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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


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.

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 2 of 112 PageID #: 12862

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 3 of 112 PageID #: 12863

EXHIBIT
A

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 4 of 112 PageID #: 12864
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)

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 5 of 112 PageID #: 12865

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)

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Application/Control Number: 90/013,497

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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

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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.

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Application/Control Number: 90/013,497

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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).

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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

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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))

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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.

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Page 8

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Application/Control Number: 90/013,497

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Application/Control Number: 90/013,497

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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,

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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

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Application/Control Number: 90/013,497

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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

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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

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Application/Control Number: 90/013,497


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 ).

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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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Application/Control Number: 90/013,497

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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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 21 of 112 PageID #: 12881

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

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EXHIBIT
B

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 23 of 112 PageID #: 12883

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
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

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.

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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
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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.").

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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

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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

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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
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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.

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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.

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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.
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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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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.


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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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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
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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
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 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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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
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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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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).

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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


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

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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

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 ). 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.

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'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.

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"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.

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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
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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.

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.
.
.

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
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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.

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~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.

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Office action, p. 6.

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.

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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.

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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

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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.

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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.

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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.

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 55 of 112 PageID #: 12915

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:
Submitted with Payment

no

File Listing:
Document
Number

Document Description

File Name

File Size( Bytes}/


Message Digest

Multi
Part /.zip

Pages
(ifappl.)

no

28

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04124ExhA.pdf
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bOaS

Warnings:

Case 1:14-cv-01330-RGA
Information:

Document 208 Filed 12/01/16 Page 56 of 112 PageID #: 12916


96415

Miscellaneous Incoming Letter

04124ExhB.pdf

no

no

19

no

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no

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04124Visserdec.pdf
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Information Disclosure Statement (IDS)


Form (SB08)

04124ids1449.pdf
adbd1 b6ececf3607fd 1e4f7Se5a3bade4f4f
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Warnings:
Information:
This is not an USPTO supplied IDS fillable form

1249898

Non Patent Literature

04124EissenSketching.pdf
Od 1cee562642a54d2f6a5848b8b08944c5e
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Warnings:
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Transmittal Letter

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Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 57 of 112 PageID #: 12917
876110

yes

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Document Description

Start

End

Response After Final Action

Applicant Arguments/Remarks Made in an Amendment

32

Warnings:
Information:
Total Files Size (in bytes)

7105573

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.
National Stage of an International Agglication under 35 U.S.C. 371
If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
New International 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
and of the International Filing Date (Form PCT/R0/1 OS) will be issued in due course, subject to prescriptions concerning
national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
the application.

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 58 of 112 PageID #: 12918

Exhibit A

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 59 of 112 PageID #: 12919

PATENT
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

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.

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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.

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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., 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.

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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

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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.

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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.

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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.

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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.

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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
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 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.

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'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
conveys to those skilled in the art that the inventor had possession of the claimed

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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
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


11.

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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 ...

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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
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).

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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

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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

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 ). 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.

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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.

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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.

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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.

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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

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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

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(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

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control strip featured on the Sonos ZoneP!ayer ZP100 and Sonos

Controller."
Office action, p. 6.

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.

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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.

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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

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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

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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.

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 85 of 112 PageID #: 12945

No. 90/013,497
REPLY TO OFFICE ACTION OF JUNE 29, 2016
REEXAMINATION CONTROL

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 86 of 112 PageID #: 12946

Exhibit B

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 87 of 112 PageID #: 12947

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 88 of 112 PageID #: 12948

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 89 of 112 PageID #: 12949

'197 patent to be construed in accordance with the claim construction relied upon by
Examiner Sikder in allowing the claim"

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 90 of 112 PageID #: 12950

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 91 of 112 PageID #: 12951

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 92 of 112 PageID #: 12952

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 93 of 112 PageID #: 12953

'197 is the corresponding front view to the front view shown in Figure 2 of
the '25 I Patent.

..,

~tt

f
!
!
!

...
,

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.

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 94 of 112 PageID #: 12954

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.

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 95 of 112 PageID #: 12955

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).

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 96 of 112 PageID #: 12956

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.

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 97 of 112 PageID #: 12957

t"'l"!'~":"''

v/'''"'I"!'U~

f1~~'-~
............ -'

ifff~o~l4l
~

~,.

'\,-"~,.-

-~

'),,

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,
'

,,

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 98 of 112 PageID #: 12958

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 99 of 112 PageID #: 12959

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 100 of 112 PageID #: 12960

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 101 of 112 PageID #: 12961

...

.. .........,,
,

'

........

,.,

..

'

,,.

.......
,, ,,
. ...

