In Re: Schweickert

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

IN RE: JENNIFER SCHWEICKERT,
Appellant
______________________

2016-1266
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/012,284.
______________________

Decided: January 26, 2017
______________________

ROBERT W. BERGSTROM, Olympic Patent Works, Seat-
tle, WA, argued for appellant. Also represented by
RICHARD L. BELL.

BRIAN RACILLA, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Michelle K. Lee. Also represented by THOMAS W.
KRAUSE, MICHAEL SUMNER FORMAN, SCOTT
WEIDENFELLER.
______________________

Before NEWMAN, CHEN, and STOLL, Circuit Judges.
CHEN, Circuit Judge.
This appeal arises from a decision of the Patent Trial
and Appeal Board in an ex parte reexamination, which
2 IN RE: SCHWEICKERT

concluded that all of the claims in U.S. Patent No.
7,574,272 were unpatentable as obvious over two prior art
references. Because the Board’s obviousness conclusion is
based on findings not supported by substantial evidence,
we vacate the Board’s decision.
BACKGROUND
A. The Invention
The ’272 Patent is directed at a portable media player
that minimizes 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 as
seen in figure 1.

’272 Patent fig. 1. Notably, “storage device 126 has a
motor that is only enabled when the system 100 requires
a data transfer from the [spinning] storage media” in
storage device 126 to buffer 124. Id. col. 3 l. 58–col. 4 l. 3;
see also id. col. 6 ll. 3–5. “[T]he motor . . . consumes a
significant amount of power when active”—it is “the main
source of power consumption in system 100.” Id. col. 6 ll.
5–8.
IN RE: SCHWEICKERT 3

Data transfer generally occurs when central pro-
cessing unit 102 executes instructions from memory 104
to transfer compressed digital data from storage device
126 to buffer 124, which can consist of random access
memory (RAM). See id. col. 5 ll. 11–19; see also id. col. 3
ll. 58–59. Once the compressed digital data is received by
buffer 124, that data is then sent through a high-speed
serial bus to CODEC 114, where it can be converted to
decompressed analog data, id. col. 3 ll. 14–22; id. col. 3 ll.
48–49, and ultimately sent to “an audio output device 118,
such as a pair of headphones,” id. col. 3 ll. 48–54.
The optimization of the data transfer process from
storage device 126 to CODEC 114 relies on the structure
and organization of buffer 124. See generally id. col. 7 l.
21–col. 10 l. 56. In particular, “buffer 124 may be readily
broken down into a number of individual buffers.” Id. col.
7 ll. 44–45. And each individual buffer is entirely “locka-
ble”—that is, at any given time, a buffer storing com-
pressed digital data is temporarily locked such that the
data cannot be overwritten, even while neighboring
buffers are receiving new compressed digital data from
storage device 126. See id. col. 10 l. ll. 42–45. The “locka-
ble” feature of the buffers is the touchstone of the claimed
invention because it limits how much compressed digital
data can be reloaded into buffer 124 at any given time,
thereby reducing the frequency in which storage device
126 has to be activated and the motor therein enabled.
See id. col. 10 ll. 42–51. 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;
4 IN RE: SCHWEICKERT

a codec component, controlled by the pro-
cessor, that reads compressed data from a
locked random-access-memory buffer, the
locked random-access-memory buffer se-
lected from among the more than two dif-
ferent 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 electri-
cal power to the processor, random-access
memory component, codec component, da-
ta-rendering component, and non-volatile,
mass-storage component.
Id. col. 12 ll. 32–55.
B. The Prior Art
U.S. Patent No. 6,332,175 (Birrell) is generally di-
rected at 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. Birrell col. 3 ll. 39–47. In
addition to storing compressed data, other portions of the
RAM are designated for the storage of information related
to the data, such as a list of audio tracks to be played.
See, e.g., id. figs. 2A, 2B, 2C.
To play the compressed data from Birrell’s RAM, a
converter changes the data into decompressed audio data,
IN RE: SCHWEICKERT 5

and the decompressed data is ultimately sent to an output
jack. Id. col. 4 ll. 30–37. The 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. Id. col. 5 ll. 9–12; see also id. col. 6 ll. 5–
28. Once the play control logic recognizes that the
amount of unplayed, compressed data in the RAM falls
below a threshold, the play control logic copies additional
compressed data from the storage unit into the RAM. See
id. col. 6 ll. 5–28. Keeping the RAM continually filled
with an adequate amount of compressed data ensures
that there is no break in audio output. See id.
U.S. Patent No. 5,842,015 (Cunniff) generally disclos-
es 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.
Figure 2 in Cunniff is a block diagram that illustrates the
architecture of an embodiment of the hardware resource
manager.

