09898600 (P.T.A.B. Jun. 28, 2013)

Ex Parte Gauba et al

Patent Trial and Appeal BoardJun 28, 2013

09898600 (P.T.A.B. Jun. 28, 2013)

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. 09/898,600 07/03/2001 Ravi Gauba 80398.P448 1960 7590 07/01/2013 Florin Corie BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN LLP Seventh Floor 12400 Wilshire Boulevard Los Angeles, CA 90025-1026 EXAMINER PENG, HSIUNGFEI ART UNIT PAPER NUMBER 2426 MAIL DATE DELIVERY MODE 07/01/2013 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 RAVI GAUBA, KLAUS HOFRICHTER, ANNIE WANG, RICHTER A. RAFEY, and CLEMENT LAU ____________ Appeal 2013-004954 Application 09/898,600 Technology Center 2400 ____________ Before DENISE M. POTHIER, DAVID M. KOHUT, and BARBARA A. PARVIS, Administrative Patent Judges. PARVIS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek review under 35 U.S.C. § 134(a) of twice-rejected claims 1, 2, 4, 5, 7 – 16, 18, 19, 21 –29, 31, 32, and 34 – 38 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Claims 3, 6, 17, 20, 30, and 33 have been cancelled. Appeal 2013-004954 Application 09/898,600 2 STATEMENT OF THE CASE Invention Appellants’ invention relates to interactive decision-making scenarios in an audio/video broadcast. Spec. ¶ [0001]. Independent claim 1 is reproduced below with certain limitations emphasized: 1. A computerized method comprising: generating an interactive list of content files for presentation to a user based on a profile of said user, wherein each of said content files is a broadcasted program comprising a plurality of content segments and a plurality of play sequences for the corresponding content file and wherein each of the plurality of play sequences represents a different story line for the broadcasted program and each content segment has associated segment information within said content information; receiving, at a selection device, a selection input command selecting the one of said content files from said interactive list; retrieving, at the selection device, a detailed profile of said user and said content information associated with said selected content file; selecting, at the selection device, a play sequence of said selected content file based on said detailed profile and said content information; presenting, at the selection device, said play sequence to said user; and modifying, at the selection device, said play sequence and associated story line of the broadcasted program corresponding to the selected content to switch to a different story line of that broadcasted program if further selection input is received from said user in response to presenting said play sequence. Appeal 2013-004954 Application 09/898,600 3 The Rejections Claims 28, 29, 31, 32, and 34 – 38 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Ans. 3 – 4. Claims 1, 2, 4, 5, 7 – 16, 18, 19, 21 –29, 31, 32, and 34 – 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ismail (US 2006/0212900 A1; published Sept. 21, 2006). Ans. 4 – 7. OBVIOUSNESS REJECTION OVER ISMAIL Regarding illustrative claim 1, the Examiner finds that Ismail teaches creating user profiles with information provided by users. Ans. 5, 8 (citing ¶ 232). The Examiner also finds that Ismail teaches that a user can identify himself or herself and that, based on the identification of a particular user, the play sequence switches to a different scene during the broadcast program. Ans. 8 (citing ¶ 234). The Examiner finds that this disclosure in Ismail meets the requirement of modifying a selected play sequence and associated story line of a broadcasted program if further selection input is received from a user in response to presenting the play sequence, as recited in claim 1. Ans. 8. Appellants argue that Ismail does not teach or suggest modifying a selected play sequence and associated story line of a broadcasted program corresponding to a selected content to switch to a different story line of that broadcasted program if further selection input is received from a user in response to presenting the play sequence, as recited in claim 1. App. Br. 6 – 8. In particular, Appellants contend that the Examiner erred in relying on a section of Ismail that supports an opposite premise of not presenting a user with any options to select between alternative ads. App. Br. 7. Appellants Appeal 2013-004954 Application 09/898,600 4 additionally argue that the scene changing of Ismail is based on contents of a user profile, but not on user input that is received in response to a presented play sequence. Reply Br. 2. ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that Ismail would have taught or suggested modifying a play sequence and associated story line of a broadcasted program corresponding to selected content to switch to a different story line of that broadcasted program if further selection input is received from a user in response to presenting the play sequence? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of claim 1. Although, as Appellants contend (App. Br. 7), one sentence of Ismail refers to an embodiment in which a user is not prompted to select between alternative ads, Ismail teaches other embodiments. As the Examiner correctly finds (Ans. 8 (citing ¶ 234)), Ismail also teaches an embodiment in which based on identification of a particular user, the play sequence switches to a different scene during a broadcast program. Regarding this alternate embodiment, Appellants argue that the scene changing of Ismail is based on contents of a user profile, but not on user input that is received in response to a presented play sequence. Reply Br. 2. However, we agree with the Examiner that Ismail teaches an embodiment in which user input is accepted by the user identifying himself or herself, for example, by pressing a sequence of keys or choosing a user name from a Appeal 2013-004954 Application 09/898,600 5 menu during a usage session (Ans. 8 (citing ¶ 234)). Each user or user group has a corresponding profile (Ans. 8 (citing ¶ 232)). As the Examiner found, these passages teach and suggest that the user’s input (e.g., choosing a user name or logging on) occurs during viewing or playing a content file sequence in some embodiments. See Ans. 5, 8. Ismail also teaches, based on the user input (e.g., choosing a user name or logging on), programming is customized (Ans. 5 (citing ¶ 268; Fig. 44)). Consistent with the Examiner’s findings (see Ans. 5, 8), Ismail thus further suggests to an ordinarily skilled artisan modifying the play sequence based on a further selection input from the user in response to presenting a play sequence as recited. Appellants have therefore not persuaded us of error in the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) and claims 2, 4, 5, 7 – 16, 18, 19, 21 –29, 31, 32, and 34 – 38, not separately argued with particularity (App. Br. 6). THE REJECTION UNDER 35 U.S.C. § 101 In a communication to the Appellants mailed on November 21, 2012, the Examiner states that the April 6, 2012 After-Appeal Amendment “will be entered.” For purposes of this opinion, we presume that the Examiner has entered Appellants’ amendment to claims 28, 29, 31, 32, and 34 – 38 (App. Br. 6) so that each claim recites a “non-transitory computer readable storage medium.” Appellants’ amendment uses the precise language recommended by the Examiner to overcome the § 101 rejection. See Ans. 4. The Examiner, however, maintains the rejection, failing to indicate in the Answer that this rejection has been withdrawn. See Ans. 3-4. Appeal 2013-004954 Application 09/898,600 6 Additionally, Appellants’ amendment is in accordance with current policy set forth by the Office regarding computer readable media. See David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); see also U.S. Patent & Trademark Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. §101, at 2 (Aug. 2009), available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08- 25_interim_101_instructions.pdf. Thus, we concur with Appellants’ conclusion that claims 28, 29, 31, 32, and 34-38 as amended, satisfy the requirements of 35 U.S.C. § 101 (App. Br. 6) and will not sustain the § 101 rejection. DECISION We reverse the Examiner’s rejection of claims 28, 29, 31, 32, and 34 – 38 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We affirm the Examiner’s rejection of claims 1, 2, 4, 5, 7 – 16, 18, 19, 21 –29, 31, 32, and 34 – 38 under 35 U.S.C. § 103(a) as being unpatentable over Ismail. 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. § 1.136(a)(1)(iv). AFFIRMED ke