YAHOO JAPAN CORPORATION

Patent Trials and Appeals Board

Jul 2, 2020

15057492 - (D) (P.T.A.B. Jul. 2, 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.
15/057,492 03/01/2016 Bungo TAMARI 170078 5708
25944 7590 07/02/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
ALATA, YASSIN
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BUNGO TAMARI
____________________

Appeal 2019-002911
Application 15/057,492
Technology Center 2400
____________________

Before ROBERT E. NAPPI, THU A. DANG, and
JOHN P. PINKERTON, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–9, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Yahoo Japan Corporation as the real
party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as
follows:
A generation apparatus according to the present
application includes an acquiring unit that acquires information
on usage of a moving image content corresponding to a partial
moving image used as a key image of the moving image content
in a terminal device that is a distribution destination of the partial
moving image, and a generating unit that generates a partial
moving image corresponding to the moving image content on the
basis of the information acquired by the acquiring unit.

Spec. 3:22–4:5.2
The Specification explains that a provider of a moving image
distribution service distributes various moving images for a price or fee in
accordance with user requests. Id. at 1:21–23; 6:25–7:3. The Specification
also explains that the generation apparatus “clips out a part of the moving
image content to generate a partial moving image (hereinafter, described as a
‘moving image thumbnail’) used as a key image of the moving image
content.” Id. at 7:5–8. Then, the generation apparatus acquires information
on a user who uses the service and “generates a moving image thumbnail on
the basis of the acquired information.” Id. at 7:9–17.
Claims 1, 8, and 9 are independent claims. Claim 1, which is
reproduced below, is illustrative of the subject matter on appeal:

2 Our Decision refers to the Final Office Action mailed June 15, 2018
(“Final Act.”), the Appeal Brief filed Nov. 26, 2018 (“Appeal Br.”) and
Reply Brief filed Feb. 27, 2019 (“Reply Br.”), the Examiner’s Answer
mailed Dec. 31, 2018 (“Ans.”), and the Specification filed Mar. 1, 2016
(“Spec.”).
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1. A server that composes moving thumbnails tailored to
users, comprising:
a communicator that:
acquires information on usage of a moving image
content corresponding to a first thumbnail used as a key image
of the moving image content in a terminal device that is a
distribution destination of the first thumbnail; and
acquires a time point during the first thumbnail
when the moving image content is requested; and
a processor configured to:
select a first portion of the moving image content
corresponding to the time point;
select a second portion of the moving image content
based on the acquired information, the second portion of the
moving image content being absent from the first thumbnail; and
generate a new moving image thumbnail in which
the second portion of the moving image content is played, and
the first portion of the moving image content is played at a
middle point or immediately after a start point of the new moving
image thumbnail.
Appeal Br. A–1 (Claims App.).
Rejections on Appeal
Claims 1–5, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Han (US 2015/0163536 A1; published June 11, 2015),
Park (US 2010/0083115 A1; published Apr. 1, 2010), and Zhang et al. (US
9,465,435 B1; issued Oct. 11, 2016) (“Zhang”). Final Act. 2–5.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Han, Park, Zhang, and Lee (US 2016/0103561 A1;
published Apr. 14, 2016). Final Act. 5–6.
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ANALYSIS
The dispositive3 issue raised by the arguments in Appellant’s briefs is
whether the combination of Han, Park, and Zhang teaches or suggests “a
first thumbnail” used as a key image of the moving image content, as recited
in claim 1, and as similarly recited in independent claim 8.4
The Examiner rejects claim 1 under 35 U.S.C. § 103(a) for
obviousness over the combination of Han, Park, and Zhang. Final Act. 2–4.
In the Answer, the Examiner states, “Han is not cited to disclose moving
image thumbnails. Park and Zhang disclose moving image thumbnails.”
Ans. 4. In response to Appellant’s argument that independent claim 1
recites “moving image thumbnail” in the language, “a first thumbnail used
as a key image of the moving image content,” and “a communicator that
. . . acquires a time point during the first thumbnail when the moving image
content is requested,” the Examiner finds that these limitations “recite
moving image content and not a moving image thumbnail.” Id. The
Examiner also finds that “moving image thumbnail” is mentioned only in the
limitation, “a processor configured to . . . generate a new moving image
thumbnail in which the second portion of the moving image content is
played, and the first portion of the moving image content is played.” Id. at
5. Moreover, the Examiner notes that the term “moving thumbnails” is used
in the preamble of claim 1, but finds that “moving thumbnails is not giv[en]

