By Cheryl Beise, J.D.
The Patent Trial and Appeal Board failed to offer sufficient evidence to support its conclusion that a patent claiming a method for optimizing data transfer in a portable audio device was obvious over a combination of two prior art references, the U.S. Court of Appeals for the Federal Circuit has ruled (In re Schweickert, January 26, 2017, Chen, R.).
Jennifer Schweickert is the current owner of U.S. Patent No. 7,574,272 (the ’272 patent), entitled “System and method for data transfer optimization in a portable audio device.” The patent is directed to a portable media player that minimizes battery power consumption during the transfer of data from a spinning storage medium (such as a CD-ROM) to other memory in the player. The portable media player generally consists of off-the-shelf components. The optimization of the data transfer process from storage device 126 to CODEC 114 relies on the structure and organization of buffer 124.
The PTO instituted an ex parte reexamination of all of the claims of the Ê¼272 patent. During the reexamination, a PTO examiner concluded that all 10 patent claims were obvious in light of several two-reference combinations. The PTAB affirmed, relying only on one particular combination: U.S. Patent No. 6,332,175 (Birrell) and U.S. Patent No. 5,842,015 (Cunniff).
Birrell is generally directed at a portable audio player that stores compressed audio data on an internal hard disk drive, and loads the data into an internal RAM, from where the data can be played. The audio player’s play control logic controls the amount of unplayed compressed data in the RAM at any given time to ensure no break in audio output.
Cunniff discloses a hardware resource manager, i.e.., a computer software program that controls access to a hardware resource through application programs. The hardware resource manager uses a shared memory buffer with a semaphore (a type of lock) that controls how many application programs can access hardware resource at any given point in time. The semaphore ensures that application programs do not overwrite each other’s commands or data stored in the audio shared memory buffer.
The Board found that modifying Birrell to include Cunniff’s semaphore mechanism would have been “an obvious improvement” to a person having ordinary skill in the art and that an implementation using locks, despite adding additional complexity and computations, was within the knowledge of a skilled artisan.
The Federal Circuit disagreed with the Board’s determination that it would have been obvious to substitute Birrell’s play control logic with Cunniff’s semaphore. According to the court, such a substitution was “illogical” because it stripped Birrell of the ability to timely copy additional data into the RAM to ensure continuous playing of an audio file. Removing the control logic would “defeat the purpose of Birrell’s system” and there was nothing in Cunniff’s semaphore to supply the critical control logic function, the court observed.
The PTO alternatively contended that Birrell’s RAM is similarly situated to Cunniff’s limited shared resource, and thus Birrell would have benefited from the addition of the access control provided by Cunniff’s semaphore. This contention also was not supported by substantial evidence. Cunniff describes at least two application programs competing for access to a limited hardware resource, but there is no similar competition for access to Birrell’s RAM, let alone competition to use the compressed data stored in the RAM, the court explained. The PTO described no problem in Birrell that was resolved by the semaphore in Cunniff, the court said.
Moreover, even if the semaphore in Cunniff were readily applicable to the RAM in Birrell, the Board failed to explain why or how a skilled artisan would further configure or manipulate Birrell’s RAM such that there would be multiple lockable buffers as claimed in the ’272 Patent. The record also did not support the PTO’ assertion that a skilled artisan would have been motivated to combine Cunniff and Birrell, despite the difficulties of doing so, because Birrell’s system would be more cost-effective to manufacture with Cunniff’s semaphore. “[T]his broadly-stated conclusion suffers from hindsight bias,” the court said.
Because the record did not supply a sufficient basis for why a skilled artisan would have applied Cunniff to Birrell, the Board’s decision was vacated and the case remanded.
The case is No. 2016-1266.
Attorneys: Robert W. Bergstrom and Richard L. Bell (Olympic Patent Works) for Jennifer Schweickert. Brian Racila, Thomas W. Krause, Michael Sumner Forma, and Scott Weidenfeller Office of the Solicitor, UUSPTO, for Michelle K. Lee.
MainStory: TopStory Patent TechnologyInternet FedCirNews
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