Ex Parte BallDownload PDFPatent Trial and Appeal BoardNov 7, 201612734965 (P.T.A.B. Nov. 7, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121734,965 06/04/2010 24498 7590 11/09/2016 Robert D, Shedd, Patent Operations THOMSON Licensing LLC 4 Research Way 3rd Floor Princeton, NJ 08543 FIRST NAMED INVENTOR Keith Ball 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PU070305 1047 EXAMINER TAYLOR,JOSHUAD ART UNIT PAPER NUMBER 2426 NOTIFICATION DATE DELIVERY MODE 11/09/2016 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): uspto@technicolor.com pat. verlangieri@technicolor.com russell. smith@technicolor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH BALL Appeal2015-000467 Application 12/734,965 Technology Center 2400 Before CARLA M. KRIVAK, HUNG H. BUI, and JEFFREY A. STEPHENS, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-15, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 According to Appellant, the real party in interest is THOMSON LICENSING. 2 Our Decision refers to Appellant's Appeal Brief filed February 10, 2014 ("Br."); Examiner's Answer mailed July 30, 2014 ("Ans."); Final Office Action mailed December 14, 2012 ("Final Act."); and original Specification filed June 4, 2010 ("Spec."). Appeal2015-000467 Application 12/734,965 STATEMENT OF THE CASE Appellant's Invention Appellant's invention relates to a method and system for "providing play list based synchronized breakpoint calculation[ s ]" by taking "the playlists for the various regular/department (individual) channels and combin[ing] them with the playlist for a break-in channel to create a combined 'channel group' play list that has an optimized synchronization." Spec. 1 :6-8; 9: 18-22, Abstract. The breakpoint is selected-from among endpoints of individual channels' play lists and an endpoint of an ideal duration interval that is based on common content/ advertisement presentation frequency-so that a least amount of filler content is required to synchronize the respective endpoints of the individual channels to the selected breakpoint. Spec. 2:29-3: 11; 11: 17-20; 13 :29-32. Optimized synchronization of individual channels at the breakpoint enables common channel play at the same time across the individual channels, at a time that maximizes available advertising time. Spec. 9: 18-24. Appellant's Figures 5A and 5B, illustrating breakpoint selection for individual channels' transition to a break-in channel, are reproduced below with additional markings for illustration. 2 Appeal2015-000467 Application 12/734,965 t:r,:equeucy 1 _ Break-in frequency: 4 breaks per hour ,, 2. Break-in interval rninimu.rn: 14 minutes 3. Break:.-in interval :maximum: 16 minutes 4. Fill·er minimum length: 10 seconds 5. Filler t·naxi:rnum length: 1 rninute Headline Channel Media :ouration Accumulated Duration Block1 H Medla1 H M:edia3 Block2 H ____ M:edia4 H Medias H Media6 2:00 2:00 2:00 1:00 2:00 -~-2:00' FIG. 5A 2:00 4:00 6:00 1:00 3:00 5:00 pfaysists of imihidu;.~I channels CH l and CH2 '· ' ' ' Media Accumulated ' ' -,_ CH1 Chan~el Duration Duration CH2, Channel CH1 Media1 3:00 Clj_~~ryledia1 CH1 ~Media2 . 4:00 CH2_Media2 CH1 3:00 CH2 Media3 sd.e-d ed ~'""::~ " _Media3 .. CH1 Media4 3:00 CH2 Media4 bre-a kpoint CH1 Media5 2:30 CH.2 Media5 CH1 Media6 3:00 CH2 Media6 CH1 Media7 3:00 CH2 Media7 CH1 Media8 4:30 CH2 Media8 CH1 Media9 3:00 CH2 Media9 - - CH1 _ Media10 4:00 CH2 _ Media10 CH1 Media11 3:00 CH2 Media11 - - CH1 Media12 3:00 CH2 Mediai2 - - CH1 Media13 2:30 CH2 Media13 - - CH1 -Media14 3:00 CH2_ Media14 CH1 Media15 2:30 CH2 Media15 - - CH1 _Media16 3:00 CH2~ Media16 FIG. SB _total ad duration Media Accumulated Duration Duration 3:00 3:00 3:45 3:00 3:00 2:30 3:00 3:00 2301 3:00 300 3 45 3:00 3:00 2:30 2:30 Figures 5A and 5B depict tables of individual channel play lists and break-in channel playlist definitions, for determining an optimal breakpoint for a transition between the individual channels and the break-in channel. Spec. 4:14-17. 3 I Appeal2015-000467 Application I2/734,965 As shown in Appellant's Figure 5A, an ideal duration interval for an individual channel's content is 9 minutes, which is the difference between a break interval duration of I 5 minutes (corresponding to an advertisement break frequency of 4 breaks per hour) and a break-in time (advertisement duration) of 6 minutes. Spec. I4: IO-I4. Further, as shown in Appellant's Figure 5B, a breakpoint is selected at I 0 minutes within play lists of individual channels CHI and CH2, at which time CHI will have fully played CHI_MediaI, CHI_Media2, and CHI_Media3 totaling 3+4+3=IO minutes without any filler added; and CH2 will have fully played CH2_MediaI, CH2_Media2, and CH2_Media3 totaling 9 minutes and 45 seconds, thus requiring I 5 additional seconds of filler to reach the I 0 minute breakpoint. Spec. I4:3I-I5:1. Thus, the IO minute breakpoint requires a total filler amount of 15 seconds, which is less than the filler amount required to synchronize the individual channels to other hypothetical breakpoints at 9 minutes (requiring 5 minutes of filler for channel synchronization), or at 9 minutes and 45 seconds (requiring 2 minutes and 45 seconds of filler for channel synchronization). Spec. I 4:23-30. Representative Claim Claims I and I I are independent. Representative claim I is reproduced below with disputed limitations in italics: I. A method for determining a synchronized breakpoint for playlists, comprising: determining a break interval duration using a defined break frequency; determining, using the determined break interval duration and break in content to be presented during the break interval 4 Appeal2015-000467 Application 12/734,965 duration, an ideal duration interval for content of individual channels to be presented; compiling respective content portions of the individual channels to cause the respective play lists of the individual channels to approach a duration interval equal to the ideal duration interval; and selecting as a breakpoint for the respective play lists of the individual channels, at least one of an endpoint of the ideal duration interval and an endpoint of the play list compilation of an individual channel, whichever results in a least amount of filler content required to synchronize the respective endpoints of the individual channels to the selected breakpoint. Br. 18-20 (Claims Appendix). Weber et al. Zohar Evidence Considered US 2003/0236843 Al US 2006/0059042 Al Examiner's Rejections Dec. 25, 2003 Mar. 16, 2006 (1) Claims 1-10 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 2-3. (2) Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Weber and Zohar. Final Act. 4--10. Issues on Appeal Based on Appellant's arguments, the dispositive issues on appeal are: (1) whether the Examiner erred in rejecting claim 1under35 U.S.C. § 101 as being directed to non-statutory subject matter, and (2) whether the Examiner erred in rejecting claims 1 and 11 under 35 U.S.C. § 103(a) as being unpatentable over Weber and Zohar. In particular, the appeal turns on 5 Appeal2015-000467 Application 12/734,965 whether the Examiner's combination of Weber and Zohar teaches or suggests selecting as a breakpoint for the respective playlists of the individual channels, at least one of an endpoint of the ideal duration interval and an endpoint of the play list compilation of an individual channel, whichever results in a least amount of filler content required to synchronize the respective endpoints of the individual channels to the selected breakpoint, as recited in independent claims 1 and 11. Br. 7-17. ANALYSIS Section 1 OJ Rejection of Claims 1-10 as being directed to Non-Statutory Subject Matter The Examiner finds Appellant's process claim 1 fails to satisfy the machine-or-transformation (MoT) test originally outlined by the Federal Circuit in Jn re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en bane). Final Act. 2-3; Ans. 4--5. In particular, the Examiner finds Appellant's process claim 1 is neither "tied to [a] particular machine" nor "transform[ s] underlying subject matter (such as an article or material) to a different state or thing" as required by the MoT test. Final Act. 2. Thus, the Examiner finds the process of claim 1 "could be completely performed mentally, verbally or without a machine," with all claims 1-10 being "directed to an abstract idea." Final Act. 2-3, Ans. 5. In addition, the Examiner finds even if the process of claim 1 used a machine, the machine would "merely carr[y] out processes initiated by a human user." Ans. 4--5. Appellant contends the Examiner erred because Appellant's claim 1 requires a machine such as a computer or server to "compile content 6 Appeal2015-000467 Application 12/734,965 portions of the individual channels" so that the compiled channels' play lists approach a certain duration interval. Br. 9. We are persuaded by Appellant's arguments that claim 1 recites statutory subject matter. In reaching this decision, we note that Examiner's rejection of claims 1-10 under 35 U.S.C. § 101 applies the law on patentable subject matter as it existed on December 14, 2012 (the mailing date of the Final Office Action). However, more recently, in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347 (2014), the Supreme Court has clarified the law regarding patentable subject matter. In doing so, the Supreme Court, in Alice, set forth the "framework [previously set forth in Mayo] for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent- eligible applications of those concepts." Alice Corp., 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). According to the Supreme Court's framework, the first step in the analysis is to determine whether the claims at issue are directed to one of those concepts (i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we must secondly consider the elements of the claims "individually and 'as an ordered combination"' to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 132 S. Ct. at 1297-8). Thus, Bilski's MoT test is no longer the controlling test for patent eligibility. We, therefore, apply the framework set out in Alice to Appellant's claim 1. As the first step of the analysis, we find Appellant's process claim 1 is directed to a "method for determining a synchronized breakpoint for play lists." We interpret the claim to require a computer to perform the 7 Appeal2015-000467 Application 12/734,965 process. Claim 1 recites the method comprises compiling content portions of individual channels to cause the play lists of the individual channels to approach a certain duration interval, and selecting a breakpoint for the play lists of the individual channels resulting in a least amount of filler content required to synchronize the channels to the breakpoint. These limitations of claim 1 describe a solution to a technological problem of switching between multiple programming channels, by implementing "seamless transitions between alternating department/local channel and headline programming" without the "channels being cut off at the switching point." See Spec. 2: 19-23. Because claim 1 is directed to a specific solution to a technological problem, we find claim 1 is not directed to an abstract idea. As claim 1 is not directed to an abstract idea under the first step of the Alice analysis, we do not need to proceed to step two of the analysis. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 1339 (Fed. Cir. 2016). For these reasons, we do not sustain the Examiner's rejection of claim 1 and its dependent claims 2-10 as directed to non-statutory subject matter under 35 U.S.C. § 101. Section 103(a) Rejection of Claims 1-15 as obvious over Weber and Zahar With respect to independent claims 1 and 11, the Examiner finds Weber teaches a method for determining a synchronized breakpoint for playlists having substantially all the claim limitations except for requiring an ideal duration interval determined using a break interval duration based on a break frequency. Final Act. 4--5 (citing Weber Fig. 4, i1i134--44). The 8 Appeal2015-000467 Application 12/734,965 Examiner relies on Zohar for teaching this limitation. Id. at 5 (citing Zohar if 35). Appellant disputes the Examiner's factual findings regarding Weber and Zohar. In particular, Appellant argues "there is absolutely no teaching or suggestion in Zohar or any combination of Weber and Zohar for at least synchronizing the respective playlists of the individual channels." Br. 15. In addition, Appellant argues Weber and Zohar, alone or in any combination, do not teach or suggest "'selecting as a breakpoint for the respective play lists of the individual channels ... whichever results in a least amount of filler content required to synchronize the respective endpoints of the individual channels to the selected breakpoint."' Br. 12, 14--16. Thus, Appellant contends neither Weber nor Zohar teach or suggest determining "an optimized breakpoint for seamless transitions between alternating department/local channel and headline programming, which results in a minimum of filler content needed for synchronizing the channels and also results in a minimum amount of lost advertising time." Br. 16. We do not find Appellant's arguments persuasive or commensurate with the scope of Appellant's claims 1 and 11. Instead, we find the Examiner provides a comprehensive response to Appellant's arguments supported by a preponderance of evidence. Ans. 7-13. As such, we adopt the Examiner's findings and explanations. Id. For additional emphasis, we note Appellant's claims 1 and 11 do not recite or require optimization for "seamless transitions between alternating department/local channel and headline programming" as alleged by Appellant. Br. 16 (emphasis omitted). Appellant's claims 1 and 11 also do 9 Appeal2015-000467 Application 12/734,965 not recite or require selecting a breakpoint that "results in a minimum amount of lost advertising time" as Appellant contends. Br. 16. Instead, the claims simply recite, inter alia, selecting as a breakpoint for the respective play lists of the individual channels, at least one of an endpoint of the ideal duration interval and an endpoint of the play list compilation of an individual channel, whichever results in a least amount of filler content required to synchronize the respective endpoints of the individual channels to the selected breakpoint. Ans. 8-9. These features are expressly disclosed by Weber's Figure 4, reproduced below with additional markings, inserted in red, for illustration: Figure 4 is a timing diagram showing content scheduling and transmission to a plurality of users. Weber i-f 13. 10 Appeal2015-000467 Application 12/734,965 The Examiner finds Weber's multicast channels teach individual channels, Weber's schedule time 310 minus advertisement times teaches an ideal duration interval, and playback sequences 306 and 307 in the schedule time 310 compile content portions of the individual channels to cause the play lists of the individual channels to approach the ideal duration interval, as required by claim 1. Final Act. 4 (citing Weber i-fi-134--37, 39--44, Fig. 4). The Examiner further finds "the time when the News is played" in Weber's Figure 4 teaches a breakpoint for respective play lists of the individual channels, the breakpoint being an endpoint of an individual channel's playlist compilation (the end of a James Gang song in schedule time 310), as required by claim 1. Final Act. 4 (citing Weber i-fi-1 34--44, Fig. 4 ). We agree with the Examiner's factual findings. Weber's channel playlists run during schedule time 310 to a breakpoint where the News segment starts, thereby teaching respective endpoints of the individual channels are synchronized to the breakpoint, as required by claim 1. Ans. 9, 12 (citing Weber Fig. 4); see also Weber i135 ("at the end of the schedule time 310, a synchronized event for all users (a newscast) may be played."). Appellant's argument that Weber does not teach or suggest "synchronizing the respective play lists of the individual channels" (Br. 15) does not address the Examiner's specific findings that the News' start time in Weber's Figure 4 is a breakpoint synchronizing playlists of the individual channels (Ans. 9, 12). Appellant also argues Weber does not teach or suggest "'selecting as a breakpoint for the respective play lists of the individual channels ... whichever results in a least amount of filler content required to synchronize the respective endpoints of the individual channels to the 11 Appeal2015-000467 Application 12/734,965 selected breakpoint,"' as required by claim 1. Br. 12, 14, 16. We disagree. As recognized by the Examiner, Weber's breakpoint ("the time when the News is played") results in a least amount of filler content (e.g., the Fill+ Ad4 content for playback sequence 307) required to synchronize the respective endpoints of the individual channels (the ends of James Gang and Led Zeppelin songs in playback sequences 306, 307) to the breakpoint, as required by claim 1. Ans. 9-10, 12; Final Act. 4. Another breakpoint---e.g., an ideal duration interval endpoint at "schedule time 310 minus the commercial time"-would require "more filler content ... than if the endpoint were the end of the play list compilation of an individual channel, which includes the commercial time" matching the ends of James Gang and Led Zeppelin songs. Ans. 9-10 (citing Weber Fig. 4); Final Act. 16. Appellant's additional argument that Zohar does not teach the claimed breakpoint selection and synchronization of individual channels' play lists is predicated upon an individual attack of Zohar when the Examiner's rejection is based on a combination of Weber and Zohar. See In re Keller, 642 F .2d 413, 426 (CCP A 1981) ("one cannot show nonobviousness by attacking references individually where, as here, the rejections are based on a combination of references"). Br. 15-16. For example, contrary to Appellant's characterization, Zohar is not relied upon for teaching Appellant's claimed breakpoint selection and synchronization of channels' playlists-Weber is. Final. Act. 4. As correctly recognized by the Examiner, Zohar is cited for teaching the use of a break frequency to determine a break interval duration. Final Act. 5 (citing Zohar i-f 35). As such, we agree with the Examiner that, in addition to breakpoint selection and synchronization of channels' play lists as disclosed by Weber, other 12 Appeal2015-000467 Application 12/734,965 parameters such as a break frequency and break interval duration as disclosed by Zohar can be used in Weber's play list synchronization process. Ans. 12-13. For the reasons set forth above, Appellant has not persuaded us of Examiner error. Accordingly, we sustain the§ 103(a) rejection of dependent claims 2-10 and 12-15, which Appellant does not argue separately. Br. 16- 17. CONCLUSION On the record before us, we conclude Appellant has demonstrated the Examiner erred in rejecting claims 1-10 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. However, we conclude Appellant has not demonstrated the Examiner erred in rejecting claims 1-15 under 35 U.S.C. § 103(a) as being unpatentable over Weber and Zohar. DECISION We REVERSE the Examiner's final rejection of claims 1-10 under 35 U.S.C. § 101. However, we AFFIRM the Examiner's final rejection of claims 1-15 under 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner's final decision rejecting claims 1-15 is affirmed. See 37 C.F.R. § 41.50(a)(l). 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 13 Copy with citationCopy as parenthetical citation