Ex Parte Abecassis

Patent Trial and Appeal Board

May 31, 2017

13964226 (P.T.A.B. May. 31, 2017)

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.
13/964,226 08/12/2013 Max Abecassis 7350
117279 7590
CustomPlay LLC
190 Congress Park Drive
Suite 200
Delray Beach, EL 33445
05/31/2017 EXAMINER
TRAN, LOI H
ART UNIT PAPER NUMBER
2484
MAIL DATE DELIVERY MODE
05/31/2017 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAX ABECASSIS
Appeal 2016-006148
Application 13/964,2261
Technology Center 2400
Before JEFFREY S. SMITH, JON M. JURGOVAN, and
SHARON FENICK, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner’s
Final Rejection of claims 1—20. (Appeal Br. 1.) We have jurisdiction under
35 U.S.C. § 6(b)(1).
We affirm.
Invention
Appellant’s invention concerns playing of a video and providing a
user, during the presentation of the video, with additional information
regarding the content of the video segment being presented. (Spec. 1 5.)
1 Appellant identifies CustomPlay, LLC, as the real party in interest.
(Appeal Br. 1.)
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Application 13/964,226
The additional information provided may be plot explanation information
regarding the video segment. (Id. || 115—121).
Exemplary Claims
Claims 1 and 5, reproduced below with certain limitations
emphasized, are exemplary:
1. A method comprising the steps of:
[identifying a location within a playing of a video;
selecting, from a plurality of video frame identifiers, a
video frame identifier that is responsive to the identified location,
the selected video frame identifier being associated with: (i) an
explanation of a theme of the video, and (ii) a linkage to an
insight relating to the theme of the video;
providing, responsive to the selected video frame
identifier, the explanation of the theme of the video',
receiving a request for additional information; and
providing, responsive to the request for additional
information and responsive to the linkage, an insight relating to
the theme of the video.
5. The method of claim 1 explanation [sic] of the theme of
the video explains a thematic significance of a portion of a dialog
within the video.
Rejections
The Examiner rejects claims 1, 2, 7, 8, 14, and 15 under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Mclntire et al. (US 2007/0250901 Al;
pub. Oct. 25, 2007) (“Mclntire”) and Ferman et al. (US 2003/0206710 Al;
pub. Nov. 6, 2003) (“Ferman”). (Final Action 2—6.)
The Examiner rejects claims 3—6, 9—13, and 16—20 under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Mclntire, Ferman, and Marina
Hassapopoulou “Babel: Pushing and Reaffirming Mainstream Cinema's
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Boundaries,” 50 Jump Cut: A Review of Contemporary Media 1—4 (2008).
(“Hassapopoulou”). (Final Action 6—11.)
Issues
(A) Did the Examiner err in finding that the combination of Mclntire
and Ferman teaches or suggests “providing . . . the explanation of the theme
of the video,” as recited in claim 1?
(B) Did the Examiner err in finding that the combination of Mclntire
and Ferman teaches or suggests “an insight relating to the theme of the
video” as recited in claim 1 ?
(C) Did the Examiner err in finding that the combination of Mclntire
and Ferman teaches or suggests “the selecting ... is further responsive to a
preference with respect to at least one of a plurality of functions that enable
a display of information,” as recited in claim 2?
(D) Did the Examiner err in combining Hassapopoulou with Mclntire
and Ferman in the rejection of claim 5?
(E) Did the Examiner err in finding that the combination of Mclntire,
Ferman, and Hassapopoulou teaches or suggests “explains a thematic
significance of a portion of a dialog within the video,” as recited in claim 5?
ANALYSIS
(A) “providing. . . the explanation of the theme of the video ”
The Examiner rejects Claim 1 as unpatentable over a combination of
Mclntire and Ferman, finding that Ferman discloses information relating to
the video being “the explanation of the theme of the video.” (Final Action
3—4; Answer 14.) The Examiner also finds that Mclntire teaches the claimed
provision of an explanation in its teaching of provision of supplemental
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content including “movie plots, i.e. theme information of the video.”
(Answer 13.)
