David Stein

Patent Trials and Appeals Board

Oct 1, 2019

13475823 - (D) (P.T.A.B. Oct. 1, 2019)

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.
13/475,823 05/18/2012 David Stein 047068.000002 4948
135627 7590 10/01/2019
Hogan Lovells US LLP - San Francisco
3 Embarcadero Center, 15th Floor
San Francisco, CA 94111
EXAMINER
NILFOROUSH, MOHAMMAD A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/01/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hlusdocketing@hoganlovells.com
teri.nelmark@hoganlovells.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID STEIN

Appeal 2018-001388
Application 13/475,823
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 19, 24, and 25. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as “Dubset Media Holdings,
Inc.” (Appeal Br. 3.)
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BACKGROUND
The Appellant’s invention relates to “digital rights management” of
media contents “having mixed, overlapping music tracks from distinct
copyright owners.” (Spec.¶ 2.) An example of such a media content is a
“DJ mix” that is “a sequence of musical tracks typically mixed together to
appear as one continuous track.” (Id. ¶ 4.) If “there are multiple copyright
owners of the different tracks or samples contained in the mix,” it must be
determined “who the copyright owners are” in order for the DJ mix to be
distributed in a manner “compliant with the applicable copyright laws and
standards.” (Id. ¶ 5.)
“[F]ingerprinting” tools can be used to “generate a unique fingerprint
for an audio snippet and return song information from their database which
matches the fingerprint.” (Spec. ¶ 21.) In other words, fingerprinting tools
can be used to produce “accurate song breakdown[s]” in media contents
containing multiple song samples. (Id. ¶ 9.) This correct “breakdown” of
samples (which each correlates to the breakdown of copyright ownership
information) allows accurate monitoring and reporting to “the necessary
digital music rights organizations.” (Id. ¶ 8.)
However, available fingerprinting tools “are not particularly suited to
deal with a compilation such as a DJ mix” because “the blending of different
distinct copyrighted works” can “confuse” fingerprinting “tool[s].” (Spec.
¶ 4.) In other words, with a DJ mix, the song samples are often “blended
together in a manner” that renders them “unrecognizable” to a fingerprinting
tools. (Appeal Br. 9.) As such, fingerprinting tools, alone, might not
produce an accurate breakdown of song samples, which is necessary for an
accurate breakdown of copyright ownership information.
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The Appellant solves this problem by first “parsing” the DJ mix into a
format that is recognizable to fingerprinting tools (e.g., a fingerprinting
analytical algorithm), and thereafter analyzing this “parsed” media content
using fingerprinting tools. (Appeal Br. 3–4.)
SOLE INDEPENDENT CLAIM ON APPEAL
19. A computer-implemented method of determining a
breakdown and usage of samples of copyrighted music in a
media content file containing a mixture of overlapping samples
of copyrighted music, comprising:
[(a)] receiving by a controller a media content file
containing the mixture of samples of copyrighted music, at least
two or more of the samples being overlapping;
[(b)] parsing by the controller the media content file into
a format recognizable by a fingerprinting analytical algorithm;
[(c)] analyzing the parsed media content file by a
fingerprinting server using the fingerprinting analytical
algorithm to determine a breakdown of the copyright ownership
information of the samples in the parsed media content file;
[(d)] defining and storing a tracklist including the
determined breakdown of the samples in a database;
[(e)] monitoring and reporting by a client reporting
service in a player playing of each of the samples of the
copyrighted music in the media content file by the player; and
reporting by the controller to a system operated by a copyright
licensing entity the copyright ownership information associated
with the samples of the copyrighted music in the media content
file played by the player.
REJECTIONS
I. The Examiner rejects claims 19, 24, and 25 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more. (Final
Action 6.)
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II. The Examiner rejects claims 19 and 24 under 35 U.S.C. § 103(a)
as unpatentable over Pitman,2 Teegarden,3 and Rabin.4 (Final Action 12.)
III. The Examiner rejects claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Pitman, Teegarden, Rabin, and Carlson.5 (Final
Action 14.)
IV. The Examiner rejects claims 19, 24, and 25 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. (Final Action 10.)
V. The Examiner rejects claims 19, 24, and 25 under 35 U.S.C.
§ 112, second paragraph, as indefinite. (Final Action 11.)
ANALYSIS
Independent claim 19 sets forth a computer-implemented method of
“determining a breakdown and usage of samples of copyright music in a
media content file containing a mixture of overlapping samples of
copyrighted music.” (Appeal Br., Claims App.) The rest of the claims on
appeal (i.e., claims 24 and 25) depend directly from independent claim 19.
(See id.)
Rejection I—35 U.S.C. § 101
The Examiner concludes that the claims on appeal do not pass the
Alice test for patent eligibility. (See Final Action 6.) In Alice Corp. v. CLS

