Campus Crusade For Christ, Inc.

Patent Trials and Appeals Board

Mar 18, 2022

2021000675 (P.T.A.B. Mar. 18, 2022)

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. 15/826,214 11/29/2017 Aaron Thomson 120550-67220 2085 123669 7590 03/18/2022 Christopher M. Ramsey, Ph. D. GrayRobinson, P.A. 301 East Pine Street, Suite1400 Orlando, FL 32801 EXAMINER PATEL, HITESHKUMAR R ART UNIT PAPER NUMBER 2419 NOTIFICATION DATE DELIVERY MODE 03/18/2022 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): christopher.ramsey@gray-robinson.com ipteam@gray-robinson.com suzanne.yenser@gray-robinson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AARON THOMSON, HOWARD CRUTSINGER, TATAIHONO RAURU NIKORA, ERIC BARKER, and MATTHEW WATTS Appeal 2021-000675 Application 15/826,214 Technology Center 2400 Before MINN CHUNG, AMBER L. HAGY, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, 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 2, 3, 5, and 19, all of the pending claims. Claims 1, 4, and 6-18 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Campus Crusade for Christ, Inc. Appeal Br. 1. Appeal 2021-000675 Application 15/826,214 2 CLAIMED SUBJECT MATTER Appellant describes the invention as relating to “a computer- implemented system that provides a notification to a sender upon the occurrence of a trigger event associated with playing media content over a network by a receiver.” Spec. ¶ 6. According to the Specification, “[t]he notification will allow the sender to electronically communicate with the receiver at the most impact full time: when the receiver is playing the content or has just finished playing the content.” Id. Independent claim 19 is reproduced below with disputed limitations in italics, and is illustrative of the claimed subject matter: 19. A computer-implemented method comprising: identifying, over a network from a content sender computer system, a video file on a media content database for display on website; embedding the video file on the website; defining, from the content sender computer system over the network, a trigger event associated with the video file, the trigger event being an event that occurs within the video file and displays on the website when the video file is played; storing, on a server in communication with the network, the trigger event; detecting, by the server over the network, the play progress of the video file in real time to determine the moment the trigger event occurs when the video file is being played on the website; registering, by the server, when the trigger event occurs automatically in real time by detecting the play progress of the video file over the network; transmitting, by the server, an electronic notification over the network to the content sender computer system as soon as the trigger event is registered by the server; and Appeal 2021-000675 Application 15/826,214 3 sending a message pertaining to the trigger event from the server over the network to the content receiver computing device after the electronic notification is transmitted. Appeal Br. 14-16 (Claims Appendix). REFERENCES2 The Examiner relies on these references: Name Reference Date Schneiderman US 2014/0188997 A1 July 3, 2014 Carrasco US 2013/0103814 A1 Apr. 25, 2015 Vezza US 2007/0271137 A1 Nov. 22, 2007 REJECTION Claims 2-3, 5, and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Schneiderman, Carrasco, and Vezza. Final Act. 3. ISSUE Has the Examiner provided reasoning sufficient to show that a person of ordinary skill in the art would have combined the cited teachings of Schneiderman, Carrasco, and Vezza to arrive at the invention recited in claim 19? ANALYSIS Appellant’s Briefs raise various challenges to the Examiner’s findings with respect to the claims. However, we need only address one here-the Examiner’s rationale in support of combining the pertinent teachings of the cited references. Appeal Br. 9-11. Rejecting claim 19, the Examiner relies on the combined teachings of Schneiderman, Carrasco, and Vezza. Final 2 Citations to the references are to the first named inventor/author only. Appeal 2021-000675 Application 15/826,214 4 Act. 4-9. The Examiner finds that Schneiderman teaches most of the limitations of claim 19, but fails to specifically teach registering a trigger event “automatically in real time by detecting the play progress of the video file over the network.” Ans. 7. The Examiner cites Vezza as teaching this limitation. Ans. 12 (citing Vezza ¶¶ 26-27). The Examiner further finds Schneiderman deficient with respect to the limitations “transmitting, by the server, an electronic notification over the network to the content sender computer system as soon as the trigger event is registered by the server” and “sending a message pertaining to the trigger event from the server over the network to the content receiver computing device after the electronic notification is transmitted.” The Examiner relies on Carrasco as teaching these limitations. Final Act. 7-8 (citing Carrasco ¶¶ 8-9, 18-19); Ans. 8-9. With respect to each of Vezza and Carrasco, the Examiner states that “it would have been obvious to