Appellant argues that Ferman does not teach or suggest the
“explanation of the theme of the video” but merely specifies characteristics
of content in order to find segments according to preferred themes. (Appeal
Br. 19.) Appellant contends that “Ferman’s SegmentTheme descriptors are
no more than a keyword description of the content of a segment.” (Appeal
Br. 20.) Appellant further argues that the claimed explanation of the theme
is “materially, conceptually, and functionally distinct” from such
keywording. (Appeal Br. 21—23.) With respect to the teachings of Mclntire
cited in the Answer, Appellant argues that “[t]he Examiner’s Answer fails to
understand that a movie plot is functionally and conceptually distinguished
from a movie theme” because the theme relates to “the main idea, topic,
message, or motif’ as opposed to the plot which relates to storyline or
narrative. (Reply Br. 5.)
Appellant urges this distinction between plot points or keywords (as
taught or suggested by Ferman) on one hand and the claimed “explanation of
the theme of the video” on the other is based on the Specification, which
includes a discussion of keywords as distinct from plot explanation. (Appeal
Br. 21—23.) Appellant urges that the “explanation of the theme of the video”
in the claim limitation must be a “rationale or explanation” relevant to
understanding or appreciating “a plot, sub-plot, theme, storyline, principle,
idea, key point, clue and/or item” in the video. {Id. at 23.) Appellant’s
definition of “explanation of the theme of the video” is based on the
definition and discussion of “plot explanation” in the Specification (Appeal
Br. 2-4, 7—9, 21—23), however, the Specification’s express definition for
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“plot explanation” is “information, rationale, and/or explanation relating to,
or relevant to understanding or appreciating” such video elements. (Spec.
1 57 (emphasis added).) Thus, even if, as argued by Appellant, we consult
the Specification’s definition of “plot explanation” in order to interpret and
limit the claimed “explanation of the theme of the video,” this definition
includes information regarding plot or theme. Accordingly, Appellant’s
proposed restriction of the claimed phrase to mean only a rationale or
explanation of plot or theme does not take into account the full breadth of
the definition set forth in the Specification. We agree with the Examiner
that Mclntire’s provision of movie plot and theme information and Ferman’s
SegmentTheme information describing the theme of a video clip are
information regarding a theme and thus the combination of references
teaches or suggests the claimed “explanation of the theme of the video.”
Thus, we are not convinced that the Examiner erred in finding that the
combination of Mclntire and Ferman teaches or suggests this disputed
limitation.
(B) “an insight relating to the theme of the video ”
Appellant relies on the arguments presented relating to the
“explanation of the theme of the video” in arguing that the combination of
Mclntire and Ferman does not teach or suggest the provision of “an insight
relating to the theme of the video.” (Appeal Br. 24—25.) We thus refer to
our findings and conclusions regarding these arguments, supra. No specific
definition of “an insight relating to the theme of the video” is provided in the
Specification, and the broadest reasonable interpretation of the term in light
of the Specification encompasses “supplemental information relating to a
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segment of the media stream” as the Examiner finds is taught by Mclntire.
(Final Action 5.)
With respect to this limitation, we are not convinced that the
Examiner erred. Having addressed each of Appellant’s arguments with
respect to Claim 1, we sustain the obviousness rejection of claim 1 and of
claims 7 and 14, not argued separately (Appeal Br. 24).
(C) “the selecting... is further responsive to a preference
with respect to at least one of a plurality of functions that
enable a display of information ”
Appellant contends that the Examiner erred in finding that the
combination of Mclntire and Ferman teaches or suggests “selecting . . .
further responsive to a preference with respect to at least one of a plurality of
functions that enable a display of information” as recited in claim 2.
(Appeal Br. 25—28.) However, Appellant’s argument consists substantially
of quotations from the claim, the Specification, the Office Action, and the
prior art. (Id.) Appellant then concludes that the “[t]he Office Action’s
contrived rationale is inconsistent with the plain reading of Mclntire,” and
that “[t]he Office Action does not adequately explain just what specific
language in the cited paragraph discloses the . . . claimed steps.” (Id. at 28.)
This argument does not substantively address the teachings of the
prior art relied up on by the Examiner, and we are not persuaded of error in
the Examiner’s findings. See 37 C.F.R. § 41.37(c)(l)(iv) (2013) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
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an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
With respect to this limitation, we are not persuaded of error in the
Examiner’s findings. Thus we sustain the rejection of claim 2, and of claims
8, and 15, not argued separately (Appeal Br. 28.)
(D) Combination of Hassapopoulou with Mclntire and
Ferman
Appellant argues that the Examiner has erred in combining
Hassapopoulou with Mclntire and Ferman, contending that Hassapopoulou
is not analogous art, and that the combination of references from disparate
fields would not have been obvious. (Appeal Br. 30-37; Reply Br. 2—3.)
