Ex Parte Cudak et al

Patent Trial and Appeal Board

Dec 11, 2018

14053820 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/053,820 10/15/2013 Gary D. Cudak
50594 7590 12/13/2018
Shutts & Bowen LLP
STEVEN M. GREENBERG
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
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.
RPS920130031US1 (165) 1585
EXAMINER
WILLIS, AMANDA LYNN
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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@crgolaw.com
sgreenberg@shutts.com
aschneider@shutts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY D. CUDAK, LYDIA M. DO,
CHRISTOPHER J. HARDEE, and ADAM ROBERTS
Appeal2018-004513
Application 14/053,820 1
Technology Center 2100
Before HUNG H. BUI, JOSEPH P. LENTIVECH, 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, 3-7, 10, and 12-16, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to searching for media files pertaining to a
specified topic, extracting portions related to a selected sub-topic, and
compositing those portions into a single media file. See Spec. ,r 7, claim 1.
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 2.
Appeal2018-004513
Application 14/053,820
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized. In particular, the "tags" limitation at issue under § 103 is
bolded, the "topic" limitations at issue under§ 112(b) are underlined, and
the "sub-topics" limitations at issue under § 112(b) are italicized.
1. A media retrieval data processing system configured for the
automated composition of topical media, the system comprising:
a host computing system comprising at least one computer
with memory and at least one processor;
a media file search engine executing in the memory of the
host computing system and comprising computer program
instructions that when executed in the memory of the host
computing system are operable to search communicatively
linked media stores for media files pertaining to both a specified
topic and also one or more sub-topics of the specified topic; and,
an automated composition module coupled to the media
file search engine, the module comprising program code that
when executed in the memory of the host computing system
receives a topic query in a user interface in a display of the host
computing system, builds a media file list based upon a topic
specified in the topic query, directs the media file search engine
to search the media stores for media files pertaining to the
specified topic, retrieves by way of the media file search engine
one or more media files including portions corresponding to the
specified topic, inspects tags for each of the media files to
identify one or more sub-topics of the specified topic, identifies
one or more sub-topics of the specified topic and displays the
identified sub-topics in a list in the user interface, selects one or
more of the sub-topics in the list, extracts portions of the files
corresponding to the selected one or more sub-topics, composites
the extracted portions corresponding both to the topic of interest
and the identified one or more subtopics into a single media file,
and returns the single media file to a requesting client.
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Application 14/053,820
Examiner's Rejections & References
Claims 1, 3-7, 10, and 12-16 stand rejected under 35 U.S.C. § 101 as
being directed to ineligible subject matter. Final Act. 5.
Claims 1, 3, 4, 7, 10, 12, 13, and 16 stand rejected under 35 U.S.C.
§ 103 (a) as obvious over the combination of Houh et al. (US 2007/0106693
Al; May 10, 2007), Smyros (US 2010/0042588 Al; Feb. 18, 2010), and
Bolls (US 2009/0192985 Al; July 30, 2009). Final Act. 6.
Claims 5, 6, 14, and 15 stand rejected under 35 U.S.C. § I03(a) as
obvious over the combination of Houh, Smyros, Bolls, and Rao et al.
(US 2008/0222106 Al; Sept. 11, 2008). Final Act. 14.
Claims 1, 3-7, 10, and 12-16 stand rejected under 35 U.S.C. § 112(b)
as indefinite. Final Act. 3.
Claims 1, 3-7, 10, and 12-16 stand rejected on the grounds of non-
statutory obviousness-type double patenting over claims 1, 3-7, and 11 of
co-pending Application No. 14/057,259. Final Act. 17.
Related Application & Appeal
Appellants identify co-pending Application No. 14/057,259 as
involving a related appeal (Appeal No. 2018-004516). App. Br. 2.
ISSUES
1. Did the Examiner err in concluding that claim 1 was directed to
the abstract idea of "obtaining and comparing intangible data"?
2. Did the Examiner err in finding Smyros or Bolls teaches or
suggests inspecting "tags" to identify sub-topics, as recited in claim 1?
3. Did the Examiner err in concluding that the multiple recitations
of "topics" and "sub-topics" render independent claims 1 and 10 indefinite?
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ANALYSIS
§ 101
The Supreme Court has "long held that [35 U.S.C. § 101] 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). To determine
patentable subject matter, the Supreme Court has set forth a two part test.
