Ex Parte Gavin et alDownload PDFPatent Trial and Appeal BoardSep 10, 201512021287 (P.T.A.B. Sep. 10, 2015) Copy Citation 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. 12/021,287 01/28/2008 Andrew Gavin 257.53-US-U1 3601 105454 7590 09/10/2015 Gates & Cooper LLP - Specific Media/Myspace 6701 Center Drive West, Suite 1050 Los Angeles, CA 90045 EXAMINER COLBERT, ELLA ART UNIT PAPER NUMBER 3694 MAIL DATE DELIVERY MODE 09/10/2015 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 ANDREW GAVIN and SCOTT SHUMAKER ___________ Appeal 2012–010572 Application 12/021,287 Technology Center 3600 ___________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and ROBERT L. KINDER, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Andrew Gavin and Scott Shumaker (Appellants) seek review under 35 U.S.C. § 134 of a non–final rejection of claims 1–17, 19, and 20, which along with claim 18 containing allowable subject matter are, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed February 23, 2012) and Reply Brief (“Reply Br.,” filed July 6, 2012), and the Examiner’s Answer (“Ans.,” mailed May 9, 2012), and Non- Final Rejection (“Non-Final Rej.,” mailed March 23, 2011). Appeal 2012-010572 Application 12/021,287 2 The Appellants invented a payment system and method for web-based video editing systems. Spec. para. 2. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]. 1. A system comprising: [a] a server connected to a network; [b] a first client communications device connected to the network, wherein the first client communications device is in communication with the server; [c] a second client communications device connected to the network, wherein the second client communications device is in communication with the server; [d] media storage connected to the server, the media storage including media elements that are used in a video production, the media elements including at least one protected media element that has rights data associated with the protected media element indicative of usage rights available for the protected media element; and [e] production storage connected to the server, the production storage including a set of production instructions that define a video production that includes all or a portion of one or more of the media elements; [f] the server comprises a video editing subsystem that is configured to: Appeal 2012-010572 Application 12/021,287 3 [1] receive, from the first client communications device, selections indicative of media elements and commands indicative of how the media elements indicated by the selections are to be combined into a client video production, wherein the media elements indicated by the selections include at least one protected media element; [2] send, to the first client communications device, data allowing temporary playing on the first client communications device of the client video production based on the selections and commands received from the first client communications device; [3] send, to the first client communications device, data indicative of usage rights available for purchase through the first client communications device of the at least one protected media element; [4] receive, from the first client communications device, instructions for the purchase of a purchased usage right set including at least some usage rights available for purchase for each of the at least one protected media element; Appeal 2012-010572 Application 12/021,287 4 [5] create a binding for a user via said server specifying a data–right combination, including an amount or duration of such data–right combination; [6] receive a purchase order for said binding from said user; and [7] send, to the second client communications device, data allowing playing on the second client communications device of the client video production, according to the purchased usage right set. The Examiner relies upon the following prior art: Holtz US 6,952,221 B1 Oct. 4, 2005 Iwata US 7,188,088 B2 Mar. 6, 2007 Claims 1–16 stand rejected under 35 U.S.C. § 102(b) as anticipated by Iwata.2 Claims 17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Iwata and Holtz. ISSUES The issues of anticipation and obviousness turn primarily on whether Iwata describes some form of binding. 2 The Examiner withdrew a rejection of claims 1–4, 9–12, 17, and 18 under 35 U.S.C. § 112, first paragraph, as lacking a supporting written description within the original disclosure. Ans. 3. Appeal 2012-010572 Application 12/021,287 5 FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to Claim Construction 01. The disclosure contains no lexicographic definition of “binding.” Facts Related to Appellants’ Disclosure 02. In some embodiments, the purchase subsystem stores information indicative of the binding in the memory. Spec. para. 24. Facts Related to the Prior Art Iwata 03. Iwata is directed to editing and merging video data. Iwata 1:12– 13. 04. Iwata describes a video editing apparatus that edits video data to generate a video program. Iwata includes a video content data storing unit to store the video program generated by editing the video material data; a copyright royalty storing unit to store copyright information showing standard copyright royalties that respectively correspond to the video data; and a calculation unit to calculate a total copyright royalty for the video program according to the copyright information. Iwata 1:49–59. 05. Iwata describes a video editing apparatus that edits video data to generate a video program. Iwata includes a video content data storing unit to store the video program generated by editing the video material data; a copyright royalty storing unit to store Appeal 2012-010572 Application 12/021,287 6 copyright information showing standard copyright royalties that respectively correspond to the video data; and a calculation unit to calculate a total copyright royalty for the video program according to the copyright information. Iwata 1:49–59. 06. Iwata describes a time access editor and video data storage. Iwata 3:65–4:18. 07. Iwata describes a video output for playing video. Iwata 4:39–43. 08. Each standard copyright royalty fee indicates the standard royalty fee for the video section, which is specified by a corresponding object start point and object end point, of the video data piece assigned a corresponding video data identifier. Here, the standard royalty fee is determined by a corresponding encryption necessity, distribution pattern, picture quality, and validity. The copyright royalty fee for a video data piece is calculated on an as-used basis where the royalty fee is calculated according to how long the video data piece is used or on a fixed basis where a royalty fee remains constant regardless of how long the video data piece is used. Iwata 6:18–29. 09. The royalty fee information transmission and reception unit reads each royalty fee information set from the royalty fee storing unit and transmits each read royalty fee information set to an external apparatus. The royalty fee information transmission and reception unit also receives a message that is transmitted from the external apparatus to notice that the royalty fee information set has been received. Iwata 13:59–67. Appeal 2012-010572 Application 12/021,287 7 10. The royalty fee information transmission and reception unit 112 transmits information concerning copyright royalty fees to the external apparatuses located at payees via a communication system (such as a network) to register the information at the external apparatuses. Iwata 25:1–6. 11. In Iwata, each copyright royalty fee is generally calculated on an as-used basis or a fixed basis. However, if the same video material is repeatedly used, the user may sign a contract with the copyright holder to discount the copyright royalty fee according to how many times the video material is used, and the copyright royalty fee may be calculated according to this contract. In this case, the standard copyright royalty fee is reduced according to the increase in the number of times when the video material is used. Iwata 26:7–16. ANALYSIS Iwata describes attaching royalty rate information to video content and tracking royalties earned according to usage and subsequent royalty payment receipts. Thus, Iwata generally describes the playing of content having usage rights recited in claim 1. Appellants argue that the Examiner made no findings at all with respect to limitations [4]–7. App. Br. 7. The Examiner did make findings as to each of these limitations. Ans. 10–13. Appellants only detailed arguments allege that Iwata offers no transactional platform that creates actual bindings. App. Br. 7. Appeal 2012-010572 Application 12/021,287 8 The Examiner found that Iwata’s contract was a form of such binding, as being a binding agreement. We find that the claim does not recite or even narrow the implementation or structure of such a binding and the Specification provides no lexicographic definition. FF 01. Indeed, rather than defining a binding as data that is stored, the Specification instead says that the binding is capable of being stored only in “some embodiments.” FF 02. Thus, the Disclosure envisions a broader scope for a binding than some physical data representation. More to the point, Iwata describes such a contract as an agreement that is reflected in modifications to its royalty table. FF 11. Iwata’s royalty table provides such a binding in actual data form, and it implicitly contains information concerning rights usage by the royalty terms. Thus, Itwata’s agreement and corresponding modifications to its royalty table disclose a data–right combination, including the amount of such data–right combination as required by Appellants’ claims. Contrary to Appellants’ argument that Iwata fails to describe actual transactions, Iwata explicitly tracks actual data usage as initiated by playing data, and royalty accumulation and payment receipts for earned royalties. FF 08–10. Appellants also generally allege that Iwata fails to describe various other limitations, but present no arguments. This is insufficient to act as a separate argument under 37 C.F.R. § 41.37. As our reviewing court held, we hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. In re Lovin, 652 F.3d 1349, 1357 (Fed Cir 2011). Appellants present arguments in the Reply Brief for the first time that Iwata fails to describe the recited binding as understood from the Appeal 2012-010572 Application 12/021,287 9 Specification. As the Examiner provided essentially the same findings and response in the Answer as in the Final Rejection, this new argument is not in response to an Examiner finding made for the first time. Thus, this argument is untimely as any such argument was waived by not being raised in the Appeal Brief. CONCLUSIONS OF LAW The rejection of claims 1–16 under 35 U.S.C. § 102(b) as anticipated by Iwata is proper. The rejection of claims 17, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Iwata and Holtz is proper. DECISION The rejection of claims 1–17, 19, and 20 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED mp Copy with citationCopy as parenthetical citation