MS 1039
`MS 1039
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE P
`United States Patent and Trademark Office
`""'
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria. Virginia 22313-1450
`www.usplo.gov
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`‘
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`APPLICATION NO.
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`95/001,295
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`FILING DATE
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`01/14/2010
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION N0.
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`7509178
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`5567-2
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`2137
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`23117
`7590
`NIXON&VANDERHYE, pc
`901 NORTH GLEBE ROAD, 11TH FLOOR
`.ARLINGTON, VA 22203
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`03/07/2011
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`.
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`FERRIS 1". FRED 0
`PAPER NUMBER
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`ART UNIT
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`3992 MAIL DATE
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`DELIVERY MODE
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`03/07/2011
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`time period for reply, if any, is set in the attached communication.
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`A
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`A
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`x___‘.
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`PTOL-90A (Rcv.04/07)
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`MS 1039 - Page 1
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`MS 1039 - Page 1
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`
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`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box I450
`Alexandria, VA 22313-1450
`www.uspto. gov
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`DO NOT USE IN PALM PRINTER
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`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`Tracy W. Druce
`NOVAK DRUCE & QUIGG, LLP, WELLS FARGO PLAZA
`1000 Louisiana St., 53rd FLoor
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`Date:
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`MAILED
`MAR 0 7 20"
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`Houston, TX 77002
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`_
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`CENTRAL REEXAMINATION UNIT
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`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
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`REEXAMINATION CONTROL NO. : 95001295
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`PATENT NO. : 7509178
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`TECHNOLOGY CENTER : 3999
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`ART UNIT : 3992
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`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.
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`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.
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`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.
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`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.
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`PTOL-2070('Rev.07-04)
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`MS 1039 - Page 2
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`MS 1039 - Page 2
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`

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` Responsive to the communication(s) filed by:
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`Patent Owner on 16 July 2010
`8.55
`l.
`Third Party(ies) on 16 August 2010
`Patent owner may once file a submission under 37 CFR 1.951(a) withing’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.
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`
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`
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`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.
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`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
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`1. E] Notice of References Cited by Examiner, PTO-892
`2. IXI Information Disclosure Citation, PTO/SB/08
`3.1:;
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`PART II. SUMMARY OF ACTION:
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`
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`1a. IX] Claims 1-29 are subject to reexamination.
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`1b. [:1 Claims _ are not subject to reexamination.
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`2.
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`I1 Claims _ have been canceled.
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`3. E] Claims _ are confirmed. [Unamended patent claims]
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`4.
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`5.
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`[:1 Claims _ are patentable.
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`[Amended or new claims]
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`[Z Claims 1—_2£9_ are rejected.
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`are objected to.
`6. CI Claims
`E] are not acceptable.
`E] are acceptable
`7.
`[:1 The drawings filed on __
`8 CI The drawing correction request filed on
`r
`is:
`[:1 approved. E] disapproved.
`9 Cl Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`E] been received.
`E] not been received.
`l:] been filed in Application/Control No
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`10. D Other
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`U.S. Patent and Trademark Office
`PTOL-2065 (O8/06)
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`Q
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`Paper No. 20110303
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`MS 1039 - Page 3
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`ACTION CLOSING PROSECUTION
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`(37 CFR 1.949)
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`Control No.
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`95/001,295
`Examiner
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`Fred Ferris
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`Patent Under Reexamination
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`7509178
`Art Unit
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`3992
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
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`MS 1039 - Page 3
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`Application/Control Number: 95/001,295
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`Page 2
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`Art Unit: 3992
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`DETAILED ACTION
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`This Office action is responsive to Patent owners response filed 16 July 2010 and Third Party
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`requester's comments filed 16 August 2010 in the inter partes reexamination of claims 1-29 of
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`United States Patent Number 7,509,178 issued to Logan et al.
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`Claims 1-29 stand rejected.
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`Declarations
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`Patent owner has submitted declarations by experts Almeroth and Mishkind and a declaration
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`under 35 USC 1.131 (Call) attempting to swear behind the Foladare reference.
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`Requester has submitted declarations by experts Wicker and Novacek that opine on issues
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`relating to the Prior art and the Almeroth declaration.
