Lenovo Enterprise Solutions (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Mar 3, 2020

14151798 - (D) (P.T.A.B. Mar. 3, 2020)

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.
14/151,798 01/09/2014 James G. McLean RPS920130091US2
(169CON)
4562
127893 7590 03/03/2020
Streets Lawfirm, PC - Lenovo (Singapore) Pte. Ltd.
20319 Corbin Creek Drive
Cypress, TX 77433
EXAMINER
RAZA, MUHAMMAD A
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
jstreets@streetsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES G. MCLEAN
____________________

Appeal 2019-001613
Application 14/151,7981
Technology Center 2400
____________________

Before CAROLYN D. THOMAS, JON M. JURGOVAN, and
IFTIKHAR AHMED, Administrative Patent Judges.

AHMED, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–4 and 6, which are the only claims pending in the
application. Claims 5 and 7–20 have been cancelled. Appeal Br. 13. 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(a). According to Appellant, Lenovo Enterprise Solutions (Singapore)
Pte. Ltd. is the real party in interest. Appeal Br. 2.
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Technology
The application relates to “streaming media playback and more
particularly to selection of streaming media segments for playback in a
computer communications network.” Spec. ¶ 2.
Illustrative Claims
Claim 1 is illustrative and reproduced below with the limitation at
issue under 35 U.S.C. § 103 underlined (all emphasis and reformatting
added):
1. A method for alternate playback of streaming media segments,
the method comprising:
receiving from a streaming media source different
segments of streaming media for playback in sequence in a
media player executing in memory of a playback device;
rejecting playback of one of the different segments
during playback of the one of the different segments;
selecting an alternate segment for playback in the media
player in place of the rejected one of the different segments,
wherein the alternate segment is selected based upon a
playback time of the alternate selection most closely
matching a remaining playback time of the rejected one
of the different segments; and,
playing back in the media player the alternate segment in
place of the rejected one of the different segments, and
subsequently playing back in the media player a next one of the
different segments in the sequence.
Rejections
Claims 1–4 and 6 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter without significantly more. Final Act.
4–8.
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Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 103 as obvious
over the combination of Evans (US 2012/0066404 A1; Mar. 15, 2012),
Ellanti (US 2010/0088716 A1; Apr. 8, 2010), and Drake (US 2010/0290761
A1; Nov. 18, 2010). Final Act. 9–11.
Claim 3 stands rejected under 35 U.S.C. § 103 as obvious over the
combination of Evans, Ellanti, Drake, and Freed (US 2015/0163545 A1;
June 11, 2015). Final Act. 11.
Claim 6 stands rejected under 35 U.S.C. § 103 as obvious over the
combination of Evans, Ellanti, Drake, and Raghuvamshi (US 2006/0287912
A1; Dec. 21, 2006). Final Act. 11–12.
Claims 1, 3, 4, and 6 stand provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 7, 9, 10, 12,
15, 17, 18, and 20 of co-pending Application No. 14/133,881.2 Final Act. 3–
4.
ISSUES
1. Did the Examiner err in concluding that claims 1–4 and 6 are
directed to ineligible subject matter without significantly more under § 101?
2. Did the Examiner err in concluding that the combination of
Evans and Ellanti teaches or suggests “selecting an alternate segment for
playback in the media player in place of the rejected one of the different
segments, wherein the alternate segment is selected based upon a playback
time of the alternate selection most closely matching a remaining playback
time of the rejected one of the different segments,” as recited in claim 1?

2 The Examiner’s rejection states that claims 1 and 3–6 are rejected (Final
Act. 3), but claim 5 has been cancelled. Appeal Br. 13.
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3. Did the Examiner err in concluding that claims 1, 3, 4, and 6
are not patentably distinct from claims 7, 9, 10, 12, 15, 17, 18, and 20 of co-
pending Application No. 14/133,881?
ANALYSIS
§ 101 Rejection
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.” See 35 U.S.C. § 101. The 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,
based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018). To determine patentable subject matter, the Supreme
Court has set forth 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
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claims at . . . a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to [section] 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 Supreme Court has “described step two of this analysis 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 than a patent upon the ineligible concept itself.” Id. at
217–18 (quotation omitted).
The U.S. Patent & Trademark Office has published revised guidance
on the application of § 101. See USPTO, 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
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(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));3 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, 84 Fed. Reg. at 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.
The Examiner concludes that claims 1–4 and 6 are directed to patent-
ineligible subject matter. Final Act. 5–8; Ans. 4. For the reasons discussed
below, we are not persuaded that the Examiner has erred.
A) USPTO Step 1
Applying Step 1 of the Guidance (which is unchanged from the prior
guidance) to the present case, we determine independent claim 14 recites a