one of ordinary skill in the art . . . to implement [the reference’s] teachings into Schneiderman’s . . . [because] [t]his combination would recreating full spectrum of social actions and capabilities are enhanced.” Final Act. 8 (combining Carrasco), 9 (combining Vezza). Thus, the Examiner determines that a person of ordinary skill in the art would have combined Schneiderman with both Vezza and Carrasco for the same reasons-because “[t]his combination would recreating full spectrum of social actions and capabilities are enhanced.” Final Act. 8-9. In the Answer, the Examiner provides additional reasoning. Specifically, the Examiner states “[h]ere, the Examiner relies upon commonsense reasoning” and that “[c]ommon sense does not require a ‘specific intent or suggestion in a particular reference,’ only a reasoned explanation that avoids conclusory generalizations.” Ans. 15 (case citations omitted). Appeal 2021-000675 Application 15/826,214 5 Appellant argues the Examiner provides “a conclusory rationale that is not supported by the cited references and relies solely on the present application as a roadmap.” Appeal Br. 9. More specifically, Appellant argues “[r]ecreating the full spectrum of social actions and enhancing capabilities is a conclusory rationale . . . [because the] goal of enhancing capabilities is being sought by almost all inventors.” Appeal Br. 10. With respect to the combination of Schneiderman with Vezza, Appellant argues: The art does not suggest the desirability of modifying Schneiderman's system to have the cited features of Vezza. In Vezza, the advantage of determining when a commercial break occurs was to know when to initiate a call session between two users when their videos are simultaneously in a commercial break. This advantage is irrelevant to Schneiderman’s and Carrasco’s systems. Appeal Br. 10-11. Appellant further asserts that “the Examiner provided no reasoning, analysis, or evidence to support a finding that combining the references would re-create the full spectrum of social interactions or enhance capabilities” and that “[i]t is not even clear what it means to re-create the full spectrum of social interactions.” Reply Br. 10. Appellant also challenges the Examiner’s reliance on common sense, arguing that such reliance is misplaced and contrary to binding precedent. Specifically, Appellant contends “[s]ince KSR, the Federal Circuit has repeatedly explained that obviousness findings grounded in common sense must contain an explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness.” Reply Br. 8 (citations omitted). We are persuaded by Appellant’s arguments. The standard for determining whether a claim is obvious is “an expansive and flexible Appeal 2021-000675 Application 15/826,214 6 approach.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007). Nevertheless, as the Federal Circuit has explained, “the flexibility afforded by KSR did not extinguish the factfinder’s obligation to provide reasoned analysis. Instead, KSR specifically instructs that when determining whether there would have been a motivation to combine, the ‘analysis should be made explicit.’” In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (quoting KSR, 550 U.S. at 418). Here, the Examiner determines that it would have been obvious to combine the teachings of Schneiderman, Carrasco, and Vezza for two reasons: (1) “recreating full spectrum of social actions and capabilities are enhanced,” and (2) the common sense possessed by a person of ordinary skill in the art would have motivated the combination. Ans. 15-16. Neither proffered reason is sufficient to meet the Examiner’s “obligation to provide reasoned analysis.” See In re Van Os, 844 F.3d at 1361. With respect to the first reason-that an ordinarily skilled artisan would have been motivated to recreate the full spectrum of social actions and enhance system capabilities-we agree with Appellant that this motivation is too generalized and not tethered to the specific teachings of the references themselves. As correctly argued by Appellant (Reply Br. 10), the Examiner does not provide any explanation of how the proposed modifications to Schneiderman would have been understood by a person of ordinary skill in the art to enhance capabilities and/or re-create the full spectrum of social actions within the modified system. Nor does the Examiner provide any reasoning that explains the specific system capabilities that would be enhanced by the combination proposed. Appeal 2021-000675 Application 15/826,214 7 Schneiderman describes a system “for creating and sharing inline commentary relating to media within an online community, for example, a social network.” Schneiderman, Abstract. The cited portions of Schneiderman describe an environment in which users view video content within a social network and add commentary regarding the viewed content. Schneiderman ¶ 28. When that content is added, notifications are generated which are sent to other users. The other users may choose to watch the same video content and respond to the initial user’s commentary with their own commentary. Schneiderman ¶¶ 