Todd Burke et al.

Patent Trials and Appeals Board

Apr 8, 2020

12361343 - (D) (P.T.A.B. Apr. 8, 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.
12/361,343 01/28/2009 Todd Burke AD01.B931 8091
111003 7590 04/08/2020
Adobe / Finch & Maloney PLLC
50 Commercial Street
Manchester, NH 03101
EXAMINER
KIM, STEVEN S
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/08/2020 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):
docketing@finchmaloney.com
nmaloney@finchmaloney.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TODD BURKE, STACY YOUNG, and JIM LEASK
____________

Appeal 2018-008428
Application 12/361,343
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4, 5, 7–10, 23, 24, 26–29, and 32–35, which
constitute all of the claims pending in this application. Claims 3, 6, 11–22,
25, 30, and 31 have been cancelled. Final Act. 2.2 We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Adobe
Systems Incorporated. Appeal Br. 3.
2 We refer to the Specification filed Jan. 28, 2009 (“Spec.”); Final Office
Action mailed Dec. 11, 2017 (“Final Act.”); Appeal Brief filed May 3, 2018
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We affirm.
THE INVENTION
The disclosed and claimed invention is directed to “editing video
content,” and particularly to “workflows for reviewing such edited content.”
Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, comprising:
performing, by a server computer that is associated with a
video editor:
receiving a workflow schedule that defines tasks to
be completed by a plurality of reviewers with respect to a
video clip that comprises a plurality of video frames, each
of which corresponds to a time point in the video clip;
transmitting, to said reviewers, a plurality of task
notifications, wherein each task notification is transmitted
to at least one of the reviewers, and identifies an assigned
task as defined by said workflow schedule;
receiving an indication that at least a portion of the
tasks are complete;
receiving comments from more than one of the
reviewers, wherein a particular comment is associated
with (a) a particular time code that identifies a particular
video frame to which the particular comment applies, and
(b) coordinates that define a particular location within the
particular video frame;
synchronizing the received comments with the
video clip by associating each of the comments with at
least one of the video frames that comprises the video clip,

(“Appeal Br.”); Examiner’s Answer mailed July 16, 2018 (“Ans.”); and the
Reply Brief filed Aug. 23, 2018 (“Reply Br.”).
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such that the video clip is associated with comments
received from more than one of the reviewers; and
transmitting, to a particular one of the reviewers, (a)
at least a portion of the synchronized comments, including
the particular comment, and (b) the coordinates that are
associated with the particular comment; and
performing, by a client computer associated with the
particular reviewer:
playing at least a portion of the video clip in a
window;
displaying a timeline adjacent to the window,
wherein a specific position along the timeline corresponds
to a specific time which, in turn, corresponds to a specific
video frame which is displayed in the window at the
specific time;
displaying a representation of at least a portion of
the synchronized comments along the timeline, wherein a
representation of the particular comment is displayed at a
particular position that corresponds to the particular time
code associated with the particular comment, wherein
representations of comments received from more than one
of the reviewers are simultaneously displayed along the
timeline; and
highlighting the particular location within the
particular video frame that is defined by the coordinates.

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Name Reference Date
Ginter US 5,892,900 Apr. 6, 1999
Bradley US 2005/0120127 A1 June 2, 2005
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Name Reference Date
Julia US 2007/0078948 A1 Apr. 5, 2007
Taub US 2008/0190271 A1 Aug. 14, 2008

REJECTIONS
Claims 1, 2, 4, 5, 7–10, 23, 24, 26–29, and 32–35 stand rejected under
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written-description requirement. Final Act. 3.
Claims 1, 2, 4, 5, 7–10, 23, 24, 26–29, and 32–35 stand rejected under
pre-AIA 35 U.S.C. § 112, second paragraph, as indefinite for failing to
particularly point out and distinctly claim the subject matter regarded as the
invention. Final Act. 5.
Claims 1, 2, 5, 23, 24, 28, 33, and 34 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Bradley and Taub. Final Act. 7.
Claims 4, 26, 27, 32, and 35 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Bradley, Taub, and Admitted Prior Art. Final
Act. 12.
Claims 7–9 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bradley, Taub, and Ginter. Final Act. 13.
Claims 10 and 29 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bradley, Taub, and Julia. Final Act. 14.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellant.
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Section 112, First Paragraph, Rejection
The Examiner finds that there is “no description in the Specification
that describes a server receiving a workflow schedule that defines tasks to be
completed.” Final Act. 3 (citing Spec. ¶¶ 15, 25–27). Specifically, the
Examiner finds that there is no “description in the specification” that the
recited steps are “performed by the server.” Final Act. 4 (citing Spec. ¶ 27).
According to the Examiner, the Specification “merely describes at a high
level” that a reviewer may be electronically messaged and may
electronically post comments. Final Act. 3–4; see Ans. 8–9.
Appellant argues that the Specification describes “that ‘editors may be
electronically messaged regarding tasks,’” which “inherently involves the
editor receiving that which has been messaged,” and thereby describes “a
server computer, associated with a video editor, receiving a workflow
schedule.” Reply Br. 3–4. Specifically, Appellant argues that “receiving the
workflow schedule that defines such tasks would occur before such tasks
were communicated to editors and/or reviewers.” Appeal Br. 13.
We are not persuaded by Appellant’s arguments. To satisfy the
written-description requirement, a patent specification must describe the
claimed invention in sufficient detail that one skilled in the art can
reasonably conclude that the inventor had possession of the claimed
invention. See, e.g., Moba, B.V. v. Diamond Auto., Inc., 325 F.3d 1306,
1319 (Fed. Cir. 2003); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991). “[T]he test requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art,” where “the specification must describe an invention
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understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The exact level of detail
required depends upon “the nature and scope of the claims and on the
complexity and predictability of the relevant technology.” Id. Factors for
“evaluating the adequacy of the disclosure” may include “the existing
knowledge in the particular field, the extent and content of the prior art, the
maturity of the science or technology, [and] the predictability of the aspect at
issue.” Id. (alteration in original) (quoting Capon v. Eshhar, 418 F.3d 1349,
1359 (Fed. Cir. 2005)).
Here, the Specification describes that “a server may transmit video
review signals” and “a special purpose or specific computing platform used
by editors or reviewers, for example, may include a browser application to
transmit signals to or receive signals from a particular site on the Internet
that operates to oversee or manage video review workflow process 500.”
Spec. 14, ll. 15–22. The Specification also describes that a “workflow
process may include creating a workflow schedule electronically.” Spec. 5,
ll. 7–9, 16–24. We agree with the Examiner that this passage merely
supports—at a high level—managing a workflow schedule electronically.
The discussion in the Specification only describes that a workflow schedule
is created electronically, but does not explain what component creates the
workflow schedule or that it is received by a server computer.
The Examiner further finds that the additional steps claimed (i.e.,
“performing, by a server computer that is associated with a video editor: . . .
synchronizing the received comments with the video clip” and “transmitting,
to a particular one of the reviewers,” and “performing, by a client computer
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associated with the particular reviewer: . . . highlighting the particular
location within the particular video frame”) lack written-description support
in the Specification. See Final Act. 4–5. Specifically, the Examiner finds
that the Specification “merely describes some of the recited
step(s)/function(s) at high level and does not describe in such specifics as
described in the claims.” Final Act. 5. For example, the Examiner finds that
the Specification does not disclose “the specific device, e.g. the server
computer, ‘synchronizing . . .’” or “transmitting, to a particular one of the
reviewers,” as recited in the claims. Ans. 8–9. The Examiner also finds that
the Specification does not describe “the client computer receiving a
coordinates [sic] from a server computer and highlighting the particular
location within the particular video frame based on the received
coordinates.” Ans. 10.3
Appellant argues that the Specification “describes ‘editors or
reviewers [viewing] captured comments along with the particular video clip
at appropriately synchronized times’” and “makes clear that the inventors
possessed, at the time of filing, a server computer, associated with a video
editor, that performs ‘synchronizing the received comments with the video
clip . . .’” as claimed. Appeal Br. 15–16 (alteration in original) (citing Spec.
5, 10). Appellant also argues that the “repeated portion [of the
Specification] expressly includes transmission of the video clip to one or

3 In addition to the limitation recited above, in the Final Action, the
Examiner determined that “performing, by a server computer that is
associated with a video editor: . . . receiving comments from more than one
of the reviewers” lacks written-description support. Final Act. 5–6. The
Examiner found Appellant’s argument regarding that limitation persuasive.
Ans. 7. Accordingly, we do not address that limitation in this Decision.
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more reviewers.” Appeal Br. 18. (citing Spec. 9, 10, 12); see Reply Br. 6.
Appellant also argues that the Specification describes associating comments
with coordinates to highlight a portion of the video frame. Appeal Br. 19
(citing Spec. 10–11); see Reply Br. 7–8.
We are not persuaded by Appellant’s arguments. As discussed above,
the Specification describes “a server may transmit video review signals” and
“a special purpose or specific computing platform used by editors or
reviewers, for example, may include a browser application to transmit
signals to or receive signals from a particular site on the Internet that
operates to oversee or manage video review workflow process 500.” Spec.
14, ll. 15–22. The Specification also describes that “comments may be time
synchronized by associating the comments with a time code.” Spec. 10,
ll. 12–13. The Specification also describes that “a comment may be
associated with coordinates of a video clip frame to highlight a particular
portion of the video frame.” Spec. 11, ll. 2–3. We agree with the Examiner
that these passages merely support—at a high level—using a server or
computer platform to manage a workflow schedule electronically. The
discussion in the Specification only describes, generally, that comments may
be time synchronized and associated with coordinates. However, the
discussion in the Specification does not explain which components (i.e.,
server, client device) perform the different steps of managing a workflow
schedule. Nor does the Specification provide any details about how
comments are time synchronized or associated with coordinates of a video
clip to highlight a portion of a video frame.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112, first
paragraph rejection of claims 1, 2, 4, 5, 7–10, 23, 24, 26–29, and 32–35.
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Section 112, Second Paragraph, Rejection
Claim 1 recites “receiving comments from more than one of the
reviewers, wherein a particular comment is associated with (a) a particular
time code that identifies a particular video frame to which the particular
comment applies, and (b) coordinates that define a particular location within
the particular video frame.” (emphasis added). The Examiner concludes that
“it is unclear whether the particular comment is describing one of the
received comments.” Final Act. 5–6; Ans. 10–11.
Appellant argues that it is clear that “[t]he ‘particular comment’ is . . .
included in the ‘synchronized comments,’ and it is the ‘received comments’
which are synchronized,” and therefore that “the ‘particular comment’ is
clearly included within the ‘received comments.’” Appeal Br. 23; Reply
Br. 9–10.
We are persuaded by Appellant’s arguments. “A claim is indefinite if,
when read in light of the specification, it does not reasonably apprise those
skilled in the art of the scope of the invention.” Amgen Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). “As the
statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims
are required to be cast in clear—as opposed to ambiguous, vague,
indefinite—terms. It is the claims that notify the public of what is within the
protections of the patent, and what is not.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014) (alterations in original).
The claim language is clear that the server computer associated with a
video editor “receiv[es] comments from more than one of the reviewers,”
and the received comments include at least “a particular comment,” and that
the received comments are synchronized. Furthermore, the Specification
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describes “at least some tasks may comprise commenting upon one or more
video clips” and “[s]uch comments may be time synchronized” such that
“subsequent editors or reviewers of a particular video clip may view
captured comments along with the particular video clip at appropriate
synchronized times intended by one or more particular editors providing the
particular comments.” Spec. 5, l. 20–6, l. 3.
In light of this disclosure in the Specification, the Examiner does
not sufficiently explain why the claimed “a particular comment” is
indefinite. We agree with Appellant that the claim, based on the claim
language (i.e., “receiving comments . . . wherein a particular comment”) and
in light of the Specification (i.e., comments comprising particular comments
captured by particular editors), is sufficiently clear.
Claim 23 recites “wherein a representation of the particular comment
is displayed at a particular position that corresponds to the particular time
code associated with the particular comment, wherein representations of
comments received from more than one of the reviewers are simultaneously
displayed along the timeline.” (emphasis added).
The Examiner finds that “scope of the claim is unclear as the claim
further includes an action that is not associated with anything.” Final Act. 6.
According to the Examiner, the claim is “silent to the component that is
performing the two displaying step(s) or functions.” Ans. 11–12. The
Examiner makes similar findings for claim 34, which recites assigning tasks
of the workflow schedule to reviewers and the order of tasks in the workflow
schedule. See Final Act. 6.
Appellant argues that claim 23 “specifically defines how the
‘displaying’ action is associated with both the features which are displayed,
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as well as how such features are displayed ‘along the timeline.’” Appeal
Br. 24; Reply Br. 10–11. Appellant further argues that claim 34 “expressly
specifies that two tasks are each assigned to a corresponding reviewer
identified in the workflow schedule,” and that the tasks are recited in
claim 23. Appeal Br. 26.
We are persuaded by Appellant’s arguments. The language in
claim 23 clearly expresses a “non-transitory computer-readable storage
medium comprising instructions stored thereon that, when executed by a
server computer that is associated with a video editor, cause the server
computer to perform . . . displaying.” (emphasis added). Claim 23 also
expressly recites “caus[ing] the server computer to perform: receiving a
workflow schedule that defines tasks,” which are then referenced in claim 34
for task assignment. We agree with Appellant that the claims, based on the
claim language (i.e., the server computer performs the displaying and
receiving steps), are sufficiently clear.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112,
second paragraph rejection of claims 1, 2, 4, 5, 7–10, 23, 24, 26–29,
and 32–35.