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance, 84 Fed. Reg. at 54–55.
4 Appellant does not separately argue each of the rejected claims. Appeal
Br. 4. We select claim 1 as representative of all rejected claims for our
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“method for alternate playback of streaming media segments,” which is a
form of “process,” thereby falling within one of the categories enumerated
under § 101 and satisfying Step 1 of the Revised Guidance. See Guidance,
84 Fed. Reg. at 53–54.
B) USPTO Step 2A, Prong 1
The Examiner determines that “[t]he claim(s) are directed to the
abstract idea of streaming media segments for playback by selecting a more
appropriate segment.” Ans. 4 (emphasis omitted); Final Act. 5–6. More
specifically, the Examiner finds, “the concept of streaming media segments
for playback by selecting a more appropriate segment relates to tracking or
organizing information,” i.e., “a mental process (thinking) that ‘can be
performed in the human mind, or by a human using a pen and paper.’” Ans.
at 5–6 (citing Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016)) (emphasis omitted). The Examiner finds that the idea
claimed is akin to the customizing information based on information known
about the user. Id. at 6. According to the Examiner, tailoring the selection
of an alternate segment as claimed is similar to tailoring television
advertisements based on the time of day during which the advertisement will
be viewed. Id. at 6–7.
Appellant argues that the claims “go beyond the mere collection of
information, the analysis of the information and the storage of the analyzed
information as suggested by the Examiner.” Appeal Br. 4.
Claim 1 recites, in part, (A) “the alternate segment [being] selected
based upon a playback time of the alternate selection most closely matching

