throbber
UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,281
`
`02/03/2010
`
`7,634,228
`
`AFF.0004B7US
`
`5149
`
`21906
`7590
`TROP, PRUNER & HU, P.C.
`1616 S. VOSS ROAD, SUITE 750
`HOUSTON, TX 77057-2631
`
`06/30/2014
`
`EXAMINER
`
`LAROSE, COLIN M
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`06/30/2014
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Samsung Ex. 1418 p. 1
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Requester, Appellant, and Cross-Respondent
`
`v.
`
`AFFINITY LABS OF TEXAS, LLC
`Patent Owner, Respondent, and Cross-Appellant
`
`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`Technology Center 3900
`
`Before STEPHEN C. SIU, JEREMY J. CURCURI, and
`IRVIN E. BRANCH, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge
`
`Samsung Ex. 1418 p. 2
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`BACKGROUND
`
`An inter partes reexamination was filed on behalf of Third Party
`
`Requester, Volkswagen Group of America, Inc. ("Requester"), on February
`
`3, 2010, of United States Patent 7,634,228 B2 (hereinafter the "'228
`
`patent"). 1 The '228 patent includes claims 1-30. The Examiner rejected
`
`claims 1-5, 7-27, 29, and 30, and confirmed claims 6 and 28.
`
`DECISION ON APPEAL
`
`Requester appeals under 35 U.S.C. §§ 134 and 315 the Examiner's
`
`decision declining to adopt Requester's proposed rejections of claims 1-30
`over various references. TPR App. Br. 4-29. 2 Patent Owner, Affinity Labs
`
`of Texas, LLC ("Patent Owner"), cross-appeals under 35 U.S.C. §§ 134 and
`
`315 the Examiner's decision to reject claims 1-5, 7-27, 29, and 30, under
`
`different grounds. PO App. Br. 6-22.
`
`We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm-in(cid:173)
`
`part, affirming the Examiner's decision to reject claims 1-5, 7-27, 29, and
`
`30, and reversing the Examiner's decision not to reject claims 6 and 28.
`
`The '228 patent issued to White, et al., on December 15, 2009, from
`Application 11/681,444, filed March 2, 2007.
`2
`Throughout this opinion, we refer to (1) the Right of Appeal Notice
`mailed October 22, 2011 ("RAN"); (2) Requester's Appeal Brief filed
`January 23, 2012 ("TPR App. Br."); (3) Patent Owner Respondent's Brief
`filed February 22, 2012 ("PO Resp. Br."); (4) the Examiner's Answer
`mailed May 15, 2012 ("Ans.") (incorporating the RAN by reference); (5)
`Patent Owner's Appeal Brief filed January 20, 2012 ("PO App. Br."); and
`(6) Requester's Respondent Brief filed February 21, 2012 ("TPR Resp.
`Br.").
`
`2
`
`Samsung Ex. 1418 p. 3
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`STATEMENT OF THE CASE
`
`The '228 patent describes supplying content (e.g., a media file) from a
`
`portable electronic device to a different electronic device through which the
`
`content is played. The separate device at least partially controls the portable
`
`device. See generally '228 patent, Abstract. Claim 1 is illustrative of the
`
`claimed subject matter:
`
`1.
`
`A media managing method comprising:
`storing a media file in a memory system of a portable
`hand-held device that is not a conventional personal computer
`or a laptop computer, wherein the portable hand-held device
`further has a display and a processor;
`storing a collection of information about the media file in
`the memory system, wherein the collection includes data
`representing a name for the media file;
`communicating at least some of the collection from the
`portable hand-held device to a different electronic device in
`order to allow a user to view a soft button comprising the name
`on an associated display of the different electronic device; and
`thereafter receiving a signal in the portable hand-held
`device to begin playing the media file by the portable hand-held
`device in response to a selection of the soft button at the
`different electronic device; and
`outputting a played version of the media file across a
`physical interface of the portable hand-held device while the
`media file remains stored on the portable hand-held device,
`wherein the physical interface is configured to facilitate a
`communicative coupling of the portable handheld device and
`the different electronic device, further wherein the physical
`interface is not circular and has a width dimension and a length
`dimension that is longer than the width dimension.