3 Appellant raises other arguments in its briefs, but we do not address them
because we determine that this issue is dispositive.
4 Appellant argues claims 1–5, 8, and 9 as a group focusing on claim 1. See
Appeal Br. 7–13. Accordingly, we select claim 1 as illustrative, and the
remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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any weight because it is in the preamble and it is not tied to the ‘moving
image thumbnails’ in other parts of the claim.” Id.
We are persuaded by Appellant’s arguments that the Examiner erred.
Initially, we conclude that the Examiner erred in construing the term “first
thumbnail” to mean a “still image.” Appellant argues “[i]t is apparent from
the claims that the first thumbnail is a moving image thumbnail.” Appeal
Br. 8. In that regard, Appellant argues that claim 1 recites moving image
thumbnails in the following language:
“a first thumbnail used as a key image of the moving image
content,” and “a communicator that . . . acquires a time point
during the first thumbnail when the moving image content is
requested,” and “a processor configured to . . . generate a new
moving image thumbnail in which the second portion of the
moving image content is played, and the first portion of the
moving image content is played.”

Id. (emphasis added).
Appellant also argues that the “first thumbnail is a moving image
thumbnail” because claim 1 recites “acquires a time point during the first
thumbnail,” and “[i]t is impossible to ‘acquire a time point during’ a still
image.” Id. Similarly, Appellant argues that “because a still image does not
have a ‘time point,’ the first thumbnail should not be interpreted as a still
image.” Reply Br. 2. Although the Examiner states that claim 1 recites
“acquires a time point during the first thumbnail when the moving image
content is requested” and not “during the duration of the moving image
thumbnail” (see Ans. 8), Appellant argues there is “little meaningful
difference” between “a time point during the first thumbnail,” as recited in
claim 1, and a time point “during the duration of the moving image
thumbnail.” Reply Br. 2. Appellant further argues:
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For there to be a time point during the first thumbnail, the first
thumbnail must have a timeline. Because still images do not
have timelines, it would be impossible to define the first
thumbnail as being a still image.
Id.
As mentioned supra, the Specification states that the generation
apparatus “clips out a part of the moving image content to generate a partial
moving image (hereinafter, described as a ‘moving image thumbnail’) used
as a key image of the moving image content.” Spec. 7:5–8. The
Specification also states that the generation apparatus “generates a moving
image thumbnail by clipping out a part (for example, 10 seconds) of a
moving image content at an arbitrary position.” Id. at 7:21–8:4; see also
11:10–12:21 (stating the generation apparatus “learns a model that can
optimize a moving image thumbnail”). Thus, when the term “first
thumbnail” is viewed in the context of the other limitations of claim 1, and
the Specification, we agree with Appellant’s arguments that the first
thumbnail is a moving image thumbnail. Accordingly, we conclude that the
term “first thumbnail” in claim 1 does not mean a “still image,” but means
“first moving image thumbnail.”5
We now turn to the dispositive issue of whether the combination of
Han, Park, and Zhang teaches or suggests the “first moving image
thumbnail” of claim 1. The Examiner states that “Han is not cited to
disclose anything about ‘moving image thumbnails’.” Ans. 5; see also id. at
4. The Examiner finds that Park teaches “moving image thumbnails”

5 In the event of further prosecution of this application, we recommend that
Appellant consider amending the claims to be consistent with our
construction of the term “first thumbnail” to mean “first moving image
thumbnail.”
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because Park discloses displaying first thumbnail images from a program,
extracting second thumbnail images from the same program, and displaying
the second thumbnail images “in different man[ners] and by rolling them,
switching their order by a fade out scheme, or by overlapping the second
thumbnails or by rotating them into the position of the first thumbnails.” Id.
at 6–7 (citing Park ¶¶ 20–26). The Examiner also finds that Zhang teaches
generating moving image thumbnails because Zhang discloses “a summary
video or a trailer for a video can also be generated using segments of the
video associated with high user engagement levels.” Id. at 7 (citing Zhang
5:25–55; 15:33–65).
We are persuaded by Appellant’s arguments that the Examiner erred.
In regard to Park, Appellant argues that the Examiner’s reliance on Park’s
use of special effects to display still image thumbnails does not teach or
suggest “moving image thumbnails.” Reply Br. 3. Appellant notes that the
portions of Park relied on by the Examiner describe that “the still image
thumbnails can be displayed using special effects such as fade-outs,
overlapping, rolling, and that the first still image thumbnail can be replaced
by the second still image thumbnail when displayed.” Id. (citing Park
¶¶ 20–26). Appellant also argues, and we agree, that the Specification
“defines a ‘moving image thumbnail’ as a part of the moving image content
clipped to generate a partial moving image.” Id. (citing Spec. 7: 5–8). Thus,
we agree with Appellant’s argument that Park does not teach or suggest
“moving image thumbnails” as claimed, and described in the Specification,
because “Park’s still images with special effects are not moving image clips
of the original moving image content.” Id. at 3–4.
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In regard to Zhang, Appellant argues, and we agree, that the
Examiner’s newly cited portion of Zhang discloses “automatically
generating a trailer or recommending engaging segments in, e.g., a search.”
Id. at 4 (citing Zhang 3:25–55; see also id. 15:33–64). Appellant argues that
“[n]either a trailer nor a segment recommendation would be considered a
‘thumbnail’ by one skilled in the art” because a person of ordinary skill
“would consider a thumbnail to be a reduced-size image containing a link to
larger content.” Id. (citing
htps://www/techopedia.com/definition/479/thumbnail). The cited definition
from Techopedia Dictionary defines “thumbnail” as “a reduced-size
representation of a picture.” Id. Thus, we agree with Appellant’s argument
that “[b]ecause a trailer is normally played at the same size as the underlying
content, and the recommended segments are not even defined as being
pictorially represented, Zhang does not disclose a ‘thumbnail’ in the cited
passages.” Id. We also agree with Appellant’s argument that “[w]hen
Zhang does refer to thumbnails, it describes them as ‘static media (e.g.,
pictures, thumbnails).’” Id. (citing Zhang 5:25). Lastly, we agree with
Appellant’s argument that:
In summary, Zhang separately discloses trailers and search
results (which may or may not be moving), and still image
thumbnails. Zhang does not combine these concepts to result in
a moving image thumbnail. Thus, Zhang does not disclose
generating moving image thumbnails.
Id.
Accordingly, we find the preponderance of the evidence establishes
that the cited portions of Park and Zhang, individually or collectively, do not
teach or suggest a “first thumbnail,” as recited in claim 1, which we construe
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to mean a “first moving image thumbnail.” The Examiner does not rely on
Han to teach this limitation. Thus, we do not sustain the Examiner’s
rejection of claim 1. For the same reasons, we do not sustain the Examiner’s
rejection of independent claims 8 and 9, and dependent claims 2–7, which
stand together with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
We reverse the Examiner’s rejection of claims 1–5, 8, and 9 under 35
U.S.C. § 103(a) as being unpatentable over Han, Park, and Zhang.
We reverse the Examiner’s rejection of claims 6 and 7 under 35
U.S.C. § 103(a) as being unpatentable over Han, Park, Zhang, and Lee.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 8, 9 103(a) Han, Park, Zhang 1–5, 8, 9
6, 7 103(a) Han, Park, Zhang,
Lee
6, 7
Overall
Outcome
1–9

REVERSED