Ex Parte Bohms

Patent Trial and Appeal Board

Dec 30, 2016

12559625 (P.T.A.B. Dec. 30, 2016)

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.
12/559,625 09/15/2009 ERIC VILA BOHMS BOHM-0002 8775
68612 7590 01/04/2017
LAW OFFICE OF STEVEN R. OLSEN, PLLC
P.O. BOX 2092
INVERNESS, FL 34451-2092
EXAMINER
ABOU EL SEOUD, MOHAMED
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
01/04/2017 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):
SOLSEN@sropatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC VILA BOHMS
Appeal 2015-007118
Application 12/559,625
Technology Center 2100
Before JASON V. MORGAN, AARON W. MOORE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-
Final Rejection of claims 1—20, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Invention
Appellant discloses systems and methods for producing and retrieving
video with story-based content. Abstract.
Exemplary Claims
Claims 1, 2, 17, and 19, reproduced below with key limitations
Appeal 2015-007118
Application 12/559,625
1. A system comprising a computer, the computer having a
processor, the computer being specially configured to perform a
method, the method including:
receiving a story topic selection from a user interface
(I/F);
outputting a plurality of predetermined questions to the
user I/F based on the story topic selection;
receiving a question selection from the user I/F, the
question selection indicating at least one of the plurality of
predetermined questions; and
receiving a video story from the user I/F, the video story
associated with the question selection.
2. The system of claim 1, wherein the method further
comprises, after receiving the story topic selection:
outputting a story template to the user I/F, the story
template displaying an association between the story topic
selection and the predetermined plurality of questions; and
receiving at least one of a story name and description
from the user I/F, the at least one story name and description
being associated with the video story.
17. The system of claim 1, wherein receiving the question
selection includes receiving an edited one of the plurality of
predetermined questions, the edited one of the plurality of
predetermined questions having been edited by a user, the
video story including a narrative response by the user to the
edited one of the predetermined plurality of questions.
19. A system including computer hardware, the system
comprising:
an interface to a communication network; and
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means for capturing a video-based story, the means for
capturing coupled to the interface to the communication
network.
References and Rejections
The Examiner rejects claims 19 and 20 under 35 U.S.C. § 112, second
paragraph, as failing to point out and distinctly claim the subject matter
which Appellant regards as the invention. Non-Final Act. 2—5.
The Examiner rejects claims 19 and 20 under 35 U.S.C. § 102(a) as
being anticipated by Lunt et al. (US 2007/0250479 Al; Oct. 25, 2007)
(“Lunt”). Non-Final Act. 6—7.
The Examiner rejects claims 1—13 and 15—18 under 35 U.S.C.
§ 103(a) as being unpatentable over Krieglstein (US 2006/0031245 Al; Feb.
9, 2006) and Lunt. Non-Final Act. 8—25.
The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Krieglstein, Lunt, and Bharat (US 6,725,259 Bl; Apr. 20,
2004). Non-Final Act. 25—26.
ISSUES
1. Did the Examiner err in finding the claim 19 recitation of “means
for capturing a video-based story” is indefinite?
2. Did the Examiner err in finding Lunt discloses “means for
capturing a video-based story,” as recited in claim 19?
3. Did the Examiner err in finding the combination of Krieglstein and
Lunt teaches or suggests: (1) “receiving a story topic selection from a user
interface (I/F)” and (2) “outputting a plurality of predetermined questions to
the user I/F based on the story topic selection,” as recited in claim 1 ?
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4. Did the Examiner err in finding the combination of Krieglstein and
Lunt teaches or suggests “outputting a story template to the user I/F, the
story template displaying an association between the story topic selection
and the predetermined plurality of questions,” as recited in claim 2?
5. Did the Examiner err in finding the combination of Krieglstein and
Lunt teaches or suggests:
wherein receiving the question selection includes receiving an
edited one of the plurality of predetermined questions, the
edited one of the plurality of predetermined questions having
been edited by a user, the video story including a narrative
response by the user to the edited one of the predetermined
plurality of questions,
as recited in claim 17?
ANALYSIS
35 U.S.C. § 112, second paragraph—Claims 19 and 20
In rejecting claim 19, the Examiner finds that the recitation directed to
means for capturing a video-based story invokes 35 U.S.C. § 112, sixth
paragraph, but that the Specification does not disclose the corresponding
structure, thus rendering the means-plus-fimction recitation indefinite. Non-
Final Act. 4.