`
`RELATED PROCEEDINGS
`
`We are informed this appeal is related to the following proceedings:
`
`(1) Affinity Labs of Texas, LLC v. BMW North America, LLC, et al., Case
`
`3
`
`Samsung Ex. 1418 p. 4
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`No. 9:08-cv-00164-RC (E.D. Tex.), involving the '228 patent and U.S.
`
`Patent No. 7,324,833 (the "'833 patent"); (2) Affinity Labs of Texas, LLC v.
`
`Dice Electronics, LLC, et al., Case No. 9:08-cv-00163-RC (E.D. Tex.),
`
`involving the '833 patent; (3) Affinity Labs of Texas, LLC v. Alpine
`
`Electronics of America, Inc., et al., Case No. 9:08-cv-00171-RC (E.D. Tex.),
`
`involving the '228 and '833 patents; (4) Affinity Labs of Texas, LLC v.
`
`Volkswagen Group of America, Inc., et al., Case No. 1: 11-cv-00036-RC
`
`(E.D. Tex.), involving the '228 and '833 patents and U.S. Patent No.
`
`7,778,595 (the "'595 patent"); (5) Affinity Labs of Texas, LLC v. Hyundai
`
`Motor America, Inc., et al., Appeal Nos. 2011-1350,- 1365, -1386 (Fed.
`
`Cir.), involving the '228 and '833 patents; (6) Affinity Labs of Texas, LLC v.
`
`Apple Inc. and AAMP of Florida, Inc., Case No. 11-cv-00349 (E.D. Tex.),
`
`involving the '228 and '595 patents; and (7) Reexamination Control No.
`
`95/001,263, involving U.S. Patent No. 7,486,926 (Bd. Pat. Appeals &
`
`Inter.).
`
`See TPR App. Br. 1.
`
`THE APPEALED REJECTIONS AND PROPOSED REJECTIONS
`
`Requester appeals the Examiner's not adopting the following
`
`proposed rejections:
`Claims 1-30 as anticipated by Abecassis3 under 35 U.S.C. §
`1 02(b );
`
`A.
`
`B.
`
`Claims 1, 3, 4, 6-10, 12, 14, 16-19, and 21, as anticipated by
`Schulhof et al. ("Schulhof')4 under 35 U.S. C. § 102(b );
`
`3 Abecassis, US Patent No. 6,192,340, issued Feb. 20, 2001.
`4 Schulhof et al., US Patent No. 5,557,541, issued Sep. 17, 1996.
`
`4
`
`Samsung Ex. 1418 p. 5
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`Claims 16-22 and 24-30 as anticipated by Treyz et al.
`("Treyz") 5 under 35 U.S.C. § 102(b);
`
`Claims 1, 2, 7, 8, 16, 21, 22, 24, and 26, as anticipated by
`Hahm6 under 35 U.S.C. § 102(b);
`
`Claims 16-19 and 21 as anticipated by Berry7 under 35 U.S.C.
`§ 102(b);
`
`Claims 22 and 24-30 as anticipated by Ohmura et al.
`("Ohmura")8 under 35 U.S.C. § 102(b);
`
`Claims 1, 3, 7, 8, 16-22, and 24-29, as anticipated by Marlowe9
`under 35 U.S.C. § 102(b);
`
`Claims 9, 10, and 14, as anticipated by Gioscia et al.
`("Gioscia") 10 under 35 U.S. C. § 1 02(b );
`
`Claim 28 as obvious in view of the combination of Lind et al.
`("Lind '98") 11 and the Empeg Car User Guide ("empeg") 12
`under 35 U.S.C. § 103(a);
`
`Claim 28 as obvious in view of the combination of Lind et al
`("Lind '99") 13 and the empeg under 35 U.S.C. § 103(a);
`
`5 Treyz et al., US Patent No. 6,526,335, issued Feb. 25, 2003.
`6 Yeong Ook Hahm, EPA Publication No. 0 982 732, published Mar. 1,
`2000.
`7 Berry, U.S. Patent No. 6,559,772, issued May 6, 2003.
