
`Requester successfully rebuts Patent Owner's assertion on pp. 10-12 of Requester's
`
`remarks. Specifically, Requester notes that the Rio 500 portable audio player is operative to
`
`download audio files from a PC and then display such files on its interface. That is, the Rio 5005
`
`interface is updated as new files are downloaded to the device; textual information pertaining to
`
`Samsung Ex. 1020 p. 11
`
`Samsung Ex. 1020 p. 11
`
`

`

`Application/Control Number: 95/001,263
`
`Page 9
`
`Art Unit: 3992
`
`a given file is displayed, and a user can select the displayed file for playback or scroll to a
`
`different file:
`
`\\\\\\\\V.\‘&\
`
`
`
`Rio 500 at p.
`
`l
`
`The maintaining and modifying of the updateable user interface necessarily require a
`
`"collection of instructions" that directs the player's processor to execute these interface
`
`operations (i.e., the presence of software or the like pertaining to the execution of the interface is
`
`inherent). Furthermore, Requester notes that the claimed "selectable icon" can constitute textual
`
`information regarding an audio file or the like, such as shown above for the Rio 500 player.
`
`Second, Patent Owner asserts that the combination of SoundJ am and Rio 500 with
`
`Naughton does not render the claims obvious because: (1) "even when combined these three
`
`references fail to lead to the claimed subject matter"; (2) "there is no reason to combine the
`
`references since the proposed combination would add additional complexity, rendering the
`
`claims nonobvious" (see P.O. remarks, p. 16).
`
`As identified in the previous Office action, SoundJam and Rio 500 teach all of the
`
`limitations of claim 1 except the portable audio file player's collection of instructions being
`
`operable to cause the processor to:
`
`Samsung Ex. 1020 p. 12
`
`Samsung Ex. 1020 p. 12
`
`

`

`Application/Control Number: 95/001,263
`
`Page 10
`
`Art unit; 3992
`
`—communicate data to a different electronic device that has an associated display to
`
`allow the different electronic device to present a selectable representation of the particular
`
`selectable icon on the associated display; and
`
`—begin playing the particular audio file at the portable audio file player in connection
`
`with a user selecting the selectable representation from the associated display.
`
`Naughton, however, was relied upon as teaching these limitations.
`
`Patent Owner argues (p.16) that the rejection of claim 1 is improper because the Rio 500
`
`portable MP3 player is not capable of outputting data to another device in order to present a
`
`selectable representation or enable control of the Rio 500 player. The Rio 500 is equipped with a
`
`USB port connector that "connects the Rio 50 device to your computer using the supplied cable;
`
`USB allows for fast file transfers" (see Rio 500, p. 1). Accordingly, the Rio 500 is capable of
`
`communicating with a computer, but Patent Owner appears to be correct in noting that there is
`
`nothing in Rio 500 that teaches or suggests communicating data regarding the Rio 500 such that
`
`it can be controlled by another device in the claimed manner.
`
`Requester, however, points out that Naughton cures such a deficiency by providing a
`
`"device driver object" for a device to be connected to Naughton’s hand-held display and that
`
`Naughton’s hand-held display isdesigned to control "any compatible remote device" (see
`
`Requester remarks, p. 13). Naughton identifies three types of devices that can be connected to
`
`and controlled by a hand-held display device 170 (figures 1A and 1B):
`
`(1) an intelligent remote device (figure 1C);
`
`(2) a simple remote device (figure 1D); and
`
`Samsung EX. 1020 p. 13
`
`Samsung Ex. 1020 p. 13
`
`

