DISNEY ENTERPRISES, INC.

Patent Trials and Appeals BoardJun 28, 2021

2020000273 (P.T.A.B. Jun. 28, 2021)

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. 14/259,063 04/22/2014 THATCHER THORNBURG GELLMAN DISN/0417US (109409) 1963 77754 7590 06/28/2021 DISNEY ENTERPRISES, INC. c/o Patterson & Sheridan, LLP 24 Greenway Plaza Suite 1600 Houston, TX 77046-2472 EXAMINER CASTRO, ALFONSO ART UNIT PAPER NUMBER 2421 NOTIFICATION DATE DELIVERY MODE 06/28/2021 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): PAIR_eOfficeAction@pattersonsheridan.com PSDocketing@pattersonsheridan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THATCHER THORNBURG GELLMAN Appeal 2020-000273 Application 14/259,063 Technology Center 2400 ____________ Before JOHN A. EVANS, JENNIFER L. MCKEOWN, and CATHERINE SHIANG, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final decision to reject Claims 1, 2 and 4–21. Appeal Br. 14. We have jurisdiction under 35 U.S.C. § 6. We REVERSE and enter a NEW GROUND OF REJECTION.2 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief names Disney Enterprises, Inc., as the real party in interest. Appeal Br. 1. 2 Throughout this Decision, we refer to the Appeal Brief filed April 1, 2019 (“Appeal Br.”); the Reply Brief filed October 15, 2019 (“Reply Br.”);the Final Office Action mailed December 14, 2018 (“Final Act.”); the Examiner’s Answer mailed August 21, 2019 (“Ans.”); and the Specification filed April 22, 2014 (“Spec.”). Appeal 2020-000273 Application 14/259,063 2 STATEMENT OF THE CASE CLAIMED SUBJECT MATTER The claims relate to interactive multimedia package methods and systems. See Abstract. CLAIMS Claims 1, 10, and 16 are independent. Claim 1 is illustrative and reproduced below, with some formatting added: 1. A computer-implemented method, comprising: determining an item based on a user preference information; identifying the item as being related to an object shown in a digital video, the item corresponding to an item provider; and associating the item with the object to generate an interactive multimedia package, the interactive multimedia package being configured to present the item to a user in response to a user’s command to activate trigger data, the interactive multimedia package comprising the trigger data configured to be displayed in response to automated detection of a triggering event associated with a temporal aspect of the digital video, wherein the trigger data is generated by processing the interactive multimedia package, and wherein the interactive multimedia package is transmitted separately from and presented along with the digital video. Appeal 2020-000273 Application 14/259,063 3 REFERENCES Name3 Reference Date Huber US 2005/0137958 A1 June 23, 2005 Freeman US 7,079,176 B1 July 18, 2006 Mockett US 2007/0266170 A1 Nov. 15, 2007 Landow US 2011/0321096 A1 Dec. 29, 2011 Clarke US 2013/0014155 A1 Jan. 10, 2013 Lakes US 2014/0280919 A1 Sept. 18, 2014 REJECTIONS AT ISSUE 1. Claims 1, 2, 4–6, 9–18, 20, and 21 stand rejected under 35 U.S.C. § 103 as obvious over Landow, Freeman, Mockett, Huber, and Clarke. Final Act. 7–23. 2. Claims 7, 8, and 19 stand rejected under 35 U.S.C. § 103 as obvious over Landow, Freeman, Mockett, Huber, Clarke, and Lakes. Final Act. 23–25. ANALYSIS We have reviewed the rejections of Claims 1–2, and 4–21 in light of Appellant’s arguments that the Examiner erred. We are persuaded of error. We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. We consider Appellant’s arguments as they are presented in the Appeal Brief and the Reply Brief. CLAIMS 1, 2, AND 4–21: OBVIOUSNESS OVER LANDOW, FREEMAN, MOCKETT, HUBER, CLARKE, AND LAKES. 3 All citations herein to the references are by reference to the first named inventor/author only. Appeal 2020-000273 Application 14/259,063 4 Appellant argues these claims as a group specifically over the recitations of Claim 1. App. Br. 14 (“For at least these reasons, the cited prior art fails to render obvious, independent claim 1 and claims 2, 4-9, and 21 each of which depend from independent claim 1. Independent claims 10 and 16 recite the same/similar limitations as those recited in independent claim 1. Thus, for at least the same reasons as discussed above, the cited prior art also fails to render obvious, independent claims 10 and 16, as well as claims 11-15 and 17-20, each of which depend from one of independent claims 10 16.”). Therefore, we decide the appeal of the § 103 rejections on the basis of Claim 1 and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Claim 1 recites, inter alia, “determining an item based on a user preference information; [and] identifying the item as being related to an object shown in a digital video.” Independent Claims 10 and 16 contain commensurate limitations. The Examiner finds Landow generally teaches Claim 1, except Landow fails to teach “determining an item based on a user preference information.” Final Act. 9. The Examiner finds Huber teaches “determining an item based on a user preference information.” Final Act. 12 (citing Huber ¶¶ 11, 12, 49, 50). Appellant contends the cited paragraphs of Huber fail teach or suggest these claimed features. Appeal Br. 9. Appellant argues paragraphs 11 and 12 of Huber merely describe inserting objects (i.e., embedding advertising) into a displayed video broadcast, not identifying an item related to an object. Id. Appellant further argues