Ex Parte Siegel et al

Patent Trial and Appeal Board

Feb 14, 2019

14209582 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/209,582 03/13/2014 Daniel J. Siegel
500 7590 02/19/2019
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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.
660107.402 1028
EXAMINER
CAMPBELL, JR., WARREN
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
02/19/2019 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL J. SIEGEL, CAROLINE S. WELCH,
ANDREW L. SILVER, and CYNTHIA P. BRELIS 1
Appeal2017-006069
Application 14/209,582
Technology Center 2100
Before ALLEN R. MacDONALD, MIRIAM L. QUINN, and
MICHAEL M. BARRY, Administrative Patent Judges.
QUINN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants indicate that the real party in interest is MindsightMedia,
Inc. Appeal Br. 1
Appeal2017-006069
Application 14/209,582
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-56. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Representative Claim
Representative claim 1 under appeal reads as follows. The italicized
text below points to claim language that is discussed further in our analysis.
1. A method for editing at least one supplemental media content
presentation into a narrative presentation consisting of a defined sequence of
scenes using a processor-based media editing system, the method
compnsmg:
identifying over the course of the narrative presentation a number of
supplemental media content selection periods during which at least one
supplemental media content presentation is available, each of the selection
periods having a respective start point, duration, and end point in the
narrative presentation;
for each of the supplemental media content selection periods,
providing a number of media content consumer perceptible and selectable
indicators in the narrative presentation during all or a portion of the
respective supplemental media content period,
each selectable indicator representative of an aspect of inner
awareness associated with each of a number of characters, and
each selectable indicator logically associated with a respective
supplemental media content presentation including information
regarding the respective aspect of inner awareness of the respective
character at a point in the narrative presentation selected by the media
content consumer;
for each supplemental media content presentation, identifying at least
one respective transition mode between the narrative presentation and each
supplemental media content presentation, the respective transition mode
specifying a transition effect for segueing between the narrative presentation
and the respective supplemental media content presentation;
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for at least a first characters included in the narrative presentation,
providing during at least a first period of time at least a first media content
consumer perceptible and selectable indicator,
the first selectable indicator representative of a first aspect of
inner awareness associated with the first character,
the first aspect of inner awareness having a first aspect
type,
the first aspect type selected from a first defined set of
aspect types, and
the first selectable indicator logically associated with a first
supplemental media content presentation including information
regarding the first aspect of inner awareness of the first character; and
for at least the first character, providing during at least the first period
of time at least a second media content consumer perceptible and selectable
indicator,
the second selectable indicator representative of a second
aspect of inner awareness associated with the first character,
the second aspect of inner awareness having a second
aspect type,
the second aspect type selected from the first
defined set of aspect types, and
the second aspect type different from the first
aspect type, and
the second selectable indicator logically associated with a
second supplemental media content presentation including
information regarding the second aspect of inner awareness of the first
character,
the second supplemental media content presentation
differing from the first supplemental media content
presentation.
Appeal Br. 23-24 (Claims App'x).
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Appeal2017-006069
Application 14/209,582
Joy
Bradbury
Brelis
Martinez Sonora
References
US 2012/0102418 Al Apr. 26, 2012
US 2010/0100899 Al Apr. 22, 2010
US 6,544,040 B 1 Apr. 8, 2003
EP 2557524 Al Feb. 13,2013
Rejections2
1. The Examiner rejected claims 1-9, 12-36, and 39-563 under
35 U.S.C. § I03(a)4 as being unpatentable over the combination of Joy and
Brelis. Final Act. 4-43; Appeal Br. 14-21.
2. The Examiner rejected claims 10 and 37 under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Joy, Brelis, and
Martinez Sonora. Id. at 43-47.
2 Although the Final Action included a rejection of certain claims
under 35 U.S.C. § 112, second paragraph, that rejection has been withdrawn
and is not discussed further herein. See Answer 2.
3 Arguments are presented only for claims 1 and 29. Separate
patentability is not argued for dependent claims 2-28 and 30-56. Appeal
Br. 20, 21. Thus, the rejection of these claims turns on our decision as to
claims 1 and 29. Except for our ultimate decision, the§ 103 rejections of
claims 2-28 and 30-56 are not discussed further herein.
4 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-
29, 125 Stat. 284, 287-88 (2011), revised 35 U.S.C. § 103, effective
March 16, 2013. Because the file indicates that the instant application
claims benefit of an application filed before the effective date of the relevant
section of the AIA, we refer to the pre-AIA version of§ 103 throughout this
decision.
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Application 14/209,582
3. The Examiner rejected claims 11 and 38 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Joy, Brelis, and
Bradbury. Id. at 47-49.
