Sonos v. D&M - Notice of Rejection of D559197

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 1 of 112 PageID #: 12861
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE
SONOS, INC.,
Plaintiff,
v.
D&M HOLDINGS INC. d/b/a THE D+M
GROUP, D&M HOLDINGS U.S. INC., and
DENON ELECTRONICS (USA), LLC,
Defendants.
)
)
)
)
) C.A. No. 14-1330 (RGA)
)
)
)
)
)
)
NOTICE OF FINAL REJECTION CONCERNING U.S. PATENT NO. D559,197

IN EX PARTE REEXAMINATION
Defendants D&M Holdings Inc. d/b/a The D+M Group, D&M Holdings U.S. Inc., and
Denon Electronics (USA), LLC, (Defendants) hereby notify the Court that on June 29, 2016,
the United States Patent and Trademark Office (the Office) issued a final rejection of the
single claim of the patent-in-suit, U.S. Patent No. D559,197 (the 197 Patent) in the pending ex
parte reexamination of that patent. A copy of the PTOs final decision is attached as Exhibit A.
Sonos subsequently submitted a Response to Final Office Action in Ex Parte
Reexamination on September 29, 2016, with additional arguments and evidence, and requesting
the Office to withdraw the final rejection of the single claim of the 197 Patent. A copy of that
response is attached as Exhibit B.
Having received no further action from the Office in response, Sonos subsequently filed a
Notice of Appeal from the Examiner to the Patent Trial and Appeal Board from the final
rejection of the 197 Patent in the pending ex parte reexamination of that patent on November
29, 2016, the last day to do so to prevent the Office from issuing a reexamination certificate
cancelling the single claim of the 197 Patent. A copy of that notice is attached as Exhibit C.
MORRIS, NICHOLS, ARSHT & TUNNELL LLP
/s/ Michael J. Flynn
OF COUNSEL:
John M. Jackson
Kurt A. Schwarz
Nathaniel (Nate) St. Clair II
Matthew C. Acosta
Blake T. Dietrich
JACKSON WALKER L.L.P.
2323 Ross Avenue, Suite 600
Dallas, TX 75201
(214) 953-6000
_______________________________________
Jack B. Blumenfeld (#1014)
Michael J. Flynn (#5333)
1201 North Market Street
P.O. Box 1347
Wilmington, DE 19899
(302) 658-9200
jblumenfeld@mnat.com
mflynn@mnat.com
Attorneys for D&M Holdings Inc. d/b/a The
D+M Group, D&M Holdings U.S. Inc. and
Denon Electronics (USA), LLC
David Folsom
JACKSON WALKER L.L.P.
6002 Summerfield, Suite B
Texarkana, TX 75503
(903) 255-3250
December 1, 2016
EXHIBIT
A
UNITED STATES pATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
90/013,497
04/28/2015
D559197
S51-04124
3198
135223
7590
06/29/2016
EXAMINER
KPPBLLP
2400 E. Katella Avenue, Suite 1050
Anaheim, CA 92806
L Y, DARLINGTON
ARTUNIT
PAPERNUMBER
2914
MAIL DATE
DELIVERY MODE
06/29/2016
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)
Commissioner for Patents

United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
W"aAA"I.IJ:.'=ptO.QOV
DO NOT USE IN PALM PRINTER

(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
David J. Bailey
KPPB LLP
2400 E. Katella Avenue, Suite 1050
Anaheim, CA 92806
EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
REEXAMINATION CONTROL NO. 901013.497.

PATENT NO. 0559197 ET AL..
ART UNIT 2914.
Enclosed is a copy of the latest communication from the United States Patent and Trademark
Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
reply has passed, no submission on behalf of the ex parte reexamination requester will be
acknowledged or considered (37 CFR 1.550(g)).
PTOL-465 (Rev.0?-04)
Application/Control Number: 90/013,497
Page2
Art Unit: 2914
Ex Parte Reexamination Office Action

Remarks
1.
Patent owner's arguments filed 31 March 2016 concerning the rejection of record under
35 U.S.C. 102(b) have been fully considered. However, the arguments are not
persuasive so that the rejection may be withdrawn. Consequently, the rejection under
35 U.S.C. 102(b) is repeated and made FINAL.
Benefit of Earlier Filing Date

35 u.s.c. 120
2.
Patent owner is entitled to claim the benefit of the filing date of an earlier application for
a later claimed invention under 35 U.S. C. 120 only when the earlier application
discloses that invention in the manner required by 35 U.S. C. 112, first paragraph. The
claimed design in a continuation/divisional application must be disclosed in the prior
application of which benefit is claimed. However, this condition was discussed in the
prior Office action and repeated again below.
3.
The patent in reexamination, US Patent D559,197 (hereinafter "the '197 Patent"), was
filed on 01 May 2006 as a continuation of U.S. Patent Application 29/199,212, which was
filed on 11 February 2004 (now U.S. Patent D524,251, hereinafter "the '251 Patent"). The
'197 Patent is not entitled to the benefit of priority under 35 U.S. C. 120 to the earlier
date of the '251 Patent. The design in the '197 Patent is not described in the disclosure of
the '251 Patent.
4.
The design in the '197 Patent is different from that of the earlier patent in that the two
buttons forming the volume control strip are shown with substantially different
Page3
Art Unit: 2914

configurations. Specifically, the designs between the aforementioned patents are
different in the following ways:
>
The displacement of the top squared button from the bottom elongated button is
narrower in the '251 Patent than it is in the '197 Patent. While this difference in
distance between the two buttons may be an obvious modification or may have a
de minimis effect on the overall arrangement, the difference becomes critical when
compounded with other differences. See annotation (A) in illustration below.
>
The depth at which the buttons are raised is shallower in the '251 Patent than it is
in the '197 Patent. This difference is immediately noticeable when comparing the
two drawing disclosures. See annotation (B) in illustration below.
>
The proportions between the width and length of the bottom button is longer
and narrower in the '251 Patent than it is in the '197 Patent. The overall
elongation of the button in the former patent is noticeably different. See
annotation (C) in illustration below.
>
The buttons in the '251 Patent are shown with a squared edge in Figure 2.
However, between Figures 1, 3 and 4, the buttons can be construed as having a
shallow depth with a tapered or contoured edge. Neither a squared edge nor a
tapered/contoured edge is consistent and shown in the button configuration of
the '197 Patent. The '197 Patent shows the buttons having dual edge, of which
the top edge is squared and the bottom edge is tapered. This difference alone
creates patentably distinct designs. See annotation (D) in illustration below.
5.
The cumulative effect of the above differences results in a button strip configuration that
is substantially different. No link in appearance can be made between the two button
strip designs.
Page4
Art Unit: 2914
----------------------------------------------------
~q
Proport:h:>n
bet.veen the ~ength

.and ),Vidth of th%
button l~ ctmer~nt
(D~
0524~251
Suttons are shm%T'l
with a dot-lh!%~dg~;
W'here!n the top edge
!s squared and th~
bottom edge possib~y
beng tapered.
The nm1t-{!atrve effect of the differences kientifled abo\'e results

n p,~.-~tentaNy distinct designs,
6.
In view of the above reasons, the claim in the '197 Patent does not satisfy the written
description requirement of 35 U.S. C. 112, first paragraph, needed to receive the benefit
of the '251 filing date under 35 U.S. C. 120. When a design is changed, the result is a
new and different design; the original design remains just what it was. Consequently,
without the benefit of the filing date in the '251 Patent, the Sonos ZonePlayer ZP100 and
Sonos Controller that were shown in the publication The Advent of Multi-Room Digital
Music: An Overview of the Sonos Digital Music System by the Envisioneering Group
qualifies as prior art under 35 U.S. C. 102(b).
PageS
Art Unit: 2914
Non-Final Rejection
35 usc 102(b)
7.
The claim in US Patent D559,197 is again and FINALLY rejected under 35 U.S.C. 102(b)
as anticipated by the volume control strip of the Sonos ZonePlayer ZPlOO and Sonos
Controller because the invention was patented or described in a printed publication in

this or a foreign country, or in public use or on sale in this country more than one year
prior to the application for patent in the United States.
8.
The claimed design was on sale and publicly available since at least 31 January 2005 as
evidenced by Sonos ZonePlayer ZPlOO and Sonos Controller, which were shown in the
publication The Advent of Multi-Room Digital Music: An Overview of the Sonos Digital
Music System by the Envisioneering Group. Given that the earliest eligible priority date
is 01 May 2006, the aforementioned prior art reference of the Sonos devices precedes the
effective filing date of the '197 Patent by more than a year.
9.
For anticipation to be found, the two designs must be substantially the same.l The
ordinary observer test is the sole test for anticipation. 2
"Two designs are substantially the same if their resemblance is deceptive to the
extent that it would induce an ordinary observer, giving such attention as a
purchaser usually gives, to purchase an article having one design supposing it to
be the other."3
"The mandated overall comparison is a comparison taking into account
significant differences between the two designs, not minor or trivial differences
Gorham Co. v. White, 81 U.S. 511, 528 (1871)

International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93
USPQ2d 1001 (Fed. Cir. 2009)
3
Door-Master Corp. v. Yorktowne Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001) (citing Gorham Co.
v. White, supra
2
Page 6
Art Unit: 2914

that necessarily exist between any two designs that are not exact copies of one
another. Just as 'minor differences between a patented design and an accused
article's design cannot, and shall not, prevent a finding of infringement,' so too
minor differences cannot prevent a finding of anticipation." 4
10.
Under this standard, the appearance of the volume control strip featured on the Sonos
ZonePlayer ZPlOO and Sonos Controller are substantially the same as that of the claimed
design. Specifically, the vertical arrangement of dual buttons, top squared button and
bottom rectangular button, distance between buttons, oblong indication light, raised
configuration of the buttons, and narrow bezel or trim surrounding each button are all
mutually inclusive features of the '197 Patent and the prior art references of the Sonos
ZonePlayer ZPlOO and Sonos Controller. To this end, it is clear that the '197 Patent is
directed to the same volume control strip featured on the Sonos ZonePlayer ZPlOO and
Sonos Controller.
11.
Although no differences are immediately evident, any contrast in appearance between

the two designs is minor and trivial. Furthermore, the resulting appearance of the
claimed design would be deceptive to the extent that it would induce an ordinary
observer to purchase it supposing it to be the volume control strip of the Sonos
ZonePlayer ZPlOO and Sonos Controller.

12.
As illustrated in the below exhibits, each drawing figure from the '197 Patent showing
the claimed design (left column) was made available in the Envisioneering Group
publication of the Sonos White Paper Digital Music System (right column). Similar sources
of the Sonos Digital Music System can also be found on the Sonos official website. A
side-by-side comparison of the patent drawings and the photographic references clearly
show the same design. Since the Advent of Multi-Room Digital Music: An Overview of
Int'l Seaway, supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir.
1984))
Page 7
Art Unit: 2914

the Sonos Digital Music System by the Envisioneering Group was published at least a
year before the filing of the '197 Patent and since said patent is not granted priority
under 35 U.S. C. 120 to the earlier date of the '251 Patent, a rejection under 35 USC
102 (b) is proper.

Art Unit: 2914
Page 8
Page9
Art Unit: 2914
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Page 10
Art Unit: 2914
Patent Owner's Rebuttal

13.
The response filed 31 March 2016 did not consist of arguments to refute the merits of the
rejection under 35 USC 102(b). Rather, the submitted arguments concentrated only on
the validity and right to claim the benefit of priority to the earlier '251 Patent. It is the
Examiner's position that had the '251 Patent disclosed the design of the '197 Patent,
Page 11
Art Unit: 2914

benefit of the earlier filing date would have been granted and the reference above would
not be prior art. However, since the conditions under 35 USC 112, first paragraph, were
not met, the rejection under 35 USC 102(b) is proper and made FINAL.
14.
Patent owner has contested the Examiner's analysis and asserts that the claimed design
in the '197 Patent was adequately disclosed in the '251 Patent to receive the benefit of the
earlier filing date. Specifically, the following arguments were submitted to support the
Patent owner's assertion that written description under 35 USC 112, first paragraph, was
satisfied:
>
Patent owner submits that:
" ... a priority claim as a continuation application is validly made in any design
patent that contains an embodiment that is also present in the application to
which the priority claim is made. Accordingly, the presence of the embodiment
shown in Figs. 1 and 2 of the '197 patent in the '251 patent clearly establishes
that the '197 patent is entitled to the claim priority as a continuation of the '251
patent ... "
The Examiner respectfully disagrees. While a priority claim can be made from
the disclosure of a common embodiment, the '251 Patent does not disclosed the
design shown in the '197 Patent. Attention is directed to the discussion
regarding the benefit of the earlier filing date at the start of this Office action.
>
Patent owner interprets the Federal Court decision from In re Gosteli, 872 F.2d at
1012, 10 U.S. P.Q.2D (BNA) at 1618, as:
" ... drawings of a continuation application need not be identical, so long as the
underlying design remains the same."
Additionally, Patent owner also submits case studies from the In re Daniels, 144
F.3d at 1457, and Zhang v. Amsel, INTERFERENCE 105550 (BPAI 2008) in an
Page 12
Art Unit: 2914

effort to show differences in configurations between continuing applications that
were granted the benefit of the filing date of an earlier application. To this end,
Patent owner asserts that the design for the control strip in the '197 Patent and
'257 Patent, while not identical, has an "underlying design" that is the same and
would be recognizable by persons of ordinary skill in the art.
The Examiner respectfully disagrees. The differences, as discussed at the start of
this Office action, are substantial and consequently presents two design that do
not share the same "underlying design" and would not have been recognizable
by persons of ordinary skill in the art. The design is directed to a specific shape
and arrangement of buttons from an electronic device. The shape of the buttons
are simple in form and do not involve substantial amounts of detailing. As a
consequence to their simple and sleek configuration, every aspect of the detailing
is essential. Therefore any differentiation in edge treatments, depth of surfaces,
proportions, and spacing between the buttons would render one design
patentably distinct from the other. Unlike the Zhang's design, of which was
directed to an entire speaker device, the '251 and '197 Patent are only directed to
a minute portion of the larger electronic device. Minor differences Zhang's '308
and '785 application are minor in the context of the entire speaker body. In
contrast, the differences between the Patent owner's '251 and '197 Patent are not
minor because the features have a larger role in the shaping of the buttons.
>
Patent owner submits that:
"... the embodiment illustrated in the drawings of the '251 patent is a

constructive reduction to practice of the embodiment illustrated Figs. 1 and 2 of
the '197 patent."
And further contends that the differences identified by the Examiner in the
previous Office action are not present had a comparison been made between the
Page 13
Art Unit: 2914

same corresponding embodiments. Specifically, Patent owner has provided
expertise testimony of the lack of differences from Professor Steven Visser and
argues that:
" ... the identified differences are not present when the appropriate comparison is
drawn between the embodiment shown in Figs. 1 and 2 of the '197 Patent and
the embodiment illustrated in the '251 Patent."
The Examiner respectfully disagrees. The differences would also be present had
a comparison been made between the design in the '251 Patent and with any of
the embodiments from the '197 Patent. Therefore, the analysis was applicable
and equally relevant to all the embodiments. The illustration provided at the
start of this Office action clearly shows the many differences in the control strip
configuration between the two patents. These differences have a significant
impact on the design for a pair of buttons that are otherwise simple in form.
While both buttons are raised, they are shown raised by clearly different depths.
Similarly, although an edge treatment can be appreciated in both control strips,
the buttons in the '251 Patent consist of singular edge whereas the buttons in the
'197 Patent consist of a double stacked edge. Furthermore, the spacing between
the buttons and the proportions of the elongated button are noticeably different.
The consequence of all these differences creates patentably distinct designs.
35 USC 112(a)
15.
The claim is FINALLY REJECTED under 35 U.S. C. 112 (pre-AlA), first paragraph, as
failing to comply with the description requirement thereof since the amendment to the
figures introduces new matter not supported by the original disclosure. The original
disclosure does not reasonably convey to a designer of ordinary skill in the art that
Page 14

Art Unit: 2914
applicant was in possession of the design now claimed at the time the application was
filed. 5
16.
Applicant is advised that there is no support in the original disclosure to add the new
views represented by Figures 9-13, of which mirrors the design in the '251 Patent. The
original disclosure of the '197 Patent does not support the addition of the new alternate
embodiment. The period to incorporate by reference expired when prosecution of the
29/259,064 ended and became the '197 Patent. Amendments may be made to the claim if
there is support to make those changes. Since the material from the '251 Patent may no
longer be incorporated into the '197 Patent, there is no support to either add a new
embodiment or amend the existing drawings to satisfy the written description
requirement.
17.
To overcome this rejection for the impermissible introduction of new matter, applicant
may provide arguments to show how the amendments do not present new matter and
persuasively explain the deficiencies in the Examiner's interpretation. If applicant does
not dispute the merits of the rejected, applicant cancel the new embodiment represented
by new Figures 9-16.
Conclusion
18.
In summary, the claim is again and FINALLY REJECTED under 35 U.S.C. 102(b) and
35 U.S. C. 112 (pre-AlA), first paragraph.
19.
THIS ACTION IS MADE FINAL. A shortened statutory period for response to this
action is set to expire one month from the mailing date of this action.
In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211
USPQ 323 (CCPA 1981 ).
Page 15
Art Unit: 2914

20.
Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings.

The provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a
reexamination proceeding. Further, in 35 U.S. C. 305 and in 37 CFR 1.550(a), it is
required that reexamination proceedings "will be conducted with special dispatch
within the Office."
21.
Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c).