2 US 7,085,613 B2, issued August 1, 2006.
3 US 2008/0114665 A1, published May 15, 2008.
4 US 6,697,948 B1, issued February 24, 2004.
5 US 2011/0015968 A1, published January 20, 2011.
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Bank Int’l, 573 U.S. 208 (2014), the Supreme Court provided a two-step test
to guard against an attempt to patent purely an abstract idea. (Alice, 573
U.S. at 217–18.) In Alice step one, a determination is made as to whether
the claim at issue is “directed to” an abstract idea. (Id. at 218.) If not, it can
be concluded that no attempt is being made to patent purely an abstract idea,
and the Alice test is complete.6
Here, the Examiner determines that the claims on appeal satisfy step
one of the Alice test for patent eligibility because they are “directed to” an
abstract idea. (See Final Action 6). The Appellant argues that this
determination is not sufficiently supported by the record. (See Appeal
Br. 4–13.) We are persuaded by the Appellant’s position.
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
Guidance”) sets forth a two-prong step (Step 2A) for determining whether a
claim is “directed to” an abstract idea under the first step of the Alice test.
(See Federal Register Vol. 84, No. 4, 50–57.)
In the first prong of Step 2A (Prong One), it must be established that
the claim recites a judicial exception such as an “abstract idea.” (2019
Guidance, Federal Register Vol. 84, No. 4, 54.) In accordance with judicial
precedent, the 2019 Guidance synthesizes abstract-idea subject matter into
three groupings: “[m]ental processes,” “[m]athematical concepts,” and
“[c]ertain methods of organizing human activity.” (Id. at 52.) If a claim
does not contain limitations reciting a concept that falls within one of these

6 If the claim at issue is “directed to” an abstract idea, the second step of the
Alice test must be performed. (Alice, 573 U.S. at 218.) In the second step of
the Alice Test, attention is given to whether additional elements in the claim
are “well-understood,” “routine,” or “conventional.” (Id. at 225.)
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identified groupings, this is redolent of the claim not being “directed to” an
abstract idea. (Id. at 54).
But even if a claim does contain limitations reciting an identified
abstract idea, this, alone, is not sufficient to establish that the claim is
“directed to” this abstract idea so as to satisfy Alice step one.7 Rather, under
the second prong of Step 2A (Prong Two) it must also be established that the
claim does not contain additional elements (i.e., “claim features, limitations,
and/or steps that are recited in the claim beyond the identified judicial
exception”) that “integrate” the abstract idea “into a practical application.”
(2019 Guidance, Federal Register Vol. 84, No. 4, 54, 55, n. 24.)
Insofar as the Examiner is saying that the claims on appeal recite an
abstract idea, we agree. (See e.g., Answer 12–13.)
Step (a) recites “receiving” a media content file “containing the
mixture of samples of copyrighted music, at least two or more of the
samples being overlapping.” (Appeal Br., Claims App.) This equates to a
DJ creating a DJ mix having overlapping (copyrighted) music samples and
knowing that its distribution must be “compliant with the applicable
copyright laws and standards.” (Spec. ¶ 5.)
Step (c) recites “analyzing” media content file “to determine a
breakdown of the copyright ownership information of the samples,” and
step (d) recites “defining and storing a tracklist including the determined
breakdown of the samples in a database.” (Appeal Br., Claims App.) These

