Ex Parte Plastina et al

Patent Trial and Appeal Board

Oct 9, 2012

10623235 (P.T.A.B. Oct. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte DANIEL PLASTINA, JOHN WESLEY TERRELL,
JASON E.D. McCARTNEY, KEITH MAURICE
TOUSSAINT, DAVID W. HOSTETTER, THOMAS BRIAN
SPRINGER JR., and AARON P. STARKEY
________________

Appeal 2010-003854
Application 10/623,235
Technology Center 2400
________________

Before ALLEN R. MacDONALD, ERIC S. FRAHM, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 2, 5-7, 9-20, 22, 29, 30, 33-38, 40-43, 45-47, 50, 51, 53, 54, 64,
65, and 67. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
1

The Invention
“Embodiments of the present invention relate to the field of metadata
for media content. In particular, embodiments of this invention relate to
metadata retrieval protocols for obtaining metadata for media content.”
(Spec. ¶ [0002] (“TECHNICAL FIELD”)).
Exemplary Claims
A. Independent claim 1 is representative of an aspect of the
invention and is reproduced below (emphasis added to contested
limitations):
1. A method for obtaining metadata for a media content file
storing media content, said media content file being stored on a
computer storage medium, said method comprising:
populating a request data structure, said request data
structure comprising a request type identifier defining a type for
the computer storage medium, a request identifier, and a
plurality of metadata elements stored with the media content
file;
requesting metadata for the media content file from a
metadata provider via the populated request data structure,
wherein, in response to receiving the populated request data
structure, the metadata provider searches for the requested
metadata in a database based on the received plurality of
metadata elements and identifies relevant metadata from the
search results;

1
Throughout this Decision, we refer to the Final Office Action (FOA)
mailed June 27, 2008; Appeal Brief (App. Br.) filed Apr. 27, 2009;
Examiner’s Answer (Ans.) mailed Aug. 28, 2009; and the original
Specification (Spec.) filed July 18, 2003.
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receiving a return data structure from the metadata
provider, said return data structure storing a return type
identifier defining the type for the computer storage medium,
the request identifier, identified relevant metadata
corresponding to the requested metadata, and a delay time
interval; and
postponing additional requests for metadata until after
the delay time interval has elapsed.

B. Independent claim 43 is representative of another aspect of the
invention and is reproduced below (emphasis added to contested
limitations):
43. A computer storage medium having stored thereon a data
structure representing a request for metadata, said data structure
for transmission by a first computing device to a second
computing device to request metadata for media content, said
data structure comprising:
a request type identifier defining a type for a destination
computer storage medium storing the media content, said
media content being one song from a plurality of songs
associated with an album;
a request identifier; and
one or more metadata elements stored with the media
content, wherein, in response to the receipt of the data
structure, the second computing device returns metadata for
each of the plurality of songs associated with the album.

C. Independent claim 51 is representative of another aspect of the
invention and is reproduced below (emphasis added to contested
limitations):
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51. A computer storage medium having stored thereon a data
structure representing a namespace for identifying media
content, said data structure comprising:
a first field storing a content identifier value, said first
field having a label of WMContentID, said content identifier
value being a GUID value representing a performance of a
particular work as it relates to a collection, said performance
being embodied in the media content;
a second field storing a collection identifier value, said
second field having a label of WMCollectionID, said collection
identifier value being a GUID value representing a single
physical medium of the collection wherein the physical medium
represented by the WMCollectionID includes the performance
represented by the WMContentID; and
a third field storing a group identifier value, said third
field having a label of WMCollectionGroupID, said group
identifier value being a GUID value representing a plurality
physical medium of the collection, wherein the single physical
medium represented by the WMCollectionID is one of the
plurality of physical medium of the collection associated with
the WMCollectionGroupID and said first, second, and third
fields represent increasing levels of granularity for
characterizing the media content.
Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Meyer US 2001/0031066 A1 Oct. 18, 2001
Berkun US 2002/0103920 A1 Aug. 1, 2002
Srivastava US 6,549,922 B1 Apr. 15, 2003
Ramey US 2004/0059795 A1 Mar. 25, 2004
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Rejections on Appeal
2,

