Disney Enterprises, Inc.

Patent Trials and Appeals Board

Jan 28, 2022

2020006314 (P.T.A.B. Jan. 28, 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. 14/510,840 10/09/2014 Aljoscha Smolic 40189/05202(13- DIS-277MED 7275 94470 7590 01/28/2022 DISNEY ENTERPRISES, INC. c/o Fay Kaplun & Marcin, LLP 150 Broadway Suite 702 New York, NY 10038 EXAMINER TRAN, HAI V ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 01/28/2022 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): fhall@fkmiplaw.com mmarcin@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALJOSCHA SMOLIC, NIKOLCE STEFANOSKI, and OLIVER WANG Appeal 2020-006314 Application 14/510,840 Technology Center 2400 Before ALLEN R. MacDONALD, JEAN R. HOMERE, 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 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies DISNEY ENTERPRISES, INC., as the real party in interest. Appeal Brief filed March 17, 2020 (“Appeal Br.”) at 2. Appeal 2020-006314 Application 14/510,840 2 CLAIMED SUBJECT MATTER Summary The subject matter of Appellant’s application relates generally to providing optional overlays on a video. By way of background, the Specification explains that “[v]iewers of sporting events often wish to receive additional information beyond that which is contained in the broadcast video itself” such as “the score of the game, the game clock, the players currently in the game, the roles of players currently in the game, in- game and historical statistics, the position of the ball within the playing surface, etc.” Spec. ¶ 1.2 “Therefore, it may be desirable to provide viewers with optional overlays; that is, the ability to choose which of one or more provided overlays to show on the viewer’s screen.” Id. ¶ 3. With respect to prior efforts to provide optional overlays, Appellant explains: Prior efforts to provide optional overlays have involved the use of two different transmission channels. For example, a video signal may be transmitted over a cable or satellite television network, while overlay data is transmitted over the Internet in the form of metadata including the information required to render the overlay. This approach may typically suffer from temporal synchronization problems as the video data may be out of synchronization with the overlay data. Id. To avoid such synchronization issues, Appellant’s claimed subject matter instead “generat[es] an overlay for the video that is to be included in the 2 In addition to the above-noted Appeal Brief, throughout this Decision we refer to: (1) Appellant’s Specification filed October 9, 2014 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed September 17, 2019; (3) the Examiner’s Answer (“Ans.”) mailed July 9, 2020; and (4) the Reply Brief filed September 9, 2020 (“Reply Br.”). Appeal 2020-006314 Application 14/510,840 3 multi-stream broadcast of the television program.” Appeal Br. 14. Exemplary Claim Claims 1, 12, and 22 are the independent claims. Claim 1, reproduced below with certain limitations at issue italicized, exemplifies the claimed subject matter: 1. A method, comprising: receiving video of an event that is to be included in a multi-stream broadcast of a television program; generating an overlay for the video that is to be included in the multi-stream broadcast of the television program; generating an information message corresponding to the video and the overlay; generating, the multi-stream broadcast of the television program, including a primary stream, one or more auxiliary streams, and the information message, wherein the primary stream includes the video and a first auxiliary stream of the one or more auxiliary streams includes the overlay; broadcasting the multi-stream broadcast of the television program over the single transmission channel, wherein the video, the overlay, and the information message arc synchronized prior to the broadcasting, wherein the information message contains information enabling a user interface to receive a user instruction to either display the overlay or hide the overlay. Appeal Br. 14 (Claims App.). REFERENCES AND REJECTIONS The Examiner rejects claims 1, 2, 3, 6, 7, 12-14, 17, 18, and 22 under 35 U.S.C. § 102 (a)(1) or (a)(2) as anticipated by Carroll et al. Appeal 2020-006314 Application 14/510,840 4 (US 2012/0075531 A1, published Mar. 29, 2012) (“Carroll”). Final Act. 5- 16. The Examiner rejects claims 4, 5, 9-11, 15, 16, 20, and 21 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Carroll and Herigstad et al. (US 2015/0074735 A1, published Mar. 12, 2015) (“Herigstad”). Id. at 16-20. The Examiner rejects claims 8 and 19 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Carroll and Tsukagoshi (US 2016/0373789 A1, published Dec. 22, 2016). Id. at 20-21. OPINION We review the appealed rejections 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). We disagree with Appellant that the Examiner errs in rejecting claims 1-22, and we adopt as our own the findings and reasons set forth by the Examiner for these claims to the extent consistent with our analysis herein. Final Act. 2-8; Ans. 19-26. 