Ex Parte Soukup et al

Patent Trial and Appeal Board

Dec 16, 2015

12493620 (P.T.A.B. Dec. 16, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/493,620 0612912009
131442 7590 12/16/2015
RPX Clearinghouse, LLC
One Market Plaza, Steuart Tower
Suite 800
San Francisco, CA 94105
FIRST NAMED INVENTOR
Martin Soukup
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.
19143ROUS01U 9675
EXAMINER
TEKLE, DANIEL T
ART UNIT PAPER NUMBER
2481
MAILDATE DELIVERY MODE
12/16/2015 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 MARTIN SOUKUP and ROBERT KAPPLER
Appeal2014-001913
Application 12/493,620
Technology Center 2400
Before JEFFREY S. SMITH, DANIEL N. FISHMAN, and
KEVIN C. TROCK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-001913
Application 12/493,620
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-5 and 7--40. The Examiner has objected to claim 6 for
depending from a rejected base claim. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
Illustrative Claims
1. A method of distributing an audiovisual work
comprising an audio segment and a video segment, the method
compnsmg:
conveying a copy of the audiovisual work from a
distributor to a recipient, the copy comprising first data
containing the video segment of the audiovisual work, and
second data identifying a first audio work comprising a first
portion of the audio segment of the audiovisual work, the copy
of the audiovisual work not containing a copy of the first audio
\~1ork;
the recipient reading the second data to determine the
identity of the first audio work;
the recipient obtaining, separately from the conveying of
the copy of the audiovisual work, a copy of the first audio
work; and
the recipient playing back the video segment in
combination with the copy of the first audio work to reproduce
the audiovisual work.
30. A non-transitory medium bearing a copy of an
audiovisual work comprising first data containing a video
segment of the audiovisual work, and second data identifying a
first audio work comprising a first portion of an audio segment
of the audiovisual work, the copy of the audiovisual work not
containing a copy of the first audio work.
2
Appeal 2014-001913
Application 12/493,620
E'xaminer;s Rejection
Claims 1-5 and 7--40 stand rejected 1 under35 U.S.C. § 102(b) as
anticipated by Corbett (US 2008/0215494 Al; pub. Sept. 4, 2008).
ANALYSIS
Section 102 rejection of claims 1-5 and 7-29
Claim 1 recites "conveying a copy of an audiovisual work ...
comprising first data containing the video segment, and second data
identifying a first audio work." Appellants contend the Examiner relies on
two different embodiments of Corbett to show anticipation of claim 1. Br.
5-6. We agree with Appellants.
The first embodiment of Corbett teaches conveying data identifying a
first audio work, a recipient reading the data to determine the identity of the
audio work, and the recipient obtaining a copy of the audio work. See
Corbett i-fi-122-39. For example, an icon for a music track (i-f 32) conveyed to
a user identifies the track to a user. The user clicks an associated link to
obtain the actual music track (i-f 40). Although the icon of the first
embodiment conveys identifying data for the audio, the icon does not
include video data.
The second embodiment teaches processing an audiovisual work to
identify copyrighted music tracks and to negotiate a license for the music. If
a license for the copyrighted music is obtained, the audiovisual work can be
downloaded. Corbett i-fi-19, 41--43. However, the second embodiment does
1 Although pages 3 and 4 of the Examiner's Answer list claims 1-5 and 7-
39 as rejected under 35 U.S.C. § 102, page 12 of the Answer includes an
analysis of how Corbett anticipates claim 40, which Appellants have not
rebutted.
3
Appeal 2014-001913
Application 12/493,620
not convey the video portion separately from the corresponding audio
portion.
Although one embodiment of Corbett teaches conveying "data
identifying a first audio work," and another embodiment teaches obtaining a
copyright for an audio work contained in an audiovisual file before
downloading, or "conveying," the audiovisual file, the Examiner has not
persuasively explained how either embodiment alone discloses conveying
video data together with data identifying an audio work. See Ans. 5, 13.
The difference between the first embodiment of Corbett and claim 1 is
that the icon of the first embodiment identifying an audio work does not also
contain video data, such as the video data of the second embodiment. "But
differences between the prior art reference and a claimed invention, however
slight, invoke the question of obviousness, not anticipation." Net MoneyIN,
Inc., v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). "Thus, it is not
enough that the prior art reference ... includes multiple, distinct teachings
that the artisan might somehow combine to achieve the claimed invention.
The prior art reference must clearly and unequivocally disclose the claimed
invention or direct those skilled in the art to the invention without any need
for picking, choosing, and combining various disclosures not directly related
to each other by the teachings of the cited reference." Id. (internal citations
omitted).
We do not sustain2 the rejection of claim 1 and dependent claims 2-5
and 7-15 under 35 U.S.C. § 102. Claim 16 contains a limitation similar to
2 In the event of further prosecution, the Examiner should consider whether
separating a video segment from an audio segment of an audiovisual file
(such as suggested by Figure 5 of Takagi US 2003/0085997 Al cited by
4
Appeal 2014-001913
Application 12/493,620
that found in claim 1 for which the rejection fails. We do not sustain the
rejection of claim 16 and dependent claims 17-29 under 35 U.S.C. § 102.
Section 102 rejection of claims 3{}-40
Claim construction is an issue of law that we review de novo. Cordis
Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009). Our
reviewing court has held that nonfunctional descriptive material cannot lend
patentability to an invention that would have otherwise been anticipated by
the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability).
King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
("[T]he relevant question is whether 'there exists any new and unobvious
functional relationship between the printed matter and the substrate."')
(citations omitted).
Appellants contend the novel limitation of claim 30 is a medium
storing a copy of an audiovisual work including "data identifying a first
audio work" and "not containing a copy of the first audio work." Br. 5.
What the claimed "data" identifies does not affect any method steps or
structural limitations of claim 30. In particular, Appellants have not shown
any new and unobvious functional relationship between the stored data and
Appellants) was within the level of ordinary skill in the art at the time of
invention. The Examiner should also consider whether adding the separated
video segment of the file to an icon including the audio identification data of
the file as taught by Corbett does anything more than yield the predictable
result of an icon containing video data and audio identification data.
5
Appeal 2014-001913
Application 12/493,620
the medium. The stored data is therefore non-functional descriptive material
that does not distinguish the claim from the prior art in terms of
patentability. Our reviewing court has held an applicant cannot create a
novel product by attaching printed matter to it, unless the printed matter
forms a new and unobvious functional relationship with the substrate. See,
e.g., Ngai. Here, the scope of claim 30 encompasses storing first and second
data on a non-transitory medium as disclosed by Corbett.
We sustain the rejection of claim 30 under 35 U.S.C. § 102.
Appellants do not present arguments for separate patentability of claims 3 1-
40, which fall with claim 30.
DECISION
The rejection of claims 1-5 and 7-29 under 35 U.S.C. § 102(b) is
reversed.
The rejection of claims 30-40 under 35 U.S.C. § 102(b) is affirmed.
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
Klh
6