3

A. The Examiner has rejected claims 1, 2, 5-7, 9-20, 22, 29, 30,
33-38, 40-43, 45-47, 50, 51, 64, 65, and 67 under 35 U.S.C. § 103(a) as
being unpatentable over Meyer and Srivastava in view of Berkun (Ans. 3-
17).
B. The Examiner has rejected claims 53-54 under 35 U.S.C.
§ 103(a) as being unpatentable over Meyer, Srivastava, and Berkun in view
of Ramey (Ans. 17-18).
GROUPING OF CLAIMS
Based upon the Appellants’ arguments over the rejections, we select
representative independent claim 1 to decide this appeal for claims 1, 2, 5-7,
9-20, 22, 29, 30, 33-38, 40-42, 47, 50, and 51 (App. Br. 10-14);
representative independent claim 43 to decide this appeal for claims 43, 45,

2
We note that various matters directed to specification and drawing
objections are addressed in Appellants’ Brief (App. Br. 19-21), but these
issues are petitionable and not subject to appeal, and are not further
addressed by this Decision except to also note that the Examiner indicated in
the Answer (Ans. 2) that the Amendment After Final Rejection filed Sep. 29,
2008 has been entered.
3
We point out that the Examiner omitted dependent claim 40 from the
statement of the rejection in both the Final Office Action and the Examiner’s
Answer, but that the Examiner explicitly addressed claim 40 at page 19 of
the rejection from which Appellants appeal and at page 16 of the Answer.
Appellants have also addressed the rejection of claim 40 in their “Status of
Claims,” “Grounds of Rejection . . .,” and “Conclusions” sections of the
Appeal Brief (App. Br. 2, 9, and 22, respectively). Therefore, the
Examiner’s omission is harmless error.
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46, 64, 65, and 67 (App. Br. 14-17); and representative dependent claim 51
to decide this appeal for claims 51, 53, and 54. (App. Br. 17-19).
We have only considered those arguments raised by Appellants in the
Briefs. Arguments Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived.
ISSUES AND ANALYSIS
1. 35 U.S.C. § 103(a): Claims 1, 2, 5-7, 9-20, 22, 29, 30, 33-38, 40-42,
47, 50, and 51
4

Appellants’ Contentions
Appellants contend that the Examiner has failed to establish that the
combination of Meyer and Srivastava in view of Berkun renders claims 1, 2,
5-7, 9-20, 22, 29, 30, 33-38, 40-42, 47, 50, and 51 unpatentable under 35
U.S.C. § 103(a) (App. Br. 12-14).
More specifically, Appellants contend that the cited art, particularly
Berkun, fails to disclose, teach or suggest the steps of “receiving a return
data structure from the metadata provider, said return data structure storing a
. . . delay time interval; and postponing additional requests for metadata until
after the delay time interval has elapsed,” as recited in independent claim 1.
(App. Br. 12).

