11519995 (P.T.A.B. Jul. 21, 2014)

Ex Parte Suitts et al

Patent Trial and Appeal BoardJul 21, 2014

11519995 (P.T.A.B. Jul. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JASON ROBERT SUITTS, JAMES FELIX BLACK, JONATHAN JAMES CURREY, and MAX MULLER III ____________ Appeal 2011-009929 Application 11/519,995 Technology Center 2100 ____________ Before JOSEPH F. RUGGIERO, CAROLYN D. THOMAS, and DANIEL N. FISHMAN, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner finally rejecting claims 1, 2, 5-17, 19, and 22-25, all the claims pending in the application. Claims 3, 4, 18, 20, and 21 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-009929 Application 11/519,995 2 STATEMENT OF THE CASE The present invention relates generally to the processing of a plurality of data files using a metadata file to provide a downloadable digital media content asset. See Abstract. Claim 1 is illustrative: 1. A method of providing digital media content, comprising: receiving from a media content provider a metadata file and a plurality of data files associated with a digital media content that the media content provider desires to make available for download by one or more end users; and using the metadata file to process the plurality of data files without human intervention to produce prior to download time a downloadable digital media content asset; wherein the metadata file specifies for each of at least a subset of the plurality of data files how that data file is to be used prior to download time to create prior to download time the downloadable digital media content asset; the metadata file is associated with the digital media content and not with any specific one of said end users; and wherein processing the plurality of data files includes combining together prior to download time at least a portion of each of said at least a subset of the plurality of data files, in a manner indicated by the metadata file, to produce the downloadable digital media content asset; and further comprising making the downloadable digital media content asset available for download by consumers; and wherein the plurality of data files includes a chaptering metadata file that identifies a plurality of chapters comprising the file downloadable digital media content asset and for each chapter a corresponding portion of the digital media content and one or both of an image and a video clip representative of said corresponding portion of the digital media content, and Appeal 2011-009929 Application 11/519,995 3 wherein said chaptering data is parsed and used to generate automatically and without human intervention a chapter menu data for the downloadable digital media content asset. Appellants appeal the following rejections:1 R1. Claims 1, 2, 5, 6, 8-17, 19, and 22-25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Blankinship (US 2006/0149781 A1, July 6, 2006) in view of Haberman (US 2007/0130007 A1, June 7, 2007); and R2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Blankinship, Haberman, and Lakamp (US 2007/0067340 A1, Mar. 22, 2007). We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to the Appellants’ arguments. We concur with Appellants’ conclusion the Examiner erred in finding that the combination of the references teaches or suggests an image and/or a video clip representative of a corresponding chapter portion of the digital media content. As identified by Appellants, “the examples described by Blankinship do not indicate any images or video clips specified by the media content provider to be used to represent the respective chapters. Instead, text (not image or video) is ‘extracted’ from closed caption information to ‘label’ 1 The Examiner objected to claim 24 (see Ans. 3). This relates to a petitionable issue and not an appealable issue. See In re Schneider, 481 F.2d 1350, 1356-57 (CCPA 1973) and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). Accordingly, we will not consider the objection to claim 24. Appeal 2011-009929 Application 11/519,995 4 segments . . .” (App. Br. 8)(see also Reply Br. 2-3). Specifically, Blankinship discloses that “[b]oth work file 603 and media file 607 have been segmented and the segments have been associated with labels . . . . In work file 603 . . . the labels may be text from the page or chapter and section headings. In media file 607 . . . labels may be parts of the closed captions . . .” (¶ [0058]). In other words, Blankinship marks the media segments, arguably the claimed chapters, with text labels instead of with an image and/or video clip, as required by the claims. The Examiner fails to address this specific argument in the Response to Argument section of the Answer. Instead, the Examiner merely states that in Blankinship “the closed caption chaptering metadata file identifies a plurality of chapters corresponding to associated digital media content and video clip by parsing the data to derive a menu of chapters” (Ans. 17). Even if we assume arguendo (without deciding) that Blankinship’s parsing of closed captioning creates chapters (as proffered by the Examiner), we do not find, and the Examiner has not established, that each chapter has an associated image and/or video clip representing the same, as required by the claims. Thus, we disagree with the Examiner’s finding that Blankinship teaches the aforementioned limitation, as recited in each of the independent claims. The Examiner also has not found that any of the other references of record teach this feature. Accordingly, we will not sustain the Examiner’s obviousness rejection of claims 1, 2, 5-17, 19, and 22-25. Appeal 2011-009929 Application 11/519,995 5 DECISION The decision of the Examiner to reject claims 1, 2, 5-17, 19, and 22- 25 is reversed. REVERSED2 tj 2 In the event of further prosecution, we leave it to the Examiner to consider if the computer readable storage medium claim, claim 23, should also be rejected under 35 U.S.C. § 101. The ordinary and customary meaning of “computer readable storage medium” to a person of ordinary skill in the art is broad enough to encompass both non-transitory and transitory media. Signals are not patentable eligible subject matter under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also MPEP § 2106(I) (8th ed. Rev. 9 Aug. 2012) and Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential).