Ex Parte Canora et al

Patent Trial and Appeal Board

May 31, 2016

12890960 (P.T.A.B. May. 31, 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.
12/890,960 09/27/2010 David J. Canora 10DIS092PRUSUTL
820.038
9461
77755 7590 05/31/2016
DISNEY ENTERPRISES, INC.
c/o Ference & Associates LLC
409 Broad Street
Pittsburgh, PA 15143
EXAMINER
BURKE, TIONNA M
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
05/31/2016 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 DAVID J. CANORA,
ROBERT ALAN SWIRSKY, and MICHAEL J. GOMES
____________________

Appeal 2014-0062141
Application 12/890,960
Technology Center 2100
____________________

Before JOHNNY A. KUMAR, MONICA S. ULLAGADDI, and
JOYCE CRAIG, Administrative Patent Judges.

ULLAGADDI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).

We reverse.

1 Appellants identify the real party in interest as Disney Enterprises, Inc.
App. Br. 1.
Appeal 2014-006214
Application 12/890,960

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STATEMENT OF THE CASE
Claim 1, reproduced below with a key disputed limitation
emphasized, is illustrative of the claimed subject matter:
1. A method for generating a custom media product
comprising:
obtaining media content, the media content comprising
custom media content and stock media content;
associating the media content with a story template having
a plurality of story arcs for a story;
executing a rule set of the story template, said executing a
rule set of the story template comprising combining the media
content according to the rule set along one of the plurality of
story arcs; and
generating the custom media product.

REFERENCES and REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Matsushita US 2008/0062283 A1 Mar. 13, 2008
Yamaguchi US 2004/0218058 A1 Nov. 4, 2004

Claims 1–4, 8–14, and 18–20 stand rejected under 35 U.S.C § 102(b)
as anticipated by Matsushita.
Claims 5–7 and 15–17 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Matsushita and Yamaguchi.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
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Application 12/890,960

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Action. We agree with Appellants’ arguments. We highlight and address
specific findings and arguments for emphasis below.
The Examiner finds that Matsushita discloses each of the limitations
recited in claim 1, including “associating the media content with a story
template having a plurality of story arcs for a story.” See Final Act. 2 citing
Matsushita ¶ 122; see also Ans. 12–13.
Appellants argue that the cited portions of Matsushita fail to disclose
“a plurality of story arcs included in a story template” because the
Examiner’s interpretation of the claim term “story arc” is inconsistent with
the Appellants’ definition of “story arc” and further, is inconsistent with how
“story arc” would have been understood by the ordinarily skilled artisan at
the time of the invention. See App. Br. 12–13. Specifically, Appellants
point to the description of “story arc” in the Specification:
The term “story arc” takes the meaning of a particular story line
or sub-theme for organizing media content, where the particular
organization can include more, less and/or the same media
content (in a different arrangement/organization) when
compared to another story arc of a story. That is, a story may be
organized along different story arcs.
App. Br. 12 quoting Spec. ¶ 18. Appellants also present extrinsic evidence
as to how one of ordinary skill in the art would have interpreted the claim
term “story arc”:
In a general sense, every story has a story line or plot. It is well
recognized that a plot has several different elements, which
include the introduction or doormat, the complication, the
climax, and the denouement. The Complete Guide to Writing
Fiction, Barnaby Conrad and the Staff of the Santa Barbara
Writers' Conference, Chapter 11, “Plot” (1990). In classic
literature, a plot may have one or more underlying story arcs
which move a character or situation from one state to another
Appeal 2014-006214
Application 12/890,960

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through the plot, i.e., the driving force that runs throughout the
story.
App. Br. 12–13 (emphasis added).
We do not agree Appellants’ Specification defines the term “story
arc” in a manner that conforms to the strict “words or expressions of
manifest exclusion or restriction” requirement articulated by the Federal
Circuit in Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.
Cir. 2002). Instead, the cited portion of the Specification uses non-limiting
language to describe term “story arc.” We construe “story arc” in
accordance with the extrinsic definition presented by Appellants, i.e., a sub-
plot, underlying a plot, which moves a character or situation from one state
to another throughout the story.
Based on this construction of “story arc,” we agree with Appellants’
arguments because the Examiner does not direct us to evidence sufficient to
demonstrate that Matsushita discloses “a story template having a plurality of
story arcs for a story,” as recited in claim 1. The Examiner finds Matsushita
teaches an album creating system in which an album has multiple pages,
each of which is a template. See Ans. 12.
As disclosed and described, both the album (e.g., “master”
template) and each page of the album (e.g., “sub” templates) are
reasonably considered to be templates . . . Additionally, the user
inputs casting information indicative of the particular roles of
persons appearing in the album. See Figure 10 and associated
Paragraphs 0113-0117. Within each page (i.e., template) of the
album, images are classified and fit into the casting fields. Each
page of the album can be properly interpreted as a separate
“story arc” and thus the album includes a plurality of story arcs.
In the story arcs, there are different image placeholders that are
filled depending on the subject of the story and the particular
persons appearing in the album.
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Ans. 12–13 (emphases added). However, the Examiner does not
demonstrate that each of Matsushita’s album pages necessarily has a story
arc.
First, Matsushita’s album pages include only an arrangement of
placeholders for photographs and titles, prior to receiving user input
specifying the casting information. See Matsushita, Fig. 13. The record
before us does not demonstrate that each of Matsushita’s unfilled album
pages necessarily includes a sub-plot moving a character or situation from
one state to another, let alone throughout the story, which the Examiner
finds to be taught by Matsushita’s album. See App. Br. 12; see also Final
Act. 9. Second, the casting information input by the user does not
necessarily have a story arc, because the cited portions of Matsushita do not
indicate that the user’s input is limited in any way, or required to conform to
any particular specification. See App. Br. 14.
Even assuming, arguendo, each individual album page is “a separate
story arc” as interpreted by the Examiner, the record before us does not
demonstrate how each separate story arc could move a character or situation
from one state to another throughout the story, which is found to be taught
by Matsushita’s album as noted above.
For the foregoing reasons, the Examiner’s findings are insufficient to
demonstrate that Matsushita discloses the disputed limitation recited in
independent claim 1, the commensurate limitations of independent claims
11, and 20, as well as the limitations recited in claims 2–4, 8–10, 12–14, 18,
and 19, which depend from claims 1, 11, and 20.
Claims 5–7 and 15–17 are rejected over the combination of
Matsushita and Yamaguchi. As applied by the Examiner, the teachings of
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Application 12/890,960

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Yamaguchi do not remedy the deficiencies of Matsushita. Final Act. 6–8.
Therefore, we find the Examiner also erred in rejecting these claims.
For these reasons, we are constrained by the record to reverse the
Examiner’s rejection of claims 1–4, 8–14, and 18–20 under 35 U.S.C. §
102(b) as anticipated by Matsushita, and the rejection of claims 5–7 and 15–
17 under 35 U.S.C. § 103(a) for obviousness over Matsushita and
Yamaguchi.

DECISION
The decision of the Examiner to reject claims 1–20 is reversed.

REVERSED