Ex Parte Ball

Patent Trial and Appeal Board

Nov 7, 2016

12734965 (P.T.A.B. Nov. 7, 2016)

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