Ex Parte Roberts et al

Patent Trial and Appeal Board

Aug 28, 2017

11474991 (P.T.A.B. Aug. 28, 2017)

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.
11/474,991 06/27/2006 Brian Roberts 05-1014 1693
32127 7590 08/30/2017
VERIZON LEGAL DEPARTMENT
PATENT MANAGEMENT GROUP
1320 N. COURTHOUSE ROAD
9THFLOOR
ARLINGTON, VA 22201-2525
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
patents @ VERIZON.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN ROBERTS, HEATH STALLINGS,
and DON RELYEA
Appeal 2017-001557
Application 11/474,9911
Technology Center 2400
Before ERIC B. CHEN, BRUCE R. WINSOR, and MICHAEL J. ENGLE,
Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—30. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).
Technology
The application relates to “providing a user with the ability to record,
share, or otherwise access a snippet” of media content such as a “television
program, . . . video, movie, song, [or] photograph.” Spec. 26.
1 According to Appellants, the real party in interest is Verizon
Communications Inc. App. Br. 3.
Appeal 2017-001557
Application 11/474,991
Illustrative Claim
Claim 1 is reproduced below with certain limitations emphasized.
1. A system comprising:
a network entity;
a first media content processing subsystem communicatively
coupled to said network entity and configured to
receive media content from said network entity,
record a snippet of said received media content in
response to a request from a user, and
share said snippet with another media content
processing subsystem,
wherein said network entity is configured to
select additional media content based at least in part
on a user log maintained separately from said snippet
and that indicates a user preference corresponding to
said snippet and
augment, based on the user preference, first and
second portions of said snippet with additional media
content that can be experienced by a user; and
a second media content processing subsystem configured to
receive said augmented snippet, and
provide said snippet and said additional media content
to a user.
Rejections
Claims 1—13, 26, 29, and 30 stand rejected under 35 U.S.C. § 103(a)
as obvious over Lanza et al. (US 7,735,101 B2; June 8, 2010) and Logan et
al. (US 2003/0093790 Al; May 15, 2003). Final Act. 3-6.
Claims 14—25, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as
obvious over Lanza, Logan, and Gleissner (US 2004/0152054 Al; Aug. 5,
2004). Final Act. 6—9.
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Appeal 2017-001557
Application 11/474,991
ISSUE
Did the Examiner err in finding Lanza teaches or suggests “record a
snippet,” as recited in claim 1?
ANALYSIS
Claim 1 recites a subsystem configured to “record a snippet.”
Independent claims 14 and 20 recite commensurate limitations. The
Examiner relies on Lanza for teaching this limitation. Final Act. 3.
Figure 8 of Lanza is reproduced below.
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Appeal 2017-001557
Application 11/474,991
“FIG. 8 illustrates an example of the user interface 200 for linking a
portion of a video to a web page,” including “video selection start/stop
points 801, compact/full mode preferences 803, a code window 805, and a
mini-video panel 807.” Lanza 8:3—13. A user “who would like to place all
or a portion of a video 113 on a web page 123 can easily do so by choosing a
video 113 and then selecting the ‘SHARE VIDEO’ button.” Id. at 8:4—8.
The user then selects various options such as the “start/stop points” and
which “tracks” should be “enabled.” Id. at 8:14—31. “Once these . . . steps
are complete, programming code is generated based on the user’s selected
preferences and known parameters (such as, the filename of the video 113).
The programming code is displayed in the code window [805].” Id. at 8:32—
35. Finally, “the user 155 copies the programming code and uses it on their
web page 123 to link to the portion of the video 113.” Id. at 8:35—37.
Appellants argue that “placing ‘code’ on another site” or “to copy and
paste a ‘programming code’” does not teach or suggest to “record a snippet.”
App. Br. 11. We agree with Appellants. Claim 1 separately recites to
“record a snippet” and “share said snippet.” Thus, recording and sharing are
separate actions. Although Lanza teaches sharing a subset of a video, the
Examiner has not sufficiently shown that Lanza teaches or suggests to
“record” a snippet. For example, The American Heritage Dictionary of the
English Language (5th ed. 2011) defines “record” as “[t]o set down for