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`Almeroth: The Almeroth declaration opines, for example, that the DAD Manual (ENCO)
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`describes a system designed specifically for use by radio and television broadcasters, that there is
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`technical incompatibility between the system described in the DAD Manual and personal audio
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`players, and that a DAD operator in not “listener”. These allegations are rebutted by Wicker and
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`Novacek. (See: Wicker at 8,-10 and Novacek at 8-10, for example) Almeroth further opines,
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`among other things, that in the mid 1990’s downloading was dismissed as a technique for
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`delivering multimedia content, that DAD does not disclose downloading audio files and
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`sequencing files for persistent storage, and that DAD’s “Download Playlist” function only works
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`in serial mode. (e.g. at 12-19). These allegations are further rebutted by Wicker and Novacek.
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`(See: Wicker at 12-19 and Novacek at 4, 12-19) The examiner notes that the Almeroth
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`declaration generally does not refer to the actual claim language in making the alleged
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`Application/Control Number: 95/001,295
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`.
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`Page 3
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`Art Unit: 3992
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`distinctions over the prior art, and attempts to focus on an intended use distinction of the device.
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`(See: Wicker at 9-15) In contrast the Wicker and Novacek declarations are factual and on point
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`- to the language of the claims. (See: Wicker at 7-9, and Novacek 2, for example) Wicker, for
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`example, gives specific examples that appear to demonstrate incorrect and inaccurate allegations
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`made in the Almeroth declaration. (Seer Wicker at 8, 10, 16 for example) Also see Novacek at 5,
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`6, and 18.
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`Regarding obviousness rejections based on combinations of the remaining prior art the‘ Almeroth
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`declaration is again off point. Almeroth proposes that the Sony devices are consumer electronics
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`devices intended for individual listeners while DAD is specially designed for operators of
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`television and radio broadcasters. Almeroth concludes that the two classes of users are separate
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`and distinct and there exists no motivation or to combine the different references. (Almeroth at
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`25)
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`Here, Dr. Almeroth analyzes the wrong group of people. The relevant persons of ordinary skill in
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`the art are engineers developing computerized audio playback systems and software, n_ot
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`consumers or disk jockeys. Because both DAD and the Sony devices are designed for digital
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`audio playback, engineers developing software for digital audio playback would certainly be
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`"motivated to consider both. Thus, for example, a developer of DAD-like systems would be
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`motivated to look at CD players, which were the dominant digital audio playback device in 1995,
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`with playback controls that were universally recognized. Such a developer would also have been
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`familiar with minidisk players, which were less, popular but not uncommon. Both types of
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`systems were used both by consumers and in radio stations. (See: Wicker at 28, 29)
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`Application/Control Number: 95/001,295
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`Art Unit: 3992
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`Page 4
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`The examiner finds that, in weighing the evidence, the Wicker and l\lovacek declarations favor
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`the requester. The preponderance of evidence suggests that certain allegations made in the
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`Almeroth declaration appear to be either inaccurate or incorrect with regard to the prior art.
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`Hence, the Almeroth declaration is unpersuasive in distinguishing the claims over the prior art.
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`Mishkind: The Mishkind declaration attempts to support Patent owner’s allegation that the main
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`playback machines provided by DAD are similar analog cart machines. (PO response at 10)
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`Mishkind opines that no cart machines at the time of the invention included a control button that
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`would either restart a playingaudio cut to the beginning, or jump back to the beginning
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`preceding a currently playing audio cut. (Mishkind at 8-10) As explained in more detail below,
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`the examiner has maintained the features of the ‘178 Patent as presently claimed remain obvious
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`and/or anticipated by the prior art. Accordingly, the examiner finds the cart machine analogy as
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`proposed in the Mishkind declaration to be unpersuasive in distinguishing the claims over the
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`prior art.
`Call 11.131 )1 The declaration submitted by the Patent Owner does not comply with 37 CFR
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`1.131. The declaration fails to address each claim element and explain why the declaration and
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`accompanying declaration prove the alleged conception and diligence as required by 37 C.F.R.
