Peter Ward et al.

Patent Trials and Appeals Board

May 19, 2021

2020000710 (P.T.A.B. May. 19, 2021)

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.
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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;
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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:
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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.”).
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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.

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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.
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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.”).

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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
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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.

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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