Did the Examiner err in rejecting claims 1 and 29 as being obvious
over Joy and Brelis? In particular, we review whether the Examiner erred in
finding that Brelis teaches the recited first and second "selectable
indicator[ s ]" that represent a first and second "aspect of inner awareness
associated with the first character." Having reviewed Appellants' Brief and
the Examiner Response, we determine that the Examiner did not err.
ANALYSIS
Appellants contend that the Examiner erred in rejecting claims 1 and
29 under 35 U.S.C. § 103 for three reasons. We discuss each reason in tum.
A. Brelis 's Character Selection Icons and Time Frame Buttons
Claims 1 and 29 recite "each selectable indicator representative of an
aspect of inner awareness associated with each of a number of characters."
Claims App'x 23, 34. For this part of the claim, the Examiner finds that
Brelis teaches a character selection icon which is a visual feature that can be
modified to indicate the availability of mental impression information for the
corresponding character. Final Act. 6 (citing Brelis, 5:46-49).
Claims 1 and 29 further require providing, for a first character, a "first
selectable indicator representative of a first aspect of inner awareness" and a
"second selectable indicator representative of a second aspect of inner
awareness." Claims App'x 23-24, 34-35. The Examiner finds that Brelis's
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disclosure of memory button 82 ( one of the described time frame buttons)
teaches the "first selectable indicator," and that present perspective button
84 (another time frame button) teaches the "second selectable indicator."
Final Act. 6-7 (citing Brelis, 5:67---6:6, 7:60---62).
Appellants argue that the claim requires that the two selectable icons
identified as the "selectable indicators" must both be present during the "first
period of time." Appeal Br. 17-18. Appellants further argue that "Brelis
does not disclose displaying multiple icons for a single character during the
narrative, much less two different user-selectable icons representative of
respective ones of two different aspects of inner awareness for the same
character." Id. at 16. According to Appellants, once a user selects a
character icon, Brelis allows "the user to access the character's mental
impressions from different points in the narrative through a 'time frame
selection' page." Id.
Thus presented, these arguments highlight, first and foremost, what
Appellants call "pivoting" by the Examiner. Id. at 18. That is, Appellants
take issue with what seems to be an inconsistent application of Brelis, where
for some "selectable indicators" the character selection icon is identified, but
for other "selectable indicators" the Examiner relies on the "time frame"
buttons. Id. The argument is not persuasive.
The Examiner finds, and we agree, that Brelis' s character selection
icon is a "selectable indicator" that represents mental impressions and the
supplemental content associated with those mental impressions. Ans. 52.
As Brelis explains: the "character selection" icons 72, 73 are highlighted
when mental impression information is available for the respective
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characters 60, 62. Brelis, 5:49-51. The Examiner further finds, and we
agree, that the "time frame" indicator buttons identify more specific mental
impressions for each character. Ans. 52-53. "The character selection icons
and the time frame-memory buttons serve the same purpose[:] to select
available mental impressions[,] which is the primary feature of Brelis." Id.
at 51. The Examiner also responds that "the symbolically labeled time
frame buttons are each selectable and performs a different function." Id. at
50. Further, the Examiner finds, and we agree, that Brelis's time frame
buttons are presented during the same narrative presentation shown in
Figure 4. Id.
We find no error in the Examiner's identification of both the character
icon and the time frame buttons. As the Examiner explains, both of these
indicators are tied to the mental impressions available for a single character,
and these indicators are presented during the same narrative presentation,
and during the same time period. Thus, Brelis teaches that multiple icons
are presented during the narrative presentation. Appellants' argument
otherwise is not persuasive. See Appeal Br. 18 ("Brelis does not disclose
multiple icons for each character during the narrative presentation.").
Indeed, Brelis contradicts Appellants' contention that both the character icon
and the time frame buttons are not displayed at the same time during the
narrative presentation. Brelis explains, consistent with the Examiner's
findings, that "narrative presentation" web page 64 includes the user
selectable character icons, and that character selection icons and time frame
buttons are combinable to present the user with mental impression
information in a single user interface. See Brelis 5:25-25, 7:33-46. In
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Figures 4 through 9, which depict the character selection icons 72-74, the
time frame buttons 82, 84, 86, 88, and the mental impression information
112, all user interfaces are shown with narrative presentation 64. See also
Brelis 5:24--8:7. Thus, we agree with the Examiner, that Brelis displays the
character selection icons (highlighted to show that mental impressions are
available) and further the time frame selection window during the narrative
presentation and for a particular character. Accordingly, we are not
persuaded that the Examiner erred in identifying character selection icons
and time frame buttons as "selectable indicators."
