Nitin Suri et al.Download PDFPatent Trials and Appeals BoardAug 30, 201914303466 - (D) (P.T.A.B. Aug. 30, 2019) Copy Citation 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. 14/303,466 06/12/2014 Nitin Suri 037834.00603/341779- US-NP 6885 141746 7590 08/30/2019 ARENT FOX LLP& Microsoft Technology Licensing, LLC 1717 K Street, NW WASHINGTON, DC 20006-5344 EXAMINER HASAN, SYED Y ART UNIT PAPER NUMBER 2484 NOTIFICATION DATE DELIVERY MODE 08/30/2019 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): USDocket@microsoft.com patentdocket@arentfox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NITIN SURI, TZONG-JHY WANG, OMKAR MEHENDALE, ANDREW S. IVORY, and WILLIAM D. SPROULE Appeal 2018-001260 Application 14/303,466 Technology Center 2400 Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and DAVID J. CUTITTA II, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–10 and 12–21. Final Act. 1. Claim 11 is canceled. App. Br. 56. We have jurisdiction under 35 U.S.C. § 6(b). We heard oral arguments on August 15, 2019. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Microsoft Technology Licensing, LLC. Appeal Br. 3. Appeal 2018-001260 Application 14/303,466 2 We REVERSE.2 CLAIMED SUBJECT MATTER The claims are directed to rule-based video importance analysis. Spec., Title. Claim 1, reproduced below with a disputed limitation emphasized in italics, is illustrative of the claimed subject matter: 1. One or more computer storage media storing computer- executable instructions that are executable to cause one or more processors to perform acts comprising: decoding a video file to obtain at least one of a video frame or audio data associated with the video frame; analyzing one or more high-level features of the at least one of the video frame or the audio data associated with the video frame based on at least one of a local rule or a global rule to obtain one or more feature scores for the video frame, the one or more high-level features including at least one feature that is related to a movement or a position of a human face in the video frame; combining the one or more feature scores of the video frame to derive a frame importance score for the video frame; and segmenting the video file into video sections of different section importance values based at least on the frame importance scores of the video frame and other frame importance scores of additional video frames of the video file. 2 We refer to the Specification, filed June 12, 2014 (“Spec.”); Final Office Action, mailed June 16, 2016 (“Final Act.”); Appeal Brief, filed February 14, 2017 (“App. Br.”); Examiner’s Answer, mailed August 15, 2017 and Subsequent Answer, mailed Sept. 8, 2017 (“Ans.”); and Reply Brief, filed November 8, 2017 (“Reply Br.”). Appeal 2018-001260 Application 14/303,466 3 REFERENCES3 The prior art relied upon by the Examiner is: Kim et al. US 2007/0169613 Al July 26, 2007 Delgo et al. US 2010/0070523 A1 Mar. 18, 2010 Tong et al. US 2011/0150275 A1 June 23, 2011 Gleicher et al. US 2012/0307155 Al Dec. 6, 2012 Ma et al. US 2013/0179112 A1 July 11, 2013 Curtiss US 2015/0094622 Al Apr. 2, 2015 REJECTIONS Claims 1–9 and 21 stand rejected under 35 U.S.C. § 101 as not falling within one of the four statutory categories of invention because the broadest reasonable interpretation of the instant claims in light of the Specification encompasses transitory signals. Final Act. 9; Ans. 3–4. Claims 10 and 12–16 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Final Act. 9–10; Ans. 4. Claims 1–10, 12, and 14–20 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Delgo. Final Act. 10–15; Ans. 4–10. Claim 13 stands rejected under 35 U.S.C. § 103 as being unpatentable over Delgo, Tong, Kim, and Ma. Final Act. 17–19; Ans. 10–13. Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable over Delgo, Gleicher, and Curtiss. Final Act. 20–22; Ans. 13–15. 3 All citations herein to these references are by reference to the first named inventor only. Appeal 2018-001260 Application 14/303,466 4 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments the Examiner has erred. We agree with Appellant’s conclusions as to the rejections of the claims. 