VIACOM INTERNATIONAL INC.

Patent Trials and Appeals Board

Apr 16, 2020

14871239 - (D) (P.T.A.B. Apr. 16, 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.
14/871,239 09/30/2015 Matthew EVANS 40205/05503
(MTV-055CIP)
2533
30636 7590 04/16/2020
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
NGUYEN, MAIKHANH
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
04/16/2020 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):
mmarcin@fkmiplaw.com
okaplun@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW EVANS, DARREN BRELESKY,
DHIMITER BOZO, PIER BORRA, and MEGHAN KNOLL
Appeal 2019-001520
Application 14/871,239
Technology Center 2100

Before MIRIAM L. QUINN, DAVID J. CUTITTA II, and
PHILLIP A. BENNETT, Administrative Patent Judges.

CUTITTA, 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 1–20, all of the pending claims. We
have jurisdiction 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). Appellant identifies the real party in interest as Viacom
International Inc. Appeal Br. 2.
Appeal 2019-001520
Application 14/871,239

2
CLAIMED SUBJECT MATTER
Appellant’s invention relates to “systems and methods for a media
application including an interactive grid display.” Spec. ¶ 9.2 “[T]he
interactive grid display allows for users to utilize a moveable layout of
branded content within a software application operating on a computing
device, such as a tablet computing device.” Id. ¶ 11.
Claims 1, 9, and 17 are independent. Claim 1, reproduced below with
limitations at issue italicized, exemplifies the claimed subject matter:
1. A method, comprising:
identifying one or more user preferences associated with
at least one media category characterizing at least one content
theme of at least one media file selected by the user;
generating a grid for display including a content region;
arranging a presentation of a plurality of media elements
within the content region based on the one or more user
preferences, wherein each of the plurality of media elements
activates a correlated media file;
receiving a further media element from a content
provider over a network; and
inserting the further media element onto the content
region based on the one or more user preferences.
Appeal Br. 8 (Claims Appendix).

2 Throughout this Decision we refer to: (1) Appellant’s Specification filed
September 30, 2015 (“Spec.”); (2) the Final Office Action mailed February
7, 2018 (“Final Act.”); (3) the Appeal Brief filed June 27, 2018 (“Appeal
Br.”); (4) the Examiner’s Answer mailed October 23, 2018 (“Ans.”); and (5)
the Reply Brief filed December 10, 2018 (“Reply Br.”).
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Application 14/871,239

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REFERENCES AND REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Herz et al. (US 2009/0178008
A1, July 9, 2009) (“Herz”) and Lovejoy, “How to: Organize your iPhone
apps with less logic, more usability,” (September 4, 2013),
https://9to5mac.com/2013/09/04/how-to-organise-your-iphone-apps-with-
less-logic-more-usability/ (accessed March 31, 2020) (“Lovejoy”). Final
Act. 2–5.

OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
The Examiner relies on the combination of Herz and Lovejoy to teach
or suggest “identifying one or more user preferences associated with at least
one media category characterizing at least one content theme of at least one
media file selected by the user,” as recited in claim 1. Final Act. at 4–6. Of
particular relevance, the Examiner finds that Herz teaches or suggests
“identifying one or more user preferences associated with at least one media
category” and that Lovejoy teaches or suggests a “media category
characterizing at least one content theme of at least one media file selected
by the user.” Final Act. 12. The Examiner determines that motivation
existed to combine the teachings of the references. Final Act. 4–5.
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Application 14/871,239

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Appellant argues the claims as a group. Appeal Br. 3–4. As such, we
select claim 1 as exemplary of the independent claims. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2017). Appellant argues that the “Examiner
acknowledges that Herz does not disclose or suggest ‘identifying one or
more user preferences associated with at least one media category . . . ,’ as
recited in claim 1,” and that “the ‘category’ described in Lovejoy is not
analogous to the media category recited in the claims.” Appeal Br. 4.
The Examiner responds that
Nowhere was it provided “that Herz does not disclose or
suggest ‘identifying one or more user preferences associated with
at least one media category characterizing at least one content
theme of at least one media file selected by the user.’”
In fact, the opposite is true. Herz was directly cited as
teaching at least “identifying one or more user preferences
associated with at least one media category.”
Ans. 5 (emphasis omitted).
As the Examiner notes (id.), Appellant’s argument based on Lovejoy
is unpersuasive because the Examiner relies on Herz rather than Lovejoy to
teach identifying one or more user preferences associated with at least one
media category, and therefore the argument is not responsive to the
rejection. See Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d
1319, 1336–37 (Fed. Cir. 2004) (rejecting argument directed at the wrong
reference).
Next, Appellant clarifies the argument stating that “Appellant has not
in any way attempted to mischaracterize the Examiner’s interpretation,”
rather “Appellant has emphasized that Herz does not disclose or suggest the
second portion of the above noted limitation of claim 1.” Reply Br. 3.
Accordingly, Appellant does not traverse the Examiner’s finding that Herz
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Application 14/871,239