Section 103(a) Rejections
Claims 1, 2, 4, 5, 7–10, 23, 24, 26, 29, 34, and 35
Appellant does not address the rejections for claims 1, 2, 4, 5, 7–10,
23, 24, 26, 29, 34, and 35 under 35 U.S.C. § 103(a). Accordingly, we
summarily sustain the Examiner’s rejections of claims 1, 2, 4, 5, 7–10, 23,
24, 26, 29, 34, and 35 under 35 U.S.C. § 103(a). See MPEP § 1205.02
(2018) (“If a ground of rejection stated by the examiner is not addressed in
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the appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it.”); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to
present arguments on a particular issues – or more broadly, on a particular
rejection – the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”).
Claims 27 and 32
Claim 27 recites “wherein the server computer determines said
reviewers based on tasks previously assigned to the reviewers.”
The Examiner finds that Appellant’s Admitted Prior Art “discloses
determining one or more candidates based on availability of the availability,
e.g. based on one or more of past review cycles, of the candidates.” Final
Act. 13. Specifically, the Examiner finds that “determining reviewers based
on tasks previously assigned to the reviewers broadly speaks to the
determining reviewers based on availability” because “whether the task
conflicts with previous assigned task(s) or depending on the members’ load
(previously assigned task(s))” speaks to “members’ availabilities.” Ans. 14.
Appellant argues that “even assuming that it was known at the time of
the invention to determine candidates ‘based on availability . . . of the
candidates’, this is not equivalent to determining reviewers ‘based on tasks
previously assigned to the reviewers,’” as claimed. Appeal Br. 31.
Specifically, Appellant argues that “the concept of ‘availability’ is entirely
different than the concept of ‘tasks previously assigned.’” Id.; see Reply
Br. 11.
We are persuaded by Appellant’s argument as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
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the combination of Bradley, Taub, and Admitted Prior Art teaches
determining reviewers based on tasks previously assigned to the reviewers.
The Examiner does not explain how basing a determination on reviewer
availability is the same as basing a determination on tasks previously
assigned to the reviewers. Reviewer availability is based on present and
future planning (whether the reviewer is available now or will be available
in the future), not on past history (tasks the reviewer has performed
previously). We agree with Appellant that a “staff member could have many
or few previously assigned tasks, but his/her availability may be determined
by his/her current vacation schedule” and there is “no inherent relationship
between the concepts of ‘tasks previously assigned’ and ‘availability.’”
Reply Br. 12.
Therefore, we agree with Appellant that the Examiner’s finding that
the combination of Bradley, Taub, and Admitted Prior Art teaches the
disputed limitations is in error because it is not supported by a
preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985) (The Examiner’s burden of proving unpatentability is by a
preponderance of the evidence.); see also In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.”).
Accordingly, we are constrained on the record before us to reverse the
Examiner’s § 103(a) rejection of claim 27, along with claim 32, which
recites a commensurate limitation.
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Claims 28 and 33
Claim 28 recites “wherein the server computer determines an order in
which said reviewers are assigned the tasks.”
The Examiner finds that Bradley teaches the server determining the
order in which reviewers are assigned tasks. Final Act. 12 (citing Bradley
¶¶ 48–49). Specifically, the Examiner finds that “the computer system of
Bradley necessarily has to determine the order in order to distribute the task,
e.g. reviews, in ordered fashion.” Ans. 15 (citing Bradley ¶¶ 4, 47, 48).
Appellant argues that “Bradley expressly discloses that it is either the
‘project creator’ or the ‘R&A administrator’ who establishes the ‘correct
role-based workflow’ for a given project,” but not that “the sequence of
reviewers is determined by a computer, or more generally, in an automated
process.” Appeal Br. 33–34; see Reply Br. 13. Appellant further argues that
there is no articulated reasoning “that would explain why an ordinarily-
skilled artisan would modify Bradley such that the action performed by the
project creator or the R&A administrator would instead be performed by a
computer.” Appeal Br. 34.
We are not persuaded by Appellant’s argument that the Examiner
erred. As cited by the Examiner, Bradley teaches that “the project creator
determines that a lawyer needs to see and approve the sequence before any
other reviews take place” and “selects the lawyer as the first reviewer.”
Bradley ¶ 48. Bradley further teaches that “the R&A system 300 is invoked
at a client system . . . to contact the R&A system 300 at server system 20.”
Bradley ¶ 41. In other words, Bradley teaches that the review and approval
system is invoked at a client-server system, and that the project creator
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utilizes the review and approval system to determine the order in which the
reviewers are assigned the tasks.
The Specification describes “[a] workflow process may include
creating a workflow schedule electronically so that manual workflow
scheduling need not be involved.” Spec. 5, ll. 7–9 (emphasis added). In
other words, the Specification describes a user manually scheduling the
workflow or creating the workflow schedule electronically. The
Specification’s description of creating the workflow schedule electronically
does not exclude a user utilizing a computer to create the workflow schedule
electronically.
Therefore, Appellant has not persuasively argued why Bradley’s
project creator using the review and approval system invoked on a client-
server system to determine the order in which reviewers are assigned tasks
does not teach or suggest the claimed server computer determining an order
in which reviewers are assigned tasks.
Accordingly, we sustain the Examiner’s rejection of claim 28, along
with the rejection of claim 33, which recites a commensurate limitation.

