Ex Parte Lettau et al

Patent Trial and Appeal Board

Sep 28, 2017

11833305 (P.T.A.B. Sep. 28, 2017)

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.
11/833,305 08/03/2007 Ty Lettau 58083/394785 (B531) 7654
72058 7590 10/02/2017
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
SMITH, CHENEA
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TY LETTAU and KIM PIMMEL
Appeal 2017-006484
Application 11/833,305
Technology Center 2400
Before DEBORAH KATZ, HUNG H. BUI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 23—26, 30,
34—38, and 40-42, which are all the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The real party in interest is identified as Adobe Systems Inc. App. Br. 4.
In an earlier decision, we affirmed the Examiner’s rejections of claims 1, 4—
6, and 8-22. Appeal No. 2012-003577 (PTAB July 21, 2014).
Appeal 2017-006484
Application 11/833,305
Claimed Subject Matter
The claimed invention relates to a “mandatory video viewing process
that prevents a user from advancing through a video (i.e., a first video), past
an advertisement (i.e., a second video), until that user has viewed the
advertisement (i.e., the second video).” Spec. 2:2-4.
Claims 23, 36, and 40 are independent. Claim 23, reproduced below,
illustrates the claimed subject matter.
23. A method for providing a timeline for navigating playback
of a video along with mandatory ads and preventing a skip past
the mandatory ads in the timeline until the mandatory ads are
viewed, the method comprising:
in a graphical user interface of a computing device,
rendering a graphical representation of a timeline for playback of
the video and the mandatory ads; and
during playback, rendering on the timeline a first icon
indicating a completed portion, a second icon indicating a
downloaded portion, and blocking icons indicating at mandatory
ads,
during playback, receiving a navigation command on the
timeline to advance playback beyond a mandatory ad that has not
been rendered and prohibiting advancing playback during the
video to any portion of the timeline beyond the mandatory ad
until the mandatory ad has been rendered.
Examiner’s Rejections & References
I. Claims 23—26, 30, 35—38, and 40-42 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Sidi (US 2007/0266399 Al,
published Nov. 15, 2007), Sterner et al. (US 2007/0263984 Al, published
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Nov. 15, 2007) (“Sterner”), and Son (US 2008/0212937 Al, published Sept.
4, 2008). Final Act. 3—5.2
II. Claim 34 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Sidi, Sterner, Son, and Tsuchida et al. (US 2002/0194593
Al, published Dec. 19, 2002) (“Tsuchida”). Final Act. 6.
DISCUSSION
Rejection I— Claims 23—26, 30, 35—38, and 40—42 as obvious over Sidi,
Sterner, and Son
Claims 23, 24, 26, 30, 35—38, and 40-42
Appellants argue Sidi does not teach “during playback, rendering on
the timeline a first icon indicating a completed portion,” as recited in claim
23. App. Br. 11. In particular, Appellants contend the cross-hatching in
Sidi’s Figures 2C and 2D only indicates the segment is unlocked and is not
the same or suggestive of an indication of the portion of playback that has
completed. Id. Appellants also contend Sidi’s current position indicator 126
also does not indicate a “completed portion” as recited in the claim. Id.
Appellants argue:
[Sjince Sidi allows skipping among the various protected and
gating segments, the current position indicator 126 does not
indicate that ah earlier portions of the playback have been
completed. For example, when the current position 126 of the
playback of protected segment 102a skips to subsequent
segments 104c/102c, there is no indication of what portion of the
playback of 102a completed when the skip was made — while
102a is shown in cross-hatching, the cross-hatching indicates that
2 The summary of claims rejected on this basis is inaccurate. Final Act. 3.
We include in this rejection ah pending claims for which a substantive
rejection is provided at pages 3 through 5 of the Final Action.
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102a is unlocked, not the portion of playback of 102a that has
completed.
Id.
Appellants contend that the claimed “first icon indicating a completed
portion” includes (1) the icons described in the Specification as “indicating
the segment of the video that has been viewed,” Reply Br. 4 (quoting Spec.
5:20-21), and (2) the “viewable video icon 125 [that] represents how far
along the timeline 120 the user has viewed the first video 145,” id. (quoting,
e.g., Spec. 6:14—15).
We disagree with Appellants’ argument that Sidi’s position indicator
does not indicate a “completed portion” of the timeline consistent with
Appellants’ Specification. The Specification describes that “viewable video
icon 125 represents how far along the timeline 120 the user has viewed the
first video.” Spec. 6:14—15. In context, that description is technically
accurate to the extent the user has not skipped forward or backward within
the video. Figure 7 of the Specification “illustrates an example timeline 120
containing a first video 145 where the user has moved the viewable video
icon 125 back to an already viewed segment of the first video 145.” Spec.
7:11—12. This description, and a comparison of Figures 6 and 7, shows that
in this circumstance, where the user has moved the viewable video icon
back, the viewable video icon will not indicate that portions of the video past
the icon were already viewed, even if they were viewed. Likewise, one of
skill in the art reading the Specification would understand from this scenario
that moving the viewable video icon forward past portions of the video that
have not been viewed in real time will nonetheless cause those skipped
portions of video to be indicated as viewed in the same way as those that
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Application 11/833,305
were viewed in real time. In other words, “viewed” in this context means
video available for viewing and behind the current viewing position, and
