Zalewski, Gary M.

Patent Trials and Appeals Board

Sep 26, 2019

11844148 - (D) (P.T.A.B. Sep. 26, 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.
11/844,148 08/23/2007 Gary M. Zalewski SONYP064 6292
16051 7590 09/30/2019
MPG, LLP and SONY
710 Lakeway Drive, Suite 200
Sunnyvale, CA 94085
EXAMINER
WILLIS, AMANDA LYNN
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
mpdocket@mpiplaw.com
scea_patent_docket@Playstation.Sony.com
sonydocket@mpiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARY M. ZALEWSKI

Appeal 2019-000386
Application 11/844,148
Technology Center 2100
____________

Before SHARON FENICK, MICHAEL M. BARRY, and
RUSSELL E. CASS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 29–36, 49–53, and 55–61, which are all
the pending claims. See Final Act. 1; see also Appeal. Br. 11–51. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Sony Interactive Entertainment America LLC as
the real party in interest. Appeal Br. 4.
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Introduction
The invention relates generally to providing an approach
for dynamic interaction with a media presentation and, more
particularly, to providing an approach for linking time-based
metadata to media content so that as the metadata changes in
synchronicity with media content during media play or
rendering, information associated with the media content can be
outreached in the context of the media presentation.
Spec. ¶ 2.
Claim 29 is illustrative of the claims on appeal:
1. A computer-implemented method for presenting
supplemental content on one or more ancillary devices,
comprising:
establishing, by a computing system, a wireless
connection between the one or more ancillary devices and a
main display, the computing system is local to the one or more
ancillary devices and the main display;
detecting, by the computing system, presentation of
content of a media source on the main display while the one or
more ancillary devices and the main display are connected,
wherein certain images or parts of images within the content are
associated with respective metadata information, that is time-
based and identifies supplemental content that is in addition to
the content of the media source, and the respective metadata
information is not subtitle data;
receiving at the computing system respective preference
settings for the one or more ancillary devices, the respective
preference settings are defined for descriptive content
categories via a user interface by a user while interfacing with
one of the one or more ancillary devices, the respective
preference settings is used for identifying which of the
respective metadata information is to be processed for
retrieving respective supplemental content for each of the one
or more ancillary devices, wherein respective supplemental
content related to the processed metadata information is
displayed on the one or more ancillary devices during the
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presentation of the content on the main display, and the
respective metadata information available for processing during
presentation of the content changes in synchronicity as the
content changes during presentation of the content on the main
display;
retrieving, by the computing system, the respective
supplemental content from one or more online sources, the
respective supplemental content are not obtained via the media
source; and
sending, by the computing system during presentation of
the content of the media source on the main display, the
respective supplemental content to each of the one or more
ancillary devices for display, the respective supplemental
content identified by the processed metadata information based
on the respective preference settings for the user during
presentation of the content, the respectively sent supplemental
content information being for display at the one or more
ancillary devices, and wherein at least one sent supplemental
content includes one or more internet links for accessing
additional information regarding the supplemental content, and
at least one sent supplemental content includes one or more
comments from an on-line community, the one or more
ancillary devices providing a navigation interface for enabling
viewing of the supplemental content and access to the one or
more internet links and the one or more comments from the
online community, wherein each of the one or more ancillary
devices is sent respective supplemental content that is
customized based on respective preference settings;
the method being executed by a processor, wherein the
respective supplemental content sent for viewing on the one or
more ancillary devices automatically changes in synchronicity
with a change of presentation of the content on the main
display.
Appeal Br. 45–46 (Claims App’x).
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Rejections and References
The Examiner rejected claims 29–36, 49–53, and 55–61 under 35
U.S.C. § 101 as directed to a judicial exception (i.e., an abstract idea)
without reciting significantly more. Final Act. 2–8.
The Examiner rejected claims 29, 32–36, 55, 56, 58, and 59 under 35
U.S.C. § 103(a) as unpatentable over Goto (US 2006/0053472 A1; pub. Mar.
9, 2006), O’Neil (US 2007/0136773 A1; pub. June 14, 2007), and Logan
(US 2003/0093790 A1; pub. May 15, 2003). Final Act. 10–25.
The Examiner rejected claims 49, 50, 52, 53 under § 103(a) over
Goto, O’Neil, Logan, and Carton (US 2005/0220439 A1; pub Oct. 6, 2005).
Final Act. 25–34.
The Examiner rejected claims 30, 31, and 57 under § 103(a) over
Goto, O’Neil, Logan, and Brierre (US 2005/0108026 A1; pub. May 19,
2005). Final Act. 35–36.
The Examiner rejected claims 51 and 61 under § 103(a) over Goto,
O’Neil, Logan, Carton, and Brierre. Final Act. 37–38.
The 35 U.S.C. § 101 Rejection
For the § 101 rejection, Appellant argues Examiner error based on the
independent claims as a group.2 See Appeal Br. 11–19. We select claim 29
as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
§ 101 Law and the USPTO 2019 Guidance
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The