CONCLUSION
We affirm the Examiner’s § 112, first paragraph, rejection of claims 1,
2, 4, 5, 7–10, 23, 24, 26–29, and 32–35.
We reverse the Examiner’s § 112, second paragraph, rejection of
claims 1, 2, 4, 5, 7–10, 23, 24, 26–29, and 32–35.
We affirm the Examiner’s § 103(a) rejections of claims 1, 2, 4, 5, 7–
10, 23, 24, 26, 28, 29, 33, 34, and 35.
We reverse the Examiner’s § 103(a) rejection of claims 27 and 32.
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Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision to reject all of the
pending claims.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/
Basis
Affirmed Reversed
1, 2, 4, 5, 7–
10, 23, 24,
26–29, 32–35
112, first
paragraph
Written
Description
1, 2, 4, 5,
7–10, 23,
24, 26–29,
32–35

1, 2, 4, 5, 7–
10, 23, 24,
26–29, 32–35
112,
second
paragraph
Indefiniteness 1, 2, 4, 5, 7–
10, 23, 24,
26–29, 32–
35
1, 2, 5, 23, 24,
28, 33, 34
103(a) Bradley, Taub 1, 2, 5, 23,
24, 28, 33,
34

4, 26, 27, 32,
35
103(a) Bradley, Taub,
Admitted
Prior Art
4, 26, 35 27, 32
7–9 103(a) Bradley, Taub,
Ginter
7–9
10, 29 103(a) Bradley, Taub,
Julia
10, 29
Overall
Outcome
1, 2, 4, 5,
7–10, 23,
24, 26–29,
32–35

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TIME PERIOD FOR RESPONSE
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