Gracenote, Inc.Download PDFPatent Trials and Appeals BoardMar 31, 202014020295 - (D) (P.T.A.B. Mar. 31, 2020) 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. 14/020,295 09/06/2013 Markus K. Cremer 17-386 3804 139404 7590 03/31/2020 McDonnell Boehnen Hulbert & Berghoff LLP/Gracenote 300 South Wacker Drive, Suite 3100 Chicago, IL 60606 EXAMINER HOSSAIN, FARZANA E ART UNIT PAPER NUMBER 2482 MAIL DATE DELIVERY MODE 03/31/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARKUS K. CREMER and WILSON HARRON ________________ Appeal 2018-006892 Application 14/020,295 Technology Center 2400 ____________ Before LARRY J. HUME, JUSTIN BUSCH, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, and 7‒24, which are all the claims pending in this application. An oral hearing was held March 17, 2020, and a transcript of that hearing will be made of record in due course. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Gracenote, Inc., a subsidiary of The Nielsen Company (US), LLC. Appeal Br. 1. Appeal 2018-006892 Application 14/020,295 2 STATEMENT OF THE CASE Introduction Appellant’s application relates to a system and method for displaying an actionable element over multimedia content. Spec. ¶ 1. In one embodiment, Appellant discloses a conventional television or set-top box that displays a navigation element displayed over video content, where the navigation element facilitates channel navigation of content selection. Id. ¶¶ 2, 12. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A method, comprising: identifying video content currently playing within a display environment provided by a playback device; identifying, based on a fingerprint associated with the identified video content, an area within the display environment in which the playback device displays a navigation element native to the playback device; and displaying, over the identified area within the display environment, an actionable element having a configuration that is based on the identified area within the display environment, wherein the actionable element is based on the identified video content and includes one or more user-selectable options to perform an action associated with the identified video content. The Examiner’s Rejections Claims 1, 2, and 7‒24 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 5‒9. Claims 1, 2, 7‒10, 12, 13, and 15‒20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sievert (US 2010/0131847 A1; May 27, 2010), Lienhart (US 2006/0187358 A1; Aug. 24, 2006), and Dhawan (US 2014/0304731 A1; Oct. 9, 2014). Final Act. 9‒19. Appeal 2018-006892 Application 14/020,295 3 To this combination, the Examiner adds Gordon (US 2012/0117584 A1; May 10, 2012) to reject claim 11 (Final Act. 19); Brodersen (US 2008/0066100 A1; Mar. 13, 2008) to reject claim 12 (Final Act. 20); DeHaan (US 2012/0075526 A1; Mar. 29, 2012) to reject claim 14 (Final Act. 20‒21); Zalewski (US 2007/0226761 A1; Sept. 27, 2007) to reject claims 21 and 22 (Final Act. 21); and Etheredge (US 2013/0097637 A1; Apr. 18, 2013) to reject claims 23 and 24 (Final Act. 22). ANALYSIS Patent-Ineligible Subject Matter An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice, 573 U. S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Appeal 2018-006892 Application 14/020,295 4 Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). Appeal 2018-006892 Application 14/020,295 5 If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO published revised guidance on the application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“Revised Guidance”). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Appeal 2018-006892 Application 14/020,295 6 See Revised Guidance. Revised Guidance Step 1 Step 1 of the Revised Guidance asks whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. See Revised Guidance. Claim 1 recites “[a] method.” Appellant does not argue the Examiner erred in concluding claim 1 falls within the four statutory categories of patentable subject matter. We agree with the Examiner’s conclusion because claim 1 falls within the process category. Revised Guidance Step 2A, Prong 1 Under Step 2A, Prong 1 of the Revised Guidance, we determine whether the claims recite any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes). See Revised Guidance at 52. The Examiner concludes claim 1 is directed to the abstract idea of: identifying video content currently playing within a display environment provided by a playback device; identifying, based on a fingerprint associated with the identified video content an area within the display environment in which the playback device displays a navigation element native to the playback device; and displaying, in the area, an actionable element having a configuration that is based on the identified area within the display environment that is based on the identified video content and includes one or more user-selectable options to perform an action associated with the identified video content. Appeal 2018-006892 Application 14/020,295 7 Final Act. 6. The Examiner concludes claim 1 is, therefore, directed to data recognition and storage, which the Examiner concludes corresponds to concepts identified as abstract ideas by courts. See id. Claim 1 recites “[a] method” that includes three steps. First, the method identifies video content currently playing within a display environment provided by a playback device. Second, the method identifies an area within the display environment in which the playback device displays a navigation element native to the playback device. Third, the method displays, over the identified area, an actionable element. Under the broadest reasonable interpretation of these limitations, the first two steps characterize evaluations or judgments, which fall within the category of mental processes. In particular, the first step involves an evaluation or judgment to identify video content