§ 101 analysis because it is representative of the claimed invention and
incorporates Appellant’s argued features. 37 C.F.R. § 41.37(c)(1)(iv).
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a remaining playback time of the rejected one of the different segments.”
Appeal Br. 12. Step (A) recites determining whether an alternate segment
that is selected closely matches the playback time remaining for the segment
that is currently playing. The Specification explains that the “alternate
playback logic 140 can compare instances of the alternate media segments
150 in order to identify a particular one of the alternate media segments 150
most suitable to playback instead of the rejected one of the segments,” i.e.,
one “having a playback duration which is most closely aligned with a
remaining time of playback of the rejected one of the segments.” Spec. ¶ 18
(emphasis added). At a high level, therefore, step (A) simply recites
comparing alternate activities to determine which one is long enough, i.e.,
most suitable to substitute for a partially completed activity, which is a
process that can be performed within the human mind (e.g., a person
comparing alternate activity options to fill the time originally slotted for a
current one that the person no longer wishes to continue) or with a pen and
paper. See Univ. of Utah Research Found. v. Ambry Genetics Corp., 774
F.3d 755, 763 (Fed. Cir. 2014) (finding claims to comparing BRCA
sequences, where such comparison can practically be performed in the
human mind, to be directed to an abstract idea); see also CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (reasoning
that when a person may implement claimed steps by simply writing down
the claimed data elements, those steps can all be performed in the human
mind); Guidance, 84 Fed. Reg. at 52 & n.14 (listing cases).
Therefore, on the record before us, we agree with the Examiner that
claim 1 recites a mental process, which is an abstract idea.
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C) USPTO Step 2A, Prong 2
The analysis under prong 2 considers the claim as a whole, i.e., “the
limitations containing the judicial exception as well as the additional
elements in the claim besides the judicial exception need to be evaluated
together to determine whether the claim integrates the judicial exception into
a practical application.” October 2019 Patent Eligibility Guidance Update,
at 12, available at http://www.uspto.gov/PatentEligibility.
The Examiner determines that the claims here, unlike those in Enfish,
merely use the computer as a tool to perform the abstract concepts, “are not
rooted in technology[,] and simply employ[] conventional techniques used
by humans for streaming media segments for playback by selecting a more
appropriate segment.” Id. at 7 (citing Enfish, 822 F.3d at 1335–36). The
Examiner finds that “claim(s) do[] not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the additional elements when considered both individually and as an
ordered combination do not amount to significantly more than the abstract
idea.” Id. at 8. The Examiner evaluates each of the additional elements
recited in claim 1 to conclude that the “[s]teps that do nothing more than
spell out what it means to ‘apply it on a computer’” and cannot confer
patent-eligibility. Id. at 12. The Examiner determines “[t]he use of generic
computer components for streaming media segments for playback by
selecting a more appropriate segment through an unspecified interface does
not impose any meaningful limit on the computer implementation of the
abstract idea,” further adding that “[l]ooking at the limitations as an ordered
combination adds nothing that is not already present when looking at the
elements taken individually.” Id. at 13.
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We agree with the Examiner’s analysis. Beyond the abstract idea
discussed above, the one additional limitation recited is that the selecting
step is performed in a “media player executing in memory of a playback
device.” Appeal Br. 12. However, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 573 U.S. at 222–23. The same is true of the
limitation reciting “receiving from a streaming media source different
segments of streaming media for playback in sequence in [the] media
player.” Appeal Br. 12. The substance of the claim can be performed
mentally by a human, and “mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1055 (Fed. Cir. 2017).
Appellant argues that the claims, including claim 1, “describe a
particular solution to a problem or a particular way to achieve a desired
outcome defined by the claimed invention, as opposed to merely claiming
the idea of a solution or outcome and the collection and manipulation of
information.” Appeal Br. 4 (emphasis added). We understand Appellant’s
argument to be that because claim 1 implements the abstract idea in a media
playback solution, the claim describes a “particular solution to a problem.”
All the media playback restriction does, however, is “confine the abstract
idea to a particular technological environment,” and “merely limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract.” See Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258–59 (Fed. Cir. 2016);
see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
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1363, 1366 (Fed. Cir. 2015) (“An abstract idea does not become nonabstract
by limiting the invention to a particular field of use or technological
environment, such as the Internet.”). The elements of claim 1 therefore fail
to provide any meaningful limitation beyond generally linking the use of the
abstract idea to a particular technological environment.
Appellant further argues that “claims are directed to a process driven
improvement to computer-related technology.” Appeal Br. 4–5. Appellant,
however, fails to point to any claim elements “that reflect an improvement in
the functioning of a computer, or an improvement to other technology or
technical field” and would be indicative of the abstract idea being integrated
into a practical application. See Guidance, 84 Fed. Reg. at 55 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir.
2014)); see also MPEP § 2106.05(a). As the Examiner correctly points out,
the claim language is “stated at a high level of generality without tying it to
an algorithm that would improve the functionality of the technology and its
broadest reasonable interpretation comprises only streaming media segments
for playback by selecting a more appropriate segment through the use of
some unspecified generic computers and interface.” Ans. 12–13.
Even when considered as a combination of its elements, claim 1 is
directed at nothing more than the abstract idea of comparing alternate
activities to determine which one is long enough to substitute for a partially
completed activity. Thus, we agree with the Examiner that “[t]here is no
indication that the combination of elements improves the functioning of a
computer or improves any other technology” (Ans. 13), and claim 1 does not
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–56; see also MPEP § 2106.05(a)–(c), (e)–(h).
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D) USPTO Step 2B
Lastly, the Examiner finds that any additional limitations beyond the
judicial exception recite “generic computer functions that are well-
understood, routine and conventional activities” in the field of the invention.
Ans. 12.
We agree with the Examiner that additional claim elements recited in
claim 1, beyond the claimed abstract idea, “are recited as performing generic
computer functions routinely used in computer applications.” Ans. 11.
Appellant argues that the “Examiner has not provided any factual basis” for
that conclusion and that the “Examiner’s analysis has not complied with the
April 19th Memorandum and breaches the jurisprudence of Berkheimer.”
Appeal Br. 5–7 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed.
Cir. 2018)). Appellant specifically argues that the claim limitations of
rejecting playback of a given segment and selecting an alternate segment for
playback are ones that the Examiner has failed to demonstrate are “routine,
well-understood and conventional functions.” Reply Br. 5–6. Appellant
asserts that the Examiner has failed to show that those “additional elements
of [the] claim represent well-understood, routine, and conventional activity
engaged in by those in the relevant art so that those elements need[ not] be
described in detail in a patent application.” Id. at 6.
Appellant however ignores the Examiner’s analysis relating to those
limitations:
[T]he feature of rejecting a content and replacing with another
content is well-known and conventional, as also disclosed by
previously cited prior art, Evans. Evans discloses in paragraph
[0003] of the background section (Many Internet radio stations
provide a skip feature using a unicast communication channel to
each user (i.e., each user is delivered a separate radio stream).
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As such, each user is enabled to independently skip ahead if they
do not want to listen to the current song.).
Ans. 11 (citing Evans ¶ 3). As Appellant acknowledges, “a citation to a
publication that demonstrates the well-understood, routine, and conventional
[nature] of Appellant[’s] claimed elements” suffices to comply with the
April 19th Berkheimer Memorandum. Appeal Br. 7. Moreover, other
references cited by the Examiner in rejecting the pending claims under § 103
support that rejecting playback of one media segment and selecting a
different one was a routine, well-understood, and conventional computer
function at the time of the invention. See, e.g., Ellanti ¶ 122 (“In case the
user skips an advertising being shown in a slot, an alternate advertising may
be shown in that slot until the slot is fully played for the duration it was
designed.”); Freed ¶ 4 (“The prior art includes a number of ‘commercial
skipping’ technologies”).
We also agree with the Examiner that claim elements such as the
memory, media player, and streaming media server are all “generic
computer functions routinely used in computer applications.” Ans. 11. As
the Specification explains, “aspects of the present invention may take the
form of an entirely hardware embodiment, an entirely software embodiment
(including firmware, resident software, micro-code, etc.) or an embodiment
combining software and hardware aspects that may all generally be referred
to herein as a ‘circuit,’ ‘module’ or ‘system.’” Spec. ¶ 24 (emphasis added);
see also id. at ¶ 25 (listing various generic types of memory that may be
used by the invention). As the Federal Circuit has held, “the use of
conventional computer components, such as a database and processors,
operating in a conventional manner” “do[es] not confer patent eligibility.”
Intellectual Ventures, 792 F.3d at 1371; CyberSource, 654 F.3d at 1375
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(merely claiming a software implementation of a purely mental process that
could otherwise be performed without the use of a computer does not alter
the method’s unpatentability under 35 U.S.C. § 101). We therefore
determine that claim 1 does not add significantly more to the patent-
ineligible abstract idea.
Because Appellant does not separately argue the Examiner’s § 101
rejection of claims 2–4 and 6, we also sustain the rejection of those claim
under § 101.
§ 103 Rejections of Claims 1–4 and 6
Independent claim 1 recites selecting an alternate segment for
playback “wherein the alternate segment is selected based upon a playback
time of the alternate selection most closely matching a remaining playback
time of the rejected one of the different segments” (Appeal Br. 12), which
the Examiner finds is taught by Ellanti. Final Act. 9–10 (citing Ellanti
¶ 122); Ans. 16. The Examiner determines that “[t]he function of skipping
an advertisement being shown in a slot disclosed in Ellanti is equivalent to
the act of rejecting one of the different segments disclosed in the claim.”
Ans. 16. According to the Examiner:
Ellanti discloses that if a 30 seconds advertisement (or one of the
different segments) is skipped (or rejected) after the
advertisement has played for 5 seconds, then an alternate
advertisement that is 30 seconds in duration is fetched. Since the
remaining playback time in the time slot of the skipped
advertisement (or rejected one of the different segments) is 25
seconds, at least 25 seconds of the fetched alternate
advertisement is selected to be played to most closely match with
the skipped/rejected advertisement’s remaining time slot (or
remaining playback time), wherein the selection of at least 25
seconds of the 30 seconds long fetched alternate advertisement
is equivalent to the alternate segment selected based upon a
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playback time of the alternate selection most closely matching a
remaining playback time of the rejected one of the different
segments, as claimed by the [A]ppellant.
Id. at 17 (emphasis added). The Examiner determines that Ellanti teaches
“that in fetching other clips one might want to keep the total time to the
amount of advertising slotted, and the art took steps to make that fit work,”
which the Examiner finds sufficient to teach or suggest the limitation under
the broadest reasonable interpretation of the claim.5 Id.
Appellant argues that Ellanti’s system teaches that “alternate
advertisements are selected irrespective of the remaining time of playback of
the skipped advertisement.” Appeal Br. 9 (citing Ellanti ¶ 122). Instead,
Appellant contends, “the alternative advertisement is selected based upon
the total playback time.” Id. In the example provided by Ellanti, Appellant
points out that when “a 30 second advertisement is skipped after 5 seconds
of playback leaving 25 seconds of remaining playback time,” “a replacement
advertisement of 25 seconds is not selected.” Id. Rather, Appellant asserts,
“a replacement advertisement of 30 seconds—the original length of the
skipped advertisement and not the remaining playback time of 25 seconds”