A request for extension of time must be filed on or before the day on which a response to
this action is due, and it must be accompanied by the petition fee set forth in 37 CFR
1.17(g). The mere filing of a request will not effect any extension of time. An extension
of time will be granted only for sufficient cause, and for a reasonable time specified.
22.
The filing of a timely first response to this final rejection will be construed as including a
request to extend the shortened statutory period for an additional month, which will be
granted even if previous extensions have been granted. In no event however, will the
statutory period for response expire later than SIX MONTHS from the mailing date of
the final action. See MPEP 2265.
Contact Information
23.
Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Darlington Ly whose telephone number is 571-272-2617.
The examiner can normally be reached on Monday- Friday From 9AM-5PM. If attempts
to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Celia
Murphy can be reached on 571-272-2654. The fax phone number for the organization
where this application or proceeding is assigned is 571-273-8300.
24.
Information regarding the status of an application and reexamination proceedings may

be obtained from the Patent Application Information Retrieval (PAIR) system. Status
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Art Unit: 2914

information for published applications may be obtained from either Private PAIR or
Public PAIR. Status information for unpublished applications is available through
Private PAIR only. For more information about the PAIR system, see http://pairdirect.uspto.gov. If you have questions on access to the Private PAIR system, contact the
Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance
from a USPTO Customer Service Representative or access to the automated information
system, call800-786-9199 (in the USA or CANADA) or 571-272-1000.
/DARLINGTON LYI
Examiner, Art Unit 2914
28 June 2016
Office Action in Ex Parte Reexamination
Control No.
90/013,497
Patent Under Reexamination

D559197 ET AL.
Examiner
DARLINGTON LY
Art Unit
AlA (First Inventor to

File) Status
No
2914
-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -a.[8] Responsive to the communication(s) filed on 03/31/2016.
A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on _ _.
b. [8] This action is made FINAL.

c.
[8]
A statement under 37 CFR 1.530 has not been received from the patent owner.
A shortened statutory period for response to this action is set to expire;}_ month(s) from the mailing date of this letter.
Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
will be considered timely.
Part I
THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
1.
Notice of References Cited by Examiner, PT0-892.
3.
2.
[8]
Information Disclosure Statement, PTO/SB/08.
4.
Part II
D
D
Interview Summary, PT0-474.
SUMMARY OF ACTION
1a.
[8]
Claims 1 are subject to reexamination.
1b.
Claims _ _ are not subject to reexamination.
3.
D
D
D
4.
[8]
Claims under 35 USC 102(b) are rejected.
5.
Claims _ _ are objected to.
6.
The drawings, filed on _ _ are acceptable.
7.
D
D
The proposed drawing correction, filed on _ _ has been (7a)
8.
Acknowledgment is made of the priority claim under 35 U.S.C. 119(a)-(d) or (f).
2.
Claims _ _ have been canceled in the present reexamination proceeding.

Claims _ _ are patentable and/or confirmed.
a)
All b)
Some* c)
None
approved (7b)
been received.
been filed in Application No. _ _ .
D
D
been received by the International Bureau in PCT application No. _ _ .
2
3
disapproved.
of the certified copies have
D
D
not been received.
been filed in reexamination Control No. _ _
* See the attached detailed Office action for a list of the certified copies not received.
9.
Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C. D.
11, 453 O.G. 213.
10.
Other: _ _
cc: Requester (if third party requester)

U.S. Patent and Trademark Off1ce
PTOL-466 (Rev. 0813)
Office Action in Ex Parte Reexamination
Part of Paper No. 20160624
EXHIBIT
B
PATENT
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
CERTIFICATE OF MAILING
I hereby certify that this cotTespondence is being electronically filed with the United States Patent and
Trademark Offlce on September 29, 2016 at or before 11:59 p.m. Pacific Time under the Rules of 37 CFR 1. 8.
/Agnes Poon/
Agnes Poon
Control No.
Patent No.
Filed
Title
TC/A.U.
Examiner
Docket No.
Customer No.
90/013,497
D559197
April 28, 2015
Control Strip for Electronic Appliances
2914
Darlington Ly
S51-04124
135223
Confirmation No. 3198
RESPONSE TO FINAL OFFICE ACTION IN EX PARTE REEXAMINATION
Mail Stop Ex Parte Reexam

Attn: Central Reexamination Unit
P.O. Box 1450
2400 E. Kate IIa, Suite 1050

Anaheim, CA 92806
September 29, 2016
Commissioner:
Patent owner respectfully requests reconsideration of the rejection of the single
claim in view of the following remarks and the Supplemental Declaration of Steven C.
Visser dated September 28, 2016 (the Visser Decl. ), which is necessitated due to the
new interpretation of the drawings of U.S. Patent No. D559, 197 (the '197 patent) as
showing a dual edge first advanced in the Office action dated June 29, 2016 (the Office
action).
Remarks/Arguments begin on page 2 of this paper.
1.
No. 90/013,497
REPLY TO OFFICE ACTION OF JUNE 29, 2016
REEXAMINATION CONTROL
REMARKSmRGUMENTS
Status of the Claims
The single claim of the '197 patent is pending and under reexamination.
Request for Ex Parte Reexamination was filed April 28, 2015 (the Request).
Response was filed March 30, 2016 including an amendment to the figures to
incorporate the figures of U.S. Patent No. D524,251 (the '251 patent), to which the '197
patent claims priority.
Litigation Activity
U.S. Patent No. D559, 197 continues to be the subject of litigation in Case
No. 1: 14-cv-01330-RGA in the U.S. District Court for the District of Delaware. Neither
party has moved for stay of the litigation.
Summary of the Office Action
In the Office action the single claim of the '197 patent is rejected under 35 U.S. C.
102(b) as allegedly being anticipated by the publication "The Advent of Multi-Room

Digital Music: An Overview of the Sonos Digital Music System by the Envisioneering
Group" (the Envisioneering publication). The rejection is based upon the denial of the
benefit of the priority claim made in the '197 patent as being a continuation of the '251
patent.
The '197 patent was filed more than a year after the purported first date of
publication of the Envisioneering publication. The purported first date of publication of

the Envisioneering publication is after the filing date of the '251 patent.
Summary of Examiner Interview
Patent Owner wishes to thank Examiner Ly for extending the courtesy of a

telephonic interview on September 28, 2016.
Patent Owner's outside counsel David
Bailey and Brian Sung were present on the call and were joined by Patent Owner's
representative Christopher Butts. During the interview, a Draft Response to Final Office
Action in Ex Parte Reexamination (Draft Response) was discussed, a copy of which is
submitted herewith as Exhibit A. Examiner Ly indicated that the comparison of the front
2.
No. 90/013,497
views of the control strips illustrated in Fig. 2 of the '251 patent and Fig. 1 of the '197
patent is impactful with respect to the issue of whether an ordinary designer would
appreciate that the inventors of the '197 patent were in possession of the claimed
invention at the time of the filing of the '251 patent.
However, no agreement was
reached with respect to the patentability of the claim.

Examiner Ly indicated that, while he does not agree with the claim construction
relied upon by Examiner Sikder in allowing the '197 patent, Examiner Ly found no fault
in the search conducted by Examiner Sikder and does not consider Examiner Sikder's
claim construction unreasonable. Examiner Ly agreed that under Examiner Sikder's
claim construction the '251 patent would clearly disclose the more broadly construed
invention and that the '197 patent would obtain the benefit of the '251 patent's filing
date.
Furthermore, Examiner Ly indicated that he believes that the '197 patent is
patentable over the prior art of record when construed in accordance with the claim
construction relied upon by Examiner Sikder in allowing the claim.
In Examiner Ly's
analysis of the claim of the '197 patent, he noted certain differences that he believes
may not have been fully appreciated during the original prosecution and therefore were
raised in this ex parte reexamination.
It is of the Examiner's opinion that these
differences may result in a narrower interpretation of the claim than which was allowed.
Mr. Bailey disagreed that such a conclusion necessarily follows when taking the
broadest reasonable interpretation.
Examiner Ly also confirmed that a different claim construction was intentionally
applied in the Office action for the purposes of evaluating written description support in
accordance with 35 U.S. C. 112 and for the purpose of determining anticipation based
upon 35 U.S.C. 1 02. Patent Owner's counsel David Bailey indicated that the same
broadest reasonable interpretation standard is required during original prosecution and
ex parte reexamination and that the claim construction cannot change when considering
different issues during examination or at different stages of examination. See In re Man
Machine Interface Technologies LLC, 833 F.3d 1282, 1286 (Fed. Cir. 2016), citing In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.1984) ("In a reexamination, like initial
examinations, the broadest reasonable interpretation (BRI) standard is applied.").
3.
No. 90/013,497
During the Examiner Interview, Examiner Ly suggested that the prosecution

history of the '251 patent could not be and is not being considered in interpreting the
claim of the '197 patent. Patent Owner's counsel directed Examiner Ly to the following
summary of the relevant case law from the Draft Response:
When performing claim construction, the claims must be construed
in light of the prosecution history of related patents even when a right to
claim priority is challenged. See Gemalto S.A. v. HTC Corp., 754 F.3d
1364, 1371 (Fed. Cir. 2014) ("The meaning of terms appearing in the
[child] patent must be construed in light of the same terms recited in the
[grandparent] patent.") (emphasis added). Indeed, "[i]n the context of claim
construction, because a parent patent constitutes intrinsic evidence upon
which a Court can rely to construe the claims of a later continuation
patent, whether the [child] patent is entitled to the priority date of the
[parent] patent is irrelevant." E. Digital Corp. v. New Dane, No. 13-cv2897-H-BGS, 2014 WL 7139698, at *16 (S.D. Cal. Dec. 12, 2014)
(emphasis added). This is true even if the parent patent is not expressly
incorporated by reference in the child patent. /d. ("The [parent] patent file
history constitutes intrinsic evidence that the Court may use to construe
the claims of the [child] patent, even if not expressly incorporated by
reference.") (emphasis added). Furthermore, when a claim is susceptible
to more than one construction, it should be construed to preserve its
validity when reasonably possible. See Karsten Mfg. Corp. v. Cleveland
Golf Co., 242 F.3d 1376, 1384 (Fed. Cir. 2001).
At the conclusion of the interview, Examiner Ly undertook to consult with other

Examiners concerning issuance of a Notice of Intent to Issue Reexamination Certificate
(NIRC) based upon the requirement in MPEP 2111 to adopt the broadest reasonable
interpretation. Examiner Ly also indicated that he would consult with other Examiners
concerning whether any clarifying amendments might be helpful to force the '197 patent
to be construed in accordance with the claim construction relied upon by Examiner
4.
No. 90/013,497
Sikder in allowing the claim.
A draft Examiner Interview Summary was shared with
Examiner Ly after the interview, a copy of which is submitted herewith as Exhibit B.
Summary of Response
The Office action denies the '197 patent the benefit of its priority claim based
upon a set of identified differences between the control strip illustrated in Figs. 1 and 2
of the '197 patent and the control strip shown in the drawings of the '251 patent.
However, the Office action compares two of the orthographic views in the '251 patent
(i.e. Figs. 1 and 2) and with the perspective view shown in Fig. 2 of the '197 patent.
Patent Owner respectfully submits that the omission of Fig. 1 of the '197 patent (i.e. the
view that is almost identical to Fig. 2 from the '251 patent) in the comparison illustrated
on page 4 of the Office action speaks volumes.
Patent Owner questions how a
conclusion can be reached that the '251 patent does not disclose the design claimed in
the '197 patent and that the control strips have different edge treatments, when the front
views of the illustrated control strips are virtually the same.
(;;1
. . .-. . .
~
+
$251 Patent Front
~~97
5.
Patent front
No. 901013,497
Professor Visser, in paragraph 34 of his declaration, notes that "[l]t is clear that
these control strips are the same overall design. They were drafted at different scales
and include minor variations in size, proportions spacing and line quality. Any
differences are minor and do not change the overall effect of the design" (Visser Decl.,
p. 16, para 34).
Further underscoring the clear deficiency of the Office Action, the
Office action does not address Professor Visser's analysis or conclusions.

Patent Owner respectfully submits that the Office action's denial of the priority
claim is based on an incorrect inquiry. As set out in detail below, the correct inquiry is
whether the disclosure of the '251 patent "reasonably conveys to those skilled in the art
that the inventor had possession of the claimed subject matter'' of the '197 patent given
its broadest reasonable interpretation. See Ariad Pharms., Inc. v. Eli Lilly & Co. (Ariad),
598 F.3d 1336, 1351 (Fed. Cir. 201 0) (en bane).
The statement of the rejection implicitly relies upon a claim construction that is
neither reasonable nor the broadest reasonable interpretation of the claim of the '197
patent.
The narrowness of this claim construction is inconsistent with the original
Examiner's
broader and
reasonable
interpretation,
inconsistent with
the claim
construction relied upon when considering the visual similarity of Patent Owner's own
products described in the Envisioneering publication, inconsistent with the drawings of
the '197 and '251 patents, and inconsistent with Professor Visser's interpretation (an
industrial design expert with over 30 years of experience).
Patent Owner further
submits that the narrow claim construction impermissibly disregards the prosecution
history of the '251 patent, which must be considered irrespective of the validity of the
'197 patent's priority claim, when interpreting the edge treatment illustrated in the '197
patent.
See Gemalto S.A. v. HTC Corp., 754 F.3d 1364, 1371 (Fed. Cir. 2014); see
also E. Digital Corp. v. New Dane, No. 13-cv-2897 -H-BGS, 2014 WL 7139698.
Furthermore, the adoption of the narrower claim construction is in direct violation of the
direction from the CAFC that claims that are susceptible to more than one construction
should be construed to preserve its validity. See Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F .3d 1376, 1384 (Fed. Cir. 2001 ).
Importantly, the narrowness of this claim construction is inconsistent with
statements made by the original Examiner during the prosecution of the '197 patent
6.
No. 90/013,497
applying the broadest reasonable interpretation of the claim. The claim construction
relied upon in denying the '197 patent the benefit of its priority claim is also different
from the broader construction utilized to conclude that the Sonos Zone Player ZP1 00
and Sonos Controller described in the Envisioneering publication anticipate the claim of
the '197 patent.
See Office action, p. 6.
The implicit claim construction includes
requirements regarding specific button widths, heights, and proportions.
The implicit
claim construction also introduces the requirement of a "dual edge" for the first time and,
without explanation, converts a previous requirement of "a pronounced narrow bevel at
the top edge of each button" into "a top edge [that] is squared". See Office action dated
December 30, 2015, p. 2; see also Office action, p. 3. By contrast, the Office action
concludes that "the appearance of the volume control strip featured on the Sonos Zone
Player ZP 100 and Sonos Controller are substantially the same as that of the claimed
design" without requiring specific button widths, heights, proportions or a "dual edge, of
which the top edge is squared and the bottom edge is tapered." See Office action, p. 6.
Instead of withdrawing the rejection of '197 patent in view of Professor Visser's
expert testimony, the Office action chose to adopt an even narrower claim construction.
The new construction is both inconsistent with the drawings of the '197 patent and
generally disregards Professor Visser's expert opinion regarding the manner in which
the originally filed drawings of the '251 and '197 patents would be interpreted by an
ordinary designer. The evidence provided by Professor Visser clearly establishes that
the disclosure of the '251 patent reasonably conveys to a person of ordinary skill in the
art that the inventor was in possession of the control strip design claimed in the '197
patent at the time of the filing of the '251 patent. The Visser Supplemental Declaration
(the Visser Sup. Decl.) submitted herewith also establishes that the Office action relies
on an incorrect interpretation of the parallel lines that illustrate an edge treatment in Fig.
2 of the '197. 1
Instead of treating Professor Visser's declarations with considerable
Visser Sup. Decl. necessitated due to interpretation of parallel lines shown in Fig. 2 of the '197 patent
being interpreted as a "dual edge, of which the top edge is squared and the bottom edge is tapered" for
the first time in the Office action. See Office action, p. 3. The Visser Sup. Decl. is necessary to provide
evidence concerning the manner in which an ordinary designer would interpret the parallel lines shown in
Fig. 2 of the '197 patent for the purposes of appropriately construing the claim of the '197 patent.
7.
No. 90/013,497
deference, the Office action disregards Professor Visser's opinions without comment.
See MPEP (9th ed. Rev. 7, Nov. 2015) 716.01 (c)(lll).
When the claim of the '197
patent is given its broadest reasonable interpretation, the record establishes that the
'197 patent is entitled to claim priority as a continuation to the '251 patent.
The Office action also disregards the fact that the MPEP requires verification of
the '197 patent's priority claim during its original examination. No objection was raised
at that time with respect to the right of the '197 patent to claim priority as a continuation
of the '251 patent.
Had an objection been raised during prosecution, Patent Owner
could have availed itself of a number of mechanisms to perfect the right of priority
including an amendment to the claim of the '197 patent during original prosecution
and/or filing a reissue of the '251 patent. Now, the time period has passed to exercise
many of the options available to the Patent Owner during the prosecution of the '197
patent and the USPTO is denying Patent Owner's attempts to provide clarifying
amendments that would confirm the right of the '197 patent to claim priority to the '251
patent. As such, the unilateral adoption of an impermissibly narrow claim construction
during this ex parte reexamination proceeding punishes Patent Owner for placing its
faith in the rigor of the USPTO's original examination of the '197 patent. Correctly
construing the claim of the '197 patent avoids this injustice and clearly establishes the
right of the '197 patent to claim the benefit of the filing date of the '251 patent.
The following discussion provides an overview of the case law governing the
correct manner for evaluating the validity of a priority claim, which confirms both the
right of the '197 patent to claim priority as a continuation of the '251 patent and the
validity of the claim of the '197 patent in view of the Envisioneering publication (which
describes a commercial embodiment of the claimed invention).
Based upon the
analysis presented below, Patent Owner respectfully requests withdrawal of the

rejection of the claim of the '197 patent and prompt issuance of a reexamination
certificate confirming the '197 patent's continued validity.
Accordingly, submission of the Visser Sup. Decl. after final rejection, but before or on the same date of
filing an appeal is appropriate under 37 C.F.R. 1.132.
8.
No. 90/013,497
Entitlement to Benefit of Earlier Filed Application

MPEP 211.05 sets out the requirement for establishing the right to claim the
benefit of the filing date of an earlier filed application as follows:
"Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the
benefit of the filing date of an earlier filed U.S. application if the subject
matter of the claim is disclosed in the manner provided by 35 U.S.C.
112(a) except for the best mode requirement,
in the earlier filed
application. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d
1829 (Fed. Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA
1978)."
MPEP 211.05.
A central issue in this ex parte reexamination proceeding is whether the design

claimed in the '197 patent is supported by the written description of the '251 patent to
which it claims priority. The Federal Circuit has provided that, "the test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject matter as of the
filing date." Ariad, 598 F.3d at 1351; see also In re Daniels, 144 F.3d 1452, 1456 (Fed.
Cir. 1998).
The test for sufficiency of the written description is the same for design
patents as for utility patents. In re Daniels, 144 F.3d at 1456.

The Ariad court further explained, "the test requires an objective inquiry into the
four corners of the specification from the perspective of a person of ordinary skill in the
art" and "[b]ased on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually invented the
invention claimed." Ariad, 598 F.3d at 1351.
As discussed in greater detail below, differences between the drawings of the
continuation application and the earlier filed application are permissible. Simply listing
differences between the drawings of one application and the other as done in the Office
action provides no insight into whether the earlier application "reasonably conveys to
those skilled in the art that the inventor had possession of the claimed subject matter."
/d.
9.
No. 90/013,497
Differences in Drawings are Permissible

In Racing Strollers, the Federal Circuit stated, "[a]s a practical matter, meeting
the [written description] requirement of 112 is, in the case of an ornamental design,
simply a question of whether the earlier application contains illustrations, whatever
form they may take, depicting the ornamental design illustrated in the later application
and claimed therein by the prescribed formal claim." Racing Strollers Inc. v. TRIIndus.
Inc., 878 F.2d 1418, 1420 (Fed. Cir. 1989) (emphasis added); see also In re Daniels,
144 F.3d at 1456 ("The inquiry is simply to determine whether the inventor had
possession at the earlier date of what was claimed at the later date.") (emphasis
added). The references to "whatever form they may take" and "prescribed formal claim"
acknowledge that the illustration of an inventive design can change in form, without
violating the written description requirement.
See Racing Strollers Inc., 878 F.2d at
1420.
The proper analysis of whether a claim in a continuation application has support
in an earlier-filed application involves more than merely comparing the figures of the
later application to the earlier application. See In re Daniels, 144 F.3d at 1457 ("The
Board was incorrect in holding that any change in the design defeats a priority claim as
a matter of law.") Written description is correctly evaluated by interpreting the claimed
subject matter in the later application and determining that the earlier filed application
reasonably conveys to a person of ordinary skill in the art that the inventor had
possession of the claimed subject matter as of the earlier filing date. See Ariad, 598
F.3d at 1351. That the earlier-filed application does not describe the later application's
claimed subject matter in the exact same manner is of no moment. E.g., Eiselstein v.
Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995).
Standards for Construing Claims in Ex Parte Reexaminations

When evaluating the scope of claimed subject matter in an ex parte
reexamination, the claims must be "given their broadest reasonable interpretation
consistent with the specification." MPEP 2111. "The Patent and Trademark Office
('PTO') determines the scope of claims in patent applications not solely on the basis of
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No. 90/013,497
the claim language, but upon giving claims their broadest reasonable construction 'in
light of the specification as it would be interpreted by one of ordinary skill in the art."'
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005), citing In reAm. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "In a reexamination, like initial
examinations, the broadest reasonable interpretation (BRI) standard is applied." In re
Man
Machine
Interface
Technologies LLC,
833
F.3d
at
1286,
citing
In
re
Yamamoto, 740 F.2d at 1571. Accordingly, an analysis of whether "the inventor actually
invented the invention claimed" in an ex parte reexamination must commence by
construing the claimed invention based upon its broadest reasonable interpretation. See
Ariad, 598 F.3d at 1351; see also MPEP 2111.

When construing a claim, a court must look first to the intrinsic evidence, which
consists of the patent, the specification, the prosecution history, and the cited
references. See Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362
(Fed. Cir. 2015); Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014);
Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996). When the
intrinsic evidence is clear, claim construction cannot be based on contrary extrinsic
evidence. See Vitronics Corp., 90 F.3d at 1583. When performing claim construction,
the claims must be construed in light of the prosecution history of related patents even
when a right to claim priority is challenged. See Gemalto S.A., 754 F.3d at 1371 ("The
meaning of terms appearing in the [child] patent must be construed in light of the same
terms recited in the [grandparent] patent.") (emphasis added). Indeed, "[i]n the context
of claim construction, because a parent patent constitutes intrinsic evidence upon which
a Court can rely to construe the claims of a later continuation patent, whether the [child]
patent is entitled to the priority date of the [parent] patent is irrelevant." E. Digital Corp.,
2014 WL 7139698, at *16 (emphasis added). This is true even if the parent patent is
not expressly incorporated by reference in the child patent. /d. ("The [parent] patent file
history constitutes intrinsic evidence that the Court may use to construe the claims of
the [child] patent, even if not expressly incorporated by reference.") (emphasis
added).
Furthermore, when a claim is susceptible to more than one construction, it
should be construed to preserve its validity when reasonably possible. See Karsten Mfg.
Corp., 242 F.3d at 1384.

11.
No. 90/013,497
When there are multiple embodiments disclosed in a design patent, the claim of
the design patent must be construed as encompassing all of the illustrated
embodiments and cannot be limited to a specific description of any one of the
embodiments. See Trucook, L.L. C. v. Bond/He/man, Inc., No. 00 CV 4865, 2001 WL
826864, at *4 (N.D. Ill. July 18, 2001) (finding that when a cooking utensil included
different temperature gauges that were patentably indistinct in different figures, the
patent "cannot be limited to the four gauges shown ... it protects meat fork-thermometers
with the patented design that contain either a gauge pictured ... as well as other possible
gauges having a de minimis impact on the design's overall visual impression ... a claim
construction that includes a specific description of the gauge would be improper.").
Instead, the claim must be construed to encompass the single inventive concept
common to the alternative embodiments. See Golan v. Pingel, No. CV 99-3143 MRP,
1999 WL 33633104 (C.D. Cal. Nov. 4, 1999) (finding that the patent was "limited to the
single inventive concept common to the five alternate embodiments disclosed in the
application."); see also Antonious v. Spalding & Evenflo Companies., Inc., 217 F.3d
849, 1999 WL 777450, at *7-8 (Fed. Cir. 1999) (unpublished) (concluding that the
drawings disclosed at most different embodiments of one design based on evaluating
the overall common appearance that was conveyed by the drawings).
Once the claim of the design patent is construed, the inquiry regarding the
validity of a priority claim made under 35 U.S. C. 120 turns to the question of "whether
the disclosure of the application relied upon reasonably conveys to those skilled in the
art that the inventor had possession of the claimed subject matter as of the filing date."
Ariad, 598 F.3d at 1351.
By contrast, the Office action simply highlights purported
differences between the drawings in the '197 and '251 patents. The Office action
implicitly adopts a narrow claim construction in order to deny the '197 patent its priority
claim without considering the common features of the alternative embodiments
illustrated in the '197 patent, or the prosecution histories of the '197 and '251 patents.
This narrow claim construction is adopted despite the clear obligations placed upon the
USPTO to adopt the broadest reasonable interpretation of the claim, and a construction
that preserves the validity of the claim.
Furthermore, the Office action makes no
attempt to analyze whether the specification of the '251 patent conveys to an ordinary
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No. 90/013,497
designer possession of the invention claimed in the '197 patent at the time of filing of
the '251 patent. Considerable deference should be given to expert opinions regarding
the disclosure conveyed by an earlier-filed application to an ordinary designer and the
Office action disregards Professor Visser's declaration filed on March 31, 2016
regarding the disclosures of the '197 and '251 patents without comment. Based upon
the findings of fact set out in Professor Visser's declaration, the '251 patent clearly
discloses the inventive control strip claimed in the '197 patent and the '197 patent's
priority claim is appropriate. The treatment of expert opinions, when evaluating whether
a priority claim satisfies 35 U.S. C. 120, is discussed further below.
Probative Value of Expert Opinion when Determining what Is Reasonably

Conveyed to those Skilled in the Art
Evaluation of a right of priority to the filing date of an earlier-filed application

requires determining "whether the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad, 598 F.3d at 1351.
The declaration of
Professor Visser documents his opinion that the '251 patent does convey to a person of
ordinary skill in the art that its inventors had possession of the control strip design
claimed in the '197 patent at least as early as the filing data of the '251 patent. See
Visser Decl., p. 16, paragraph 37 ("When the first embodiment of the '197 patent is
compared with the embodiment in the '251 patent, it is clear that they have the same
underlying design, with only minor differences."), p. 44, paragraph 50 ("it is my
conclusion that one of ordinary skill would find that the cumulative effect of the figures of
the first embodiment of the '197 patent to illustrate the same underlying design as in the
'251 patent, and any differences are minimal."). The Office action makes no mention of
Professor Visser's declaration.
In accordance with the MPEP, consideration should be given to all declarations
submitted under 37 C. F. R. 1.132 that traverse the grounds of a rejection or present
sufficient facts to overcome the rejection. See MPEP 716. When the evidence
presented is deemed insufficient to overcome the rejection, the statement of rejection
must specifically explain why the evidence is insufficient; general statements without
13.
No. 90/013,497
explanation supporting such findings are an inappropriate basis for maintaining a

rejection. See MPEP 716.01 (B).
In assessing the probative value of an expert opinion, an examiner must consider
the nature of the matter sought to be established, the strength of any opposing
evidence, the interest of the expert in the outcome of the case, and the presence or
absence of factual support for the expert's opinion. MPEP 716.01 (c)(lll) (citing
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985)).
While an opinion as to a legal conclusion is not entitled to any weight, the underlying
basis for the opinion may be persuasive. /d. In contrast, expert opinion on what the prior
art taught, supported by documentary evidence, should receive considerable deference.
/d. (citing In re Carroll, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979)). By extension,
Professor Visser's opinions concerning what is conveyed by the specification of '251
patent should also receive considerable deference.
Correctly analyzed, the '197 patent is entitled to claim priority to the '251 patent.
Processor Visser's declarations establish that the specification of the '251 patent
conveys to the ordinary designer that its inventors were in possession of the inventive
design claimed in the '197 patent. The failure of the Office action to correctly evaluate
the '197 patent's priority claim in view of the case law discussed above is elaborated
below.
Priority Claim Denied Based Upon Incorrect Analysis

Verifying the right of the '197 patent to claim priority to the filing date of the '251
patent requires asking "whether the disclosure of the application relied upon reasonably
subject matter as of the filing date." Ariad, 598 F.3d at 1351. By contrast, the Office
action denies the '197 patent's priority claim based upon nothing more than an assertion
that the design illustrated in one or more of the drawings of the '197 patent is
"substantially different" from the design illustrated in the earlier '251 patent. There is no
basis in the MPEP or case law for this test as applied in the rejection.
The Office action denies the '197 patent the benefit of its priority claim by
implicitly adopting a narrow claim construction requiring the presence of all of the details
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No. 90/013,497
highlighted in the Office action dated June 29, 2016. This claim construction is clearly
inconsistent with the prosecution histories of the '197 and '251 patents. Furthermore,
the claim construction relied upon denying the '197 patent its priority claim is not the
same as the broader claim construction relied upon when finding that Patent Owner's
Sonos Zone Player ZP1 00 and Sonos Controller described in the Envisioneering
publication anticipate the claim of the '197 patent. See Office action, p. 6.
The statement of the rejection does not consider Professor Visser's declaration in
determining what the specification of the '251 patent conveys to a person of ordinary
skill in the art. When the claim is interpreted and analyzed properly in accordance with
the MPEP and case law, it is clear that the '251 patent reasonably conveys to those
skilled in the art that the inventor had possession of the design claimed in the '197
patent.
The implicit claim construction relied upon in the statement of the rejection, the
inconsistency of this claim construction with the prosecution histories of the '197 and
'251 patents, the broader claim construction utilized when comparing the Sonos Zone
Player ZP1 00 and Sonos Controller described in the Envisioneering publication to the
'197 patent, and the failure of the Office action to address Professor Visser's declaration
are separately addressed below.
Claim Construction Implicit in Statement of Rejection
The statement of rejection of the '197 patent does not explicitly adopt a claim
construction in the manner required by the Ariad court. The statement of rejection does,
however, adopt an implicit claim construction in denying the '197 patent the benefit of its
priority claim to the '251 patent.
Specifically, the Office action identifies differences
between the embodiments of the inventive control strip design illustrated Figs. 1 and 2
of the '197 patent and the figures of the '251 patent. Despite the direction given by the
Federal Circuit in In re Daniels that differences between drawings do not defeat a
priority claim, the statement of the rejection implicitly asserts that each difference is an
essential requirement of the claim of the '197 patent. The Office action acknowledges
the simple elegance and distinctiveness of Patent Owner's design. See Office action, p.
12.
However, the Office action arbitrarily concludes that the simplicity of the Patent
15.
No. 90/013,497
Owner's design necessitates an extremely narrow claim construction stating that "every
aspect of the detailing is essential". /d.
No attempt is made to identify the common
features of the alternative embodiments illustrated in the '197 patent. See Golan, 1999
WL 33633104. The specific differences are identified in the Office action as follows:
The displacement of the top squared button from the button
elongated button is narrower in the '251 Patent than it is in the '197
Patent. While this difference in distance between the two buttons may be
an obvious modification or may have a de minimis effect on the overall
arrangement, the difference becomes critical when compounded with
other differences ...
The depth at which the buttons are raised is shallower in the '251
Patent than it is in the '197 Patent. ..
The proportions between the width and length of the bottom button
is longer and narrower in the '251 Patent than it is in the '197 Patent. The
overall elongation of the button in the former patent is noticeably
different. ..
The buttons in the '251 Patent are shown with a squared edge in
Figure 2.
However, between Figures 1, 3 and 4, the buttons can be
construed as having a shallow depth with a tapered or contoured edge.

Neither a squared edge nor a tapered/contoured edge is consistent and
shown in the button configuration of the '197 Patent.
The '197 Patent
shows the buttons having dual edge, of which the top edge is squared and
the bottom edge is tapered ...
The cumulative effect of the above differences results in a button
strip configuration that is substantially different. No link in appearance can
be made between the two button strip designs.
Office action, p. 3.
Implicit Claim Construction Inconsistent with Prosecution History
The statement of the rejection makes no reference to the prosecution history of

the '197 patent. The prosecution history clearly establishes that Examiner Sikder, the
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No. 90/013,497
primary examiner who originally examined the '197 patent, construed the claim of the
'197 patent according to its broadest reasonable interpretation.
Indeed, statements
made by Examiner Sikder during prosecution explicitly contradict the claim construction
that is implicitly relied upon in the present reexamination to deny the '197 patent the
benefit of its priority claim. In adopting a narrower claim construction, the Office action
fails to establish that the broader interpretation adopted by Examiner Sikder is
unreasonable.
The unduly narrow claim construction relied upon in rejecting the '197 patent
stands in stark contrast to the broad and reasonable claim construction that formed the
basis of the allowance of the '197 patent. The fact that the inventive design claimed in
the '197 patent is not limited to specific button proportions, button heights, and/or button
spacing is explicitly stated by Examiner Sikder in a Restriction Requirement mailed Dec.
5, 2006 and reiterated in the Notice of Allowability mailed July 31, 2007. 2 In allowing
the '197 patent, Examiner Sikder correctly construed the claim of the '197 patent
broadly based upon the overall impression of the embodiments illustrated in the '197
patent - the same overall impression created by the illustration of the control strip
disclosed in the '251 patent. See Visser Sup. Decl., p. 4.
The Office action also fails to consider that the '251 patent is itself part of the
prosecution history of the '197 patent when construing the claim of the '197 patent. See
Gemalto S.A., 754 F.3d at 1371; see also Straight Path IP Grp., Inc., 806 F.3d at 1362;
Tempo Lighting, Inc., 742 F.3d at 977; and E.Digital Corp., 2014 WL 7139698, at *16
(emphasis added). The '251 patent forms part of the intrinsic evidence that must be
. .
.
.
.
.
See Restnct1on Requirement ma1led Dec. 5, 2006 at p. 2 ("The embodiments disclosed ... have overall appearances that are
basically the same. Furthermore, the differences between them are considered minor and patentably indistinct, or are shown to be
obvious in view of analogous prior art cited.
The minimal change in proportions of the control buttons do not create
patentably distinct designs ... These embodiments thus comprise a single inventive concept." emphasis added); see also Notice of
Allowability mailed July 31, 2007, at p. 3 ("The ... embodiments are considered by the examiner to present overall appearances that
are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and
patentably indistinct, or are shown to be obvious in view of analogous prior art cited. The minimal change in the proportions of
the control buttons and the inclusion/exclusion of the opaque/transparent oval feature between the control buttons does
not create a patentable distinction." emphasis added).
17.
No. 90/013,497
OF JUNE 29, 2016
REPLY TO OFFICE ACTION
considered when construing the claim of the '197 patent.
The Office action fails to
consider the originally filed drawings of the '251 patent when interpreting the edge
treatment illustrated in Fig. 2 of the '197 patent.
As a result, the Office action adopts a
claim construction requiring a "dual edge". A "dual edge" is not actually illustrated in
Fig. 2 of the '197 patent and the construction is inconsistent with the softened edge
treatment shown in the originally filed drawings of the '251 patent; a result the Federal
Circuit has cautioned against. See, e.g., Belden Inc. v. Berk-Tek LLC, 610 F. App'x 997,
1002 (Fed. Cir. 2015) ("[T]he Board should construe claims consistently across a family
of related patents .... ") (unpublished).
The Office action's reliance on a claim construction that is inconsistent with the
prosecution histories of the '197 and '251 patents is neither a reasonable construction
nor the broadest reasonable construction of the claim of the '197 patent.
Examiner
Sikder adopted a broader construction and did not object to the '197 patent's priority
claim (see discussion below).
Furthermore, the edge treatment illustrated in the '197
patent is interpreted in a manner inconsistent with the originally filed drawings of the
'251 patent. See Visser Sup. Decl.,
~~
15-20. Accordingly, Patent Owner respectfully
submits that the Office action's denial of the '197 patent's right to claim priority to the
filing date of the '251 patent is entirely a consequence of adopting an unreasonable and
impermissibly narrow construction of the '197 patent. On this basis alone, the rejection
of the '197 patent should be withdrawn. However, the inappropriateness of the rejection
is further highlighted by Professor Visser's declarations, which establish that the
specification of the '251 patent clearly conveys to an ordinary designer possession of
the control strip design claimed in the '197 patent at the time of the filing of the '251
patent.
Specification of '251 Patent Establishes Possession of Claimed Invention
Professor Visser's initial declaration provides evidence directly relevant to

skill in the art. Instead of deferring to Professor Visser - a scholar and award winning
designer with over 30 years of relevant industrial design experience - regarding the
18.
No. 90/013,497
disclosure of the '251 patent, the Office action avoids any discussion of Professor
Visser's expert opinion.
Professor Visser's analysis commences with a comparison of views of the
respective control strips from both patents that are the same (reproduced below).
Nl
vof
'251 Patent Front
'197 Patent Front
differences are minor and do not change the overall effect of the design" (Visser Decl.,
p. 16, para 34 ). In reaching this conclusion, Professor Visser interprets the design of
the '197 patent in a manner consistent with the claim construction adopted by Examiner
Sikder during the original prosecution of the'197 patent.
Professor Visser's extensive comparison continues by considering all views of
the respective embodiments from the '251 and '197 patents.
19.
No. 90/013,497
'19?
Front
Perspenive
In delving into the question of whether the '251 patent conveys to an ordinary
designer the control strip design claimed in the '197 patent, Professor Visser
investigates the detail shown in the above figures.
In paragraph 40 of his declaration, Professor Visser concludes:

20.
No. 90/013,497
"The perspective view in Fig. 2 of the '197 patent is drawn with a

softened edge treatment on the upper portion of the button. Specifically,
two parallel lines are drawn to indicate that the button edge is not sharp,
but has a soft edge. In drafting of electronics and other small products, it
is possible to indicate the edge treatment with two parallel lines to indicate
tangency lines of the edge and the sides of the buttons.
CAD software
typically uses shading or tangency lines to indicate edges in a drawing.

The original filing of the '251 patent appears to be a shaded CAD drawing.
It is my opinion that one of ordinary skill in the art at the time of the filing of
the '251 patent would interpret the shading as showing an edge treatment
on the buttons."
Visser Decl., p. 18.
Professor Visser's supplemental declaration expands upon the above discussion

by presenting examples from Koos Eissen et al., Sketching: Drawing Techniques for
Product Designers 16 (2007) concerning the interpretation of shadow lines in the
originally filed drawings of the '251 patent.
See Visser Sup. Decl.,
~~
15 - 20.
Accordingly, Professor Visser concludes that the '251 patent conveys possession of the
design claimed in the '197 patent to an ordinary designer. As such, Professor Visser's
findings of fact support the legal conclusion that the '197 patent is entitled to claim
priority to the '251 patent.
The Office action contains no discussion of any of the issues raised by Professor
Visser or of Professor Visser's declaration.
The statement of the rejection does not
address Professor Visser's opinion that the minor variations in size, proportions, and
spacing do not result in different designs. Furthermore, the statement of the rejection
ignores Professor Visser's conclusions based on the originally filed drawings of the '251
patent (as opposed to the formal drawings published in the issued patent) that the '251
patent discloses the softened edge treatments of the design illustrated in the '197
patent.
Instead, the Office action narrowly construes the '197 patent as requiring a
"dual edge, of which the top edge is squared and the bottom edge is tapered."
action, p. 3.
Office
As discussed in detail below, the requirement of a "dual edge" is

21.
No. 90/013,497
inconsistent with the drawings of the '197 patent.
Furthermore, the "dual edge"
limitation ignores Professor Visser's opinion that an ordinary designer would understand
the parallel lines as indicating a softened edge treatment.
The inconsistency of the
"dual edge" limitation with the manner in which an ordinary designer would understand
the parallel lines illustrated in Fig. 2 of the '197 patent is discussed at length in
Professor Visser's supplemental declaration with reference to the text books Drawing
for Product Designers and Sketching: Drawing Techniques for Product Designers.
Professor Visser's opinions concerning the disclosure conveyed
by the
specification of '251 patent should receive considerable deference. The statement of

the rejection does not explain why the evidence offered by Professor Visser is
insufficient to establish that the specification of the '251 patent conveys the control strip
design claimed in the '197 patent to an ordinary designer.
Accordingly, the MPEP
dictates that the objection to the priority claim of the '197 patent is inappropriate in view
of Professor Visser's declaration and must be withdrawn. See MPEP 716.01 (B).
New "Dual Edge" Theory is Inconsistent with the lnstrinsic Evidence and the
Initial Office Action
As noted above, the statement of rejection construes the '197 patent as
requiring buttons having a "dual edge, of which the top edge is squared and the bottom
edge is tapered" (Office action, p. 3). Applicant understands this construction to require
buttons with the following geometry/features:
Applicant respectfully submits, however, that such a "dual edge" construction is

unreasonable because it is inconsistent with the drawings of the '197 patent, the
drawings of the '251 patent, and the initial Office action dated December 30, 2015 (the
22.
No. 90/013,497
Non-final Office action). The "dual edge" construction also ignores the fact that Fig. 1 of
the '197 patent and Fig. 2 of the '251 patent illustrate control strips with the same edge
treatment. The unreasonableness of the "dual edge" requirement is highlighted by the
fact that the Office action uses a different claim construction, one that does not require a
"dual edge", when finding that "the appearance of the volume control strip featured on
the Sonos ZoneP/ayer ZP100 and Sonos Controller are substantially the same as that
of the claimed design." Office action, p. 6.
Professor Visser notes that parallel lines are commonly used "[t]o show a
softened edge treatment on a recti liner form ... ". See Visser Sup. Decl.,
24 and
provides a number of examples from Drawing for Product Designers and Sketching:
Drawing Techniques for Product Designers.
Professor Visser also discusses the
illustration of multiple roundings in perspective views noting the presence of tapered

hooks as the two lines indicating the rounding converge together at corners.
The top edge of the control strip in Fig. 2 of the '197 patent (reproduced below)
cannot be "squared" because the parallel lines at the lower left hand corners of the
buttons (see arrows) in the perspective view are not consistent with the top edge being
squared.
As Professor Visser illustrates in the images below, the tapered hook visible in
the bottom left corner of each button is consistent with a softened edge and inconsistent
with a squared edge.
23.
No. 90/013,497
.
.
.
Visser Sup. Decl., p 15.
Professor Visser notes that "[t]he Office action suggests that the two lines
indicate a 'dual edge' involving a squared edge at the top and a taper for the bottom. If
this were true then this hook would not be seen". Visser. Sup. Decl.,
Visser. Sup. Decl.
27; see also
31 ("However, this tapered hook is consistent with showing a
softened edge treatment, in which the first line indicates the tangency of the edge
treatment. The surface of the edge treatment continues to extend outward as it curves
downward, and the second line indicates the end of this edge treatment tangent to a
surface extending downward.").
Patent Owner further submits that the top edge of the control strip shown in the
'197 patent cannot be "squared" because such an interpretation is not consistent with
the curved or softened edge treatment shown in the originally filed drawings of the '251
24.
No. 90/013,497
patent including the CAD shading shown in Fig. 2 above that indicates a softened edge
treatment and the softened edge treatment shown in Fig. 4 below.
The "dual edge" requirement set forth for the first time in the Office action dated
June 29, 2016 is contrary to the Remarks in the initial Non-final Office action. Indeed,
the Non-final Office action distinguished the control strip design in the '197 patent from
that of the '251 patent by asserting that the '197 patent control strip includes "a
pronounced narrow bevel at the top edge of each button." Non-final Office action, p. 2.
In other words, the Non-final Office action concluded that the top edge of each of the
buttons shown in '197 patent is angled (i.e., not "squared").
While the Final Office action has taken the position that the control strip disclosed
in the '197 patent is "substantially different" from the control strip disclosed in the '251
patent, it does not explain how this can be the case given that Fig. 1 of the '197 patent
(reproduced below on right) and Fig. 2 of the '251 patent (reproduced below on left)
illustrate control strips with the same edge treatment.
25.
No. 90/013,497
~2t:
,.)' J
- r;
ratent
rt ont
Ck
'<
Patent Owner also wishes to draw attention to the fact that the Office action
utilizes a different construction of the claim of the '197 patent that does not require a
"dual edge" when concluding that the Sonos Zone Player ZP100 and Sonos Controller
described in the Envisioneering publication anticipate the claim of the '197 patent. A
determination of anticipation is made as follows:
"Under this standard, the appearance of the volume control strip
featured on the Sonos ZoneP/ayer ZP100 and Sonos Controller are
substantially the same as that of the claimed design.
Specifically, the
vertical arrangement of dual buttons, top squared, button and bottom

rectangular button, distance between buttons, oblong indication light,
raised configuration of the buttons and narrow bezel or trip surrounding
each button are all mutually inclusive features of the '197 Patent and the
prior art references of the Sonos ZoneP/ayer ZP100 and Sonos Controller.
To this end, it is clear that the '197 Patent is directed to the same volume
control strip featured on the Sonos ZoneP/ayer ZP100 and Sonos
Controller."
26.
No. 90/013,497
Patent Owner notes the absence of discussion of specific button widths, heights,
proportions and "dual edges" in concluding that the Sonos ZoneP/ayer ZP100 and
Sonos Controller include volume control strips with the same shared visual appearance
between and the claimed design from the '197 patent.
Indeed, Patent Owner can
present no more compelling evidence that the denial of the '197 patent's priority claim is
based upon an unreasonably narrow claim construction than the fact that the Office
action itself relies upon a broader claim construction that does not require specific
button widths, heights, proportions, or "dual edges" when evaluating anticipation.
Conclusion Regarding Right of Priority
Patent Owner respectfully submits that the denial of the priority claim within the
'197 patent to the benefit of the filing date of the '251 patent is based upon a claim
construction that is not the broadest reasonable interpretation of the claim of the '197
patent. As demonstrated above, the narrow claim construction relied upon in denying
the priority claim is unreasonable due to its inconsistency with the claim construction
relied upon in allowing the claim of the '197 patent, the originally filed drawings of the
'251 patent, and the claim construction utilized in this ex parte reexamination when
comparing the Sonos Zone Player ZP1 00 and Sonos Controller described in the
Envisioneering publication to the claim of the '197 patent.
The narrow claim
construction relied upon in denying the '197 patent its priority claim is not a reasonable
interpretation of the claimed design and is adopted without any explanation regarding
why both Examiner Sikder's and Professor Visser's interpretation of the drawings of the
'197 patent is incorrect.
The Office action urges that consideration be given to the cumulative effect of the
differences relied upon in denying the '197 patent the benefit of its priority claim. The
cumulative effect of relying upon the identified differences is the adoption of a claim
construction that is inconsistent with the prosecution history of the '197 and '251
patents, the understanding of an ordinary designer, and the drawings of the '197 patent
themselves.
Accordingly, Patent Owner respectfully submits that the '197 patent is

27.
No. 90/013,497
entitled to claim priority to the '251 patent and requests withdrawal of the rejection of the
claim of the '197 patent based upon the Envisioneering publication, which is not prior art
with respect to the inventive control strip claimed in the '197 patent.
While the above discussion is alone sufficient to warrant the issuance of a
reexamination certificate confirming the validity of the '197 patent, Patent Owner
submits a number of additional remarks highlighting the inequity of denying an issued
patent the benefit of its priority claim based upon application of a narrower claim
construction that that relied upon in allowing the claim, and a recent announcement by
the Director of the USPTO Michelle K. Lee concerning the need to supplement the
provisions in the MPEP relating to the appropriate application of the written description
requirement when evaluating priority claims in design patent applications. See Request
for Comments on the Application of the Written Description Requirement to Specific
Situations in Design Applications, 80 Fed. Reg. 22233 (Apr. 15, 2016).
Denial of Procedural Remedies Due to Application of Incorrect Claim

Construction
The MPEP requires verification of the '197 patent's priority claim during its
original examination. See MPEP 1504.
There is no evidence that the lack of any
objection to the priority claim was an oversight.
Quite the contrary, the prosecution
history of the '197 patent establishes that that Examiner Sikder was vigilant with respect
to issues regarding 35 U.S. C. 112. See Notice of Allowance, Examiner's Amendment,
at p. 2 ("However, applicant submitted new drawings modifying the original disclosure
by eliminating the trim around the control buttons. Such constitutes a rejection of the
claim under 35 U.S.C. 112 first paragraph as introducing new matter. To avoid
such a rejection, applicant's attorney, per above conversation, has agreed to modify the
trim around control buttons as originally filed into broken lines.").
Furthermore,
Examiner Sikder adopted a broader claim construction than the claim construction relied
upon in denying the '197 patent the benefit of its priority claim in this ex parte
reexamination proceeding. The claim construction relied upon by Examiner Sikder was
reasonable and construes the claim of the '197 patent in a manner that is clearly
supported by the disclosure of the '251 patent.
28.
No. 90/013,497
Had an objection to the priority claim been raised during prosecution of the '197
patent, Patent Owner could have availed itself of a number of procedural mechanisms
to perfect the right of priority including an amendment to the claim of the '197 patent
during original prosecution and/or filing a reissue of the '251 patent.
Due to the
passage of time, many of these mechanisms are no longer available to Patent Owner.
Indeed, the Office action actively seeks to prevent Patent Owner from amending the
specification of the '197 patent for clarity to incorporate the views of the claimed control
strip shown in the '251 patent. See Office action, p. 14 ("there is no support in the
original disclosure to add the new views represented by Figures 9-13, of which mirrors
the design in the '251 Patent.
The original disclosure of the '197 Patent does not
support the addition of the new alternate embodiment.
The period to incorporate by
reference expired when prosecution of the 29/259,064 ended and became the '197
Patent.").
Patent Owner respectfully disagrees that the amendments lack support as
there is at least inherent support in the disclosure. The express priority claim to the '251
patent clearly communicates to an ordinary designer that the claim of the '197 patent
inherently encompasses the control strip illustrated in the '251 patent.
Patent Owner
respectfully submits that the amendment is appropriate under 37 C.F.R. 1.57(b).

Nonetheless, the Office action's attempt to prevent the amendment highlights the
inequity and denial of procedural due process resulting from the adoption of a narrower
claim construction in this ex parte reexamination after original prosecution of the '197
patent ended.
The same broadest reasonable interpretation standard should be applied in initial
examinations and reexaminations. See In reMan Machine Interface Technologies LLC,
833 F.3d at 1286. By adopting a different and unreasonably narrow claim construction,
the Office action would have the effect of penalizing the Patent Owner for relying upon
Primary Examiner Sikder's competency to examine the '197 patent.
The denial of the priority claim of the '197 patent in this reexamination revisits an
issue that was considered and settled by Examiner Sikder during the original
prosecution of the application, but reaches a contradictory conclusion via an erroneous
claim construction.
It further prevents Patent Owner from addressing the issue as
would have been permitted during the original prosecution.

