Ex Parte Canora et al

Patent Trial and Appeal Board

Jun 21, 2016

12206922 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/206,922 09/09/2008 David Canara
77755 7590 06/21/2016
DISNEY ENTERPRISES, INC.
c/o Ference & Associates LLC
409 Broad Street
Pittsburgh, PA 15143
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.
07DIS203PRUSUTL
820.069
EXAMINER
ZHAO, YU
9750
ART UNIT PAPER NUMBER
2169
MAILDATE DELIVERY MODE
06/21/2016 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 DAVID CANORA, MICHAEL COLGLAZIER,
MICHAEL J. GOMES, BETH PATTERSON,
and ROBERT A. SWIRSKY
Appeal2015-000041
Application 12/206,922
Technology Center 2100
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000041
Application 12/206,922
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from an Examiner's Final
Rejection of claims 1-23. App. Br. 17. We have jurisdiction under 35
U.S.C. § 6(b).
Exemplary Claims
Claims 1 and 10 under appeal read as follows (emphasis added):
1. A method for automating the creation of a customized media
product, comprising:
obtaining media content comprising first metadata associated
with the media content, the media content being selected by a user;
reviewing the media content and the first metadata to determine
second metadata to further describe the media content;
responsive to the reviewing, adding predefined content to the
media content, the predefined content added being based on the user
selection of the media content;
applying at least one set of rules to the media content and the
predefined content to generate a script; and
generating the customized media product based on the script.
10. A system for automating the creation of a customized
media product, comprising:
an input element that receives media content comprising first
metadata associated with the media content, the media content being
selected by a user;
a review entity that reviews the media content and the first
metadata to determine second metadata to further describe the media
content;
a predefined content store;
a scripting engine that applies at least one set of rules to the
media content and the predefined content to generate a script; and
a rendering engine that adds predefined content to the media
content to generate the customized media product based on the script.
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Rejections
1. The Examiner rejected claims 1--4, 8, 10-13, 17, and 19-22 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Kellock et
al. (US 2004/0027369 Al, Feb. 12, 2004), Shaffer et al. (US 2001/0041020
Al, Nov. 15, 2001), and White et al. (US 2004/0120009 Al, June 24,
2004). 1
3. The Examiner rejected claim 5-7 and 14--16 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kellock, Shaffer,
White, and Conning (US 2004/0250205 Al, Dec. 9, 2004).2
4. The Examiner rejected claim 9, 18, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kellock, Shaffer,
White, and Ward et al (US 2004/0249859 Al, Dec. 9, 2004). 3
1 Separate patentability is not argued for claims 3, 4, 10-13, 17, 19, and 22.
As to claims 2, and 21, although argued separately, we do not reach that
argument as our decision as to claim 1 is determinative. Although not
argued separately, we address claim 10 separately as numerous arguments
directed to claim 1, are not applicable to claim 10. We address claim 11
separately for similar reasons. Except for our ultimate decision, claims 2--4,
12, 13, 17, 19, 21, and 22 are not discussed further herein. We address
claims 1, 10, 11, and 20 separately.
2 Separate patentability is not argued for claims 5-7 and 14--16. Except for
our ultimate decision, these claims are not discussed further herein.
3 Although claims 9 and 23 are argued separately, we do not reach that
argument as our decision as to claim 1 is determinative. Except for our
ultimate decision, these claims are not discussed further herein. We address
claim 18 separately.
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Appellants' Contentions4
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Applicant respectfully submits that the combined
references do not teach or suggest "obtaining media content
comprising first metadata associated with the media content, the
media content being selected by a user ... responsive to the
reviewing, adding predefined content to the media content, the
predefined content added being based on the user selection of
the media content". Claim 1. The Office admits that "Kellock
and Shaffer do not explicitly disclose adding predefined content
to the media content, the predefined content being based on
user input". Final Office Action, p. 12. Applicant agrees. The
Office nonetheless turns to White for this teaching and alleges
that combination of White, Shaffer and Kellock accounts for
this claimed limitation, and moreover that it would have been
obvious to make such a combination. Applicant respectfully
disagrees, as follows.
App. Br. 18.
Kellock does not teach Applicant's claimed limitations; i.e.;
"responsive to the reviewing, adding predefined content to the
media content, the predefined content added being based on the
user selection of the media content", Claim 1, is that Kellock's
entire aim is to edit the input content, not add media to it, and
particularly does not teach adding predefined content in view of
the user's selection of media content.
App. Br. 19.
4 As contentions 1 and 2 herein are determinative as to claims 1 and 19 (and
their dependent claims), we do not address additional arguments as they
relate to these claims. However, arguments 1 and 2 are not determinative as
to claim 10 as it does not include the argued limitations. For these reasons,
we treat contentions 3-5 herein only as they relate to claim 10 and its
dependent claims.