`

`Application/Control Number: 95/001,263
`
`-
`
`Page 11
`
`Art Unit: 3992
`
`(3) a conventional electronic device (figure 1E).
`
`The "conventional electronic device" is characterized as a device that can be controlled
`
`by transmitted signals, such as infrared signals (see column 9/45-5 8; 30/6-29). The Rio 500 does
`
`not appear to constitute such a "conventional electronic device" because it is not controlled by
`
`transmitted signals—that is, it is not controlled by a remote control or the like.
`
`The "intelligent remote device" is characterized as a device having a microprocessor, a
`
`communication system, and a memory (column 9/2-4). The Rio 500 includes a communication
`
`system (i.e., USB interface) and memory (i.e., 64 MB onboard memory); it alsonecessarily
`
`includes a microprocessor of sorts in order to receive and process-audio files and display
`
`graphical information regarding the audio files. Therefore, the Rio 500 can be considered to
`
`constitute an "intelligent remote device."
`
`Alternatively, the Rio 500 can be considered a "simple remote device," which is
`
`characterized as not having a microprocessor or as having a "primitive processor" (column 9/21-
`
`26).
`
`Patent Owner asserts that to modify the Rio 500 player so that it can communicate with
`
`and be controlled by Naughton's display device "would add considerable complexity to this basic
`
`MP3 player" (Patent Owner remarks, p. 17). Allegedly, ”[t]his unnecessarily complicates the Rio
`
`500 and would require much additional work beyond that taught by the references" (id).
`
`As described by Naughton, both the intelligent and simple remote devices are equipped
`
`with a user interface object (303/353)‘and a device driver object (301/351) that are used to '
`
`present interface information to a display device 170 and allow the display device 170 to control
`
`the remote device—see columns 25/52—64 and 29/10-16. The flowcharts of figures 20 and 24
`
`Samsung Ex. 1020 p. 14
`
`Samsung Ex. 1020 p. 14
`
`

`

`Application/Control Number: 95/001,263
`
`Art Unit: 3992 .
`
`Page 12
`
`outline the methods by which the intelligent and simple remote devices communicate with and
`
`are controlled by the display device 170 using the user interface object and the device driver
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`object.
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`As the Rio 500 already contains the requisite hardware (i.e., memory, processor,
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`communication means) to enable operability with Naughton's display device, all that is
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`potentially absent are the "device driver object" and the "user interface obj ect" stored in the
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`memory of the player. Arguably, these two components are necessarily contained in the Rio 500
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`as inherent components for executing commands and displaying objects. However, to the extent
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`that such components are either not inherently present or not configured to handle interaction
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`with a display device such as disclosed in Naughton, it would have been obvious to
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`include/configure such components for interoperability with Naughton's display/control device.
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`Patent Owner's "undue complexity" argument is unpersuasive since the only
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`modifications to the Rio 500 player would be to install or update a device driver object and a
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`user interface object for compatibility with Naughton's external display/control device. Such a
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`task would have been well within the knowledge and capabilities of a person of ordinary skill in
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`the art at the time of the invention. In addition, Naughton provides details (summarized by the
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`flowcharts of figures 20 and 24) as to how the remote device and the display device should
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`interact (see also columns 25-29). Using such details, those skilled in the art would be able to
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`develop a device driver object and user interface object that do not add undue complexity to the
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`Rio 500 or destroy the basic operation thereof.
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`Furthermore, Naughton provides the requisite motivation and reasoning for initiating the
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`preposed combination. Namely, Naughton's disclosure outlines the desirability of connecting
`
`Samsung EX. 1020 p. 15
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`Samsung Ex. 1020 p. 15
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`

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`Application/Control Number: 95/001,263
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`Page 13
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`Art Unit: 3992
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`various remote devices to a single hand-held display that controls the various devices. Such a
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`system of connecting various remote devices to a graphic-based touch-screen device creates an
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`."intuitive methodology for an operator to control remote devices with a computer controlled
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`object—oriented user interface utilizing animated graphic images" that overcomes the drawbacks
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`of the traditional hierarchical computer interface (primarily, the drawback of user c0nfusion)——
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`see Naughton, Background of the Invention. Also, Naughton's system provides the inherent
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`benefit of allowing numerous devices to be controlled by a single hand—held device, thereby
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`facilitating ease of use and control among a large number of electronic devices.
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`Accordingly, the adaptation of the Rio 500 player to Naughton's display device allows
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`the Rio 500 player to communicate interface information to Naughton's touch-screen display
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`device such that a user interface for controlling the Rio 500 is displayed on Naughton's display
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`device. A user is able to control the operation of the Rio 500 player—such as by selecting an
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`audio file for playback—~by selecting corresponding icons that are displayed on Naughton's
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`display device.
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`Therefore, for the reasons given above, the combination of SoundJam and Rio 500 with
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`Naughton does achieve the claimed invention, which is rendered obvious by express and implicit
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`motivation found in Naughton, and would not require undue experimentation or add undue
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`complexity to the Rio 500 player such that its intended mode of operation is negated.
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`Accordingly, the previous rejection of claim 1 is maintained.
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`Regarding claim 2, Requester's response to Patent Owner's arguments is persuasive (see
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`Requester's remarks, pp. 14-15), and the previous rejection is maintained. Furthermore, it is not
`
`Samsung EX. 1020 p. 16
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`Samsung Ex. 1020 p. 16
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`