29.
Correctly construing the
No. 90/013,497
claim of the '197 patent avoids this injustice and clearly establishes the right of the '197
patent to claim the benefit of the filing date of the '251 patent. Indeed, concerns within
the USPTO regarding the manner in which issues related to written description are
being evaluated have prompted the Director of the USPTO Michelle K. Lee to publish a
framework for appropriate application of the written description requirement when
evaluating priority claims in design patent applications and a request for comment
regarding the need to supplement the provisions in the MPEP to reflect this framework.
See Request for Comments on the Application of the Written Description Requirement
to Specific Situations in Design Applications, 80 Fed. Reg. 22233.
The Federal
Register publication regarding the written description requirement in design patent

applications is discussed in detail below.
Proposed Guidance from the Patent Office Supports a Broad Reading of the
Claim and of the Disclosure of the Earlier Application
The USPTO published a notice on April 15, 2016 titled "Request for Comments
on the Application of the Written Description Requirement to Specific Situations in
Design Applications" in the Federal Register Vol. 81, No. 73 at 22233.
The notice
proposes an approach for design examiners in applying general principles governing

compliance with the written description requirement in certain design applications,
principally those containing an amended claim or a claim in a continuing design
application that includes only a subset of originally disclosed elements. While the notice
sought public comment and the proposed approach has not gone into effect at this time,
it is instructive in its recognition of the Federal Circuit decisions on the subject and
general principles taken from those decisions.
The cited portions of Federal Circuit
decisions reinforce the requirement that the analysis consider more broadly what is
claimed rather than simply what is illustrated in any individual drawing(s). Further, they
highlight that the claimed design and the disclosure of the earlier patent must be viewed
from the perspective of an ordinary designer. The proposed approach provides:
When making this determination, the examiner would consider what
the original/earlier application, in its totality (e.g., including the title, any
descriptive statements,
and the drawings), would have reasonably

30.
No. 90/013,497
conveyed to an ordinary designer at the time of the invention, and how an

ordinary designer in the art would have designed the article that is the
subject of the design claim. Such considerations can include the nature
and intended use of the article embodying the claimed design as identified
by the title or description (see, e.g., MPEP 1503.01 I (9th ed. 2015)). If,
based on these considerations, the examiner determines that an ordinary
designer would not recognize upon reviewing the complete original/earlier
application the later-claimed design in the original/earlier disclosure, the
examiner would reject the claim for lack of written description (or in the
case of a priority or benefit claim, the application would not be entitled to
the earlier date).
Since the Office has the initial burden of establishing a prima facie
case of lack of written description, should an examiner determine that a
rejection is appropriate, the examiner must set forth express findings of
fact which support the lack of written description determination (see MPEP
2163 for examination guidelines pertaining to the written description

requirement). Upon reply by applicant, before rejecting the claim again
under 35 U.S. C. 112(a) for lack of written description, the examiner would
need to review the basis for the rejection in view of the record as a whole,
including amendments, arguments, and any evidence submitted by
applicant, such as affidavits or declarations.
Request for Comments on the Application of the Written Description Requirement to
Specific Situations in Design Applications, 80 Fed. Reg. at 22236.
Conclusion
A proper analysis of the right of the '197 patent to claim priority to the '251 patent
should consider the disclosure from the perspective of an ordinary designer.
As
specified by the Federal Circuit in Ariad, an analysis should be conducted to determine

whether "the inventor had possession of the claimed subject matter as of the filing date."
Ariad, 598 F.3d at 1351. Professor Visser's declarations clearly establish that the '251
patent reasonably conveys to those skilled in the art that the inventor had possession of
31.
No. 90/013,497
the control strip claimed in the '197 patent, when properly construed, as of the filing date
of the '251 patent.
In view of the foregoing response, it is believed that the patent remains valid and
that a reexamination certificate should be issued confirming the validity.
If any
questions remain concerning the allowability of the patent, Patent Owner would
appreciate if the Examiners would contact the undersigned attorney by telephone.
Patent Owner respectfully submits that this Response to Final Office Action in Ex Parte
Reexamination and the accompanying submission of the Visser Sup. Decl. is a timely
filed response to the final Office action and should be construed as a request to extent
the shortened statutory period for an additional two months. See MPEP 2265.
Respectfully submitted,
KPPB LLP
By /David J. Bailey/
David J. Bailey
Reg. No. 59,632
949.852.0000
32.
Electronic Acknowledgement Receipt

EFSID:
27077182
Application Number:
90013497
International Application Number:

Confirmation Number:
3198
Title of Invention:
CONTROL STRIP FOR ELECTRONIC APPLIANCES
First Named Inventor/Applicant Name:
D559197
Customer Number:
135223
Filer:
David J. Bailey/Agnes Poon
Filer Authorized By:
David J. Bailey
Attorney Docket Number:
S51-04124
Receipt Date:
29-SEP-2016
Filing Date:
28-APR-2015
TimeStamp:
19:35:53
Application Type:
Reexam (Third Party)
Payment information:
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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 Agglications Under 35 U.S.C. 111
If a 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 of the application.
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If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
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national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International Agglication Filed with the USPTO as a Receiving Office
If a new international application is being filed and the international application includes the necessary components for
an international filing date (see PCT Article 11 and MPEP 181 0), a Notification of the International Application Number
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PATENT
CERTIFICATE OF MAILING
I hereby certify that this c-orrespondence is being electronically filed with the United States Patent and
Trademark Office on September 23, 20'f6 at or before "11:59 p.m. Pacific Time under the Rules of 37 CFR
"/.8.
Control No.
Patent No.
Filed
Title
TC/AU.
Examiner
Docket No.
Customer No.
90/013,497
D559197
April 28, 2015
Control Strip for Electronic Appliances
2914
Darlington Ly
S51-04124
135223
Confirmation No. 3198
RESPONSE TO FINAL OFFICE ACTION IN EX PARTE REEXAMINATION

Mail Stop Ex Parte Reexam
Attn: Central Reexamination Unit
P.O. Box 1450
2400 E. Katella, Suite 1050

Anaheim, CA 92806
September 23, 2016
Commissioner:
Patent owner respectfully requests reconsideration of the rejection of the single
claim in view of the following remarks.
Remarks/Arguments begin on page 2 of this paper.
1.
No. 90/013,497
REMARKS/ARGUMENTS
Status of the Claims

The single claim of U.S. Patent No. 0559,197 (the '197 patent) is pending and
under reexamination. A Request for Ex Parte Reexamination was filed April 28, 2015
(the Request). A Response was filed March 30, 2016 including an amendment to the
figures to incorporate the figures of U.S. Patent No. 0524,251 (the '251 patent), to
which the '197 patent claims priority.
Litigation Activity
U.S. Patent No. 0559,197 continues to be the subject of litigation in Case
No. 1:14-cv-01330-RGA in the U.S. District Court for the District of Delaware. Neither
party has moved for stay of the litigation.
Summary of the Office Action

In the Office action dated June 29, 2016 (the Office action) the single claim of the
'197 patent is rejected under 35 U.S.C. 102(b) as allegedly being anticipated by the
publication "The Advent of Multi-Room Digital Music: An Overview of the Sonos Digital
Music System by the Envisioneering Group" (the Envisioneering publication).
The
rejection is based upon the denial of the benefit of the priority claim made in the '197
patent as being a continuation of the '251 patent The '197 patent was filed more than a
year after the purported first date of publication of the Envisioneering publication. The
purported first date of publication of the Envisioneering publication is after the filing date
of the '251 patent.
Summary of Response
The Office action denies the '197 patent the benefit of its priority claim based
upon a set of identified differences between the control strip illustrated in Figs. 1 and 2
of the '197 patent and the control strip shown in the drawings of the '251 patent.
However, the denial of the priority claim is based on an incorrect inquiry. As set out in
detail below, the correct inquiry is whether the disclosure of the '251 patent "reasonably
2.
No. 90/013,497
subject matter'' of the '197 patent given its broadest reasonable interpretation"
See
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
The statement of the rejection implicitly relies upon a claim construction that is
neither reasonable nor the broadest reasonable interpretation of the claim of the '197
patent.
As set forth in detail below, the narrowness of this claim construction is
inconsistent
with
the
original
Examiner's
broadest
reasonable
interpretation,
inconsistent with the claim construction relied upon when considering the visual
similarity of Patent Owner's own products described in the Envisioneering publication,
inconsistent with the drawings of the '197 and '251 patents, and inconsistent with
Professor Visser's interpretation (an industrial design expert with over 30 years of
experience).
In particular, the narrowness of this claim construction is inconsistent with
statements made by the original Examiner during the prosecution of the '197 patent
applying the broadest reasonable interpretation of the claim. The claim construction
relied upon in denying the '197 patent the benefit of its priority claim is also different
from the broader construction utilized to conclude that the Sonos Zone Player ZP1 00
and Sonos Controller described in the Envisioneering publication anticipate the claim of
the '197 patent.
See Office action, p. 6.
The implicit claim construction includes
requirements regarding specific button widths, heights, and proportions.
The implicit
claim construction also introduces the requirement of a "dual edge" for the first time and,
without explanation, converts a previous requirement of "a pronounced narrow bevel at
the top edge of each button" into "a top edge [that] is squared". See Office action dated
December 30, 2015, p. 2; see also Office action, p. 3. By contrast, the Office action
concludes that "the appearance of the volume control strip featured on the Sonos Zone
Player ZP 100 and So nos Controller are substantially the same as that of the claimed
design" without requiring specific button widths, heights, proportions or a "dual edge, of
which the top edge is squared and the bottom edge is tapered." See Office action, p. 6.
Instead of withdrawing the rejection of '197 patent in view of Professor Visser's
expert testimony, the Office action chose to adopt an even narrower claim construction.
The new construction is both inconsistent with the drawings of the '197 patent and
3.
No. 90/013,497
REPLY TO OFFICE ACTION OF JUNE
29, 2016
generally disregards Professor Visser's expert opinion regarding the manner in which
the originally filed drawings of the '251 and '197 patents would be interpreted by an
ordinary designer. The evidence provided by Professor Visser clearly establishes that
the disclosure of the '251 patent reasonably conveys to a person of ordinary skill in the
art that the inventor was in possession of the control strip design claimed in the '197
patent at the time of the filing of the '251 patent. Instead of treating Professor Visser's
declarations with considerable deference, the Office action disregards Professor
Visser's opinions without comment.
716.01 (c)(!! I).
See MPEP (9th ed. Rev. 7, Nov. 2015)
When the claim of the '197 patent is given its broadest reasonable
interpretation, the record establishes that the '197 patent is entitled to claim priority as a
continuation to the '251 patent.
The Office action also disregards the fact that the MPEP requires verification of
the '197 patent's priority claim during its original examination. No objection was raised
at that time with respect to the right of the '197 patent to claim priority as a continuation
of the '251 patent.
Had an objection been raised during prosecution, Patent Owner
could have availed itself of a number of mechanisms to perfect the right of priority
including an amendment to the claim of the '197 patent during original prosecution
and/or filing a reissue of the '251 patent. Now, the time period has passed to exercise
many of the options available to the Patent Owner during the prosecution of the '197
patent and the USPTO is denying Patent Owner's attempts to provide clarifying
amendments that would confirm the right of the '197 patent to claim priority to the '251
patent. As such, the unilateral adoption of an impermissibly narrow claim construction
during this ex parte reexamination proceeding punishes Patent Owner for placing its
faith in the rigor of the USPTO's original examination of the '197 patent. Correctly
construing the claim of the '197 patent avoids this injustice and clearly establishes the
right of the '197 patent to claim the benefit of the filing date of the '251 patent.
The following discussion provides an overview of the case law governing the
correct manner for evaluating the validity of a priority claim, which confirms both the
right of the '197 patent to claim priority as a continuation of the '251 patent and the
validity of the claim of the '197 patent in view of the Envisioneering publication (which
describes a commercial embodiment of the claimed invention).
4.
Based upon the
No. 90/013,497
analysis presented below, Patent Owner respectfully requests withdrawal of the

rejection of the claim of the '197 patent and prompt issuance of a reexamination
certificate confirming the '197 patent's continued validity.
Entitlement to Benefit of Earlier Filed Application

MPEP 211.05 sets out the requirement for establishing the right to claim the
benefit of the filing date of an earlier filed application as follows:
"Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the
benefit of the filing date of an earlier filed U.S. application if the subject
matter of the claim is disclosed in the manner provided by 35 U.S.C.
112(a} except for the best mode requirement, in the earlier filed
application. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d
1829 (Fed. Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA
1978)."
MPEP 211.05.
A central issue in this ex parte reexamination proceeding is whether the design

claimed in the '197 patent is supported by the written description of the '251 patent to
which it claims priority. The Federal Circuit has provided that, "the test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject matter as of the
filing date." Atiad, 598 F.3d at 1351; see also In re Daniels, 144 F.3d 1452, 1456 (Fed.
Cir. 1998).
The test for sufficiency of the written description is the same for design
patents as for utility patents. In re Daniels, 144 F.3d at 1456.

The Ariad court further explained, "the test requires an objective inquiry into the
four corners of the specification from the perspective of a person of ordinary skill in the
art" and "[b]ased on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually invented the
invention claimed." Ariad, 598 F.3d at 1351.
As discussed in greater detail below, differences between the drawings of the
continuation application and the earlier filed application are permissible. Simply listing
5.
No. 90/013,497
differences between the drawings of one application and the other as done in the Office
action provides no insight into whether the earlier application "reasonably conveys to
those skilled in the art that the inventor had possession of the claimed subject matter."
!d.
Differences in Drawings are Permissible

In Racing Strollers, the Federal Circuit stated, "[a]s a practical matter, meeting
the [written description] requirement of 112 is, in the case of an ornamental design,
simply a question of whether the earlier application contains illustrations, whatever
form they may take, depicting the ornamental design illustrated in the later application
and claimed therein by the prescribed formal claim." Racing Strollers Inc. v. TRI!ndus.
Inc., 878 F.2d 1418, 1420 (Fed. Cir. 1989) (emphasis added); see also In re Daniels,
144 F.3d at 1456 ("The inquiry is simply to determine whether the inventor had
possession at the earlier date of what was claimed at the later date.") (emphasis
added). The references to "whatever form they may take" and "prescribed formal claim"
acknowledge that the illustration of an inventive design can change in form, without
violating the written description requirement. See Racing Strollers, 878 F.2d at 1420.
The proper analysis of whether a claim in a continuation application has support
in an earlier-filed application involves more than merely comparing the figures of the
See In re Daniels, 144 F.3d at 1457 ("The
later application to the earlier application.
Board was incorrect in holding that any change in the design defeats a priority claim as
a matter of law.") Written description is correctly evaluated by interpreting the claimed
subject matter in the later application and determining that the earlier filed application
reasonably conveys to a person of ordinary skill in the art that the inventor had
possession of the claimed subject matter as of the earlier filing date. See Ariad, 598
F.3d at 1351. That the earlier-filed application does not describe the later application's
claimed subject matter in the exact same manner is of no moment. E.g., Eiselstein v.
Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995).
6.
No. 90/013,497
29, 2016
Standards for Construing Claims in Ex Parte Reexaminations

When evaluating the scope of claimed subject matter in an ex parte
reexamination, the claims must be "given their broadest reasonable interpretation
consistent with the specification." MPEP 2111. "The Patent and Trademark Office
('PTO') determines the scope of claims in patent applications not solely on the basis of
the claim language, but upon giving claims their broadest reasonable construction 'in
light of the specification as it would be interpreted by one of ordinary skill in the art."'
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005), citing In reAm. Acad. of
Scr Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "In a reexamination, like initial
examinations, the broadest reasonable interpretation (BRI) standard is applied." In re

Man Machine Interface Technologies LLC, 833 F.3d 1282, 1286 (Fed. Cir. 2016), citing
In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.1 984).
Accordingly, an analysis of
whether "the inventor actually invented the invention claimed" in an ex parte

reexamination must commence by construing the claimed invention based upon its
broadest reasonable interpretation. See Ariad, 598 F.3d at 1351; see also MPEP
2111.
When construing a claim, a court must look first to the intrinsic evidence, which
consists of the patent, the specification, the prosecution history, and the cited
references. See Straight Path !P Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362
(Fed. Cir. 2015); Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014);
Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996). When the
intrinsic evidence is clear, claim construction cannot be based on contrary extrinsic

evidence. See id. at 1583. When performing claim construction, the claims must be
construed in light of the prosecution history of related patents even when a right to claim
priority is challenged. See Gemafto S.A. v. HTC Corp., 754 F.3d 1364, 1371 (Fed. Cir.
2014) ("The meaning of terms appearing in the [child] patent must be construed in light
of the same terms recited in the [grandparent] patent.'') (emphasis added). Indeed, "[i]n
the context of claim construction, because a parent patent constitutes intrinsic evidence
upon which a Court can rely to construe the claims of a later continuation patent,
whether the [child] patent is entitled to the priority date of the [parent] patent is
irrelevant." E. Digital Corp. v. New Dane, No. 13-cv-2897 -H-BGS, 2014 WL 7139698,
7.
No. 90/013,497
29, 2016
at *16 (S.D. Cal. Dec. 12, 2014) (emphasis added). This is true even if the parent
patent is not expressly incorporated by reference in the child patent. /d. ("The [parent]
patent file history constitutes intrinsic evidence that the Court may use to construe the
claims of the [child] patent, even if not expressly incorporated by reference.")
(emphasis added).
Furthermore, when a claim is susceptible to more than one
construction, it should be construed to preserve its validity when reasonably possible.

See Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1384 (Fed. Cir. 2001 ).
When there are multiple embodiments disclosed in a design patent, the claim of
the design patent must be construed as encompassing all of the illustrated
embodiments and cannot be limited to a specific description of any one of the
embodiments. See Trucook, LL C. v. Bond/He/man, Inc., No. 00 CV 4865, 2001 WL
826864 *4 (N.D. Ill. July 18, 2001) (finding that when a cooking utensil included different
temperature gauges that were patentably indistinct in different figures, the patent
"cannot be limited to the four gauges shown ... it protects meat fork-thermometers with
the patented design that contain either a gauge pictured ... as well as other possible
gauges having a de minimis impact on the design's overall visual impression ... a claim
construction that includes a specific description of the gauge would be improper.").
Instead, the claim must be construed to encompass the single inventive concept
common to the alternative embodiments. See Golan v. Pingel, No. CV 99-3143 MRP,
1999 WL 33633104 (C.D. Cal. Nov. 4, 1999) (finding that the patent was "limited to the
single inventive concept common to the five alternate embodiments disclosed in the
application."); see also Antonious v. Spalding & Evenflo Companies., Inc., 217 F.3d
849, 1999 WL 777450, at *7-8 (Fed. Cir. 1999) (unpublished) (concluding that the
drawings disclosed at most different embodiments of one design based on evaluating
the overall common appearance that was conveyed by the drawings).
Once the claim of the design patent is construed, the inquiry regarding the
validity of a priority claim made under 35 U.S. C. 120 turns to the question of "whether
the disclosure of the application relied upon reasonably conveys to those skilled in the
art that the inventor had possession of the claimed subject matter as of the filing date."
Ariad, 598 F.3d at 1351.
By contrast, the Office action simply highlights purported
differences between the drawings in the '197 and '251 patents. The Office action
8.
No. 90/013,497
implicitly adopts a narrow claim construction in order to deny the '197 patent its priority
claim without considering the common features of the alternative embodiments
illustrated in the '197 patent, or the prosecution histories of the '197 and '251 patents.
This narrow claim construction is adopted despite the clear obligations placed upon the
USPTO to adopt the broadest reasonable interpretation of the claim, and a construction
that preserves the validity of the claim.
Furthermore, the Office action makes no
attempt to analyze whether the specification of the '251 patent conveys to an ordinary
designer possession of the invention claimed in the '197 patent at the time of filing of
the '251 patent. Considerable deference should be given to expert opinions regarding
the disclosure conveyed by an earlier-filed application to an ordinary designer and the
Office action disregards Professor Visser's declaration filed on March 31, 2016 (the
Visser Dec I.) regarding the disclosures of the '197 and '251 patents without comment.
Based upon the findings of fact set out in Professor Visser's declaration, the '251 patent
clearly discloses the inventive control strip claimed in the '197 patent and the '197
patent's priority claim is appropriate. The treatment of expert opinions, when evaluating
whether a priority claim satisfies 35 U.S.C. 120, is discussed further below.
Probative Value of Expert Opinion when Determining what Is Reasonably

Conveyed to those Skilled in the Art
Evaluation of a right of priority to the filing date of an earlier-filed application
requires determining "whether the disclosure of the application relied upon reasonably
subject matter as of the filing date." Ariad, 598 F.3d at 1351.
The declaration of
Professor Visser documents his opinion that the '251 patent does convey to a person of
ordinary skill in the art that its inventors had possession of the control strip design
claimed in the '197 patent at least as early as the filing data of the '251 patent. See
Visser Dec I., p. 16, paragraph 37 ("When the first embodiment of the '197 patent is
compared with the embodiment in the '251 patent, it is clear that they have the same
underlying design, with only minor differences."), p. 44, paragraph 50 ("it is my
conclusion that one of ordinary skill would find that the cumulative effect of the figures of
the first embodiment of the '197 patent to illustrate the same underlying design as in the
9.
No. 90/013,497
'251 patent, and any differences are minimal."). The Office action makes no mention of
Professor Visser's declaration.
In accordance with the MPEP, consideration should be given to all declarations
submitted under 37 C. F. R. 1.132 that traverse the grounds of a rejection or present
sufficient facts to overcome the rejection. See MPEP 716. When the evidence
presented is deemed insufficient to overcome the rejection, the statement of rejection
must specifically explain why the evidence is insufficient; general statements without
explanation supporting such findings are an inappropriate basis for maintaining a
rejection. See MPEP 716.01 (B).
In assessing the probative value of an expert opinion, an examiner must consider
the nature of the matter sought to be established, the strength of any opposing
evidence, the interest of the expert in the outcome of the case, and the presence or
absence of factual support for the expert's opinion. MPEP 716.01 (c)(lll) (citing
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985)).
While an opinion as to a legal conclusion is not entitled to any weight, the underlying
basis for the opinion may be persuasive. !d. In contrast, expert opinion on what the prior
art taught, supported by documentary evidence, should receive considerable deference.
!d. (citing In re Carroll, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979)). By extension,
Professor Visser's opinions concerning what is conveyed by the specification of '251
patent should also receive considerable deference.
Correctly analyzed, the '197 patent is entitled to claim priority to the '251 patent
Processor Visser's declaration establishes that the specification of the '251 patent
conveys to the ordinary designer that its inventors were in possession of the inventive
design claimed in the '197 patent. The failure of the Office action to correctly evaluate
the '197 patent's priority claim in view of the case law discussed above is elaborated
below.
Priority Claim Denied Based Upon Incorrect Analysis

Verifying the right of the '197 patent to claim priority to the filing date of the '251
patent requires asking "whether the disclosure of the application relied upon reasonably
No. 90/013,497
subject matter as of the filing date." Ariad, 598 F.3d at 1351. By contrast, the Office
action denies the '197 patent's priority claim based upon nothing more than an assertion
that the design illustrated in one or more of the drawings of the '197 patent is
"substantially different" from the design illustrated in the earlier '251 patent. There is no
basis in the MPEP or case law for this test as applied in the rejection.
The Office action denies the '197 patent the benefit of its priority claim by
implicitly adopting a narrow claim construction requiring the presence of all of the details
highlighted in the Office action dated June 29, 2016. This claim construction is clearly
inconsistent with the prosecution histories of the '197 and '251 patents. Furthermore,
the claim construction relied upon denying the '197 patent its priority claim is not the
same as the broader claim construction relied upon when finding that Patent Owner's
Sonos Zone Player ZP1 00 and Sonos Controller described in the Envisioneering
publication anticipate the claim of the '197 patent. See Office action, p. 6.
The statement of the rejection does not consider Professor Visser's declaration in
skill in the art. When the claim is interpreted and analyzed properly in accordance with
the MPEP and case law, it is clear that the '251 patent reasonably conveys to those
skilled in the art that the inventor had possession of the design claimed in the '197
patent.
The implicit claim construction relied upon in the statement of the rejection, the
inconsistency of this claim construction with the prosecution histories of the '197 and
'251 patents, the broader claim construction utilized when comparing the Sonos Zone
Player ZP1 00 and Sonos Controller described in the Envisioneering publication to the
'197 patent, and the failure of the Office action to address Professor Visser's declaration
are separately addressed below.
Claim Construction Implicit in Statement of Rejection

The statement of rejection of the '197 patent does not explicitly adopt a claim
construction in the manner required by the Ariad court. The statement of rejection does,
however, adopt an implicit claim construction in denying the '197 patent the benefit of its
priority claim to the '251 patent.
Specifically, the Office action identifies differences

11.
No. 90/013,497
between the embodiments of the inventive control strip design illustrated Figs. 1 and 2
of the '1 97 patent and the figures of the '251 patent Despite the direction given by the
Federal Circuit in In re Daniels that differences between drawings do not defeat a
priority claim, the statement of the rejection implicitly asserts that each difference is an
essential requirement of the claim of the '197 patent. The Office action acknowledges
the simple elegance and distinctiveness of Patent Owner's design. See Office action, p.
12.
However, the Office action arbitrarily concludes that the simplicity of the Patent
Owner's design necessitates an extremely narrow claim construction stating that "every
aspect of the detailing is essential". !d.
No attempt is made to identify the common
features of the alternative embodiments illustrated in the '197 patent. See Golan v.
Pingel, No. 99-3143, 1999 WL 33633104 (C.D. Cal. Nov. 4, 1999). The specific
differences are identified in the Office action as follows:
The displacement of the top squared button from the button
elongated button is narrower in the '251 Patent than it is in the '197
Patent. While this difference in distance between the two buttons may be
an obvious modification or may have a de minimis effect on the overall
arrangement, the difference becomes critical when compounded with
other differences ...
The depth at which the buttons are raised is shallower in the '251
Patent than it is in the '197 Patent..
The proportions between the width and length of the bottom button
is longer and narrower in the '251 Patent than it is in the '197 Patent. The
overall elongation of the button in the former patent is noticeably
different. ..
The buttons in the '251 Patent are shown with a squared edge in
Figure 2.
However, between Figures 1, 3 and 4, the buttons can be
construed as having a shallow depth with a tapered or contoured edge.

Neither a squared edge nor a tapered/contoured edge is consistent and
shown in the button configuration of the '197 Patent.
The '197 Patent
shows the buttons having dual edge, of which the top edge is squared and
the bottom edge is tapered ...
No. 90/013,497
The cumulative effect of the above differences results in a button

strip configuration that is substantially different. No link in appearance can
be made between the two button strip designs.
Implicit Claim Construction Inconsistent with Prosecution History

The statement of the rejection makes no reference to the prosecution history of
the '197 patent. The prosecution history clearly establishes that Examiner Sikder, the
primary examiner who originally examined the '197 patent, construed the claim of the
'197 patent according to its broadest reasonable interpretation.
Indeed, statements
made by Examiner Sikder during prosecution explicitly contradict the claim construction
that is implicitly relied upon in the present reexamination to deny the '197 patent the
benefit of its priority claim. In adopting a narrower claim construction, the Office action
fails to establish that the broader interpretation adopted by Examiner Sikder is
unreasonable.
The unduly narrow claim construction relied upon in rejecting the '197 patent
stands in stark contrast to the broad and reasonable claim construction that formed the
basis of the allowance of the '197 patent. The fact that the inventive design claimed in
the '197 patent is not limited to specific button proportions, button heights, and/or button
spacing is explicitly stated by Examiner Sikder in a Restriction Requirement mailed Dec.
5, 2006 and reiterated in the Notice of Allowability mailed July 31, 2007. 1 In allowing
the '197 patent, Examiner Sikder correctly construed the claim of the '197 patent
l See Restriction Requirement mailed Dec. 5, 2006 at p. 2 ('The embodiments disclosed ... have overall appearances that are
basically the same. Furthermore, the differences between them are considered minor and patentably indistinct, or are shown to be
obvious in view of analogous prior mt cited.
The minimal change in proportions of the control buttons do not create
patentably distinct designs .. These embodiments thus comprise a single inventive concept" emphasis added): see also Notice of
Allowability mailed July 31. 2007, at p. 3 {'Ttl e... embodiments are considered by the examiner to present overall appearances that
are basically tile same. Furthermore. tile differences between the appearances of tt1e embodiments are considered minor and
patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Tile minimal change in the proportions of
the control buttons and tf1e inclusion/exclusion of tf!e opaque/transparent oval feature between the control buttons does
not create a patentable distinction." emphasis added).
No. 90/013,497
broadly based upon the overall impression of the embodiments illustrated in the '197
patent - the same overall impression created by the illustration of the control strip
disclosed in the '251 patent.
The Office action also fails to consider that the '251 patent is itself part of the
prosecution history of the '197 patent when construing the claim of the '197 patent. See
Gemalto S.A v. HTC Corp., 754 F.3d 1364, 1371 (Fed. Cir. 2014); see also Straight
Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed. Cir. 2015); Tempo
Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014); and E.Digital Corp.,
2014 WL 7139698, at *16 (emphasis added). The '251 patent forms part of the intrinsic
evidence that must be considered when construing the claim of the '197 patent
The
Office action fails to consider the originally filed drawings of the '251 patent when
interpreting the edge treatment illustrated in Fig. 2 of the '197 patent.
As a result, the
Office action adopts a claim construction requiring a "dual edge". A "dual edge" is not
actually illustrated in Fig. 2 of the '197 patent and the construction is inconsistent with
the softened edge treatment shown in the originally filed drawings of the '251 patent; a
result the Federal Circuit has cautioned against. See, e.g., Belden Inc. v. Berk-Tek LLC,
610 F. App'x 997, 1002 (Fed. Cir. 2015) ("[T]he Board should construe claims
consistently across a family of related patents .... '')(unpublished).
The Office action's reliance on a claim construction that is inconsistent with the
prosecution histories of the '197 and '251 patents is neither a reasonable construction
nor the broadest reasonable construction of the claim of the '197 patent.
Examiner
Sikder adopted a broader construction and did not object to the '197 patent's priority
claim (see discussion below).
Furthermore, the edge treatment illustrated in the '197
patent is interpreted in a manner inconsistent with the originally filed drawings of the
'251 patent
Accordingly, Patent Owner respectfully submits that the Office action's
denial of the '197 patent's right to claim priority to the filing date of the '251 patent is
entirely a consequence of adopting an unreasonable and impermissibly narrow
construction of the '197 patent.
should be withdrawn.
On this basis alone, the rejection of the '197 patent
However, the inappropriateness of the rejection is further
highlighted by Professor Visser's declaration, which establishes that the specification of
No. 90/013,497
the '251 patent clearly conveys to an ordinary designer possession of the control strip
design claimed in the '197 patent at the time of the filing of the '251 patent.
Specification of '251 Patent Establishes Possession of Claimed Invention

Professor Visser's declaration provides evidence directly relevant to determining
what the specification of the '251 patent conveys to a person of ordinary skill in the art.
Instead of deferring to Professor Visser - a scholar and award winning designer with
over 30 years of relevant industrial design experience - regarding the disclosure of the
'251 patent, the Office action avoids any discussion of Professor Visser's expert
opinion.
Professor Visser's analysis commences with a comparison of views of the
respective control strips from both patents that are the same (reproduced below).
'251 Patent Front
'197 Patent Front
differences are minor and do not change the overall effect of the design'' (Visser Decl.,
p. 16, para 34 ). In reaching this conclusion, Professor Visser interprets the design of
the '197 patent in a manner consistent with the claim construction adopted by Examiner
Sikder during the original prosecution of the' 197 patent.
No. 90/013,497
Professor Visser's extensive comparison continues by considering all views of

the respective embodiments from the '251 and '197 patents.
'19"/'
Front
In delving into the question of whether the '251 patent conveys to an ordinary
designer the control strip design claimed in the '197 patent, Professor Visser
investigates the detail shown in the above figures.
No. 90/013,497
In paragraph 40 of his declaration, Professor Visser concludes:

"The perspective view in Fig. 2 of the '197 patent is drawn with a
softened edge treatment on the upper portion of the button. Specifically,
two parallel lines are drawn to indicate that the button edge is not sharp,
but has a soft edge. In drafting of electronics and other small products, it
is possible to indicate the edge treatment with two parallel lines to indicate
tangency lines of the edge and the sides of the buttons.
CAD software
typically uses shading or tangency lines to indicate edges in a drawing.

The original filing of the '251 patent appears to be a shaded CAD drawing.
It is my opinion that one of ordinary skill in the art at the time of the filing of
the '251 patent would interpret the shading as showing an edge treatment
on the buttons."
Visser Decl., p. 18.
Accordingly, Professor Visser concludes that the '251 patent conveys possession
of the design claimed in the '197 patent to an ordinary designer. As such, Professor
Visser's findings of fact support the legal conclusion that the '197 patent is entitled to
claim priority to the '251 patent.
No. 90/013,497
The Office action contains no discussion of any of the issues raised by Professor
Visser or of Professor Visser's declaration.
The statement of the rejection does not
address Professor Visser's opinion that the minor variations in size, proportions, and
spacing do not result in different designs. Furthermore, the statement of the rejection
ignores Professor Visser's conclusions based on the originally filed drawings of the '251
patent (as opposed to the formal drawings published in the issued patent) that the '251
patent discloses the softened edge treatments of the design illustrated in the '197
patent.
Instead, the Office action narrowly construes the '197 patent as requiring a
"dual edge, of which the top edge is squared and the bottom edge is tapered.''
action, p. 3.
Office
As discussed in detail below, the requirement of a "dual edge" is
inconsistent with the drawings of the '197 patent
Furthermore, the "dual edge"
limitation ignores Professor Visser's opinion that an ordinary designer would understand
the parallel lines as indicating a softened edge treatment.
Professor Visser's opinions concerning the disclosure conveyed
by the
specification of '251 patent should receive considerable deference. The statement of

the rejection does not explain why the evidence offered by Professor Visser is
insufficient to establish that the specification of the '251 patent conveys the control strip
design claimed in the '197 patent to an ordinary designer.
Accordingly, the MPEP
dictates that the objection to the priority claim of the '197 patent is inappropriate in view
of Professor Visser's declaration and must be withdrawn. See MPEP 716.01 (B).
New "Dual EdgeH Theory is Inconsistent with the lnstrinsic Evidence and the
Initial Office Action
As noted above, the statement of rejection construes the '197 patent as
requiring buttons having a "dual edge, of which the top edge is squared and the bottom
edge is tapered" (Office action, p. 3). Applicant understands this construction to require
buttons with the following geometry/features:
18.
No. 90/013,497
Applicant respectfully submits, however, that such a "dual edge" construction is

unreasonable because it is inconsistent with the drawings of the '197 patent, the
drawings of the '251 patent, and the initial Office action dated December 30, 2015 (the
Non-final Office action). The "dual edge" construction also ignores the fact that Fig. 1 of
the '197 patent and Fig. 2 of the '251 patent illustrate control strips with the same edge
treatment. The unreasonableness of the "dual edge" requirement is highlighted by the
fact that the Office action uses a different claim construction, one that does not require a
"dual edge", when finding that "the appearance of the volume control strip featured on
the Sonos ZoneP!ayer ZP100 and Sonos Controller are substantially the same as that
of the claimed design." Office action, p. 6.
The top edge of the control strip in Fig. 2 of the '197 patent (reproduced below)
cannot be "squared" because the parallel lines at the lower left hand corners of the
buttons (see arrows) in the perspective view are not consistent with the top edge being
squared.
If the top edge were squared, the lower parallel line would not be visible
wrapping around the lower left corner of the buttons in the perspective view shown in
Fig. 2 of the '197 patent
No. 90/013,497
29, 2016
Patent Owner further submits that the top edge of the control strip shown in the
'197 patent cannot be "squared" because such an interpretation is not consistent with
the curved or softened edge treatment shown in the originally filed drawings of the '251
patent including the CAD shading shown in Fig. 2 above that indicates a softened edge
treatment and the softened edge treatment shown in Fig. 4 below.
..................
......
The "dual edge" requirement set forth for the first time in the Office action dated
June 29, 2016 is contrary to the Remarks in the initial Non-final Office action. Indeed,
the Non-final Office action distinguished the control strip design in the '197 patent from
that of the '251 patent by asserting that the '197 patent control strip includes "a
pronounced narrow bevel at the top edge of each button." Non-final Office action, p. 2.
In other words, the Non-final Office action concluded that the top edge of each of the
buttons shown in '197 patent is angled (i.e., not "squared").
While the Final Office action has taken the position that the control strip disclosed
in the '197 patent is "substantially different" from the control strip disclosed in the '251
patent, it does not explain how this can be the case given that Fig. 1 of the '197 patent
No. 90/013,497
(reproduced below on right) and Fig. 2 of the '251 patent (reproduced below on left)
illustrate control strips with the same edge treatment.
{~ 97 Patent front
Patent Owner also wishes to draw attention to the fact that the Office action
utilizes a different construction of the claim of the '197 patent that does not require a
"dual edge" when concluding that the Sonos Zone Player ZP100 and Sonos Controller
described in the Envisioneering publication anticipate the claim of the '197 patent. A
determination of anticipation is made as follows:
"Under this standard, the appearance of the volume control strip
featured on the Sonos ZoneP!ayer ZP100 and Sonos Controller are
substantially the same as that of the claimed design.
Specifically, the
vertical arrangement of dual buttons, top squared, button and bottom

rectangular button, distance between buttons, oblong indication light,
raides configuration of the buttons and narrow bezel or trip surrounding
each button are all mutually inclusive features of the '197 Patent and the
prior art references of the Sonso ZonePiayer ZP100 and Sonos Controller
To this end, it is clear that the '197 Patent is directed to the same volume
No. 90/013,497
control strip featured on the Sonos ZoneP!ayer ZP100 and Sonos
Controller."
Patent Owner notes the absence of discussion of specific button widths, heights,
proportions and "dual edges" in concluding that the Sonos ZoneP!ayer ZP100 and
Sonos Controller include volume control strips with the same shared visual appearance
between and the claimed design from the '197 patent.
Indeed, Patent Owner can
present no more compelling evidence that the denial of the '197 patent's priority claim is
based upon an unreasonably narrow claim construction than the fact that the Office
action itself relies upon a broader claim construction that does not require specific
button widths, heights, proportions, or "dual edges" when evaluating anticipation.
Conclusion Regarding Right of Priority

Patent Owner respectfully submits that the denial of the priority claim within the
'197 patent to the benefit of the filing date of the '251 patent is based upon a claim
construction that is not the broadest reasonable interpretation of the claim of the '197
patent. As demonstrated above, the narrow claim construction relied upon in denying
the priority claim is unreasonable due to its inconsistency with the claim construction
relied upon in allowing the claim of the '197 patent, the originally filed drawings of the
'251 patent, and the claim construction utilized in this ex parte reexamination when
comparing the Sonos Zone Player ZP1 00 and Sonos Controller described in the
Envisioneering publication to the claim of the '197 patent.
The narrow claim
construction relied upon in denying the '197 patent its priority claim is not a reasonable
interpretation of the claimed design and is adopted without any explanation regarding
why both Examiner Sikder's and Professor Visser's interpretation of the drawings of the
'197 patent is incorrect.
The Office action urges that consideration be given to the cumulative effect of the
differences relied upon in denying the '197 patent the benefit of its priority claim. Taken
in combination, the differences are inconsistent with the prosecution history of the '197
patent, the understanding of an ordinary designer, and the drawings of the '197 patent
22.
No. 90/013,497
themselves.
Accordingly, Patent Owner respectfully submits that the '197 patent is
entitled to claim priority to the '251 patent and requests withdrawal of the rejection of the
claim of the '197 patent based upon the Envisioneering publication, which is not prior art
with respect to the inventive control strip claimed in the '197 patent
While the above discussion is alone sufficient to warrant the issuance of a
reexamination certificate confirming the validity of the '197 patent, Patent Owner
submits a number of additional remarks highlighting the inequity of denying an issued
patent the benefit of its priority claim based upon application of a narrower claim
construction that that relied upon in allowing the claim, and a recent announcement by
the Director of the USPTO Michelle K. Lee concerning the need to supplement the
provisions in the MPEP relating to the appropriate application of the written description
requirement when evaluating priority claims in design patent applications. See Federal
Register, Vol. 81, No. 72 at 22233.
Denial of Procedural Remedies Due to Application of Incorrect Claim

Construction
The MPEP requires verification of the '197 patent's priority claim during its
original examination. See MPEP 1504.
There is no evidence that the lack of any
objection to the priority claim was an oversight.
Quite the contrary, the prosecution
history of the '197 patent establishes that that Examiner Sikder was vigilant with respect
to issues regarding 35 U.S. C. 112. See Notice of Allowance, Examiner's Amendment,
at p. 2 ("However, applicant submitted new drawings modifying the original disclosure
by eliminating the trim around the control buttons. Such constitutes a rejection of the
claim under 35 U.S.C. 112 first paragraph as introducing new matter. To avoid
such a rejection, applicant's attorney, per above conversation, has agreed to modify the
trim around control buttons as originally filed into broken lines.").
Furthermore,
Examiner Sikder adopted a broader claim construction than the claim construction relied
upon in denying the '197 patent the benefit of its priority claim in this ex pat1e
reexamination proceeding. The claim construction relied upon by Examiner Sikder was
reasonable and construes the claim of the '197 patent in a manner that is clearly
supported by the disclosure of the '251 patent.
23.
No. 90/013,497
Had an objection to the priority claim been raised during prosecution of the '197
patent, Patent Owner could have availed itself of a number of procedural mechanisms
to perfect the right of priority including an amendment to the claim of the '197 patent
during original prosecution and/or filing a reissue of the '251 patent.
Due to the
passage of time, many of these mechanisms are no longer available to Patent Owner.
Indeed, the Office action actively seeks to prevent Patent Owner from amending the
specification of the '197 patent for clarity to incorporate the views of the claimed control
strip shown in the '251 patent. See Office action, p. 14 ("there is no support in the
original disclosure to add the new views represented by Figures 9-13, of which mirrors
the design in the '251 Patent.
The original disclosure of the '197 Patent does not
support the addition of the new alternate embodiment.
The period to incorporate by
reference expired when prosecution of the 29/259,064 ended and became the '197
Patent.").
Patent Owner respectfully disagrees that the amendments lack support as
there is at least inherent support in the disclosure. The express priority claim to the '251
patent clearly communicates to an ordinary designer that the claim of the '197 patent
inherently encompasses the control strip illustrated in the '251 patent.
Patent Owner
respectfully submits that the amendment is appropriate under 37 C.F.R. 1.57(b).

Nonetheless, the Office action's attempt to prevent the amendment highlights the
inequity and denial of procedural due process resulting from the adoption of a narrower
claim construction in this ex parte reexamination after original prosecution of the '197
patent ended.
The same broadest reasonable interpretation standard should be applied in initial
examinations and reexaminations. See In reMan Machine !ntetiace Technologies LLC,
833 F.3d at 1286. By adopting a different and unreasonably narrow claim construction,
the Office action would have the effect of penalizing the Patent Owner for relying upon
Primary Examiner Sikder's competency to examine the '197 patent.
The denial of the priority claim of the '197 patent in this reexamination revisits an
issue that was considered and settled by Examiner Sikder during the original
prosecution of the application, but reaches a contradictory conclusion via an erroneous
claim construction.
It further prevents Patent Owner from addressing the issue as
would have been permitted during the original prosecution.
Correctly construing the
No. 90/013,497
claim of the '197 patent avoids this injustice and clearly establishes the right of the '197
patent to claim the benefit of the filing date of the '251 patent. Indeed, concerns within
the USPTO regarding the manner in which issues related to written description are
being evaluated have prompted the Director of the USPTO Michelle K. Lee to publish a
framework for appropriate application of the written description requirement when
evaluating priority claims in design patent applications and a request for comment
regarding the need to supplement the provisions in the MPEP to reflect this framework.
See Request for Comments on the Application of the Written Description Requirement
to Specific Situations in Design Applications, 80 Fed. Reg. 22233 (Apr. 15, 2016). The
Federal Register publication regarding the written description requirement in design
patent applications is discussed in detail below.
Proposed Guidance from the Patent Office Supports a Broad Reading of the
Claim and of the Disclosure of the Earlier Application
The USPTO published a notice on April 15, 2016 titled "Request for Comments
on the Application of the Written Description Requirement to Specific Situations in
Design Applications" in the Federal Register Vol. 81, No. 73 at 22233.
The notice
proposes an approach for design examiners in applying general principles governing

compliance with the written description requirement in certain design applications,
principally those containing an amended claim or a claim in a continuing design
application that includes only a subset of originally disclosed elements. While the notice
sought public comment and the proposed approach has not gone into effect at this time,
it is instructive in its recognition of the Federal Circuit decisions on the subject and
general principles taken from those decisions.
The cited portions of Federal Circuit
decisions reinforce the requirement that the analysis consider more broadly what is
claimed rather than simply what is illustrated in any individual drawing(s). Further, they
highlight that the claimed design and the disclosure of the earlier patent must be viewed
from the perspective of an ordinary designer. The proposed approach provides:
When making this determination, the examiner would consider what
the original/earlier application, in its totality (e.g., including the title, any
descriptive statements, and the drawings), would have reasonably
No. 90/013,497
conveyed to an ordinary designer at the time of the invention, and how an

ordinary designer in the art would have designed the article that is the
subject of the design claim. Such considerations can include the nature
and intended use of the article embodying the claimed design as identified
by the title or description (see, e.g., MPEP 1503.01 I (9th ed. 2015)). If,
based on these considerations, the examiner determines that an ordinary
designer would not recognize upon reviewing the complete original/earlier
application the later-claimed design in the original/earlier disclosure, the
examiner would reject the claim for lack of written description (or in the
case of a priority or benefit claim, the application would not be entitled to
the earlier date).
Since the Office has the initial burden of establishing a prima facie
case of lack of written description, should an examiner determine that a
rejection is appropriate, the examiner must set forth express findings of
fact which support the lack of written description determination (see MPEP
2163 for examination guidelines pertaining to the written description

requirement). Upon reply by applicant, before rejecting the claim again
under 35 U.S.C. 112(a) for lack of written description, the examiner would
need to review the basis for the rejection in view of the record as a whole,
including amendments, arguments, and any evidence submitted by
applicant, such as affidavits or declarations.
Request for Comments on the Application of the Written Description Requirement to
Specific Situations in Design Applications, 80 Fed. Reg. 22233, 22236 (Apr. 15, 2016).
Conclusion
A proper analysis of the right of the '197 patent to claim priority to the '251 patent
should consider the disclosure from the perspective of an ordinary designer.
As
specified by the Federal Circuit in Ariad, an analysis should be conducted to determine

whether "the inventor had possession of the claimed subject matter as of the filing date."
Ariad, 598 F.3d at 1351. Professor Visser's declaration clearly establishes that the '251
patent reasonably conveys to those skilled in the art that the inventor had possession of
26.
No. 90/013,497
the control strip claimed in the '197 patent, when properly construed, as of the filing date
of the '251 patent.
In view of the foregoing response, it is believed that the patent remains valid and
that a reexamination certificate should be issued confirming the validity.
If any
questions remain concerning the allowability of the patent, Patent Owner would
appreciate if the Examiners would contact the undersigned attorney by telephone.
Respectfully submitted,
KPPB LLP
By _____________________________
David J. Bailey
Reg. No. 59,632
949.852.0000
Exhibit B
Summary of Examiner Interview

Patent Owner wishes to thank Examiner Ly for extending the courtesy of a
telephonic interview on September 28, 2016.
Patent Owner's outside counsel David
Bailey and Brian Sung were present on the call and were joined by Patent Owner's
representative Christopher Butts. During the interview, a Draft Response to Final Office
Action in Ex Parte Reexamination (Draft Response) was discussed, a copy of which
was submitted herewith via IDS. Examiner Ly indicated that the comparison of the front
views of the control strips illustrated in Fig. 2 of the '251 patent and Fig. 1 of the '197
patent is impactful with respect to the issue of whether an ordinary designer would
appreciate that the inventors of the '197 patent were in possession of the claimed
invention at the time of the filing of the '251 patent.
Accordingly, he recommended
modifying the Draft Response to highlight this submission. However, no agreement was
reached with respect to the patentability of the claim.
Examiner Ly indicated that, while he does not agree with the claim construction
relied upon by Examiner Sikder in allowing the '197 patent, Examiner Ly found no fault
in the search conducted by Examiner Sikder and does not consider Examiner Sikder's
claim construction unreasonable. Examiner Ly agreed that under Examiner Sikder's
claim construction the '251 patent would clearly disclose the more broadly construed
invention and that the '197 patent would obtain the benefit of the '251 patent's filing
date.
Furthermore, Examiner Ly indicated that he believes that the '197 patent is
patentable over the prior art of record when construed in accordance with the claim
construction relied upon by Examiner Sikder in allowing the claim.
Examiner Ly also confirmed that different claim constructions were intentionally
applied in the Office action for the purpose of evaluating written description support in
accordance with 35 U.S.C. 112 and for the purpose of determining anticipation based
upon 35 U.S.C. 102. Patent Owner's counsel David Bailey indicated that the same
broadest reasonable interpretation standard is required during original prosecution and
ex parte reexamination and that the claim construction cannot change when considering
different issues during examination or at different stages of examination. See In re Man
Machine Interface Technologies LLC, 833 F.3d 1282, 1286 (Fed. Cir. 2016), citing In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.1984) ("'n a reexamination, like initial
examinations, the broadest reasonable interpretation (BRI) standard is applied.").

During the Examiner interview, Examiner Ly suggested that the prosecution
history of the '251 patent could not be considered in interpreting the claim of the '197
patent. Patent Owner's counsel directed Examiner Ly to the following summary of the
relevant case law from the Draft Response:
When performing claim construction, the claims must be construed
in light of the prosecution history of related patents even when a right to
claim priority is challenged. See Gemalto S.A. v. HTC Corp., 754 F.3d
1364, 1371 (Fed. Cir. 2014) ("The meaning of terms appearing in the
[child] patent must be construed in light of the same terms recited in the
[grandparent] patent.") (emphasis added). Indeed, "[i]n the context of claim
construction, because a parent patent constitutes intrinsic evidence upon
which a Court can rely to construe the claims of a later continuation
patent, whether the [child] patent is entitled to the priority date of the
[parent] patent is irrelevant." E. Digital Corp. v. New Dane, No. 13-cv2897-H-BGS, 2014 WL 7139698, at *16 (S.D. Cal. Dec. 12, 2014)
(emphasis added). This is true even if the parent patent is not expressly
incorporated by reference in the child patent. !d. ("The [parent] patent file
history constitutes intrinsic evidence that the Court may use to construe
the claims of the [child] patent, even if not expressly incorporated by
reference.") (emphasis added). Furthermore, when a claim is susceptible
to more than one construction, it should be construed to preserve its

validity when reasonably possible. See Karsten Mfg. Corp. v. Cleveland
Golf Co., 242 F.3d 1376, 1384 (Fed. Cir. 2001).
At the conclusion of the interview, Examiner Ly undertook to consult with other

Examiners concerning the issuance of a Notice of Intent to Issue Reexamination
Certificate (NIRC) based upon the requirement in MPEP 2111 to adopt the broadest
reasonable interpretation. Examiner Ly also indicated that he would consult with other
Examiners concerning whether any clarifying amendments might be helpful to force the
'197 patent to be construed in accordance with the claim construction relied upon by
Examiner Sikder in allowing the claim"
Control No.
: 90/0 13,497
Confirmation No. 3 198
Patent No.
: D559, 197
Filed
: April 28, 20 I 5
Title
: Control Strip for Electronic Appliances
TC/A.U.
:2914
Examiner
: Darlington Ly
Docket No.
: S5 1-04124
Customer No.
: 135223
Supplemental Declaration of
Steven C. Visser
INTRODUCTION
I.
My name is Steven Carl Visser.
2.
I have been retained in this matter to provide opinions
regarding the background and state of the art, as well as the level of skill in
the art, as of the earliest date listed under the earliest priority date for U. S.
Patent No. D559, 197 (' 197 patent), which is February I I, 2004.
3.
I have also been retained by Sonos, Inc. as an expert witness in
the litigation Sonos, Inc. v. D&M Holdings Inc. (Denon) in Case No. I: 14cv-0 1330-RGA of US District Court for the District of Delaware, and in
Ex parte Reexamination Control No. 90/0 13,497.