35 U.S.C. § 101 Transitory Media The Examiner rejects claims 1–9 and 21 “under 35 U.S.C. [§] 101 as not falling within one of the four statutory categories of invention because the broadest reasonable interpretation of the instant claims in light of the specification encompasses transitory signals.” Final Act. 9. According to the Examiner, the listing of computer storage media appearing at paragraph 23 of the Specification does not limit the term to non-transitory media. Id. at 9. Appellant responds, directing attention to the remainder of paragraph 23 which defines computer-readable media as including two types of media, (i) communication media including “data in a modulated data signal, such as a carrier wave, or other transmission mechanism” and (ii) “computer storage media [which] does not include communication media.” App. Br. 14 (citing Spec. ¶ 23) (emphasis omitted). Accordingly, Appellant argues “in light of the [S]pecification, ‘computer storage media’ cannot be interpreted as including transitory signals as the Examiner alleges.” Id. at 15. We agree with Appellant. “The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly Appeal 2018-001260 Application 14/303,466 5 when the specification is silent.” U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); see also Ex parte Mewherter, 107 USPQ2d 1857, 1859 (PTAB 2013). Here the Specification is not silent. Although not specifically including “transitory media” within the examples of communication media and, therefore, excluding the same from computer storage media, Appellant includes within communication media specific examples of transitory media such as carrier waves and transmission mechanism. These examples of transitory media as excluded from the claimed computer storage media are sufficient to disclaim all transitory media from the scope of claim 1. Accordingly, we do not sustain the rejection of claims 1–9 and 21 under 35 U.S.C. § 101. Judicial Exception The Examiner rejects claims 10 and 12–16 under 35 U.S.C. § 101 as “directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.” Ans. 4. We agree with Appellant the rejection is improper for the reasons discussed below. Section 101 defines patentable subject matter: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. The U.S. Supreme Court, however, has “long held that this provision contains an important implicit exception” that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law, Appeal 2018-001260 Application 14/303,466 6 based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). To determine patentable subject matter, we undertake a two part test. “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts” of “laws of nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). “The inquiry often is whether the claims are directed to ‘a specific means or method’ for improving technology or whether they are simply directed to an abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017). A court must be cognizant that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas” (Mayo, 566 U.S. at 71), and “describing the claims at . . . a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). If the claims are directed to an abstract idea or other ineligible concept, then we continue to the second step and “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). The Court describes the second step as a search for “an ‘inventive concept’– i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more Appeal 2018-001260 Application 14/303,466 7 than a patent upon the [ineligible concept] itself.’” Id. at 217–218 (quoting Mayo, 566 U.S. at 72–73). The Office recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, we look to whether the claim recites (1) a judicial exception, such as a law of nature or any of the following groupings of abstract ideas: (a) mathematical concepts, such as mathematical formulas; (b) certain methods of organizing human activity, such as a fundamental economic practice; or (c) mental processes, such as an observation or evaluation performed in the human mind; (2) any additional limitations that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)); and (3) any additional limitations beyond the judicial exception that, alone or in combination, were not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)). See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a judicial exception, then it is eligible under § 101, and no further analysis is necessary. Id. at 54. Similarly, under the Guidance, “if the claim as a whole integrates the recited judicial exception into a practical application of that exception,” then no further analysis is necessary. Id. at 53, 54. Appeal 2018-001260 Application 14/303,466 8 USPTO Step 2A, Prong 1 The Examiner determines [Claim 10] recites the steps of decoding a video file to obtain a video frame, analyzing features of a video frame to obtain feature scores of the video frame, combining feature scores to obtain importance scores for video frame, calculating a video importance value for the video file, segmenting the video file into sections of frame importance scores and ranking the video file into based on video importance values. This alludes to a mathematical procedure for converting one form of numerical representation to another. The courts have found that mathematical relationships fall within the judicial exceptions, often labelled as “abstract ideas.” Since the mathematical operation of the various calculations are recited in the claim, the claim is “directed to” a judicial exception. Final Act. 3–4; see also Ans. 4. Appellant contends the Examiner errs by failing to “‘identify the judicial exception by ‘referring to what is recited . . . in the claim [or] explain why it is considered an exception.’” App. Br. 23 (emphasis omitted), citing the May 4, 2016 Memorandum to the Patent Examining Corps on “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection,” p. 2 (available at https://www.uspto.gov/sites/default/files/documents/ieg-may- 2016-memo.pdf). Appellant argues: In the pending Office Action, even if the claims include a mathematical procedure, the Examiner has not identified a particular mathematical procedure that the claims recite and merely alleges that the recitations of the claims “allude[] to a mathematical procedure for converting one form of numerical representation to another.” Office Action, p. 4. The Examiner goes on to state that “[s]ince the mathematical operation of the various calculations are recited in the claim, the claim is ‘directed to’ a judicial exception.” Id. The Examiner’s statement is overly Appeal 2018-001260 Application 14/303,466 9 broad and is unsupported by precedent. Computing devices fundamentally operate by converting numerical representations (i.e., by changing states of a component of the device such as binary values stored in memory, where the binary values represent numbers). According to the Examiner’s stated logic all computer-implemented methods would be unpatentable since ultimately every computer operation can be reduced to “converting numerical representations.” No precedent proscribes this fundamental computing activity, nor are the claims simply directed to “converting one form of numerical representation to another.” App. Br. 34 (emphasis omitted). Appellant’s arguments are persuasive of reversible Examiner error. Mathematical concepts include mathematical relationships, formulas or equations, and calculations. See MPEP 2106.04(a)(2)(IV). The Examiner fails to explain and we are unable to ascertain why the steps of claim 10 directly recite any such mathematical concepts. Although certain of the individual steps may be accomplished using arithmetic or other mathematical concepts, the steps do not recite the mathematical concept itself, i.e., a formula, equation, or a mathematical calculation. Although claim 10 recites “combining the one or more feature scores,” the Examiner fails to explain why this step is a mathematical calculation. Furthermore, we are unable to identify any recitation of certain methods of organizing human behavior or mental processes. See Guidance. Therefore, we disagree with the Examiner’s determination that claim 10 recites an abstract idea. See Ans. 24. Appeal 2018-001260 Application 14/303,466 10 USPTO Step 2A, Prong 2 Furthermore, even if one or more steps of claim 1 had been determined to recite a mathematical concept considered to be an abstract idea, the Examiner fails to persuasively refute Appellant’s contention that “the claims are directed to statutory subject matter, because the claims are directed to a technological improvement.” App. Br. 25. In particular, Appellant argues “[t]he problem that the claims solve arises because computing devices are not capable of identifying and displaying content segments that a user might find important and because of deficiencies in existing methods for representing captured data.” Id. at 27. According to Appellant “[t]he claimed subject matter remedies these deficiencies and equips a computing device to ‘perform [a] rule-based analysis of a video file to rank sections of the video file based on importance.’” Id. at 27. Appellant further argues: Without the claimed techniques, a computing device would not be able to differentiate between one video as being more important than another. Configuring a computing device with rules that enable the computing device to analyze and rank video files by importance is an improvement to computer technology. Therefore, the claims are patent eligible subject matter according to Enfish and/or McRO[4]. Id. at 29. The Examiner responds, finding: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the computer as recited is a generic computer component that performs functions (i.e., decoding, analyzing, combining, calculating, segmenting and ranking a video file). These are generic computer functions that are well-understood, routine, 4 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal 2018-001260 Application 14/303,466 11 and conventional activities previously known to the industry. Even the step of obtaining a feature score is also a mathematical calculation. Ans. 24–25. The Examiner’s response is not persuasive because there is no requirement under Prong 2 of our analysis that the computer functions be unconventional or even that the operation of the computer must be improved. Instead, Prong 2 of our analysis considers whether the claim limitations impose meaningful limits that integrate the abstract idea into a practical application by, for example, implementing an improvement to a technology. The Examiner fails to explain why the steps of claim 10 do not improve video processing, i.e., a technology, by using rules to score and segment a video file into sections of different importance. In the absence of persuasive evidence or explanation, we determine the claim limitations impose meaningful limits that integrate the abstract idea into a practical application. For this additional reason, claim 10 is not directed to an abstract idea and we do not sustain the rejection of claims 10 and 12–16 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. 35 U.S.C. § 102(a)(1) The Examiner finds Delgo discloses the limitations of claim 1. Final Act. 4–5. According to the Examiner, Delgo’s selection of thumbnails from important frames of segments or scenes and determination of segment or scene importance based on its content discloses the disputed limitation of segmenting the video file into video sections . . . based . . . on the frame Appeal 2018-001260 Application 14/303,466 12 importance scores of the video frame and other frame importance scores of additional video frames of the video file. Id. at 5. Appellant contends Delgo describes, “[a] method [of] analyz[ing] visual content of media . . . for collecting together visually-similar appearances in their constituent images.” Delgo, Abstract. Delgo discusses, “segmenting sequences of . . . frames into scenes based on continuity of objects appearing in frames of the sequences of frames,” “segmenting sequences of the frames into scenes based on continuity of objects appearing in frames of the sequences of frames,” and “segmenting sequences of the frames into scenes based [on] the object appearing in frames of the sequences of frames.” Id., paras. [0023]–[0025]. Delgo does not disclose, “segmenting [a] video file . . . based at least on [a] frame importance score,” as claim 1 recites. App. Br. 37 (emphasis omitted). The Examiner responds, finding each representative frame is given an importance score at step 104 of Delgo’s method and a representative frame of a tube (i.e., a continuum of tracked objects) is given a higher score based on the length of the tube objects detected in the tube. Ans. 26–27. Appellant responds, rather than segmenting video based on feature scores within each frame, “Delgo discloses segmenting the video file into ‘shots’ or scenes based on the continuity of objects appearing in frames of the sequence of frames.” Reply Br. 4 citing Delgo, paras. 23–25. We agree the Examiner erred in rejecting the claims as anticipated under 35 U.S.C. § 102(a)(1). In order to anticipate under 35 U.S.C. § 102, a prior art reference must not only disclose all elements of the claim within the four corners of the document (whether expressly or inherently), but must also disclose those elements “arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Although Delgo discloses selecting thumbnails based on importance of a scene or segment Appeal 2018-001260 Application 14/303,466 13 and determining segment or scene importance based on content, the Examiner has not identified any disclosure of forming the segments based on such importance criteria. Thus, the Examiner has not provided sufficient evidence the prior art discloses the disputed limitation of segmenting the video file into video sections . . . based . . . on the frame importance scores of the video frame and other frame importance scores of additional video frames of the video file. Because we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. Accordingly, we do not sustain the rejection of independent claim 1 or, for the same reasons, the rejection of independent claims 10 and 17 under 35 U.S.C. § 102(a)(1) as being anticipated by Delgo or the rejection of dependent claims 2–9, 12, 14–16, and 18–20, which stand with their respective base claims. 35 U.S.C. § 103 Because we find the Examiner’s rejection under 35 U.S.C. § 102(a)(1) to be deficient and, thereby, improper, we additionally do not sustain the rejection of claims 13 and 21 under 35 U.S.C. § 103 as the Examiner’s applications of the Tong, Kim, Ma, Gleicher, and Curtiss references fails to cure the deficiency in the base rejection addressed above. Appeal 2018-001260 Application 14/303,466 14 DECISION We reverse the Examiner’s decision to reject claims 1–10, 12–16, and 21 under 35 U.S.C. § 101. We reverse the Examiner’s decision to reject claims 1–10, 12, and 14– 20 under 35 U.S.C. § 102(a)(1). We reverse the Examiner’s decision to reject claims 13 and 21 under 35 U.S.C. § 103. REVERSED Copy with citationCopy as parenthetical citation