2019002496 (P.T.A.B. Dec. 24, 2020)

NAVER CORPORATION

Patent Trials and Appeals BoardDec 24, 2020

2019002496 (P.T.A.B. Dec. 24, 2020)

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. 14/568,967 12/12/2014 Sung Tak CHO 16634-000119-US 6333 30593 7590 12/24/2020 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER PETERSON, TERRIKA ART UNIT PAPER NUMBER 2426 NOTIFICATION DATE DELIVERY MODE 12/24/2020 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): dcmailroom@hdp.com jcastellano@hdp.com jhill@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUNG TAK CHO, KYUNG-RYUL SUN, SUNGHO KIM, YOOSUB SONG, JOON-KEE CHANG, HANEUL LEE, KUKHWAN SEO, SEONGCHEOL JO, and SEUNGAHE YI Appeal 2019-002496 Application 14/568,967 Technology Center 2400 Before DANIEL J. GALLIGAN, JESSICA C. KAISER, and DAVID J. CUTITTA II, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4–12, and 14–20. Claims 3 and 13 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Naver Corporation. Appeal Br. 2. Appeal 2019-002496 Application 14/568,967 2 CLAIMED SUBJECT MATTER Claims 1, 10, 11, and 19 are independent claims. Claim 1 is reproduced below: 1. A multi-track video content service method performed by a first terminal, the method comprising: receiving, by the first terminal, a user request for multi- track video, the multi-track video including a plurality of videos, each of the plurality of videos corresponding to a track, each of the plurality of videos being divided into time-based video segments; requesting, by the first terminal, a first video of the plurality of videos, the first video corresponding to a first track of the multi-track video; receiving, by the first terminal, first video segments corresponding to the first video; sequentially transferring, by the first terminal, the first video segments to a player for displaying the sequentially transferred first video segments; receiving, by the first terminal, a user input requesting a second video of the plurality of videos; requesting, by the first terminal, the second video of the plurality of videos; receiving, by the first terminal, second video segments of the second video of the plurality of videos instead of receiving the first video segments, the second video segments corresponding to a second track of the multi-track video; sequentially transferring, by the first terminal, the second video segments to the player for displaying the sequentially transferred second video segments; Appeal 2019-002496 Application 14/568,967 3 generating, by the first terminal, a link for accessing at least the first track and the second track, the link including history information about at least one transition between the first track and the second track that is stored in a desired metadata format, the history information including information identifying a play order of at least one video segment of the first video and at least one video segment of the second video and time information related to the first track when the first track playback was interrupted by the transition to the second track; and transferring, by the first terminal, the generated link to a second terminal such that the second terminal performs the transition using the history information by receiving video data of the multi-track video in an order associated with the history information. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Sidi US 2007/0266399 Al Nov. 15, 2007 Mehrotra US 2009/0282162 Al Nov. 12, 2009 Bocharov US 2010/0114921 Al May 6, 2010 Gordon US 2013/0110978 Al May 2, 2013 Sathish US 2013/0195427 Al Aug. 1, 2013 Rothschild US 2014/0237521 Al Aug. 21, 2014 Azizian US 2016/0203010 Al July 14, 2016 REJECTIONS The Examiner rejects claims 1, 2, 4, 6, 8, 10–12, 14, 16, 19, and 20 under 35 U.S.C. § 103 as being unpatentable over Mehrotra, Bocharov, Rothschild, and Azizian. Final Act. 2–21. The Examiner rejects claims 7 and 17 under 35 U.S.C. § 103 as being unpatentable over Mehrotra, Bocharov, Rothschild, Azizian, and Sidi. Id. at 21–22. Appeal 2019-002496 Application 14/568,967 4 The Examiner rejects claims 6 and 15 under 35 U.S.C. § 103 as being unpatentable over Mehrotra, Bocharov, Rothschild, Azizian, and Gordon. Id. at 22–23. The Examiner rejects claims 9 and 18 under 35 U.S.C. § 103 as being unpatentable over Mehrotra, Bocharov, Rothschild, Azizian, and Sathish. Id. at 23–24. Our review in this appeal is limited only to the above rejections and the issues raised by Appellant. Arguments not made are waived. See MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(1)(iv) and 41.39(a)(1). OPINION Obviousness Appellant contends the Examiner erred in finding Rothschild teaches “time information related to the first track when the first track playback was interrupted by the transition to the second track,” as recited in claim 1 and similarly recited in claims 10, 11, and 19. Appeal Br. 19–21; Reply Br. 4–5. Specifically, Appellant argues that Rothschild teaches a “manifest file consist[ing] of information determining the play order of segments of a single piece of media content,” but the manifest file information does not teach “history information and/or time information related to transitions in the playback of [a] movie when it is interrupted by the playback of a different movie and/or other content (i.e., the video segment from the second video).” Appeal Br. 21; see Reply Br. 4–5. Appellant’s argument is persuasive. The Examiner has not adequately explained how Rothschild’s manifest file teaches such a feature. The Examiner finds that Rothschild’s manifest file teaches, or renders obvious, “time information related to the first track when the first track playback was Appeal 2019-002496 Application 14/568,967 5 interrupted by the transition to the second track.” Final Act. 5; Ans. 11–12. The Examiner relies on (Final Act. 5; Ans. 11–12) Rothschild’s disclosure that “manifest file, sometimes referred to as a playlist,” includes “information related to identifying the segments of media content that the client device 110 needs to acquire and sequencing those segments” (Rothschild ¶ 81). For example, as Rothschild describes, “a 