Robert, Arnaud

Patent Trials and Appeals Board

Nov 8, 2019

12201981 - (D) (P.T.A.B. Nov. 8, 2019)

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.
12/201,981 08/29/2008 Arnaud Robert 0260315 1456
63649 7590 11/08/2019
DISNEY ENTERPRISES, INC.
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA AVENUE, SUITE 360
MISSION VIEJO, CA 92691
EXAMINER
PATEL, NEHA
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/08/2019 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):
docketing@farjami.com
farjamidocketing@yahoo.com
ffarjami@farjami.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARNAUD ROBERT
____________

Appeal 2018–008219
Application 12/201,981
Technology Center 3600
____________

Before JEREMY J. CURCURI, ROBERT J. WEINSCHENK, and
JON M. JURGOVAN, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 6, 10, 11, 13–18, and 22–25. 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. Appellant identifies the real party in interest as Disney Enterprises,
Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to “using digital fingerprinting technology to
recognize or identify at least a specific portion of a content item, then take a
predetermined and/or customized action based on that recognition.” Spec.
¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A system for displaying media, the system
comprising:
a media presentation hardware device configured to
receive and render a movie;
a content fingerprint database storing a plurality of
fingerprint units for a plurality of movies; and
a fingerprint unit detection module that is
communicatively coupled to the media presentation hardware
device and is configured to:
compute a fingerprint unit corresponding to a
scene of the movie being rendered; and
determine whether the fingerprint unit that is
computed matches one of the plurality of fingerprint
units on the content fingerprint database;
wherein the media presentation hardware device is
configured to, in response to the fingerprint unit detection
module determining a match, provide an advertisement based
on a demographic information associated with the movie
identified from the match, wherein the demographic
information includes a gender and an age range of users
demographically associated with the movie.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gits US 2009/0328125 A1 Dec. 31, 2009
Roberts US 6,330,593 B1 Dec. 11, 2001
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Name Reference Date
Bernosky US 2011/0022633 A1 Jan. 27, 2011
Hicken US 2005/0038819 A1 Feb. 17, 2005
REJECTIONS
Claims 1, 11, 13, 16–18, 22, 24, and 25 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Gits and Roberts. Non-Final Act. 4–6.
Claims 6, 10, 14, 15, and 23 are rejected under 35 U.S.C. § 103 as
being unpatentable over Gits, Roberts, and Bernosky. Non-Final Act. 6–8.
Claims 16 and 24 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gits, Roberts, and Hicken. Non-Final Act. 8.
OPINION
The Examiner relies on Gits as teaching most of the limitations of
independent claim 1. Non-Final Act. 4–5. The Examiner acknowledges,
though, that Gits does not teach “wherein the media presentation hardware
device is configured to, in response to the fingerprint unit detection module
determining a match, provide an advertisement based on a demographic
information associated with the movie identified from the match, wherein
the demographic information includes a gender and an age range of users
demographically associated with the movie.” Id. at 5. The Examiner relies
on Roberts for that limitation. Id. The Examiner asserts that “it is within the
capabilities of one of ordinary skill in the art at the time of the invention to
add hardware and associated software to provide functionality for using the
content fingerprinting of Roberts as the video fingerprinting of Gits thus
having the predicted result of improved security for a greater number of
content types.” Id.
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Appellant argues that “independent claim 1 recites that ‘demographic
information associated with the movie’ includes ‘a gender and an age range
of users demographically associated with the movie.’” Appeal Br. 7.
Appellant contends that “Roberts discloses that advertisements may be
provided to the client based on a particular single user’s demographic
information or his/her usage of the CD.” Id. at 8. According to Appellant,
“Roberts does not disclose, teach or suggest that the demographic
information is associated with the movie on the CD, or that the demographic
information is that of users (plural), and not just a single user.” Id.; see also
Reply Br. 2–3 (“Roberts does not disclose, teach or suggest that the user’s
device sends demographic information of anyone other than a single
user’s.”).
We do not find Appellant’s argument persuasive. First, Roberts
teaches “user demographic data” for a CD or DVD. Roberts, 2:22–30 (“we
use the term ‘CD’ to refer to all distributed media and the term ‘CD player’
to refer also to all distributed media players such as DVD players”), 3:37–40
(“connects a user playing a CD with a remote host for data exchange”), 4:9–
13 (“user demographic data”). The Examiner explains, and we agree, that
user demographic data for a DVD is associated with the movie on that DVD.
Ans. 5. Second, the Examiner explains, and we agree, that a person of
ordinary skill in the art would have understood the term “user demographic
data” in Roberts to refer to characteristics, such as gender and age, of a large
population, not just a single person. Id.
Moreover, even if Roberts only describes user demographic data for a
single person, Roberts still teaches the disputed limitation of claim 1. The
Specification of the present application explains that “[d]emographic
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information can include any stereotypical type of information or preferences
of the one or more users of a media presentation device.” Spec. ¶ 41
(emphasis added). Similarly, the Specification states that “[t]he user profile
330 is useful in determining the preferences and demographics of the one or
more people who use this presentation device.” Id. ¶ 43 (emphasis added).
Thus, the Specification demonstrates that the phrase “the demographic
information . . . of users demographically associated with the movie” in
claim 1 includes demographic information for a single person.
Appellant argues that “there is no explanation in the Office Action as
to why one of ordinary skill in the art would have any desire or would be
motivated to modify Gits, which is related to prevention of copyright
infringement resulting from unauthorized distribution, based on the
disclosure of Roberts, which is related to sending electronic coupons,
advertisements and bonus content to a client.” Appeal Br. 12. We do not
find Appellant’s argument persuasive. “The field of endeavor of a patent is
not limited to the specific point of novelty, the narrowest possible
conception of the field, or the particular focus within a given field.”
Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016).
Here, the present application, Gits, and Roberts are all directed to the same
field of endeavor, namely, digital fingerprinting. Spec. ¶ 1; Gits ¶ 21;
Roberts, 3:53–58. Although the present application and Roberts focus on
providing customized content to users and Gits focuses on identifying
unlawful use of video files, the field of endeavor is not limited to that
particular focus. See Unwired Planet, 841 F.3d at 1001 (“Here, both Galitz
and the ’205 patent are in the field of interface design, with Galitz focusing
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on graphical user interfaces and the ’205 patent focuses on interfaces for
location-based services.”).
Appellant argues that “the Office Action makes an unsupported
statement that using the content fingerprinting of Roberts would improve
security in Gits without explaining how and why the security would be
improved, and providing any evidence of desirability to improve security in
Gits.” Appeal Br. 12; see also Reply Br. 4 (“The Examiner has not set forth
a proper motivation or reasoning for the alleged combination.”). We do not
find Appellant’s argument persuasive. The Examiner asserts that “using the
content fingerprinting of Roberts as the video fingerprinting of Gits” would
have “the predicted result of improved security for a greater number of
content types.” Non-Final Act. 5. The Examiner’s rationale is supported by
the teachings of Gits and Roberts. Gits teaches using digital fingerprinting
to identify unlawful use of video files. Gits ¶¶ 20, 21. Roberts teaches using
digital fingerprinting to provide customized content to users of “all
distributed media” types, not just video files. Roberts, 2:22–30, 3:37–40,
4:9–13. Thus, as the Examiner asserts, combining the teachings of Gits and
Roberts would yield digital fingerprinting that can be used to provide
customized content to users of all media types as taught by Roberts and also
identify unlawful use of that media as taught by Gits, thereby improving
security for the greater number of media types taught by Roberts. Non-Final
Act. 5.
Appellant suggests that the Examiner must show that the combination
would improve the security of Gits’s system specifically. Appeal Br. 12–13.
We disagree. As discussed above, combining Gits and Roberts would
predictably result in improved security for the greater number of media types
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taught by Roberts, while also including Roberts’ feature of providing
customized content to users. Thus, we find that the Examiner shows
sufficiently that a person of ordinary skill in the art would have had a reason
to combine the teachings of Gits and Roberts. See KSR Int’l Co v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
For the reasons discussed above, we sustain the Examiner’s rejection
of independent claim 1. Independent claim 18 recites limitations similar to
those discussed above for claim 1, and Appellant does not present any
separate arguments for claim 18. Appeal Br. 13–14. Appellant also does
not present any separate arguments for dependent claims 6, 10, 11, 13–17,
and 22–25. Id. at 13–15. Thus, we sustain the Examiner’s rejection of
claims 6, 10, 11, 13–18, and 22–25.
CONCLUSION
The decision of the Examiner rejecting claims 1, 6, 10, 11, 13–18, and
22–25 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed New
Ground
1, 11, 13,
16–18,
22, 24, 25
103 Gits, Roberts 1, 11, 13,
16–18,
22, 24, 25

6, 10, 14,
15, 23
103 Gits, Roberts,
Bernosky
6, 10, 14,
15, 23

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Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed New
Ground
16, 24 103 Gits, Roberts,
Hicken
16, 24
Overall
Outcome
1, 6, 10,
11, 13–
18, 22–25

TIME PERIOD FOR RESPONSE
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).
AFFIRMED