Ex Parte Chaney et al

Patent Trial and Appeal Board

Jan 23, 2017

13092094 (P.T.A.B. Jan. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/092,094 04/21/2011 Jeremy P. Chaney 110466-213261 (P49717D) 5864
31817 7590 01/25/2017
SCHWABE, WILLIAMSON & WYATT, P.C.
c/o CPA GLOBAL
900 2nd Avenue South, Suite 600
MINNEAPOLIS, MN 55402
EXAMINER
PHAM, KHANH B
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
IPDocketing @ S CHWABE.com
intelpatent @ schwabe. com
inteldocs_docketing @ cpaglobal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY P. CHANEY, JOSHUA ETHAN ELMAN,
and ELIZABETH CARTER GRIGG
Appeal 2015-006644
Application 13/092,094
Technology Center 2100
Before HUNG H. BUI, JOHN F. HORVATH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review, under 35 U.S.C. § 134(a), of the Examiner’
rejection of claims 2—9. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2015-006644
Application 13/092,094
SUMMARY OF THE INVENTION
The invention is directed to system and method of organizing and
editing metadata. Spec. 1:5—6.
Claim 2, reproduced below, is illustrative of the claimed subject
matter:
2. A computer implemented method for propagating
metadata changes to metadata fields of multiple content files
the method comprising:
obtain, by a user device, a single user-selected content
file, said single user-selected content file being associated with
a plurality of metadata fields;
receive, via an input device associated with said user
device, a new metadata value for updating an indicated one of
said plurality of metadata fields of said single user-selected
content file;
determine, by said user device, whether said indicated
metadata field is of a type that is automatically-propagatable;
and
when said indicated metadata field is of a type that is
automatically-propagatable:
determine, by said user device, a group of automatically-
selected content files that are related to said single user-selected
content file;
determine, by said user device, whether to update said
indicated metadata fields respectively associated with said
group of automatically-selected content files; and
when it is determined to make said update, update, by
said user device, said indicated metadata fields of said single
user selected-content file and said automatically-selected
content files with said new metadata value.
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REJECTION & REFERENCE
Claims 2—9 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Chasen et al. (US 6,760,721 Bl; issued July 6, 2004) “Chasen.” Final
Act. 2.
ISSUES AND ANALYSIS
35 U.S.C. § 102(e): Claims 2-9
Claim 2 recites a method for propagating changes to the metadata
fields of multiple content files and requires a user device, inter alia, to
receive “a new metadata value for updating an indicated one of said plurality
of metadata fields of said single user-selected content file” and to determine
“whether said indicated metadata field is of a type that is automatically-
propagatable.”
Appellants argue the Examiner erred in rejecting claims 2—9 because
“CHASEN does not propagate metadata changes made with respect to a
single content file to the metadata for other content files.” App. Br. 14. In
particular, Appellants argue that in Chasen, “when a metadata change is
made with respect to only a single content file only the metadata for the
single content file is changed.” Id. By contrast, Appellants argue that
“when a metadata change is made to a grouping of content files the
metadata change is propagated to all content files in the grouping.” Id.
According to Appellants, claims 2—9 require “automatic propagation of
metadata from a single user-selected content file to a related group of
automatically-selected content files, which elements are not found in
CHASEN.” Id.
We are persuaded by Appellants’ arguments, which accurately
describe the operations of Chasen, and demonstrate the differences between
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Application 13/092,094
these operations and the operations required by independent claim 2, and
similarly worded independent claims 8 and 9. In particular, claim 2 requires
(a) receiving a user-selected content file, (b) receiving from the user a new
metadata value for one of the metadata fields of the selected content file,
(c) determining, by the user device, whether the metadata field is of an
automatically-propagatable type, (d) determining, by the user device, a
group of automatically-selected and related content files, (e) determining,
by the user device, whether to update the same metadata field in the group of
related content files, and if so, (f) updating the same metadata field in the
selected content file and the group of related content files.
Although Appellants’ Specification does not define the term “content
file,” we understand the term to refer to a file containing digital content,
such as an audio or video recording. See Spec. 5:22—6:10. The content file
can be associated with or include metadata that describes the digital content,
such as a file name or file type. Id. at 5:23—29. For example, in the case of
an audio recording, the metadata can include descriptive information, such
as the name of the recording, the name of the album on which the recording
appears, and the recording’s musical category (e.g., rock or pop). Id. at
6:11-15.
