HME Electronics, Inc.
`HJVIE Electronics, Inc.
`Exhibit 1004
`Exhibit 1004
`
`APP1876
`
`

`
`INTER PARTES REEXAMINATION
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Patent No.:
`
`8,005,455
`
`Examiner:
`
`Colin LaRose
`
`Serial No.:
`
`95x’002_,239
`
`Group Art Unit:
`
`3992
`
`Filed:
`
`September I3, 2012
`
`Docket No.:
`
`6l3l2USR2
`(I02.0l05USR2)
`
`Title:
`
`REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM FOR
`
`AN ESTABLISHMENT
`
`RESPONDENT’S BRIEF UNDER 37 C.F.R. 41.68
`
`TABLE OF CONTENTS
`
`I. REAL PARTY IN INTEREST ................................................................................................ .. 2
`
`Pa 1e
`
`2. RELATED APPEALS, INTERFERENCES AND TRIALS ................................................... .. 2
`
`3. STATUS OF THE CLAIMS ................................................................................................... .. 2
`
`4. STATUS OF AMENDMENTS ............................................................................................... .. 2
`
`5. SUMMARY OF THE CLAIMED SUBJECT MATTER ....................................................... .. 2
`
`6.
`
`ISSUES TO BE REVIEWED ON APPEAL ........................................................................... .. 3
`
`7. ARGUMENT ........................................................................................................................... .. 4
`
`8. SUMMARY ........................................................................................................................... .. I2
`
`APPENDIX I- Evidence Appendix ............................................................................................ .. I3
`
`APPENDIX 11- Related ProceedingsAppendix I4
`
`APPENDIX III- Certificate of Service ....................................................................................... .. I5
`
`APP1877
`
`APP1877
`
`

`
`Serial No: 95:’002,239
`Docket No; l()2.()l()5USR2
`
`1.
`
`REAL PARTY IN INTEREST
`
`The real party in interest is 3M Innovative Properties Company.
`
`2.
`
`RELATED APPEALS, INTERFERENCES AND TRIALS
`
`Patent No. 8,005,455 is a continuation of Patent No. 7,599,679, which is also the subject
`
`of an Inter Partes Reexamination proceeding, Control No. 95;’002,238. In that Reexamination
`
`proceeding, the claims of Patent No. 7,599,679 stand rejected in a non-final office action. Also,
`
`there is one pending application related to the subject matter of this case: Pat. App. No.
`
`1471 86,986. Also, Patent Nos. 8,005,455 and 7,599,679 are the subject ofa patent infringement
`
`lawsuit, 3M Co. et al. v. HM Electronics, Inc. 1“HME”1, Civil Action No. 12-CV-553 SRNIJSM
`
`(D. Minn.), which was stayed on September 21, 2012 pending resolution of this reexamination
`
`and the reexamination of Patent No. 7,599,679. Patent No. 8,694,040, which is a continuation of
`
`Patent No. 8,005,455, is the subject ofa separate patent infringement lawsuit, 3M Co. et al. v.
`
`M, Civil Action No. 14-CV-01000 SRNEJSM (D. Minn.)
`
`3.
`
`STATUS OF THE CLAIMS
`
`Patent Owner (hereinafter “PO”) disputes Requester’s statement that “[e]ach and
`
`every challenged claim stands rejected on multiple grounds in view of two independent primary
`
`references...” See p. 3 of the Cross-Appeal Brief dated September 22, 2014 (hereinafter “CAB”).
`
`To the contrary, claims 8, l9 and 20 stand rejected only based on Gosieski (US 200570113136).
`
`Requester did not request Inter Parre.s' Reexamination of claims 8, 19 and 20 based on the
`
`PRO850 Manual and claims 8, l9 and 20 have not been rejected based on the PRO850 Manual.
`
`See Order Granting Reexamination, pp. 8-1 1, Dec. 6, 2012, Request, pp. 5-7, Nov. 30, 2012. PO
`
`agrees with the statement that all ofclaims 1-20 have been finally rejected in the Right of Appeal
`
`Notice (hereinafter “RAN”).
`
`4.
`
`STATUS OF AM ENDM ENTS
`
`PO accepts Requester’s statement of the status of the amendments.
`
`U1
`
`SUMMARY OF THE CLAIMED SUBJECT MATTER
`
`PO accepts Requester’s summary of the subject matter of the claims involved in the
`
`appeal. See CAB, pp. 5-7.
`
`Page 2 of IS
`
`APP1878
`
`APP1878
`
`

