Ex Parte PIZZO et al

Patent Trial and Appeal BoardDec 28, 2018

14658924 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/658,924 03/16/2015 Vincenza PIZZO 30636 7590 12/28/2018 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 40205/0580l(MTV058) 4469 EXAMINER EKPO, NNENNA NGOZI ART UNIT PAPER NUMBER 2425 MAIL DATE DELIVERY MODE 12/28/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VINCENZA PIZZO and JOEL SANDERS Appeal2018-004537 Application 14/658,924 Technology Center 2400 Before CARL W. WHITEHEAD JR., JOSEPH P. LENTIVECH, and MICHAEL M. BARRY, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellants 1 appeal from the Examiner's decision to reject claims 1-20, the only claims pending in the application on appeal. We have jurisdiction over the pending claims under 35 U.S.C. Â§ 6(b). We reverse. 1 According to Appellants, the real party in interest is Viacom International Inc. App. Br. 2. Appeal2018-004537 Application 14/658,924 STATEMENT OF THE CASE Appellants 'Invention Appellants' invention generally relates to "inserting breakpoints and reference links into a multimedia file." Spec. ,r 5. Claim 1, which is illustrative, reads as follows: 1. A method, comprising: receiving breakpoint information from a content provider, wherein the breakpoint information is specific to a first digital media file of a plurality of digital media files; inserting a plurality of breakpoints into the first digital media file based on the breakpoint information, wherein the plurality of breakpoints designate a plurality of clips within the first digital media file; receiving a user share request from a user device to share a first one of the clips within the first digital media file, the first clip selected by a user being identified based on a playback time indicated by the user share request as a portion of the first digital media file extending from a first breakpoint immediately prior to the playback time indicated in the user share request to a second breakpoint immediately following the playback time indicated in the user share request, the first clip being associated with a shareable reference link; and providing the user device with the shareable reference link to the first clip. 2 Appeal2018-004537 Application 14/658,924 References2 The Examiner relies on the following prior art in rejecting the claims: Navar et al. Oskolkov et al. US 2009/0204481 Al US 2012/0311624 Al Rejection Aug. 13, 2009 Dec. 6, 2012 Claims 1-20 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Navar and Oskolkov. Final Act. 3-7. ANALYSIS Appellants contend the combination of Navar and Oskolkov does not teach or suggest "inserting a plurality of breakpoints into the first digital media file based on the breakpoint information, wherein the plurality of breakpoints designate a plurality of clips within the first digital media file," as recited in claim 1. App. Br. 4--5. Appellants argue Navar "does not disclose or suggest that breakpoints are inserted into the media content." App. Br. 5. According to Appellants, Navar instead teaches "the content may simply be split for ad insertion at predetermined times during playback without the insertion of any breakpoints." Id. Regarding the disputed limitation, the Examiner finds: Navar et al. teaches "inserting a plurality of breakpoints into the first digital media file based on the breakpoint information, wherein the plurality of breakpoints designate a plurality of clips within the first digital media file" in paragraphs 0040 and 41; for example, content file can be a video that is 30 2 All citations herein to these references are by reference to the first named inventor only. 3 Appeal2018-004537 Application 14/658,924 minutes long. The content file can be split into any number of parts or segments to insert relevant advertisements into the content file. Therefore, Navar teaches "inserting a plurality of breakpoints into the first digital media file based on the breakpoint information, wherein the plurality of breakpoints designate a plurality of clips within the first digital media file". Ans. 4. We disagree. Consistent with Appellants' Specification (Spec. ,r 33), the term "breakpoint" refers to a point at which execution of an application (e.g., an application for playback of a digital media file) can be suspended. See IEEE 100---The Authoritative Dictionary of IEEE Standards Terms 118 (Seventh Edition 2000). Navar teaches splitting a content file into two parts at a location at which an advertisement is to be inserted into the content file. Navar ,r 40. Navar teaches that the advertisement is inserted into the content file by stitching an end of the first part to the beginning of the advertisement and stitching an end of the second part to the end of the advertisement. Id. The Examiner's findings are insufficient to show that splitting a content file into two parts and inserting the advertisement into the content file by stitching an end of the first part to the beginning of the advertisement and stitching an end of the second part to the end of the advertisement, as taught by Navar, teaches or suggests inserting anything into a digital media file to enable suspending its playback (i.e., a breakpoint), as required by claim 1. As such, we are persuaded the Examiner erred. Accordingly, we do not sustain the Examiner's rejection of claim 1; independent claims 8 and 15, which recite corresponding limitations; and claims 2-7, 9-14, and 16-20, which depend from claims 1, 8, and 15. 4 Appeal2018-004537 Application 14/658,924 Because we find this issue to be dispositive as to the rejection of all the pending claims, we do not reach Appellants' remaining contentions of error. DECISION We reverse the Examiner's rejection of claims 1-20 under 35 U.S.C. Â§ 103(a). REVERSED 5