Viacom International, Inc.

Patent Trials and Appeals Board

Jul 30, 2020

15786121 - (D) (P.T.A.B. Jul. 30, 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.
15/786,121 10/17/2017 Stewart Alan Frey 40205/03903(MTV-039CON2) 1035
30636 7590 07/30/2020
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
SALTARELLI, DOMINIC D
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
07/30/2020 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 STEWART ALAN FREY, VITALIY VAYSBERG,
FRANCIS HENRY DILLON IV, and
MATTHEW JOSEPH WOOD
Appeal 2019-002470
Application 15/786,121
Technology Center 2400

Before DANIEL J. GALLIGAN, JESSICA C. KAISER, and
DAVID J. CUTITTA II, 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 26–44.2 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 Viacom
International Inc. Appeal Br. 2.
2 Claims 1–25 have been cancelled. Appeal Br. 7.
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CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to a computer system
that receives a request for packaged media to be delivered, where the request
for packaged media specifies aspects detailing how the media should be
packaged.3 Spec. ¶ 33; Abstract. Claim 26, reproduced below, is illustrative
of the claimed subject matter:
26. A computer-implemented method of packaging media
files comprising:
transmitting, by a client device, a request from a user to a
media packaging server, the request including a packaging
template and a media asset ID identifying a media file requested
by the user of the client device, the packaging template
identifying user-requested metadata associated with the media
asset ID and a user-requested format for the media file and
metadata requested by the user of the client device;
receiving, by the client device, a delivery package from
the media packaging server, the delivery package including a
media file and metadata matching the media asset ID and
metadata in the request in the format indicated in the packaging
template; and
extracting, by the client device, the media file and
metadata from the delivery package based upon the format
indicated in the packaging template.
Appeal Br. 10 (Claims Appendix).

3 This Decision refers to: (1) Appellant’s Specification filed October 17,
2017 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed August 24,
2018; (3) the Advisory Action (“Adv. Act.”) mailed October 30, 2018; (4)
the Appeal Brief (“Appeal Br.”) filed December 5, 2018; (5) the Examiner’s
Answer (“Ans.”) mailed January 24, 2019; and (6) the Reply Brief (“Reply
Br.”) filed February 1, 2019.
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Application 15/786,121

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REFERENCE AND REJECTIONS
The Examiner rejects claims 26–33, 35, 37–41, and 43 under 35
U.S.C. § 102(e) as being anticipated by Reza (US 8,903,895 B2, issued Dec.
2, 2014). Final Act. 3–6.
The Examiner rejects claims 34, 36, 42, and 44 under 35 U.S.C.
§ 103(a) as being unpatentable over Reza. Id. at 6–7.
Our review in this appeal is limited to the above rejections and the
issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02 9th Ed., Rev. 08.2017, Jan. 2018; 37 C.F.R. § 41.37(c)(1)(iv)
(2017).
OPINION
Appellant argues the Examiner erred in finding Reza discloses a
“packaging template identifying user-requested metadata associated with the
media asset ID and a user-requested format for the media file and metadata
requested by the user of the client device,” as recited in claim 26 and
similarly recited in claim 37. Appeal Br. 3–7; Reply Br. 2–4. Specifically,
Appellant argues “[i]n Reza, the user provides only a request for media with
no metadata request.” Appeal Br. 4. Appellant further argues the “user in
Reza is unable to specify a format.” Reply Br. 3; Appeal Br. 4. According
to Appellant, “Reza discloses only that the media attributes included in the
request may include a selection of a preferred spoken language or a
preferred subtitle language,” but “Reza does not disclose or suggest that the
preferred language selection is a user input.” Appeal Br. 5.
We determine that the Examiner has not sufficiently shown that Reza
discloses a packaging template identifying “user-requested metadata” and “a
user-requested format.” The Examiner finds (see Final Act. 2–3) that Reza’s
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client machine attributes (“client MATs”) identify “frames per second,
spoken language, optimized screen size, encoding rate (audio, video), codec
used,” and subtitles (Reza 7:11–14, 32–33; see id. 8:27–29), and, so,
disclose “metadata” and “format” information. Although we agree with, and
Appellant does not contest (see Appeal Br. 3–8), the Examiner’s finding that
Reza discloses metadata and format information, the Examiner has not
sufficiently demonstrated that the metadata and format information in Reza
is “user-requested,” as recited in the claims. While the Examiner points out
(Ans. 3–4; Adv. Act. 2; Final Act. 2) that Reza describes that client MATs
“comprise preferred media attributes,” e.g., “a preferred language, and a
preference for the display of subtitles” (Reza 7:25–34), the Examiner has not
identified where Reza describes that those preferred media attributes are
necessarily “user-requested” or adequately explained why Reza’s
preferences must somehow be “user-requested.”
Accordingly, we are persuaded that the Examiner erred in finding
Reza discloses a “packaging template identifying user-requested metadata
associated with the media asset ID and a user-requested format for the media
file and metadata requested by the user of the client device,” as recited in
claim 26 and similarly recited in claim 37. Therefore, we do not sustain the
Examiner’s rejection of claims 26 and 37 under 35 U.S.C. § 102(e).
We also do not sustain the rejections of dependent claims 27–36 and
38–44. Therefore, we reverse the Examiner’s decision to reject claims 26–
33, 35, 37–41, and 43 under 35 U.S.C. § 102(e) as being anticipated by
Reza. Moreover, the Examiner has not sufficiently shown how the
obviousness rejection of claims 34, 36, 42, and 44 cures the deficiency noted
above for claim 1. Final Act. 7–8. Accordingly, we do not sustain the
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Examiner’s decision to reject claims 34, 36, 42, and 44 under 35 U.S.C.
§ 103(a) as being unpatentable over Reza for the reasons set forth above for
claim 1.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of independent claims 26 and 37 under 35 U.S.C.
§ 103(a) over Reza. We agree with, and adopt, the Examiner’s findings that
Reza discloses
transmitting, by a client device, a request from a user to a
media packaging server, the request including a packaging
template and a media asset ID identifying a media file requested
by the user of the client device . . .
receiving, by the client device, a delivery package from
the media packaging server, the delivery package including a
media file and metadata matching the media asset ID and
metadata in the request in the format indicated in the packaging
template; and
extracting, by the client device, the media file and
metadata from the delivery package based upon the format
indicated in the packaging template
as recited in claim 26 and similarly recited in claim 37. Final Act. 3–4
(citing Reza 6:60–8:13, 8:30–47). Furthermore, although Reza does not
expressly disclose a “packaging template identifying user-requested
metadata associated with the media asset ID and a user-requested format for
the media file and metadata requested by the user of the client device,” for
the reasons discussed above, we conclude that identifying “user-requested
metadata” and “user-requested format” information would have been
obvious to an ordinarily skilled artisan in view of Reza’s disclosure.
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As noted above, Reza describes that identified client MATs include
“preferred media attributes,” e.g., “a preferred language, and a preference for
the display of subtitles.” Reza 7:25–34. Reza also describes “allowing a
user to select a media content item from the list” (id. at 3:23–25) and
“receiving input from a user, the input selecting a media content item” (id. at
17:59). Reza further details that the user’s selection of media and input are
provided via a user interface. Id. at 17:59–60, 20:2–4; see id. at 3:23–35,
8:24–25.
It would have been obvious to a person of ordinary skill to use Reza’s
user interface in order to further allow a user to select his or her preferred
media attributes, e.g., a preferred language or a preference for the display of
subtitles. Doing so would have improved Reza’s system because a user
would be able to select media attributes and customize media based on the
user’s preferences. For example, if a user prefers to watch a media selection
in a particular language or with subtitles, the user may customize that
preference for that media selection. See id. at 7:25–34. In another example,
a user may prefer to receive media with different resolutions, video bit-rates,
audio or video encoding (see id. at 7:12–18, 8:48–56), choosing between
higher-quality media requiring greater computational resources or lower-
quality media requiring fewer computational resources. Allowing the user to
select his or her preferences gives the user greater control over the delivery
of requested media.
Further, because Reza describes “a user interface for interacting with
[a] user” (id. at 6:21–23) that allows a user to select and request media
content from a list (id. at 17:59–60, 20:2–4; see id. at 3:23–35, 8:24–25), the
resulting combination, which further allows the user to select and request
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media attribute preferences, would have been predictable to a person of
ordinary skill in the art. Extending a selection interface to allow a user to
select additional preferences — specifically, attributes pertaining to a user-
requested media file — is a simple extension of Reza’s selection interface,
which already provides user requests.
Accordingly, we determine that it would have been obvious for a
“packaging template” to “identify[] user-requested metadata associated with
the media asset ID and a user-requested format for the media file and
metadata requested by the user of the client device.” As such, we conclude
that claims 26 and 37 would have been obvious over Reza.
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have made a new rejection of independent
claims 26 and 37 under 35 U.S.C. § 103(a), 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 are unpatentable over
Reza and/or other prior art.
We do, however, note that Appellant has challenged the Examiner’s
Official Notice regarding the obviousness rejection of claims 34, 36, 42, and
44. Appeal Br. 7–8; Reply Br. 5–6. The Examiner relies on Official Notice
to teach “including, by the client device, a user-requested compression
format for compressing the delivery package” and “including, by the client
device, a user-requested encryption format for encrypting the delivery
package.” Final Act. 6–7. We note that the references the Examiner relies
on in support of Official Notice (Final Act. 2; Ans. 5–6), i.e., US 7,395,261
B1; issued July 1, 2008 (“Atzel”) and US 2007/0288967 A1; published
December 13, 2007 (“Candelore”), themselves teach the limitations recited
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in claims 34, 36, 42, and 44. As such, those references may, on their own,
be relied upon to teach those limitations and further may be combined with
Reza, given adequate rationale for the combination. We leave it to the
Examiner to ascertain the appropriateness of any further rejections based on
these or other references.
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
26–33,
35, 37–
41, 43
102 Reza 26–33,
35, 37–
41, 43

34, 36,
42, 44
103 Reza 34, 36,
42, 44

103 Reza 26, 37
Overall
Outcome

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
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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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)