Ex Parte Bardwil

Patent Trial and Appeal Board

Aug 9, 2018

14489913 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/489,913 09/18/2014
63649 7590 08/13/2018
DISNEY ENTERPRISES, INC.
C/0 FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Steve Bardwil
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.
0260183Cl 1636
EXAMINER
HOFFLER, RAHEEM
ART UNIT PAPER NUMBER
2155
NOTIFICATION DATE DELIVERY MODE
08/13/2018 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@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE BARDWIL
Appeal2018-000974
Application 14/489,913 1
Technology Center 2100
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 24--26, 32, 33, 35-37, 44, and 45. We have
jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Disney Enterprises, Inc. as the real party in interest.
(App. Br. 2.)
Appeal2018-000974
Application 14/489,913
THE INVENTION
Appellant's disclosed and claimed invention is directed to a method
for producing customized content in which a plurality of content modifiers
are integrated with a base content. (Abstract.)
Independent claim 24, reproduced below, is illustrative of the subject
matter on appeal:
24. A method for use by a user device having a base video
content including a plurality of visual base frames, the method
compnsmg:
receiving, from a storage device separate from the user
device, a modification layer including a plurality of visual layer
frames each having one or more content modifiers for altering
one or more features of a base frame of the plurality of visual
base frames of the base video content;
overlaying one of the plurality of visual layer frames of
the modification layer on the base frame of the plurality of
visual base frames of the base video content to produce a
customized video content having a customized frame by
altering the one or more features of the base frame of the
plurality of visual base frames using the one or more content
modifiers; and
playing the customized video content having the
customized frame on a display.
REJECTIONS
The Examiner rejected claims 24--26, 32, 33, 35-37, 44, and 45 under
35 U.S.C. § 101 as being directed to non-statutory subject matter. (Ans. 7.)
The Examiner rejected claims 24--26, 32, 33, 35-37, 44, and 45 under
35 U.S.C. § I03(a) as being unpatentable over Slowe et al (US 7,046,732
B 1, iss. May 16, 2006) (hereinafter "Slowe") in view of McKenna et al (US
2008/0033804 Al, pub. Feb. 7, 2008) (hereinafter "McKenna"). (Final Act.
2-3.)
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Application 14/489,913
ISSUES ON APPEAL
Appellant's arguments in the Appeal and Reply Briefs present the
following issues: 2
Issue One: Whether the Examiner erred in finding claims 24--26, 32,
33, 35-37, 44, and 45 as directed to non-statutory subject matter. (Reply Br.
2-5.)
Issue Two: Whether the Examiner erred in finding the combination
of Slowe and McKenna teaches or suggests the independent claim 24
limitations of:
and
a modification layer including a plurality of visual layer frames
each having one or more content modifiers for altering one or
more features of a base frame of the plurality of visual base
frames of the base video content,
overlaying one of the plurality of visual layer frames of
the modification layer on the base frame of the plurality of
visual base frames of the base video content to produce a
customized video content having a customized frame by
altering the one or more features of the base frame of the
plurality of visual base frames using the one or more content
modifiers,
and the similar limitations recited in independent claim 35. (App. Br. 6-10.)
Issue Three: Whether the Examiner erred in finding the combination
of Slowe and McKenna teaches or suggests the dependent claim 44
limitations of:
2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed May 3, 2017); the Reply Brief
(filed Nov. 6, 2017); the Final Office Action (mailed Jan. 11, 2017); and the
Examiner's Answer (mailed Sept. 25, 2017) for the respective details.
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and
determining customization criteria associated with a
target audience for the customized content,
determining the modification layer based on the
customization rules and the customization criteria,
and the similar limitations recited in dependent claim 45. (App. Br. 10-11.)
ANALYSIS
Issue One
The Examiner concludes the pending claims are patent-ineligible
under 35 U.S.C. § 101 because the claims recite an abstract idea:
[ c ]laim 24 is directed to the abstract idea of collecting video
information, modifying the video information with an overlay,
and displaying the result. This is similar to other ideas found to
be abstract by various courts, such as collecting information,
analyzing it, and displaying certain results of the collection and
analysis (Electric Power Group) [ Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)] and collecting,
displaying, and manipulating data (Int. Ventures v. Cap One
Financial) [Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363 (Fed. Cir. 2015)].
(Ans. 8.)
Appellant argues, inter alia, that the limitations of claim 24
are physical transformations, which are not remotely similar to
fundamental economic practices, methods of organizing human
activities, mathematical relationships/formulas or mere ideas.
Rather, just like the self-referential table of ... Enfzsh, LLC v.