`

`Application/Control Number: 95/001,263
`Art Unit: 3992
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`.
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`Page 14
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`‘ clear that the recitation of a "physical interface" necessarily precludes a wireless connection, as a
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`"physical interface" of the portable audio player could constitute the physical interface (e. g.,
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`hardware) through which the wireless connection is maintained.
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`Regarding claim 6, Requester's response to Patent Owner's arguments is persuasive (id.
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`at 15), and the previous rejection is maintained.
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`Regarding claim 9, Requester's response to Patent Owner's arguments'is persuasive (id.
`
`at 16), and the previous rejection is maintained. Attaching an audio file to an email such that the
`
`_
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`receiver of the email can access the file via a selectable link would have been an obvious
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`expedient in view of the teachings of SoundJam, as explained by the Requester.
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`Rejections based on Lau, Naim, and Lee gGrounds EE—MM)
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`(see Patent Owner remarks, 9/9/2010, pp. 20-26; Requester remarks, [0/12/20] 0, pp. 16-
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`25)
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`Regarding claim 1, Patent Owner presents the following arguments:
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`—"[N]othing in [Lau] anywhere teaches or suggests that the Lau system be configured to
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`operate in connection with a portable audio file player
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`Instead, Lau simply teaches that songs
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`can be loaded on the disk cartridge." (Patent Owner remarks, p. 21)
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`The specification of the '926 patent, however, does not define the term "portable" or
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`I otherwise delimit the metes and bounds of the term. Therefore, the plain and ordinary meaning
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`of the word is adopted for the purposes of construing the claim. An item that is "portable" is
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`generally recognized as something that is capable of being carried or moved about.
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`Samsung EX. 1020 p. 17
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`Samsung Ex. 1020 p. 17
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`

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`Application/Control Number: 95/001,263
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`Page 15
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`Art Unit: 3992
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`Lau's music server 102, by all accounts, constitutes a "portable audio file player” since it
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`is small enough to be mounted in the trunk of an automobile (column 5/ 1-13). While the exact
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`size, dimensions, and weight of Lau's music server are not provided, those skilled in the art
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`would have recognized its portable nature by the fact it is designed for installation in an
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`automobile.
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`—"Lau nowhere teaches or suggests that a software application configured for storage on
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`a personal computer be configured to initiate downloading of an audio file included in a created
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`playlist from a PC to a portable audio file player. The secondary references further fail to address
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`this missing subject matter." (Patent Owner remarks, p. 21)
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`Requster, however, explains how such a limitation is met by Lau (see Requester remarks,
`
`p. 17):
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`Furthermore, Lau discloses "initiat[ing] a downloading of an audio file included in the
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`playlist from the personal computer to a portable audio file player ..." as recited in Claim 1. Lau
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`discloses software running on a computer that includes a playlist creation function that allows the
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`user to assign a user—defined name to the playlist. Lau at 13:49-60 ("In step 1304,
`
`the user
`
`provides a name for the new play list"). Lau then discloses storing the playlist with the user—
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`defined name and its contents on a disk cartridge 120. Id. at 1727-17 and 26-33. The disk
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`cartridge 120 may then be inserted into a music server 102 in a vehicle such that the playlist may
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`be played in the vehicle. Id. at 8:42-52, 18:29-31. Alternatively, Lau discloses that for devices
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`that do not use a disk cartridge, the download can proceed directly to the device. Id. at 17:12—16
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`("In embodiments that don't use a disk cartridge 120, the steps of Fig. 19 are used to synchronize
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`between a computer 124 and the storage medium for the particular device"). Thus, Lau discloses
`
`initiating a downloading of an audio file included in the playlist from the personal computer to
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`the portable audio file player. Maggs Dec]. at ‘11 19.
`
`Samsung EX. 1020 p. 18
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`Samsung Ex. 1020 p. 18
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`

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`Application/Control Number: 95/001,263
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`'
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`Page 16
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`Art Unit: 3992
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`~—"Lau teaches away from use of its system in connection with a portable audio file
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`player
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`Lau's invention is directed to a system that avoids use of a portable player. This
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`teaching away destroys the proposed combination, and as a result there can be no motivation to
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`combine it with the secondary references." (Patent Owner remarks, p. 21)
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`However, Lau's avoidance was of prior art portable players at the time of Lau's invnetion.
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`Lau noted the following disadvantages of the then-existing players: sending the sound signal
`
`through the cassette deck causes a degradation 'in sound quality; usage in the car is dangerous
`
`because