Google Inc.

Patent Trials and Appeals Board

Oct 28, 2021

2020005940 (P.T.A.B. Oct. 28, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/090,272 11/26/2013 Jason Toff 25832.228 (L0228) 1203
101198 7590 10/28/2021
LOWENSTEIN SANDLER LLP / Google
Patent Docket Administrator
One Lowenstein Drive
Roseland, NJ 07068
EXAMINER
MRABI, HASSAN
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
10/28/2021 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):
patents@lowenstein.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON TOFF, JOHN GREGG, RUSHABH ASHOK DOSHI,
ROBERT STEVEN GLICKSTEIN, and MOLLY CASTLE NIX
___________

Appeal 2020-005940
Application 14/090,272
Technology Center 2100
____________

Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and
CARL L. SILVERMAN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–19, which constitute all the claims pending in
this application. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to Applicant as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, the real party in interest is the Assignee,
Google LLC. Appeal Br. 3.
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Application 14/090,272

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STATEMENT OF THE CASE2
Disclosed embodiments of Appellant’s invention relate to
“collaborative video editing in a cloud environment.” Spec. 1.
Representative Claim
1. A method comprising:
providing, by a processing device, a first graphical user
interface (GUI) of a collaborative video project for presentation
on a first client device for a first user account in a plurality of
user accounts with which the collaborative video project is
shared, the first GUI having a plurality of areas comprising a first
personal video clip area, a first shared video clip area, and a first
project timeline area, wherein the first personal clip area is to
present a first set of one or more personal video clips that are
accessible to the first user account and not accessible to user
accounts other than the first user account, the first set of one or
more personal video clips including a first video clip;
receiving, from the first client device via the first GUI, a
first user input to share the first video clip for the collaborative
video project, wherein the first user input comprises a selection
of the first video clip in the first set of one or more personal video
clips within the first personal video clip area of the first GUI
presented for the first user account;
in response to receiving the first user input, providing an
updated first GUI of the collaborative video project for
presentation on the first client device for the first user account,
wherein the updated first GUI of the collaborative video project
includes an updated first shared video clip area, and wherein the
first video clip is to be presented in the updated first shared video
clip area and in the first personal video clip area of the updated
first GUI;