preservation in writing or other permanent form” and more specifically “[t]o
render (sound or images) into permanent form for reproduction, as by
mechanical or digital means.” Furthermore, although Lanza’s snippets may
have been recorded, in the sense that the entire video from which the snippet
is taken was necessarily recorded at some time, the cited passages of Lanza
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Appeal 2017-001557
Application 11/474,991
do not teach that such recording is done “in response to a request from a
user,” as recited in claim 1. Here, the Examiner has not shown that Lanza
involves creating any permanent reproduction of the snippet (e.g., creating a
new file with the selected subset of the video) rather than, for example,
merely linking to the original video with some additional parameters. The
latter may involve “sharing,” but we are not persuaded it involves
“recording.” Nor has the Examiner sufficiently explained why copying
programming code (rather than copying the media content itself) would have
rendered “recording” obvious to a person of ordinary skill in the art.2
Accordingly, we are constrained to reverse the Examiner’s rejection
of independent claims 1,14, and 20, and their dependent claims 2—13, 15—
19, and 21-30.
REJECTIONS UNDER 37 C.F.R. § 41.50(b)
We make the following new ground of rejection within our authority
under 37 C.F.R. § 41.50(b). Claims 1—13, 19, 21, 22, 24—27, 29, and 30 are
rejected under 35U.S.C. § 112, second paragraph, as indefinite for lack of
clarity in the antecedent basis of claim terms preceded by “said.”
Claims 1,9, 12, 19, 21, 22, 24, 26, and 27 recite “said additional
media content,” but the independent claims from which those claims
ultimately depend (1, 14, and 20) introduce “additional media content” twice
2 We note the Specification defines the term “snippet” broadly to mean “any
portion” of a media content instance “up to and including approximately the
entire length.” Spec. 126. The term “media content instance” also is
defined broadly to include, for example, any “photograph.” Id. Thus, in the
event of further prosecution, the Examiner may wish to consider whether
copying an entire photograph and subsequently augmenting that file (e.g.,
with filters or tagging of individuals in the photo, based on the user’s
preferences) falls within the scope of the claims as presently written.
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Appeal 2017-001557
Application 11/474,991
and it is unclear which instance of “additional media content” is referred to
by “said additional media content.” Dependent claims 2—13, 26, 29, and 30
also are rejected as indefinite based on their dependence from claim 1.
Claims 3 and 4 depend from claim 2, which depends from claim 1.
Claim 1 recites a first media content processing subsystem configured to
“record a snippet” and claim 2 recites “a snippet. . . recorded by a second
media content processing subsystem.” Thus, when claim 3 recites “said
recording of said snippet” and claim 4 recites “said snippet,” it is unclear
whether these refer to the recording and snippet in claim 1 or claim 2.
Claim 25 depends from claim 20 and recites “said access device.”
Claim 20, however, recites “a first access device” or “a second access
device,” and it is unclear which of these “said access device” refers to.
Claim 26 depends from claim 1. Claim 1 recites to “augment. . . first
and second portions of said snippet with additional media content.” Claim
26, however, separately recites “said snippet is augmented with additional
media content in response to said access request.” Thus, when claim 26
subsequently recites “said augmented snippet” and “said additional media
content,” it is unclear whether the augmented snippet and additional media
content being referred to are from claim 1 or claim 26.
DECISION
For the reasons above, we reverse the Examiner’s decision rejecting
claims 1—30 as obvious.
In a new ground of rejection, we reject claims 1—13, 19, 21, 22, 24—
27, 29, and 30 under 35 U.S.C. § 112, second paragraph.
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Appeal 2017-001557
Application 11/474,991
TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, 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 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
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time for taking 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).
REVERSED: 37 C.F.R, $ 41.50(b)
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