`
`6.
`
`ISSUES TO BE REVIEWED ON APPEAL
`
`PO accepts Requester’s statement of the issues presented for review.
`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`Page 3 01°15
`
`APP1879
`
`APP1879
`
`

`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`7.
`
`ARGUMENT
`
`A.
`
`Background
`
`(1')
`
`Legal Standard
`
`The Board reviews contested findings of an Examiner “anew in light of all the evidence
`
`and argument on that issue.” Ex pane Frye, 94 U.S.P.Q.2d (B.N.A.) l0?2, 1075 (B.P.A.l. 2010).
`
`(2)
`
`Context ofrhe ‘455 Parent
`
`At countless establishments such as quick service restaurants, employees talk to each
`
`other, and the customers, using a wireless intercom system.
`
`In a quick service restaurant, an
`
`intercom system typically includes a speaker and microphone located near a menu board in the
`
`drive-up lane, headsets, and a base station that communicates with the speaker, microphone, and
`
`headsets. The base station typically regulates various system parameters such as volume or gain,
`
`which a staff member can adjust. When the intercom system is first installed, the settings for
`
`these parameters are typically set up by a technician.
`
`The reliability of an intercom system is vital to an establishment such as quick service
`
`restaurants. If the intercom system doesn’t function properly, there is the potential of losing
`
`significant business. A common problem is that adjustments made by an employee throw off the
`
`overall balance of the intercom system, rendering it unstable, unusable, or both. See ’455 patent
`
`at col. 4, line 63 - col. 5, line 2.
`
`Prior to the present technology, when a wireless intercom system experienced problems
`
`that could not be resolved by establishment staff, a service technician was called to visit the
`
`system location to make adjustments. For some geographical locations, it could take
`
`considerable time for the technician to arrive at the establishment, resulting in downtime for the
`
`intercom system and the corresponding loss of drive-through business.
`
`The wireless intercom system of the ’455 patent overcomes this and other problems. The
`
`disclosed system allows for adjustments to the system to be made remotely, such as by a repair
`
`technician who is in a different facility. The base station is connectable to a wide area network
`
`(hereinafter “WAN”) (e.g., the internet), thereby permitting a technician to access the base
`
`station and make necessary adjustments to the system offsite.
`
`Page 4 of IS
`
`APP188O
`
`APP1880
`
`

`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`B.
`
`Specific Objections to AppeIIant’s Arguments
`
`Claim 7, in addition to the limitations recited in claim 1, requires “an ordering point,
`
`wherein wireless communication occurs between said ordering point and at least one of said
`
`plurality of headsets.” Requester cross-appeals the decision not to reject claim 7 as obvious over
`
`combinations of references including the HME Document. See Cross-Appeal Brief dated
`
`September 22, 2014 (hereinafter “CAB”), p. 8. Patent Owner (hereinafter “PO”) agrees with the
`
`Examiner’s conclusion that claim 7 is not obvious over combinations of references including the
`
`HME Document, but notes that the Examiner makes some statements in the record that seem to
`
`contradict this conclusion. See ACP, pp. 54-55, 57, 58, 60; RAN, pp. l3, 20, 22, 25, 27. PO
`
`disagrees with the Examiner's statements on the record that seem to contradict the conclusion,
`
`while agreeing with the Examiner‘s conclusion that claim 7’ is not obvious over the combination
`
`of references including the HME Document.
`
`(1)
`
`Requester ’s description of the record is incorrect.
`
`In the CAB, Requester speculates on the Examiner's reasoning for concluding that claim
`
`7 is not obvious over the combination of references including the HME Document. CAB, p. 9.
`
`Requester also speculates on an interpretation of claim 7 that the Examiner might be adopting,
`
`even though the Examiner never articulates that claim interpretation on the record. CAB, p. 9.
`
`Page 9 of the CAB states the following:
`
`The examiner's sole reason for finding that the HME Document did not contain
`
`an “ordering point” was his adoption of 3M‘s contention that “claim 7 requires
`
`two structures in wireless communication with the headsets: 1) a base station, and
`
`2) an ordering point." (Action Closing Prosecution at 52; see also id. at 55.) While
`
`the Action Closing Prosecution does not further explain the examiner's reasoning,
`
`he apparently concluded that the "ordering point" must be in direct wireless
`
`communication with the headsets, rather than wired to a base station that is itself
`
`in wireless communication with the headsets.
`
`Page 5 of IS
`
`APP1881
`
`APP1881
`
`

