Ex Parte Swenson et al

Patent Trial and Appeal Board

Jun 28, 2016

12892914 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/892,914 09/28/2010
62224 7590 06/30/2016
ADELILLP
11859 Wilshire Blvd., Suite 408
LOS ANGELES, CA 90025
FIRST NAMED INVENTOR
Anne Swenson
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.
APLE.P0210 3136
EXAMINER
NGUYEN, PHUONG H
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
mail@adelillp.com
PatentOffice@adelillp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNE SWENSON, GIOVANNI AGNOLI,
ENRIQUE RODRIGUEZ, CHARLES LYONS, BRIAN MEANEY,
DA VE CERF, and MIKE STERN
Appeal2015-001830
Application 12/892,914
Technology Center 2100
Before KRISTEN L. DROESCH, NORMAN H. BEAMER, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-25, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Apple, Inc. as the real party in interest. App. Br. 2.
Appeal2015-001830
Application 12/892,914
THE INVENTION
The claimed invention is directed to a media editing application for
auditioning different types of media clips. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A non-transitory machine readable medium storing a
program which when executed by at least one processing unit
creates a composite media presentation from a plurality of media
clips, the program comprising sets of instructions for:
creating an audition set as a set of two or more media clips
associated with a particular location in a composite display area,
the composite display area for receiving placement of media
clips to specify a description of the composite media
presentation;
adding to the audition set at least one audio clip and at least
one video clip to associate the audio and video clips with the
particular location as candidates for placement in the composite
display area at the particular location, wherein only one of the
audio and video clips is the only committed media clip for the
audition set; and
modifying the audition set, in response to input, such that
a different one of the audio and video clips is the only committed
media clip in the audition set to include in the composite media
presentation.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Ohanian us 6,161,115 Dec. 12, 2000
Zhao US 2004/0001079 Al Jan. 1, 2004
Benschoter US 2010/0049699 Al Feb.25,2010
Williams US 7,788,592 B2 Aug. 31, 2010
Oron US 2011/0161348 Al June 30, 2011 (filed
Feb. 12, 2010)
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REJECTIONS
Claims 1---6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ohanian in view of Zhao. Final Act. 2-6.
Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ohanian in view of Zhao and Benschoter. Final Act. 6-8.
Claims 10-18 and 20-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ohanian in view of Zhao and Oron. Final Act. 8-
15.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ohanian in view of Zhao, Oron, and Benschoter. Final
Act. 15.
Claims 23-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ohanian in view of Zhao, Oron, and Williams. Final Act.
16-17.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants. We do not
consider arguments that Appellants could have made but chose not to make
in the Briefs so that any such arguments are deemed to be waived. See 37
C.F.R. § 41.37(c)(l)(vii); see also Ex parte Frye, 94 USPQ2d 1072, 1075
(BP AI 2010) (precedential) ("Filing a Board appeal does not, unto itself,
entitle an appellant to de novo review of all aspects of a rejection. If an
appellant fails to present arguments on a particular issue ... the Board will
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not, as a general matter, unilaterally review those uncontested aspects of the
rejection."). We disagree with Appellants' arguments regarding claims 1-
10, 12, and 17-25.
Claims 1--8 and 22-24
Adding Step
Appellants argue Zhao does not teach or suggest an audition set
"associated with a particular location in a composite display area" as recited
in claim 1. App. Br. 8; Reply Br. 3--4. Instead, Appellants argue the Zhao
"media pane 612 functions to store media files for dragging into the rows of
timeline pane 300." App. Br. 8. Because media pane 612 and the media
clips stored therein are not associated with a particular location in the
timeline, it is not a claimed audition set. Id.
The Examiner finds Ohanian teaches an audition set containing two or
more media clips that are associated with a particular location in a composite
display area. Final Act. 2 (citing Ohanian Fig. 2, 3 :34--42). The Examiner
further finds Ohanian teaches adding video clips to the audition set. Final
Act. 3 (citing Ohanian Fig. 2; 4:42-53). The Examiner also finds that Zhao
teaches at least one audio clip and at least one video clip. Final Act. 3
(citing Zhao Fig. 6, i-f 27). The Examiner concludes it would have been
obvious for a person of ordinary skill in the art to modify Ohanian to include
adding an audio clip along with the video clip in order to "provide[]
enhanced visualization for media presentation." Final Act. 3.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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The test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Because Appellants' argument is directed to the
references individually-such as whether Zhao teaches an audition set-and
not the combined teachings of the references as applied by the Examiner, we
are not persuaded by Appellants' argument that the Examiner erred.
Creating Step
Appellants also argue the Examiner erred in finding Ohanian teaches
an audition set of "two or more media clips," as recited in claim 1. App. Br.