“viewed” video may, therefore, include skipped video and may not include
some video that has actually been viewed. Sidi’s position indicator 126
similarly indicates that all unlocked video to the left of the icon has either
been viewed or skipped, and thus “completed” within the language of claim
23.
Appellants also contend that (1) the Examiner’s reasons to combine
Sidi, Sterner, and Son “‘for the advantage of ensuring that each video
required to be played is actually played’” is deficient; and (2) the
combination of Sidi, Sterner, and Son is based on “impermissible hindsight
reconstruction.” App. Br. 12—16. In particular, Appellants point out that
Sidi allows skipping past a mandatory advertisement as long as the
mandatory advertisement associated with the current video segment has been
viewed, in contrast to claim 23’s limitations prohibiting advancing playback
during the video past any mandatory advertisement that has not been
viewed. Id. at 13—14. Specifically, Appellants argue, “nothing in or about
Sidi suggests that the prohibition on skipping past any mandatory ad, even to
view another mandatory ad associated with a different protected segment, as
disclosed in Son would improve upon the mandatory advertisement system
already disclosed in Sidi.” Id. at 14.
The Examiner finds, however, that Sidi discusses how enabling
viewers to bypass ads during playback reduces the value of ads to sponsors,
Ans. 7 (citing Sidi para. 4), and the Examiner reasons that “by combining
the teachings of Sidi and Son to impose more strict requirements on viewers
by not allowing the skipping of any mandatory ad, the value to the ad
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sponsors is not reduced and the system is made more desirable to the
sponsors.” Ans. 8. We agree with the Examiner that one of ordinary skill in
the art would have combined the references to realize this benefit, and
Appellants do not persuasively challenge this rationale.
With respect to Appellants’ “impermissible hindsight” argument, that
argument “is essentially a repackaging of the argument that there was
insufficient evidence of a motivation to combine the references” discussed
above. In re Cree, 818 F.3d 694, 702 n.3 (Fed. Cir. 2016). Appellants’
hindsight argument is of no moment where the Examiner provides a
sufficient, non-hindsight reason to combine the references.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 23 under
35 U.S.C. § 103(a) as unpatentable over Sidi, Sterner, and Son. Thus, we
sustain the rejection of claim 23, and, for the same reasons, the rejection of
claims 24, 26, 30, 35—38, and 40-42, which are not argued separately.
Claim 25
Claim 25 depends from claim 24, and recites “extending the second
icon based on the mandatory ad being rendered.” Appellants argue Sterner’s
progress bar adjusts based on the progress of the video being downloaded,
rather than based on the mandatory ad being rendered. App. Br. 16.
The Examiner responds that Sterner is used to teach the second icon
indicating a downloaded portion of media, and Sidi is used to teach the
mandatory ads. Ans. 9. The Examiner further explains:
And in Sterner, the only portions of media that may be played
are those that are first downloaded (see Sterner, [0116]).
Therefore, with the playing of the media in Sterner reasonably
corresponding to the playing of the mandatory ad of Sidi, the
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Application 11/833,305
second icon would be extended to include the played portion
since the played portion is downloaded, and the limitation as
claimed is met, given its broadest reasonable interpretation.
Ans. 9.
The Examiner’s explanation does not sufficiently clarify the manner
in which the references are combined to teach “extending the second icon
based on the mandatory ad being rendered.” Although Sidi has restrictions
on viewing based on mandatory ads, and Sterner indicates which portions of
video are available based on what is downloaded, without more it does not
follow that one of ordinary skill in the art would have incorporated Sterner’s
download progress bar with the modification that the progress bar is also
extended based on Sidi’s mandatory ad being rendered. Thus, we agree with
Appellants that the Examiner has not shown one of ordinary skill in the art
would have combined the teachings of the references in the manner claimed
in claim 25. Reply Br. 6.
In view of the foregoing, we do not sustain the rejection of claim 25
under 35 U.S.C. § 103(a) as unpatentable over Sidi, Sterner, and Son.
Rejection II— Claim 34 as obvious over Sidi, Sterner, Son, and Tsuchida
Claim 34 depends from claim 23, and recites, in part, “updating a log
file with the viewing status, the log file being associated with the user.”
Appellants argue “Tsuchida makes no mention of a log file,” and “does not
teach maintaining any indication of whether a commercial was viewed.”
App. Br. 17.
The Examiner indicates that paragraph 74 of Tsuchida was
inadvertently cited instead of paragraph 75. Ans. 10. The Examiner finds
Tsuchida’s memory device 330a stores playback data 440, which includes
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tags indicating content that has already been shown by the playback engine
for viewing on a television. Ans. 10.
We agree with the Examiner that Tsuchida’s viewer data is, therefore,
reasonably considered a “log file being associated with the user,” as recited
in claim 34. Appellants do not address these findings of the Examiner, and,
therefore, do not inform us of error in the rejection.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection of claim 34 under 35 U.S.C. § 103(a) as unpatentable
over Sidi, Sterner, Son, and Tsuchida.
DECISION
We affirm the Examiner’s rejection of claims 23, 24, 26, 30, 34—38,
and 40-42. We reverse the Examiner’s rejection of claim 25.
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)(l)(iv).
AFFIRMED-IN-PART
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