Peter Ward et al.Download PDFPatent Trials and Appeals BoardMay 19, 20212020000710 (P.T.A.B. May. 19, 2021) Copy Citation 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. 12/964,292 12/09/2010 Peter Ward 450103-06427 4470 123324 7590 05/19/2021 Sony Corporation of America Haug Partners LLP 745 Fifth Avenue 10th Floor New York, NY 10151 EXAMINER LIAO, JASON G ART UNIT PAPER NUMBER 2156 NOTIFICATION DATE DELIVERY MODE 05/19/2021 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): Docketing@am.sony.com docket@haugpartners.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PETER WARD and JR YASGUR ____________________ Appeal 2020-000710 Application 12/964,292 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, MARC S. HOFF, and SCOTT E. BAIN, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1 through 5, 7 through 14, and 16 through 18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, Sony Corp. is the real party in interest. Appeal Br. 2. Appeal 2020-000710 Application 12/964,292 2 CLAIMED SUBJECT MATTER The claims are directed media asset management, where an original media asset for a media project is identified and a plurality of versions of the original media asset is also identified. Abstract. Claim 1 is reproduced below. 1. A method for managing media assets, of a media project comprised of an original media asset subjected to modifications that result in modified versions of the media asset, to track each modification of the original media asset, comprising the steps of: accessing one or more criterion related to a predetermined modified version of the media asset that is the result of the media project; identifying the original media asset on which the media project is based; identifying each modified version of the original media asset, at least one modified version having language, activity or distribution data associated with the original media asset modified due to at least one requirement for re-release of the original media project, identifying, for each modified version of the original media asset, components that identify a type of content within the modified version of the media asset, a geographic region in which the media asset is re-released, and content within the modified version of the media asset, at least one of said components having been modified with respect to the same component in the original media asset; generating metadata, for each of the components of each modified version of the original media asset, that indicates whether each component is a modified component and the type of modification made to that component; storing the metadata for each of the components of each modified version of the original media asset in a searchable database; Appeal 2020-000710 Application 12/964,292 3 associating the stored metadata for each modified version of the original media asset with the original media asset; generating and storing a media asset record including, in that record, information of the original media asset and all modified versions, for tracking each modification, wherein multiple versions of the original media asset are tracked based on the metadata; displaying the media asset record resulting from sorting of the modified versions of the original media asset, including displaying (a) a title information area displaying title information about the original media asset, (b) a search filter area displaying a plurality of search filters for sorting of the modified versions of the original media asset in accordance with predetermined ones of the components, (c) a search filter result area displaying results of sorting the versions of the original media asset based on selected search filters, and (d) a detailed information area displaying information about a modified version of the original media asset selected from the search filter result area, wherein the version of the media asset is retrieved based on at least one selected search filter parameter; searching for at least one modified version of the media asset utilizing the one or more criterion and the stored metadata for at least one of the components using at least one of the plurality of search filters; determining that a plurality of modified versions satisfies the one or more criterion based upon the stored metadata for at least one of the components; selecting a preferred modified version from the plurality of modified versions that satisfies the one or more criterion; and displaying in the search filter result area the preferred modified version that satisfies the one or more criterion based upon the determination; the method further comprising: Appeal 2020-000710 Application 12/964,292 4 storing the preferred modified version that satisfies the one or more criterion based upon the determination in a memory location; transmitting the preferred modified version that satisfies the one or more criterion based upon the determination to a terminal; outputting the preferred modified version that satisfies the one or more criterion based upon the determination; or combinations thereof. Appeal Br. 15–17 (Claims Appendix). REJECTIONS2 The Examiner rejected claims 1 through 5, 7 through 14, and 16 through 18 under 35 U.S.C. § 103 as being unpatentable over Madrane (US 6,573,907 B1, issued June 3, 2003), and IMDb, The Transformers: The Movie (1986) (https://web.archive.org/web/20091006130910/http://www.imdb.com/title/tt 0092106) hereinafter “IMDb- Info.”https://web.archive.org/web/20090804114208/http://www.imdb.com:8 0/find?s=all&q=Rocky&x=0&y=0 (hereinafter “IMDb-SearchResults”) Release dates for Rocky: The Movie (1976)). Final Act. 7–36. ANALYSIS With respect to independent claims 1 and 10, Appellant argues that the Examiner’s obviousness rejection is in error as the Examiner has not 2 Throughout this Decision we refer to the Appeal Brief filed March 4, 2019 (“Appeal Br.”); the Reply Brief filed June 10, 2019 (“Reply Br.”); Final Office Action mailed September 4, 2018 (“Final Act.”); and the Examiner’s Answer mailed April 17, 2019 (“Ans.”). Appeal 2020-000710 Application 12/964,292 5 provided sufficient motivation to combine Madrane and IMDb-Info. Appeal Br. 8–11. Appellant acknowledges that Madrane teaches a search procedure for media assets that allows a user to enter and search a keyword. Appeal Br. 9–10. Appellant asserts the Examiner recognizes that Madrane does not teach identifying and generating metadata that identifies components that identify a type of content within a modified version of a media asset, a geographic region in which the media asset is re-released, and content within the modified version as recited in claim 1 but that the Examiner has not provided a motivation why the skilled artisan would combine the teachings of IMDb-Info with that of Madrane. Appeal Br. 8, 10. Appellant states that the Examiner’s rejection: appears to acknowledge, the recited portion of Madrane merely provides a generalized teaching for indexing video sequence information, but does not provide any reason why one of ordinary skill would want to generate and index metadata for the presently claimed components, which include a type of content within the modified version of the media asset, a geographic region in which the media asset is re-released, and content within the modified version of the media asset. In other words, the final Office Action does not provide any basis for why one would want to retrieve by content type or region even if one were to retrieve by content type or region. Appeal Br. 11. Further, Appellant argues that even if the references were combined, the cited evidence merely shows that IMDb-Info is a web based service the indexes movies in a searchable database but does not associate the stored metadata with the modified media asset or the ability to search for the modified media asset using the metadata. Appeal Br. 12–13; Reply Br. 8. Appeal 2020-000710 Application 12/964,292 6 At the outset we note that the Examiner has found that Madrane teaches identifying content in media asset and generating metadata from the identified content. Final Act. 7 and 8. The Examiner has identified that the information about the content of the media asset, the features for which IMDb is relied upon to teach, is directed to non-functional descriptive material, which need not be afforded patentable weight. Final Act. 7, 10. Appellant has not addressed this claim interpretation by the Examiner, and as such regardless of whether the Examiner properly combined Madrane with IMDb, Appellant has not shown that the Examiner erred in rejecting the claims as obvious. We concur with the Examiner. The limitations directed to the content of the modified media asset, regarding which the Examiner relied upon IMDb, are directed to information about attributes of the modified version of the media asset (printed matter). These limitations do not functionally relate to the claimed method. That is the limitations directed to the type of content, geographic region and content all relate to the information about the media asset and the claims recite no function which is based upon the type of information. While this information is used in a search, the search is not functionally related to the type of information (i.e. the search looks for a match and is not based upon performing an action or function based upon the type of information).3 As such, the limitations do not define the invention over the prior art. “[O]nce it is determined that the limitation is 3 We recognize that this information may be useful and functionally related to determining distribution of the media asset, however representative claim 1 recites no such limitation. Specification ¶2. Appeal 2020-000710 Application 12/964,292 7 directed to printed matter, one must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight.” In re DiStefano, 808 F.3d. 845, 851 (Fed Cir. 2015). 4 Thus, regardless of whether the Examiner properly combined Madrane with IMDb, the Examiner has shown, and Appellant’s have not rebutted that Madrane teaches the claimed method. Nonetheless, Appellant’s arguments directed to whether the Examiner erred in combining Madrane with IMDb are unpersuasive of error. As discussed above the Examiner has found and Appellant has not contested that Madrane teaches identifying content in a media asset and generating metadata from the identified content. Final Act. 7 and 8; Ans. 5. The Examiner also finds that Madrane teaches using the metadata to perform a search for the asset. Final Act 9; Ans. 5. The Examiner relies upon IMDb to teach that it is known to identify and the keep a database of modified versions of media assets including the different titles, geographic regions and content of the media asset. Final Act 10–11; Ans. 5. The Examiner finds that the skilled artisan would combine the references as it “permit users interested in tracking movie information to readily find different versions 4 “[W]here the claim as a whole is directed to conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists.” MPEP § 2111.05 (III.). See also Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process.”). Appeal 2020-000710 Application 12/964,292 8 according to different varieties of criteria.” Final Act. 11. In the Answer, the Examiner further, elaborated on the rationale to combine the reference stating “[t]he straightforward technical reason ‘so users can look up movies by the data that users want to using.’” Ans. 6. We concur with the Examiner. Appellant’s arguments that the Examiner’s rejection has not provide an adequate motivation to combine the references are not persuasive of error. In KSR, the Supreme Court rejected the rigid application of the teaching, suggestion, or motivation (TSM) test in favor of a more expansive and flexible approach to the determination of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). The determination of obviousness can be supported with an “articulated reasoning with [a] rational underpinning to support the legal conclusion of obviousness.” Id. We consider the Examiner’s rationale to combine the references, reproduced above, which is based upon teachings of the references, to be a reasoned rationale. We note that this combination is merely modifying Madrane to have different types of information used in the index to search for media content. We do not consider modifying Madrane to use different search indexes such as type of content in the modified content, geographic region in which the content it re-released, or content within the modified content to be “uniquely challenging or difficult for one of ordinary skill in the art” or “represent[] an unobvious step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). We are similarly unpersuaded by Appellant’s argument that the skilled artisan is the creator of the data base and not the user of the data base and “a skilled artisan may look to the needs of the resulting users/consumers, the motivation to combine must be based on the requisite Appeal 2020-000710 Application 12/964,292 9 knowledge of the skilled artisan who can make the invention.” Reply Br. 4. We are not persuaded of error by this argument as it is also relying upon a strict application of the TSM test and we consider that the creator of a database system for media asset management would be working to meet the desires of the user of the database system. As such, Appellant has not persuaded us the Examiner erred in finding the skilled artisan would combine the teachings of Madrane and IMDb. We are similarly not persuaded of error by Appellant’s second argument that even if the references were combined, IMDb does not associate the stored metadata with the modified media asset or the ability to search for the modified media asset using the metadata. Appeal Br. 12–13; Reply Br. 8. As discussed above, the Examiner finds that Madrane teaches identifying content in media asset, generating metadata from the identified content and using the metadata to perform a search for the modified asset. Final Act 7–9; Ans. 5. Thus, Appellant’s arguments in page 12 and 13 of the Brief, directed to IMDb are not persuasive of error as the Examiner relied upon Madrane to teach the disputed feature of associating metadata with the media asset and the ability to perform a search, not IMDb. As Appellant’s arguments have not addressed the Examiner’s findings concerning Madrane teaching these limitations, we are not persuaded of error in the Examiner’s rejection. For the forgoing reasons we sustain the Examiner’s rejection of claim 1 and claims 2 through 5, 7 through 14, and 16 through 18 which are not argued separately and thus grouped with claim 1. Appeal 2020-000710 Application 12/964,292 10 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–14, 16 –18 103 Madrane, IMDb 1–5, 7–14, 16 –18 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) (2018). AFFIRMED Copy with citationCopy as parenthetical citation