7 During Alice step one, “it is not enough to merely identify a patent-
ineligible concept underlying the claim; we must determine whether that
patent-ineligible concept is what the claim is ‘directed to.’” (Thales Visionix
Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017).)
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are steps that the DJ would do to get ready to distribute his/her DJ mix in a
manner “compliant with the applicable copyright laws and standards.”
(Spec. ¶ 5.)
Step (e) recites “monitoring and reporting” the samples of the
copyrighted music in the media content file that are “played by the player,”
and then “reporting” the copyright information associated with these
samples to “a client reporting service.” (Appeal Br., Claims App.) This is a
step that the DJ would do to make sure that distribution of the DJ mix is
“compliant with the applicable copyright laws and standards.” (Spec. ¶ 5.)
Consequently, under Prong One of Step 2A, the claims recite “legal
interactions” involving “legal obligations” associated with copyrighted
music, which is a “[c]ertain method[] of organizing human activity” and,
therefore, an abstract idea. (2019 Guidance, Federal Register Vol. 84,
No. 4, 52.)
Thus, we proceed to the second prong of Step 2A (Prong Two). In
Prong Two, we evaluate whether the claim contains additional elements that
“integrate” the abstract idea “into a practical application.” (2019 Guidance,
Federal Register Vol. 84, No. 4, 54.)
Step (b) of independent claim 19 recites “parsing” the media content
file “into a format recognizable by a fingerprinting analytical algorithm.”
(Appeal Br., Claims App.) Also, in step (c) it is this “parsed media content
file” that is analyzed. (Id.) These steps are beyond those performed by a DJ
when he/she is trying to be “compliant with the applicable copyright laws
and standards.” (Spec. ¶ 5.)
Thus, the record establishes that independent claim 19 includes
additional elements which could possibly integrate the identified abstract
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idea into a practical application. As such, the record must also establish that
these additional elements do not integrate the identified abstract idea into a
practical application. Here, the record does not do so.
The Examiner maintains that “[p]arsing and analyzing the media
content file” are “generic computing function[s]” that “implement the
abstract idea.” (Answer 4.) But the Examiner does not explain adequately
why the conversion of a DJ mix into a “format recognizable” (by parsing or
otherwise) must be implemented in order for a DJ to insure that distribution
of his/her DJ mix is “compliant with the applicable copyright laws and
standards.” (Spec. ¶ 5.)
Moreover, according to the Specification, parsing of the media
content file is a solution to a computer-centric problem, unrelated to this
compliance. Particularly, “fingerprinting tools” routinely used to identify
music sample, are “not particularly suited to deal with a compilation such as
a DJ mix in which the segment where the blending of different distinct
copyrighted works occurs can confuse such tools.” (Spec. ¶ 4.)
Thus, the Examiner does not sufficiently show that claim 19’s
additional elements fail to integrate the identified abstract idea into a
practical application so as to satisfy the “directed to” inquiry under step one
of the Alice test. As such, it has not been established, on the record before
us, that independent claim 19 fails the Alice test for patent eligibility.
Thus, we do not sustain the Examiner’s rejection of independent
claim 19 under 35 U.S.C. § 101.
Rejections II and III – 35 U.S.C. § 103
The Examiner determines that the claimed method would have been
obvious over the combined teaching of Pitman, Teegarden, Rabin, and
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Carlson. (See Final Action 12, 14.) The Appellant argues that this
determination is not sufficiently supported by the record. (See Appeal
Br. 18–23.) We are persuaded by the Appellant’s position.
Independent claim 19 recites “receiving by a controller a media
content file,” “parsing by the controller the media content file into a format
recognizable by a fingerprinting analytical algorithm,” and “analyzing the
parsed media content file by a fingerprinting server.” (Appeal Br., Claims
App.) Independent claim 19 further requires the media content file to be “a
media content file containing a mixture of overlapping samples of
copyrighted music.” (Id.)
Pitman discloses a computerized method for “monitoring audio
content” in, for example, a television show in which “copyrighted song[s]”
are “played before and after commercial breaks and in the background
during the show.” (Pitman 1:18–19, 24–27.) The Examiner acknowledges
that Pitman does not disclose that these copyrighted songs are overlapping
samples of copyrighted music. (See Final Action 12.)
Pitman discloses that an audio datastream (derived from the video
content) is “received” by a content-identifier “module.” (Pitman 4:32.)
Pitman discloses that the content-identifier module “analyzes the audio
datastream” by “using an algorithm that generates audio content identifying
information.” (Id. at 4:33–35, see also Fig. 3.) And Pitman discloses that
content identifying information can be an “audio fingerprint that is
computed based on the audio data itself.” (Id. at 4:23–34.)
As such, the record supports the Examiner’s findings that Pitman
discloses “receiving” media content, Pitman discloses that this media
content is “recognizable by a fingerprinting analytical algorithm,” and
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Pitman discloses “analyzing” this “media content file by a fingerprinting
server using the fingerprinting analytical algorithm.” (Final Action 12.)
However, according to the Appellant, “Pitman does not teach or
suggest parsing a media content file into a format that is recognizable by a
fingerprinting analytical algorithm.” (Appeal Br. 19.) The Examiner does
not point to anything in Pitman suggesting that the audio datastream
received by the content-identifier module does not arrive ready to be
analyzed by fingerprinting. (See Final Action 3–4; Answer 19–20.) Rather,
Pitman seems to indicate that “the audio input datastream is already
recognizable by the ‘content identifier module,’ and as such, needs no
parsing.” (Appeal Br. 19.)
The Examiner does find that “Teegarden discloses that a mixture of
music may include at least two or more music items that are overlapping.”
(Final Action 13.) And, according to the Examiner, it would have been
obvious to modify Pitman’s method with a simple substitution of
“overlapping samples of copyrighted music” for its disclosed media content.
(Id.) But the Examiner does not adequately address how this simple
substitution would result in Pitman’s modified method having a parsing step
that occurs prior to fingerprinting analytics.
Thus, we do not sustain the Examiner’s rejections of claims 19, 24,
and 25 under 35 U.S.C. § 103(a).
Rejection IV—35 U.S.C. § 112 (written description)
The Examiner determines that the Specification does not adequately
describe the determination of “a breakdown of the copyright ownership
information” as required by step (c) of independent claim 19. (Final
Action 10.) The Appellant argues that the Specification conveys possession
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of this subject matter at the time the application was filed. (See Appeal
Br. 16–17.) We are persuaded by the Appellant’s position.
The Specification conveys that the steps performed in the claimed
method are done to facilitate “digital rights management,” and “copyright
ownership information” is what steers “digital rights management.” (Spec.
¶ 9.) An accurate breakdown of copyright ownership information in a DJ
mix cannot be determined without an accurate breakdown of the songs
contained in the DJ mix. (See id.) Thus, obtaining an “accurate” breakdown
of samples of a DJ mix via fingerprinting analysis is done to determine an
accurate breakdown of copyright ownership information. And the
Specification further conveys that “copyright ownership information” is
determined “using the fingerprinting analytical algorithm.” (Id., Abstract.)
Thus, we do not sustain the Examiner’s rejection of claims 19, 24,
and 25 under 35 U.S.C. § 112, first paragraph.
Rejection V—35 U.S.C. § 112 (indefiniteness)
The Examiner determines that the phrase “the copyright ownership
information” in claim 19, and the phrase “each of the predefined intervals”
in claim 24, do not have sufficient “antecedent basis.” (Final Action 11.)
The Appellant argues that, notwithstanding grammatical absences of
antecedent basis, one of ordinary skill in the art would not consider the
claims indefinite. (See Appeal Br. 17–18.) We are persuaded by the
Appellant’s position.
The failure to provide explicit antecedent basis for terms does not
render a claim indefinite if the scope of a claim would be reasonably
ascertainable by those skilled in the art. (See Energizer Holdings, Inc. v.
Int’l Trade Comm’n, 435 F.3d 1366, 1370–71 (Fed. Cir. 2006).) Here, one
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of ordinary skill in the art would understand that “the copyright ownership
information” pertains to information about the ownership of the copyrighted
information, which is used by the copyright licensing entity. (See Spec.
¶¶ 2, 4, 7, Abstract.) Additionally, one of ordinary skill in the art would
understand that the “parsing” step recited in independent claim 19 is done in
predefined intervals, and that claim 24 is specifying that these intervals are
each three seconds. (See id. ¶ 51.)
Thus, we do not sustain the Examiner’s rejection of claims 19, 24,
and 25 under 35 U.S.C. § 112, second paragraph.
CONCLUSION
Claims Rejected Basis Affirmed Reversed
1, 24, 25 § 101 1, 24, 25
1, 24, § 103(a) 1, 24
25 § 103(a) 25
1, 24, 25 § 112, first paragraph 1, 24, 25
1, 24, 25 § 112, second paragraph 1, 24, 25

REVERSED