Ex Parte Arana

Patent Trial and Appeal Board

Sep 29, 2017

14139691 (P.T.A.B. Sep. 29, 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.
14/139,691 12/23/2013 MARK ARANA 13-DIS-276-STUDIO-US-UTL 3063
94472 7590 10/03/2017
DISNEY ENTERPRISES, INC.
c/o Sheppard Mullin Richter & Hampton LLP
12275 El Camino Real, Suite 200
EXAMINER
HO, DAO Q
San Diego, CA 92130-2006 ART UNIT PAPER NUMBER
2497
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
docketing @ sheppardmullin. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DISNEY ENTERPRISES, INC.
Appeal 2017-0030091’2
Application 14/139,691
Technology Center 2400
Before JAMES R. HUGHES, ERIC S. FRAHM, and
CARL L. SILVERMAN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—7 and 10—22. Claims 8 and 9
1 Mark Arana is named as the inventor. According to Appellant, the real
party in interest is Disney Enterprises, Inc. Br. 1.
2 The application on appeal has an effective filing date of Dec. 23, 2013
(claiming benefit of US 61/856,459 filed July 19, 2013). Therefore, the
Leahy-Smith America Invents Act (AIA) amendments to the U.S. Code
(§§ 102, 103, 112) are applicable. See MPEP § 2159.02 (explaining the AIA
Amendments “apply to any patent application that contains or contained at
any time a claim to a claimed invention that has an effective filing date that
is on or after March 16, 2013.”)
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Application 14/139,691
have been canceled. Final Act. 1—2; Br. I.3 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellant’s Invention
The invention concerns methods for providing alternate content
playlists when a user attempts to access locked media content. In particular,
a method of handling condition-locked media, including determining
whether conditions have been satisfied for playing a primary media content
asset and playing the primary media content asset when the conditions have
been satisfied, providing an alternative media content playlist to a user when
the one or more playback conditions have not been satisfied. The alternative
media content playlist includes media content assets immediately accessible
by the user. Spec. Tflf 4—14, Abstract.
Representative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. A method of handling condition-locked media
comprising:
determining whether one or more conditions has been
satisfied for a primary media content asset to be played by a
media player; and
playing the primary media content asset when the one or
more playback conditions have been satisfied, and
3 We refer to Appellant’s Specification (“Spec.”), filed Dec. 23, 2013, and
Appeal Brief (“Br.”), filed May 31, 2016. We also refer to the Examiner’s
Answer (“Ans.”), mailed July 27, 2016, and Final Office Action (Final
Rejection) (“Final Act.”), mailed Mar. 2, 2016.
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providing an alternative media content playlist to a user
when the one or more playback conditions have not been
satisfied, wherein the alternative media content playlist
comprises one or more media content assets accessible by the
user immediately in lieu of the primary media content asset,
comprising one of: one or more alternative media content assets
that are available locally to the media player; one or more
alternative media content assets that are received on the media
player over a network; or a customized alternative media content
playlist.
Rejections on Appeal
1. The Examiner rejects claims 1—5, 10—14, and 18—22 under 35
U.S.C. § 103 as being unpatentable over Fujimura (US 2012/0257878 Al,
published Oct. 11, 2012) and Nakahara et al. (US 2009/0214042 Al,
published Aug. 27, 2009) (“Nakahara”).
2. The Examiner rejects claims 6, 7, and 15—17 under 35 U.S.C.
§ 103 as being unpatentable over Fujimura, Nakahara, and Sugimoto et al.
(US 2005/0198115 Al, published Sept. 8, 2005) (“Sugimoto”).
ISSUE
Based upon our review of the record, Appellant’s contentions, and the
Examiner’s findings and conclusions, the issues before us follow:
Did the Examiner err in finding that Fujimura and Nakahara
collectively would have taught or suggested “providing an alternative media
content playlist to a user when the one or more playback conditions have not
been satisfied, wherein the alternative media content playlist comprises one
or more media content assets accessible by the user immediately” within the
meaning of Appellant’s claim 1 and the commensurate limitations of claim
11?
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ANALYSIS
Appellant argues independent claims 1 and 11 together as a group and
does not separately argue the rejections of dependent claims 6, 7, and 15—17
or dependent claims 2—5, 10, 12—14, and 18—22. See Br. 10. Accordingly,
we select independent claim 1 as representative of Appellant’s arguments
with respect to claims 1—7 and 10—22. 37 C.F.R. § 41.37(c)(l)(iv).
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 2—5), and
(2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 4—
7) in response to Appellant’s Appeal Brief. We concur with the findings and
conclusions reached by the Examiner, and we address specific findings,
conclusions, and arguments for emphasis as follows.
Appellant contends that Fujimura and Nakahara do not teach or
suggest the disputed features of representative claim 1. See Br. 5—10.
Specifically, Appellant contends Nakahara does not describe the recited