4.
I have no prior professional relationship with any of the parties
in this matter, other than my role as an expert witness for Sonos, Inc.
5.
My previous declaration filed March 31, 2016 is included by
reference.
6.
This supplemental declaration is submitted in support of Patent
Owner's response to the Office action dated June 29, 2016 (the Office
action). The Office action asserts that the patent owner is not entitled to
the earlier filing date because "The '197 Patent is not entitled to the benefit
of priority under 35 U.S.C 120 to the earlier date of the '25 I Patent. The
design in the '197 Patent is not described in the disclosure of the '25 I
Patent." (Office action, p. 3).
7.
I have reviewed Figures 1-5 of the '25 I patent and have
concluded that an ordinary designer would understand from the disclosure

of the '25 I Patent that the inventors had possession of the design claimed
in the '197 Patent at the time of filing of the '25 I Patent. I believe that the
control strip illustrated in the '25 I Patent creates the same overall visual
impression as the design claimed in '197 Patent. Specifically, Figures I and 2
of the' 197 Patent highlight that both the' 197 Patent and the '25 I Patent
disclose essentially the same embodiment of the control strip claimed in the
' 197 Patent.
8.
The Office action suggests four ways in which the designs are
different.
9.
The analysis in the Office action seems flawed in a number of
ways. First, similar views are not compared. The Office action compares
Figure 2 of the '25 I Patent, which is a front view, with Figure 2 of the '197
Patent, which is a perspective view. A person of ordinary skill would
compare all of the drawings of when comparing embodiments, as I did in
my first declaration. Additionally, a person of ordinary skill would find it
easiest to use similar views when comparing two designs. Figure I of the
'197 is the corresponding front view to the front view shown in Figure 2 of
the '25 I Patent.
..,
~tt
f
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!
...
,
YOI
I 0.
voi
It is my understanding that the '25 I Patent has all five views on
a single page. For the '197 Patent each view is drawn at a large scale with
one drawing per page. Above, in the two front drawings, shown side by
side, it is clear that the two drawings show the same ornamental design.
The subtle changes in spacing, and proportion pointed out in the Office
action are diminutive and the ordinary designer would consider the overall
impression created by the control strips to be the same. It is clear that the
spirit of the design remains the same in both of the front views.
I I.
Accordingly, it is my opinion that the front view of the '197,
which was drafted at a larger scale than the front view in the '25 I, its
parent application, shows the same design and the changes suggested in the
Office action are diminutive. I believe a person of ordinary skill viewing the
two would consider them to be the same design, and would consider any
changes in the redrafted front views to be diminutive.
12.
Figure 2 of the '197 Patent shows a perspective view of a
control strip, whereas the '25 I Patent shows orthographic views; top, front,
side, bottom and rear. The '25 I Patent does not show a perspective view
of the device.
13.
The Office action suggests that the '25 I Patent shows the
buttons with a squared edge in Figure 2 and in Figures I, 3 and 4 with a

tapered or contoured edge. However, the Office action does not consider
the disclosure of the originally filed drawings from the '25 I Patent, which
show shading indicating a softened edge treatment in Figure 2.
14.
The textbooks and corresponding teachings relied upon herein
are similar to those that a designer of ordinary skill in the art would have
(I) studied while obtaining a bachelor's degree in industrial design or similar
technical degree and/or (2) relied upon within one year or more of
experience working in the field.
I 5.
An ordinary designer would understand that an edge
treatment could be shown in a front view of a button with a highlight

and/or a shadow line in a shaded drawing. Below is a shaded drawing of a
button strip showing and edge treatment around a button with a highlight
or shadow line, depending on the light source direction. On page 16 of the
book Sketching: Drawing Techniques for Product Designers the authors
point out about light and shading, "Just like in photography, choosing the
most informative viewpoint and a suitable light direction is essential in
creating an optimal 3D illusion. By adding tonal values (light and shading),
one can express volume. A cylinder should look round, a flat surface flat.
Analyzing objects and light conditions is very helpful in understanding the
relations between shapes and shadings, and offer basic information
suggesting volumes and combinations needed for creating depth in a twodimensional sketch." Koos Eissen et al., Sketching: Drawing Techniques for
Product Designers 16 (2007).
Close up detail of shaded drawings from Eissen et al. at 20.
16.
In the file history, the original drawings submitted in the '25 I
Patent were shaded drawings similar to the above, however the submitted
drawings had been faxed or scanned causing pixilation. An ordinary
designer would understand that the originally submitted drawings of the
'25 I Patent indicated the presence of edge treatments on the buttons of
the control strip (and other buttons). Each of the buttons in the control
strip shown in Figure 2 has a shadow line offset from the top outline of
each button. I have pointed out the shadow lines applied to the various
buttons shown in Figure 2 with blue arrows below.
t"'l"!'~":"''
v/'''"'I"!'U~
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............ -'
ifff~o~l4l
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'\,-"~,.-
-~
'),,
17.
I have shown the close-up view of Figure 2 of the file history
drawing of the '25 I Patent, these shadow lines are pointed to with a blue
arrow. The width of the offset of this shadow line matches the width of the
edge treatment in the side views.
"".,.
~2:
T,
'
,,
18.
Therefore, it is my opinion that the softened edge treatment in
the '25 I Patent application was disclosed in all views, including the front
view of the original disclosure provided to the USPTO at the time of the
filing of the '25 I Patent.
19.
Now I turn my attention to the Office action and the
perspective drawings shown in the '197 patent. The Office action suggests
that the perspective view in Figure 2 of the '197 Patent shows a very
specific edge treatment in the form of a "dual edge, of which the top edge is
squared and the bottom edge is tapered ... " Office action, page 3. The
Office action provides no basis for reaching this conclusion, which appears
inconsistent with the manner in which a person of ordinary skill in the art
would interpret the dual line edge treatment illustrated in the perspective
view of the control strip shown in Figure 2 of the '197 Patent.
20.
An ordinary designer would understand that the perspective
view shown in Figure 2 of the '197 Patent is a view that allows the viewer
to see three sides of the device illustrated in the drawing. This perspective
allows the viewer to see the bottom side, right side, and front side, all in a
single view. Views such as the bottom, front and right side views are called
orthographic views. According to the textbook Drawing for Product
Designers by Kevin Henry, "[t]he orthographic system assumes the viewer is
infinitely far away from the object so that only one of three planes can be
seen. Along with anything that is parallel to that view. While it is not
representative of the way humans actually see objects, there is no
distortion, which means the various views can provide accurate dimensional
information for construction. The convention minimally displays a top,
front, and side view which are aligned." Kevin Henry, Drawing for Product
Designers 53 (20 12).
21.
Below is a sample view of a house drawn with orthographic
views reproduced from the textbook. Henry at 53.
.>~
:::-::
..
...
....
.-'
',,j
/:r>j
10
Kevin Henry goes on to explain perspective views. "The perspective

system comes the closest to the natural way humans perceive the world.
In perspective the three primary planes (top, front, and side) are visible and
all lines parallel on the object recede to either one or two vanishing points
(situated on the horizon line). While three-point perspective is possible it
is less common. Perspective is excellent at representing the world as we
perceive it; however, it is ineffective at accurately communicating
dimensions. It is also more optically difficult to master." Henry at 53.
22.
Therefore, perspective views are often utilized in
circumstances where precise dimensions are less important and the overall
look is more important. Below is sample perspective view of the same
house to that shown orthographically above.
II
...
.. .........,,
,
'
........
,.,
..
'
,,.
.......
,, ,,
. ...
23.
Figure 2 of the '197 Patent uses double lines to indicate the
presence of an edge treatment on the buttons of the control strip. A

double line can be an indicator for a softened edge treatment. See the two
drawings below from Drawings for Product Designers. Henry at 131. The
one on the left is the construction drawing and the one on the right is the
final drawing showing a double line to indicate a softened edge.
12
24.
To show a softened edge treatment on a rectilinear form it is
common to use parallel lines. In the example below from Drawings for
Product Designers, a cube is shown with filleted edges (softened edge

treatment). Henry at 12. In the rendering, the wide white line indicates
the softened edge, whereas in the line drawing parallel lines indicate the
soft edge treatment.
...
25.
When drawing two filleted edges (roundings) of unequal
diameter the parallel lines along the upper edge wrap around the corners.
The drawing below is from the textbook Sketching: Drawing Techniques for
Product Designers. Eissen at 126. The drawing shows the multiple roundings
13
exploded from the base rectilinear form. As can be seen in the drawing, the
distance between the two lines indicating the upper fillet are wider apart on
the sides facing the viewer and the two lines showing the upper edge fillet
are much closer together along the upper rear edge (as seen in the upper
right).
26.
As can be seen in this drawing above, the upper right corner is
exploded away. This corner starts with two lines farther apart and as they
curve around the corner, it creates a tapered hook as the two lines
14
converge together. Below is a close-up of the bottom portion of the top

button from Figure 2 of the '197 Patent. Below the reproduced button is
the same Eissen drawing as above, but mirrored to be in the same
orientation as the button. A hook can be seen along the upper left corner
of the objects in each of the drawings. The '197 Patent shows a button
with a smaller edge treatment, as can be seen by the relative closeness of
the two lines, but the principle is similar. Additionally, the pencil widths of
the small button of the '197 Patent are of course much thicker, this causes
the lines to merge together as they hook around the left side .
.
.
'
15
27.
The Office action suggests that the two lines indicate a "dual
edge" involving a squared edge at the top and a taper for the bottom. If
this were true then this hook would not be seen.
28.
The edge detail is very small. To see the edges of the button
drawings requires magnification to the point that the pixels become

noticeable. The '197 Patent illustrates the control strips at close to their
actual scale and convey the visual impression created by the design in use.
Magnification of the drawings of the control strips can be useful to
understanding the design, but involves a level of inspection of detail that
ultimately does not form part of the overall visual impression created by
the illustrated design.
29.
An ordinary designer would also understand that in a
perspective view the edges facing the picture place (in this case the upper
edge of the bottom side and the upper edge on the right side) would have
tangency lines that are farther apart than those in the orthographic front or
side views. Depending upon line width and the size of the edge treatment,
this could lead to the lines appearing as a single line in one view and two
lines in the other due to the effect of the picture plane's angle.
30.
I believe that the incorrect interpretation of Figure 2 of the
'197 Patent in the Office action as having a top edge that is squared and a
16
bottom edge that is tapered may be caused by a psychological effect

pointed out by Kevin Henry in his book Drawing For Product Designers. On
pages 38-39 he states "Psychologists have studied some of the standard
pitfalls and how they 'work' on the brain tells us a lot about good sketching."
He goes on to explain the Necker cube "The axis of symmetry for the
Necker cube is rotated at a 45-degree angle (illustration in red). This
combination with a lack of receding lines and no differentiation in line
weight creates an image which is difficult to locate in space."
The Necker
cube is shown below. As can be seen the same lines can read as coming
forward or receding in space.
F;g. 2S
Th(: ;;1xi) of ~}:mrr,~:-t:;_. f:x :h.::' N~.o:!.:~-r ~~ 1:-~: i-:
~O"t.)t:xi :Jt o 45-d~:q~e:G ,a:;~;!~ (J!),;s~:::;r_:(:n ::-::<:-xi).
Thir;: . . -.x~;b;ned '.Nirh ;.} !;:.:::k of .::.-:e-:k;q ~-:x~:::- .::.~d

r:c
diffe:n:i-:ii~xt i:~
:i:;(:: t'V:'is;ht,
~:(~~n~;.o:: 6 .... ::;:-::-3;::-:
'lihid-: is diH!~;;i-[ i.e kx:<:st~ :r-l s;.,;:..:~o:::-. HighE~3~~~;:-,:)

i.h~ C0:":":e>s or :J.:::rh:~:;~rg i..i p13~ .::.~::::s sr~:;.-~tz~
st.:~J:.i!.t:y
/.
-:.nd
tr:u~ :-;1;;.ke::~ th~: irrc1ge:: ~:<.Y:ier -~: : c;;. .>d.
,_.,..
!
~
l
l
/ .../
;------+-.........,.,;
31.
As pointed out by Necker the same line can sometimes be
interpreted as coming forward or receding into space. One skilled in the

17
art would know that corners help clarify if lines extend or recede in space.
The tapered hook in the bottom left corner of each of the buttons
illustrated in Figure 2 of the '197 Patent is key to understanding the
structure shown. If the Office action's assertion that the first line (top
edge) is a squared edge were true, then this tapered hook would not be
seen curving around to the left side. A squared edge would recede
downward, not extend outward to the left side. However, this tapered
hook is consistent with showing a softened edge treatment, in which the
first line indicates the tangency of the edge treatment. The surface of the
edge treatment continues to extend outward as it curves downward, and
the second line indicates the end of this edge treatment tangent to a
surface extending downward. Accordingly, the Office action's reliance
upon the existence of a "dual edge" in Figure 2 of' 197 Patent in denying it
the benefit of its priority claim to the '25 I Patent is based upon an
unreasonable interpretation of the dual line in Figure 2 of the '197 Patent.
The '197 Patent illustrates no such "dual edge, of which the top edge is
squared and the bottom edge is tapered".
32.
It is my conclusion that an ordinary designer would understand
the two parallel lines at the upper edge of the buttons in the '197 Patent to
be indications of a softened edge treatment. The additional review
18
'
,..
'
~nrorrnat~c~n
."" ..".')
By,.:;;;~/c
STEVEN C VISSER
Doc Code:
IDS
Case
1:14-cv-01330-RGA
Document 208 Filed 12/01/16 Page 109 of 112 PageID #: 12969
Document Description: Information Disclosure Statement filed
PTO/SB/42 (07-09)
Approved for use tt;rough 0713112012. OMB 0651-0031
U.S Patent anrJ Trademark Office; U.S DEPARTMENT OF COMMERCE
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IFirst Named Inventor
Docket Number (Optional)
37 CFR 1.501
INFORMATION DISCLOSURE CITATION
IN A PATENT
(Sheet
of
Patent Number
851-04124
Applicant
Sonos, Inc.
I2914
Issue Date
Art Unit
Jan 8. 2008
U.S. PATENT DOCUMENTS
EXAMINER
INITIAL
DOCUMENT NUMBER
DATE
NAME
CLASS
SUBCLASS
FILING DATE
IF APPROPRIATE
CLASS
SUBCLASS
TRANSLATION
YES
NO
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FOREIGN PATENT DOCUMENTS

DOCUMENT NUMBER
DATE
COUNTRY
--------------------------------------------------------
------------------ --------------------
-------------------------------------------------------
----------------- -------------------
OTHER DOCUMENTS {Including Author, Title, Date, Pertinent Pages, Etc.)

EISSEN, KOOS ET AL., "Sketching: Drawing Techniques for Product Designers'', 2007, pp. 16, 20, 126.
HENRY, KEVIN, "Drawing for Product Designers", 2012, pp. 12, 38, 39, 53, 13L
EXAMINER
DATE CONSIDERED
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NOTICE OF APPEAl FROM THE EXAMINER TO

THE PATENT TRIAL AND APPEAL BOARD
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Box 1450, 1-\lexandria, on Alexandria, VA 22313-1450" [Tl UR L8(a)J
on November 29, 2016
Docket Nun1ber (Option a!)
lss1-04124
In reApplication of
Sonos, Inc.
--~~1~~~~~~~f~:~~-~~:::::::::::::::::::::::II~f~:~:~:::~-~-~:~:::::::::::::::::::::::::::::::_
For
Contra! Strip for Electronic Appliances
Signature /Melissa Yee/

Typed or printed name
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Applicant hereby appeals to the Patent Triai and Appeai Board from the last decision of the examiner.
$ 800
The fee for this Notice of Appeai is (37 CFR 4L20(b)(1))
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Philip A. Rovner, Esquire
Jonathan A. Choa, Esquire
POTTER ANDERSON & CORROON LLP
Hercules Plaza
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Attorneys for Plaintiff
VIA ELECTRONIC MAIL
George I. Lee, Esquire

Sean M. Sullivan, Esquire
Rory P. Shea, Esquire
John Dan Smith III, Esquire
Michael P. Boyea, Esquire
LEE SULLIVAN SHEA & SMITH LLP
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Attorneys for Plaintiff
VIA ELECTRONIC MAIL
/s/ Michael J. Flynn

Michael J. Flynn (#5333)

Sonos v. D&amp;M - Notice of Rejection of D559197

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Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 1 of 112 PageID #: 12861

IN THE UNITED STATES DISTRICT COURT

NOTICE OF FINAL REJECTION CONCERNING U.S. PATENT NO. D559,197

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Michael J. Flynn

United States Patent and Trademark Office

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

PTOL-90A (Rev. 04/07)

Commissioner for Patents

DO NOT USE IN PALM PRINTER

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM

REEXAMINATION CONTROL NO. 901013.497.

Application/Control Number: 90/013,497

Art Unit: 2914

Ex Parte Reexamination Office Action

Benefit of Earlier Filing Date

Application/Control Number: 90/013,497

Art Unit: 2914

Application/Control Number: 90/013,497

Art Unit: 2914

bet.veen the ~ength

Suttons are shm%T'l

The nm1t-{!atrve effect of the differences kientifled abo\'e results

Application/Control Number: 90/013,497

Art Unit: 2914

Controller because the invention was patented or described in a printed publication in

Gorham Co. v. White, 81 U.S. 511, 528 (1871)

Application/Control Number: 90/013,497

Art Unit: 2914

Although no differences are immediately evident, any contrast in appearance between

ZonePlayer ZPlOO and Sonos Controller.

Application/Control Number: 90/013,497

Art Unit: 2914

Application/Control Number: 90/013,497

Application/Control Number: 90/013,497

Art Unit: 2914

.-... ' ........

................................... ,.)._ _......

... " ................................... -~ "':

.................... -......;. ....................

Application/Control Number: 90/013,497

Art Unit: 2914

Patent Owner's Rebuttal

Application/Control Number: 90/013,497

Art Unit: 2914

Patent owner submits that:

Application/Control Number: 90/013,497

Art Unit: 2914

Patent owner submits that:

"... the embodiment illustrated in the drawings of the '251 patent is a

Application/Control Number: 90/013,497

Art Unit: 2914

Application/Control Number: 90/013,497

Application/Control Number: 90/013,497

Art Unit: 2914

Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings.

Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c).

Any inquiry concerning this communication or earlier communications from the

Information regarding the status of an application and reexamination proceedings may

Application/Control Number: 90/013,497

Art Unit: 2914

Office Action in Ex Parte Reexamination

Sonos v. D&M - Notice of Rejection of D559197

Sonos v. D&M - Notice of Rejection of D559197