playing within a display environment. The second step involves an evaluation or judgment to identify a navigation element displayed within an area of the display environment. Thus, we agree with the Examiner that claim 1 recites an abstract idea because the two identifying steps, under their broadest reasonable interpretation, recite evaluations or judgments, which fall within the mental process category of abstract ideas identified in the Revised Guidance. Revised Guidance Step 2A, Prong 2 Under Step 2A, Prong 2 of the Revised Guidance, we next determine whether the claims recite additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). To integrate the exception into a practical application, the additional claim elements must, for example, improve the functioning of a computer or any other technology or technical field (see MPEP § 2106.05(a)), apply the Appeal 2018-006892 Application 14/020,295 8 judicial exception with a particular machine (see MPEP § 2106.05(b)), affect a transformation or reduction of a particular article to a different state or thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP § 2106.05(e)). See Revised Guidance. Appellant argues claim 1 recites an improvement to technology or a technical field. See Appeal Br. 8‒9; Reply Br. 3‒4. In particular, Appellant argues claim 1 allows a playback device to display an actionable element over an area in which the playback device displays a navigation element. Id. Appellant argues this helps to avoid distracting the viewer from the video content displayed by the playback device while also providing a simple, intuitive way for the viewer to perform actions associated with the video content. Id. Appellant argues these improvements relate to the technical field of video presentation and user interface technology. Appeal Br. 10. According to Appellant, these improvements provide a particular solution to a particular problem arising in that field, specifically providing a viewer with easy, unobtrusive access to additional content via a playback device. Id. Appellant has persuaded us of Examiner error because, as argued by Appellant, claim 1 recites an improvement to technology or a technical field by providing a technical solution to a technical problem. In particular, claim 1 recites identifying, based on a fingerprint associated with the identified video content, an area within the display environment in which the playback device displays a navigation element native to the playback device. This identifying step solves a technical problem, specifically identifying where to place an actionable element within a display environment, which Appeal 2018-006892 Application 14/020,295 9 provides a viewer with easy, unobtrusive access to additional content via a playback device. The method solves this problem using a technical solution, specifically using a fingerprint associated with identified video content to perform this identifying step. See DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245, 1258 (Fed. Cir. 2014) (holding claims that recited a “solution [that] is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” are not directed to an abstract idea). Thus, we agree with Appellant that claim 1 recites an improvement to technology or a technical field. For these reasons, Appellant has persuaded us of Examiner error with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore, conclude the judicial exception is integrated into a practical application under the Revised Guidance and do not sustain the Examiner’s subject matter eligibility rejection. Obviousness Appellant argues the Examiner erred in rejecting claim 1 as unpatentable over Sievert, Lienhart, and Dhawan. See Appeal Br. 12‒18; Reply Br. 6‒7. In particular, Appellant argues the Examiner erred in finding Lienhart teaches “identifying, based on a fingerprint associated with the identified video content, an area within the display environment in which the playback device displays a navigation element native to the playback device” and “displaying, over the identified area within the display environment, an actionable element.” See Appeal Br. 13‒15. According to Appellant, Lienhart discloses a method involving receiving a compressed digital video stream, calculating features of a sequence of the compressed digital video stream, and comparing the Appeal 2018-006892 Application 14/020,295 10 calculated features to a plurality of fingerprints of known video sequences to identify the video sequence. See id. at 13‒14. Appellant argues Lienhart discloses regions of disinterest, which may include “overlays, bugs, and banners,” where these regions of disinterest are excluded from these calculations. Id. at 14 (citing Lienhart ¶¶ 124‒126, 130). Appellant argues Lienhart at best teaches identifying an area in an image that includes a region of disinterest, such as an electronic program guide screen, but does not teach displaying an actionable element over these regions. Id. at 15. Appellant has not persuaded us of Examiner error. The Examiner finds, and we agree, Lienhart teaches calculating regions of interest that may be either avoided or focused on. Ans. 24 (citing Lienhart ¶ 124). The Examiner finds Lienhart teaches these regions of interest or disinterest may include overlays, bugs, and banners, such as electronic program guide screens and interactive TV buttons. Id. The Examiner finds Lienhart teaches regions of disinterest may be compared to fingerprints of known video, and overlays, bugs, and banners may be placed on the screen according to the fingerprint comparison. Id. (citing Lienhart ¶¶ 130, 132). The Examiner finds Lienhart therefore teaches the “identifying” step and “displaying, over the identified area within the display environment, an actionable element.” Id. at 24‒25. Appellant’s argument that Lienhart identifies areas where an overlay, bug, or banner should not