9; Reply Br. 4. According to Appellants, Ohanian merely discloses
"multiple versions of a single [media] clip." Reply Br. 4; see also App. Br.
9. Although the word different is not used in the claim, "the claim as a
whole makes it clear that the media clips of an audition set would be
different." Reply Br. 4.
The Examiner finds Ohanian teaches an audition set including
alternate scenes 80, 82, 84, 86, and 88. Final Act. 2 (citing Ohanian Fig. 2,
3:34--42); Ans. 4 (same). The Examiner also explains that although
Appellants argue the audition set requires different media clips, claim 1 does
not specify that media clips need to be different nor how and what
differences would be required. Ans. 4--5.
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
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Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, we will not
read limitations from the specification into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). Accordingly, we agree with the Examiner
that claim 1 is broad enough to encompass the alternate scenes---each of
which is a "different version of the video track"-taught in Ohanian. See
Ohanian 3:34--59. Because Appellants' arguments are not commensurate
with the scope of the claims, they are unpersuasive. See In re Self, 671 F.2d
1344, 1348 (CCP A 1982).
Combination of Ohanian and Zhao
Appellants also argue that the combination of Ohanian and Zhao do
not render the claim unpatentable because the combination does not teach or
suggest the limitations recited in claim 1. According to Appellants:
The cited portions of Ohanian describe a visualization for
different alternative effects on a single media clip on a timeline.
The cited portions of Zhao describe a media pane 612 \vith
different types of media for adding to a presentation. As
described above, such a media pane does not describe an audition
set with an audio clip and a video clip that can be associated with
a particular location in a composite display area. Accordingly, a
combination of the references might suggest a media pane for
adding different types of clips to the timeline, in which different
alternate effects could be added for each clip.
App. Br. 9; see also Reply Br. 5.
The Examiner finds that combinations of the teachings of the two
references "as a whole teach the claimed subject matter." Ans. 5. The
Examiner also concludes that the two references are in the same field of
endeavor and it would have been obvious to a person of ordinary skill in the
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art to modify the teachings of Ohanian "to include different types of media
clips such as audio and video clips, because to do so provided enhanced
visualization for media presentation." Id.
Appellants' arguments are premised on the bodily incorporation of
Zhao into Ohanian. However, "[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference." Keller, 642 F.2d at 425. Instead, the
relevant issue is "what the combined teachings of the references would have
suggested to those of ordinary skill in the art." Id. "Combining the
teachings of references does not involve an ability to combine their specific
structures." In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Accordingly,
we are not persuaded by Appellants' bodily incorporation argument that the
Examiner erred.
For the reasons discussed above, we sustain the Examiner's rejection
of claim 1, along with the rejections of claims 6 and 22, which are argued on
the same grounds (compare App. Br. 8-9, with, App. Br. 9-11 and 18-19),
and claims 2-5, 7, 8, 23, and 24, which are not argued separately.
Claim 9
Appellants argue the Examiner erred in finding a motivation to
modify Ohanian in light of Benschoter:
Appellants respectfully submit that it is not obvious to combine
removal of video clips from a playlist with a media editing
application that provides alternate versions of a video scene.
Appellants respectfully submit that there is no reasonable
motivation to combine deleting video clips that are queued in a
playlist with a video clip that provides alternative versions.
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Ohanian and Zhao do not suggest a motivation to remove media
clips from an audition set and Benschoter does not suggest a
motivation to combine with any media editing application.
App. Br. 12.
Appellants further argue that even if there was such a motivation, the
combination does not teach the limitation recited in claim 9:
Id.
The Office Action cites Ohanian for the existence of committed
(and not committed) media clips, while Benschoter teaches the
automatic removal of media clips. However, even such a
combination would not teach removing the clips that are not
committed. Ohanian does not teach removing all of the
noncommitted clips, and Benschoter does not teach any kind of
selective deletion (i.e., all but one). Appellants respectfully
submit that a combination of the references would, at best, teach
the deletion of the entire audition set, but would not disclose or
suggest removing the media clips in an audition set that are not
committed media clips.
The Examiner finds Benschoter teaches automatically deleting media
clips in a media set and then automatically deleting the media set. Final Act.
8 (citing Benschoter i-f 40, Fig. 7); Ans. 7. The Examiner concludes that a
person of ordinary skill in the art would have been motivated to modify
Ohanian and Zhao with Benschoter' s teaching of deletion "in order to allow
users option to delete audition set when no longer needed." Final Act. 8.
We are not persuaded that the Examiner erred. A conclusion of
obviousness must be supported by findings and analysis establishing a
reason to combine the known elements in the manner required in the claim at
issue. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
analysis, however, "need not seek out precise teachings directed to the
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specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." Id. The Examiner provided an "articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). Accordingly, we are not
persuaded that the Examiner erred in finding a motivation to combine the
teachings of the references.