We also note that the Examiner points to Joy as teaching "selectable
indicators in the narrative presentation." See Final Act. 4-5 (citing Joy
,r 215 (Examiner explaining that a user can include a selectable indicator,
such as an icon, in one or more scenes of the interactive explorative
experience)). Thus, although we have determined that the Examiner's
finding of "selectable indicators" in Brelis alone is not in error, Appellants'
arguments fail to account for the "selectable indicators" displayed in the
narrative presentation, as taught by Joy.
B. Memory Button and Present Perspective Button as First and Second
Aspects of Inner Awareness
Claims 1 and 29 require that each "selectable indicator" represent an
aspect of inner awareness associated with the character. Specifically, the
claims recite a first selectable indicator representative of a "first aspect of
inner awareness" and a second selectable indicator representative of a
"second aspect of inner awareness." The claims recite that the first and
second aspects of inner awareness are of different "aspect types." The
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Examiner finds, as stated above, that Brelis' s disclosure of memory button
82 (one of the described time frame buttons) teaches the "first selectable
indicator," and that present perspective button 84 (another time frame
button) teaches the "second selectable indicator." Final Act. 6-7. As for the
first aspect of inner awareness, the Examiner finds that memory button 82 is
for the user to view information regarding mental impressions of the selected
character, and refers to thoughts about the past. Id. at 6. As for the second
aspect of inner awareness, the Examiner finds that present perspective button
84 provides information regarding the current or present mental impressions
of the selected characters, and refers to feelings about the present. Id. at 7.
Appellants argue that Brelis' s time frame selection page, which
displays the time frame buttons, is based only on mental associations of the
character that occur at different times----either in the past, the present, or the
future. Appeal Br. 18 (citing Brelis, 5:63-6:14). According to Appellants,
Brelis "provides no teaching or suggestion that the buttons displayed in the
'time frame selection' page could be based on anything other than
demarcations of time; as a result, Brelis effectively treats 'mental
impressions' as a single category." Id. We are not persuaded by Appellants'
arguments.
As the Examiner points out, and we agree, the claims do not require a
time frame for the aspects of inner awareness. Ans. 53. The only time
period required by the claims is the time period at which the selectable
indicators are available on the narrative presentation. Id. In other words,
Brelis' s time frame buttons, which are displayed for a period of time during
the narrative presentation, teach the "first and second aspects of inner
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awareness," even though the mental impressions associated with each of the
buttons refer to mental impressions of past, present, or future. The relative
time frame of the mental impressions themselves is not commensurate with
claim scope, as the claims do not require that "aspects of inner awareness"
involve mental impressions that occur at any particular time.
The Examiner also points out, and we agree, that the memory button
and the present perspective button represent different aspect types, such as
past thoughts and present feelings, both of which are available for the user to
select at the same time during the narrative presentation. Id. at 54. The
Examiner explains that
the time frame indicators would be used to represent different
aspects of inner awareness for a single character by utilizing each
of the mental impressions taught by Brelis separately[,] such as
past thoughts and present feelings, which would be one approach
of an interactive narrative author utilizing the invention disclosed
by Brelis, and would not require modification of the invention.
Id. at 55. We agree with the Examiner.
Brelis discloses mental impressions in broad categories such as
events, acts, thoughts, feelings, moods, and interactions. Brelis, 7:60-64.
And Brelis also explains that the "[ c ]urrent or present mental impressions,
and mental impressions about the imagined future can also be presented."
Id. ( emphasis added). Thus, as the Examiner explains, the time frame
buttons each represents a "category" of mental impressions, such as past
thoughts and present feelings, but would be amenable to representing the
other categories that Brelis discloses. Ans. 55. After all, Brelis does not
limit the time frame buttons to any one of the disclosed categories of mental
impressions. And, therefore, the Examiner's finding that the time frame
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buttons teach different aspects of inner awareness is reasonable, as each
button would represent a different category of mental impression, such as
thoughts versus feelings. For this reason alone we determine that the
Examiner did not err.
As a further reason, we note here that the distinctions Appellants
make regarding the aspect types in Brelis are not persuasive, because such
distinctions are not entitled to patentable weight. Appellants argue that the
memory button and the past perspective button do not select different
categories of mental impressions. Appeal Br. 18. Appellants' argument,
thus, focuses on what type of information is selectable with Brelis's buttons.
In other words, Brelis's mental impression information selectable via the
time frame buttons is not the same information as what Appellants consider
different "aspects of inner awareness." The difference in the type of
information is perceptible only to the user consuming the information, after
the selectable indicator is selected. There is no functional difference
between a button that is labeled "M" for "memory" ( as in Brelis ), and a
button that is labeled "Thoughts." Likewise, there is no functional
difference between a button that is labeled "PP" for "present perspective" ( as
in Brelis), and a button that is labeled "Feelings." The button works as
expected, i.e., it accesses the information linked thereby, regardless of the
type of information linked. For instance, whether the information is a video
about the character's thoughts or a video about the character's childhood
memory is inconsequential to how the "selectable indicator" is logically
associated with the media content presentation or how it is displayed. The
differences that Appellants argue are akin to a contention that the label or
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shape of the buttons and the media content should convey different
information to the user. However, neither the message conveyed by the
button labels or shapes nor the information in the media content presentation
carry patentable weight, as the "selectable indicators" work the same way
and for the same purpose of accessing and providing a media content
presentation regardless of what labels are on the buttons or what information
the media content presentation conveys to the user.
Our reviewing court has held that non-functional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3f 136, 1339 (Fed. Cir. 2004);
cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability); see also In re Xiao, 462 Fed. Appx. 947 (Fed. Cir.
2011) (Non-precedential) (Non-functional descriptive material, being useful
and intelligible only to the human mind, is given no patentable weight).
Here, we find that, to the extent Appellants argue that the "selectable
indicators" must indicate or be associated with mental impressions of a
certain type or conveying certain categories of information, such distinctions
inform us that the claimed first and second "aspects of inner awareness"
constitute non-functional descriptive material that is useful and intelligible
only to the human mind, and, are, therefore, entitled to no patentable weight.
Accordingly, the Examiner, once finding that Brelis disclosed selectable
indicators each associated with distinct supplemental media content
presentations, did not have a burden to find prior art disclosing "selectable
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indicators" representing different types or categories of "aspects of inner
awareness," which are non-functional descriptive matter conveyed by media
content presentations. As discussed above, the information conveyed by
labels on the "selectable indicators" and the information in the media content
presentation (about the aspects of inner awareness) do not carry patentable
weight.
Therefore, we conclude that for this additional reason, the Examiner
did not err in rejecting claims 1 and 29 over Joy and Brelis.
C. "Representative of an Aspect of Inner Awareness"
Appellants argue that Brelis' s "labeled buttons are not 'representative
of an aspect of inner awareness"' because "[ t ]here is no indication in Brelis
of how buttons relate to or can be representative of specific types of memory
or mental impression information." Appeal Br. 21. As support for their
argument, Appellants point to the Specification's description of "distinctive
icons displayed about or proximate at least a portion of the representation of
the character with which the supplemental media content is associated." Id.
(citing Spec. 40:24-29, 41:16-20). Appellants also argue that the
Specification states how the "representation depicted on the screen for the
user provides an indication of how the associated supplemental media
content relates to the character" because, for example, "the representation
may include a halo or a picture of a brain around or next to the character's
head to represent cognitive activity." Id. (citing Spec. 41:2-11, 41:20-24).
The Examiner responds, and we agree, that the features Appellants
rely on in the Specification are not recited in the claims. Ans. 58. For
instance, the claims do not require any particular form of an icon or
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depiction of the selectable indicator, such as "halo" or "brain" around or
next to the character's head. Id. Further, the claims are silent regarding the
location or appearance of the "selectable indicator." And the Specification
does not define "representative" such that whatever is "depicted on the
screen for the user provides an indication of how the associated
supplemental media content relates to the character," as Appellants argue.
See Appeal Br. 21. We, therefore, find that Appellants' arguments are not
commensurate with claim scope, and constitute an attempt to import
limitations from the Specification, which is improper. See In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993).
Further, we are persuaded by the Examiner's response that Brelis
labels its buttons to indicate which type of mental impression are available
for viewing by the user. Ans. 59. The information conveyed by the labels,
as noted by the Examiner, sufficiently addresses the "representative"
relationship recited in the claims: that the "selectable indicator" is
"representative of' the aspect of inner awareness" associated with the first
character. Id. Thus, we determine that the Examiner did not err as
Appellants argue.
Additionally, to the extent Appellants' argument focuses on the
"information" that is conveyed by the "selectable indicator," we reiterate
here our conclusion that such a distinction constitutes non-functional
descriptive material that is not entitled to patentable weight. As stated
above, labels or shapes of a "selectable indicator" are useful and intelligible
only to the human mind, and, therefore, such a feature, even if it were
recited, is given no patentable weight.
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CONCLUSIONS
On the present record, Appellants have failed to show that the
Examiner erred in rejecting independent claims 1 and 29 as obvious over Joy
and Brelis. Dependent claims 2-28 and 30-56 are not argued separately.
Thus, we conclude that the Examiner did not err in rejecting claims 1-56 for
obviousness as stated in the Final Action.
DECISION
The Examiner's rejection of claims 1-56 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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