35 U.S.C. § 102 Rejection The Examiner finds Carroll discloses each of the limitations of claim 1. Final Act. 5-8 (citing Carroll ¶¶ 31, 42-47, 52, 55 and Figs. 3, 4, 6); Ans. 19-24. Carroll generally relates to demultiplexing a multiplexed data stream into substreams and displaying at least one substream according to a compositing-instruction substream INSTR that includes instructions on a composition of the displayed substreams. Carroll, Abstr. Appeal 2020-006314 Application 14/510,840 5 With reference to Figure 6 of Carroll, the Examiner finds Carroll’s MPEG media substream 2 discloses the claimed video and either of HTML substreams 3 and 4 disclose the claimed overlay. Final Act. 7 (citing Carroll ¶ 52 and Fig. 6). Referring to the first claim limitation at issue, the Examiner relies on Carroll’s discussion of the compositing-instruction substream INSTR to disclose “generating an information message corresponding to the video and the overlay . . . wherein the information message contains information enabling a user interface to receive a user instruction to either display the overlay or hide the overlay,” as recited in claim 1. Id. Appellant argues the Examiner errs in rejecting claim 1 as anticipated by Carroll because “neither the cited portions of Carroll nor the Examiner’s corresponding explanation draw any correlation between the user’s ability to alter the display (e.g., hide an overlay) and the compositing-instruction substream.” Appeal Br. 8. According to Appellant, “there is no disclosure in Carroll that correlates the compositing sub-stream which the Examiner analogizes to the recited ‘information message’ and the server-provided menu referenced in ¶ [0055].” Reply Br. 4. Appellant’s arguments are unpersuasive because Appellant fails to specifically respond to the Examiner’s findings as discussed in more detail below. The Examiner relies, in part, on the multiplexing operation shown at Carroll’s Figure 3 and on the demultiplexing operation shown at Carroll’s Figure 2, which is reproduced directly below. Appeal 2020-006314 Application 14/510,840 6 Figure 2 of Carroll above shows controller 202 receiving both (1) user input from User I/O 204 and (2) compositing-instruction substream INSTR from demultiplexer 201. FIG. 3 of Carroll is reproduced below and shows video server 102, which includes a controller 302 and a multiplexer 301. Appeal 2020-006314 Application 14/510,840 7 Figure 3 of Carroll above shows controller 302 providing, via the User Control Channel, user input received from the user input device to compositing-instruction substream INSTR. Carroll further discloses that “the user uses the input device to pull down a server-provided menu and selects ‘do not display HTML substreams 3 and 4.’” Carroll ¶ 55. The Examiner finds that Carroll’s video server 102 uses controller 302 to enable the server- provided menu via compositing-instruction substream INSTR: Carroll’s system is operated in client-server environment and thereby all actions perform at the client (client-mediated server alteration) could also be perform at the Server (server-mediated viewer alteration) and vice versa. As such, one of ordinary skill in the art would understand that during operation of the system as described (see Carroll ¶ 0055), the “server-provided menu” must be displayed on the display device before the user is able to select “do not display HTML substreams 3 and 5” from the “server-provided menu.” For example, initially, while a media content is being displayed on the display device, at time t0, a user uses a remote control RC to initiate an input command, i.e., to display the “server-provided menu.” Subsequently via the “user Control Channel” (see Fig. 2 & 3), the server (Fig. 3) receives the user initiated command signal indicating the user-initiated composition alteration (i.e., display the “server-provided menu”) and makes the change to the composition of the media stream via the server controller 302 and thereby to generate “a compositing- instruction substream INSTR” (see Carroll §0043) with instructions (see Carroll §0047), i.e. a set of instructions that will be executed by the client device to display the “server-provided menu.” Subsequently, at the server (Fig. 3), the “compositing- instruction substream INSTR” is provided to the