We are also not persuaded by Appellants' argument that the Examiner
erred in finding the combination teaches the limitation recited in claim 9.
We disagree with Appellants' argument that "Benschoter does not teach any
kind of selective deletion." App. Br. 12. Instead, Benschoter teaches the
deletion of selected video clips: "choosing 'Remove' will delete the selected
video clip from playlist 750, and 'Clear Playlist' will remove all selected
video clips from play list 7 50." Benschoter i-f 40 (emphasis in original
omitted, emphasis added). Accordingly, we agree with the Examiner that a
person of ordinary skill in the art would apply Benschoter' s broad teaching
of selective deletion to Ohanian and select non-committed audition media
clips as recited in claim 9.
Moreover, we disagree with Appellants that claim 9 requires selective
deletion of only some of the audition set. Although claim 9 recited that non-
committed media clips must be deleted, it does not require that committed
media clips must be saved in the audition set. Instead, we find the broadest
reasonable interpretation of claim 9 includes the deletion of all media clips
in the audition set. Because Appellants' arguments are not commensurate
with the scope of the claims, they are unpersuasive. See Self, 671 F .2d at
1348.
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For the reasons discussed above, we sustain the Examiner's rejection
of claim 9, along with the rejection of claim 19, which is argued on the same
grounds (compare App. Br. 11-12, with App. Br. 19-20).
Claims 10 and 17
Appellants' arguments concerning the "creating an audition set"
limitation and the combination of Ohanian and Zhao are substantially same
as the arguments made in claim 1. Compare App. Br. 8-9, with App. Br.
12-14. For the same reasons discussed above with regard to claim 1, we are
not persuaded by Appellants' arguments that the Examiner erred.
Appellants also argue the Examiner erred in finding the prior art
teaches an audition set with several different types of media clips as recited
in claim 10. Instead, Appellants argue the Zhao "media pane 612 functions
to store media files for dragging into the rows of timeline pane 300." App.
Br. 13. Because media pane 612 and the media clips stored therein are
associated with locations in the different rows of the time line, it is not a
claimed audition set with different types of media clips. Id.
The Examiner finds Ohanian teaches an auditioning tool for creating
an audition set with a plurality of media clips. Final Act. 9 (citing Ohanian
Figs. 1 and 2, 4:42-56). The Examiner also finds that Zhao teaches a
plurality of media clips comprising different types of media clips. Final Act.
9 (citing Zhao Fig. 6, i-f 27). The Examiner further finds that Oron teaches a
plurality of media clips that include at least one composite media clip made
from at least two different types of media clips. Final Act. 10 (citing Oron
i-f 38). The Examiner concludes it would have been obvious for a person of
ordinary skill in the art to modify Ohanian to include different types of
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media clips from Zhao to provide enhanced visualization for media
presentation and composite media clips from Oron to provide quicker video
editing. Final Act. 10.
As discussed above with regards to claim 1, nonobviousness cannot
be established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. Merck, 800 F .2d at
1097; Keller, 642 F.2d at 425. Because Appellants' argument is directed to
the references individually and not the combined teachings of the references
as applied by the Examiner, we are not persuaded by Appellants' argument
that the Examiner erred.
Accordingly, we sustain the Examiner's rejection of claim 10, along
with the rejection of claim 1 7, which is argued on the same grounds
Claims 11 and 13
Claim 11 depends from claim 10 and recites that "the composite
media clip comprises a plurality of concatenated media clips placed on a
single track." App. Br. 24. According to Appellants, because the Examiner
states that Ohanian does not teach the composite media clip of claim 10, the
Examiner erred in finding Ohanian teaches "where the composite media clip
includes several concatenated media clips placed on a single track." App.
Br. 14. Appellants also argue that the Examiner erred in mapping the
limitations to the prior art by ignoring the mapping made to intendent claim
1 O; that is the Examiner points to what has already been mapped to the
composite media presentation in claim 10 for the audition set in claim 11:
In addition, the Answer errs in citing the timeline of Ohanian as
the composite media clip in claim 11 in the Answer (see, pg. 8).
The Office Action cites the committed media clip 7 6 and the
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plurality of candidate clips 80-88 as the audition set in claim 10
(see, Office Action, pg. 9) on which claim 11 depends. By citing
(1) the timeline of Ohanian as the composite media clip and (2)
the candidate clips as the audition set, the Answer misinterprets
the elements of claim 11. Claim 11, in combination with claim
10, describes an audition set on a timeline, where the audition set
includes a composite media clip made up of a sequence of
different media clips. However, the combination of the
interpretations offered by the Office Action and the Answer
describe a composite media clip (the timeline) that includes an
audition set (the candidate clips 80-88), which misinterprets the
way in which the elements of claim 11 are related.