In the first step, "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, 134
S. Ct. 2347, 2355 (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). The Supreme
Court and Federal Circuit have cautioned, however, 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."
Enfzsh, 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 not directed to an abstract idea [or other patent-ineligible
concept], the inquiry ends." McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1312 (Fed. Cir. 2016).
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Here, the Examiner determines that "[t]he claims are directed to the
... abstract idea of obtaining and comparing intangible data." Final Act. 5.
We hold that the Examiner's abstract idea of "obtaining and
comparing intangible data" is too high a level of abstraction. The Federal
Circuit has "previously cautioned that courts must be careful to avoid
oversimplifying the claims by looking at them generally and failing to
account for the specific requirements of the claims. Here, the claims are
limited to rules with specific characteristics." McRO, 837 F.3d at 1313
( quotation and citation omitted). When viewed in entirety, claim 1 is instead
directed to searching media files based on a specified topic, extracting
portions of those files related to a selected sub-topic, and compositing the
extracted portions into a single media file. To accomplish this, claim 1
requires sending a query specifying a topic to a media file search engine,
inspecting the tags of the media file search results for sub-topics, selecting
one or more sub-topics, extracting portions of the files corresponding to the
selected sub-topics, and compositing the extracted portions into a single
media file. These steps set forth concrete actions, not merely a desired end
result. See RecogniCorp, 855 F.3d at 1326 ("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.").
Therefore, the claims are sufficient under the first step of the Alice/ Mayo
framework.
The Examiner further determines that the claimed "rules" were "well
known" and merely "automate a known human activity." Ans. 4. Such an
analysis may be relevant to anticipation, obviousness, or the second step of
the Alice/Mayo framework. For example, the claims may be rendered
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obvious by evidence of prior human activity such as (A) a music lover
making a Valentine's mix tape ( a single collated file) of country songs ( a
topic) about love (a sub-topic) or (B) a researcher gathering books on a
certain topic, photocopying pages relating to the specific sub-topic being
researched, and collating the photocopies into a single pile. See Ans. 5---6
(introducing similar examples). However, for the first step in the
Alice/ Mayo framework, such rules being "well known" does not address
whether the claim as a whole is directed to an abstract idea.
Accordingly, we do not sustain the Examiner's rejection under§ 101
of claim 1, and claims 3-7, 10, and 12-16.
§ 103
Claim 1 recites a module with program code that "inspects tags for
each of the media files to identify one or more sub-topics of the specified
topic." Independent claim 10 recites commensurate limitations.
Appellants argue that the Examiner's reliance on Bolls and Smyros is
misplaced because those references merely teach inspecting the words in a
document, not any tags for the document. See App. Br. 12-14.
The Examiner, however, determines that the broadest reasonable
interpretation of "tags" includes words in a document. Ans. 9-10. The
Examiner explains that "[ t ]he instant specification gives no explicit
definition for the term tag." Id. at 9. According the Examiner:
The claims recite that the tags are 'for each of the media files'
indicating they are part of the media files, and are used 'to
identify one or more sub-topics of the specified topic'. Words in
a document are clearly part of the document, and can be used to
identify one or more sub-topics of the specified topic of the
document. Thus, one of ordinary skill in the art would have
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identified terms within a document as being a reasonable
interpretation of the claimed 'tags'.
Ans. 10.
We agree with Appellants. The Specification discloses that tags are
an example of "meta data." Spec. ,r 20 ("meta data such as tags"). A person
of ordinary skill in the art would have understood that words in a document
were data, not meta data. Thus, without more, words in a document do not
teach or suggest "tags," as claimed.
Accordingly, we do not sustain the Examiner's rejection under§ 103
of claims 1 and 10, and their dependent claims 3-7 and 12-16.
§ 112(b)
A) "topic"
Claim 1 recites a search engine to search for "media files pertaining to
both a specified topic and also one or more sub-topics of the specified
topic." (Emphasis added).
Claim 1 further recites an automated composition module that
(1) "builds a media file list based upon a topic specified in the topic query";
(2) searches "for media files pertaining to the specified topic"; (3) "retrieves
... media files including portions corresponding to the specified topic";
( 4) "inspects tags for each of the media files to identify one or more sub-
topics of the specified topic"; (5) "identifies one or more sub-topics of the
specified topic"; and ( 6) "composites the extracted portions corresponding
both to the topic of interest and the identified one or more subtopics into a
single media file." (Emphasis added).
