Perlegos, Nick John.

Patent Trials and Appeals Board

Dec 12, 2019

13803852 - (D) (P.T.A.B. Dec. 12, 2019)

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.
13/803,852 03/14/2013 Nick John Perlegos PIX10889P00020US 1080
32116 7590 12/12/2019
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
EXAMINER
SOMERS, MARC S
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
12/12/2019 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):
docketing@woodphillips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NICK JOHN PERLEGOS
____________________

Appeal 2019-000203
Application 13/803,852
Technology Center 2100
____________________

Before ERIC S. FRAHM, JENNIFER S. BISK, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the
Examiner’s rejection of claims 1–26. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed March 14, 2013; “Final Act.” for the Final Office Action,
mailed January 26, 2018; “Appeal Br.” for Appellant’s Appeal Brief, filed
June 25, 2018; “Ans.” for Examiner’s Answer, mailed August 7, 2018; and
“Reply Br.” for Appellant’s Reply Brief, filed October 8, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
Pixured, Inc. Appeal Br. 1.
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BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to
associating digital data with digital media. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer implemented method using real time
interaction among associations of digital data relating to digital
media, the method comprising:
[(1)] providing a database system storing a plurality of
digital media items and a plurality of digital data objects, the
digital media items being identified with associations to select
ones of the digital data objects;
[(2)] a user device accessing digital media items in
operative collaboration with the database system;
[(3)] a user utilizing the user device to identify one or
more features of the accessed digital media items to determine
stored digital data objects associated with the identified features
of the accessed digital media items, whereby the user inputs
additional information to create digital data objects comprising
text documents, images or video for association with a point of
interest of the accessed digital media items and stores the
created digital data objects in the database;
[(4)] analyzing and grouping together associations
between stored digital media items and digital data objects;
[(5)] the database system retrieving associated digital
media items and digital data objects and transmitting the
associated digital media items and digital data objects to the
user device based on the user’s media interactions; and
[(6)] the user device generating user display buttons
and/or features relating to digital data objects for the associated
digital media items.
Appeal Br. 22 (Claims App.) (emphases and numbering added).
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THE REJECTIONS
R1. Claims 1–26 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2–8.
R2. Claims 9–11, 13, 21–23, and 25 stand rejected under pre-AIA
35 U.S.C. § 103(a) as obvious over Zuckerberg (US 2008/0091723 A1,
published April 17, 2008) and Chen (US 6,912,726 B1, published June 28,
2005). Final Act. 8–11.
R3. Claim 26 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Zuckerberg, Chen, and Sarkar (US 8,645,199 B1, published
February 4, 2014). Final Act. 11–12.
R4. Claims 1–5, 7, 8, 12, 14–20, and 24 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as obvious over Zuckerberg, Chen, and Petrou (US
2011/0038512 A1, published February 17, 2011). Final Act. 12–18.
R5. Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Zuckerberg, Chen, Petrou, and Reddy (US 2013/0061296 A1,
published March 7, 2013). Final Act. 19.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
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We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Patent Eligibility Rejection R1 of Claims 1–26
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized implicit exceptions to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “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 Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
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The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the § 101 rejection.
The Judicial Exception—Abstract Idea
The Examiner determined the claims are directed to the abstract idea
of “accessing digital media items, input[ting] additional information [to]
create digital data objects/items to associate with the digital media items,
and retriev[ing]/transmit[ting] the digital media items and digital data
objects and display[ing] buttons/features for the digital data objects, as
explained below.” Final Act. 2–3. The Examiner identified individual
limitations as corresponding to the concepts of “collecting data,” “displaying
data,” and/or “manipulating data.” Id. at 4; see id. at 3 (“These steps
describe the concept of collecting, displaying, and manipulating data, which
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corresponds to concepts identified as abstract by the courts . . . .” (citing
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed.
Cir. 2017)); Intellectual Ventures, 850 F.3d at 1340 (“We conclude that the
patent claims are, at their core, directed to the abstract idea of collecting,
displaying, and manipulating data.”).
For the reasons explained below, we agree with the Examiner that the
claims recite an abstract idea.
Claim 1 recites: (1) “providing” a database that stores media items
and associated data objects, (2) “accessing” media items, (3) a user
“utilizing” a device “to identify one or more features” of the media items
and “to determine” stored data objects associated with the features, where
the user “inputs” information to create data objects and “stores” them in the
database, (4) “analyzing and grouping” associations between media items
and data objects, (5) “retrieving” media items and data objects and
“transmitting” them to the device, and (6) “generating” a display.
Under the broadest reasonable interpretation, the limitations of
claim 1 recite a mental process. Specifically, limitation (3) recites
“identify[ing] one or more features” of the media items “to determine”
objects associated with identified features, and limitation (4) recites
“analyzing and grouping” associations between media items and objects.
These limitations recite a mental process. For example, these steps could be
performed by a person who, looking at a picture, identifies the individuals
pictured, determines their names, and associates the picture with the named
individuals. The association could be recorded either in a person’s mind, or
could be written with pencil on a piece of paper. See also Final Act. 20
(providing example of “user going through a photo album and adding a
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sticky note” providing additional information). Moreover, “providing” a
database that stores media items and associated data objects (limitation (1)),
“accessing” media items (limitation (2)), and “retrieving” media items and
data objects and “transmitting” them to a user device (limitation (5)), under
their broadest reasonable interpretation, recite steps that, but for the