2 There are two other independent claims (49 and 55), both of which include
limitations analogous to claim 29’s limitations that provide the basis for our
decision regarding the § 101 rejection. See App. Br. 47–50 (Claims App’x).
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Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
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, 71–73 (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, 561 U.S. at 611);
mathematical concepts (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In
Diamond v. Diehr, the claim at issue recited a judicial exception in the
category of mathematical concepts, 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.” 450 U.S. 175,
187 (1981).
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
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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 citation 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. (quoting Mayo, 566 U.S. at 77).
“[M]erely requiring generic computer implementation fails to transform that
abstract idea into a patent-eligible invention.” Id. at 212.
In early 2019, the USPTO recently published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance”). Under
the Revised 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
(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)).3
See 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 are 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.

3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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See Revised Guidance, 84 Fed. Reg. at 56.
The Examiner’s Determinations and Appellant’s Contention4
The Examiner determines claim 29 recites an abstract idea because it
recites limitations that “describe techniques for obtaining information about
the user that is used to tailor content to the user.” Final Act. 2–3 (quoting id.
at 3); see also Ans. 5 (similarly determining claim 29 is “directed towards
the abstract idea of ‘tailoring content based on information about the user’”).
The Examiner further determines that the additional claim elements recited
in claim 29, beyond those that describe the abstract idea, “[w]hen taken
individually or as part of an ordered combination these additional claim
element[s] do not appear to amount to significantly more than the abstract
idea itself.” Final Act. 7. Appellant contends claim 29 is not directed to an
abstract idea because it “recite[s] a practical application of using dynamic
metadata to retrieve and automatically present supplemental content to
ancillary devices.” Reply Br. 5. Appellant’s contention is persuasive.
Our Analysis
Alice/Mayo Step One, 2019 Guidance Step 2A Prong One
Under the first prong of step 2A of the Revised Guidance, under
which we determine whether a claim recites an abstract idea (and then, if it
does, we determine at prong two whether the claim is directed to that
abstract idea). See Revised Guidance, 84 Fed. Reg. at 53–55. Here, as its
preamble explains, claim 29 recites a “method for presenting supplemental
content.” The body of claim 29 recites that “content of a media source” is
presented to a user (on a “main display”). “Preference settings” that are