paragraphs 49 and 50 of Huber merely describe Appeal 2020-000273 Application 14/259,063 5 that user presentation descriptions may be input into a set top box, so that user preferences regarding the manner in which video signals are combined can be specified. Id. Appellant contends Huber fails to teach “determining an item based on a user preference information,” as claimed. Id. The Examiner makes two findings in response to Appellant’s contention. First, with respect to Landow, the Examiner finds: As discussed in the Final Office Action, the Appellant’s argument does not appear to appreciate the significant teaching value of Landow which a person of ordinary skill in the art would have reasonably inferred that content (i.e., items) related to an object in the digital video were previously identified in order to present said supplemental media rich content to the viewer after the viewer selects the active regions. Ans. 6 (citing Final Act. 6). However, having explicitly found: “Landow does not disclose determining an item based on user preference information” (Final Act. 9), the Examiner cannot now charge Appellant with a requirement “to appreciate the significant teaching value of Landow” in that regard. “Although the Solicitor argues that the court must defer to the PTO’s latest position, the agency’s contradictory findings of technological facts based on shifting perceptions of the prior art impeach the deference normally owed to administrative findings of fact.” In re Vaidyanathan, 381 Fed. Appx. 985, 991 (Fed. Cir. 2010). Second, with respect to Huber, the Examiner finds: “Huber recognizes that embedded advertisements are tailored to each user based on viewer preference.” Ans. 7–8 (citing, non-specifically, Huber ¶¶ 11, 49–55, 64, 65, 69–71, 73, 83, 120, 137). The Examiner refers Appellant and the Board to sixteen paragraphs of Huber, the majority of which were not cited in the Appeal 2020-000273 Application 14/259,063 6 Final Action, but makes no attempt to map any specific disclosure of Huber to the claimed limitation: The examiner has essentially only set forth a broad-brush approach to reject the claims on appeal. Stated differently, each claim limitation of each independent claim on appeal has not been respectively mapped to each of the reference’s teachings and/or showings in the drawings in a detailed manner. Thus, the examiner has not fully explained the rationale for the rejection under 35 U.S.C. § 103 for each of the independent claims on appeal. Following this approach, it is apparent to us that the examiner has not set forth a prima facie case of obviousness for each of the independent claims on appeal. Ex parte Forest, Appeal No. 2000-1901, WL 33951036, at 2 (BPAI May 30, 2002). In any event, for each reference relied on in each rejection, the PTO’s policy is for the examiner to compare the rejected claims feature-by-feature or limitation-by limitation with each of the references relied upon in the rejection. This comparison should map the language of the claims to the specific page number, column number, line number, drawing number, drawing reference number, and/or quotation from each reference relied upon. Id. at 3. In view of the foregoing, we decline to sustain the rejection of Claims 1, 2, and 4–21 under 35 U.S.C. § 103. NEW GROUNDS OF REJECTION BY BOARD We enter a new ground of rejection for Claims 1–18 under 35 U.S.C. § 101 as being directed to non-statutory subject matter, i.e., an abstract idea. Claim 1 recites, inter alia: determining an item based on a user preference information; identifying the item as being related to an object shown in a digital video, the item corresponding to an item provider; and Appeal 2020-000273 Application 14/259,063 7 associating the item with the object to generate an interactive multimedia package. Claim 1. Appeal Br. 16. We underline abstract, mental process steps that a human could perform with paper and pencil. In responding to the rejections under 35 U.S.C. § 103, Appellant contends: First, as claimed, an interactive multimedia package is one generated by “associating the item with the object.” As recited by independent claim 1, an object is “shown in a digital video” and an item is “determin[ed] ... based on a user preference information,” wherein the item is “identif[ied] ... as being related to an object.” Appeal Br. 8–9. Appellant distinguishes Huber’s disclosure because it: [I]s different than “determining an item based on user preference information.” Thus, none of these sections of Huber disclose “identifying an item related to an object shown in a digital video,” and “determining an item based on user preference information,” as recited in independent claim 1 of the present application. Appeal Br. 9. If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Appellant discloses: A user may shop directly off of the digital media that he or she is experiencing (e.g., watching a movie, viewing a digital news, reading an e-book, playing a video game, etc.) The user may be directed to an e-commerce website. Spec. ¶ 4. Appeal 2020-000273 Application 14/259,063 8 A user’s interaction with the interactive multimedia package may be recorded, tracked, and/or analyzed. Digital media may be recommended or presented to the user based on the user's interactions such as a browsing and/or purchase history. Items may be arranged and presented to the user in an order determined based on the user’s interactions. Spec. ¶ 5. Appellant’s disclosure relates to computerized shopping which the Federal Circuit has held is an abstract concept. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) (holding that computer-implemented method for “anonymous loan shopping” was an abstract idea because it could be “performed by humans without a computer”). Moreover, in rejecting the claims over, inter alia Huber, the Examiner found, similar to Appellants contention, “Huber recognizes that embedded advertisements are tailored to each user based on viewer preference.” Ans. 7–8. As the Federal Circuit has found: At step one of the Alice framework, it is often useful to determine the breadth of the claims in order to determine whether the claims extend to cover a “fundamental . . . practice long prevalent in our system . . . .” Alice, 134 S. Ct. at 2356. As noted, the claim relates to customizing information based on (1) information known about the user and (2) navigation data . . . . [T]ailoring is “a fundamental . . . practice long prevalent in our system . . . .” Id. There is no dispute that newspaper inserts had often been tailored based on information known about the customer—for example, a newspaper might advertise based on the customer's location. Providing this minimal tailoring—e.g., providing different newspaper inserts based upon the location of the individual—is an abstract idea. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Appeal 2020-000273 Application 14/259,063 9 However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the Appeal 2020-000273 Application 14/259,063 10 claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) (holding that computer- implemented method for ‘‘anonymous loan shopping’’ was an abstract idea because it could be “performed by humans without a computer”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”). As discussed above, the claimed method can be performed by a person using paper and pencil. The claimed method is not one that “could not, as a practical matter, be performed entirely in a human’s mind.” See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1376 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions that “could not, as a practical matter, be performed entirely in a human’s mind”). Further, the claim does not recite a practical application of the mental process, as it does not improve the functioning of a computer, or other technology; does not implement the mental process on a particular machine; or result in the transformation of an article to another thing. Nor do the claims recite additional elements, which recite significantly more than the abstract idea. Rather the claims merely recites using a computer to perform the mental process. The claims merely operate to improve a user’s shopping experience, e.g.: Appeal 2020-000273 Application 14/259,063 11 A user’s interaction with the interactive multimedia package may be recorded, tracked, and/or analyzed. Digital media may be recommended or presented to the user based on the user's interactions such as a browsing and/or purchase history. Items may be arranged and presented to the user in an order determined based on the user’s interactions. Spec., ¶ 5. Nor do the claims recite additional elements, which recite significantly more than the abstract idea. Rather the claims merely recite using a computer to perform the mental process. Appellant discloses only generic computing devices: a user system 112 may include a smartphone 108 (e.g., iPhone®), a TV 109, a computer 110 (e.g., a personal computer), and/or a tablet 111 (e.g., iPad®), which through their respective network connections 107, can either interact directly or indirectly with the various digital media providers 1-n 102-104, via their respective network connections 106.” Spec. ¶ 22. Appellant further discloses: “the user system 112 can display any interface related to playing and interacting with a digital media.” Spec. ¶ 22. See Alice, 573 U.S. at 221 (internal citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground Appeal 2020-000273 Application 14/259,063 12 1, 2, 4–6, 9–18, 20, 21 103 Landow, Freeman, Mockett, Huber, Clarke 1, 2, 4–6, 9–18, 20, 21 7, 8, 19 103 Landow, Freeman, Mockett, Huber, Clarke, Lakes 7, 8, 19 1, 2, 4−21 101 Eligibility 1, 2, 4−21 Overall Outcome 1, 2, 4−21 1, 2, 4−21 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” (emphasis added). Section 41.50(b) also provides: When the Board enters such a non-final decision, 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.4 or 4 Regarding option ( 1 ), “Reopen prosecution,” and particularly regarding the requirement to submit an amendment and/or new evidence, please note MPEP 1214.01(1): “If the appellant submits an argument without either an Appeal 2020-000273 Application 14/259,063 13 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. (emphasis added). 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) appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 C.F.R. § 41.50(b )(2). “If for any reason Appellant desires to reopen prosecution before the Examiner without submitting an amendment and/or new evidence, a Request for Continued Examination (RCE) that complies with 3 7 C.F.R. § 114 will remove the application from the jurisdiction of the Board under 37 C.F.R. § 41.35, and will reopen prosecution before the Examiner.