recitation of the “database system,” “digital” items and data, and a “user
device,” could be performed in the mind or with pencil and paper.
When claimed in a manner similar to the claims here, storing,
retrieving, and analyzing information using conventional techniques has
been determined to be an abstract idea. In re TLI Commc'ns LLC Patent
Litig., 823 F.3d 607, 612–13 (Fed. Cir. 2016) (holding claims directed to
classifying and storing digital images to be ineligible); see Intellectual
Ventures, 850 F.3d at 1339–40 (holding claims directed to collecting and
organizing data to be ineligible); see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372, 1376 (Fed. Cir. 2011) (holding that a
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under 35 U.S.C. § 101). Also, more recently,
our reviewing court has also concluded that some acts of collecting,
analyzing, manipulating, and displaying data are patent ineligible. Univ. of
Fl. Research Found., Inc. v. General Electric Co., 916 F.3d 1363, 1367
(Fed. Cir. 2019) (citing Intellectual Ventures, 850 F.3d at 1340; Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016)).
Accordingly, we conclude the claims recite a mental process, and
thus, an abstract idea. Revised Guidance, 84 Fed. Reg. at 52–53 (listing
“[m]ental processes--concepts performed in the human mind (including an
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observation, evaluation, judgment, opinion)” each as one of the “enumerated
groupings of abstract ideas”).
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites “a database system” (limitation (1)), “digital”
items and data (limitation (1)), and “a user device” (limitation (2)). Appeal
Br. 22 (Claims App.). Considering claim 1 as a whole, these additional
elements do not apply or use the abstract idea in a meaningful way. See
Alice, 573 U.S. at 223 (“Stating an abstract idea while adding the words
‘apply it with a computer’” is not sufficient to confer patent eligibility.).
The Examiner found that these elements are “recited at a high level of
generality” and “provide conventional computer functions that do not add
meaningful limits to practicing the abstract idea.” Final Act. 3. We agree.
The Specification does not describe these components in detail, indicating
that they are generic. See, e.g., Spec. 7:21 (“digital media (photo, albums,
video)”), 14:20–23 (“The digital media 901 more generally may include
photos, photo albums, video and the like.”), 14:28–30 (“The user device 101
includes computer terminals, wireless telephone, wired telephone, personal
digital assistant, digital capturing device, Internet enable tablets, and/or
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similar.”), 14:31–15:5 (“Digital data 102 is media that refers to features
and/or information added to, linked to, manipulated and shared . . . .”),
17:23–25 (generically describing “server databases” for storing data); see
also id. at 69:1–4 (“[D]atabases may include index database, score database,
unique ID, image data, digital media database, while also including various
database and/or database that handle more real-time events . . . .”).
In addition, claim 1 recites the additional element of “generating” a
display (limitation (6)). Considering claim 1 as a whole, this additional
element does not apply or use the abstract idea in a meaningful way such
that the claim as a whole is more than a drafting effort designed to
monopolize the exception. See Bilski v. Kappos, 561 U.S. 593, 610–11
(2010) (“[T]he prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant postsolution
activity.’” (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)); see
also, e.g., Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1370 (Fed. Cir. 2015) (claims ineligible despite limitations directed to
display of information to user).
Appellant’s arguments have not persuaded us that claim 1 is directed
to a patent-eligible concept. For example, we do not agree that the invention
recited in claim 1 “is inextricably tied to computer technology.” Appeal
Br. 8. Appellant’s argument is premised on the involvement of generic
computer components. See id. (arguing the claim cannot be equated with
“‘sticky notes’ in a photo album” because the claims require a “database
system” that analyzes and groups associations between “digital media items”
and “digital data objects” and “transmit[s] the same for display”). However,
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the inclusion of these generic components does not transform the abstract
idea into a patent eligible application. See Univ. of Fl. Research, 916 F.3d at
1367 (“This is a quintessential ‘do it on a computer’ patent . . . . We have
held such claims are directed to abstract ideas.”).
Finally, Appellant submits this case is analogous to McRO and Core
Wireless. Appeal Br. 8–9. (citing Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018); McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). We disagree. The claims
in those cases were patent eligible because they recited a particular, “specific
improvement” to technology. Core Wireless, 880 F.3d at 1362–63; see
McRO, 837 F.3d at 1314 (“We therefore look to whether the claims in these
patents focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea . . . .”). The claims in this case, however, lack commensurate
specificity. See Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1328 (Fed. Cir. 2017) (“The claims are not focused on how usage of
the XML tags alters the database in a way that leads to an improvement in
the technology of computer databases, as in Enfish.”); cf. Data Engine
Techs. LLC v. Google LLC, 906 F.3d 999, 1009 (Fed. Cir. 2018) (holding
representative claim eligible because it “recites a ‘specific’ and ‘particular’
manner of navigating a three-dimensional spreadsheet that improves the
efficient functioning of computers”).
Accordingly, even in combination with all the other recited elements,
the addition of these additional elements do not integrate the abstract idea
into a practical application because it does not impose any meaningful limits
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on practicing the abstract idea. For these reasons, we determine that claim 1
does not integrate the recited abstract idea into a practical application.
Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements (or
combination of elements) simply append WURC activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. Revised Guidance, 84 Fed. Reg. at 56. The Examiner’s finding
that an additional element (or combination of elements) is WURC activity
must be supported with a factual determination. Id. at n.36 (citing MPEP §
2106.05(d), as modified by the Berkheimer Memorandum3). Whether
additional elements are WURC activity is a question of fact. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether
something is well-understood, routine, and conventional to a skilled artisan .
. . is a factual determination.”).
On the record before us, Appellant has not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field, whether those
limitations are considered individually or as an ordered combination (see
MPEP § 2106.05(d)). The Examiner found that the “database system” and
“user device” components “provide conventional computer functions that do

3 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
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not add meaningful limits to practicing the abstract idea.” Final Act. 3.
Appellant neither responds to the Examiner’s finding nor points to a
particular claimed element or combination of elements that does not qualify
as WURC, and Appellant’s Specification demonstrates the WURC nature of
these elements by indicating that they can be implemented with generic
devices. E.g., Spec. 14:28–30, 17:23–25, 69:1–4.
Conclusions
For these reasons, we conclude that claim 1, considered as a whole,
does not include an inventive concept. Therefore, we sustain the Examiner’s
§ 101 rejection of independent claim 1. Because Appellant argues claims 1–
8 and 14–20 as a group (Appeal Br. 10), claims 2–8 and 14–20 fall with
claim 1. Accordingly, we also sustain the Examiner’s § 101 rejection of
independent claim 14 and dependent claims 2–8 and 15–20.
Appellant includes a separate section to present arguments regarding
claim 9, but this section simply repeats some of the arguments presented for
claim 1. Compare Appeal Br. 11 (arguing claim 9) with id. at 7–10 (arguing
claim 1). As explained above, we are not persuaded by Appellant’s
arguments. For the same reasons articulated above, we conclude that claim
9 recites an abstract idea that is not integrated into a practical application and
does not include an inventive concept. Accordingly, we sustain the
Examiner’s § 101 rejection of independent claim 9. Because Appellant
argues claims 9–13 and 21–26 as a group (Appeal Br. 11), claims 10–13 and
21–26 fall with claim 9. Accordingly, we also sustain the Examiner’s § 101
rejection of independent claim 21 and dependent claims 10–13 and 22–26.
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Obviousness Rejection R4 of Claims 1–5, 7, 8, and 14–204
Claims 1–5, 7, 8, and 14–20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Zuckerberg, Chen, and Petrou. Final Act. 12–18.
Appellant argues claims 1–5, 7, 8, and 14–20 together as a group. See
Appeal Br. 11–15. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), we limit our discussion to independent claim 1.
Independent claim 14 and dependent claims 2–5, 7, 8, and 15–20 stand or
fall with claim 1.
Appellant argues that the references fail to teach or suggest the
limitations of claim 1. Appeal Br. 12–15. Appellant does not clearly
identify the limitations of claim 1 that are allegedly missing from the
references’ disclosures (id.; see also Reply Br. 3–5), but Appellant argues
that Zuckerberg fails to teach various concepts (Appeal Br. 13) and submits
that neither Chen nor Petrou remedy Zuckerberg’s deficiencies (id. at 13,
15). In addition, Appellant argues “Zuckerberg is not properly combined
with Chen.” Id. at 14.
We determine the Examiner’s findings and rationale support a prima
facie case of obviousness as to claim 1. See Final Act. 13–16. Further, as
explained in more detail below, Appellant fails to identify error in the
Examiner’s findings, and Appellant does not persuade us that the
Zuckerberg and Chen combination is improper. Accordingly, we are not