Turning to the limitations recited in claims 2—9, if the user (a) selects
an audio recording and (b) makes a change to its musical category (e.g.,
from rock to pop), the user’s device will (c) determine whether changes to
the musical category are automatically-propagatable, (d) determine a group
of automatically-selected audio recordings that are related to the selected
audio recording, (e) determine whether to apply the musical category change
to the automatically-selected and related audio recordings, and (f) apply the
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Application 13/092,094
musical category change to both the selected audio recording and the
automatically-selected and related audio recordings.
The Examiner finds these limitations are disclosed by Chasen
because:
[A] user can change the genre of thousands [of] files by
perform[ing] the change for a single node, and the change will
be propagated to all files within the same group. For example,
as seen [in] the tree at Col. 11 ... a user can modify the genre
of the single track entitle [d] “Bird” by clicking on “Pop” and
changing] it to “Classical”, the change is then propagated to
the leaf node “Rhythm” because the tracks “Bird” and
“Rhythm” are grouped in the same grouping.
Final Act. 5; see also Ans. 4—5.
However, as Appellants correctly note, this example demonstrates
making “a change to the metadata for a grouping—not a change to a
metadata field of a single user-selected content file—which propagates to all
groups and leaf nodes below the grouping.” App. Br. 17.
As such, we agree with Appellants that Chasen “does not propagate
metadata changes made with respect to a single content file to the metadata
for other content files” and does not contain “elements with respect to
automatic propagation of metadata from a single user-selected content file to
a related group of automatically-selected content files.” App. Br. 14.
Accordingly, we do not sustain the Examiner’s anticipation rejection of
independent claims 2, 8, and 9, and of dependent claims 3—7.
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NEW GROUNDS OF REJECTION
Claims 2—9 under 35 U.S.C. § 112, First Paragraph:
Pursuant to our authority under 37 C.F.R. §41.50(b), we reject claims
2—9 under 35 U.S.C. § 112, first paragraph, for lack of written description
support in Appellants’ Specification for the following reasons.
Appellants’ Specification discloses that to apply a metadata change to
all the songs on an album, a user must first select a classification or grouping
of the songs by album. In particular, as shown in Appellants’ Figure IB,
when a user wishes to apply a metadata change for a selected content file
(e.g., for the track “Allison” on the “Acoustic” album) to a group of related
content files (e.g., to the other tracks on the “Acoustic” album), the user
must first select the “Apply Changes to all tracks in Album” check box, and
then the “OK” text box. See Spec. 25:3—17 (the system “determines whether
or not the user wants to apply changes to all tracks in the album” and if so
“retrieves each data record . . . that matches the album name with the current
data record and updates the retrieved data records with the changes from the
user.”) (emphases added). Thus, Appellants’ disclosed method for applying
metadata changes to the tracks of an album does not differ from the method
taught by Chasen, which also requires the user to select the album to which
metadata changes are to be applied. Nonetheless, the method taught by both
Appellants’ Specification and Chasen differs from the method recited in
Appellants’ claims 2—9, which require, inter alia, “determining], by said
user device, whether [an] indicated metadata field is of a type that is
automatically-propagatable.” App. Br. 24 (Claims App’x) (emphases
added).
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Application 13/092,094
35 U.S.C. § 112,11, provides in pertinent part, that:
The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same ....
The “written description” requirement of 35 U.S.C. § 112,11 is separate
from the “enablement” requirement. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991). Its purpose is to “convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, [the
inventor] was in possession of the invention. The invention is, for purposes
of the ‘written description’ inquiry, whatever is now claimed.” Id. at 1563—
64.
As noted above, Appellants’ Specification does not disclose
“determin[ing], by said user device, whether [an] indicated metadata field is
of a type that is automatically-propagatable” as recited in claims 2—9. See
App. Br. 24 (Claims App’x) (emphases added). The term “automatically,”
including variations such as “automatic,” appears only three times in
Appellants’ Specification. In particular, the Specification discloses
associating a content file with a unique identifier, which may be “an
automatically generated code.” Spec. 13:9-10 (emphasis added). It also
discloses displaying the metadata associated with a content file “upon an
automatic request when a track is selected,” or “upon an automatic request if
certain metadata is missing.” Id. at 15:24—28 (emphasis added). None of
these disclosures pertain to the user device determining whether a selected
metadata field is “automatically-propagatable” as recited in claims 2—9
(emphasis added), or indicate that Appellants were in possession of an
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invention in which the user device determines “whether [an] indicated
metadata field is of a type that is automatically-propagatable” as recited in
these claims.
Similarly, although the term “propagatable” does not appear in
Appellants’ Specification, its variation “propagated” appears twice. In
particular, the Specification discloses that a user must select the “Apply
Change to all Tracks in Album” check box to indicate that a metadata
change “should be propagated and/or applied to other metadata tracks that
are in the same Album.” Spec. 9:26—28 (emphasis added). The
Specification similarly discloses that a metadata change that is made to an
Album or Genre is “propagated to all tracks that are part of the [selected]
Album or Genre.'” Id. at 25:21—28 (emphases added). None of these
disclosures pertain to the user device determining whether a selected
metadata field for a content file is “automatically-propagatable” to related
content files as recited in claims 2—9 (emphasis added), or indicate that
Appellants were in possession of an invention in which the user device
determines “whether [an] indicated metadata field is of a type that is
automatically-propagatable'” as recited in these claims.
Like the method taught by Chasen, Appellants’ Specification
discloses that the user must not only determine whether a change to a
selected metadata field should be propagated to related content files, but
must also determine to which related content files the change should be
propagated (e.g., to all the tracks on an Album by selecting the “Apply
Changes to all tracks in Album” check box prior to making any metadata
change). See Spec. 9:26-28, 25:1—17.
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Accordingly, we reject claims 2—9 under 35 U.S.C. § 112,11 for lack
of written description.
Claims 2—9 under 35 U.S.C. § 103(a):
Pursuant to our authority under 37 C.F.R. §41.50(b), we also reject
claims 2—9 under 35 U.S.C. § 103(a) as being unpatentable over Chasen for
the following reasons.
At the outset, we note there is essentially no difference between
Chasen’s and Appellants’ methods (as described in the Specification) for
applying a metadata change to a categorized group of content files such as
all of the audio recordings on an album. In particular, Chasen discloses
categorizing audio recordings in a Master Library into various groupings,
including grouping the audio recordings by “Album.” Chasen 5:27—34, Fig.
1. Each “Album” in Chasen’s Master Library is a “non-leaf node” in an
acyclic graph of the audio recordings in the Master Library whose
descendant “leaf-nodes” include all the audio recordings on the album.
Chasen discloses that when a user changes a metadata field for a non-leaf
node in the graph (e.g., for a given album), that change is applied to all the
descendants of the non-leaf node (e.g., to all the audio recordings on the
album). See, e.g., Chasen 15:30-41, Fig. 5.
As discussed above, Appellants’ Specification similarly discloses that
to apply a metadata change to all the songs on an album, a user must first
select a classification or grouping of the songs by album. In particular, as
shown in Appellants’ Figure IB, when a user wishes to apply a metadata
change for the track “Allison” on the “Acoustic” album to the other tracks
on the “Acoustic” album, the user must first select the “Apply Changes to all
tracks in Album” check box, and then the “OK” text box. See Spec. 25:1—
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17; Fig. IB. Thus, like Chasen, Appellants’ Specification teaches that a user
wanting to apply a metadata change to a group of related songs (e.g., songs
on an album) must first select the album to which the metadata change is to
be applied, thereby selecting all the songs on that album.
To the extent Appellants’ claims 2—9 can be understood in the context
of Appellants’ disclosure, we find no discemable difference between
Chasen’s method and Appellants’ disclosed method of applying metadata
changes to the songs on an album. As such, we reject claims 2—9 under 35
U.S.C. § 103(a) as being unpatentable over Chasen.
DECISION
The Examiner’s anticipation rejection of claims 2—9 based on Chasen
is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
(1) claims 2—9 under 35 U.S.C. § 112, first paragraph, as lacking written
description; and (2) claims 2—9 under 35 U.S.C. § 103(a) as being
unpatentable over Chasen.
Section 41.50(b) provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Rather,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellants must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
newly rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
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Application 13/092,094
examiner, in which event the prosecution will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record.
REVERSED
37 C.F.R. $ 41.50(b)
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