10-minute media content or programming may be partitioned into 300 media segments. In one aspect, the manifest file provided to the client device 110 may include information associated with accessing each of the 300 media segments in the correct order to provide complete media content to the user.” Id. The Examiner determines that “an interruption” is taught by, or is obvious over, Rothschild “where a first track ends (time end) and a second track begins (time start)” with a “natural transition between the end of a first track to the beginning of a second track.” Final Act. 5, 25; Ans. 11–12. The Examiner, however, has not adequately explained how Rothschild’s manifest file, identifying a sequential “natural transition between the end of a first track to the beginning of a second track,” teaches (or otherwise renders obvious) information related to when “the first track playback was interrupted by the transition to the second track.” The term “interruption” is not defined in the Specification. However, as we generally understand the term, an interruption breaks the continuity of something in progress, before the progress has been completed. Figure 4 of the Specification supports that understanding, showing the playback of track 1 (arrow 410) transitioning, before track 1 has been completed, i.e., track 1 is interrupted to play track 2 (arrow 420). See Spec. ¶¶ 82–90. In contrast, Rothschild describes a transition from the end of one video to the beginning Appeal 2019-002496 Application 14/568,967 6 of the next expected video, playing videos to completion in their expected sequence. Rothschild ¶ 81. The Examiner has not sufficiently explained why a “natural transition” from the end of a first video to the beginning of the next sequential video teaches an “interrupt[ion],” seemingly in contrast to the term’s ordinary meaning. See Final Act. 5, 25; Ans. 11–12. Nor has the Examiner pointed out where, or explained how, Rothschild’s manifest file includes “time information” regarding the “end” and “start” time of video tracks, much less that such start and end times relate to an interruption. See Final Act. 5, 25; Ans. 11–12. Accordingly, we determine the Examiner erred in finding Rothschild teaches “time information related to the first track when the first track playback was interrupted by the transition to the second track,” as recited in claim 1 and similarly recited in claims 10, 11, and 19. Accordingly, we do not to sustain the Examiner’s obviousness rejection of independent claims 1, 10, 11, and 19. Because we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments.2 See Appeal Br. 16–21, 25; Reply Br. 5–10. Dependent claims 2, 4–9, 12, 14–18, and 20 stand with their 2 In the event of further prosecution, we direct the Examiner to § 2141.01(a) of the Manual of Patent Examining Procedure (MPEP) (9th ed. Rev. 10.2019 June 2020), discussing the test for analogous art. In particular, the test for analogous art addresses: (1) whether Azizian is in the same field of endeavor as the claimed invention or (2) whether Azizian is reasonably pertinent to the problem faced by the instant inventor. Id. (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The MPEP further details how the Examiner should address that test. Id. The Examiner may wish to provide more information about this issue in the event of further prosecution and in light of Appellant’s arguments. Appeal 2019-002496 Application 14/568,967 7 respective independent claims. Therefore, we reverse the Examiner’s decision to reject claims 1, 2, 4–12, and 14–20 under 35 U.S.C. § 103. New Ground of Rejection under 35 U.S.C. § 112(b) Claim 1 recites “receiving, by the first terminal, first video segments corresponding to the first video” and further recites “receiving, by the first terminal, second video segments of the second video of the plurality of videos instead of receiving the first video segments” (emphasis added). Those limitations recite both: (1) receiving first video segments and (2) not receiving the first video segments. Without some condition precedent or other clarification in the claim language, it is unclear how both these method steps can be performed because they are in conflict. Accordingly, we conclude the claim is indefinite and enter a new ground of rejection. The Patent Trial and Appeal Board is a review body, rather than a place of initial examination. We newly reject independent claim 1 under 35 U.S.C. § 112(b), pursuant to 37 C.F.R. § 41.50(b). However, we have not reviewed the remaining claims to the extent necessary to determine whether these claims meet the definiteness requirement under 35 U.S.C. § 112(b). We leave it to the Examiner to ascertain the appropriateness of any further rejections.3 3 We note that the indefiniteness of the received and not received first video segments corresponding to the first track also implicates the definiteness of the “interrupted” first track playback. For example, it is unclear what was interrupted because the claim recites that the first video segments are received. In the event of further prosecution, we leave it to the Examiner to consider whether the “history information including . . . time information related to the first track when the first track playback was interrupted” is indefinite. Appeal 2019-002496 Application 14/568,967 8 Our decision not to enter a new ground of rejection for all claims should not be considered as an indication regarding the appropriateness of further rejections or allowance of the non-rejected claims. See MPEP § 1213.03. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 112(b) Indefiniteness 1 1, 2, 4, 6, 8, 10–12, 14, 16, 19, 20 103 Mehrotra, Bocharov, Rothschild, Azizian 1, 2, 4, 6, 8, 10–12, 14, 16, 19, 20 7, 17 103 Mehrotra, Bocharov, Rothschild, Azizian, Sidi 7, 17 6, 15 103 Mehrotra, Bocharov, Rothschild, Azizian, Gordon 6, 15 9, 18 103 Mehrotra, Bocharov, Rothschild, Azizian, Sathish 9, 18 Overall Outcome 1, 2, 4– 12, 14–20 1 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of Appeal 2019-002496 Application 14/568,967 9 rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. § 41.50(b)