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 102 of 112 PageID #: 12962

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 103 of 112 PageID #: 12963

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 104 of 112 PageID #: 12964

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 105 of 112 PageID #: 12965

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 106 of 112 PageID #: 12966

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 107 of 112 PageID #: 12967

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

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 108 of 112 PageID #: 12968

'
,..
'
~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
Under the Paperwork Reduction Act ol1995, no persons are reauired to respond to a ccoliection of ;nformation unless it displavs a vaiid OMS control number.

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

-------------------------------------------------------

-------------------------------------------------------

-------------------------------------------------------

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

This collection of information is required by 37 CFR 1 .50"1. The information is required to obtain or retain a benefit by the pulilic which is to me (and by the USPTO
to process) an appiicat;on. Confidentiality is governed by 35 U.S.C. 122 and 3 7 CFR 1.14. This collection ;s estimated to take 2 hours to complete, including
gathering, preparing, and submitting the completed application iorm to the USPTO. Time will vary depending upon the individual case. Any comments on the
amount of tirne you require to complete this form ami/or suggestions for reducing this burden, shoulti tJe sent to tt1e Chief Information Officer. U.S. Patent ami
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Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 110 of 112 PageID #: 12970

EXHIBIT
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Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 111 of 112 PageID #: 12971

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NOTICE OF APPEAl FROM THE EXAMINER TO


THE PATENT TRIAL AND APPEAL BOARD
I hereby certify that this correspondence iS being facsimile
transmitted to the USPTO, EFS-Web transmitted to the USPTO, or
deposited with the United States Postal Service with sufficient
postage in an envelope addressed to "Commissioner for Patents, P.O.
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

_!~~!~~~~~~~--~-:~~---------------------------------------------------------

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))

0
0

Applicant asserts small entity status. See 37 CFR 1.27. Therefore, the fee shown above is reduced
by 50%, and the resulting fee is:

$ _ _ _ _ _ __

Applicant certifies micro entity status. See 37 CFR L'9. Therefore, the fee shown above is reduced
by 75%, and the resulting fee is:

$ _ _ _ _ _ __

Form PTO/SB/15,\ orB or equivalent must either be enc!osed or have been submitted previously.

D
0
0

A check in the amount of the fee is enclosed_


Payment by credit card. Form PT0-2038 is attached.
The Director is hereby authorized to charge any fees which may be required, or credit any overpayment
to Deposit Account No. _s_.0_4_4_0_7_ _ _ _ _ __

0
D

Payment made via EFS-Web_


A petition for an extension of time under 37 CFR L136(a) (PTO/AIA/22 or equivalent) is enclosed_
t=or extens;ons of t;rne in reexamination proceedings, :;ee 37 Ct=R 1.SSO.

WARNING: Information on this form may become public. Credit card information should not be included
on this form. Provide credit card information and authorization on PT0-2038.

I am the

[ZJ

applicant

attorney or agent of record


Registration number

-~~~~~-~~---------------------

attorney or agent acting under 37 CFR L34


Registration number ---------------------------------

Signature /David ,L Bai!ey/


Typed or printed name David J. Bailey

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Te le phone Number -~~~~-~-~~:~~~-?----------------------------------------------------------------------------------------------------------------------------------------------------------------------------------

Date_~_~':'_~~:~~~-~~:_?:~_!_~-------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------NOTE: This form must be signed in accordance with 37 CFR 1.33. See 37 CFR lA for signature requirements and certifications. Submit multiple
forn1s if more than one signature is required, see below*.

*Total of_1_ _ _ _ _ _ forms are submitted.

Th1s collection of mformat1on 1s requ~red by 37 CFR 4L20(b)(1) and 4131. The mformat1on 1s requ~eed to obtam or retam a benefit by the public wh1ch 1s to file (and
by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C 122 and 37 CFR 1.11, 1.14 and 41.6. This collection is estimated to take 12 minutes
to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any
comments on the amount oftime you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer,
US Patent and Trademark Office, US Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

if you need assistance in completing the form, caff .1-800-PT0-9199 and select option 2.

Case 1:14-cv-01330-RGA Document 208 Filed 12/01/16 Page 112 of 112 PageID #: 12972

CERTIFICATE OF SERVICE
I hereby certify that on December 1, 2016, I caused the foregoing to be
electronically filed with the Clerk of the Court using CM/ECF, which will send notification of
such filing to all registered participants.
I further certify that I caused copies of the foregoing document to be served on
December 1, 2016, upon the following in the manner indicated:
Philip A. Rovner, Esquire
Jonathan A. Choa, Esquire
POTTER ANDERSON & CORROON LLP
Hercules Plaza
Wilmington, DE 19801
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
224 North Desplaines Street, Suite 250
Chicago, IL 60661
Attorneys for Plaintiff

VIA ELECTRONIC MAIL

/s/ Michael J. Flynn


Michael J. Flynn (#5333)