be placed instead of where an element should be placed misses the mark. Lienhart teaches identifying an area within a display environment where a navigation element is displayed. Lienhart teaches identifying within that area the portions where an overlay, bug, or banner should not be placed. By identifying the portions within the area where an Appeal 2018-006892 Application 14/020,295 11 overlay, bug, or banner should not be placed, Lienhart teaches identifying the remainder of the area as portions where an overlay, bug, or banner should be placed. In other words, Lienhart focuses its teachings on identifying the portions of an area that satisfy the negative condition, which identifies the remaining portions of the area as portions that satisfy the positive condition. This identification is “based on a fingerprint associated with the identified video content.” Accordingly, Lienhart teaches, or at least suggests, these limitations. Appellant also argues the Examiner erred because Dhawan does not teach or suggest “displaying, over the identified area within the display environment, an actionable element having a configuration that is based on the identified area within the display environment, wherein the actionable element is based on the identified video content and includes one or more user-selectable options to perform an action associated with the identified video content.” See Appeal Br. 15‒17; Reply Br. 7. In particular, Appellant argues Dhawan teaches content inserter 150 transmits secondary content, such as an advertisement, to be concurrently displayed at the client along with a streaming set of video frames. Appeal Br. 15. Appellant argues Dhawan teaches layering secondary content over the streaming set of video frames, but this layering does not occur over the “identified area” recited in claim 1. Id. at 15. Appellant also argues Dhawan teaches determining a location in time at which to insert secondary content based on characteristics of the content of the set of video frames, but does not teach displaying an actionable element “having a configuration that is based on the identified area within the display environment” as recited in claim 1. Id. at 16‒17. Appeal 2018-006892 Application 14/020,295 12 Appellant has not persuaded us of Examiner error. The Examiner finds, and we agree, Dhawan teaches determining a location for secondary content based on the characteristics of the content. Ans. 25 (citing Dhawan ¶ 102). Dhawan teaches content inserter 150 analyzes metadata, subtitle information, audio data, content ratings, and pixel color data related to the video frames in a set of video frames to determine locations for secondary content that correlate to moments in the content that will capture a viewer’s attention. Dhawan ¶ 102. We agree with the Examiner that an ordinarily skilled artisan would have combined these teachings with those of Lienhart above to achieve the disputed limitations. Appellant’s argument that Dhawan does not teach inserting secondary content over an identified area is not persuasive because the Examiner relies on Lienhart as teaching displaying content over an identified area. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner explained that the combination of Dhawan and Lienhart, not Dhawan alone, discloses this limitation. See Ans. 24‒25. Appellant’s argument that Dhawan does not teach displaying an actionable element “having a configuration that is based on the identified area within the display environment” is also unpersuasive. Claim 1 does not define “configuration” other than reciting that it is “based on the identified area within the display environment.” However, the Specification provides broad examples of configurations of actionable elements, including size, shape, color, geometry, and actions associated with selecting the element. See Spec. ¶¶ 51‒52. The Examiner finds Dhawan teaches concurrently Appeal 2018-006892 Application 14/020,295 13 displaying secondary content within the video frames. Ans. 25 (citing Dhawan ¶¶ 38, 39). This secondary content includes icons, text, banner advertisements or graphics layered over the streaming video, or pop-up windows placed a particular location in the interface presenting the video frames. Id. We agree with the Examiner that under the broadest reasonable interpretation of “configuration,” these teachings at least suggest an actionable element having a “configuration that is based on the identified area within the display environment” because the size or position of the secondary content may be based on the content of the video. Id. We, therefore, sustain the Examiner’s rejection of independent claim 1 as unpatentable over Sievert, Lienhart, and Dhawan. We also sustain the obviousness rejection of independent claims 13 and 15, for which Appellant provides the same argument (see Appeal Br. 18), and dependent claims 2, 7‒ 12, 14, and 16‒24, for which Appellant provides no separate argument (see id.). CONCLUSION We reverse the rejection of claims 1, 2, and 7‒24 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 1, 2, and 7‒24 under pre-AIA 35 U.S.C. § 103(a). Because we have sustained at least one ground of rejection with respect to each claim on appeal, we affirm the decision of the Examiner rejecting claims 1, 2, and 7‒24. See 37 C.F.R. § 41.50(a)(1). Appeal 2018-006892 Application 14/020,295 14 DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 2, 7‒24 101 Eligibility 1, 2, 7‒24 1, 2, 7‒10, 12, 13, 15‒20 103 Sievert, Lienhart, Dhawan 1, 2, 7‒10, 12, 13, 15‒20 11 103 Sievert, Lienhart, Dhawan, Gordon 11 12 103 Sievert, Lienhart, Dhawan, Brodersen 12 14 103 Sievert, Lienhart, Dhawan, DeHaan 14 21, 22 103 Sievert, Lienhart, Dhawan, Zalewski 21, 22 23, 24 103 Sievert, Lienhart, Dhawan, Etheredge 23, 24 Overall Outcome 1, 2, 7‒24 FINALITY AND 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation