Swaminathan, Viswanathan et al.

Patent Trials and Appeals Board

Dec 12, 2019

13464819 - (D) (P.T.A.B. Dec. 12, 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.
13/464,819 05/04/2012 Viswanathan Swaminathan 2381US01/ADBS.209656 4393
121363 7590 12/12/2019
Shook, Hardy & Bacon L.L.P.
(Adobe Inc.)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
EXAMINER
ZIMMERMAN, JEFFREY P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/12/2019 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):
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
seaton@shb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VISWANATHAN SWAMINATHAN, VENKAT JONNADULA,
and KELLY KISHORE
____________

Appeal 2019-000393
Application 13/464,819
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 4–11, and 13–22, which constitute all of the
claims pending in this application. Claims 2, 3, and 12 have been cancelled.
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 Adobe
Systems Incorporated. Appeal Br. 3.
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THE INVENTION
The disclosed and claimed invention is directed to “systems and
methods for including advertisements in streaming content.” Spec. ¶ 1.2

REJECTIONS
Claims 1, 4–11, and 13–22 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 3.
Claims 1, 5, 6, 8–11, 13–16, and 18–22 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Manzari.3 Final Act. 4.
Claims 4, 7, and 17 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Manzari and Dhruv.4 Final Act. 19.

ANALYSIS
Section 101 Rejection
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).

2 We refer to the Specification filed May 4, 2012 (“Spec.”); Final Office
Action mailed July 7, 2017 (“Final Act.”); Appeal Brief filed Apr. 23, 2018
(“Appeal Br.”); Examiner’s Answer mailed Sept. 7, 2018 (“Ans.”); and the
Reply Brief filed Oct. 12, 2018 (“Reply Br.”).
3 Manzari et al., US 2011/0246661 A1, published Oct. 6, 2011.
4 Dhruv, US 2012/0198492 A1, filed Jan. 31, 2011.
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561 U.S. at
611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” (Diamond v. Diehr,
450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth,
vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the PTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and

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(2) additional elements that integrate the judicial exception
into a practical application (see Manual of Patent Examining
Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th ed. rev.
08.2017 Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 54–55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56.
Furthermore, the Memorandum “extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the abstract
idea exception includes the following groupings of subject matter, when
recited as such in a claim limitation(s) (that is, when recited on their own or
per se)”:
(a) Mathematical concepts—mathematical
relationships, mathematical formulas or equations,
mathematical calculations;

(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and

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(c) Mental processes—concepts performed in the
human mind (including an observation, evaluation, judgment,
opinion).
Id. at 52 (footnotes omitted).
USPTO Step 2A, Prong 1
The Examiner determines that the claims are “directed to organizing
targeted advertisements and media based on user characteristics, which is an
abstract idea.” Final Act. 3. The Examiner compares the claims to those in
Affinity Labs. Id. (citing Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838
F.3d 1266 (Fed. Cir. 2016)); see Ans. 4–5. Specifically, the Examiner finds
that the claims “involve customizing content delivered to users based on
preferences of those users.” Ans. 4.
Appellant contends that the Examiner overgeneralizes and
oversimplifies the claimed invention, failing to correctly consider the claim
as a whole, and incorrectly interprets the claimed invention to arrive at the
alleged abstract idea. Appeal Br. 9–10; see Reply Br. 4. Specifically,
Appellant argues that the claims “incorporate specific discrete elements and
functionality to ensure that the claims are not directed to an abstract idea.
Appeal Br. 10–11.
We are not persuaded by Appellant’s arguments that the Examiner
erred.
Representative claim 1—with emphasis added—is reproduced below:
1. A method comprising:
downloading, with a processor of a client device, a
manifest file from a server device to the client device via a
network, the manifest file including media segment reference
links and advertisement markers arranged in a predetermined
sequence throughout any portion of the manifest file that is
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determined by the server device providing the manifest file to
the client device;
inspecting the manifest file for the advertisement
markers;
responsive to said inspecting, transmitting user
preference information and an indication of how many
advertisement markers to replace to at least one advertisement
network server;
obtaining, with the processor of the client device, after
downloading of the manifest file, advertisement reference links
associated with user-customized advertisements from the at
least one advertisement network server, based on the user
preference information and the indication of how many
advertisement markers to replace;
replacing, with the processor of the client device, the
advertisement markers included in the manifest file with the
advertisement reference links to form a manifest file with
replaced advertisement reference links;
executing, with the processor of the client device, the
manifest file with replaced advertisement reference links by
sequentially accessing the media segment reference links and
the advertisement reference links included in the downloaded
manifest file in accordance with the predetermined sequence;
accessing, with the processor of the client device, during
execution of the manifest file with replaced advertisement
reference links, the manifest file from the server device at
predetermined time intervals; and
obtaining, with the processor of the client device,
additional advertisement reference links to replace new
advertisement markers in a most recently accessed manifest file
to form a most recently accessed manifest file with replaced
advertisement reference links,
the executing the manifest file with replaced
advertisement reference links comprising executing the most
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recently accessed manifest file with replaced advertisement
links.
As relevant here, the Guidance explains that “organizing human
activity” includes “commercial or legal interactions (including agreements in
the form of contracts; legal obligations; advertising, marketing or sales
activities or behaviors; business relations).” Memorandum, 84 Fed. Reg.
at 52.
The emphasized limitations above are each directed to targeted
advertising (customizing advertising content based on user preferences).
Specifically, the claim limitations identified above are directed to
(i) downloading a manifest file including media segment reference links and
advertisement markers, (ii) inspecting the manifest file for the advertisement
markers and subsequently transmitting user preference information and an
indication of how many advertisement markers to replace, (iii) obtaining
advertisement reference links associated with user-customized
advertisements based on the user preference information and the indication
of how many advertisement markers to replace, (iv) executing the manifest
file with the replaced advertisement reference links, (v) accessing the
manifest file at predetermined time intervals during execution of the
manifest file with the replaced advertisement reference links, (vi) obtaining
additional advertisement reference links to replace new advertisement
markers in the most recently access manifest file, and (vii) executing the
manifest file by executing the most recently accessed manifest file with
replaced advertisement links. Each of these steps, both individually and as a
combination, are directed to targeting (customizing) advertisements based on
user preferences, and specifically selecting the advertisements as late as
possible in order to optimize the selection of advertisements (advertisement
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customization), which is similar to the claims found to be patent-ineligible
abstract ideas in Affinity Labs. See Affinity Labs, 838 F.3d at 1269 (“This
court, however, has held that ‘customizing information based on . . .
information known about the user’ is an abstract idea”).
Accordingly, we conclude that claim 1 recites a method of targeted
advertising, which is an example of organizing human activity as identified
in the Memorandum, and thus an abstract idea.
USPTO Step 2A, Prong 2
In determining whether claim 1 is “directed to” the identified abstract
ideas, we next consider whether claim 1 recites additional elements that
integrate the judicial exception into a practical application. For the reasons
set forth below, we discern no additional element (or combination of
elements) recited in claim 1 that integrates the judicial exception into a
practical application. See Memorandum, 84 Fed. Reg. at 54–55.
Appellant argues that the claims “recite an arrangement of elements
that provide improved advertising customization in streaming content by
utilizing manifest files interspersed with markers to enable advertisements to
be interleaved into the content late during playing, thus optimizing targeted
advertising.” Appeal Br. 11. According to Appellant, the claims “improve
digital content customization in web-based streaming content technology
through a series of technical features.” Reply Br. 3. Specifically, Appellant
argues that the “claims are limited to a technical means of performing a
series of specific functions that are needed to achieve the advance in web-
based streaming content customization.” Reply Br. 4.
We are not persuaded. Claim 1 does not constitute an improvement to
computer technology; rather, it merely improves the abstract idea of
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customized and targeted advertising content based on user preferences. For
example, as Appellant argues, the claim requires “checking manifest files
updated on the server during the playback of content and retrieving
additional advertisements based on updated preference information (i.e.[,]
up-to-date preference information transmitted to an advertisement server
after initially downloading an inspecting the manifest file)” such that
“content can be customized (e.g. manifest files can be interleaved with
advertisements) just before a content portion is played.” Reply Br. 7.
However, the result of checking the manifest files and retrieving additional
advertisements based on updated preference information to customize the
content just before the content portion is played merely improves the
customization of the content (advertisements). No improvements are made
to the technology of streaming content.
Appellant also compares the claims to those in McRO and Enfish. See
Appeal Br. 13–16. Specifically, Appellant argues that the claims “recite an
arrangement of specific elements that provide improved advertisement
targeting in web-based streaming content,” incorporating “specific discrete
elements that enable a technological improvement as well as an application
of the claimed features.” Appeal Br. 14 (citing McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Appellant further
argues that the claims “are directed to a specific implementation of a
solution to a problem in the software arts (e.g., the deficiencies of
conventional or traditional systems to stream individualized web-based
content.” Appeal Br. 16 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016)).
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Appellant’s reliance on McRO and Enfish is not persuasive. In
McRO, the claims recited a “specific . . . improvement in computer
animation” using “unconventional rules” that related “sub-sequences of
phonemes, timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at 1302–
03, 1307–08, 1313–15. The Federal Circuit reasoned that “the incorporation
of the claimed rules” improved an existing technological process. Id.
at 1314.
Similarly, in Enfish, the Federal Circuit decided that the claims
satisfied § 101 under Mayo/Alice step one because they recited a “specific
improvement to the way computers operate,” i.e., an improved database
configuration that permitted faster and more efficient searching. Enfish,
822 F.3d at 1330–33, 1336, 1339. Further, the Federal Circuit has explained
that the claims in Enfish “did more than allow computers to perform familiar
tasks with greater speed and efficiency” and “actually permitted users to
launch and construct databases in a new way.” Finjan, Inc. v. Blue Coat
Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018); see also Secured Mail Sols.
LLC v. Universal Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017) (explaining
that the claims in Enfish “focused on an improvement to computer
functionality itself”).
Unlike the claims in McRO and Enfish, the claims here do not
improve computer functionality itself or cover a technology-based solution
that improves an existing technological process. See Final Act. 3–4; Ans. 5–
8. For instance, the claims do not recite an advance in hardware or software
that improves the functionality of, for example, a processor or client device,
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or of the servers. Instead, we agree with the Examiner that the claimed
additional elements (i.e., “processors, servers, client devices, networks,
etc.”) are “merely generic computing components performing their
conventional computing functions (e.g., sending/receiving information over
a network) in implementing the abstract idea.” Final Act. 3–4; see Ans. 6–8
(citing Spec. ¶¶ 2, 92–93, 101). Furthermore, the claims are directed to
“optimizing targeted advertising” (Appeal Br. 11) and do not recite using
rules to improve a technological process.
As discussed above, the claimed checking the manifest files and
retrieving additional advertisements based on updated preference
information to customize the content just before the content portion is played
merely improves the customization of the content (advertisements).
Moreover, as the Examiner explains, the claims recite utilizing the
“processor of the client device” to transmit preference information, obtain
advertisement reference links, access the manifest file, and obtain additional
advertisement reference links, but each of these steps utilize the processor to
perform the “judicially recognized conventional computing function of
transmitting information over a network.” Ans. 7. Appellant does not cite
anything in the Specification to explain that the claimed content streaming or
utilization of manifest files is unconventional. See Ans. 6–8 (citing Spec.
¶¶ 2, 92–93, 101).
Accordingly, we are not persuaded of error in the Examiner’s
determination that claim 1 is directed to an abstract idea, and we find the
claimed additional elements do not integrate the abstract idea into a practical
application.
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USPTO Step 2B
Turning to step 2B of the USPTO Guidance, we look to whether
claim 1 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. Memorandum, 84 Fed. Reg. at 56.
The Examiner concludes that the additional claim elements
(“processors, servers, client devices, networks, etc.”) are “merely generic
computing components performing their conventional computing functions
(e.g., sending/receiving information over a network) in implementing the
abstract idea.” Final Act. 3–4.
Appellant argues that the claims do not “rely on generic computer
hardware or generic computer functions to supply the inventive concept,”
and instead “that the arrangement of elements in the amended claims provide
an improvement to optimized targeted advertising in web-based content
streaming through the use of specific elements strategically implemented in
the method.” Appeal Br. 18. Specifically, Appellant argues that the claimed
functions are “not routine or conventional, and further confine the claims to
a particular useful application and provide specific advantageous
applications in technology through discrete steps carried out to achieve the
application.” Appeal Br. 19. Appellant also argues that the Examiner has
not provided evidence that the claimed functions are conventional. Reply
Br. 8–13 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70 (Fed. Cir.
2018)).
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We are not persuaded by Appellant’s argument that the Examiner
erred. As discussed above, the claimed checking the manifest files and
retrieving additional advertisements based on updated preference
information to customize the content just before the content portion is played
merely improves the customization of the content (advertisements).
Similarly, the claimed additional elements (i.e., (1) a “client device” with a
“processor,” (2) a “server device,” (3) a “network,” and (4) an
“advertisement network server”) amount to no more than mere instructions
to apply the abstract idea using generic computer components, which is
insufficient to provide an inventive concept. See Ans. 6–7; Alice, 573 U.S.
at 225–226.
Appellant does not direct our attention to anything in the Specification
that indicates the computer components—whether considered individually or
as an ordered combination—perform anything other than well-understood,
routine, and conventional functions, such as collecting data (i.e.,
downloading a manifest file, obtaining advertisement reference links,
obtaining additional advertisement reference links), transmitting data (i.e.,
transmitting user preference information and an indication of how many
advertisement markers to replace), and manipulating data (i.e., inspecting the
manifest file, replacing the advertisement markers in the manifest file with
the advertisement reference links, executing the manifest file with the
replaced advertisement reference links, accessing the manifest file at
predetermined time intervals, executing the most recently accessed manifest
file with replaced advertisement links). See Ans. 7; see also id. at 8–9
(finding the ordered combination of elements does not provide an inventive
concept). Those types of generic computer components performing generic
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computer functions have been found to be well understood, routine, and
conventional. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of
the specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information”); buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing,
sending information over networks insufficient to add an inventive concept);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) (use of Internet to verify credit-card transaction does not add enough
to abstract idea of verifying the transaction); see also MPEP § 2106.05(d)
(“Courts have held computer‐implemented processes not to be significantly
more than an abstract idea (and thus ineligible) where the claim as a whole
amounts to nothing more than generic computer functions merely used to
implement an abstract idea, such as an idea that could be done by a human
analog (i.e., by hand or by merely thinking.”)). Similarly, for the reasons set
forth in the Answer—which we adopt as our own—“the additional elements
in combination fail to amount to significantly more than the abstract idea
[because] each element merely performs the same function(s) in
combination as that element performs separately.” Ans. 9; see also (citing
the Specification and MPEP to support the ultimate determination).
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Appellant further argues that the claimed features are unconventional
and not known in the industry. Reply Br. 9. Appellant’s argument is not
persuasive because it improperly conflates the requirements for eligible
subject matter (§ 101) with the independent requirements of novelty (§ 102)
and nonobviousness (§ 103). Although the second step in the Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or nonobviousness. Alice, 573 U.S. at 217–18. A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. at 78–79. Further,
“under the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016).
Conclusion on Section 101 Rejection
Accordingly, we sustain the Examiner’s rejection of claim 1 as being
directed to patent-ineligible subject matter, as well as independent claims 11
and 20 with commensurate limitations, and dependent claims 4–10, 13–19,
21, and 22, which are not separately argued.

Section 103(a) Rejections
Claim 1 recites “obtaining, with the processor of the client device . . .
advertisement reference links associated with user-customized
advertisements from the at least one advertisement network server, based on
the user preference information and the indication of how many
advertisement markers to replace” and “obtaining, with the processor of the
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client device, additional advertisement reference links to replace new
advertisement markers in a most recently accessed manifest file to form a
most recently accessed manifest file with replaced advertisement reference
links.”
The Examiner finds that Manzari’s ad campaign playlist downloaded
from the ad web service teaches the claimed advertisement reference links,
and that Manzari’s ad web service targeting ad campaign playlist depending
on the user, history, etc., teaches the claimed based on user preference
information. Final Act. 6–7 (citing Manzari Figs. 2, 3, ¶¶ 29, 35).
Specifically, the Examiner finds that “Manzari’s client device ‘inspects’ the
video asset playlist by identifying discontinuity tags and using them as
insertion points for ad references,” and the insertion of the ad references at
the discontinuity tags “evidences the client’s contemplation of ‘how many
advertisement markers,’ i.e., how many insertion points to replace/fill with
ad references.” Ans. 14. The Examiner further finds that Manzari’s live
content, teaching “updated content segments are continually processed over
time intervals as the live event progresses,” is equivalent to the claimed
“most recently accessed manifest file,” and Manzari’s corresponding ad
segments inserted at insertion points between content segments of the live
video teach the claimed “a most recently accessed manifest file with
replaced advertisement reference links.” Final Act. 8 (citing Manzari Fig. 1,
¶ 16); see Ans. 12.
Appellant argues that Manzari teaches “using preference information
to create ad campaign playlists which are then used to create consolidated
playlists—but does not describe first inspecting a downloaded manifest file
and subsequently retrieving advertisement links from an advertisement
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network server based on transmitted preference information responsive to
the inspecting of the manifest file.” Appeal Br. 25. Appellant also argues
that Manzari teaches “creat[ing] an advertising campaign playlist which can
be targeted for an intended user,” which “remains static, with the segments
being used to generate the consolidated video playlist,” but does not teach
“obtaining… additional advertisement reference links to replace new
advertisement markers… to form a most recently accessed manifest file
with replaced advertisement reference links, the executing… comprising
executing the most recently accessed manifest file.” Appeal Br. 24; see
Reply Br. 23. Specifically, Appellant argues that Manzari does not describe
“more advertisements being obtained after the content is being viewed,” and
instead teaches “an ad campaign playlist is created and sent to the client to
generate the consolidated video playlist” without any “indication that more
advertisement links are sent to the client device after the initial ad campaign
playlist is generated and sent.” Reply Br. 18.
We are persuaded by Appellant’s argument as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
Manzari teaches (1) after downloading a manifest file and inspecting it for
user preference information and an indication of how many advertisement
markers to replace, obtaining advertisement reference links from an
advertisement network server based on the preference information and
indication of markers, in order to replace the advertisement markers with the
advertisement reference links, and (2) during execution of the manifest file,
accessing the manifest file at predetermined time intervals and obtaining
additional advertisement reference links in order to replace new
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advertisement markers and form a most recently accessed manifest file with
replaced links.
The cited sections of Manzari teach that “[o]nce media streaming
application 263 has retrieved video asset playback 250 and ad campaign
playlist 255, a consolidated video playlist 270 may be generated by utilizing
the discontinuity tags present in video asset playlist 250 as insertion points
for advertising spots contained in ad campaign playlist 255 . . . .” Manzari
¶ 29. In Manzari, “ad web service 247 may target ad campaign playlist 255
depending on user, history, and other data available for client 260.” Manzari
¶ 35. Manzari further teaches that “video asset 110 may comprise live
content, such as an event or concert, in which case video asset 110 may be
continually processed through segmenter 120 until the completion of the live
content” and that “[a]dvertisement assets 115 may comprise a plurality of
advertising spots to be shown with video asset 110.” Manzari ¶ 16. In other
words, Manzari teaches (1) generating a video playlist after retrieving a
video list and advertisement list, utilizing discontinuity tags as insertion
points for advertising spots, (2) targeting the advertisement list based on
user, history, and other client data, and (3) live video content that constantly
segments video content and advertisements. However, these sections of
Manzari cited by the Examiner and on the record before us do not teach:
obtaining advertisement reference links from an advertisement network
server based on the user preference information and the indication of how
many advertisement markers to replace determined from inspecting the
manifest file. These sections of Manzari also do not teach: during execution
of the manifest file, obtaining additional advertisement reference links to
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replace new advertisement markers in order to form a most recently
accessed manifest file with replaced advertisement reference links.
Therefore, we agree with Appellant that the Examiner’s finding that
Manzari teaches the disputed limitations is in error because it is not
supported by a preponderance of the evidence. See In re Caveney, 761 F.2d
671, 674 (Fed. Cir. 1985) (The Examiner’s burden of proving
unpatentability is by a preponderance of the evidence.); see also In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not,
because it may doubt that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in
its factual basis.”).
Accordingly, we are constrained on the record before us to reverse the
Examiner’s § 103(a) rejection of independent claim 1, along with the
§ 103(a) rejection of independent claims 11 and 20, which recite limitations
commensurate in scope to the disputed limitations discussed above, and
dependent claims 5, 6, 8–10, 13–16, 18, 19, 21, and 22.
Moreover, because the Examiner has not shown that the additional
reference cures the foregoing deficiency regarding the rejection of the
independent claims 1, 11, and 20, we will not sustain the obviousness
rejection of dependent claims 4, 7, and 17.

CONCLUSION
We affirm the Examiner’s § 101 rejection of claims 1, 4–11, and 13–
22
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We reverse the Examiner’s § 103(a) rejections of claims 1, 4–11, and
13–22.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4–11, 13–
22
101 Eligibility 1, 4–11,
13–22

1, 5, 6, 8–
11, 13–16,
18–22
103(a) Manzari 1, 5, 6, 8–
11, 13–16,
18–22
4, 7, 17 103(a) Manzari, Dhruv 4, 7, 17
Overall
Outcome
1, 4–11,
13–22

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