USPTO's Conclusion of Obviousness Rendered Primary Reference Unsatisfactory for Intended Purpose

In a nonprecedential opinion, the Federal Circuit vacated a decision by the Board and remanded the case on appeal from the USPTO.  This appeal arose from a decision of the Patent Trial and Appeal Board in an ex parte reexamination, which concluded that all of the claims in U.S. Patent No. 7,574,272 were unpatentable as obvious over two prior art references.  The Federal Circuit vacated the Board's obviousness conclusion because it was based on findings not supported by substantial evidence, a conclusion all too commonly issued by the USPTO.

The '272 patent is directed to a portable media player that minimizes power consumption during transfer of data from a spinning storage medium (such as a CDROM) to other memory in the player.  The portable media player generally consists of off-the-shelf components, but notably, a storage device has a motor that is only enabled when the system requires a data transfer from the spinning storage media in storage device to a buffer.  The motor consumes a significant amount of power when active, and so by selectively enabling the motor, power consumption is reduced.

The '272 patent describes that data transfer generally occurs when the central processing unit executes instructions from memory to transfer compressed digital data from storage device to buffer.  Once the compressed digital data is received by buffer, that data is then sent through a high-speed serial bus to CODEC, where it can be converted to decompressed analog data, and ultimately sent to an audio output device, such as a pair of headphones.  The optimization of the data transfer process from storage device to CODEC relies on the structure and organization of buffer.  In particular, the buffer may be readily broken down into a number of individual buffers, and each individual buffer is entirely "lockable" -- that is, at any given time, a buffer storing compressed digital data is temporarily locked such that the data cannot be overwritten, even while neighboring buffers are receiving new compressed digital data from the storage device.

The "lockable" feature of the buffers is the touchstone of the claimed invention because it limits how much compressed digital data can be reloaded into buffer at any given time, thereby reducing the frequency in which storage device has to be activated and the motor therein enabled.  Claim 1 is representative of the claimed invention:

1.  A portable media player comprising:
    a processor that executes commands;
    a random-access-memory component that stores compressed data in more than two different random-access-memory buffer areas, each random-access-memory buffer lockable and unlockable by the processor;
    a codec component, controlled by the processor, that reads compressed data from a locked random-access-memory buffer, the locked random-access-memory buffer selected from among the more than two different random-access-memory buffer areas and locked by the processor to prevent writing of the locked random-access memory buffer by another component, and that generates a decompressed signal from the read compressed data that is rendered by a data-rendering component;
    a non-volatile, mass-storage component that stores compressed data and that writes compressed data, under control of the processor, to unlocked random-access memory buffers; and
    a battery power supply to provide electrical power to the processor, random-access memory component, codec component, data-rendering component, and non-volatile, mass-storage component.

The Ex Parte Reexamination

The USPTO instituted an ex parte reexamination of all of the claims of the '272 patent.  During the reexamination, the Examiner concluded that the patent claims were obvious in light of several, two-reference combinations.  On appeal, the Board affirmed the examiner's conclusion of obviousness, relying on only one combination:  references to U.S. Patent No. 6,332,175 (Birrell) and U.S. Patent No. 5,842,015 (Cunniff).

Birrell is directed to a portable audio player that stores compressed audio data on an internal storage unit such as a hard disk drive, and loads that data into an internal RAM, from where the data can be played.  An audio player's play control logic monitors the amount of unplayed compressed data that remains in the RAM as that data is being played from the RAM.  Once the play control logic recognizes that the amount of unplayed, compressed data in the RAM has fallen below a threshold, the play control logic copies additional compressed data from the storage unit into the RAM.  Keeping the RAM continually filled with an adequate amount of compressed data ensures that there is no break in audio output.

Cunniff discloses a hardware resource manager, or a software program, for use in a computer system that controls access to a hardware resource by several application programs.  The hardware resource manager includes a shared memory buffer that has a semaphore (a type of lock) that controls how many application programs can access the hardware resource at any given point in time.  The semaphore protects the hardware resource manager from having more than one application program write to the shared memory buffer at a time, which preserves the integrity of the shared resources of the shared memory buffer.  In other words, the semaphore ensures that the application programs do not overwrite each other's commands or data stored in the audio shared memory buffer.

In affirming the Examiner's conclusion of obviousness, the Board explained that there was no reason why Birrell would not have benefited from the advantages of including Cunniff's semaphore mechanism.  The Board asserted that Cunniff's semaphore mechanism is readily applicable to Birrell because Birrell plays data stored in the RAM and also copies data from the disk drive to the RAM.  As such, modifying Birrell to include Cunniff's semaphore mechanism would have been a predictable use of prior art elements according to their established functions -- an obvious improvement.  And the Board also noted that the fact that a lockless implementation may be used in Birrell did not persuade it that an implementation using locks would not have been obvious because although the use of locks adds additional complexity and computations, an implementation using locks is within the knowledge of a skilled artisan.

The Federal Circuit disagreed with the Board on four counts, summarized below.

First, the Federal Circuit found that the Board never sufficiently justified why Cunniff's semaphore would provide an "obvious improvement" to Birrell.  At oral argument, the PTO argued that it would have been obvious to substitute Birrell's play control logic with Cunniff's semaphore.  But the Federal Circuit found this substitution to be illogical as it would leave Birrell void of the mechanism it relies on to monitor when the compressed data in the RAM has fallen below a level such that additional data from the storage unit needs to be copied over into the RAM.  Loss of this mechanism would thus strip Birrell of the ability to timely copy additional data into the RAM to ensure continuous playing of an audio file.  In other words, removing the play control logic defeats the purpose of Birrell's system.

Second, as an alternative argument, the Board 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.  But the Federal Circuit found that this contention was not supported by substantial evidence.  The Federal Circuit found that this record describes no problem in Birrell that would be resolved by the semaphore in Cunniff.

Third, the Federal Circuit found that even if the semaphore in Cunniff were readily applicable to the RAM in Birrell, the Board did not 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 Board attempted to address this deficiency at oral argument by reference to figures in Birrell, but the Board's decision neither addressed how Birrell or Cunniff disclosed multiple, lockable buffers nor relied upon any of the figures.

Fourth, the Federal Circuit noted that a "lockless" Birrell worked without trouble and that the application of Cunniff's semaphore to Birrell's RAM would add additional complexity and computations to Birrell.  Given these findings, the Board needed to explain why a skilled artisan would still have a reason to combine Birrell and Cunniff to achieve the claimed invention.  Although the Board asserted that Birrell would have benefited from the advantages of Cunniff's semaphore mechanism, the Board did not explain why this is so.

An overriding theme of the Federal Circuit's opinion is that the Board did not substantiate its decision.  Rather, the Board, at best, merely posited that a skilled artisan could combine Birrell and Cunniff, notwithstanding any difficulties, and would do so because these references were within the knowledge of a skilled artisan.  But in view of the record, this broadly-stated conclusion suffers from hindsight bias.

Thus, the Federal Circuit vacated the Board's decision and remanded for further proceedings consistent with the opinion.

This decision by the Federal Circuit is a nice example that can be useful during prosecution of patent applications, and responding to obviousness rejections.  All too often, an Examiner will pick and choose portions of multiple references, and conclude that it would have been obvious to one of ordinary skill in the art to modify the primary reference resulting in the claimed invention.  But, many times, what is missing from the rejection is any justification for doing so, or more importantly, an explanation of why or how a skilled artisan would configure or manipulate the primary reference to achieve the claimed invention.  Even though some pieces of the claimed invention are found in the prior art combination, the Examiner is still tasked with the responsibility of explaining how one would modify the primary reference to arrive at the claimed invention.

In re Schweickert (Fed. Cir. 2017)
Nonprecedential disposition
Panel: Circuit Judges Newman, Chen, and Stoll
Opinion by Circuit Judge Chen