Cunniff fig. 2.
6 IN RE: SCHWEICKERT

Inside hardware resource manager 10 is a shared
memory buffer 36. See id. Importantly, shared memory
buffer 36 has a semaphore (a type of lock) that controls
how many application programs can access hardware
resource 16 at any given point in time. Id. col. 6 ll. 20–23.
The semaphore “protects the hardware resource manager
from having more than one application program write to
the shared memory buffer 36 at a time,” which “preserves
the integrity of the shared resources of the shared
memory buffer 36.” Id. col. 6 ll. 41–46. 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.” Id. col. 8 ll. 5–12. The
semaphore’s role in shared memory buffer 36 is illustrat-
ed in the block diagram below.

Id. fig. 4.
C. The Ex Parte Reexamination
The Patent and Trademark Office instituted an ex
parte reexamination of all of the claims of the ʼ272 Pa-
tent. During the reexamination, a PTO examiner con-
cluded that the patent claims were obvious in light of
several, two-reference combinations. The Board affirmed
IN RE: SCHWEICKERT 7

the examiner’s conclusion of obviousness, relying on only
one combination: Birrell and Cunniff. J.A. at 4–7. In
doing so, it explained that there was
no reason why Birrell would not have benefitted
from the advantages of including Cunniff’s sema-
phore mechanism. Cunniff’s semaphore mecha-
nism 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 sema-
phore mechanism would have been a predictable
use of prior art elements according to their estab-
lished functions—an obvious improvement.
Id. at 5–6. And the Board also noted that
the fact that a lockless implementation may be
used in Birrell [did] not persuade [it] that an im-
plementation using locks would not have been ob-
vious because although the use of locks adds
additional complexity and computations, . . . an
implementation using locks is within the
knowledge of a skilled artisan.
Id. at 6.
The patent owner sought reconsideration of this deci-
sion, but the Board stood by its decision. See id. at 10–14.
The patent owner has timely appealed the Board’s obvi-
ousness determination to this court. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012) and 35
U.S.C. § 141 (2012).
DISCUSSION
We review the Board’s factual findings for substantial
evidence and its legal conclusions without deference. Flo
Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367,
1375–76 (Fed. Cir. 2012) (citing cases). Substantial
evidence “means such relevant evidence as a reasonable
8 IN RE: SCHWEICKERT

mind might accept as adequate to support a conclusion.”
Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1337
(Fed. Cir. 2016) (quoting Consol. Edison Co. of N.Y. v.
NLRB, 305 U.S. 197, 217 (1938)). A claim is unpatentable
as obvious if the differences between the claimed subject
matter and the prior art are such that the subject matter
as a whole would have been obvious at the time of inven-
tion to a person having ordinary skill in the art. 35
U.S.C. § 103(a). 1 Obviousness is a question of law prem-
ised on underlying issues of fact, including: (1) the scope
and content of the prior art; (2) the level of ordinary skill
in the pertinent art; (3) the differences between the
claimed invention and the prior art; and (4) objective
evidence, such as commercial success, long-felt need, and
the failure of others. E.g., KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 427 (2007). Similarly, the determinations of
what a prior art reference teaches and the existence of a
reason to combine references are questions of fact. E.g.,
In re Hyon, 679 F.3d 1363, 1365–66 (Fed. Cir. 2012).
Here, the Board never sufficiently justifies why Cun-
niff’s semaphore would provide an “obvious improvement”
to Birrell. J.A. at 5. At oral argument, the PTO argued
that it would have been obvious to substitute Birrell’s
play control logic with Cunniff’s semaphore. See Oral
Argument at 16:00–17:00, http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=2016-1266.mp3. But this
substitution is illogical as it would leave Birrell void of
the mechanism it relies on to monitor when the com-

1 In passing the Leahy-Smith America Invents Act
(AIA), Congress amended 35 U.S.C. § 103(a). See Pub. L.
No. 112-29, § 3(c), 125 Stat. 284, 287–88 (2011). However,
because the application that led to the ʼ272 Patent was
filed before March 16, 2013, the pre-AIA § 103(a) applies.
See id. § 3(n)(1), 125 Stat. at 293.
IN RE: SCHWEICKERT 9

pressed 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. Nothing in Cun-
niff’s semaphore serves this critical function supplied by
Birrell’s play control logic. 2
Alternatively, the PTO contends 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.
Appellee Br. at 24. This contention is also not supported
by substantial evidence. Cunniff describes at least two
application programs competing for access to a limited
hardware resource. See Cunniff col. 5 ll. 52–57 (“[T]he
hardware resource manager of the present invention
along with its associated methodology can be employed in
connection with more than one application program 12 for
controlling and managing the use of an associated hard-
ware resource 16 within a computer system . . . .”). But
there is no similar competition for access to Birrell’s RAM,