Microsoft Corp. et al., No. 15-1244 (Fed. Cir. 2016),
independent claim 24 is rooted in the computer technology.
(Reply Br. 3.) Appellant contends "that the claims here are similar to the
Digital Image Processing claim presented in the 2014 Interim Eligibility
Guidance, pages 7-10" (Reply Br. 4) and that "independent claim 24, when
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taken as a whole, docs not merely receive and store visual layer frames and
visual base frames, but overlays the frames to generate a customized frame
by altering one or more features of a base frame, and then displays the
customized frame on a display." (Reply Br. 5.)
We are persuaded of Examiner error. The Supreme Court has long
held that "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354
(2014) ( quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc.,
596 U.S. 576, 598-99 (2013)). The "abstract ideas" category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S. Ct. at 2354--55 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to 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 Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (quoting Mayo, 566 U.S. at 73.) The
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prohibition against patenting an abstract idea "'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010).
Turning to the first step of the Alice inquiry, we do not agree with the
Examiner's finding that the claims are "directed to the abstract idea of
collecting video information, modifying the video information with an
overlay, and displaying the result."
There is no definitive rule to determine what constitutes an "abstract
idea." Rather, the Federal Circuit has explained that "both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir.
2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are
patent-eligible under § 101, "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided").
The Federal Circuit also noted that "examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts." Amdocs, 841 F.3d at
1294 n.2.
Here, we determine the claims are similar to the claims that the
Federal Circuit determined are patent eligible in McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). As explained
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by the Federal Circuit in SAP America, Inc. v. InvestPic, LLC, No. 2017-
2081 (Opinion Modified: Aug. 2, 2018),
The claims in McRO were directed to the creation of something
physical-namely, the display of "lip synchronization and
facial expressions" of animated characters on screens for
viewing by human eyes. Id. at 1313. The claimed
improvement was to how the physical display operated (to
produce better quality images), unlike ... a claimed
improvement in a mathematical technique with no improved
display mechanism. The claims in McRO thus were not
abstract in the sense that is dispositive here. And those claims
also avoided being "abstract" in another sense reflected
repeatedly in our cases (based on a contrast not with "physical"
but with "concrete"): they had the specificity required to
transform a claim from one claiming only a result to one
claiming a way of achieving it. McRO, 837 F.3d at 1314; see
Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305---06
(Fed. Cir. 2018); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1241 (Fed. Cir. 2016); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1265 (Fed. Cir. 2016); see also
Two-Way Media [Ltd. V. Comcast Cable Communications,
LLC, 874 F.3d [1329] 1337 [(Fed. Cir. 2017)]; Secured Mail
Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 909 (Fed.
Cir. 2017); RecogniCorp [RecogniCorp, LLC v. Nintendo Co.,
855 F.3d 1322 (Fed. Cir. 2017)] at 1326; Symantec [Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir.
2016)], at 1316.
SAP America, Inc. v. InvestPic LLC, 890 F.3d 1016, 1021-22.
Similar to the claims in McRO, the claimed method here is directed to
the creation of something physical comprising customized content on
screens for by human viewing eyes. Appellant's disclosure similarly
provides an improvement in which
a producer, director, distributor, consumer 131, or other party
may customize the base content to produce customized content
having customized presentation features including cultural,
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geographical, ethnic, architectural, iconographical, and
physiological features, for example, familiar to a particular
audience including consumer 131. As a result, consumer 131
may be able to more closely relate to and connect with the
content, making the content more desirable and/or engaging to
the consumer.
(Spec. 9:16-21; see also Spec. 9:21-10:12, describing replacement of
Midwestern United States content with customized content for the country
of India.) Additionally, the claims include "the specificity required to
transform a claim from one claiming only a result to one claiming a way of
achieving it" (InvestPic LLC, 890 F.3d at 1021) through the use of the
claimed "plurality of visual layer frames," "base frame," and "content
modifiers."
As the claimed method is not directed to an abstract idea, we do not
need to proceed to Alice step two. See Enfish, 822 F.3d at 1339 (citing
Alice, 134 S. Ct. at 2355). Accordingly, we reverse the Examiner's 35
U.S.C. § 101 rejection of claims 24--26, 32, 33, 35-37, 44, and 45.
Issue Two
In finding the combination of Slowe and McKenna teaches or
suggests the claim 24 limitations at issue, the Examiner relies on the
disclosure of Slowe of (1) camera-motion layers used to synchronize with
and overlay camera motion parameters of an original video sequence, and
(2) altering features of a fixed frame, such as the background, of the original
video sequence, including an example in which guests checking into one
hotel and can be displayed as entering a different hotel, and an example of a
video coloring book. (Final Act. 3, Ans. 5---6; Slowe Figs. 4 and 9-11, 4:53-
5: 16, 9:35--44, 11 :39--49.) The Examiner further relies on the disclosure of
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McKenna of a central content source and the display of merged content.
(Final Act. 4, Ans. 6; McKenna Fig. 10, ,r,r 12, 56, 64, 128.)
Appellant argues that "Slowe is directed to object-based video
encoding, rather than frame-based encoding" and points to the background
section of Slowe in support. (App. Br. 6, citing Slowe 1: 15-34.) Appellant
contends that Slowe' s use of the word "overlay" actually "describes
inserting an object in object-based video encoding, [and] should not be
misconstrued" to mean the "overlaying" step recited in claim 24. (App. Br.
7, citing Slowe 11:39-49.) Appellant further contends "McKenna is also
directed to object-based video encoding" (App. Br. 8, citing McKenna ,r 60)
and "McKenna merely discloses inserting objects in designated locations
within a frame, but fails to disclose that a visual modification frame having
one or more content modifiers is overlaid on the visual base frame." (App.
Br. 9-10.)
We are not persuaded by Appellant's arguments. The Examiner finds,
and we agree, that Slowe teaches
one or more of a plurality of camera-motion layers are utilized
to synchronize with and overlay camera motion parameters of
an original video sequence, altering one or more features of a
fixed frame ( e.g., background) of the original video sequence
and possibly one or more subsequent frames of that content
(Ans. 5, citing Slowe Fig. 4, 4:53-5: 16) and further teaches an example "in
which guests checking into one hotel can be displayed as entering a different
hotel after customized content has been merged." (Ans. 5; see Slowe 9:35-
44.)
We also agree with the Examiner's finding that McKenna teaches
"three customized frames wherein the base frame has been changed by
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adding different features to generate three different renderings." (Ans. 6,
citing McKenna Fig. 10, ,r 64.)
Appellant does not address and challenge the Examiner's findings, but
instead relies on the purported distinction between object-based and frame-
based encoding, even though the claim does not explicitly mention either
type of encoding; additionally, Slowe explicitly teaches that "[a]dding
camera-motion layers provides the ability to insert in the video sequence
objects that move with the motion of the camera" (Slowe 11 :44--46) which
links together "camera-motion layers" and "objects." See also Slowe 4:53-
5: 10, describing an "original video sequence" that is "decomposed" into
"camera-motion layers."
Accordingly, we sustain the Examiner's rejection of independent
claim 24, and independent claim 35 commensurate in scope, as well as
dependent claims 25, 26, 32, 33, 36, and 37 not argued separately. (See
App. Br. 10.)
Issue Three
In finding the combination of Slowe and McKenna teaches or
suggests the claim 44 limitations at issue, the Examiner relies on the
disclosure ofMcKenna of (I) a set of rules to place objects, and (2) rules
used to operate on certain defined classes of products or to target
predetermined objects. (Final Act. 8, McKenna ,r,r 44, 54--55.)
Appellant argues "there is no disclosure, teaching, or suggestion in
McKenna that 'customization criteria {are! associated with a target
audience' as recited in dependent claims 44 and 45." (App. Br. 11.)
We are not persuaded by Appellant's arguments. The Examiner finds,
and we agree, that McKenna teaches a rule set that "can operate generically
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on certain defined classes of products or specifically target predetermined
[ o J bj ects" as exemplified by the prohibition of" cigarette advertising in ...
content." (Final Act. 8, quoting McKenna ,r 54.) One skilled in the art,
aware of a technical method to customize video content, would understand
that such a tool allows customization based on the desires of the content
owner, whether to satisfy the owner's own tastes (such as to remove
cigarette advertising under a belief that smoking is harmful) or to reach a
desired target audience ( such as non-smokers), because in the realm of
advertising a content owner aims to reach an appropriate audience for a
given content.
Accordingly, we sustain the Examiner's rejection of dependent claim
44, and dependent claim 45 commensurate in scope. (See App. Br. 10-11.)
CONCLUSION
For the reasons stated above, we
1. reverse the Examiner's non-statutory subject matter rejection of
claims 24--26, 32, 33, 35-37, 44, and 45; and
2. affirm the Examiner's obviousness rejections of claims 24--26, 32, 33,
35-37, 44, and 45.
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DECISION
The Examiner's decision rejecting claims 24--26, 32, 33, 35-37, 44,
and 45 under 35 U.S.C. § 101 is reversed.
The Examiner's decision rejecting claims 24--26, 32, 33, 35-37, 44,
and 45 under 35 U.S.C. § 103(a) is affirmed.
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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