4 The Examiner also rejects dependent claims 12 and 24 as obvious over
Zuckerberg, Chen, and Petrou. These claims depend from independent
claims 9 and 21, respectively, which were rejected as obvious over
Zuckerberg and Chen (i.e., rejection R2). Final Act. 8–11. As a result, we
address the rejection of dependent claims 12 and 24, infra, following the
discussion of the obviousness rejection of independent claims 9 and 21.
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persuaded of Examiner error. See In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992) (If an examiner presents a prima facie case, “the burden of
coming forward with evidence or argument shifts to the applicant.”). We
address each of Appellant’s arguments in turn.
First, Appellant contends that “Zuckerberg does not teach adding text,
images or videos to a point of interest of accessed digital media.” Appeal
Br. 13.5 We disagree with Appellant’s interpretation of the reference. As
the Examiner found, Zuckerberg discloses associating a tag, which includes
text, with a particular region of an image. Zuckerberg ¶ 5 (teaching a user
may input “appropriate text” to tag a particular region of a digital image);
Final Act. 14 (Zuckerberg’s “system allows a user to add information to a
point of interest in the digital media”) (citing Zuckerberg ¶¶ 5, 43, 44); see
also Appeal Br. 12–13 (acknowledging “a region in an image can be
‘tagged’ with associated text”).6
Appellant responds to this finding by arguing that Zuckerberg only
tags “a single region for one association,” requiring a “new process” for each
new tag (Appeal Br. 13); however, Appellant identifies (and we perceive) no
portion of the claim to the contrary. Relatedly, Appellant asserts that
Zuckerberg’s process would “make[] it impossible to tag video.” Appeal Br.

5 Claim 1 recites: “the user inputs additional information to create digital
data objects comprising text documents, images or video for association with
a point of interest of the accessed digital media items.” Appeal Br. 22
(Claims App.).
6 In the Answer, the Examiner notes the inconsistency in Appellant’s
argument—i.e., Appellant argues Zuckerberg does not disclose the
limitation, but acknowledges that Zuckerberg discloses adding text to a
region (i.e., a point of interest). Ans. 8. In the Reply Brief, Appellant fails
to respond or provide any clarification. Reply Br. 3.
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13. However, claim 1 does not require video to be tagged; rather, the claim
requires associating digital data objects—“comprising text documents,
images or video”—with “digital media items” generally. See Appeal Br. 22
(Claims App.) (emphasis added). And, even if the claim did require tagging
of video, this concept is also described by Zuckerberg. Zuckerberg ¶ 44
(cited by Ans. 10). Accordingly, we are not persuaded of Examiner error.
Second, Appellant contends that “Zuckerberg does not teach . . . a
database storing a plurality of digital media items comprising photos and
video.” Appeal Br. 13.7 Again, we disagree with Appellant’s interpretation
of the reference. As the Examiner found, Zuckerberg discloses a media
database storing various digital media items, including both photos and
video. E.g., Zuckerberg ¶¶ 5 (digital media includes images and video), 30
(media database stores digital media and its associated tags); Final Act. 13
(Zuckerberg’s “system utilizes a database . . . [that] stores media including
photos and videos.”); Ans. 8 (citing Zuckerberg ¶¶ 5, 30). Appellant fails to
respond to the Examiner’s finding or explain why Zuckerberg’s media
database fails to teach the claimed “database.” See Reply Br. 3 (concluding,
without explanation, that Zuckerberg fails to teach a “database system”).
Accordingly, this argument also does not persuade us of Examiner error.
Third, Appellant contends Zuckerberg fails to “disclose a database
system identifying associated digital data objects of the stored photos and
videos and grouping photos and videos having associated digital data