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Thus, claim 1 recites (A) "a specified topic"; (B) "the specified topic";
(C) "a topic specified in the topic query"; (D) "the specified topic" (four
more times); and (E) "the topic of interest."
The Examiner concludes that "[t]he repeated use of the term topic
renders the meaning of the claim confusing" and "[ t ]he distinction between
the specified topic, the topic query, ... the topic specified in the topic query,
and the specified topic is unclear." Final Act. 3.
We agree with Appellants about the distinction between a "topic" and
a "topic query." "On its face, a topic query is a query about a topic, whereas
a topic alone is not a query." Reply Br. 3.
Nevertheless, we agree with the Examiner with respect to the multiple
introductions of a "topic." In particular, a person of ordinary skill in the art
would not have been reasonably certain as to whether "the specified topic"
refers to "a specified topic" and/or "a topic specified in the topic query."
During prosecution, "if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential); see also Ex parte McAward, Appeal No. 2015-006416, 2017
WL 3669566, at *2 n.3, *4 (PTAB Aug. 25, 2017) (precedential)
(reaffirming Miyazaki). Claim 1 therefore is indefinite.
We do not agree with the Examiner, however, that "'the topic of
interest' lacks antecedent basis since there has not previously been a defined
'topic of interest'." Final Act. 3. The failure to provide explicit antecedent
basis does not necessarily render a claim indefinite if the context provides
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reasonable certainty. Energizer Holdings, Inc. v. Int 'l Trade Comm 'n, 435
F.3d 1366, 1370-71 (Fed. Cir. 2006). Here, in the context of the claims, it
would have been reasonably certain that "the topic of interest" refers to the
same topic as "the specified topic." However, like "the specified topic," a
person of ordinary skill in the art would not have been reasonably certain
whether "the topic of interest" refers to "a specified topic" and/or "a topic
specified in the topic query."
Unlike claim 1, independent claim 10 only introduces "a topic" once.
In particular, claim 10 recites (1) "a topic specified in the topic query";
(2) "the specified topic"; (3) "the topic of interest"; and (4) "the specified
topic" twice more. The reasoning for claim 1 therefore does not apply to
claim 10 with respect to the "topic."
B) "sub-topics"
Claim 1 recites a search engine to search for "media files pertaining to
... one or more sub-topics." (Emphasis added).
Claim 1 further recites an automated composition module that
(1) "inspects tags for each of the media files to identify one or more sub-
topics"; (2) "identifies one or more sub-topics"; (3) "displays the identified
sub-topics in a list"; (4) "selects one or more of the sub-topics in the list";
( 5) "extracts portions of the files corresponding to the selected one or more
sub-topics"; and ( 6) "composites the extracted portions corresponding both
to the topic of interest and the identified one or more subtopics into a single
media file." (Emphasis added).
The Examiner determines that "[ t ]he claim appears to define the term
'one or more sub-topics' multiple times." Final Act. 4. In particular, "the
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claim explicitly recites to 'identify one or more sub-topics of the specified
topic' repeatedly, back to back." Id.
We agree with the Examiner. It is unclear whether "the identified
sub-topics" and "the identified one or more subtopics" refer to (A) "inspects
tags for each of the media files to identify one or more sub-topics" or
(B) "identifies one or more sub-topics." (Emphasis added). Thus, claim 1 is
indefinite.
Independent claim 10 recites commensurate limitations with respect to
identifying the sub-topics and is indefinite for the same reasons.
Accordingly, we sustain the Examiner's rejection under§ 112(b) of
independent claims 1 and 10, and their dependent claims 3-7 and 12-16,
which Appellants argue are patentable for similar reasons. See App. Br. 1 O;
37 C.F.R. § 4I.37(c)(l)(iv).
Double Patenting
Appellants have not presented any arguments addressing the double
patenting rejection. Accordingly, we affirm the Examiner's double
patenting rejections of claims 1, 3-7, 10, and 12-16.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 3-7, 10, and 12-16 under§ 112(b) and double patenting, but
reverse the decision rejecting those claims under§§ 101 and 103.
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. § 4I.50(f).
AFFIRMED
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