2 Relatedly, the PTO argues that Birrell, like Cun-
niff, seeks to avoid unintended overwriting of data, and
that Cunniff’s semaphore would be a suitable mechanism
to address that concern. See Appellee Br. at 20–21.
Birrell’s concern with unintended overwriting, however, is
limited to the circumstance in which users may wish to
rewind the most recently played data to replay it. And
Birrell’s play control logic already addresses this concern
through its timing of copying new data in a way that
precludes immediately overwriting the most recently
played data. Birrell col. 6 l. 64–col. 7 l. 5.
10 IN RE: SCHWEICKERT

let alone competition to use the compressed data stored in
the RAM. This record describes no problem in Birrell that
would be resolved by the semaphore in Cunniff.
The Board’s decision is deficient in another respect.
Even if the semaphore in Cunniff were readily applicable
to the RAM in Birrell, the Board has not explained why or
how a skilled artisan would further configure or manipu-
late Birrell’s RAM such that there would be multiple
lockable buffers as claimed in the ’272 Patent. See ’272
Patent col. 10 ll. 42–56 3; see also KSR, 550 U.S. at 418
(stressing that it is “important to identify a reason that
would have prompted [a skilled artisan] to combine the
elements in the way the claimed new invention does”
(emphasis added)).
The PTO attempted to address this deficiency at oral
argument. It directed us to certain disclosures in Birrell
and Cunniff: (1) figures 2A, 2B, and 2C in Birrell; and (2)
figure 4 in Cunniff. See Oral Argument at 20:08–21:44,
23:48–24:18, http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2016-1266.mp3. As a preliminary matter,
the Board’s decision neither addressed how Birrell or
Cunniff disclosed multiple, lockable buffers nor relied
upon these figures.
Moreover, Figures 2A, 2B, and 2C in Birrell disclose
RAM that can be partitioned into separate storage areas
for different types of data or information, such as an area

3 We briefly pause to note that the ʼ272 Patent
specification seemingly acknowledges that the claimed
invention is only an advance over the prior art because it
uses more than two lockable buffers whereas it was
already known to use one buffer that is allocated into two
portions, where one portion is lockable and the other
portion is not. See ʼ272 Patent col. 10 ll. 42–56.
IN RE: SCHWEICKERT 11

for storing a list of audio tracks to be played. But Birrell’s
partitioned RAM does not suggest the use of multiple
RAM buffers for the compressed data. Birrell discloses
RAM with a single buffer for such data. See Birrell col. 5
ll. 40–42 (“A portion of [the] RAM . . . is devoted to storing
a predetermined amount of [compressed data].” (emphasis
added)). And figure 4 in Cunniff fares no better. There is
no indication that the buffers there are individually
lockable.
We note one more shortcoming in the Board’s deci-
sion. The Board found 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. J.A. at 6. 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. See, e.g., Intel-
ligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
1359, 1368 (Fed. Cir. 2016). Although it asserts that
Birrell would have “benefitted from the advantages of . . .
Cunniff’s semaphore mechanism,” the Board did not
explain why this is so. Birrell’s play control logic already
knows when the storage unit should (and should not)
transfer more data to the RAM. The gating function of
Cunniff’s semaphore, which is designed to prevent un-
wanted overwriting, is unnecessary to Birrell’s system,
and it would do little more than add unwanted cost and
complexity to the system.
The PTO suggests 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 sema-
phore. See Appellee Br. at 24 (first citing J.A. at 536; and
then citing Cunniff col. 1 ll. 34–38). But the Board never
made this finding. And even if the Board did, the record
does not appear to substantiate it. At most, Cunniff
states that there are advanced hardware resources in the
12 IN RE: SCHWEICKERT

prior art that can juggle multiple program applications,
but that these hardware resources are expensive to manu-
facture and repair. Cunniff col. 1 ll. 34–38. That stated
comparison to expensive hardware resource alternatives
has no bearing on how Cunniff’s semaphore would have
lowered manufacturing expenses associated with Birrell’s
system. Thus, the record lacks support for this supposed
motivation to introduce Cunniff’s semaphore into Birrell’s
RAM.
The Board, at best, merely posits that a skilled arti-
san 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 foregoing, this broadly-stated conclusion
suffers from hindsight bias. See, e.g., In re Giannelli, 739
F.3d 1375, 1380 (Fed. Cir. 2014) (reversing affirmance of
examiner’s obviousness determination where the Board’s
analysis “contained no explanation why or how [a skilled
artisan] would modify” the prior art to arrive at the
claimed invention); In re Rouffet, 149 F.3d 1350, 1358
(Fed. Cir. 1998).
In short, the Board has proffered no sufficient basis
for why a skilled artisan would have readily applied
Cunniff to Birrell. On this record, Cunniff is an ill fit for
Birrell.
CONCLUSION
For the foregoing reasons, we vacate the Board’s deci-
sion and remand for further proceedings consistent with
this opinion.
VACATED AND REMANDED
COSTS
No costs.