Ex Parte Ghaskadvi et alDownload PDFPatent Trial and Appeal BoardMay 25, 201612173498 (P.T.A.B. May. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/173,498 07/15/2008 72058 7590 05/27/2016 Kilpatrick Townsend & Stockton LLP Adobe Systems, Inc. 58083 Mailstop: IP Docketing - 22 1100 Peachtree Street, Suite 2800 Atlanta, GA 30309-4530 FIRST NAMED INVENTOR Vijay Sadanand Ghaskadvi 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 58083/394824 (B787) 6918 EXAMINER KIM, PAUL ART UNIT PAPER NUMBER 2169 NOTIFICATION DATE DELIVERY MODE 05/27/2016 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): ipefiling@kilpatrickstockton.com j lhice@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VIA Y SAD ANAND GHASKADVI and BRIAN LAWRENCE RIGGS, Appeal2014-008424 Application 12/173 ,498 Technology Center 2100 Before JEFFREY S. SMITH, DANIEL N. FISHMAN, and KEVIN C. TROCK, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-008424 Application 12/173,498 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims 1-8, 10-17, 19, and 21-24, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Representative Claim Claim 1. A method comprising: detecting, by a processor of a client system, a selection to play content by a media player application at the client system; and in response to and contemporaneously with the client system detecting the selection to play the content: downloading, by the processor, a media orchestration file, wherein the media orchestration file is in a first format and defines the presentation of one or more media segments comprising the content; detecting that the media orchestration file includes a first reference to a location of secondary content in a format incompatible with the first format of the media orchestration file such that the media player application executing at the client system and supporting using the media orchestration file to play the content does not support playback of the secondary content; downloading, by the processor, a transformation document comprising at least one transformation rule specifying a process for transforming, by the processor, the secondary content to a format compatible with the first format of the media orchestration file, such that the media player application supports playback of the transformed secondary content; applying, by the processor, the at least one transformation rule to the secondary content to generate transformed secondary content; creating, by the processor, a second reference to the location of the transformed secondary content; and inserting, by the processor, the second reference in the media orchestration file. 2 Appeal2014-008424 Application 12/173,498 Gonzalez Collazo Prior Art US 2006/0256130 Al US 7,783,767 B2 Examiner's Rejections Nov. 16, 2006 Aug. 24, 2010 Appellants' Specification stands as objected to under 35 U.S.C. § 132(a) for introducing new matter into the disclosure when claims 1, 10, 19, and 23 were amended. Final Act. 3. Claims 1, 10, 19, and 23 stand rejected under 35 U.S.C. § 112, first paragraph, for failing to comply with the enablement requirement. Final Act. 3--4. Claims 1-8, 10-17, 19, and 21-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gonzalez and Collazo. Final Act. 4--10. ANALYSIS New matter objection of claims 1, 10, 19, and 23 The Examiner finds "in response to and contemporaneously with the client system detecting the selection to play the content," as recited in claims 1, 10, and 19 is not supported by Appellants' Specification as originally filed. Final Act. 3. Appellants contend pages 4 and 10 of Appellants' Specification as originally filed provides support for claims 1, 10, and 19. App. Br. 8-9. We agree with Appellants for the reasons given in the Appeal Brief. We do not sustain the objection to claims 1, 10, and 19 under 35 U.S.C. § 132. 3 Appeal2014-008424 Application 12/173,498 The Examiner finds claim 23 as amended is not supported by Appellants' Specification as originally filed. Final Act. 4. Appellants do not provide persuasive evidence or argument to rebut the Examiner's finding. We sustain the objection to claim 23 under 35 U.S.C. § 132. Section 112, first paragraph re} ection of claims 1, 10, 19, and 2 3 The Examiner finds "in response to and contemporaneously with the client system detecting the selection to play the content," as recited in claims 1, 10, and 19 is not enabled by Appellants' Specification because responding to detecting the selection cannot be performed contemporaneously with detecting the selection. Final Act. 3--4. According to the Examiner, "contemporaneously" means "existing, occurring, or originating during the same time." Ans. 4--5, citing the Merriam-Webster dictionary. However, the cited dictionary also defines "contemporaneously" as "existing or happening during the same time period." Page 10 of Appellants' Specification discloses: such secondary content transformation occurs at a client system during run-time and further occurs contemporaneously with a user's selection to playback content with which the secondary content is to be presented. Thus, neither the source of the secondary content nor the developer of the media player have to reformat the secondary content prior to the user's selection to play the content during which the secondary content is to be presented. We agree with Appellants that the term "in response to and contemporaneously with the ... detecting," when read in light of Appellants' Specification and the Merriam-Webster dictionary definition of "contemporaneous," means detecting an action and responding to the 4 Appeal2014-008424 Application 12/173,498 detected action occur during the same time period, but not necessarily at the same time. See App. Br. 10-11. We agree with Appellants that the Examiner's definition of "contemporaneous," i.e., occurring at the same time, is a definition of "simultaneous," not "contemporaneous." Id. We do not sustain the rejection of claims 1, 10, and 19 under 3 5 U.S.C. § 112, first paragraph. The Examiner finds "wherein the transformed secondary content is available for use only at the client system such that the transformed secondary content is not available for download by another computing device" is not disclosed in and therefore not enabled by Appellants' Specification as originally filed. Final Act. 4. Appellants do not provide persuasive evidence or argument to rebut the Examiner's findings. We sustain the rejection of claim 23 under 35 U.S.C. § 112, first paragraph. Section 103 rejection of claims 1-8, 10-17, 19, and 21-24 Appellants contend the combination of Gonzalez and Collazo does not teach "downloading, by the processor, a transformation document comprising at least one transformation rule specifying a process for transforming, by the processor, the secondary content to a format compatible with the first format of the media orchestration file" and "applying, by the processor, the at least one transformation rule to the secondary content to generate transformed secondary content," as recited in claim 1. App. Br. 15-16; Reply Br. 14. The Examiner finds paragraph 131 of Gonzalez teaches downloading a transformation document comprising a transformation rule and applying 5 Appeal2014-008424 Application 12/173,498 the transformation rule to the secondary content within the meaning of claim 1. Final Act. 5---6. Appellants contend paragraph 131 of Gonzalez teaches data arbitration that depends on the support in the client device, such as whether the client device supports hardware video codecs. App. Br. 17. Appellants also contend paragraph 131 teaches validating content profiles stored with each presentation provided by the presentation server to ensure playability by the client device. Id. Here, the Examiner has not persuasively explained how validating content profiles as taught by paragraph 131 of Gonzalez teaches downloading a transformation document comprising at least one transformation rule specifying a process for transforming the secondary content, and applying the downloaded transformation rule to the secondary content as recited in independent claims 1, 10, and 19. We do not sustain the rejection of independent claims 1, 10, and 19, and corresponding dependent claims 2-8, 11-17, 19, and 21-24 under 35 U.S.C. § 103. DECISION The objection to Appellants' Specification under 35 U.S.C. § 132(a) for introducing new matter into the disclosure when claims 1, 10, and 19 were amended is reversed. The objection to Appellants' Specification under 35 U.S.C. § 132(a) for introducing new matter into the disclosure when claim 23 was amended is affirmed. 6 Appeal2014-008424 Application 12/173,498 The rejection of claims 1, 10, and 19 under 35 U.S.C. § 112, first paragraph, for failing to comply with the enablement requirement is reversed. The rejection of claim 23 under 35 U.S.C. § 112, first paragraph, for failing to comply with the enablement requirement is affirmed. The rejection of claims 1-8, 10-17, 19, and 21-24 under 35 U.S.C. § 103(a) as unpatentable over Gonzalez and Collazo is reversed. 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 7 Copy with citationCopy as parenthetical citation