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`1.131 (and MPEP § 715.07). With respect to diligence, the declarant makes a statement that he
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`and his co-inventors were diligently reviewing and preparing the application for submission to
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`the Patent Office, but fails to provide any evidence supporting that statement, such as
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`correspondence between him and the other inventors. Further, the declaration is signed by only
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`one of the three inventors. (MPEP 715.04(1)) requires the signatures of all inventors)
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`Hence, the Call declaration is facially unpersuasive. (Also see TPR comments page 8)
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`Application/Control Number: 95/001,295
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`Art Unit: 3992
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`Response to Arguments
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`Page 5
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`Patent owner initially argues that the prior art references differ from ‘I78 Patent for the
`following reasons:
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`The DAD Manual fails to disclose downloading separate audio files and a sequencing file.
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`Patent owner primarily argues that DAD never locally stores downloaded separate audio files
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`and therefor does not meet the limitation as claimed.
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`Here the examiner finds -the Novacek declaration (1 1-19) to be persuasive in rebutting Patent
`owner’s arguments and therefore agrees with requester. (See: examiner’s comments on
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`declarations)
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`The Sound Blaster is a local system that relies on local audio files and local playlists.
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`Patent owner argues that'Sound Blaster fails to disclose downloading separate audio files or
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`sequencing files from a server and fails to disclose responding to control commands by
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`referencing data from the sequencing file. Patent owner cites the Almeroth declaration at 21-23.
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`The examiner finds the Wicker declaration (25-26) to be persuasive in rebutting Patent owner’s
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`arguments and therefore agrees with requester. (See: examiner’s comments on declarations)
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`Foladare is a central system that relies on centrally stored audio files and centrally stored
`playlists.
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`Patent owner argues that Foladare’s playlist is not a separate sequencing file and that Foladare is
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`invalidated as prior art based Patent owner’s declaration filed under 37 CFR 1.131.
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`Here, the examiner finds requesters comments persuasive in rebutting Patent owner's arguments.
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`(TPR at 9) Specifically, that Foladare explicitly discloses retrieving a playlist and separately
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`retrieving the audio content identified in the playlist:
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`MS 1039 - Page 7
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`Application/Control Number: 95/001,295
`Art Unit: 3992
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`‘
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`Page 7
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`Requester’s analysis correctly notes that independent claim 14 does not recite "compressed"
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`audio program files mentioned in (1), and no that claim recites "intuitive" controls or "locally-
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`stored" audio files mentioned in (3).
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`The examiner agrees with requester's reasoning as further explained below in the response to
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`specific art rejections.
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`The 'l78 prosecution history emphasizes the three claims features in combination.
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`Patent owner asserts that the file history makes clear that the sequencing file is used to respond
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`to commands like, jump, skip, and skip backwards. The examiner does not agree. In the NOA
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`the examiner simply repeated the language of a single claim limitation and did not specifically
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`comment on the express meaning or interpretation of claim language during the original
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`prosecution. Hence it is unclear from the prosecution history how much, if any, weight was given
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`by the examiner to these arguments at the time of allowance. The prosecution history did not,
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`for example, clarify the meaning of the term "sequencing file" over and above the cited prior art
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`in reexamination. Patent owner cites the following passage:
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`All of the claims set forth an audio program player that downloads and stores a plurality of audio
`program files and a seguencing file that specifies an ordered seguence of a collection of the
`stored audio program files. (Response at 7)
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`From this passage the meaning of the term “sequencing file” appears to simply be that it
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`specifies an ordered sequence of a collection of the stored audio program files. In other words, a
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`"sequencing file" is simply a play list:
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`The proper interpretation of "sequencing file" in light of specification and prosecution
`history is not simply a play list.
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`Application/Control Number: 95/001,295
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`Art Unit: 3992
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`9
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`Page 6
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`retrieving means, connected to said first selection means, and operable for remotely retrieving
`said selected particular playlist from said first memory means and for retrieving from said second
`memory means the audio data content identified in said playlist and..
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`(Foladare 8:52-60)
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`None of the references disclose the claimed listener interface features.
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`Patent owner argues that none of the references disclose the features of claims 6-8 and 12
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`relating to using the same control input button. Patent owner cites the Almeroth declaration at
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`21-72.
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`Requester has commented that multiple references (DAD, Sound Blaster, Sony Discman, Sony
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`Minidisc) all teach the claimed user interface elements. (TPR response at 9-13) The examiner
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`agrees with requester's reasoning as explained below in the response to specific art rejections.
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`The 'l78 specification emphasizes the combination of three claimed features (1-3).
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`1. The audio program. player is configured to download from a server computer both separate
`digital compressed audio program files and a separate sequencing file specifying an ordered
`sequence of a collection of the separate audio files;
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`2. The audio program player stores, on a digital memory unit, both the downloaded separate
`audio files and the downloaded separate sequencing file;
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`3. The audio program player provides intuitive listener controls permitting listener-inputted
`program selection commands to select locally-stored audio files specified by the sequencing file
`for playback.
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`Patent owner believes that both independent claims 1 and 14 require these features. Requester
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`has maintained that they do not. (TPR at 3)
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`Application/Control Number: 95/001,295
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`Art Unit: 3992
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`Page 8
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`Patent owner argues that, in light of the specification and file history, the claim term "sequencing
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`file" is readily understandable to one of skill in the art as a file that is received by the player,
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`stored, and used by the processor to both control playback of each song in the ordered sequence
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`and respond to control commands.
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`Requester has asserted that this definition contradicts Patent owner’s position in litigation.
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`_ Irrespective of requester’s position, the examiner maintains that the recited “sequencing file" can
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`be understood to simply imply a play list comparable to that disclosed in the cited prior art for at
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`least two reasons. First, Patent owner has not argued that the recited “sequencing file” is
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`anything other than simply a play list. In fact Patent owner appears to be limiting the meaning of
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`the recited “sequencing file” by arguing that a “sequencing file” is simply the sequence in which
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`audio programs would play. In their response Patent owner presents the following argument:
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`“The named inventors, James Logan, Charles Call, and Daniel Goessling, solved this set of
`problems by inventing a personal audio player that could, inter alia, receive and store (i) a
`selection of audio programs and (ii) a se arate file of data "a se uencin file" that determines
`the sequence in which those programs would play. [2:48-51].” (PO Response at page 5, parazl,
`emphasis added)
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`In other words, Patent owner appears to argue that a “sequencing file” functionally IS just a
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`playlist. Accordingly, the examiner maintains that Patent owner appears to be engaging in
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`circular reasoning by arguing, on the one hand, that a "sequencing file" in NOT a playlist, but
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`then on the other hand arguing that a sequencing file is simply a “separate file of data ("a
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`sequencing file") that determines the sequence in which those programs would play”. (e. g. a play
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`list) Still further, the fact that a sequence file could be used for “controlling playback”, as argued
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`by Patent owner, can be understood to simply mean controlling the order in which songs are
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`played.'(Again, as in a play list)
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`Application/Control Number: 95/001,295
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`Art Unit: 3992
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`Page 9
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`Second, the examiner notes that the actual '178 specification, while more specific than argued by
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`Patent owner, does not appear to expressly define or limit the meaning of the claimed
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`“sequencing file”. For example at 6:22 the ’178 specification recites:
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`As hereinafter described in connection with FIG. 5 each voice or text
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`program segment preferably includes a sequencing file which contains the
`identification of highlighted passages and hypertext anchors within the program
`content. This sequencing file may further contain references to image files
`and the start and ending offset locations in the audio presentation when each
`image display should begin and end. In this way, the image presentation may be
`synchronized with the audio programming to provide coherent multimedia
`programming. (‘I78 6:22 emphasis added)
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`Here the specification mentions that the sequencing file includes identification of “highlighted
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`passages” and “hypertext anchors” and r_n_ay contain references to “image files”. These features
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`are not claimed. The examiner also notes that the passages above appear to describe features in
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`the context of synchronizing images with audio content. None of which are claimed.
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`Further, from the passages beginning at 12:9, it is unclear what elements would be expressly
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`required by a sequencing file. These passages recite:
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`As described in more detail later in connection with FIGS. 4 and 5, the
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`sequence of program segments to be presented to the user is formed into a
`schedule file (seen at 307 in FIG. 4) consisting of a seguence of program
`segment identification numbers which are used to compile a seguencing file,
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`called the selections file illustrated at 351 in FIG. 5 which contains more
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`detailed information about the seguence of events which occur during playback.
`The player obtains information from the selections file which identifies the
`individual program segments to be fetched from mass storage and played for the
`user, as well as the segment identification information which is recorded in a
`usage logging file in the manner illustrated in FIG. 3. (‘I78 at 12:9 emphasis added)
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`Thus, from the specification it is unclear what is specifically “compiled” into the “sequencing
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`file” from the “selections file”, in determining the sequence of events occurring during playback.
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`Application/Control Number: 95/001,295
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`-
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`Page 10
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`Art Unit: 3992
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`In any event, these features are not specifically claimed and can not be read directly into the
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`claims. Accordingly, it is the examiners position that, taken in light of both the specification and
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`Patent owner’s own arguments, the broadest reasonable interpretation of the claimed
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`"sequencing file" reads on the play lists as disclosed in the prior art.
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`(R1) Rejections based on the DAD Manual (claims 1-11. 1_3-15 and 28-29)
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`' Regarding printed publication and enabling disclosure
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`@: Patent Owner initially argues that the DAD Manual is not a printed publication and is not an
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`enabling disclosure.
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`jlfl: Requester argues the declaration of Eugene Novacek refutes Patent owner’s position and
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`that the DAD system described in the DAD Manual was available for purchase at the time - a
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`person of ordinary skill in the art could have reduced the DAD Manual disclosure to practice by
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`simply purchasing a DAD system from ENCO. (TPR at 14-15)
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`Examiner: The examiner agrees with Requester’s reasoning.
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`Regarding the “listeners" and "audio output unit"
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`E: Patent Owner argues that users of the DAD system described in the DAD Manual are not
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`"listeners" and cites the Almeroth and Mishkind declarations. [Patent Owner's Response, at 8-9]
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`Patent owner also argues that DAD did not include an audio output unit that "reproduced audio
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`program files in audible form perceptible to a listener” because it was drawn to radio
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`broadcasting. [Patent Owner's Response, at 15] [Almeroth at 8] [Mishkind at 10]
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`Application/Control Number: 95/001,295
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`Art Unit: 3992
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`Page 11
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`I13: Requester argues that the DAD Manual clearly indicates that operators of DAD
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`workstations were expected to listen to the audio it was reproducing. It included a headphone
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`jack, and the DAD Manual refers to speakers. [DAD Manual, at 16-4; Wicker Decl., 14] It was
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`typical for DAD operator to listen to the audio he/she being played by the device. [Novacek
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`Decl., 8, 10; Wicker Decl., 6, 8, 14] Requester asserts that Patent Owner's argument that DAD
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`was used only for broadcasting is wrong. The DAD Manual clearly indicates that it was not used
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`exclusively for broadcasting [Novacek Decl., 8, 10] It was also used, among other things, for
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`studio production. [Novacek Decl., 10] During studio production, the output would not be
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`broadcast, and the user would often be the only listener. [Novacek Decl., 10] In any event, "a
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`reference may be relied upon for all that it would have reasonably suggested to one having
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`ordinary skill in the art, including non-preferred embodiments." (MPEP 2123)
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`Further, Requester notes that DAD was not at all limited to broadcasts, and users, purchasers,
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`and operators of DAD often would use DAD to themselves play and listen to audio files.
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`[Novacek Decl., 8, 10]
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`Examiner: The examiner agrees with requester. A “listener”, in the context of both the DAD
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`Manual, and the 'l78 Patent, can be interpreted to simply be the operator of the device. The
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`"audio output unit" cited by the Examiner and the Requester is the stereo headphone output. This
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`output was used by the DAD operator to listen to the audio program files and meets the language
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`of the claim requiring "reproduced audio program files in audible form perceptible to a listener”.
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`The fact that the output of DAD could a@ be broadcast over the air, in addition to being listened
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`to by the operator, is simply irrelevant relative to the language of the claim.
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`Application/Control Number: 95/001,295
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`Art Unit: 3992
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`Page 12
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`Regarding claim 1 recited Audio Program Player
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`EQ: Patent Owner argues that DAD workstations in a networked system do not have a
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`local hard drive for persistently storing audio files. Patent Owner also argues that it would not
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`have been obvious to modify one of the DAD playback interfaces from one form of standalone
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`player (a cart machine) to another (a CD player). [Mishkind at 1]
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`E: Requester asserts that Patent Owner's Response makes a number of inaccurate allegations
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`to support the argument that the DAD Manual did not disclose an "audio program player" as
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`recited in claim 1 of the ' 178 Patent. [Patent Owner's Response, at 10-14] Requester maintains
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`that the DAD manual specifically discloses downloading files from a file server over a network
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`to a local hard drive, where those files would be stored for minutes or hours until they are played.
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`[Wicker Decl., 19-23; Novacek Decl., 1 1, 12] The DAD Manual calls this the "Playback
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`Lookahead" option:
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`This feature copies audio files from the network to the local hard drive in the
`background, then plays the cut from the local hard drive at the appropriate
`time. (DAD Manual, pg. 12-9) (emphasis added)
`
`Requester further asserts that Patent Owner's argument that the DAD Manual does not disclose a
`
`networked system that could locally store files downloaded from over a network is simply
`
`wrong. Patent Owner cites to a portion of the DAD Manual that discloses a configuration in
`
`which workstations in a network do not use Playback Lookahead and do not store audio files
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`locally. [Patent Owner's Response, at 10] However, the DAD Manual discloses multiple network
`
`configurations, including embodiments where audio files on networked workstations are stored
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`locally. For example, the DAD Manual compares multiple network configurations including a
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`"File Server Network" embodiment and an "Audio Server Network" embodiment. [DAD
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`MS 1039 - Page 14
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`MS 1039 - Page 14
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`

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`Application/Control Number: 95/001,295
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`Art Unit: 3992
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`Page 13
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`Manual, at 12-4 to 12-5] The File Server Network embodiment expressly states that individual
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`work stations store local files so that they may "operate independentlyiof any other workstations
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`and the File Server hard drive", while the Audio Server Network embodiment forces all audio
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`cuts to be played from the audio server and does not explicitly disclose local storage in the
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`workstations. [DAD Manual, at 12-4 to 12-5; see also DAD Manual 13-8 ("For systems
`
`configured as a File Server Network (see Section 12.3-A), it is possible to power down the File
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`Server while network workstations continue to operate independently. All individual
`
`workstations must be equipped with local (internal) hard drives.")].
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`Asdescribed in the Reexamination Request, both DAD and the Sound Blaster references
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`explicitly borrowed user interfaces from standalone audio players, demonstrating that this was a
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`common practice in the computerized audio player art.
`
`Regarding modification of the DAD playback interfaces from one form of standalone player (a
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`cart machine) to another (a CD player), Requester asserts that both DAD and the Sound Blaster
`
`references explicitly borrowed user interfaces from standalone audio players, demonstrating that
`
`this was a common practice in the computerized audio player art.
`
`Examiner: The examiner concurs with Requester that DAD Discloses the Recited Audio
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`Program Player for at least the reasons set forth above. Specifically, Patent owner’s arguments
`
`that the DAD also included a cart machine simulator are off-point. DAD discloses the recited
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`"audio program player" because it meets the requirement for each of the claimed elements
`
`including a communications port, a digital memory, and audio output unit, one or more manual
`
`controls, and a processor delivering a succession of audio program files in an ordered sequence
`
`as specified by a sequencing file... Each of these elements is set forth in the rejections.
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`MS 1039 - Page 15
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`MS 1039 - Page 15
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`

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`Application/Control Number: 95/001,295
`
`Art Unit: 3992
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`Page 14
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`Regarding claim 1: (i) a communication port.., for downloading a plurality of separate
`digital compressed audio program files and a separate sequencing file" and (ii) a digital
`memory... for persistently storing said separate digital compressed audio program files and
`said separate sequencing file.
`
`EQ: Patent Owner argues that because the externally prepared playlist is translated into the DAD
`
`format, the "source data files" are not themselves the playlist, and thus, the "import" feature does
`
`not result in the downloading of a playlist. [Patent Owner's Response, at 1 1] Patent Owner also
`
`argues that the imported playlists must be manually modified to become a DAD playlist.
`
`[Almeroth at 11, 15, 16-19]
`
`1:13: Requester asserts that DAD explicitly discloses preparing a playlist on a separate computer
`
`and then transferring it over a network and importing it into a DAD playlist. [Reexamination
`
`Request, at 32-33] Further, as described in the DAD Manual the "Import" function would
`
`automatically create a DAD playlist from a playlist created on a separate computer system, like
`
`Selector. [Novacek Decl., 13-17] While a user could modify that playlist, it was not required -
`
`the automatically created playlist resulting from the "Import" feature could be immediately used
`
`for playback by the DAD workstation. [Novacek Decl., 13-17)]
`
`Patent Owner also argues that "[t]he ‘import’ capability thus imports locally stored files."
`
`[Patent Owner's Response, at 1 1] This argument is contradicted by the express disclosure of the
`
`DAD Manual. The DAD Manual explicitly discloses that "[t]he source data file from the external
`
`system must be transferred into the DAD486x via floppy disk or network connection." [DAD
`
`Manual, at 7-19 (emphasis added); Office Action, at 5]
`
`Patent Owner's Response goes on to reiterate its inaccurate argument that individual DAD
`
`workstations on a network do not store files locally. [Patent Owner's Response, at 12] This
`
`argument is simply wrong, for the reasons discussed above. [Wicker Decl., 18-20, 22; Novacek
`
`MS 1039 - Page 16
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`MS 1039 - Page 16
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`

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`Application/Control Number: 95/001,295
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`Art Unit: 3992
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`Page 15
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`Decl., 1 1, 12, 21] Namely, the File Server Network configuration does have local storage of
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`files. [DAD Manual, at 12-4 to 12-5]
`
`Patent Owner also argues that a serial connection from a DAD workstation may only be attached
`to external automation equipment and that this prohibited a DAD workstation from being
`
`connected over a network to a server. [Patent Owner's Response, at 12] This is not true.
`
`[Novacek Decl., 4, 17, 18] Further, the serial port was only one way in which the DAD system
`
`could import a playlist; the more common mechanism for the DAD workstation to download a
`
`playlist was through use of the "import" tool over a local area network. [Novacek Decl., 18]
`
`Finally, Patent Owner again argues that the DAD Manual only discloses streaming over a
`
`network rather than downloading files for "persistent storage" over a network. [Patent Owner's
`
`Response, at 13-14] As discussed above, the streaming configuration relied on by Patent Owner
`
`is only one way that the DAD system could be used. The Patent Owner's argument ignores the
`
`explicit disclosure in the DAD Manual that files are downloaded from a file server and stored
`
`locally in Playback Lookahead mode and the File Server Network configuration. [DAD Manual,
`
`at 12-4; Wicker Decl., 18-20, 22; Novacek Decl., 11, 12,21].
`
`In the File Server Network configuration, individual workstations could continue playing audio
`
`files even if the File Server was turned off, which would be impossible if the only way to play
`
`files on individual workstations was by streaming as Patent Owner contends. [DAD Manual, at
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`13-8 ("For systems configured as a File Server Network (see Section 12.3-A), it is possible to
`
`power down the File Server while network workstations continue to operate independently. All
`
`individual workstations must be equipped with local (internal) hard drives."]
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`MS 1039 - Page 17
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`MS 1039 - Page 17
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`

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`Application/Control Number: 95/001,295
`
`Art Unit: 3992
`
`Page 16
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`Examiner: The examiner concurs with Requester that DAD discloses (i) a communication port..,
`
`for downloading a plurality of separate digital compressed audio program files and a separate
`
`sequencing file" and (ii) a digital memory... for persistently storing said separate digital
`
`compressed audio program files and said separate sequencing file, as required by the claims for
`
`at least the reasons explained above.
`
`Regarding claim 1 “one or more manual controls”
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`@: Patent owner argues that the DAD Manual does not disclose "one or more manual controls“.
`
`[Pate