4
Although not separately argued, and in the event that further prosecution
should ensue, we point out that dependent claim 22 is a hybrid article of
manufacture claim that relies on method claim 1. However, claim 22 fails to
specify a further limitation of the subject matter of claim 1 to which it refers
because it is completely outside the scope of claim 1. Pfizer, Inc. v.
Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006). In addition, we
point out potential deficiencies under the requirements of 35 U.S.C. § 112.
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Further in this regard, Appellants contend that Berkun merely teaches
a system where a spider is used to locate media URLs that are passed to an
extraction queue and in which each item in the queue is assigned a
processing time and a priority because, in an embodiment of Berkun, “each
queue entry is given a processing time of now and the same default
priority.” (App. Br. 12). Appellants also contend that Berkun teaches that,
if a media file and metadata links are invalid or inaccessible, the same object
is re-queued and assigned a later time and priority. (App. Br. 12, citing
Berkun at ¶ [0041]).
In addition, Appellants contend Berkun teaches that re-queuing occurs
when a media file and metadata links are invalid or inaccessible but, in
contrast, claim 1 recites “receiving a return data structure from the metadata
provider, said return data structure storing . . . a delay time interval,” i.e.,
Berkun does not teach or suggest storing this delay time interval (or back off
interval) in a return data structure. (App. Br. 13).
Finally, Appellants contend that the delay time interval of claim 1 is
not equivalent to Berkun’s processing of requests one at a time as asserted
by the Examiner because claim 1 “recites postponing additional requests
for metadata until after the delay time interval has elapsed.” (App. Br.
13).
Issue 1
Appellants’ arguments present us with the issue: Did the Examiner
err in finding that the cited art teaches all the limitations of claim 1,
particularly “receiving a return data structure from the metadata provider,
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said return data structure storing a . . . delay time interval; and postponing
additional requests for metadata until after the delay time interval has
elapsed,” as recited in claim 1?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claims 1, 2, 5-7, 9-20, 22, 29, 30, 33-38, 40-42,
47, 50, and 51. We adopt as our own (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken and (2) the
reasons and rebuttals set forth by the Examiner in the Examiner’s Answer
(Ans. 18-19) in response to Appellants’ Arguments (App. Br. 12-14). We
concur with the conclusions reached by the Examiner. However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
In particular, we concur with the Examiner’s finding that the cited art
teaches or suggests “receiving a return data structure from the metadata
provider, said return data structure storing a . . . delay time interval; and
postponing additional requests for metadata until after the delay time
interval has elapsed,” as recited in representative claim 1.
We agree with the Examiner and find that the phrase “delay time
interval has elapsed” (Ans. 18) merely indicates a time interval of any
duration has elapsed which, under the broadest reasonable interpretation
standard, is consistent with Appellants’ description and contentions in the
Appeal Brief. (App. Br. 13-14). In further support of the Examiner’s
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position, we agree with the Examiner that Berkun teaches these limitations.
(Ans. 18-19, citing Berkun at ¶¶ [0030], [0038], and [0039] and Fig. 4).
During prosecution:
[T]he PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise
that may be afforded by the written description contained in the
applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Accordingly, we sustain the Examiner’s rejection of claim 1, as well
as claims 2, 5-7, 9-20, 22, 29, 30, 33-38, 40-42, 47, 50, and 51 falling
therewith.
2. 35 U.S.C. § 103(a): Claims 43, 45, 46, 64, 65, and 67
Appellants’ Contentions
Appellants contend that the Examiner has failed to establish that the
combination of Meyer and Srivastava in view of Berkun renders claims 43,
45, 46, 64, 65, and 67 unpatentable under 35 U.S.C. § 103(a) (App. Br. 14-
17).
More specifically, Appellants contend that the cited art, Berkun in
particular, fails to disclose, teach or suggest that:
[T]he data structure includes a request type identifier defining a
type for a destination computer storage medium storing the
media content, a request identifier, and one or more metadata
elements stored with the media content. In this instance, the
media content is one song from a plurality of songs associated
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with an album. In response to the receipt of the data structure,
the second computing device returns metadata for each of the
plurality of songs associated with the album.
App. Br. 14-15.
In addition, Appellants contend that Berkun teaches that media files
and related metadata are searched for and retrieved by reading, extracting,
enhancing, and grouping metadata describing the contents for files and, upon
finding a media file, metadata associated with that file is extracted and
enhanced. Appellants also assert that Berkun teaches that, “if metadata
associated with a song comprises the fields of Composer, Title,
Musician, Album Name, and Music Genre, but is missing the date the
song was copyrighted, the copyright date is added to the extracted
metadata.” (App. Br. 15, citing Berkun at ¶¶ [0030] – [0032]).
Appellants further contend that, with respect to the Examiner’s
finding that Srivastava teaches returning metadata for each of the plurality of
songs associated with an album when metadata for a single song from the
album is requested, Srivastava describes mapping the metadata from XML
documents into a corresponding schema used by a database for storing,
indexing, searching, and managing media and its metadata. (App. Br. 15,
citing Srivastava at col. 8, ll. 37-52). “With respect to the table shown in
column 8 of the Srivastava reference, which lists a possible predefined set of
media notations (e.g. metadata), the cited art explains not all media fields
will provide values for every attribute in the predefined set.” (App. Br.
15, citing Srivastava at col. 6, ll. 22-26 and col. 7, ll. 27-30).
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Finally, Appellants contend that the cited art does not teach or
suggest:
[A] request type identifier defining a type for a destination computer
storage medium storing the media content, said media content being
one song from a plurality of songs associated with an album . . .
wherein, in response to the receipt of the data structure, the second
computing device returns metadata for each of the plurality of songs
associated with the album,
as recited in claim 43. (App. Br. 16).
Issue 2
Appellants’ arguments present us with the issue: Did the Examiner
err in finding that the cited art teaches or suggests:
[A] request type identifier defining a type for a destination
computer storage medium storing the media content, said media
content being one song from a plurality of songs associated with an
album . . . wherein, in response to the receipt of the data structure, the
second computing device returns metadata for each of the plurality of
songs associated with the album
as recited in independent claim 43?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claims 43, 45, 46, 64, 65, and 67. We adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons and rebuttals set forth by
the Examiner in the Examiner’s Answer (Ans. 7-8, 19) in response to
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Appellants’ Arguments (App. Br. 14-17). We concur with the conclusions
reached by the Examiner. However, we highlight and address specific
findings and arguments regarding claim 43 for emphasis as follows.
In particular, we concur with the Examiner’s finding that the cited art
teaches or suggests:
a request type identifier defining a type for a destination
computer storage medium storing the media content, said media
content being one song from a plurality of songs associated with an
album . . . wherein, in response to the receipt of the data structure, the
second computing device returns metadata for each of the plurality of
songs associated with the album
as recited in representative claim 43.
We also agree with the Examiner that Berkun’s teaching of
associating metadata with a song (Ans. 19, citing Berkun at ¶¶ [0030] and
[0032]) meets the above-identified limitation at issue. In addition, we
concur with the Examiner that Srivastava teaches a similar concept in the
predefined annotation table where the number of tracks on the CD and
starting time of first and second tracks are disclosed. (Ans. 19, citing
Srivastava at col. 8).
We also point out that claim 43 is directed to a “data structure
comprising,” but the clause “wherein, in response to the receipt of the data
structure, the second computing device returns metadata for each of the
plurality of songs associated with the album,” describes an operation that
happens later, but is unrelated to the claimed data structure, i.e., the wherein
clause is not directed to the data structure, but instead to future potential use
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of the data. As such, this limitation need not be given patentable weight as it
is merely a statement of intended use.
5

Accordingly, we sustain the Examiner’s rejection of claim 43, as well
as claims 45, 46, 64, 65, and 67 falling therewith.
3. 35 U.S.C. § 103(a): Claims 51, 53, 54
Appellants’ Contentions
Appellants contends that the Examiner has failed to establish that the
combination of Meyer and Srivastava in view of Berkun renders claims 51,
53, and 54 unpatentable under 35 U.S.C. § 103(a) (App. Br. 17-19).
More specifically, Appellants contend that the cited art fails to
disclose, teach or suggest first, second, and third fields wherein “said first,
second, and third fields represent increasing levels of granularity for
characterizing the media content,” as recited in independent claim 51.
(App. Br. 17-19).
Appellants go on to contend that Berkun merely discusses streaming
concepts generally, and the use of a spider for finding a media file
containing a song and then extracting, parsing, and indexing metadata into
several database fields for comparison to a known database. (App. Br. 17-
18, citing Berkun at ¶¶ [0043] – [0044]).

5
Similarly, and although not separately argued, independent claim 47 is
directed to a data structure, and the clause “wherein the second computing
device postpones sending additional requests until after the delay time
interval has elapsed,” is likewise a statement of intended use, which need not
be given patentable weight.
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Appellants further contend that “[t]he recited namespace identifiers of
claim 51 are not merely a design choice . . . [but instead] represent
increasing levels of granularity for classifying the media content.” (App. Br.
18).
Finally, Appellants contend that:
[T]he cited art is silent with respect to this aspect of granularity
[and n]othing in the references teaches or suggests these three fields
[WMContentID, WMCollectionID, and WMCollectionGroupID] of
increasing granularity and, especially, the third field in which
WMCollectionGroupID represents a plurality physical mediums
[sic] of the collection.
(App. Br. 18).
Issue 3
Appellants’ arguments present us with the issue: Did the Examiner
err in finding that the cited art teaches or suggests first, second, and third
fields wherein “said first, second, and third fields represent increasing levels
of granularity for characterizing the media content,” as recited in
independent claim 51?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claims 51, 53, and 54. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons and rebuttals set forth by the
Examiner in the Examiner’s Answer (Ans. 16, 20) in response to Appellants’
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arguments (App. Br. 17-19). We concur with the conclusions reached by the
Examiner. However, we highlight and address specific findings and
arguments regarding claim 51 for emphasis as follows.
In particular, we concur with the Examiner’s finding that the cited art
teaches or suggests first, second, and third fields wherein “said first, second,
and third fields represent increasing levels of granularity for characterizing
the media content,” as recited in representative claim 51.
More particularly, we agree with the Examiner that Srivastava teaches
or suggests the claimed increasing level of granularity of data in the
“Predefined Annotations” table, in which the recited three levels of
granularity are represented by “Media Annotation,” “Audio CD
Annotation,” and “Video Annotation, and further “Text Annotation,”
“Movie Annotation,” and “Audio CD Annotation.” (See Srivastava table at
cols. 5, 6, and 8).
In addition to the Examiner’s findings, we consider the recited first,
second, and third fields contain data which “represent increasing levels of
granularity for characterizing the media content,” as recited in claim 51, and
which we find to be non-functional descriptive material. As such, we note
that this limitation merely describes the data, and does not differentiate the
claimed data from the data in the prior art, and provides no recitation of the
interrelationship between the various data elements.
We need not give patentable weight to descriptive material absent a
new and unobvious functional relationship between the descriptive material
and an underlying structure or process. Nonfunctional descriptive material
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cannot render nonobvious an invention that would have otherwise been
obvious. See In re Ngai, 367 F.3d 1336, 1339, (Fed. Cir. 2004). Cf. In re
Gulack, 703 F.2d 1381, 1386, (Fed. Cir. 1983) (“[T]he critical question is
whether there exists any new and unobvious functional relationship between
the printed matter and the substrate”; when descriptive material is not
functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability); and Cf.
In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994):
The PTO did not establish that the ADOs, within the context of
the entire claims, lack a new and nonobvious functional relationship
with the memory. The ADOs follow a particular sequence that
enables more efficient data processing operations on stored data. The
ADOs facilitate addition, deletion, and modification of information
stored in the memory. In sum, the ADO’s perform a function.
In re Lowry, 32 F.3d at 1583-84. To summarize, if the sole distinction over
the prior art is nonfunctional descriptive matter, then the subject matter is
obvious in view of the prior art.
Accordingly, we sustain the Examiner’s rejection of claim 51. In
addition, since Appellants’ argument for patentability of claims 53 and 54
rely solely upon the patentability of claim 51 (App. Br. 19), we sustain the
rejection of claims 53 and 54.
CONCLUSIONS
1. The Examiner did not err in rejecting claims 1, 2, 5-7, 9-20, 22,
29, 30, 33-38, 40-43, 45-47, 50, 51, 53, 54, 64, 65, and 67 under 35 U.S.C.
§ 103(a).
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2. Claims 1, 2, 5-7, 9-20, 22, 29, 30, 33-38, 40-43, 45-47, 50, 51,
53, 54, 64, 65, and 67 are unpatentable.
DECISION
The decision of the Examiner to reject claims 1, 2, 5-7, 9-20, 22, 29,
30, 33-38, 40-43, 45-47, 50, 51, 53, 54, 64, 65, and 67 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)(1)(iv).
AFFIRMED

ELD