Appellant submits that “a person of ordinary skill in the art with respect to
the subject matter of the Mclntire-Ferman software technologies cannot be
reasonably] expected to also have the ordinary skill in the art with respect to
the Hassapopoulou expertise in the humanities.” (Appeal Br. 33.)
Appellant argues that a person of ordinary skill in the art
encompassing the Mclntire and Ferman references would not have the level
of skill in the humanities necessary to “appreciate the material distinctions
. . . between a film’s narrative and a film’s dialog.” {Id. at 33.) Our
analogousness consideration centers on the field of the invention and the
problem addressed by the inventor. As Appellant recognizes {id. at 34), we
consider two criteria in determining whether prior art is analogous: (1)
whether the art is from the same field of endeavor as the invention,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
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pertinent to the particular problem with which the inventor is involved. In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004.)
Hassapopoulou is a critical analysis of the 2006 movie Babel.
(Appeal Br. 15.) Hassapopoulou discusses “stylistic and thematic” motifs of
the movie and prior movies by two of its creators. (Hassapopoulou 5—6.)
Appellant argues that the problem faced by the inventor is “providing the
explanation of the thematic significance of a portion of a dialog within a
video” responsive to an identified location in the video. (Appeal Br. 36, see
also id. at 34—36.) According to this definition of the problem faced by the
inventor, both media annotation systems such as Mclntire and Ferman, and
art in the field of film criticism, such as Hassapopoulou, would have been
pertinent.
With respect to the combination of Mclntire and Ferman with
Hassapopoulou, we are mindful that “[w]hen a work is available in one field
of endeavor, design incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its patentability.”
KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We conclude that
the implementation by one of ordinary skill in the software technologies of
Mclntire and Ferman of a variation using the teachings of Hassapopoulou
regarding thematic information concerning a video would allow one of
ordinary skill to substitute Hassapopoulou’s thematic information for the
information taught by Mclntire and Ferman.2 “[W]hen a patent claims a
2 We further note that, in order to prevent an indefinite patenting of known
products by the simple inclusion of novel, yet functionally unrelated printed
matter limitations, a line of cases have held that “printed matter” included on
or with a product cannot create a patentable distinction over prior art. In re
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structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result. Id. at 416 (citing U.S. v.
Adams, 383 U.S. 39, 50-51 (1966)). We agree with the Examiner the
combination of references yields the predictable result recited in the claims.
Thus, we are not convinced that the Examiner erred in combining
Hassapopoulou with the Mclntire and Ferman references, and we sustain the
rejection of claims 3, 4, 6, 9, 11—13, 16, 17, 19, and 20, argued on this basis
(Appeal Br. 30, 37).
(E) “a thematic significance of a portion of a dialog within
the video ”
Appellant argues that Hassapopoulou does not include a teaching that
an explanation of a theme of a video comprises “a thematic significance of a
portion of a dialog within the video” as recited in claim 5. (Appeal Br. 30—
31, 37—38; Reply Br. 6—7.) The Examiner finds that Hassapopoulou teaches
or suggests that dialog may characterize the narrative of a movie (Final
Action 8) and provides a thematic explanation of dialog in the movie Babel
(sign language dialogue and partial subtitling of that dialogue) (Answer 18).
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Similarly, as described in a
precedential opinion of the Board, if there is no functional aspect to the
nature of information manipulated in a computer-implemented product or
process, it is non-functional descriptive material (“NFDM”) and a limitation
specifying the nature of the information cannot lend patentability to a claim.
Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential). In the
event of further prosecution, the Examiner may consider whether the
“explanation” and “additional information” provided according to claim
limitations are NFDM.
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Appellant argues in a conclusory fashion that Hassapopoulou’s
discussion of postmodern forms of cinema does not teach or suggest
thematic significance of dialogue (Appeal Br. 37—38) and that discussion of
the selective use of subtitles is not related to the explanation of a theme of
the video. (Reply Br. 6—7.) We are not convinced by this argument of error
in the Examiner’s findings with respect to Hassapopoulou’s teachings, and
agree that Hassapopoulou teaches or suggests that a portion of dialog within
a video may have a thematic significance. We thus sustain the obviousness
rejection of claim 5 and of claims 10 and 18, not argued separately (Appeal
Br. 37-38).
DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1—20 is
affirmed.
Pursuant to 37 C.F.R. § 1.136(a)(l)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED
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