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teaches or suggests “identifying one or more user preferences associated
with at least one media category,” as recited in claim 1. Final Act. 12.
Rather, Appellant argues that neither Herz nor Lovejoy teaches or suggests a
“media category characterizing at least one content theme of at least one
media file selected by the user,” as recited in claim 1. Reply Br. 4.
Of particular relevance, Appellant argues that “Lovejoy does not
disclose or suggest a media category that characterizes a content theme of a
media file, either as a whole or in a piecemeal manner” because,
[e]ven assuming an app on a mobile device is equivalent to a
media category or a media file (which is not conceded), Lovejoy
describes organizing the apps based on the type or category of
service provided (e.g., travel, for entertainment, etc.) but says
nothing about the actual content involved. Therefore, even under
the broadest reasonable interpretation of content theme and
media file, it is respectfully submitted that organization of apps
in Lovejoy does not fall within a reasonable interpretation of
“content theme” as recited in the claims. For example, a service
category is not based on the content of the app but on its purpose
for the user.
Id. Appellant appears to proffer two arguments. First, Appellant disputes
the equivalence of Lovejoy’s categorized mobile apps with “a media
category or media file.” Id. (“an app on a mobile device is equivalent to a
media category or a media file (which is not conceded)”). This argument is
not persuasive because it amounts to only a bare assertion without any
explanation or evidence in support. See 37 C.F.R. 41.37(c)(1)(iv) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Attorney argument “cannot
take the place of evidence.”).
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Application 14/871,239

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Second, Appellant argues that “Lovejoy does not disclose or suggest a
media category that characterizes a content theme of a media file” because
“Lovejoy describes organizing the apps based on the type or category of
service provided (e.g., travel, for entertainment, etc.) but says nothing about
the actual content involved.” Reply Br. 4 (emphasis added). Therefore, the
“organization of apps in Lovejoy does not fall within a reasonable
interpretation of ‘content theme’ as recited in the claims.” Id.
This argument is unpersuasive because Appellant fails to establish
that the Examiner’s interpretation of “content theme,” as recited in claim 1,
is not the broadest reasonable interpretation consistent with Appellant’s
Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). The Specification does not define expressly “content theme.”
But, the Specification describes “themed-content” in non-limiting language
as including “instant videos, on-demand videos, full-length episodic video
content, photographs, news and media feeds, games, puzzles, user polls,
etc.” Spec. ¶ 11. Similarly, the Specification describes a theme in open-
ended language as including “(e.g., [a] property, actor, character, etc.)”. Id.
¶ 20. In view of these open-ended descriptions, Appellant fails to set forth a
description of content theme in the Specification that is inconsistent with the
Examiner’s interpretation. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Appellant, therefore, fails to demonstrate persuasively that the
Examiner’s broad, but reasonable interpretation of characterizing at least one
content theme of at least one media file, as encompassing Lovejoy’s
characterizing of apps including travel-related content as travel apps, and
apps including entertainment-related content as entertainment apps (Final
Act. 12) is inconsistent with Appellant’s Specification or is otherwise
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Application 14/871,239

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unreasonable. In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
2017).
For the reasons discussed, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of independent claim 1. Accordingly,
we sustain the Examiner’s rejection of that claim, as well as the rejection of
independent claims 9 and 17, and dependent claims 2–8, 10–16, and 18–20,
which Appellant does not argue separately. Appeal Br. 6.

CONCLUSION
We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 103 as unpatentable over the combined teachings of Herz and Lovejoy.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103 Herz, Lovejoy 1–20

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