`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`The above statement is an inaccurate description of the record. The cited portion
`
`at page 52 of the Action Closing Prosecution dated July 19, 2013 (hereinafter “ACP”)
`
`discusses how Gosieslci does not anticipateirender obvious claim ? because, contrary to
`
`the anticipationfobviousness arguments offered by Requester, the base station taught in
`
`Gosieski cannot read on both (1) the base station and (2) the ordering point of claim 7.
`
`(ACP, p. 52) The Examiner adopted PO‘s argument that Gosieski does not teach or
`
`suggest the ordering point of claim 7 found in the Office Action Response dated February
`
`6, 2013 (hereinafter “OAR”) on pp. 1?‘-19.
`
`Requester erroneously asserts on page ll of the CAB that PO has argued that the claim
`
`scope of claim 7 should be limited to “direct connections” between the ordering point and the
`
`headset(s)_. a position contrary to PO’s arguments in litigation. (CAB, p.
`
`l
`
`l_. lines 18-20 and
`
`footnote 1.) The CAB‘s assertion is untrue and is not reflected by the record.
`
`(2)
`
`P0 agrees with Requester that Claim 7 does not require a direct wireless
`connection between the “ordering point” and the headsets.
`
`Page 9 of the CAB indicates that the “broadest reasonable construction” of claim 7
`
`includes “ordering points that communicate wirelessly with headsets by way of a hard-wired
`
`connection to a base station that is in wireless communication with the headsets.” PO accepts this
`
`contention.
`
`{3)
`
`P0 agrees with Requester that the HME Document discloses an
`ordering point in communication with the headsets by way ofthe base
`station.
`
`PO accepts the Requester’s assertion that the HME Document discloses an ordering point
`
`in wireless communication with the headsets.
`
`(4)
`
`Ciaim 7 would not have been obvious in view ofthe proposed
`combinations of references that include the HME Document.
`
`The CAB concludes that, since (1) “the HME Document fully discloses the ‘ordering
`
`point‘ recited in claim 7” and (2) “[t]he Examiner correctly found that it would have been
`
`obvious to combine the teachings of the HME Document with the intercom systems...” allegedly
`
`taught or suggested by the cited references, then claim 7 is obvious. This argument lacks
`
`Page 6 of IS
`
`APP1882
`
`APP1882
`
`