`8 Ohmura et al., EPA Publication No.1146 674, published Oct. 17,2001.
`9 Marlowe, US 2003/0215102 AI, published Nov. 20,2003.
`10 Gioscia et al., US Patent No. 6,407,750, issued Jun. 18, 2002.
`11 R. Lind et al., The Network Vehicle- A Glimpse into the Future of
`Mobile Multi-Media, 1 ih DASC The A1AA/1EEE/SAE Digital Avionics
`Systems Conference Proceedings, Oct. 31-Nov. 7, 1998, at 121-121-8.
`12 empeg car, digital audio player user guide.
`
`5
`
`Samsung Ex. 1418 p. 6
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`K.
`
`L.
`
`Claims 1-4, 6-10, 12-14, 16-19, 21, 22, and 24-30, as obvious
`in view of the combination ofKikinis et al. ("Kikinis") 14 and
`Schulhofunder 35 U.S.C. § 103(a);
`
`Claims 1-4, 6-14, 16-19, 21, 22, 24-27, 29, and 30, as obvious
`in view of the combination of Dwyer et al. ("Dwyer") 15 and
`Schulhofunder 35 U.S.C. § 103(a);
`
`M.
`
`Claims 1-3, 7-13, and 15-30, as obvious in view of the
`combination of Berry and Treyz under 35 U.S.C. § 103(a).
`
`!d. at 4-5.
`
`Patent Owner cross-appeals the Examiner's rejecting the claims as
`
`follows:
`
`Claims 1, 3, 7-10, 12, 13, 16-19, and 21, as anticipated by
`1.
`Ohmura under 35 U.S.C. §§102(a) and (b) or, alternatively, obvious
`under§ 103(a) in view ofOhmura;
`
`Claims 1-5, 7-12, 14-27, 29, and 30, as obvious under§ 103(a)
`2.
`over Lind '98 in view of empeg; and
`
`Claims 1-5, 7-12, 14-27, 29, and 30, as obvious under §103(a)
`3.
`over Lind '99 in view of empeg.
`
`PO App. Br. 6.
`
`13 R. Lind et al., The Network Vehicle- A Glimpse into the Future of
`Mobile Multi-Media, IEEE Aerospace and Electronics Systems Magazine,
`ISSN 0885-8985, Volume 14, Number 9, pages 27-32, September 1999.
`14 Kikinis et al., US Patent No. 5,812,870, issued on Sep. 22, 1998.
`15 Dwyer et al., US Patent No. 6,671,567, issued Dec. 30, 2003.
`
`6
`
`Samsung Ex. 1418 p. 7
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`THE REJECTION OF CLAIMS 1, 3, 7-10, 12, 13, 16-19, AND 21, OVER
`
`OHMURA
`
`Patent Owner argues that claims 1, 3, 7-10, 12, 13, 16-19, and 21, are
`
`neither anticipated by nor obvious over Ohmura.
`
`Ohmura discloses "[a ]n audio apparatus for a vehicle made up of a
`
`carmounted [sic] audio apparatus 100 and portable audio apparatuses 200a
`
`and 200b transmits/receives contents data such as music via radio
`
`communication." Ohmura p. 1. Ohmura was published on October 17,
`
`2001.
`
`Patent Owner first asserts the rejection is improper because Ohmura is
`
`not prior art. PO App. Br. 6-11. Patent Owner argues the Examiner
`
`engaged in an improper 35 U.S.C. § 112 analysis, resulting in an incorrect
`
`determination that the claims of the '228 patent are not supported by the
`application from which it claims priority. 16 Id.
`
`Patent Owner also argues the rejection is improper because "Ohmura
`
`does not disclose 'storing a media file ... ; ' 'storing a collection of
`
`information ... ; ' 'playing the media file by the portable hand-held device ..
`
`. ; ' 'outputting a played version of the media file across a physical interface
`
`of the portable hand-held device ... ; ' and 'the physical interface is not
`
`circular and has a width dimension and a length dimension that is longer
`
`than the width dimension."' !d. at 12; see also id. at 12-15.
`
`16
`
`The '228 patent claims priority to U.S. Application Number
`09/537,812 (the "'812 application"), now US 7, 187,947.
`
`7
`
`Samsung Ex. 1418 p. 8
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`Patent Owner further argues the Examiner's obviousness rejection is
`
`improper because it provides "no reasons why the claimed invention would
`
`have been obvious." !d. at 15. Patent Owner also presents evidence of
`
`secondary considerations, arguing they should be found persuasive in
`
`determining the claims of the '228 patent were not obvious. !d. at 20-22.
`
`Issue
`
`Whether the Examiner erred in rejecting claims 1, 3, 7-10, 12, 13, 16-
`
`19, and 21, as anticipated by or obvious over Ohmura.
`
`Analysis
`
`We are persuaded the Examiner did not err in rejecting claims 1, 3, 7-
`
`10, 12, 13, 16-19, and 21, as anticipated by or obvious over Ohmura.
`
`Initially, regarding the Examiner's priority date determination, in the
`
`Action Closing Prosecution ("ACP" mailed August 18, 2011 ), the Examiner
`
`finds "in order to reexamine a patent on the basis of intervening prior art, it
`
`is appropriate to conduct a§ 120 analysis with respect to the claims if such
`
`analysis has not already been conducted." ACP 6. The Examiner further
`
`finds "Patent Owner had not identified sufficient support in the '812
`
`application for 'communicating at least some of the collection from the
`
`portable hand-held device to a different electronic device in order to allow a
`
`user to view a soft button comprising the name on an associated display of
`
`the different electronic device."' I d. at 6-7. The Examiner also finds "the
`
`'817 application does not teach 'receiving a signal in the portable hand-held
`
`device to begin playing the media file by the portable hand-held device in
`
`response to a selection of the soft button at the different electronic device."'
`
`!d. at 8. In view of the foregoing, the Examiner concludes that because
`
`8
`
`Samsung Ex. 1418 p. 9
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`similar limitations appear in all independent claims (1, 9, 16, and 22) of the
`
`'228 patent, "no claims in the '228 patent are entitled to the benefit of the
`
`3/28/2000 filing date under 35 U.S.C. § 120." !d. We see no error in the
`
`Examiner's determination.
`
`Specifically, we disagree with the Patent Owner that the Examiner is
`
`"precluded from reassessing the priority date of the '228 patent" and that
`
`"all prior art determinations must be based upon the March 28, 2000 filing
`
`date of the parent application." PO App. Br. 7. Third Party Requester
`
`correctly points out "the Federal Circuit stated that '[n]othing in 35 U.S.C.
`
`§§ 301 et seq. entitles a patentee to a claim of right to its earliest priority
`
`date."' TPRResp. Br. 3 (quoting In reNTP, 654 F.3d 1268 (Fed. Cir. 2011)
`
`("There is no statutory limitation during a reexamination proceeding
`
`prohibiting the examiner from conducting a priority analysis.")). Further,
`
`whether "It is impermissible for a reexamination Examiner to reconsider an
`
`issue that was decided by the original Examiner," as Patent Owner asserts
`
`(PO App. Br. 8), is not an issue here because Patent Owner has not
`
`persuasively established the original Examiner "decided" the issue of written
`
`description support during initial examination.
`
`Further, we are unpersuaded by Patent Owner that the original '812
`
`application Specification supports "communicating at least some of the
`
`collection from the portable hand-held device to a different electronic device
`
`in order to allow a user to view a soft button comprising the name on an
`
`associated display of the different electronic device." PO App. Br. 9. Patent
`
`Owner's reference to the '812 application's Specification describing a
`
`Graphical User Interface (GUI) at Fig. 4 (id. at 10 (referring to the '228
`
`9
`
`Samsung Ex. 1418 p. 10
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`patent Fig. 4 and col. 9:52-56)) is unpersuasive because, as the Examiner
`
`points out, "The user interface of figure 4 is, by all accounts, embodied only
`
`in the portable audio that is connected to the automobile sound system rather
`
`than both the portable player and the automobile sound system," and "There
`
`is no teaching, either explicitly or implicitly, that the automobile sound
`
`system -
`
`or any other 'different electronic device' - with which the
`
`portable audio player communicates is capable of receiving audio
`
`information from the portable device and then displaying soft buttons
`
`comprising a name on an associated display, as claimed." ACP 7.
`
`Accordingly, for at least the reasons stated by the Examiner (ACP 2-8), we
`
`are unpersuaded the '228 patent is entitled to the benefit of the March 28,
`
`2000, filing date of its parent application. Instead, on the record before us,
`
`the '228 patent's priority date is no earlier than March 2, 2007, its filing
`
`date.
`
`As to the "storing" limitations of claim 1, Patent Owner argues
`
`"Ohmura does not disclose the method step of storing media or a collection
`
`of information in a memory of the portable audio apparatuses 200a and
`
`200b." PO App. Br. 12. For at least the reasons stated by the Examiner
`
`(ACP 8), we disagree with Patent Owner and find that the limitation is
`
`taught or suggested. The Examiner finds that Ohmura discloses "portable
`
`audio device 200a includes memory 204 for storing music data (i.e., music
`
`files)," "the music file contents of the portable audio device are displayed,
`
`i.e., title list (D67) of external player A (D66) shows the names of the
`
`various music files stored on the portable audio player." ACP at 8 (citing
`
`Ohmura Figs. 1, 2, and 12; and ,-r,-r 66, 67, and 93). Accordingly, we are
`
`10
`
`Samsung Ex. 1418 p. 11
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`persuaded the "storing a media file in a memory system of a portable hand(cid:173)
`
`held device ... " and "storing a collection of information about the media
`
`file in the memory system ... "limitations are taught or suggested by
`
`Ohmura.
`
`Regarding the "playing ... "and "outputting ... "limitations, Patent
`
`Owner argues "a portable hand-held device of Ohmura never plays the
`
`media file or outputs a played version of the media file." PO App. Br. 13.
`
`This is unpersuasive of error because Ohmura discloses "the music data
`
`retained in the portable audio apparatus 200a of the external player A is sent
`
`to the audio apparatus 100 and the passenger can replay the music data in the
`vehicle in real time." Ohmura ,-r 129. To the extent Patent Owner argues
`
`playing does not include sending music data to the memory of the car audio
`
`apparatus, after which it is decoded, reproduced, and output (PO App. Br. at
`13 (referring to Ohmura ,-r,-r 108-108)), we are unpersuaded that the
`
`Examiner has construed "playing" unreasonably broadly or that the
`
`Examiner erred in determining that "playing" is met by Ohmura's sending
`
`the music data from a portable device to a car audio system, which outputs it
`
`audibly. ACP 9.
`
`Regarding the physical interface limitations, Patent Owner argues "the
`
`term 'physical interface' can not [sic] be interpreted to include the wireless
`
`connection disclosed by Ohmura." PO App. Br. 13. The Examiner finds
`
`that the claimed 'physical interface' does not necessarily preclude a wireless
`
`connection because "a 'physical interface' of the portable audio player could
`
`constitute the physical interface (e.g., hardware) through which the wireless
`
`connection is maintained." ACP 9. We agree and further note Ohmura also
`
`11
`
`Samsung Ex. 1418 p. 12
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`discloses a "wired connection port" and "connect[ing] [the portable device]
`
`to an in-car audio apparatus via a cable []to take the music data of portable
`audio apparatuses of all models into the in-car audio apparatus." Ohmura ,-r
`
`23 (cited in TPR request (p. 96) and adopted by the Examiner (RAN 6)).
`
`Regarding the dimensions of the physical interface, we agree with the
`
`Examiner that "the actual shape of such a component would have been an
`
`arbitrary design consideration not amounting to a patentable distinction in
`
`the absence of unexpected results or advantages of employing one shape
`
`over another." ACP 9-10. Further, the Examiner cited Ohmura's non(cid:173)
`
`square, non-circular "transmission/reception module" (Fig. 2, element 21 0),
`
`which forms a portion of Ohmura' s wireless connection. I d. atl 0. We see
`
`no error; the claimed physical interface is not limited to a single component
`
`or link forming the interface, and the Examiner has shown at least a portion
`
`ofOhmura's interface (the transmission/reception module) meets the
`
`dimension limitations of the claim.
`
`We also see no error in the Examiner taking Official Notice of"the
`
`fact that a wireless hardware component in a portable device would have
`
`been known to take the form of a non-circular, non-square shape." ACP 9.
`
`We are unpersuaded by Patent Owner's arguments to the contrary (PO App.
`Br. 13-15). 17 Patent Owner does not persuasively rebut the Examiner's
`
`17 While not a part of our decision as to the rejection of claims 1, 3, 7-
`10, 12, 13, 16-19, and 21, as anticipated by or obvious over Ohmura, we
`note the Universal Serial Bus standard (herein "USB"), introduced in 1995
`(see, e.g., http://en.wikipedia.org/wiki/USB), was, at the time of Patent
`Owner's invention, known to provide a physical interface between electronic
`components for communicating both data and power. A common USB
`
`12
`
`Samsung Ex. 1418 p. 13
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`officially noticed fact, but instead challenges the Examiner's use of official
`
`notice on procedural grounds. !d. See MPEP § 2144; see also 37 C.P.R.§
`
`1.111(b). Patent Owner's challenges of record, however, are insufficient to
`
`demonstrate that the Examiner erred in taking official notice. Hence, to the
`
`extent the Examiner's obviousness rejection relies on this officially-noticed
`
`fact, we see no error.
`
`Further to the obviousness rejection, Patent Owner's argument that
`
`"The ACP provides no reasons why the claimed invention would have been
`
`obvious and thus, the obviousness rejections based upon Ohmura should be
`
`withdrawn" (PO App. Br. 15) is unpersuasive. For example, the Examiner
`
`indicates that Ohmura discloses an interface and "does not expressly
`
`disclose any particular shape" of the interface but that "those skilled in that
`
`art would have known such hardware to generally take a ... non-circular,
`
`non-square shape" (ACP 9). The predictable result of a combination of
`
`known elements, such as the combination of the known interface of Ohmura
`
`and the known standard form factors, such as "non-circular, non-square"
`
`shapes, each performing a known function to achieve the predictable and
`
`expected result of an interface with a desired shape, would have been
`
`obvious to one of ordinary skill in the art. "[W]hen a patent 'simply
`
`arranges old elements with each performing the same function it had been
`
`known to perform' and yields no more than one would expect from such an
`
`arrangement, the combination is obvious." KSR Int'l Co., 550 U.S. at 416
`
`(citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)).
`
`cable has a non-circular and non-square portion (i.e., the ubiquitous
`rectangular USB plug).
`
`13
`
`Samsung Ex. 1418 p. 14
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`Patent Owner also disputes the Examiner's finding that Patent
`
`Owner's evidence of secondary considerations is insufficient to overcome
`
`the obviousness rejection. PO App. Br. 20-22. The Examiner's finding is
`
`based in part on the '228 patent not being entitled to March 28, 2000 priority
`
`date, upon which Patent Owner's secondary considerations evidence is
`
`based. ACP 18-19. Patent Owner asserts error because the claims are
`
`entitled to the March 28, 2000, filing date and because "a clear and
`
`unmistakable nexus between [seamless integration required by the claims]
`
`and[] consumer demand exists." PO App. Br. 21. Moreover, Patent Owner
`
`asserts the evidence of secondary considerations demonstrates that the
`
`seamless integration required by the claims "solved a long felt need in the
`
`industry, as commercial implementations did not appear on the market for a
`
`number of years after the introduction of portable MP3 players such as the
`
`iPod" (id. ); that TPR and others infringe the patent (id. at 22); and that
`
`"evidence of the commercial success of seamless integration can be seen in
`
`advertising of TPR that describes that its adapter 'connects iPods with the
`
`latest generation of Volkswagen Genuine car radios or radio-navigation
`
`systems, which are then used for control or audio output. .. even the battery
`
`is charged when using it via the adapter ... "' (id. ).
`
`We recognize that evidence of secondary considerations must always
`
`be considered en route to the determination of obviousness, but its existence
`
`alone does not control the conclusion of obviousness. Richardson- Vicks v.
`
`Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. (Del.) 1997). The weight given
`
`to evidence of secondary considerations is dependent upon whether there is a
`
`14
`
`Samsung Ex. 1418 p. 15
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`nexus between the merits of the claimed invention and the evidence offered.
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).
`
`For at least the reasons stated by the Examiner (ACP 18-19), we
`
`agree with the Examiner that Patent Owner has not provided a sufficient
`
`showing of a nexus between any specific feature of the claimed invention
`
`and the evidence alleging secondary considerations. See, e.g., ACP 19
`
`("Without a more complete market analysis of a product that embodies the
`
`claimed invention versus comparable products that do not, it is difficult, if
`
`not impossible, to attribute the commercial success of the iPod to any
`
`particular factor or set of factors."). Patent Owner does not assert or
`
`demonstrate persuasively a nexus between any specific claim feature and the
`
`offered evidence alleging secondary considerations. See, e.g., PO App. Br.
`
`20-22.
`
`Patent Owner argues claims 9 and 16 based on "deficiencies in
`
`Ohmura identified above for claim 1," adding for claim 9, without
`
`elaboration, "Ohmura further fails to disclose saving the media file in the
`
`memory of portable electronic device after the media file is received via an
`
`over the air download." PO App. Br. 15-16. We find no deficiencies in the
`
`Examiner's rejection of claim 1 and are unpersuaded by Patent Owner's
`
`naked assertion regarding claim 9. Patent Owner does not argue with
`
`particularity the Examiner's rejection of claims 3, 7, 8, 10, 12, 13, 17-19,
`
`and 21, over Ohmura. Accordingly, we are not persuaded of error in the
`
`Examiner's decision to reject claims 1, 3, 7-10, 12, 13, 16-19, and 21, as
`
`anticipated by or obvious over Ohmura. We sustain the Examiner's
`
`rejection.
`
`15
`
`Samsung Ex. 1418 p. 16
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`THE PROPOSED REJECTION OF CLAIMS 22 AND 24-30 OVER
`
`OHMURA
`
`Requester appeals the Examiner's decision not to reject claims 22 and
`
`24-30 as anticipated by Ohmura. TPR App. Br. 14-16.
`
`Claim 22 recites in pertinent part, "an electronic device having a non(cid:173)
`
`circular portable device interface that allows for communication of data and
`
`power." Claim 28 depends from claim 22 and recites, in pertinent part, a
`
`"cable [that] provides at least a portion of the link between the electronic
`
`device and the portable electronic device [] wherein a battery of the portable
`
`electronic device can be recharged via the cable." The Examiner does not
`
`adopt Third Party Requester's proposed rejection of claims 22 and 24-30 as
`
`anticipated by Ohmura because Ohmura does not teach the "communicating
`
`power" limitation of claim 22. ACP 11.
`
`Third Party Requester argues Ohmura discloses that portable devices
`are powered by batteries. TPR App. Br. 15 (citing Ohmura ,-r 237 ("Note,
`
`that the portable audio terminal 3 is driven by a power supply supplied by a
`
`battery (not shown) in the terminal.")). Third Party Requester argues further
`
`that claim 22's interface does not preclude a wireless interface and "a
`
`wireless interface that allows for the communication of data between a
`
`portable electronic device and another electronic device, and that allows for
`
`the communication of power between a power supply and the wireless
`
`interface teaches the above-recited language of claim 22." !d. Third Party
`
`Requester also argues "a wireless interface that communicates data also
`
`communicates power in the form of the digital signals themselves." !d.
`
`16
`
`Samsung Ex. 1418 p. 17
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`Regarding claim 28, Third Party Requester argues Ohmura discloses
`
`"connecting a device to an in-car audio apparatus via a cable." TPR App.
`
`Br. 15. Third Party Requester further argues that it was well known at the
`
`time of Patent Owner's invention for "portable electronic devices [to]
`
`included rechargeable batteries that could be charged using a cable." !d.
`
`(citing the Apple iPod, referred to at ACP 18, as an example of a portable
`
`electronic device known to include a rechargeable battery that could be
`
`recharged by a cable (USB or Fire Wire) capable of communicating both data
`
`and power).
`
`Patent Owner argues "[t]he '228 patent specification clearly precludes
`
`an interpretation in which a wireless connection could be a portable device
`
`interface with the physical characteristics as claimed because the
`
`specification expressly distinguishes communication via a physical interface
`
`mount from wireless communication." PO Resp. Br. 9. Patent Owner also
`
`argues "[a] conventional wireless data signal as disclosed in Ohmura cannot
`
`be reasonably interpreted as communicating both data and power." !d.
`
`Patent Owner argues further that Ohmura does not disclose "the audio file
`
`can be played by the portable electronic device and to [sic] be output via
`
`the electronic device while the audio file remains stored on the portable
`
`electronic device" as further recited in claim 22. !d. at 10.
`
`Regarding claim 28, Patent Owner argues "Ohmura provides no
`
`disclosure of a battery of the portable electronic device that can be
`
`recharged via a cable interfaced with a physical interface of the portable
`
`electronic device that is also not circular" and "There is absolutely no
`
`indication that the portable audio apparatuses of Ohmura have batteries that
`
`17
`
`Samsung Ex. 1418 p. 18
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`can be recharged, particularly via a cable that links the portable apparatuses
`
`with the car audio apparatus." PO Resp. Br. 10.
`
`Issue
`
`Whether the Examiner erred in not rejecting claims 22 and 24-30 as
`
`anticipated by Ohmura.
`
`Analysis
`
`On the record before us, we are persuaded the Examiner did not err in
`
`deciding not to reject claims 22 and 24-30 as anticipated over Ohmura
`
`because Ohmura does not describe "a non-circular portable device interface
`
`that allows for communication of data and power" as recited in claim 22.
`
`Instead, we enter a new ground of rejection against claims 22 and 24-30 as
`
`obvious over Ohmura.
`
`In determining claims 22 and 24-30 to be obvious over Ohmura, we
`
`take official notice of the fact that portable electronic devices (e.g., Apple
`
`iPod) were well known as of the earliest priority date of the '228 patent
`
`(March 2, 2007; see our discussion of priority date supra) and that such
`
`devices were known to have rechargeable batteries capable of being
`
`recharged via a cable (e.g., USB) that allows for communication of data and
`
`power. We also adopt Requester's proposed findings as to claims 22 and
`
`24-30. Third Party Request for Inter Partes Reexamination Appendix G,
`
`pp. 111-119.
`
`We find it would have been obvious to one skilled in the art at the
`
`time of Patent Owner's invention for, for example, Apple's iPod to be one of
`
`Ohmura' s "portable audio apparatuses (200, 200a, 200b )" (Ohmura ,-r 31 and
`
`Fig. 1) and for the apparatus to be connected to the "audio apparatus (100)
`
`18
`
`Samsung Ex. 1418 p. 19
`
`

`

`Appeal2014-002024
`Reexamination Control 95/001,281
`Patent 7,634,228
`
`mounted in the vehicle" (id.) via a USB interface using a USB cable. As
`
`such, the device interface would have allowed for communication of data
`
`and power as in claim 22 and the arrangement would have met the additional
`
`limitations of claims 24-30, particularly claim 28's recharging and
`
`dimensional limitations. The resulting arrangement would have been a
`
`combination of familiar elements performing their known functions with
`
`predictable results (See KSR 550 U.S. at 416) and combining them would
`
`not have been uniquely challenging or difficult (see Leapfrog 485 F.3d at
`
`1162).
`
`THE REJECTION OF CLAIMS 1-5,7-12, 14-27,29,AND30,0VER
`
`EITHER LIND '98 OR LIND '99 AND EMPEG
`
`Patent Owner argues the Examiner erred in rejecting claims 1-5, 7-
`
`12, 14-27, 29, and 30, over Lind '98 in view of empeg for several reasons.
`
`PO App. Br. 16-20. Patent Owner asserts empeg is not prior art. !d. at 16.
`
`P

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