Ex Parte Abecassis

Patent Trial and Appeal Board

Mar 30, 2017

13964196 (P.T.A.B. Mar. 30, 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.
13/964,196 08/12/2013 Max Abecassis 9447
117279 7590
CustomPlay LLC
190 Congress Park Drive
Suite 200
Delray Beach, EL 33445
EXAMINER
TRAN, LOI H
ART UNIT PAPER NUMBER
2484
MAIL DATE DELIVERY MODE
03/30/2017 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 2016-006145
Application 13/964,1961
Technology Center 2400
Before JEFFREY S. SMITH, JON M. JURGOVAN, and
SHARON FENICK, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—20, which constitute all the claims pending in this
application. (Appeal Br. 1.) We have jurisdiction under 35 U.S.C.
§ 6(b)(1).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
1 Appellant identifies CustomPlay LLC as the real party in interest. (Appeal
Br. 1.)
Appeal 2016-006145
Application 13/964,196
Invention
Appellant’s invention concerns presentation of a video and,
responsive to a user’s request, provision of information regarding a
cinematic technique utilized in a segment of the video. (Spec. Tflf 14, 46, 93,
122-130.)
Illustrative claims 8, 10, and 13 are reproduced below:
8. A method comprising the steps of:
receiving from a user, during a playing of a video, a
request for cinematic technique information;
identifying, responsive to the request, a location in the
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 an
explanation of a cinematic technique utilized in a video segment
of the video; and
providing the explanation of the cinematic technique
utilized in the video segment of the video.
10. The method of claim 8 further comprising the step
of playing, from each of a plurality of videos, at least one video
segment that is responsive to the explanation of the cinematic
technique.
13. The method of claim 8 further comprising the steps
of:
pausing the playing of the video in response to receiving a
request for cinematic technique information; and
resuming the playing at a location that is responsive to an
amount of time that the playing has been paused.
Rejection
The Examiner rejects claims 1—5 and 7—20 under pre-AIA 35 U.S.C.
§ 103(a) as obvious in view of Mclntire et al. (US 2007/0250901 Al; pub.
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Oct. 25, 2007) (“Mclntire”) and Chiu et al. (US 2014/0219633 Al; pub. Aug.
7, 2014) (“Chiu”). (Final Action 3-14.)
The Examiner rejects claim 6 under pre-AIA 35 U.S.C. § 103(a) as
obvious in view of Mclntire, Chiu, and Angiolillo et al. (US 2008/0022300
Al; pub. Jan. 24, 2008) (“Angiolillo”). (Final Action 14.)
Issues
Appellant’s arguments present us with the following issues:
I) Did the Examiner err combining Mclntire and Chiu in the
rejection of claim 8? (Appeal Br. 18—27.)
II) Did the Examiner err in finding that Mclntire, in combination
with Chiu, teaches or suggests “receiving from a user, during a playing of a
video, a request for cinematic technique information,” as recited in claim 8?
(Appeal Br. 28—29, 35.)
III) Did the Examiner err in finding that Mclntire, in combination
with Chiu, teaches or suggests “providing the explanation of the cinematic
technique utilized in the video segment of the video,” as recited in claim 8?
(Appeal Br. 30-34.)
IV) Did the Examiner err in finding that the combination of
Mclntire and Chiu teaches or suggests “playing, from each of a plurality of
videos, at least one video segment that is responsive to the explanation of the
cinematic technique,” as recited in claim 10? (Appeal Br. 36-40.)
V) Did the Examiner err in rejecting claim 13?
VI) Did the Examiner err in finding that Angiolillo, in combination
with Mclntire and Chiu, teaches or suggests “identification of the cinematic
technique comprises a generalized technical write-up explaining the
identified cinematic technique,” as recited in claim 6? (Appeal Br. 43—50.)
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ANALYSIS
I. Combination of Mclntire and Chiu
The Examiner finds that the combination of Mclntire and Chiu teach
or suggest the subject matter of claim 8.
Appellant argues that Chiu “is not analogous art to the claimed
invention and is not analogous art to the Mclntire reference.” (Appeal Br.
20, see generally Appeal Br. 18—26.) A reference is analogous (1) if the
reference is from the same field of endeavor as the invention, or, if not, (2) if
the reference would have been reasonably pertinent to the particular problem
with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004). Thus, our consideration focuses on Chiu’s analogousness to the
claimed invention.
Appellant argues that the invention relates to the presentation of a
video to a user, with information which explains the cinematic techniques in
the video. (Appeal Br. 21.) In contrast, Appellant argues that “Chiu’s field
of endeavor is performing an otherwise conventional rendering of an edited
video more efficient by a selective video rendering.” {Id. at 23.) While we
do not agree that the field of the invention of Chiu is as narrow as the
Appellant contends, we need not reach the question of whether Chiu and the
present invention are from the same field of endeavor, because we find that
the reference would have been reasonably pertinent to the particular problem
with which the inventor is involved for the following reasons.
With respect to the second prong of the Bigio analysis, Appellant
contends “Chiu’s identification of segments with modifications comprising
the insertion of special effects prior to re-rendering a previously rendered
video (Chiu 121) is not reasonably pertinent to the problem addressed by
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the claimed subject matter.” (Appeal Br. 25.) However, we find Chiu’s
concerns to be less narrow than the version enunciated by Appellant. Chiu
is concerned with enabling a user to modify videos for later presentation,
including adding special effects and adding comments and tags at specific
points within the video (Chiu Abstract, || 2, 28, 31.) We find that the
addition of comments and tags to a video would have been reasonably
pertinent to an inventor in addressing the particular problem the invention
involves, providing information to a viewer of a video (in addition to the
video information itself), and thus that Chiu is analogous art.
Appellant further argues that Chiu “makes no contribution to the long
practiced conventional insertion of special effects in the video editing
process” and was well-known. (Appeal Br. 26—27.) Thus, Appellant argues
that in light of KSR’s direction that “a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ” the fact that the Mclntire art does not refer to or include the Chiu
subject matter requires a conclusion that the claimed invention would not
have been obvious to one of ordinary skill in the art. (Appeal Br. 27, citing
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). We disagree.
Appellant’s argument amounts to a contention that the absence of
anticipation of the invention in one piece of prior art is evidence that the
invention was not obvious in light of the combination of the cited art.
Appellant argues that, in fact, the Chiu subject matter was not combined
with Mclntire or otherwise included in the Mclntire reference, but does not
present any evidence or persuasive argument that the combination of the
cited references was “uniquely challenging or difficult for one of ordinary
skill in the art” or “represented an unobvious step over the prior art.”
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Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418-19).
We are therefore not persuaded of error in the Examiner’s use of a
combination of the Mclntire and Chiu references in the rejection of claim 8,
or in the rejections of independent claims 1 and 14 or dependent claims 2—7,
9—13, and 15—20, as argued by Appellant (Appeal Br. 27.)
II. Obviousness Rejection of Claim 8: “receiving from a user,
during a playing of a video, a request for cinematic technique
information ”
The Examiner finds that Mclntire, in combination with Chiu, teaches
or suggests the receipt of a request from cinematic technique information,
from a user during a playing of a video. (Final Action 3.) Mclntire relates
to the annotation of a media stream, and the distribution of an annotated
media stream for viewing by a user. (Mclntire, Abstract, || 15—17.)
Appellant argues that the Examiner has only found that Mclntire
receives a request for information relating to the video, and not a request for
cinematic technique information. (Appeal Br. 28—29.) However, the
Examiner, in the Answer, does specifically find that Mclntire’s request may
be for a filming technique employed within the media segment. (Answer
14.) We agree with the Examiner that Mclntire does teach or suggest the
disputed limitation, in Mclntire’s teachings regarding receiving a request
(“first signal”) for video stream supplemental information from a user, and
that such supplemental information may include cinematic technique
information (information regarding the use for a segment of “a certain type
of filming technique”). (Mclntire 346—347, 103.)
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Therefore, we find no error in the Examiner’s findings with respect to
this disputed limitation in the rejection of claim 8, or the rejections of
independent claim 1 and dependent claims 2—7 and 9—13, argued, in part, on
the same basis.
III. Obviousness Rejection of Claim 8: “providing the
explanation of the cinematic technique utilized in the video
segment of the video ”
Appellant argues that the provision of an explanation of the cinematic
technique utilized in a video segment is not found in Mclntire or Chiu.
(Appeal Br. 30—34.) Appellant argues that Chiu only discloses the insertion
of special effects into video. {Id. at 33—34.) But this insertion, Appellant
contends, “does not generate any information, identifying or explaining the
transition, that would be available” when the video is played. {Id. at 34.)
However, while arguing that “Chiu does not supply the element that
Mclntire fails to disclose” {id.) the Appellant’s focus only on Chiu
disregards the combination applied by the Examiner.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
The Examiner applies Mclntire to teach or suggest the information
provided being information relating to a segment of the video stream, and
Chiu for the teaching or suggestion of the identification of segments of the
video stream which have been modified by an editor with modifications such
as special effects. (Final Action 4; Answer 15—16.) The Examiner also cites
Mclntire’s teaching that “supplemental information may be filming
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technique information employed in the media segment of the media stream.”
(Answer 15, citing Mclntire 1 103.) Appellant’s arguments attacking Chiu
individually do not persuade us of error in the Examiner’s findings.
Additionally, in the event of further prosecution, the Examiner may
consider that our reviewing court has held that mere nonfunctional
descriptive material cannot be the basis of a patentable distinction over prior
art. In reNgai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive material is
not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
We find no error in the Examiner’s findings with respect to this
disputed limitation in the rejection of claim 8, or the rejections of
independent claims 1 and 14, and dependent claims 2—7, 9-13, and 15—20
argued, in part, on the same basis. (Appeal Br. 34—35.)
Obviousness of Claim 8
Having reviewed each of Appellant’s arguments with respect to claim
8, and found no error, we affirm the rejection of claim 8, and of independent
claims 1 and 14, and dependent claims 2, 9, 10, 15, and 16, for which no
further arguments have been presented.
IV. Obviousness Rejection of Claim 10: “playing, from each of
a plurality of videos, at least one video segment that is
responsive to the explanation of the cinematic technique ”
The Examiner finds that the combination of Mclntire and Chiu
teaches or suggests the playing of a video segment, from each of a plurality
of videos, at least one video segment “that is responsive to the explanation
of the cinematic technique,” as recited in claim 10. (Final Action 5; Answer
19-20.) Appellant argues that Mclntire teaches only returning to and
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resuming the media stream, and that this does not teach or suggest the
playing, from a plurality of videos, at least one video segment.
However, the Examiner does not rely on Mclntire’s teaching of the
return to the video which was being played when the request was received to
teach or suggest the disputed claim limitation. The Examiner finds the
disputed limitation to be taught or suggested in Mclntire’s index that maps
annotations, such as filming technique information, to segments in the media
streams. (Answer 19.) We agree, as discussed supra, that Mclntire’s
supplemental information may include cinematic technique information.
Additionally, as the Examiner finds, Mclntire teaches or suggest that the
request for supplemental content may result in a menu of responsive
content2 such as in cases of “multiple retrieved items of supplemental
content.” (Mclntire 1350.) These teachings of Mclntire are not addressed
by the Appellant.
Therefore we are not persuaded of error in the Examiner’s findings
with respect to claim 10, or with respect to claim 3, argued on the same basis
(Appeal Br. 37) or claims 4, 5, 11, 12, and 18—20, argued on substantially
similar bases {id. at 38-40).
V. Obviousness Rejection of Claim 13: “resuming the playing
at a location that is responsive to an amount of time that the
playing has been paused”
Claim 13 includes the limitation of “resuming the playing at a location
that is responsive to an amount of time that the playing has been paused.”
The following new ground of rejection under 35U.S.C. § 112, second
paragraph, regarding indefmiteness, applies to claims 7, 13, and 17. The
2 We note that supplemental content may be video. (Mclntire 1154.)
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statute requires, in pertinent part, that: “The specification shall conclude
with one or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.” Id.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). The test for definiteness under
35 U.S.C. § 112, is whether “those skilled in the art would understand what
is claimed when the claim is read in light of the specification.”
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (citations omitted). During patent prosecution when claims can
be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed. See In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989). Section 112 places the burden of precise claim
drafting on the applicant. See In re Morris, 127 F.3d 1048, 1056—57 (Fed.
Cir. 1997).
During prosecution, a claim is properly rejected as indefinite if it is
“amenable to two or more plausible claim constructions.” Ex parte
Miyazaki, 2008 WL 5105055 at *5 (BPAINov. 19, 2008) (precedential).
With respect to the claimed “responsive to an amount of time that the
playing has been paused,” we find no disclosure in the specification or
indication of what it means for a location to be responsive to an amount of
time. Appellant argues that the Examiner incorrectly interprets the disputed
claim limitation as taught or suggested by the resumption of play at a
location corresponding to the request location, and provides an example (not
provided in the Specification) to support a different interpretation of the
claim limitation. (Appeal Br. 40-41.) However, we find no support in the
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Specification for the provided example of a location “responsive to an
amount of time that the playing has been paused.” (See generally Spec.
1159.)
We note that the word “responsive” is used in a variety of ways within
the Specification and the claims, such as:
• “video frames . . . responsive to the depiction of a
significant or noteworthy item” (114)
• “display of information responsive to the activated
function” (id.)
• “[video-on-demand] systems that are responsive to a
user’s time and date preferences” (1 69)
• “wherein the selected video frame identifier is further
associated with a linkage; and wherein the method further
comprises the step of providing, responsive to the linkage,
additional cinematic technique explanation” (Claim 9)
Additionally, in at least one case “responsive” is specifically broadly
defined: the “location [in a video is which] is responsive to a user request for
information” may be “the precise location in the movie that was being
played when a user requests item information” or may also be another
location “even when it is principally or additionally responsive to, for
example, segment definitions, decoding constraints, and/or player
limitations.” (Spec. 1107.) “Responsive” appears to variously mean at least
“related to,” “caused by,” and “affected by” in different locations in the
Specification. We find that use of the term “responsive” in claims 7, 13, and
17, in light of the Specification, renders these claims indefinite.
In view of the foregoing, we exercise our discretion to enter a new
ground of rejection of claims 7, 13, and 17 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellant regards as their invention.
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The prior art rejections of claims 7, 13, and 17 fall, pro forma,
because those rejections are based on speculative assumptions as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862—63 (CCPA
1962); Ex parte Miyazaki, 89 USPQ2d 1207, 1221 (BPAI 2008)
(precedential). It should be understood, however, that our decision in this
regard is based solely on the indefiniteness of the claimed subject matter and
does not reflect on the adequacy of the prior art evidence applied in support
of the Examiner’s rejections.
VI. Obviousness Rejection of Claim 6: “identification of the
cinematic technique comprises a generalized technical write-up
explaining the identified cinematic technique ”
The Examiner finds the identification of the cinematic technique
comprising a generalized technical write-up explaining the identified
technique is taught or suggested in Angiolillo’s teaching of supplemental
information identifying an effect technique. (Final Action 14.) Appellant
argues generally that Angiolillo only teaches supplemental information
regarding the movie, which only describes the movie as a whole (“movie
macro information”) and has the object of directing an audience to viewing a
movie. (Appeal Br. 45—48.)
Specifically addressing the Examiner’s reliance on paragraph 21 of
Angiolillo, Appellant argues that the “movie critiques” discussed therein
could not teach the disputed claim limitations. (Appeal Br. 46-48.)
Appellant continues to emphasize that Angiolillo teaches “movie
macroinformation” rather than “movie microinformation” specific to a
segment, and asserts that even were Angiolillo’s features incorporated into
Mclntire’s invention, it would still not yield segment-specific information.
We find this argument unconvincing. First, Appellant argues a distinction
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which does not appear in the claims. In fact, a “segment” is defined in the
specification as meaning “one or more video frames.” There is no limitation
of a segment to less than a full video or for cinematic technique information
utilized in a video segment to “movie microinformation,” as Appellant
argues.
Additionally, Mclntire relates to a media stream with annotations
mapped to portions of the media stream. (Mclntire, Abstract.) One of
ordinary skill in the art “will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” KSR, 550 U.S. at 420. In this case, we
agree that the Examiner’s combination of Angiolillo’s movie-critique type of
“macroinformation” combined with Mclntire’s annotations relating to
portions of a media stream teaches or suggests the disputed limitation.
We further note, in the event of further prosecution, the Examiner
may consider whether the disputed limitation comprises nonfunctional
descriptive material. Ngai, 367 F.3d at 1339.
Thus, we agree with the Examiner that the combination of Mclntire,
Chiu, and Angiolillo discloses the disputed limitation and we affirm the
Examiner’s rejection of claim 6.
DECISION
The Examiner’s decision rejecting claims 1—5, 8—12, 14—16, and 18—
20 under 35 U.S.C. § 103(a) as unpatentable over Mclntire and Chiu is
affirmed.
The Examiner’s decision rejecting claims 7, 13, and 17 under
35 U.S.C. § 103(a) as unpatentable over Mclntire and Chiu is reversed.
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The Examiner’s decision rejecting claim 6 under 35 U.S.C. § 103(a)
as unpatentable over Mclntire, Chiu, and Angiolillo is affirmed.
We enter a new ground of rejection of claims 7, 13, and 17 under
35 U.S.C. § 112, second paragraph, as indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
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-IN-PART
37 C.F.R, $ 41.50(b)
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