29-30. Schneiderman discloses that “[t]his technology simulates an experience for users who may watch a movie with others, even if at a different time and place.” Schneiderman ¶ 29. Carrasco describes a system for providing “a shared media experience, such as watching a you to be a video together.” Carrasco ¶ 8. Carrasco describes a publication/subscription model such that “when a client device makes a change in the shared media experience, such as making a comment, pausing the video, . . . the client device notifies a management server.” Carrasco ¶ 8. Upon receiving that notification, the “management server pushes that change to the pub/sub-server, which publishes the change to the group” and causes “the client-side experience of each member of the group [to be modified] accordingly.” Carrasco ¶ 8. The Examiner does not explain why, a person of ordinary skill in the art would have viewed incorporating Carrasco’s publication/subscription messaging into Scheiderman’s framework as “recreating full spectrum of social actions.” The Examiner does not describe what the “full spectrum of social actions” includes, nor does the Examiner explain how Carrasco’s publication/subscription service would “recreate” that “full spectrum.” Appeal 2021-000675 Application 15/826,214 8 Additionally, as we noted above, the Examiner also fails to explain which specific capabilities of Schneiderman would be enhanced by the combination. The Examiner’s reasoning with respect to the addition of Vezza, which is identical to the reasoning in support of Carrasco, is similarly deficient. Vezza relates to “allow[ing] terminal devices to establish call sessions over the network with each other during time slots in which advertisements would have been presented to a user.” Vezza ¶ 15. Thus, instead of watching television commercials, users can instead have voice or video calls with each other during the allotted commercial time. Vezza ¶ 15. Vezza describes the use of a synchronized ad time slot call manager which “determines whether advertisement content to be presented by the terminal devices at least partially overlap in time with each other.” Vezza ¶ 26. As with Carrasco, the Examiner fails again to provide explanation for how the addition of Vezza’s ad time slot call manager would improve Schneiderman by recreating the full spectrum of social actions. The Examiner does not explain why a person of ordinary skill in the art would seek to improve Schneiderman by adding technology used for initiating phone calls upon detecting commercial breaks in live television programs. We also agree with Appellant that the Examiner’s reliance on common sense is insufficient to establish obviousness. Our reviewing court has explained that obviousness “grounded in 'common sense' must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (citation omitted). Thus, while it is permissible to rely on common sense, the rejection must “explain Appeal 2021-000675 Application 15/826,214 9 why ‘common sense’ of an ordinary artisan seeking to solve the problem at hand would have led him to combine the references.” In re Van Os, 844 F.3d at 1361 (quoting DyStar Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1366-67 (Fed. Cir. 2006)). Here, the Examiner’s invocation of “common sense” provides no explanation for how or why the common sense of the ordinarily skilled artisan would have led to the incorporation of Carrasco’s and Vezza’s teachings into Schneiderman’s system. The Examiner suggests that the burden falls on the Appellant to explain why it would not be common sense to make the proposed modifications to Schneiderman. Ans. 16 (“Appellants do not explain why the Examiner’s common sense reasoning is incorrect.”). The problem with that suggestion is that the Examiner has not explained, in the first instance, what precisely in that common sense would have led to an ordinarily skilled artisan combining the references in the manner claimed. As explained by the Federal Circuit in Van Os: Absent some articulated rationale, a finding that a combination of prior art would have been “common sense” or “intuitive” is no different than merely stating the combination “would have been obvious.” Such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine. This type of finding, without more, tracks the ex post reasoning KSR warned of and fails to identify any actual reason why a skilled artisan would have combined the elements in the manner claimed. Van Os, 844 F.3d at 1361. In sum, the Examiner’s rationale for combining the cited references does not adequately explain why a person of ordinary skill in the art would have been motivated to combine the teachings of Schneiderman, Carrasco, and Vezza to achieve the invention of claim 19. Accordingly, we do not Appeal 2021-000675 Application 15/826,214 10 sustain the rejection of independent claim 19 under 35 U.S.C. § 103. The remaining claims are dependent, and stand together with claim 19. CONCLUSION We reverse the Examiner’s decision to reject the claims. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 3, 5, 19 103 Schneiderman, Carrasco, Vezza 2, 3, 5, 19 REVERSED