Disney Enterprises, Inc.

Patent Trials and Appeals Board

Sep 22, 2020

2019001758 (P.T.A.B. Sep. 22, 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.
14/872,748 10/01/2015 EDWARD DRAKE DISN/0421US (109417) 8906
77754 7590 09/22/2020
DISNEY ENTERPRISES, INC.
c/o Patterson & Sheridan, LLP
24 Greenway Plaza
Suite 1600
Houston, TX 77046-2472
EXAMINER
RABOVIANSKI, JIVKA A
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
09/22/2020 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):
PAIR_eOfficeAction@pattersonsheridan.com
PSDocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD DRAKE, ANDREW J. WRIGHT, and
BRUCE BLEASDALE
Appeal 2019-001758
Application 14/872,748
Technology Center 2400
Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
JOHN F. HORVATH, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 5–12, and 14–23, which constitute
of all the claims pending in this appeal. Claims App. Claims 4 and 13 have

1 We refer to the Specification, filed October 1, 2015 (“Spec.”); Final Office
Action, mailed January 12, 2018 (“Final Act.”); Appeal Brief, filed August
28, 2018 (“Appeal Br.”); Examiner’s Answer, mailed October 23, 2018
(“Ans.”); and the Reply Brief, filed December 19, 2018 (“Reply Br.”).
2 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 Disney
Enterprises, Inc. Appeal Br. 1.
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been canceled. Id. Claims 1, 10, and 19 are independent. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claims are directed to adjusting media availability via a content
consumption activity dashboard. Spec., Title. Claim 1, reproduced below
with bracketed claim element labels added and a disputed limitation
emphasized in italics, is illustrative of the claimed subject matter:
1. A graphical user interface method, comprising:
[(a)] displaying on a display of a content playback system a
graphical user interface comprising:
[(b)] a graphical summary of attributes of video
content previously accessed by a user account, wherein
the graphical summary of the attributes of the video
content is based on metadata captured from the video
content previously accessed by the user account, wherein
the user account accessed the video content from a server
system that delivers video content to the user account over
a network; and
[(c)] a plurality of controls for biasing a plurality of
attributes of video content delivered to the user account by
the server system;
[(d)] receiving data corresponding to user input at the
graphical user interface actuating one of the plurality of controls;
[(e)] in response to receiving the data, the content playback
system transmitting over the network to the server system data
associated with a video content attribute biased by the user input
actuating one of the plurality of controls,
[(f)] receiving user account personalization data from the
server system in response to transmitting to the server system
data associated with the video content attribute biased by the user
input; and
[(g)] using at least the received user account personalization
data to display on the display a personalized video content
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playback graphical user interface for the user account, wherein
the personalized video content playback graphical user interface
displays selectable video content available for playback, wherein
the displayed selectable video content depends at least in part on
the video content attribute biased by the user input.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Suslov US 2011/0296463 A1 Dec. 1, 2011
Klappert US 2013/0347039 A1 Dec. 26, 2013
Ionescu US 2015/0128162 A1 May 7, 2015
Mudd US 2017/0195728 A1 July 6, 2017

REJECTIONS
Claims 1–3, 5–12 and 14–213 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Mudd and Suslov. Final Act. 2–8.
Claims 9 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Mudd, Suslov, and Ionescu. Final Act. 8–9.
Claims 22 and 23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Mudd, Suslov, and Klappert. Final Act. 9–10.

STANDARD OF REVIEW
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).