Appellant contends the Examiner erred in finding the disputed means-
plus-fimction recitation indefinite because the Specification, in addition to
disclosing illustrative hardware components, discloses algorithms that
provide structure for the disputed means-plus-fimction recitation. Br. 4—5
(citing, e.g., Spec. Figs. 6A—C, Tflf 18—20, 53—60); see also Br. 3 (further
citing Spec. Figs. 7, 17, 63—68). The Examiner maintains that the
disputed recitation is indefinite because the recitation “fails to specifically
point out or map to the items described in Appellant’s Specification.” Ans.
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27. However, a means-plus-function claim recitation itself need not identify
(i.e., point out or map to) the corresponding disclosure in the Specification.
Rather, “the corresponding structure(s) of a means-plus-fimction limitation
must be disclosed in the written description in such a manner that one skilled
in the art will know and understand what structure corresponds to the means
limitation.” Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d
1374, 1382 (Fed. Cir. 1999). We agree with Appellant that an artisan of
ordinary skill would understand that the video-based story capture processes
depicted in the Specification’s Figures 6A-C correspond to means for
capturing a video-based story. See Spec, 18—20.
The Examiner also finds that—while the Specification discloses
implementing the disclosed processes in hardware, software, or a
combination of software—the disputed means-plus-fimction recitation
encompasses software alone and, therefore, “there is not an adequate
tangible, non-transitory structure or material used to implement this
limitation.” Non-Final Act. 4 (citing Spec. 1107); see also Ans. 26—27.
However, Appellant’s reliance on means-plus-fimction language limits the
claim limitation to the structure disclosed in the Specification (i.e., hardware
alone or the combination of hardware and software). See Manual of Patent
Examining Procedure, 9th ed., § 2181 (II)(B) (Mar. 2014). Thus, the
disputed means-plus-fimction recitation does not encompass pure software
implementations of the processes as they lack the necessary structure.
For these reasons, the Examiner’s findings do not show that the claim
19 recitation of “means for capturing a video-based story” is indefinite.
Accordingly, we do not sustain the Examiner’s 35U.S.C. § 112, second
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paragraph, rejection of claim 19, or of claim 20, which the Examiner
similarly rejects.
35 U.S.C. § 102(a)—Claim 19
In rejecting claim 19 under 35 U.S.C. § 102(a), the Examiner finds
Lunf s graphical user interface for posting life stories, with hyperlinks to
web pages for adding media such as video files to a post, discloses means for
capturing a video-based story. Non-Final Act. 6 (citing Lunt || 21, 33, and
Figs. 1, 3A); see also Ans. 27.
Appellant contends the Examiner erred by failing “to consider
whether Lunt discloses each step of the corresponding algorithm disclosed in
the specification.” Br. 6. We agree with Appellant that the Examiner erred.
Specifically, the Examiner merely identifies Lunf s server computer system
110, which, through a user interface, captures and stores media content such
as video-based media for a life story, as disclosing the claimed means for
capturing a video-based story. See Non-Final Act. 6; Ans. 27. However,
the Examiner does not provide findings that show Lunt discloses that its
server computer system captures and stores such media content using any of
the algorithms disclosed, or their equivalents. See, e.g., Spec. Figs. 6A-C.
Therefore, the Examiner’s findings are insufficient to show that Lunt
discloses “means for capturing a video-based story,” as recited in claim 19.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 102(a)
rejection of claim 19, and claim 20 which depends therefrom.
35 U.S.C. § 103(a)—Claims 1, 3—16, and 18
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner finds
Krieglstein’s use of category icons 22 in an interactive journaling system,
where the icons can be selected by a user to select a journaling subject to
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write about, teaches or suggests receiving a story topic selection from a user
interface (I/F). Non-Final Act. 8 (citing Krieglstein | 65, Fig. 5). The
Examiner relies on Lunt’s retrieval and outputting of a plurality of questions
to teach or suggest outputting a plurality of predetermined questions to the
user I/F based on the story topic selection. Non-Final Act. 9 (citing Lunt
146, and Figs. 1, 3F); Ans. 28.
Appellant contends the Examiner erred because “Lunt only discloses
that questions are submitted spontaneously from other users.” Br. 8 (citing
Lunt 146, Fig. 6). Appellant argues that in Lunt “questions actually precede
story tonics .... There simply is no disclosure in Lunt for ‘outputting a
plurality of predetermined questions to the user I/F based on the story topic
selection.’” Id.
Appellant’s argument unpersuasively fails to address the Examiner’s
reliance on the combined teachings of Krieglstein and Lunt. Krieglstein, in
particular, has its own plurality of predetermined questions that are based on
a story topic selection. For example, if the “Crush” icon is selected (thus
selecting “Crush” as a story topic), the user may hear predetermined
questions such as “Did you talk to your crush today?” and “What did you
and your crush talk about?” Krieglstein 174. We agree with the Examiner
that it would have been obvious to combine Krieglstein’s predetermined
question with Lunt’s display of a plurality of questions in a user interface to
output a plurality of predetermined questions to a user interface. See Non-
Final Act. 9—10. Therefore, we agree with the Examiner that the
combination of Krieglstein and Lunt teaches or suggests: (1) “receiving a
story topic selection from a user interface (I/F)” and (2) “outputting a
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plurality of predetermined questions to the user I/F based on the story topic
selection,” as recited in claim 1.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and of claims 3—13, 15, 16, and 18, which Appellant does not
argue separately. Br. 8. Appellant does not raise additional arguments with
respect to claim 14. Therefore, we also sustain the Examiner’s 35 U.S.C.
§ 103(a) rejection of claim 14.
35 U.S.C. § 103(a)—Claim 2
In rejecting claim 2, the Examiner finds Krieglstein’s depiction of
icon 22 on journal page 72 teaches or suggests outputting a story template to
the user I/F, the story template displaying an association between the story
topic selection and the predetermined plurality of questions. Non-Final Act.
12—13 (citing Krieglstein || 53, 70, 74, and Figs. 5, 8).
Appellant contends the Examiner erred because Krieglstein “only
outputs a single question at a time in response to a category selection.” Br. 9
(citing Krieglstein || 73—84). However, Appellant fails to persuasively
distinguish the claimed display of an association between a story topic
selection and a predetermined plurality of questions from Krieglstein’s icon
22. Moreover, as discussed above with respect to the Examiner’s rejection
of claim 1, from which claim 2 depends, the Examiner relies on Lunt, not
Krieglstein, to teach or suggest outputting a plurality of questions.
Furthermore, none of the claim recitations require that the plurality of
questions be output simultaneously. Therefore, we agree with the Examiner
that the combination of Krieglstein and Lunt teaches or suggests “outputting
a story template to the user I/F, the story template displaying an association
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between the story topic selection and the predetermined plurality of
questions,” as recited in claim 2.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 2.
35 U.S.C. § 103(a)—Claim 17
In rejecting claim 17, the Examiner finds Krieglstein’s use of
alternative questions (e.g., selecting either “What did you and your crush
talk about?” or “That’s too bad. If you were to talk to him, what would you
say?” depending on a previous answer) in combination with Lunt’s
disclosure of questions created and edited by a one user (“user A”) in a
system that allows video files to be submitted in response to the questions by
a different user (“user B”) teaches or suggests wherein receiving the
question selection includes receiving an edited one of the plurality of
predetermined questions, the edited one of the plurality of predetermined
questions having been edited by a user, the video story including a narrative
response by the user to the edited one of the predetermined plurality of
questions. Non-Final Act. 24—25 (citing Krieglstein || 23, 33, and 74, and
Fig. 8; Lunt 146, Figs. 1, 3F, 6); Ans. 30.
Appellant contends the Examiner erred because “[ajlthough Funt
discloses modifying narrative responses, Funt does not appear to disclose
question editing.” Br. 10. Appellant argues that the “claim requires that the
person making the narrative response is the same person who edited the
question.” Id.
We find Appellant’s arguments persuasive. The Examiner’s findings
merely show that hunt’s teachings are directed to the creator/editor of a
question being different than the user who responds to the question with a
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video response. Non-Final Act. 24—25; Ans. 30. The Examiner does not
present findings that show it would have been obvious to an artisan of
ordinary skill to have the user who responds to the question also edit the
question. Lunt’s Figure 3F does not even depict questions with an indication
that they can be modified (e.g., with a text entry box or the like). Moreover,
the Examiner does not show that Krieglstein’s plurality of questions, which
are selected and played based on a user’s response but not actually edited by
the user, cures this deficiency in Lunt. Therefore, the Examiner’s findings
do not show that the combination of Krieglstein and Lunt teaches or
suggests:
wherein receiving the question selection includes receiving an
edited one of the plurality of predetermined questions, the
edited one of the plurality of predetermined questions having
been edited by a user, the video story including a narrative
response by the user to the edited one of the predetermined
plurality of questions,
as recited in claim 17.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 17.
DECISION
We affirm the Examiner’s decision rejecting claims 1—16 and 18.
We reverse the Examiner’s decision rejecting claims 17, 19, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED-IN-PART
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