5 Additionally, the Examiner determines that “the term ‘most closely
matching’ in the claims is a relative term,” and “is not defined by the claim,
[and] the specification does not provide a standard for ascertaining the
requisite degree, and one of ordinary skill in the art would not be reasonably
apprised of the scope of the invention.” Ans. 14–15 (emphasis omitted).
The Examiner further finds that “[t]he term ‘most closely matching’ is
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor . . . regards as the invention.” Id. at 15–16. We
do not address the Examiner’s determination because the Examiner has not
rejected any of the claims under 35 U.S.C. § 112(b). See Final Act. 2
(providing only comments regarding the claim term).
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is selected. Id. That, Appellant contends, “is the opposite of what has been
claimed.” Id. at 9; Reply Br. 9–10.
We are persuaded of Examiner error. Claim 1 requires “the alternate
segment is selected based upon a playback time of the alternate selection
most closely matching a remaining playback time of the rejected one of the
different segments.” Although we agree with the Examiner that Ellanti
teaches “playing an alternate advertisement in place of the skipped
advertisement in the time slot until the slot is fully played for the duration it
was designed” (Ans. 16), there is no teaching or suggestion in Ellanti of
selecting an alternate advertisement whose playback time closely matches
the remaining playback time of the rejected advertisement. In fact, Ellanti
teaches that the “alternate advertisements may be shown partially or fully
depending when the previous advertising was stopped and replaced with the
new one.” Ellanti ¶ 122 (emphasis added). Because it allows the alternate
clip to be stopped midway, Ellanti seeks to ensure that the selected alternate
advertisement is also the same length as the original one, i.e., a length
matching the total playback time of the rejected advertisement. Id. (“if an
advertising shown is 30 seconds in duration and after 5 seconds one viewer
attempts to skip that slot, then an alternate advertising may be fetched that is
also 30 seconds”) (emphasis added).
Although we agree with the Examiner that the term “most closely
matching a remaining playback time” should be given its broadest
reasonable interpretation (Ans. 17), we find that the Examiner’s
interpretation of the term as broadly meaning “most closely matching a total
playback time” reads out the claimed “remaining playback time” from
claim 1. The broadest reasonable interpretation “is an interpretation that
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corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is ‘consistent with the
specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017)
(citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Suitco
Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010)). The Specification
explains that “a particular one of the alternate media segments 150 having a
playback duration which is most closely aligned with a remaining time of
playback of the rejected one of the segments 130A, 130B, 130N can be
identified and played back in lieu of the rejected one of the segments.”
Spec. ¶ 18 (referring to Fig. 1) (emphasis added). The Specification further
adds “to the extent that the playback duration of the particular one of the
alternate media segments 150 is less than the remaining time of the playback
of the rejected one of the segments 130A, 130B, 130N, a buffer segment can
be selected,” where the length of the buffer segment covers any remaining
playback time. Id. (emphasis added). The broadest reasonable interpretation
of “most closely matching a remaining playback time” is one that is
consistent with a time left after a subtraction. We therefore agree with
Appellant that the Examiner has failed to sufficiently explain how Ellanti
teaches an “alternate segment [that] is selected based upon a playback time
of the alternate selection most closely matching a remaining playback time
of the rejected one of the different segments,” in the manner recited in
claim 1.
The Examiner also does not rely on Evans as teaching this limitation.
Final Act. 9–10. Accordingly, we do not sustain the Examiner’s
obviousness rejections of independent claim 1 and its dependent claims 2–4
and 6.
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Provisional Double Patenting Rejection
The Examiner rejects claims 1, 3, 4, and 6 provisionally as being
unpatentable over claims 7, 9, 10, 12, 15, 17, 18, and 20 of co-pending
Application No. 14/133,881. Final Act. 3–4. Appellant does not present
arguments for that rejection. See generally Appeal Br. The Examiner has
not withdrawn that rejection. Ans. 3.
Panels have the flexibility to reach or not reach provisional
obviousness-type double-patenting rejections. Ex parte Jerg, Appeal No.
2011-000044, 2012 WL 1375142, at *3 (BPAI Apr. 13, 2012) (informative);
see also Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010)
(precedential). We exercise our discretion and elect to reach the Examiner’s
provisional rejection.
In light of Appellant’s failure to present arguments as to the
provisional rejection, we affirm pro forma the provisional rejection of
claims 1, 3, 4, and 6.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1–4 and 6 under § 101, and the provisional nonstatutory double-
patenting rejection of claims 1, 3, 4, and 6, but reverse the Examiner’s
rejections of claims 1–4 and 6 under § 103.

Claims
Rejected
Statute Basis Affirmed Reversed
1–4, 6 § 101 Eligibility 1–4, 6
1, 2, 4 § 103 Evans, Ellanti, Drake 1, 2, 4
3 § 103 Evans, Ellanti, Drake,
Freed
3
Appeal 2019-001613
Application 14/151,798

19
6 § 103 Evans, Ellanti, Drake,
Raghuvamshi
6
1, 3, 4, 6 Nonstatutory Double
Patenting
1, 3, 4, 6
Overall
Outcome
1–4, 6

TIME TO RESPOND
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.
§ 1.136(a)(1)(iv).
AFFIRMED