`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`appreciation for the legal requirements concerning obviousness, for reasons that will be
`
`discussed below. Additionally, the Examiner‘s withdrawals of rejections of claim 7 during the
`
`prosecution history of the current reexamination are inconsistent and contradictory with the
`
`Examiner's statements about the cited prior art. While the Examiner concludes that claim ? was
`
`not obvious in rejections based on the HME document, the Examiner makes directly
`
`contradictory statements (albeit conclusory statements) at different points in the record. See
`
`ACP, pp. 54-55, 5?‘, 58, 60; RAN, pp. 13, 20, 22, 25, 27.‘
`
`PO’s Appeal Brief dated September 22, 2014 (see pp. 25-28, 36-37) establishes the non-
`
`obviousness of at least claim 9, which recites that the “...establishment comprises a quick service
`
`restaurant.” PO submits that the rationale found in at least those sections is applicable to the
`
`proposed rejections of claim T, as well, and thus has been restated herein to be relevant to claim
`
`I
`
`(a)
`
`Prima facie obfirmsness 0fcz'at'm 7 over Gosieski in view ofrhe
`HME Document has not been demonstrated because there has
`
`been inadequate articulation tyfa rationale to combine the
`references either by the Requester or the Examiner.
`
`The Supreme Court has recognized that, in an obviousness rejection, there should be a
`
`determination of “whether there was an apparent reason to combine the known elements in the
`
`fashion claimed by the patent at issue.” KSR International Co. v. Tefeflex Inc, 550 U.S. 398, 418
`
`(2007). Similarly, the Federal Circuit has distinguished mere feasibility of a combination with
`
`desirability of the combination, and has indicated that motivation to combine requires
`
`desirability of the combination. Winner Int’! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed.
`
`Cir. 2000) (finding the district court did not err when ruling there was no motivation to combine
`
`a second reference with a first reference when such a combination would render the first
`
`reference more convenient but less secure). In Winner, the court indicated that the benefits of the
`
`' An example of one of these contradictory statements is that the ACP states. when discussing why claims 7 and 9
`are rejected over PRO850 in view oflntercom Handbook and further in view of the 3M Document. “The HME
`Document, Telex Manual, and 3M Document are considered to cure deficiencies in the PRO850 Manual and the
`
`lntercoln Handbook with respect to dependent claims 6. 7, 9 and 16, and their respective teachings are combinable
`with the PRO850 Manual and the lntercom Handbook in order to obviate the claims as explained in the Request at
`pp. 34-41.” (ACP, pp. 54-55. emphasis added.)
`
`Page 7 of IS
`
`APP1883
`
`APP1883
`
`

`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`combination, “both lost and gained, should be weighed against one another.” Id. at 1349. “After
`
`evidence or argument is submitted by the applicant in response, patentability is determined on
`
`the totality of the record, by a preponderance of evidence with due consideration to
`
`persuasiveness of argument.” In re Oett'ker, 9?? F.2d 1443, I445 (Fed. Cir. 1992) (finding that
`
`the Board did not meet its burden of proof when it did not explain why a claimed concept was
`
`obvious).
`
`In cases decided after KSR, the Federal Circuit has continued to find claims not obvious
`
`where there was no reason articulated on the record to modify the prior art to obtain the claimed
`
`invention. Mtmz v. Dietz & Wat.s‘(m, Inc, 679 F.3d I372, 137? (Fed. Cir. 2012) (Without a
`
`record supporting that the claimed modification to the prior art would have been obvious to the
`
`ordinarily skilled artisan, the district court overreached in its determination of obviousness. The
`
`mere recitation of the words “common sense” without any support adds nothing to the
`
`obviousness equation.); Takeda Chem. Iadu.s‘. v. Alphapharm Pty, Ltd, 492 F. 3d I350 (Fed.
`
`Cir. 200?) (The claims were not obvious where there was no reason to select one particular
`
`compound from the prior art and integrate it with other references.)_; Ortho—McNei! Pharma., Inc.
`
`v.
`
`.~’t4'_w'an Labs, 1'nc., 520 F.3d 1358, 1365 (Fed. Cir. 2008) (The claims were not obvious where
`
`there was no apparent reason for selecting a particular starting compound from among a number
`
`of alternatives.)
`
`Requester proposes that claim 7 be rejected as obvious over Gosieski in view of the HME
`
`Document which requires that Gosieski, a reference directed to the professional audiovisual
`
`industry, be combined with the HME Document (ACP at 1|1| 60-68), which is directed to the
`
`quick service restaurant industry.
`
`In support ofthis combination (relevant to claim 9 and the
`
`justification associated with claim ? — although the Examiner did not conclude that claim 7 was
`
`rejected as explained in section 7(B)(4), above), the Examiner suggests that systems designed for
`
`one industry are applicable to systems in the other industry, and notes that Requester
`
`manufactures devices for both commercial environments. ACP at 1] 83. In the RAN, the
`
`Examiner states that “although Gosieski and the other prior art references are directed to
`
`different applications...the references are all directed to the same technological field, namely
`
`wireless intercom systems,” and incorporates the corresponding section of the Third Party
`
`Comments to the ACP dated October 21, 2013 (hereinafter “October TPC”). RAN at I3. The
`
`incorporated portion of the October TPC states, “[a]s the Examiner properly found, intercom
`
`Page 8 of IS
`
`APP1884
`
`APP1884
`
`

`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`designers are aware that one particular intercom technology is equally applicable to different
`
`target customers or industries. This finding remains true even if one accepts 3M’s assertion that
`
`the personnel operating intercoms in the quick service restaurant industry are less sophisticated
`
`than individuals doing the same in the audio production industry.” M. p. l7. The October TPC
`
`then analogizes that “automotive engineers designing commercial pickup trucks would surely be
`
`aware of the four-wheel drive systems that the same car maker was installing in consumer
`
`SUVs.” Id. at 18.
`
`But it is not sufficient that Gosieski may be considered “applicable” to other commercial
`
`endeavors, and it is not sufficient that those designing intercom systems for one use would be
`
`“aware” of capabilities of intercom systems for another use. The Examiner has the burden of
`
`demonstrating that it would have been obvious to use the base station taught in Gosieski — with
`
`its local server and web casting capabi'li‘ri’e.s' and all — in the quick service restaurant industry
`
`based on the cited references. To meet the burden of prima facie obviousness, the Examiner must
`
`provide a specific rationale demonstrating why a person of ordinary still in the art (hereinafter
`
`“POSITA”) would have found it obvious to use the technology taught in Gosieski in the very
`
`different quick service restaurant industry. KSR Inte:'nat:'ona." Co. v. Te}e7‘Fe.\" Inc._, 550 U.S. 398,
`
`418 (2007) (The analysis of an apparent reason to combine the known elements in the fashion
`
`claimed by the patent at issue should be made explicit.)_; M:'mz v. Dierz & Watson, Im::._, 679 F.3d
`
`1372, 137?‘ (Fed. Cir. 2012) (Ft Fact t":r;«:ier ms.;::.t ‘<E‘="lfC-Lal‘<E$-23
`
`sr.=n1-zzibéng would be oi“.=vir.=i.ss,
`
`even where the :,mderl;.-‘Eng 1‘c:ferenecs arc: properly cc:a'1sia;lei‘4:d ana§og.ous.} While PO agrees with
`
`the October TPC statement that “an explicit teaching ofa motivation to combine in the prior art
`
`is not required” and that common sense may be used (See p. 1?), legal guidelines still require
`
`that the analysis itself be made explicit (MPEP § 2 l 42) and, therefore, the alleged “common
`
`sense” must be articulated.
`
`Neither Examiner nor Requester has provided any such explicit rationale that
`
`demonstrates how a POSITA would be motivated to use the audio production intercom system of
`
`Gosieski in a quick service restaurant. See Response to Action Closing Prosecution filed
`
`September 9, 20 l 3 (hereinafter “RACP”), pp. 22-29. Despite the alleged “applicability” of audio
`
`production intercom systems to contexts other than production environments, those having skill
`
`in the art understand that intercom systems disclosed in Gosieski are different than intercom
`
`systems used in quick service restaurants. Indeed, while Requester and Examiner are quick to
`
`Page 9 of IS
`
`APP1885
`
`APP1885
`
`

`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`point out that Requester designs intercom system for both restaurant and professional audio
`
`visual contexts, neither party asserts that the intercom systems are the same in both contexts.
`
`They are not.
`
`Quick service restaurants would not need the webcasting capabilities taught in Gosieski.
`
`Quick service restaurants do not employ audio engineers to manage the settings of the system.
`
`Quick service restaurants employ workers who have little-to-no intercom system training.
`
`In
`
`fact, the employees can often be the source of the problem because they make adjustments that
`
`create imbalance in the overall system. The ‘455 Patent mentions that the drive-through ordering
`
`systems may develop a fault if they are “mal-adjusted” and then the establishment is unable to
`
`process orders. See ‘455 Patent, Col. 1, lines 59-64. This in turn requires a technician to fix
`
`these problems. As a result, a more Complex system is a disadvantage because it is more
`
`difficult for untrained employees to operate and there are more settings that can potentially be
`
`mal-adjusted. Further, complex intercom system functionality that may be useful in a production
`
`environment has limited applicability to a quick service restaurant. The unnecessary additional
`
`features would increase the challenges of having unskilled employees operate the system. For
`
`these reasons, it cannot rationally be concluded that a POSITA would use the system of Gosieski
`
`in a quick service restaurant context. As such, prima facie obviousness of claim 7 has not been
`
`established.
`
`(b)
`
`Prima facie obviousness ofclaim 7 over the PR0850 Manual in
`view tyfthe Im‘erc0m Hana'b(mk/pcA nywhere Manua.VEtherPath
`Manua!/ Secure Com Port Redirector Guide in fitrtizer view of
`the HME Document has not been establislzed because there has
`
`been inadequate articulation 1.9’a mrrtivatien to combine the
`references.
`
`Claim 7 is not obvious over the PRO850 Manual in view of the lntercom Handbook and
`
`the HME Document for substantially the same reasons that claim 9 is not obvious over the same
`
`combination of references. Those reasons are discussed at pp. 36-37 of PO‘s Appeal Brief dated
`
`August 22, 2014, which are restated below as they apply to claim 7. Furthermore, because the
`
`pcAnywhere Manual, the EtherPath Manual and the Secure Corn Port Redirector Guide are
`
`relied on for the same teachings as the Intercom Handbook and are used to reject claim 9 with
`
`Page 10 of 15
`
`APP1886
`
`APP1886
`
`

`
`Serial No: 95:’()()2,239
`Docket No.: I()2.()I()5USR2
`
`the same rationale, the following arguments also apply to those combinations of references in the
`
`proposed rejection of claim 7.
`
`The Examiner argues that the PRO850 Manual in view of the Intercom Handbook would
`
`be obvious to combine with the HME Document for the same reasons that it would be obvious to
`
`combine the teachings of the Gosieski reference with the HME Document, resulting in using an
`
`intercom system designed for the professional audiovisual industry in the context ofa quick
`
`service restaurant. See RAN, pp. 16-172. Similar to the discussion of the combination of Gosieski
`
`and the HME Document (See Sec. (7)(B)(4)(a), .s‘upm.) the Examiner has not established that a
`
`POSITA would have been motivated to use an intercom system taught by the PRO850 Manual in
`
`view of the Intercom Handbook (complete with the alleged WAN connectability and remote
`
`adjustability) in a quick service restaurant scenario taught by the HME Document.
`
`The October TPC indicates that sufficient motivation to combine is established because a
`
`single company, the Requester, manufactures professional audio recording intercom systems and
`
`quick service restaurant industry intercom systems. See October TPC, p. 20; See also RAN, p. 1?
`
`(incorporating those arguments). Such an argument does not establish a factual or rational basis
`
`that a POSITA would have found it obvious to use a “professional audio recording intercom
`
`system” in a quick service restaurant. Indeed, neither the Examiner nor the Requester is alleging
`
`that “professional audio recording intercom systems” are “quick service restaurant industry
`
`intercom systems.” As such, it is the Examiner’s burden to establish that a POSITA would have
`
`found it obvious to use the professional audio visual production intercom system of the PRO850
`
`Manual in view of the Intercom Handbook in the quick service restaurant of the HME
`
`Document. The Examiner has not met this burden, and the rejection should be withdrawn.
`
`Furthermore, in the RAN the Examiner states that the references “...are considered to
`
`constitute analogous prior art, and from a technical standpoint, the teachings of the [HME
`
`Documentf3M Document] could be considered pertinent to solving recognized problems or
`
`shortcomings of the system disclosed in PRO850 Manual.” See RAN, p. 1?‘. This statement
`
`3 The RAN re fers to the Intercom Handbook as being directed to “fast food restaurants.” (RAN. p. I7}. However.
`the PO has not identified a location in the Intercom Handbook that mentions restaurants.
`It is believed that the
`Examiner intended to refer to both the HME Document and the 3M Document instead of the Intercom Handbook,
`since the Examiner was responding to I’()’s ar‘gL11i1ent that the PRO850 Manual in view ofthe Intercom Handbook
`and in further view ofthe HME Document or 3M Document do not render claims obvious and since the HME
`
`Document and the 3M Document do describe systems for quick—service restaurants.
`
`Page 11 of15
`
`APP1887
`
`APP1887
`
`

`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`amounts to the erroneous conclusion that the HME Document solves the allegedly “recognized”
`
`problem of the PRO850 Manual that intercom systems are used in the context of audiovisual
`
`productions instead of quick service restaurants. Such an allegation is blatantly false. None of the
`
`evidence on-record supports the assertion that a “recognized problem” with the PRO850
`
`intercom system is that it is not used in the context of quick service restaurants. Therefore, a
`
`rejection of claim 7 for obviousness is improper.
`
`Summarv
`
`In view of the above remarks, Patent Owner respectfully requests withdrawal of the
`
`pending rejections and a reexamination certificate issuing the claims. Please charge any
`
`additional fees or credit any overpayments to Deposit Account No. 50-3688 which may have
`
`been overlooked with regard to this filing.
`
` October 22 2014
`Date
`
`Respectfully submitted,
`
`i-‘Katherine M. DeVries Smith!
`
`Katherine M. DeVries Smith
`
`Reg. No. 42,15?‘
`Pauly, DeVries Smith & Deffner, L.L.C.
`Phone No: 612-746-4784
`
`Page 12 of 15
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`APP1888
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`APP1888
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`

`
`Serial No: 95:’()()2,239
`Docket No.: l()2.()l()5USR2
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`APPENDIX I
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`Evidence Appendix
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`The following evidence was submitted with the Office Action Response dated February 6, 2013:
`
`Exhibit A. Resume of Steven Awiszus (2 pages).
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`Exhibit B. Lab Notebook Cover and Relevant pages of Lab Notebook for “VIPER
`
`Functional Specification,” page 22-32, dated June 1, 2004.
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`Exhibit C. Listing of Six Sigma and Development Progress Meetings from July 2004 (2
`
`pages).
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`Exhibit D. Declaration of Steven Awiszus under 37 C.F.R. §l.l3l; “Awiszus
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`Declaration.”
`
`Exhibit E. Declaration of Steven Awiszus under 3? C.F.R. §l.I32; “Awiszus 132
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`Declaration.”
`
`Exhibit F. “HME’s New PRO850 Wireless Intercom System Offers More Flexibility and
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`Operating Power to Pro-Audio Professionals,” (“Press Release”), September 2, 2003 (1 page).
`
`Exhibit G. “How Computers Work, Eighth Edition;” Ron White; pp. 314-31?‘; 2006.
`
`Exhibit H. Universal Serial Bus Developer’s Website (USB Developer‘s Website);
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`hffp.'//WW‘v'v'. usb. 0rg/deve}()pe.r.s'/d()c.s'/; 6 pages.
`
`The following evidence was submitted with the Response to the Action Closing Prosecution
`
`dated September 19, 2013:
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`Exhibit 1. “Computer Networks and Internets, Fifth Edition,” Douglas Comer; pp. xiii-xv;
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`223-225; 234-235; 256; 308-310; 2009.
`
`Exhibit J. Supplemental Declaration of Steven Awiszus under 3?‘ C.F.R. §l.l3l_;
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`“Supplemental Declaration.”
`
`Exhibit K. Supplemental Declaration of Steven Awiszus under 37 C.F.R. §l.l32;
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`“Supplemental I32 Declaration.”
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`Page 13 of 15
`
`APP1889
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`APP1889
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`

`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`APPENDIX II
`
`Related Proceedings Appendix
`
`None; there have been no decisions rendered by a court or the Board in any proceeding
`identified on page 3 of this paper.
`
`Page14 of15
`
`APP189O
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`APP1890
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`

`
`Serial No: 95:’()()2,239
`Docket No; l()2.()l()5USR2
`
`APPENDIX III
`
`Certificate of Service
`
`I hereby certify under 3?‘ CFR §l.248 that we are sending by first class mail on October
`
`22, 2014, a copy of the Respondent’s Brief under 3?‘ C.F.R. 41.68 to Charles Segelbaum,
`
`Fredrikson & Byron, P.A., 200 South Sixth Street, Suite 4000, Minneapolis, MN 55402-1425,
`
`the attorney of record representing the third party requester.
`
`Respectfully submitted,
`
`October 22, 2014
`Date
`
`By: fKatherine M. DeVries Smithy‘
`Katherine M. DeVries Smith
`
`Reg. No. 42,15?‘
`Pauly, DeVries Smith & Deffner, LLC.
`Phone No: 612-746-4784
`
`Page 15 of15
`
`APP1891
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`APP1891
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`

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`Electronic Acknowledgement Receipt
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`EFS ID:
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`20488470
`
`Application Number:
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`95002239
`
`Confirmation N um ber:
`
`Title of Invention:
`
`REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM FOR AN
`ESTABUSHMENT
`
`First Named lnventormpplicant Name:
`
`8,005,455
`
`Customer Number:
`
`32692
`
`I F
`
`Katherine Marie DeVries Smith
`
`iler Authorized By:
`
`Attorney Docket Number:
`
`648951.10
`
`Receipt Date:
`
`22-OCT-2014
`
`Time Stamp:
`
`16:22:29
`
`Application Type:
`
`inter partes reexam
`
`Payment information:
`
`Submitted with Payment
`
`File Listing:
`
`Document
`Number
`
`Document Descri flan
`P
`
`File Size{Bytes}.«-'
`Message Digest
`1??'?5O
`
`Part .-'.zip
`
`fifappl.)
`
`App1892
`
`Respondent Brief- Owner
`
`2014_'|O_22_'|02_O'|O5USR2_R
`eSpondent_Bfieflpdf
`
`M111‘ I 3' MRI 1)’: arf:(Ir’(I9-It II] E itlo-II J’-mtIn‘I‘)1]
`cci}-I
`
`Warnings:
`
`Information:
`
`APP1892
`
`

`
`
`
`Total Files Size (in bytes} 177750
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`Ifa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-{d} and MPEP 506}, a Filing Receipt (37 CFR 1.54} will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date ofthe application.
`
`National Stage of an International Application under 35 U.S.C. 371
`Ifa timely submission to enter the national stage ofan international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCTl'DO;’EOl'903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO asa Receiving Office
`Ifa new international application is being filed and the international application includes the necessary components for
`an international filing date {see PCT Article 11 and MPEP1810}, a Notification of the International Application Number
`and ofthe International Filing Date {Form PCT.-"ROl"I 05) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`APP1893
`
`APP1893
`
`

`
`Requester Docket No.: 648951.10
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Inter Parres Reexamination of:
`
`U.S. Patent No.:
`
`8,005,455
`
`Inventor:
`
`Steven T. Awiszus
`
`Control No.:
`
`95»’002_.239
`
`Group Art Unit:
`
`3992
`
`Reexamination Filed:
`
`September 13, 2012
`
`Examiner:
`
`Colin LaRose
`
`Title:
`
`REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM
`
`FOR AN ESTABLISHMENT
`
`Mail Stop Ir.-rer Partes Reexamination
`Attn: Central Reexamination Unit
`
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`RESPONDENT’S BRIEF IN INTER PARTES REEXAMINATION
`
`Requester HM Electronics. Inc. (“HME”) respectfully submits this Respondent‘s Brief
`
`pursuant to 37 CFR §§ 4l.66 and 41.68 in response to Appellant's (Patent Owner) Appeal Brief
`
`dated September 22, 2014 (“3M Appeal”).
`
`A fee of $2,000.00, as set forth in 37 CFR § 4l.20(b)(2)(ii)_, is submitted concurrently.
`
`Please charge any additional fees which may be required in connection with this filing, or credit
`
`any overpayment, to Deposit Account 061910.
`
`Cerr§fic’are Regarding Ward Cmm! Pursuant to 3 7 CFR §1.943(c9
`I hereby certify that, pursuant to 37 CFR §l .943(e), based on the Word version word count of‘ 696?
`words. Respondent’s brie I‘ does not exceed 7,000 words in length.
`
`Signed: Charles D. Segelbattm t’Clr1arles D. Segelbatttnf Reg. No. 42.138 Dated: October 22. 2014
`
`APP1894
`
`APP1894
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`

`
`Table of Contents
`
`REAL PARTY IN INTEREST ......................................................................................... ..
`
`1
`
`RELATED APPEALS, INTERFERENCES, AND TRIALS ........................................... ..
`
`I
`
`II.
`
`III.
`
`IV.
`
`STATUS OF AMENDMENTS ....................