Ex Parte Eyal et al

Patent Trial and Appeal Board

Aug 18, 2016

11950301 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111950,301 12/04/2007
37123 7590 08/18/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
AvivEyal
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.
86481 [50W8718.04] 6286
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2427
MAILDATE DELIVERY MODE
08/18/2016 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 A VIV EY AL, PIERS HAKEN,
DAVID CHARLES ALEXANDER HODGSON, and
STEVEN HAZEL
Appeal2014-009454
Application 11/950,301
Technology Center 2400
Before MICHAEL J. STRAUSS, JON M. JURGOV AN, and
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009454
Application 11/950,301
STATE~v1ENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-5 and 8-19. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claims are directed to a video sharing platform providing for
posting content to other websites. Spec., Title. Claim 1, reproduced below
with a disputed limitation emphasized in italics, is illustrative of the claimed
subject matter:
1. A method for use in providing content, comprising:
hosting a network site on a computer network;
providing, through the network site, means to allow one or
more users to upload video over the network, wherein the
providing the means to allow the one or more users to upload
video over the network comprises providing video creating tool
configured to allow the combining of media including digital
photos into the uploaded video through a one click application
that in response to the one click opens the video creating tool and
immediately begin downloading;
creating one or more thumbnail still images from the
uploaded video;
creating an on-demand video clip based on the uploaded
video data;
displaying on the network site links to one or more videos
uploaded over the network;
providing, through the network site, an option to be
activated by a user of the one or more users accessing the
network site to initiate a download to the user's client device of a
selected one of the videos in pieces from two or more computers
on the network;
forwarding from the network site routability information
corresponding to the selected one of the videos such that a client
software application operating on the client device determines
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Application 11/950,301
routable sources and selects sources from which the pieces of the
video are acquired;
displaying on the network site a tool activated by the user
for searching through the one or more videos;
displaying on the network site a result of a search through
the one or more videos, where the search identifies a plurality of
videos of the one or more videos;
displaying on the network site an option to be activated by
the user to create a film strip widget that is representative of the
result of the search, wherein the film strip widget includes
display of the still images for the corresponding plurality of
videos and a command to start an on-demand playback of the
created on-demand video clip for any video included in the film
strip;
displaying on the network site an option to create a first
RSS (really simple syndication) feed corresponding to a search
term;
subscribing the user to the created first RSS feed;
identifying when new video is shared that corresponds to
the search term;
including the new video in the first RS S feed;
identifying the user as being subscribed to the first RSS
feed;
notifying the user, in response to the including the new
video in the first RSS feed and identifying the user as being
subscribed to the first RSS feed, when the new video is available;
and
posting the film strip widget that is representative of the
result of the search to a different network site in response to the
option being selected.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Leber
Turner
US 2003/0233455 Al
US 2004/0048186 Al
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Dec. 18, 2003
Mar. 11, 2004
Appeal2014-009454
Application 11/950,301
~vfayer
Liwerant
Fenton
Altennan
Volk
Brahmbhatt
Diab
Butterfield
Nussey
Robinson
Bach et
Trest
US 2005/0157753 Al
US 2005/0246752 Al
US 6,976,028 B2
US 2006/0048186 Al
US 2006/0129917 Al
US 2006/0218222 Al
US 2006/0230021 Al
US 2006/0242178 Al
US 2007 /0094391 Al
US 2008/0222295 Al
US 2009/0300673 Al
US 2010/0169195 Al
REJECTIONS
July 21, 2005
Nov. 3, 2005
Dec. 13, 2005
Mar. 2, 2006
June 15, 2006
Sept. 28, 2006
Oct. 12, 2006
Oct. 26, 2006
Apr. 26, 2007
Sept. 11, 2008
Dec. 3, 2009
July 1, 2010
The Examiner made the following rejections:
Claims 1, 2, 8-12, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Robinson, Volk, Leber, Alterman, Liwerant, and
Bachet. Ans. 2-5, Final Act. 3-8.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Robinson, Volk, Leber, Alterman, Bachet, Liwerant, and
Trest. Ans. 5, Final Act. 9-10.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Robinson, Volk, Leber, Alterman, Bachet, and Liwerant.
Ans. 6, Final Act. 10.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Robinson, Volk, Leber, Nussey, Liwerant. Ans. 6-9,
Final Act. 10-13.
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Application 11/950,301
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Robinson, Volk, Leber, Alterman, Bachet, Liwerant,
Fenton, and Mayer. Ans. 9, Final Act. 13-14. 1
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Robinson, Volk, Leber, Alterman, Bachet, Liwerant,
Fenton, Brahmbhatt, and Mayer. Ans. 9-10, Final Act. 14--16. 2
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Robinson, Volk, Leber, Alterman, Bachet, Liwerant, and
Butterfield. Ans. 10-11, Final Act. 16-17. 3
APPELLANTS' CONTENTION4
"Liwerant ... merely allows a viewer ... to access [a] previously
recorded video segment" but fails to teach or suggest "a video creating tool
configured to allow combining of media through a one click application as
claimed." App. Br. 8.
1 As recognized by Appellants (App. Br. 19-21 ), in the Final Rejection the
Examiner mistakenly omitted Backet and/or Liwerant (i.e., references
applied in rejecting base claim 1) from the listing of references applied in
rejecting dependent claims 13-16 (Final Act. 13-17.) Because dependent
claims 13-16 were rejected "as in claim 1 and further in view of [additional
references]" (id.) and the omitted references were included in restatements
of the rejection appearing in the Answer at pages 9-11, we find the error
harmless.
2 See fn. 1.
3 Id.
4 We note Appellants raise additional contentions of error, but we do not
reach them as our resolution of this contention is dispositive of the appealed
rejections under 35 U.S.C. § 103(a).
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Application 11/950,301
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred in rejecting independent claims 1-5 and
8-19 under 35 U.S.C. § 103(a). We agree with Appellants' conclusions as to
this rejection of the claims.
The Examiner finds Liwerant teaches the video creation tool required
by the disputed limitation of claim 1. Final Act. 6. In response to
Appellants' traversal of that finding (App. Br. 7-9), the Examiner finds
Liwerant's Abstract "describes that a user can create a video segment or
employ an existing video segment and then share it over a computer
network." Ans. 3. The Examiner further finds at paragraphs 37 and 38
Liwerant discloses
Id.
detail about of a video created by a viewer and sending an
embedded link to a URL or by sending a still image that may
have some interest to a viewer, the still image (photo) the user
is able to click the picture and view streaming video of video
that is delivered and that plays when the still image is clicked,
therefore examiner believes that either clicking on this url or on
this still image, teaches the limitation of a video creating tool
that allows the combining of media including digital photos into
the uploaded video through a one click application that in
response to the one click opens the video creating tool and
immediately begin downloading, the video segment is delivered
and the user is able to play.
We find Appellants' argument persuasive of Examiner error. In
particular, Liwerant fails to disclose details of how a video is created and,
specifically, the combining of media including digital photos. Although
Liwerant describes producing a video (Liwerant i-f 3 8), there is no
description of what the producing step includes. Furthermore, Liwerant's
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Application 11/950,301
still image used to select an uploaded video is neither described as being
combined into the uploaded video nor does it include photos, plural, as
required by claim 1. Still further it is not clear that Liwerant teaches or
suggests both opening the video creating tool and immediately beginning
downloading in response to a one click application. Therefore, on the record
before us, we cannot sustain the Examiner's rejection of independent claim 1
and, for the same reason, the rejection of independent claim 4 under 35
U.S.C. § 103(a) together with the rejection of dependent claims 2, 3, 5 and
8-19.
We note, in an ex parte appeal, the Board "is basically a board of
review-we review ... rejections made by patent examiners." Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). "The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner ... invite[s]
the [B]oard to examine the application and resolve patentability in the first
instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Because
we are a board of review, and not a place of initial examination, we will not
engage in the de nova examination required to supplement the Examiner's
findings in connection with the requirement for providing a video creating
tool configured to allow the combining of media including digital photos
into the uploaded video through a one click application that, in response to
one click, opens the video creating tool and immediately begin downloading.
Thus, we express no opinion as to whether independent claim 1 would be
obvious over Robinson, Volk, Leber, Alterman, Liwerant, and Bachet if
supported by additional explanation and/or references. We leave any such
further consideration to the Examiner. Although the Board is authorized to
reject claims under 37 C.F.R. § 41.50(b ), no inference should be drawn when
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Application 11/950,301
the Board elects not to do so. See lvfanual of Patent Exarnining Procedure
(MPEP) § 1213.02 (9th Ed., Mar. 2014).
Furthermore, our decision is limited to the findings before us for
review. The Board does not "allow" claims of an application and cannot
direct an Examiner to pass an application to issuance. Rather, the Board's
primary role is to review adverse decisions of examiners including the
findings and conclusions made by the Examiner. See 37 C.F.R.
§ 41.50(a)(l) ("The Board, in its decision, may affirm or reverse the decision
of the examiner in whole or in part on the grounds and on the claims
specified by the examiner").
DECISION
The Examiner's decision to reject claims 1-5 and 8-19 is reversed.
REVERSED
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