7 Claim 1 recites “providing a database system storing a plurality of digital
media items.” Appeal Br. 22 (Claims App.).
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objects together.” Appeal Br. 13 (emphasis added).8 We are not persuaded
by Appellant’s argument because, as the Examiner observed, Appellant’s
argument is not commensurate with the scope of claim 1. See Ans. 9 (“[I]t is
noted that the features upon which applicant relies . . . are not recited in the
rejected claim(s).”). In particular, claim 1 recites: “grouping together
associations between stored digital media items and digital data objects”
(Appeal Br. 22 (Claims App.) (emphasis added) (“the grouping limitation”)),
but it does not require “grouping photos and videos . . . together” when those
photos and videos have associated digital data objects, as Appellant
contends. Appellant responds that this limitation is required when “reading
the claim in its entirety, and not focusing on one specific limitation.” Reply
Br. 4. We are not persuaded. Appellant does not explain why the “entirety”
of the claim includes such a requirement, and we could find no language in
the claim or the Specification that would justify importing it.
Moreover, the Examiner found that the “grouping” limitation, as
recited in claim 1, is taught or suggested by the combination of Zuckerberg
and Chen. Final Act. 15 (citing Zuckerberg ¶ 5; Chen 4:1–12); see Ans. 9–
10 (finding Zuckerberg tags digital media and Chen groups associations of
the digital data objects together for the respective digital media). Appellant
identifies (and we perceive) no error in these findings. See, e.g., Zuckerberg
¶¶ 5 (associating digital image with tag), 42 (displaying an album of images

8 Claim 1 recites “analyzing and grouping together associations between
stored digital media items and digital data objects” and “the database system
retrieving associated digital media items and digital data objects and
transmitting the associated digital media items and digital data objects to the
user device based on the user’s media interactions.” Appeal Br. 22 (Claims
App.).
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and listing the tags associated with those images); Chen 4:1–5 (providing a
separate file, which corresponds to a video file and “identifies hot-links” in
the video file).
Finally, Appellant argues that Zuckerberg and Chen cannot properly
be combined because “Zuckerberg and Chen conflict and function in two
different manners” because Chen creates “a new video file with the stored
hotlink regions” where “Zuckerberg is not storing data in the digital media.”
Appeal Br. 14; see Reply Br. 4–5 (“Appellant’s argument was that Chen
does store data within video and Zuckerberg does not.”). We disagree and
are not persuaded of Examiner error. The Examiner found Chen discloses “a
second file that identifies the hotlinks” (Ans. 11), and we perceive no error
in this finding. Indeed, the cited portion of Chen expressly teaches that this
second file “preferably is separate and distinct from the corresponding video
file.” Chen 4:1–5. Thus, Chen teaches “digital media items” (i.e., the
corresponding video file) are associated with “digital data objects” (i.e., the
second file), as required by claim 1. We are not persuaded that Chen’s
subsequent encoding of these files into a combined file is of any relevance to
the obviousness inquiry. See Appeal Br. 14 (arguing Chen’s subsequent
encoding step distinguishes the reference).
Moreover, Appellant identifies alleged differences between
Zuckerberg, Chen, and the requirements of the claim, but Appellant fails to
persuasively explain the relevance of these differences to the obviousness
inquiry. See Appeal Br. 14. The fact that certain modifications might be
required for a person of skill to integrate the teachings of Zuckerberg and
Chen does not mean that these references are improperly combined or
cannot support an obviousness rejection. MCM Portfolio LLC v. Hewlett-
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Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.” (quoting In
re Keller, 642 F.2d 413, 425 (CCPA 1981)); In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”). Accordingly, we are not persuaded by Appellant’s arguments.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s combination of prior art references or
reliance on that combination to teach or suggest the disputed limitations of
claim 1. We also perceive no error in the Examiner’s resulting legal
conclusion of obviousness. Accordingly, we sustain the Examiner’s
obviousness rejection of independent claim 1, and grouped claims 2–5, 7, 8,
and 15–20, which fall therewith.
Obviousness Rejection R2 of Claims 9–11, 13, 21–23, and 25
Claims 9–11, 13, 21–23, and 25 stand rejected under pre-AIA 35
U.S.C. § 103(a) as obvious over Zuckerberg and Chen. Final Act. 8–11.
Appellant argues claims 9–11, 13, 21–23, and 25 together as a group. See
Appeal Br. 11–15. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), we limit our discussion to independent claim 9.
Independent claims 21 and dependent claims 10, 11, 13, 22, 23, and 25 stand
or fall with claim 9.
For claim 9, Appellant repeats some of the arguments articulated for
independent claim 1. Compare Appeal Br. 16–18 (arguing claim 9), with id.
at 12–15 (arguing claim 1); see also Ans. 15 (reiterating responses presented
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for claim 1); cf. Reply Br. 5 (contending arguments for claim 9 “are not in
fact the same” but failing to identify any material differences).
As discussed above, we are not persuaded by Appellant’s arguments
regarding claim 1. We find these arguments to be similarly unpersuasive for
independent claim 9. Consequently, we are not persuaded of error in the
Examiner’s reliance on the cited prior art combination to teach or suggest
limitations of claim 9, nor do we find error in the Examiner’s resulting legal
conclusion of obviousness. Accordingly, we sustain the Examiner’s
obviousness rejection of independent claim 9, and grouped claims 10, 11,
13, 21–23, and 25.
Obviousness Rejections R3 of Claim 26
The Examiner rejects claim 26 over a combination of Zuckerberg,
Chen, and Sarkar. Final Act. 11–12. Claim 26 depends from independent
claim 21, and Appellant submits that the addition or Sakar does not cure the
deficiencies identified with respect to claim 21 by way of the arguments
made regarding independent claim 9. Appeal Br. 18–19.
As discussed above, we are not persuaded by Appellant’s arguments
regarding claim 9, and consequently, we find Appellant’s arguments do not
show error in the Examiner’s factual findings or the conclusion of
obviousness of claim 26. Accordingly, we sustain the Examiner’s
obviousness rejection of claim 26.
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Obviousness Rejection R4 of Claims 12 and 249
The Examiner rejects claims 12 and 24 over a combination of
Zuckerberg, Chen, and Petrou. Final Act. 12–13. Claim 12 and 24 depend
from independent claims 9 and 21, and Appellant submits that the addition
or Petrou does not cure the deficiencies identified with respect to claim 9.
Appeal Br. 19–20.
As discussed above, we are not persuaded by Appellant’s arguments
regarding claim 9, and consequently, we find Appellant’s arguments do not
show error in the Examiner’s factual findings or the conclusion of
obviousness of claims 12 and 24. Accordingly, we sustain the Examiner’s
obviousness rejection of claims 12 and 24.
Obviousness Rejections R5 of Claim 6
The Examiner rejects claim 6 over a combination of Zuckerberg,
Chen, Petrou, and Reddy. Final Act. 19. Claim 6 depends from independent
claim 1, and Appellant submits that the addition or Reddy does not cure the
deficiencies identified with respect to claim 1. Appeal Br. 15–16.
As discussed above, we are not persuaded by Appellant’s arguments
regarding claim 1, and consequently, we find Appellant’s arguments do not
show error in the Examiner’s factual findings or the conclusion of
obviousness of claim 6. Accordingly, we sustain the Examiner’s
obviousness rejection of claim 6.

9 We address the obviousness rejection R4 of independent claims 1 and 14
and their respective dependent claims, supra.
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CONCLUSIONS
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–26 101 Eligibility 1–26
9–11, 13, 21–
23, 25
103

Zuckerberg, Chen 9–11, 13,
21–23, 25

26 103 Zuckerberg, Chen, Sarkar 26
1–5, 7, 8, 12,
14–20, 24
103

Zuckerberg, Chen, Petrou 1–5, 7, 8, 12,
14–20, 24

6 103

Zuckerberg, Chen, Petrou,
Reddy
6
Overall
Outcome
1–26

TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED