Ex Parte Aydar et al

Patent Trial and Appeal Board

Feb 10, 2014

11314167 (P.T.A.B. Feb. 10, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/314,167 12/20/2005 Ali Aydar 257.14-US-I1 4726
105454 7590 02/10/2014
Gates & Cooper LLP - Specific Media/Myspace
6701 Center Drive West, Suite 1050
Los Angeles, CA 90045
EXAMINER
TIV, BACKHEAN
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
02/10/2014 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 ALI AYDAR,
JORDAN MENDELSON and SHAWN FANNING
____________________

Appeal 2011-011640
Application 11/314,167
Technology Center 2400
____________________

Before: STEFAN STAICOVICI, JAMES P. CALVE, and
PATRICK R. SCANLON, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final
rejection of claims 1-4 and 11-50. App. Br. 2. Claims 5-10 are cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
Claims 1, 11, 16, 21, 26, 36, and 41 are independent. Claims 36 and
41 are reproduced below.
36. A computer-implemented method comprising:
receiving a file containing metadata information; and
for the file, extracting metadata and generating data to populate
an open copyright database data structure, the data including a file
state.

41. A media file database stored on a tangible computer readable
medium comprising:
a plurality records, wherein each record relates to a media file;
and
attribute information including a media file title, hashing
information identifying a source of said media file, fingerprint
information, a file state, a file category and file rules for each media
file.

REJECTIONS1
Claims 41-50 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 36 and 38 are rejected under 35 U.S.C. § 102(b) as anticipated
by Hoffert ‘892 (US 5,903,892; iss. May 11, 1999).
Claims 1-4 and 11-20 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Haynes (US 7,092,953 B1; iss. Aug. 15, 2006).
Claims 26-35 and 41-48 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Haynes, Hoffert ‘892, and Schmelzer (US
7,363,278 B2; iss. Apr. 22, 2008).

1 The Examiner withdrew all nonstatutory double patenting rejections in
response to Appellant’s filing of a new Terminal Disclaimer. See Ans. 3.
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Claims 37 and 39 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoffert ‘892 and Haynes.
Claim 40 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hoffert ‘892 and Hoffert ‘260 (US 6,374,260 B1; iss. Apr. 16, 2002).
Claims 21-25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Haynes and Hoffert ‘260.
Claims 49 and 50 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Haynes, Hoffert ‘892, Schmelzer, and Cross (US
6,144,726; iss. Nov. 7, 2000).
ANALYSIS
Claims 41-50 as being directed to non-statutory subject matter
Appellants argue claims 41-50 as a group. App. Br. 7. We select
claim 41 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 42-
50 stand or fall with claim 41.
The Examiner found that claim 41 is directed to non-statutory subject
matter because Appellants’ Specification describes a computer readable
medium as including a carrier wave that encodes a data signal and signals
are a form of energy that does not fall within one of the four statutory
categories of invention. Ans. 3-4, 17-18. Appellants argue that just because
a computer readable medium may be read or encoded by a process that uses
energy does not mean that the computer readable medium itself is energy.
App. Br. 7.
We agree with the Examiner that “a tangible computer readable
medium” as recited in claim 41 is directed to non-statutory subject matter
because Appellants’ Specification describes a computer readable medium
“includes any type of storage device that is accessible by the processor 156
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and also encompasses a carrier wave that encodes a data signal.” Spec. 23,
para. [0109]. A transitory, propagating signal is not patentable subject
matter. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Appellants
have not argued persuasively that claim 41’s recital of a tangible computer
readable medium does not encompass a transitory, propagating signal based
on their description of a “computer readable medium.” Furthermore,
Appellants’ arguments regarding a CD or DVD do not persuade us of error
in the Examiner’s findings that the claimed tangible computer readable
medium encompasses transitory, propagating signals. We sustain the
rejection of claims 41-50.
Claims 36 and 38 as anticipated by Hoffert ‘892
Appellants argue claims 36 and 38 as a group. App. Br. 7-8. We
select claim 36 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 38 stands or falls with claim 36.
The Examiner found that Hoffert ‘892 discloses the method of claim
36 including generating data to populate an open copyright database data
structure, the data including a file state. Ans. 4. The Examiner found that
Appellants’ Specification does not provide a definition or explicit meaning
for the term “file state” and therefore construed that term according to its
ordinary meaning to include header information that is extracted from media
files in Hoffert ‘892 such as title, author, copyright, volume level, duration,
video resolution, frame rate, and data rate. Ans. 21.
Appellants argue that the Examiner has broadly construed the term
“file state” to mean any kind of information relative to the file, whereas the
claims as filed, drawings, and specification provide context to the term such
that the “file state” is an indication that the file is registered to the open
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copyright data base (OCDB). App. Br. 8 (citing fig. 17). Appellants argue
that Hoffert ‘892 relates to a crawler searching for media and indexing the
results and there is no mention of receipt of a file and extraction of metadata
to generate data to populate an OCDB data structure nor is there any
description of such population including an indication of file state. Id.
Appellants’ arguments are not persuasive for the following reasons.
The Examiner reasonably interpreted the term “file state” as data generated
from the metadata that is extracted from the file and this file state to include
copyright information, title, media file, author, and data rate. Ans. 19-21.
We agree with the Examiner that the features upon which Appellants rely –
the file state is an indication that the file is registered to the OCDB – are not
recited in the claims and we decline to read such unclaimed features into the
claims during prosecution when an applicant still has opportunity to amend
the claims to recite features expressly. Ans. 20. Appellants do not point to a
lexicographic definition or other disclosure in their Specification that would
support such an interpretation beyond a naked assertion that “[t]he claims as
filed, drawings and specification thus provide context to the term, such that
the ‘file state’ is an indication that the file is registered to the OCDB.” App.
Br. 8; see Ans. 20. The Summary of Claimed Subject Matter cites steps 346,
358 in support of this limitation. App. Br. 5. These steps disclose, for each
unknown file, extracting metadata and generating data to populate OCDB
data structure (step 346) and populating an OCDB data structure for each
file (step 358). See Figs. 17, 18. Claim 36 recites only that data including a
file state is generated to populate an open copyright database.
Nor do Appellants’ arguments persuade us of error in the Examiner’s
findings that Hoffert ‘892 extracts metadata from media files and generates
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data to populate an index with title, author, and copyright information as file
states. Appellants have not pointed to a definition or disclosure in their
Specification that distinguishes the claimed OCDB from the index of Hoffert
‘892, which stores the data in an index format to include a database where
the data can be retrieved by search queries. See Hoffert ‘892, col. 6, l. 53 to
col. 8, l. 42; figs. 2A-2C. We sustain the rejection of claims 36 and 38 for
the above reasons.
Claims 1-4 and 11-20 as anticipated by Haynes
Appellant argues claims 1-4 and 11-20 as a group. See App. Br. 8-9.
We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claims 2-4 and 11-20 stand or fall with claim 1.
The Examiner found that Haynes discloses a method of managing an
online digital rights management system as recited in claim 1 to include
uploading files and receiving a file state for known files such as property and
its rights, which are stored in a central repository. Ans. 5. In particular, the
Examiner found that Appellants’ Specification and claims do not define the
term “file state.” Ans. 24. Therefore, the Examiner applied a plain meaning
to this term and found that Haynes receives a file state and uploads available
data such as intellectual properties in a central rights repository. Ans. 24-26.
Appellants argue that the Examiner’s interpretation of the term “file
state” differs from the usage of that term when it is interpreted in the context
of Appellants’ Specification and originally filed claims. App. Br. 9. This
argument is not persuasive for the reasons discussed supra regarding the
rejection of claim 36 as anticipated by Hoffert ‘892. The Examiner
reasonably interpreted the term “file state” as discussed supra and found that
Haynes discloses receipt of a file state for known files and Appellants’
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arguments do not persuade us of error in those findings as set forth in the
Answer.
Appellants also argue that Haynes simply describes bi-directional
hierarchical navigation of rights and extraction of implied data relations and
there is no description of uploading of files, receipt of a file state for known
files, upload of available data for known files and commercialization of files
according to file state as recited in claim 1. App. Br. 9. These arguments,
which merely recite limitations of claim 1, do not apprise us of error in the
Examiner’s findings that Haynes discloses such features as set forth in the
Answer at pages 5-6 and 23-26.
Appellants also argue that there is no description of batch download
of files and associated metadata and population of an open copyright
database structure for files with updated states as recited in independent
claim 11 nor management aspects and population of OCDB data structure
with updating of file states as recited in independent claim 16. App. Br. 9.
These arguments, which merely recite limitations of claims 11 and 16 and
assert without further support or analysis that the prior art does not disclose
such features, do not present arguments for separate patentability of claims
11 and 16. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Nor do such
arguments persuade us of error in the Examiner’s findings that Haynes
discloses features such as batch processing at column 5, lines 50-55 and file
states as discussed supra. We sustain the rejections of claims 1-4 and 11-20.
Obviousness rejections of claims 21-35, 37, and 39-50
The Examiner rejected claims 21-35, 37, and 39-50 based on various
combinations of Hoffert ‘892 and Haynes with one another and Schmelzer,
Hoffert ‘260, and Cross. See Ans. 9-16. Appellants argue essentially that
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the Examiner’s reliance on various secondary references to disclose features
of claims 21-35, 37, and 39-50 does not remedy the deficiencies of Hoffert
‘892 or Haynes discussed supra, such as an alleged absence of disclosure of
file state, which is recited in independent claims 26 and 41. App. Br. 9-11.
Because we sustain the rejection of claims 36 and 38 as anticipated by
Hoffert ‘892 and the rejection of claims 1-4 and 11-20 as anticipated by
Haynes, to include the Examiner’s findings that both references disclose file
states, there are no deficiencies to be cured by the secondary references in
the obviousness rejections, which are set forth at pages 2-3 of this Decision.
We sustain the rejection of claims 21-35, 37, and 39-50.

DECISION
We AFFIRM the rejections of claims 1-4 and 11-50.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
rvb