Ex Parte Ryer et al

Patent Trials and Appeals Board

Apr 25, 2019

13283100 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/283, 100
81505
ORACLE
7590
FILING DATE
10/27/2011
04/29/2019
(Oracle formerly d/b/a Sun Microsystems)
8055 East Tufts A venue
Suite 450
Denver, CO 80237
FIRST NAMED INVENTOR
Mat Ryer
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.
ORA150642-US-NP 5113
EXAMINER
TEKLE, DANIEL T
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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):
ptomail@mfblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAT RYER and PHIL JACKSON
Appeal2018-002996
Application 13/283,100
Technology Center 2400
Before JAMES R. HUGHES, JENNIFER S. BISK, JOHN A. EV ANS,
Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection of all
pending claims 1-15, 17-22, and 24--26. Claims 15, 16, and 23 were
canceled. Appeal Br. 16-17 (Claims App'x). We have jurisdiction under 35
U.S.C. § 6(b ).
We reverse.
1 Appellants identify the real party m interest as Oracle International
Corporation. Appeal Br. 2.
Appeal2018-002996
Application 13/2 83,100
BACKGROUND2
The claims are directed to a time-based video metadata system for
playing video clips. Spec. in. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A video display device comprising:
a digital file comprising a video source and time based
metadata, wherein the time-based metadata corresponds to one
or more menu options, and each menu option corresponds to one
or more objects, events, or persons present in a scene of the video
source at one or more timestamps indicated by the time-based
metadata; and
a video playback mechanism that identifies and displays at
least a portion of the video source according to a first-selected
one or more of the menu options, the video playback mechanism
adapted, during playback of the at least a portion of the video
source, to:
display each of the one or more menu options as its
corresponding one or more objects, events, or persons is
displayed;
receive a second selection of one of the displayed menu
options; and
maintain and display a link in a follow-up list, the link
adapted to provide additional information relating to a topic
associated with the second-selected menu option.
Appeal Br. 12 (Claims App'x) (emphasis added).
REJECTION
The Examiner made the following rejection:
2 Throughout this Decision we have considered the Specification filed
October 27, 2011 ("Spec."), the Final Rejection mailed December 2, 2016
("Final Act."), the Appeal Brief filed June 7, 2017 ("Appeal Br."), and the
Examiner's Answer mailed November 16, 2017 ("Ans.").
2
Appeal2018-002996
Application 13/2 83,100
Claims 1-14, 17-22, and 24--26 rejected under pre-AIA 35 U.S.C.
I03(a) as being unpatentable over US 2009/0276817 Al, published
November 5, 2009 ("Colter") in view of US 2010/0293190 Al, published
November 18, 2019 ("Kaiser"). Final Act. 4--16.
ANALYSIS
Claims 1-14, 17-22, and 24-26
The Examiner rejects claims 1-14, 17-22, and 24--26 under 35 U.S.C.
§ 103 as obvious over a combination of Colter and Kaiser. Final Act. 4--16.
Based on Appellants' arguments ( Appeal Br. 6-11) and our discretion under
37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of this rejection on the
basis of representative claim 1.
The Examiner relies on Kaiser as teaching "maintain and display a
link in a follow-up list, the link adapted to provide additional information
relating to a topic associated with the second-selected menu option" ("the
follow-up list limitation"). Id. at 4--5; Ans. 16-17. Specifically, the
Examiner points to Kaiser's description of "topic launch icons 1714,"
explaining that "selecting one of the topic launch icons can result in either
playing a video segment or displaying web content in a browser window
under the video window." Final Act. 5 ( citing Kaiser ,r,r 286-287). The
Examiner also explains that "Kaiser clearly discloses 'a menu option for
further linking while [sic] video data on playback."' Ans. 16 ( citing Kaiser
,r,r 286-287).
Appellants argue that Kaiser does not disclose the recited follow-up
list. Appeal Br. 6-10. According to Appellants, the claimed subject matter
"allow[ s] a view to effectively tag items of interest during playback, in a
manner that allows the user to follow-up at some subsequent time and
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Appeal2018-002996
Application 13/2 83,100
receive additional information by clicking on the links which have been
populated in the follow-up list." Id. at 6 ( citing Spec. Fig. 4D, ,r 17).
Appellants explain that "selecting an annotation that causes a webpage to
immediately open is clearly different than displaying a follow-up list." Id. at
9.
Based on the record before us, we agree with Appellants that the
Examiner has not adequately explained how the cited portions of Kaiser
teach or suggest the follow-up list limitation. The Examiner has not
explained, and it is not clear on its face, how playing a video segment or
displaying web content discloses "sav[ing] and display[ing]" "selected one
or more related content menu items" in the recited follow-up list. Spec.
,r 17; see also Spec ,r 2 ("Additionally, it may be desired to follow-up with
one or more items displayed in the video when the video is complete."). In
fact, despite the Appellants argument specifically directed to the follow-up
list, the Examiner does not explicitly refer to the follow-up list in either the
Final Action or the Answer except in the context of quoting large portions of
claim language. Final Act. 5; Ans. 16-17.
Because this determination resolves the § 103 rejection for all pending
claims, we need not address Appellants' other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on "a single dispositive issue").
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Appeal2018-002996
Application 13/2 83,100
DECISION
We reverse the Examiner's decision to reject claims 1-14, 17-20, and
24--26 under 35 U.S.C. § 103(a).
REVERSED
5