Ex Parte Bennett

Patent Trial and Appeal Board

Jun 17, 2016

12482586 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/482,586 06/11/2009 James D. Bennett
34399 7590 06/21/2016
GARLICK & MARKISON
Melanie Murdock
P.O. BOX 160727
AUSTIN, TX 78716-0727
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.
CWROOl 7454
EXAMINER
CHANNA V AJJALA, SRIRAMA T
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
MMurdock@TEXASPATENTS.COM
ghmptocor@texaspatents.com
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES D. BENNETT
Appeal2014-009603
Application 12/482,586
Technology Center 2100
Before JEFFREYS. SMITH, JON M. JURGOV AN, and ADAM J.
PYONIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009603
Application 12/482,586
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 31-33, 35, 37--45, 48-54, and 57-59, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
Representative Claim
41. A web search infrastructure supporting a plurality of creative
video works owners, the web search infrastructure comprising:
a first communication interface through which the plurality of creative
video works owners can register their plurality of creative video works;
a first processing infrastructure that obtains first data associated with a
plurality of hosted video content from at least one of a plurality of web
hosting servers via a search engine crawling process, the search engine
cra\'V1ing process includes identifying the hosted video content from at least
one of a plurality of web hosting servers responsible for hosting the hosted
video content;
a second processing infrastructure that identifies matches between the
first data and second data associated with the registrations by each of the
plurality of creative video works owners;
the second processing infrastructure via the first communication
interface supports visual presentations for each of the plurality of creative
video works owners regarding information associated with the matches, the
second processing infrastructure enables each of the plurality of creative
video works owners to authorize communications regarding the matches to a
selected portion of the web hosting servers responsible for hosting a selected
subset of hosted video content, wherein the visual presentations include an
area of work identifier; and
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Application 12/482,586
the second processing infrastructure, via the first communication
interface, supports communication regarding at least a portion of the
information associated with the matches only with the selected portion of
web hosting servers.
Abajian
Brock
Prior Art
US 2003/0061490 Al
US 2008/0059461 Al
Mar. 27, 2003
Mar. 6, 2008
Examiner's Rejections
Claims 50-54 and 57-59 stand rejected under 35 U.S.C. § 112, first
paragraph for failing to satisfy the written description requirement.
Claims 41--43, 45, 48-52, 54, and 57-59 stand rejected under
35 U.S.C. § 102(a) as anticipated by Brock.
Claims 31-33, 35, 37--40, 44, and 53 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brock and Abajian.
ANALYSIS
Section 112,first paragraph rejection of claims 50--54 and 57-59
Claim 50 recites an interface that "supports communication ... with
only the portion of the plurality of web hosting servers configured, prior to
initiation of the search engine crawling process." The Examiner finds that
communicating "only" with servers configured prior to crawling is not
supported by Appellant's Specification as originally filed. Ans. 2.
Appellant contends Appellant's Specification as originally filed discloses
servers do not perform search crawling until after the user configures the
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Appeal2014-009603
Application 12/482,586
billing agreement, and do not report to third parties unless an additional fee
is paid. App. Br. 9-10.
We agree with Appellant. We do not sustain the rejection of claims
50-54 and 57-59 under 35 U.S.C. § 112, first paragraph.
Section 102 rejection of claims 41-43, 45, and 48
Claim 41 recites "the visual presentations include an area of work
identifier." Paragraphs 131 and 132 of Brock disclose a graphical user
interface that groups and displays content into categories using folders or
tags. Appellant contends the user interface that shows folders for categories
of content as disclosed by Brock does not describe the claimed area of work
identifier. Reply Br. 3.
Page 24, lines 19-20 of Appellant's Specification discloses an area of
work for an image may be one of several categories of images, such as
photographs, art works, paintings, or cartoon pictures. Page 27, lines 9-11
of Appellant's Specification discloses the area of work for music content
may be content belonging to various categories of music, such as country or
rock; and for video content, may be content belonging to various categories
of video works, such as motion pictures or personal videos. The claim term
"an area of work identifier," when read in light of Appellant's Specification,
encompasses categories of content as disclosed by Brock.
We sustain the rejection of claim 41under35 U.S.C. § 102.
Appellant does not provide arguments for separate patentability of claims
42, 43, 45, and 48, which fall with claim 41.
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Application 12/482,586
Section 102 rejection of claims 50-52, 54, and 57
Claim 50 recites "web hosting servers configured, prior to initiation of
the search engine crawling process, to respond to matches associated with
the second data." Appellant contends sending notifications to users does not
disclose limiting notifications to the claimed subset of web hosting servers.
Reply Br. 4. The Examiner finds the servers of Brock are configured with
usage rules prior to web crawling, which determine the response of the
servers when a match occurs. Ans. 3--4 (citing Brock Fig. 2A; i-fi-177-78).
Appellant contends paragraph 45 of Brock does not mention the usage rules
are configured on "web hosting servers." App. Br. 12.
Although paragraph 45 of Brock discloses configuring usage rules for
performing a web crawling process, without using the words "web hosting
server," the content monitoring system of Brock that performs the web
crawling process implements the process using servers. Paragraph 77 of
Brock discloses that depending on configuration settings, various types of
communication may be sent to the content user. Although paragraph 77
does not explicitly say that the communication is sent to the user from "web
hosting servers," the system disclosed by Brock describes servers configured
to send the communication. Further, paragraph 78 of Brock discloses
configuring an engagement communication to be sent to content users.
Appellant has not persuasively distinguished "web hosting servers
configured, prior to initiation of the search engine crawling process, to
respond to matches associated with the second data" from the responses
based on the usage rules and other configuration settings disclosed in
paragraphs 45, 77, and 78 of Brock.
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Application 12/482,586
We sustain the rejection of claim 50 under 35 U.S.C. § 102.
Appellant does not provide arguments for separate patentability of claims
51, 52, 54, and 57, which fall with claim 50. See App. Br. 14.
Section 102 rejection of claims 49, 58, and 59
Claim 49 recites "converting each of the plurality of creative video
works and each of the plurality of hosted video content to a predetermined
format." The Examiner finds generating a digital signature from content as
disclosed by Brock describes converting content to a predetermined format,
because the signature contains features of the content and represents the
content. Ans. 4 (citing Brock i-fi-134, 35, 51, 54). Appellant contends the
fingerprint is not a form, arrangement, or type of video work, and thus not a
format as claimed. Reply Br. 4.
We agree with Appellant. The fingerprint disclosed by paragraph 51
of Brock is generated by extracting and processing a small amount of data or
metadata from the content. The fingerprint is not the content in another
format. For example, a fingerprint for text content, created from a word
histogram of the text content (Brock i1 51 ), is not another format of the text
content.
The Examiner also finds converting from one format to another is
within the level of ordinary skill as taught by Yagnik (US 8,094,872 B 1 ).
Ans. 5. However, the rejection of claim 49 is one of anticipation by Brock;
the Examiner does not reject claim 49 as obvious over the combined
teachings of Brock and Yagnik. The Examiner's findings about the level of
ordinary skill taught by Y agnik are irrelevant to whether Brock alone
anticipates claim 49, so we do not address these findings. We address the
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Application 12/482,586
102 rejection entered by the Examiner and hold that Brock alone does not
anticipate claim 49. Claim 58 contains a limitation similar to that recited in
claim 49 for which the rejection fails.
We do not sustain the rejection of claims 49 and 58 under 35 U.S.C.
§ 102, as well as claim 59 which depends from claim 58.
Section 103 rejection of claims 31-33, 35, 37, 38, 44, and 53
Appellant contends the combination of Brock and Abajian does not
teach "an area of work identifier" as recited in claim 31. App. Br. 15. We
disagree for the reasons given in our analysis of claim 41.
We sustain the rejection of claim 31under35 U.S.C. § 103.
Appellant does not present arguments for separate patentability of claims 32,
33, 35, 37, 38, 44, and 53, which fall with claim 31.
Section 103 rejection of claims 39 and 40
Claim 39 recites "converting ... to a predetermined format." The
Examiner relies on the fingerprint disclosed by Brock to teach the claimed
converting. Final Act. 15. We do not agree with the Examiner for the
reasons given in our analysis of claim 49.
We do not sustain the rejection of claim 39 under 35 U.S.C. § 103, or
claim 40 which depends therefrom.
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Application 12/482,586
DECISION
The rejection of claims 50-54 and 57-59 under 35 U.S.C. § 112, first
paragraph for failing to satisfy the written description requirement is
reversed.
The rejection of claims 41--43, 45, 48, 50-52, 54, and 57 under 35
U.S.C. § 102(a) as anticipated by Brock is affirmed.
The rejection of claims 49, 58, and 59 under 35 U.S.C. § 102(a) is
reversed.
The rejection of claims 31-33, 35, 37, 38, 44, and 53 under 35 U.S.C.
§ 103(a) as unpatentable over Brock and Abajian is affirmed.
The rejection of claims 39 and 40 under 35 U.S.C. § 103(a) as
unpatentable over Brock and Abajian is reversed.
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(±).
AFFIRMED-IN-PART
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