alternative media content playlist (Br. 6—8), Fujimura teaches a different
process that “has nothing to do with actual playback of the desired program,
but merely playing an alarm to alert the user that a particular program is to
be broadcast” (Br. 9; see Br. 6—8), and the Examiner has not provided a
proper rationale for combining Fujimura and Nakahara because combining
Fujimura and Nakahara would change the principle of operation of Fujimura
(see Br. 8—10).
We agree with the Examiner and find a preponderance of the evidence
demonstrates that the combination of Fujimura and Nakahara would have
taught or at least suggested the disputed features of Appellant’s claim 1. As
explained by the Examiner, Fujimura describes conditional playback of
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content and playing alternative content (other than an original or primary
selection). See Final Act. 3-A\ Ans. 4—5 (citing Fujimura Tflf 84, 85, 87, 98,
99). As further explained by the Examiner, Nakahara describes providing an
alternative media content playlist to a user when the one or more playback
conditions have not been satisfied. See Final Act. 4—5; Ans. 4—6 (citing
Nakahara Tflf 83, 84, 102, 328, 424, Fig. 4). As shown in Nakahara’s Figure
4, a viewer plays a series of related content (individual videos or content
files) in accordance with the playback control information in the table of
Figure 3. When a viewer selects to view a video the opening.mpg (501) is
played followed by the trailer.mpg (or preview) (502). If the viewer has the
appropriate rights (meets the conditions) the movie.mpg (or main feature)
(503) is played. If the conditions are not met, the waming.mpg (504) is
played, followed by the presentation of a menu (menu.mpg) (505) from
which the viewer may select other (alternative) content, such as an interview
(interview.mpg) (507). See Nakahara 83, 84, 102, Figs. 3, 4). Therefore,
we agree with the Examiner that Nakahara at least suggests the disputed
features of claim 1 — Nakahara “provides] an alternative media content
playlist to a user” (waming.mpg followed by the menu (menu.mpg)) “when
the one or more playback conditions have not been satisfied, wherein the
alternative media content playlist comprises one or more media content
assets” (e.g., interview.mpg) “accessible by the user immediately in lieu of
the primary media content asset” (movie.mpg). See claim 1.
Further, Appellant failed to file a Reply Brief addressing the
Examiner’s clarified findings and additional discussion of Nakahara and the
disputed limitations, or otherwise rebutting the findings and responsive
arguments made by the Examiner in the Answer. Appellant’s Appeal Brief
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does not address the Examiner’s discussion of Nakahara Figure 4 and
Paragraph 102.
Appellant also improperly attacks the references individually instead
of addressing the combination of Fujimura and Nakahara. See Br. 7—10;
Ans. 6—7. Appellant fails to appreciate the collective teachings of Fujimura
and Nakahara as a whole. The cited references must be read, not in
isolation, but for what each fairly teaches in combination with the prior art
as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(one cannot show non-obviousness by attacking references individually
where the rejections are based on combinations of references).
Finally, Appellant argues that combining Fujimura and Nakahara
would improperly alter the principal of operation of Fujimura {supra). We
disagree. Appellant’s arguments do not take into account what the
combination of Fujimura and Nakahara would have suggested to one of
ordinary skill in the art —
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 the references would have suggested
to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
We find that it would have been well within the skill of one skilled in
the art to combine such known techniques to determine whether conditions
have been satisfied for playing primary media content and play the primary
media content when the conditions have been satisfied as taught by
Fujimura, and provide an alternative media content playlist or menu to a user
when the conditions have not been satisfied as taught by Fujimura. See KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has
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been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill”). We are not persuaded that combining the respective familiar
elements of the cited references in the manner proffered by the Examiner
would have been “uniquely challenging or difficult for one of ordinary skill
in the art” at the time of Appellant’s invention. Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S.at419).
Thus, Appellant does not persuade us of error in the Examiner’s
obviousness rejection of representative independent claim 1. Accordingly,
we affirm the Examiner’s rejection of representative claim 1, independent
claim 11, and dependent claims 2—7, 10, and 12—22, not argued separately
with particularity {supra).
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims
1-7 and 10-22 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner’s rejections of claims 1—7 and 10—22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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