2 We herein refer to the Final Office Action, mailed October 4, 2019 (“Final
Act.”); Appeal Brief, filed March 2, 2020 (“Appeal Br.”); Examiner’s
Answer, mailed June 19, 2020 (“Ans.”); and the Reply Brief, filed August
18, 2020 (“Reply Br.”).
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providing, by the processing device, a second GUI of the
collaborative video project for presentation on a second client
device for a second user account in the plurality of user accounts,
the second GUI having a plurality of areas comprising a second
personal video clip area, a second shared video clip area, and a
second project timeline area, wherein the second shared video
clip area, which corresponds to the first shared video clip area of
the first GUI, is to present the first video clip, and wherein the
second project timeline area, which corresponds to the first
project timeline area of the first GUI, is to present a collaborative
video;
receiving, from the second client device via the second
GUI, a second user input to add the first video clip to the
collaborative video, wherein the second user input comprises a
selection of the first video clip in the second shared video clip
area of the second GUI presented for the second user account;
receiving, from the first client device via the first GUI, a
third user input to edit the first video clip, wherein the third user
input comprises a selection of the first video clip in the updated
first shared video clip area of the updated first GUI presented for
the first user account; and
in response to receiving the second user input, providing
an updated second GUI of the collaborative video project for
presentation on the second client device for the second user
account, wherein the updated second GUI of the collaborative
video project includes an updated second project timeline area,
and wherein the first video clip is to be presented in the updated
second project timeline area as a part of the collaborative video
and in the second shared video clip area of the updated second
GUI.
Appeal Br. 16–17 (Claims Appendix).
Rejection
Claims 1–19 are rejected under 35 U.S.C. § 103 as being unpatentable
over Lussier (US 2011/0026898 A1, Feb. 3, 2011) in view of Rodriguez (US
2012/0042251 A1, Feb. 16, 2012).
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Grouping of Claims
Based upon Appellant’s arguments, and our discretion under
37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the § 103 rejection of
claims 1–19 on the basis of representative claim 1.
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s obviousness rejection, and the Examiner’s responses to
Appellant’s arguments. On this record, Appellant does not proffer sufficient
argument or evidence to persuade us of error regarding the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness. In
our analysis below, we highlight and address specific findings and
arguments for emphasis.
Claim 1 recites, inter alia:
receiving, from the first client device via the first GUI, a
first user input to share the first video clip for the collaborative
video project, wherein the first user input comprises a selection
of the first video clip in the first set of one or more personal video
clips within the first personal video clip area of the first GUI
presented for the first user account;
in response to receiving the first user input, providing an
updated first GUI of the collaborative video project for
presentation on the first client device for the first user account,
wherein the updated first GUI of the collaborative video project
includes an updated first shared video clip area, and wherein the
first video clip is to be presented in the updated first shared video
clip area and in the first personal video clip area of the updated
first GUI[.]
Appeal Br. 17 (Claims Appendix) (emphasis added) (hereinafter, “the
disputed limitations”).
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Regarding the disputed limitations, Appellant argues:
Lussier merely introduces a concept or an idea of a collaborative
editing interface. Lussier fails to teach or suggest any specific
technical feature that corresponds to the “shared video clip area”
of claim 1, to accomplish the collaborative editing. Thus, Lussier
cannot teach or suggest receiving a user input that “comprises a
selection of [a] video clip in [a] shared video clip area of [the]
GUI presented for the first user account,” as claimed in claim 1.
Appeal Br. 10 (alterations in original).
Lussier does not extend the general concept of collaborative
functionality with any specificity that would teach or suggest
“the updated first shared video clip area of the updated first
GUI,” much less “a selection of the first video clip in the updated
first shared video clip area of the updated first GUI presented for
the first user account,” as recited in claim 1.
Reply Br. 4.
Appellant also argues:
[T]he storyboard display area of Rodriguez cannot teach the
“shared video clip area” of claim 1 because the storyboard
display area of Rodriguez is not capable of receiving an input to
edit a video clip itself. . . .
. . . .
. . . Rodriguez fails to teach or suggest providing an
updated GUI for User 1 where the shared storyboard is presented
in a shared storyboard display area as well as a personal
storyboard display area. In fact, Rodriguez cannot teach such a
technical feature because Rodriguez discloses only a single area
for displaying the storyboard representation — whether it be
personal or shared.
Appeal Br. 12–14.
Rodriguez at most teaches that when a sharing user (i.e., USER
1 as illustrated in Figure 27 in Rodriguez) selects GUI item 2740,
the storyboard tool of some embodiments performs a set of
operations for sharing the storyboard representation shown in the
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storyboard display area 275. However, GUI 2740 of stage 2710
does not illustrate and is not described as including “wherein the
first video clip is to be presented in the updated first shared video
clip area and in the first personal video clip area of the updated
first GUI,” as recited in claim 1.
Moreover, the Appellant submits that the Answer appears
to conflate Rodriguez's different GUIs of stage 1, 2 and 3 (i.e.,
GUI 2740, 2760, and 2775) as 1) GUIs corresponding to the
same user and 2) the same GUI. The Appellant further submits
that GUI 2740 of stage 1 illustrates the GUI of the sharing user
(i.e., USER 1) and GUI 2760 and GUI 2775 of stage 2 and 3,
respectively, illustrate GUI(s) of the recipient user (i.e., remote
user).
Reply Br. 6–7.
In other words, Appellant argues that the combination of Lussier and
Rodriguez does not teach or suggest the disputed limitations.
Regarding a shared video clip area, the Examiner finds:
Lussier teaches allowing multiple users to input and edit/update
the same shared video clips with user interface tools (Abstract,
[0009], [0011], [00581). Lussier also teaches a collaborative
editing with tools that allow users to select video clips and
perform an update or editing on the selected clips ([0085],
[0089], [01031]). In FIGS. 5-6, Lussier describes the
collaborated editing that includes users' marking of IN and OUT
point to create a video clips, store them and adding them to an
edit decision list that serves as database for creating a project
([0082], [0085], [0089]).
. . . .
The folders of Lussier are the shared video clips the user
may add to a collaborative video project. Once the project is
formed it is able to be shared and during the normal course of
operation as laid out by Lussier, a user could create a new video
project with two or more video clips, share the project with other
users, thereby making the clips accessible in response to the
project being shared and set permissions allowing them to add
their own clips to the project.
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. . . .
. . . Rodriguez describes inputs for sharing clips with other
users via storyboard area as illustrated in FIGS. 26-27. Rodriguez
describes different methods of sharing an updated collaborative
video project wherein the video project includes an updated
shared video clips. As illustrated in FIG. 27, in the second stage
2720, the project is shared between user 1 and a remote user. The
sharing includes displaying GUI for viewing shared clips (2740),
GUI for opening the shared clips (2760) and GUI for viewing
and displaying the shared content (2775). The remote user then
is able to see and display the updated video clips ([0209-0213]).
Ans. 12–14.
We agree with the Examiner. In paragraph 101, Lussier teaches
folders that are shared amongst the users. In Figure 27, Rodriguez shows
shared storyboards 2760 where the users can share their clips. See also
Rodriguez ¶ 210.
Based upon our review of the record, we find a preponderance of the
evidence supports the Examiner’s underlying factual findings. As guided by
our reviewing court, “the question under 35 U.S.C. § 103 is not merely what
the references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.” Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976));3 see also MPEP
§ 2123.
Our reviewing court provides applicable guidance. “Non-obviousness
cannot be established by attacking references individually where the

3 See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
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rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)). In determining obviousness, a reference
“must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole.” Id. (emphasis added).
On this record, we are not persuaded that combining the respective
familiar elements of the cited Lussier and Rodriguez references in the
manner proffered by the Examiner would have been “uniquely challenging
or difficult for one of ordinary skill in the art” at the time of Appellant’s
invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
As to Appellant’s above contentions, we are not persuaded the
Examiner erred. Appellant’s arguments are premised on a “physical” or
“bodily” incorporation of limitations of one reference into the other. This is
not the standard of obviousness. See In re Sneed, 710 F.2d 1544, 1550 (Fed.
Cir. 1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”);
Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.”).
Moreover, “[a] reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect.” EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted).
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Furthermore, an ordinarily skilled artisan is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984). “[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.” KSR, 550 U.S. at 418.
Nor has Appellant provided any objective evidence of secondary
considerations, which, as our reviewing court explains, “operate[] as a
beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese &
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
The Examiner has set forth why an ordinarily skilled artisan would
have been motivated to combine the teachings of Lussier and Rodriguez to
arrive at the claimed invention. See Final Act. 5–7. Appellant has not
presented any persuasive evidence or argument why the ordinarily skilled
artisan would not have possessed the knowledge and skills to know how to
combine the prior art references. As such, one of ordinary skill in the art
would have recognized how to adjust Lussier to accommodate the teachings
from Rodriguez.
Based upon our review of the record, we find a preponderance of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness regarding the rejection of representative
independent claim 1, independent claims 8 and 14, and dependent claims
that were not separately argued.
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CONCLUSION
The Examiner did not err in rejecting claims 1–19, as being obvious
under 35 U.S.C. § 103, over the combined teachings and suggestions of the
cited references.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 103 Lussier, Rodriguez 1–19

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.
§ 1.136(a)(1)(iv).

AFFIRMED