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2. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Applicant respectfully submits that . . . the references
themselves teach away from the combination proposed by the
Office.
Specifically, Applicant respectfully submits that Kellock
cannot be modified to teach or suggest "adding predefined
content to the media content, the predefined content being
based on user input". Claim 1. In particular this is because
Kellock rather teaches use of system generated content without
reference to the input media. Kellock at [0053] (stating: "The
output production may also include material generated by the
system without reference to the input material, such as colors
and textures used as backgrounds, static and animated graphical
elements, etc."). Applicant respectfully submits that this is an
important distinction, not accounted for by the Office, in that
the MSG, content descriptors, etc., cited by the Office as
allegedly relevant to certain claimed elements, are never
applied to the system generated content, as taught by Kellock.
App. Br. 18-19, emphasis added.
3. Appellants contend that the Examiner erred in rejecting claim 10
under 35 U.S.C. § 103(a) because:
Applicant respectfully submits that one could not modify
Kellock with White as suggested by the Office because this
would change Kellock's principle of operation .... The Office
attempts to combine Kellock with Shaffer and White, alleging
that one would modify Kellock in this way "because it would
provide Kellock and Shaffer's method with the enhanced
capability of 'a user can outline the desired subject from a
particular image' ... and providing [sic] a selection member for
selecting one of the candidate templates". Final Office Action,
p. 16 (emphasis added).
This seems to explicitly conflict with Kellock's prime
goal, to wit, to improve conventional non-linear editors in
which "the user makes all the decisions" with one which
"creates an output product automatically by making the
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decisions itself". In other words, the Otlice appears to suggest
modifying Kellock' s automated system which "creates an
output product automatically by making the decisions itself' by
requiring user selections to add the predefined content as part of
the editing process. Final Office Action, p. 7. This changes the
principle of operation of Kellock by including user selections in
the editing process and is therefore an invalid modification.
App. Br. 20.
4. Appellants contend that the Examiner erred in rejecting claim 10
under 35 U.S.C. § 103(a) because:
Additionally, Applicant respectfully submits that while
the Office has quoted extensively quoted from the references,
noticeably lacking is any explanation as to why one of ordinary
skill would, e.g., change Kellock's automated non-linear editor
with the teachings of White and Shaffer requiring user
selections. The Office cites to White at [0006] as a potential
motivation. White at paragraph [0006] states in its entirety
"Accordingly, there exists a need for an automated method for
generating an image of a detected object". White at [0006].
Applicant respectfully does not think that this qualifies as a
valid motivation to combine. The Office further cites to White
at paragraph [0013] as a potential motivation. Again, Applicant
respectfully submits that White at [0013] simply states that a
user may select various media and templates, i.e., the very thing
Kellock attempts to avoid. Applicant respectfully does not think
this qualifies as a valid motivation to combine.
App. Br. 20-21.
5. Appellants contend that the Examiner erred in rejecting claim 10
under 35 U.S.C. § 103(a) because:
As the Office points out, Kellock teaches using "style
information [302] and media descriptions ... to make a set of
edit decisions". Final Office Action, p. 7. Applicant respectfully
submits that neither the "style information" nor the "media
descriptions" includes the "predefined content", as claimed,
such that Kellock cannot be understood to mean that "the media
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content and the predefined content" are used "to generate a
script". Claim 1.
App. Br. 22.
6. Appellants contend that the Examiner erred in rejecting claim 11
under 35 U.S.C. § 103(a) because:
Applicant again respectfully notes that this teaching regarding
user intervention in Kellock is precisely linked to "a pre-
selection stage prior to the automatic construction process" and
"a touch-up stage after construction" because one of Kellock's
goals is to reduce user involvement "to the point where in some
cases acceptable results can be produced without any user
intervention." Kellock at [0010]. Again, given these teachings
of Kellock, Applicant cannot agree that it would have been
obvious to interpret Kellock's teachings as "associating
additional media content and third metadata to generate the
customized media product, the additional media content and the
third metadata being user selectable." Claim 2.
App. Br. 23.
7. Appellants contend that the Examiner erred in rejecting claim 11
under 35 U.S.C. § 103(a) because:
[W]hile the Office has again extensively quoted from Kellock
in an attempt to account for "additional media content",
Applicant respectfully submits all such quotations are properly
construed simply as directed to "input content" and moreover
note that nowhere does the final Office action attempt to
construe or give meaning to "third metadata", which is
explicitly claimed. Id.
App. Br. 23.
8. Appellants contend that the Examiner erred in rejecting claim 18
under 35 U.S.C. § 103(a) because:
Kellock teaches away from providing manual steps and
specifically does not teach or suggest, even in combination with
Ward, Shaffer and White, that "the additional media content
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and third metadata are associated with the media content using
a manual process." Claim 9. Rather, Kellock strictly links user
intervention to pre- and post-processing and attempts to remove
user intervention entirely.
App. Br. 24, emphasis added.
9. Appellants contend that the Examiner erred in rejecting claim 20
under 35 U.S.C. § 103(a) because the rejection is not clear. Particularly:
By the process of deduction, the Office appears to allege
that Kellock ... [23 paragraphs cited by the Examiner] may be
collectively understood as teaching or suggesting, all in
combination with White (the exact combination not being
specified), everything in claim 20 except "to determine whether
to associate additional media content and third metadata to the
media content". Final Office Action, pp. 20 - 23. For this, the
Office appears to rely on Shaffer's teachings at [0027]. Id at
pp. 23-25.
App. Br. 25, emphasis added.
Issues on Appeal
Did the Examiner err in rejecting claims 1, 10, 11, 18, and 20 as being
obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
Appeal Brief arguments that the Examiner has erred.
As to Appellants' above contention 1, covering claims 1 and 19, we
agree. In response to Appellants' contention, the Examiner states:
Under the broadest reasonable interpretation, metadata is
embodied within the media file (e.g. image). An ordinary skill
in the art will understand that "image" refers to an image file
that comprises the image and the metadata about the image.
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Both image and metadata can be broadly interpreted as
"media content. "
Therefore, when user select an image file, it really means
user is selecting both image and metadata data about the image
(e.g. properties of the image file), and adding information to
metadata (e.g. part of the image file) can be broadly
interpreted as adding content to user's selection of media
content.
Ans. 8-9. We disagree. Appellants define the terms "media content" and
"metadata" as follows:
In the description to follow, the terms "media," "media
content" "content" "digital content" and "digital media
' ' '
content" refer to content that can have metadata associated
with it and that can be electronically stored. An example of
digital media content is a digital image file generated by a
digital still camera or by a digital video camera. Other types of
digital content, such as audio files, or other files are
contemplated.
The term "metadata" as used herein describes data that
can be stored with, appended to, or otherwise associated with
media content. A non-limiting example of metadata is the date
and time that a digital image is captured by a digital still
camera. Metadata is not limited to data that can be applied by
the device (in this example, the digital still camera) that
captures an image. Metadata can include data added to or
otherwise associated with media content after the content is
created and stored.
Spec. i-fi-f 17-18, emphasis added. While metadata can be appended to media
content, metadata is not part of the media content. We deem the Examiner's
construction of these terms to be unreasonably broad in light of Appellants'
definitions thereof.
As to Appellants' above contention 2 (covering claim 1 ), contention 6
(covering claim 11 ), and contention 8 (covering claim 19), we disagree.
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As to contention 2, Appellants argue that Kellock teaches away from
the combination "because Kellock rather teaches use of system generated
content without reference to the input media. Kellock at [0053]." App. Br.
19. We disagree. As the United States Court of Appeals for the Federal
Circuit has counseled:
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. . . . [I]n general, a reference will teach
away if it suggests that the line of development flowing from
the reference's disclosure is unlikely to be productive of the
result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Beyond repeatedly arguing
that Kellock teaches generated content "without reference" to the input
media/material, Appellants have not attempted to persuade us that as to the
argued limitation ("based on user input"), the Kellock reference suggests
that the line of development flowing from the reference's disclosure is
unlikely to be productive of the result sought by the Appellants. Contrary to
Appellants' argument, Kellock explicitly states:
The editing may include any one or more of the
following processes applied to the input material: segmentation
(of video/audio), selective inclusion, sequencing,
transformation and combination. These processes may
optionally be supplemented with user intervention. This is
supported at two stages: a pre-selection stage prior to the
automatic construction process and a touch-up stage after
construction.
Kellock i-f 17, emphasis added. Further, as correctly pointed out by the
Examiner (Ans. 5---6), Kellock at paragraph 53 uses the word "may" which is
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not preclusive of including material generated by the system with reference
to the input material.
As to similar contention 6, Appellants attempt to rigidly confine what
an artisan would glean from Kellock to solely user intervention precisely
linked to the "a pre-selection stage prior to the automatic construction
process" and "a touch-up stage after construction." We are unpersuaded by
Appellants' arguments. Appellants' argument would require us to treat the
artisan as lacking ordinary creativity. We decline to do so. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton."). We conclude that even in
the face of the argued Kellock goal to reduce user intervention, it would
have been obvious to an artisan that manual user intervention was still
available as an alternative at each step of the Kellock process.
As to similar contention 8, we reach the same result for the same
reasons.
As to Appellants' above contention 3, covering claim 10, we disagree.
Appellants' argued principle of operation argument is based on the same
false premise as Appellants' unsuccessful teaching away argument and fails
for the same reason. Contrary to Appellants argument, Kellock's principle
of operation is not restricted to creating an output product solely
automatically by making the decisions itself.
As to Appellants' above contention 4, covering claim 10, we disagree.
Appellants' argument is mistaken in arguing that a motivation is required.
Appellants overlook that in the Court's KSR decision (KSR, 550 U.S. at
398), the Court repudiated any requirement for such a "motivation" to show
obviousness. KSR, 550 U.S. at 415 ("We begin by rejecting the rigid
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approach of the Court of Appeals."). Rather, the requirement is only that the
Examiner show "the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains." KSR, 550 U.S. at 406 (quoting
35 U.S.C. § 103)(emphasis added); id. at 418 ("[T]he analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ."). As to claim 10, we
conclude that the Examiner provides just such a showing in the rejection
from which this appeal is taken. Final Act. 4--15, 19.
As to Appellants' above contention 5, covering claim 10, we disagree.
Contrary to Appellants argument, the issue before us is not whether
"Kellock can be understood to mean (i.e., can be understood to teach) that
the media content and the predefined content are used to generate a script,"
but rather, whether Kellock renders obvious using input content and
predefined content to generate a script. Kellock (i-f 45) teaches:
In this document the term "input material" is used to
mean one or more pieces of media which are presented as input
to the system. Supported media types include motion video, still
images, music, speech, sound effects, static or animated
graphics and static or animated text. The term "input visual
material" refers to input material of any visual type including
video, images, animation, graphics or text.
Kellock (i-f 53) teaches material (i.e., predefined content) can be generated to
be included in the output production. Kellock (i-f 53) also teaches the
generated material can be "colors and textures used as backgrounds, static
and animated graphical elements, etc." Kellock (i-fi-f 55-59) teaches input
material (i.e., media content) can be analyzed to produce plural descriptions.
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Kellock (if 92) teaches using style information and the plural descriptions "to
make a set of edit decisions which are stored in the MSG [305] and which
specify the output production."
Given Kellock teaches that input material in the form of graphics can
be processed to produce descriptions that are used in edit decisions, we
conclude it would have been obvious to similarly process generated material
in the form of graphical elements to be used in edit decisions.
As to Appellants' above contention 7, covering claim 11, we disagree.
We conclude that given media content and associated first metadata, the
inclusion of additional associated media content and additional metadata
would have been obvious to an artisan. This is particularly so in light of
Kellock teaching "'input material' is used to mean one or more pieces of
media which are presented as input to the system" (if 45) and "input
text/graphics may be overlaid onto the video" (if 52) (i.e., two associated
media content); and at least four associated forms of metadata (ifif 56-59).
As to Appellants' above contention 9, covering claim 20, we agree.
Although the Examiner cites and quotes 23 paragraphs of Kellock and
additional paragraphs of Schaff er and White, and even in light of our
discussion directly above of the obviousness of additional associated media
content and additional metadata, we conclude consistent with Appellants'
argument, there is insufficient articulated reasoning to support the
Examiner's conclusion of obviousness (Final Act. 20-25) for the claimed
"analyzing the media content, the first metadata, the second metadata and
the predefined content to determine whether to associate additional media
content and third metadata to the media content." Claim 20, emphasis
added. That various data items (i.e., content or metadata in numerous forms)
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have been shown to be known or obvious does not also make obvious,
without sufficient articulated reasoning, the process of analyzing some of
those data items to determine whether to associate other data items.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 10-18 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Appellants have established that the Examiner erred in rejecting
claims 1-9 and 19-23 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-9 and 19-23 have not been shown to be unpatentable.
( 4) Claims 10-18 are not patentable.
DECISION
The Examiner's rejections of claims 10-18 are affirmed.
The Examiner's rejections of claims 1-9 and 19-23 as being
unpatentable under 35 U.S.C. § 103(a) are reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART5
5 As the Examiner has shown that claims 10-18 are unpatentable, we do not
also reject Appellants' claims 10-18 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Although claim 10 recites "a predefined content store" which we
construe as a store location with a label (predefined content), for purposes of
the art rejection we have treated this as -a predefined content store for
storing predefined content-. Treating it otherwise leaves "the predefined
content" in the subsequent two lines without an antecedent basis.
Also, in the claim 10 limitation "a rendering engine that adds
predefined content" it is unclear if "predefined content" is -the predefined
content- of preceding lines or a -second predefined content-.
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