Reply Br. 7-8.
The Examiner acknowledged a typographical error in the Final Action
regarding what limitation was missing from Ohanian. Ans. 8. Instead, the
Examiner finds Ohanian "teaches a composite media clip that comprises a
sequence of at least two different of media clips." Ans. 8 (citing Ohanian
Fig. 2, 3:22-35).
Claim I 0---and dependent claim I I-recite two different composite
media files. First, the claim recites a "preview display area for displaying a
composite media presentation that the media editing application creates by
compositing a first plurality of media clips." App. Br. 24. Second, the claim
recites an audition set "that are candidates for inclusion at one location in the
composite media presentation" in which the audition set includes "at least
one composite media clip." Id. In the rejection of claim 11, the Examiner
maps the same composite media clip for both limitation. Accordingly,
Appellants have persuaded us the Examiner erred.
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Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 11, along with the rejection of claim 13,
which is argued on substantially the same grounds. 2
Claims 14-16
Claim 14 depends from claim 10 and recites that "the sequence of at
least two different media clips [that comprise at least one composite media
clip] comprises two different audio clips." App. Br. 24. According to
Appellants, because the Examiner states that Zhao does not teach the
composite media clip of claim 10, the Examiner erred in finding Zhao
teaches "where the composite media clip includes two different audio clips."
App. Br. 15. Appellants also argue none of the media clips in media pane
612 are part of any composite media clip. Id. Appellants further argue that
because claim 14 depends from claim 10, the claim requires that the two
different audio clips of claim 14 must be a composite media clip. Reply Br.
11.
The Examiner acknowledged a typographical error in the Final Action
regarding what limitation was missing from Zhao. Ans. 10. Instead, the
Examiner finds Zhao teaches two different media clips that are two different
audio clips. Id. (citing Zhao Fig. 6, i-f 27). The Examiner further concludes
that claim 14 does not require a composite media clip because there is
nothing in the language of dependent claim 14 that requires it. Ans. 10.
Appellants have persuaded us the Examiner erred in construing claim
14. Claim 14 recites that the "the sequence of at least two different media
2 Because we agree with at least one of the dispositive arguments advanced
by Appellants, we need not reach the merits of Appellants' other arguments.
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clips comprises two different audio clips." App. Br. 24 (emphasis added).
Claim 10, from which claim 14 depends, further recites that the audition set
includes "at least one composite media clip that comprises a sequence of at
least two different media clips." Id. (emphasis added). Because claim 10
recites that the sequence refers to a part of the composite media clip, we
agree with Appellants that claim 14 requires a sequence of two different
audio clips that are part of a composite media clip. We further agree with
Appellants that the cited sections of Zhao do not teach a composite media
clip comprising at least two different audio clips. Appellants have
persuaded us the Examiner erred.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 14, along with the rejections of claim 15 and
16, which are argued on substantially the same grounds. 3
Claim 25
Appellants argue Williams teaches a display window that displays
selected objects from an object list. App. Br. 21. According to Appellants,
Williams does not teach displaying a portion of the composite presentation
both before and after the location of an audition set. Id.; see also Reply Br.
15.
The Examiner finds Williams teaches "previewing each of the media
clips comprises previewing a portion of the composite presentation that
precedes the one location in the composite presentation and previewing a
3 Because we agree with at least one of the dispositive arguments advanced
by Appellants, we need not reach the merits of Appellants' other arguments.
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portion of the composite presentation that follows the one location in the
composite presentation." Final Act. 17 (citing Williams Fig. 24, 14: 14--25).
The Examiner further finds Williams teaches that a "user can select a
number of frames from the media list 2440 to play as a preview in display
window 2450." Ans. 13. The Examiner concludes that a person of ordinary
skill in the art would have modified the teachings of Ohanian, Zhao, and
Oron (as applied in the parent claims) with the preview taught in Williams
"in order to allow users to preview the editing clips before adding to the
composite display area." Final Act. 17.
We are not persuaded by Appellants' arguments that the Examiner
erred. The skilled artisan is "a person of ordinary creativity, not an
automaton." KSR, 550 U.S. at 420-21. Appellants do not present adequate
evidence that using Williams previewer at the location of the audition set-a
specific location taught by Ohanian-would have been "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418-19). Accordingly, we agree with the Examiner that a person of
ordinary skill in the art would have been motivated to use the Williams
previewer-which allows previewing before and after a specific location-
and applied it to the location of the audition set as taught by Ohanian.
Accordingly, we sustain the Examiners' rejection of claim 25.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1-10, 12, and 17-25.
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For the above reasons, we reverse the Examiner's rejection of claims
11 and 13-16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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