3 Claims 22 and 23 are mistakenly included among the claims listed in the
heading of section 5 as being rejected under 35 U.S.C. § 103 over Mudd and
Suslov. Final Act. 2.
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OPINION
Claims 1–3, 5–12, 14–18, and 21–23
Findings and Contentions
The Examiner finds Mudd’s system for personalizing playback
content teaches (1) displaying content on a graphical user interface (claim
element (a)), (2) a graphical user interface including controls for biasing
attributes of video content (claim element (c)), (3) receiving user input data
(claim element (d)), and, (4) in response, transmitting data associated with
the biased video content attribute (claim element (e)). Final Act. 3–4. The
Examiner finds Suslov’s search ranking system teaches (1) displaying a
graphical summary of attributes of video content previously accessed by a
user account . . . (claim element (b)), (2) receiving user account
personalization data (claim element (f)), and, (3) using the personalization
data to display a personalized video content playback user interface (claim
element (g)). Id. at 3–5.
According to the Examiner, it would have been obvious to incorporate
Suslov’s teaching of adjusting a user’s profile by prioritizing content of
interest to a user into Mudd’s system for personalizing playback content to
facilitate user selection of content. Id. at 5.
Appellant contends, inter alia,
Suslov’s user profile specifies a user’s saved preferences for
prioritizing certain search results of content, and does not in any
way provide [] “a graphical summary of attributes of video
content previously accessed by” the user. Indeed, Suslov does
not even teach keeping track of what video content was
previously accessed by a user. Rather, Suslov provides the user
the option of creating a profile that assigns different priorities to
different video content types to rank video content programming
search results.
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Appeal Br. 13.
The Examiner responds
Suslov teaches the user’s preferences from a previous session
may be loaded at this point, as the user may have previously
modified the default settings to customize a variety of aspects of
his or her user experience wherein preferences may allow the
user to prioritize particular types and/or genres of content, among
other things. Additionally or alternatively, these preferences
may allow the user to assign a numerical weight to the different
preferences, such that where two preferences result in increasing
the search result ranking or priority of different types and/or
genres of content, the assigned numerical weight of the
preferences may control which type and/or genre of content
receives a greater increase in search result ranking or priority,
Suslov, [0065], [0066].
Ans. 14. The Examiner explains
Modifying the previous profile based on the metadata/ numerical
weight to the different preferences and adjusting priority of
different portions of content of a particular type and/or genre is
a graphical summary of attributes of video content previously
accessed by a user account, wherein the graphical summary of
the attributes of the video content is based on metadata captured
from the video content previously accessed by the user account
as cited in claim 1.
Id. at 15.
Appellant replies “Suslov’s interface for ranking search results is
based on a user’s stated preferences for a particular type of content.
Suslov’s interface does not present search results based on video that a user
account accessed, let alone using metadata captured from video content that
was accessed by the user account.” Reply Br. 7.

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Analysis
Claim construction is an important step in a patentability
determination. Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003) (“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims . . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” (citations omitted)). A
determination of anticipation, as well as obviousness, involves two steps.
First is construing the claim, a question of law, followed by, in the case of
anticipation or obviousness, a comparison of the construed claim to the prior
art. This comparison process involves fact-finding. See Key Pharms. v.
Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998).
The disputed limitation of claim element (b) recites “a graphical
summary of attributes of video content previously accessed by a user
account.” Claim element (b) further recites “the graphical summary of the
attributes of the video content is based on metadata captured from the video
content previously accessed by the user account” (emphasis added). A
reasonable interpretation of claim element (b) requires a graphical summary
of attributes of video content, the video content having been previously
accessed by a user account. Use of the definite article “the” in the second
recitation of “the video content previously accessed by the user account”
disambiguates the recitation of what was previously accessed by a user
account, i.e., (i) the video content rather than (ii) attributes of the video
content. Because a proper interpretation of claim element (b) requires a
graphical summary of attributes of previously accessed video content (rather
than of previously accessed attributes), to teach the disputed limitation the
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prior art must describe, not just a graphical presentation of attributes
provided by a user as preferences, but a graphical presentation of attributes
of video content that was previously accessed by the user.
As argued by Appellant, Suslov discloses graphically presenting a
user’s previously saved preferences. However, the Examiner does not find,
and we do not ascertain, that Suslov’s saved preferences (i.e., the recited
attributes) are of video content previously accessed by a user account as
required by claim 1. Therefore, on the record before us, we agree with
Appellant that the portions of Suslov cited by the Examiner fail to teach or
suggest the disputed limitation.
Because we agree with at least one of the arguments advanced by
Appellant, we do not reach the merits of Appellant’s other arguments
presented in connection with claim 1. Accordingly, we do not sustain the
rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Mudd
and Suslov. Independent claim 10 includes language corresponding to claim
element (b) of claim 1. Accordingly, we do not sustain the rejection claim
10. Furthermore, we do not sustain the rejections of dependent claims 2, 3,
5–9, 11, 12, 14–18, and 21–23, which stand with their respective base claim.