multiplexer (see Fig. 3 el. “MUX 301” and Carroll ¶ 0043) and thereby altering “the multiplexed data” stream before it is transmitted to the client device. Finally, the “compositing-instruction substream INSTR” that is part of “the multiplexed data” stream arrives at the client device and is executed by the client device accordingly, i.e., displaying the “server-provided menu” on the display device. Appeal 2020-006314 Application 14/510,840 8 Ans. 23-24. Appellant’s argument that “neither the cited portions of Carroll nor the Examiner’s corresponding explanation draw any correlation between the user's ability to alter the display (e.g., hide an overlay) and the compositing- instruction substream” is unpersuasive because the argument fails to address the Examiner’s findings and reasoning as set forth above. Appeal Br. 8. In view of the Examiner’s uncontested findings and explanations, we agree with the Examiner that Carroll’s compositing-instruction substream INSTR contains information that enables server-provided menu to receive user input via remote control to either display or hide overlays in the form of HTML substreams 3 and 4. Final Act. 5-8; Ans. 23-24. Next, Appellant attempts to distinguish Carroll from the claimed invention by arguing that “Carroll discloses a mechanism that provides the user with the exclusive control of the display of overlays and the above- recited portion of claim 1 relates to a mechanism that provides the broadcaster with the ability to retain or relinquish the control of the display of the overlays.” Appeal Br. 8-9. We agree with the Examiner that this argument is unpersuasive (Ans. 21-22) because claim 1 does not recite “a mechanism that provides the broadcaster with the ability to retain or relinquish the control of the display of the overlays.” Id. Accordingly, Appellant’s argument relies on an aspect of the invention not recited in the claim. Limitations not appearing in the claim cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appeal 2020-006314 Application 14/510,840 9 Claim 1 further recites “wherein the video, the overlay, and the information message arc synchronized prior to the broadcasting.” Appeal Br. 14. The Examiner finds Carroll discloses this limitation. Ans. 19-21 (citing Carroll ¶¶ 7, 11, 15-18, 29, Figs. 3-7). In response, Appellant argues: The Appellant has already demonstrated above that Carroll does not disclose or suggest, “an information message” as recited in claim 1. The Appellant submits that the various Standards documents cited by the Examiner in the Examiner’s Answer are silent with regard to “an information message” as recited in claim 1. Consequently, neither Carroll nor the newly cited documents disclose or suggest synchronizing such a message with video or an overlay. Reply Br. 6-7. Appellant argues, in essence, that because Carroll does not disclose an information message, as previously argued, Carroll cannot disclose synchronizing such an information message. This argument is, therefore, predicated on Appellant’s argument that Carroll does not disclose “an information message,” and thus we find it unpersuasive for the same reasons provided on pages 5-8 above. Moreover, Appellant’s argument regarding the standards documents fails to specifically respond to the Examiner’s additional findings and reasoning provided in the Answer based on Carroll in view of these standards documents. Ans. 19-21. For the reasons discussed, Appellant has not persuaded us of error in the Examiner’s anticipation rejection of independent claim 1. We, therefore, sustain the Examiner’s rejection of that claim, as well as the rejections of independent claims 12 and 22 and dependent claims2, 3, 6, 7, 13, 14, 17, and Appeal 2020-006314 Application 14/510,840 10 18, which Appellant does not argue separately with particularity. Appeal Br. 9. 35 U.S.C. § 103 Rejections The Examiner rejects claims 4, 5, 8-11, 15, 16, 19, 20, and 21 under 35 U.S.C. § 103 as obvious over various combinations of Carroll, Herigstad, and Tsukagoshi. Final Act. 16-21. Appellant does not separately argue with particularity the rejections of these claims. Appeal Br. 10-12. Therefore, we sustain the rejections of claims 4, 5, 8-11, 15, 16, 19, 20, and 21 under 35 U.S.C. § 103 for reasons similar to those provided above for independent claim 1. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 3, 6, 7, 12-14, 17, 18, 22 102(a) Carroll 1, 2, 3, 6, 7, 12-14, 17, 18, 22 4, 5, 9- 11, 15, 16, 20, 21 103 Carroll, Herigstad 4, 5, 9-11, 15, 16, 20, 21 8, 19 103 Carroll, Tsukagoshi 8, 19 Overall Outcome 1-22 Appeal 2020-006314 Application 14/510,840 11 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) (2019). AFFIRMED