4 Because we reverse the Examiner based on a dispositive issue, we do not
address all of Appellant’s contentions.
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defined “by a user” are used for identifying “metadata information” that is
used for retrieving the supplemental content. The supplemental content,
which “is customized based on respective preference settings,” is provided
for display (on “one or more ancillary devices”). Collectively, the foregoing
limitations describe (recite) an idea of presenting (a) content on a display
and (b) related information that is selected based on user preferences on an
ancillary display.
As the Revised Guidance explains, certain methods of organizing
human activity constitute abstract ideas. 84 Fed. Reg. at 52; see also id. at
n.13. Here, the idea of presenting content on a display along with related
information that is selected based on user preferences on another display can
be carried out among humans, for example, by having one person manually
give a display presentation using two “overhead slide” projectors, e.g., with
pictures displayed on one screen and the related text “selected based on user
preferences” displayed on another screen. The claimed activities therefore
recite managing interactions between people, which is one of the methods of
organizing human activity that the Revised Guidance enumerates as having
been identified by the courts as an abstract idea. Id. at 52.
Thus, we discern no reversible error in the Examiner’s determination
that claim 29 recites an abstract idea “for obtaining information about the
user that is used to tailor content to the user.” Final Act. 2–3 (quoting id. at
3); see also Ans. 5.
Accordingly, we proceed to Step 2A, prong two, to determine whether
claim 29 is directed to the abstract idea that it recites.
Alice/Mayo Step One, 2019 Guidance Step 2A Prong Two
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We next consider whether claim 1 recites any additional elements
that, individually or in combination, integrate the recited abstract idea into a
practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. We
determine that it does.
Claim 29 requires detection of content presentation, “wherein certain
images or parts of images within the content are associated with respective
metadata information that is time-based and identifies supplemental content
that is in addition to the content of the media source.” The “receiving” step
of claim 29 requires processing of content changes for metadata and main
content display data “in synchronicity as the content changes during
presentation.” There are also multiple limitations related to “preference
settings” that are used to customize “supplemental content,” with related
requirements for a “navigation interface” for accessing “internet links” and
“comments from an online community.”
We find this combination of limitations constitutes a particular
arrangement of hardware (i.e., a main display, an ancillary display, a
wireless connection between the displays over which the preference settings
are received, etc.) and software-based (i.e., the functionality for
implementing the abstract idea in combination with the functionality that
integrates the idea into as discussed above) limitations. Appellant persuades
us that this combination of limitations provides a particular and meaningful
technological benefit, viz., in Appellant’s words, an improvement for “an
interactive media experience using dynamic and flexible time-based
metadata that can be associated with portions of a resource and can adapt as
the portions of the resource it describes changes during media play or
presentation” (Spec. ¶ 4). We are also persuaded that in achieving this
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technological benefit, Appellant does more than generally link the use of a
judicial exception to a particular technological environment or merely use
generic computers as a tool to perform an abstract idea. Thus, we conclude
claim 29 is directed to a practical application. See Guidance, 84 Fed. Reg. at
55 (explaining that a practical application can be a combination of elements
that “use[] the judicial exception in [a] meaningful way beyond generally
linking the use of the judicial exception to a particular environment, such
that the claim as a whole is more than a drafting effort to monopolize the
exception”).
Accordingly, we agree with Appellant the Examiner erred the § 101
rejection of claim 29. For the same reasons, we agree that the Examiner
erred in rejecting claims 30–36, 49–53, and 55–61 under § 101.
Accordingly, we do not sustain the Examiner’s § 101 rejection.
The § 103 Rejections
In rejecting claim 29, the Examiner relied on Goto for teaching the
disputed limitation of “receiving at the computing system respective
preference settings for the one or more ancillary devices,” as recited. Final
Act. 11 (citing Goto ¶ 58). Appellant contends the Examiner erred in this
finding because Goto does not teach that preference settings for ancillary
devices “should be received by the computing device.” Appeal Br. 19–20.
The Examiner responds by finding that it is the combination of Goto,
O’Neil, and Logan that teaches the disputed limitation:
Goto teaches obtaining the favor of the user (Goto ¶ 58), O’Neal
[sic] teaches obtaining information relating to products and services
that may be of interest to the viewer (O’Neal [sic] ¶ 30), [and] Logan
teaches gathering indications of preferences from the user (¶ 209).
This information from the user must be obtained somehow. Goto
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teaches the use of a GUI that is quite capable of gathering infor-
mation (¶ 58). Within the proposed combination it would have been
obvious to one of ordinary skill in the art to have used the GUI to
gather the required information, as the recited devices must obtain
this information from the users somehow, and the GUI is recited as a
means capable of gathering information.
Ans. 6–7.
Appellant replies with further argument that Goto, O’Neil, and Logan,
collectively, do not “suggest that preference settings for the one or more
ancillary devices should be received at the computing system,” as recited.
Reply Br. 7 (emphasis omitted); see also id. at 7–8. Appellant’s argument is
persuasive.
Goto, the principal reference that the Examiner relies on in the Final
Action for teaching the disputed limitation, discloses providing a remote
control GUI on a secondary display. Goto ¶ 58. A user can download a
preferred (“according to the favor of the user”) GUI to be used on the
secondary screen. Id.; see also Goto Fig. 6 (showing an exemplary user-
favored GUI for a touch-sensitive remote controller for display on the
secondary or ancillary device). Thus, Goto teaches the device for the
ancillary display receiving “preference settings.” However, we agree with
Appellant that the Examiner’s findings and reasoning did not sufficiently
demonstrate how Goto teaches or suggests receiving such preference settings
from ancillary devices, as claimed.
Appellant further persuades us that the combination of Goto, O’Neil,
and Logan does not teach or suggest the disputed limitation. “[A] patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the
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Examiner insufficiently points to Logan’s “teach[ing of] gathering
indications of preferences from the user (¶ 209)” in combination with the
teachings of Goto and O’Neal as rendering obvious the disputed limitation.
Ans. 7 (emphasis added) (explaining that the combination teaches the
specific requirement because “information from the user must be obtained
somehow” and Goto’s GUI “is recited as a means capable of gathering
information”).
Although we discern no reversible error in the Examiner’s findings
that “O’Neil teaches obtaining information relating to products and services
that may be of interest to the viewer” and “Logan teaches gathering
indications of preferences from the user” (Ans. 6 (citing O’Neil ¶ 30; Logan
¶ 209)), Appellant persuades us the articulated reasoning that “the recited
devices must obtain [the required] information from the users somehow”
(Ans. 7) and “it would have been obvious to one of ordinary skill in the art
to have used the GUI to gather the required information, as the recited
devices must obtain this information from the users somehow” (id.) is
effectively conclusory. “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006);
see also KSR, 550 U.S. at 418 (quoting Kahn); In re Chaganti, 554 F. App’x
917, 922 (Fed. Cir. 2014) (“It is not enough to say that there would have
been a reason to combine two references because to do so would ‘have been
obvious to one of ordinary skill’” because “[s]uch circular reasoning is not
sufficient—more is needed to sustain an obviousness rejection.”).
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Thus, we do not sustain the § 103 rejection of claim 29. We likewise
do not sustain the § 103 rejections of independent claims 49 and 55, both of
which include limitations commensurate with the disputed limitation of
claim 29 discussed above, and for which the rejections rely upon the same
prior art findings. We also, accordingly, do not sustain the § 103 rejections
of the dependent claims. Because we agree with at least one of the
arguments advanced by Appellant that effects a reversal of all the § 103
rejections, we need not reach the merits of Appellant’s other arguments.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
29–36, 49–53, and
55–61
§ 101 29–36, 49–53,
and 55–61
29, 32–36, 55, 56,
58, and 59
§ 103(a)
Goto, O’Neil, and Logan
29, 32–36, 55,
56, 58, and 59
49, 50, 52, 53 § 103(a)
Goto, O’Neil, Logan, and
Carton
49, 50, 52, 53
30, 31, and 57 § 103(a)
Goto, O’Neil, Logan, and
Brierre
30, 31, and 57
51 and 61 § 103(a)
Goto, O’Neil, Logan,
Carton, and Brierre
51 ad 61
Overall Outcome 29–36, 49–53,
and 55–61

REVERSED