Claims 19 and 20
Claim 19 recites:
19. A method for adjusting video content availability associated
with a user account configured to receive video content from a
server system over a network, comprising the server system:
capturing metadata corresponding to video content viewed by
the user account;
receiving over the network from a content playback device:
account information identifying the user account; and
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data associated with a video content attribute biased by
user input at the content playback device actuating one
of a plurality of controls for biasing a plurality of
attributes of the video content delivered to the user
account by the server system;
storing the received data at the server system; and
based on the received data and the captured metadata,
applying personalized machine learning of the user
account's video content preferences, wherein the
personalized machine learning is used to generated a
personalized video content playback graphical user
interface for the user account at the content playback
device.
Findings and Contentions
The Examiner rejects claim 19 together with independent claims 1 and
10 (discussed above) under 35 U.S.C. § 103 as unpatentable over Mudd and
Suslov. Final Act. 2–8. According to the Examiner “[t]he rejection of claims
1, 10 and 19 was combined because the inventive concepts in all
independent claims is the same[,] encompass[ing] similar limitations with
different words.” Ans. 10.
Appellant separately argues claim 19 apart from independent claims 1
and 10, contending that, by failing to analyze the specific language of claim
19, the Examiner failed to make out a prima facie showing of obviousness
over Mudd and Suslov. Appeal Br. 9. Appellant argues
the Final Office Action’s failure to specifically identify which
features of Mudd and Suslov are believed to disclose each
element of claim 19 likely renders the Final Office Action
“arbitrary and capricious,” and therefore invalid, under the
Administrative Procedure Act (5 U.S.C. § 706), a standard to
which all Actions by the USPTO must adhere (see Dickinson v.
Zurko, 527 U.S. 150 (1999)). Without proper guidance as to
which “element” of the claim is believed to correspond with
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which section cited in the rejection, Appellant is forced to guess
which features in the cited art the Final Office Action believed to
disclose each of the claimed features.
Id. at 10. Appellant further contends, “Mudd and Suslov do not teach or
suggest any of the limitations of independent claim 19” without providing
supporting substantive analysis. Id.

Analysis
Appellant’s argument is not persuasive. The Examiner has provided
specific citations to portions of the Mudd and Suslov references relied upon
for teaching the subject matter of claim 19. There is no requirement for the
Examiner to provide a mapping of each limitation to specific portions of the
applied prior art. There is only a requirement to provide such notice that
Appellant can recognize and seek to counter the grounds for the rejection.
As this court has repeatedly noted, “the prima facie case is
merely a procedural device that enables an appropriate shift of
the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984). The Patent and Trademark Office (“PTO”) satisfies
its initial burden of production by “adequately explain[ing] the
shortcomings it perceives so that the applicant is properly
notified and able to respond.” Hyatt, 492 F.3d at 1370. In other
words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35
U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
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In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (emphasis added).
“Section 132 merely ensures that an applicant at least be
informed of the broad statutory basis for the rejection of his
claims, so that he may determine what the issues are on which he
can or should produce evidence.” Chester, 906 F.2d at 1578
(internal citation omitted). As discussed above, all that is
required of the office to meet its prima facie burden of production
is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of §132.
As the statute itself instructs, the examiner must “notify the
applicant,” “stating the reasons for such rejection,” “together
with such information and references as may be useful in judging
the propriety of continuing prosecution of his application.” 35
U.S.C. § 132.
In re Jung, 637 F.3d at 1363 (emphasis added).
As evidenced by Appellant’s response to the rejection, the Examiner
has provided sufficient information to enable Appellant to argue that the
subject matter of claim 19 is not taught by the combination of Mudd and
Suslov. Appeal Br. 10–11. Thus, we find that Appellant was provided with
sufficient notice of the basis of the rejection to respond. Accordingly, we
disagree the Examiner did not establish a prima facie case of obviousness.
Having presented a prima facie case, the burden shifted to Appellant to
respond. However, rather than provide a substantive analysis explaining why
the limitations of claim 19 are not taught or suggested by the combination of
Mudd and Suslov, Appellant merely repeats each claim limitation preceded
by an allegation that “Mudd and Suslov do not teach or suggest” that
limitation. Id. Such conclusory statements are unpersuasive of error as
amounting to little more than a general denial that fails to address the
Examiner’s findings and are, therefore, insufficient. See 37 C.F.R.
§ 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites
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will not be considered an argument for separate patentability of the
claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Accordingly, we are unpersuaded by Appellant’s argument that
the Examiner failed to establish a prima facie rejection of claim 19 or by
Appellant’s arguments that the Examiner erred in rejecting claim 19, and we
sustain the rejection of claims 19 and 20 under 35 U.S.C. § 103(a) over
Mudd and Suslov.
CONCLUSION
We affirm the rejection of claims 19 and 20 under 35 U.S.C. § 103
over Mudd and Suslov.
We reverse the rejection of claims 1–3, 5–12 and 14–18, and 21 under
35 U.S.C. § 103 over Mudd and Suslov.
We reverse the rejection of claims 9 and 18 under 35 U.S.C. § 103
over Mudd, Suslov, and Ionescu.
We reverse the rejection of claims 22 and 23 under 35 U.S.C. § 103
over Mudd, Suslov, and Klappert.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 –3, 5 – 12,
14 – 23
103 Mudd, Suslov 19, 20 1 –3, 5 – 12,
14 – 18, 21
9, 18 103 Mudd, Suslov,
Ionescu
9, 18
22, 23 103 Mudd, Suslov,
Klappert
22, 23
Overall
Outcome
19, 20 1–3, 5–12,
14–18, 21–
23

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART