Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 1 of 12 PageID #: 580
`
`Exhibit F
`
`
`
`
`
`
`
`
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 2 of 12 PageID #: 581
`Case 1:24-cv-01301-CFC Document16-6
`Filed 02/18/25
`Page 2 of 12 PagelD #: 581
`
` S/N 15/637, 561
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Alex Fishman ef al.
`Examiner: Tung Thanh Trinh
`Inventors:
`Application No.:
`15/637,361
`Group Art Unit: 2421
`Filed:
`June 29, 2017
`Docket No.: 2050.171US2
`Confirmation No.: 8149
`Title:
`SMART PLAYLIST
`
`PATENT
`
`AMENDMENT & RESPONSE UNDER 37 C.9LR.§1.116
`
`Mail Stop AF
`Commissioner for Patents
`PO. Box 1450
`Alexandria,VA 22313-1450
`
`Applicant has receivedthe Final Office Action dated November 26, 2018. Please consider
`
`the following remarks.
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 3 of 12 PageID #: 582
`Case 1:24-cv-01301-CFC Document16-6
`Filed 02/18/25
`Page 3 of 12 PagelD #: 582
`
`AMENDMENT AND RESPONSE UNDER 37 C.ELR, § LAL
`Application Number: 15/637,561
`Filing Date: June 29, 2017
`
`Title: SMARTPLAYLIST
`
`Page 2
`DRE: 2050, 171082
`
`No amendments are made to the claims herein. The currently pending set of claims ts
`
`IN THE CLAIMS
`
`reproduced below, for reference.
`
`1.
`
`(Previously Presented) A computer-implemented method comprising:
`
`accessing a database to obtain content utilization data ofa plurality of client devices, each
`
`client device associated with a respective viewer of a plurality of viewers, wherein the content
`
`utilization data for a first viewer fromthe plurality of viewers is indicative of an interest of the first
`
`viewer in respective content items, and wherein the plurality of viewers comprises a second viewer
`
`who is not identified as a social connection of the first viewer;
`
`automatically generating, by a computer system, a list of popular content items that are
`
`currently popular among the plurality of viewers based on the content utilization data;
`
`customizing, by the computer system, the list of popular content items to generate a playlist,
`
`the customizing based on profile data of the first viewer , wherein the customizing is performed by
`
`the computer system and comprises:
`
`generating a score for each item from the list of popular content items based onthe profile
`
`data of the first viewer, and
`
`including items in the playlist based on at least some of the scores of the items fromthe list
`
`of popular content items; and
`
`based on the generating of the playlist, automatically sending, by the computer system, to a
`
`client device of the first viewer, an instruction that causes the client device to perform an operation
`
`for an item of the items includedin the playlist.
`
`2.
`
`(Previously Presented) The method of claim 1, wherein the customizing ofthe list of popular
`
`content items to generate the playlist is further based on viewing history data of at least one viewer
`
`who is identified in social connection data as a social connection of the first viewer.
`
`3.
`
`(Previously Presented) The method of claim 2, wherein the generating of the score for each
`
`item fromthe list of popular content items is further based on the viewing history data ofthe at least
`
`one viewer who is identified in the social connection data as a social connection of the first viewer.
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 4 of 12 PageID #: 583
`Case 1:24-cv-01301-CFC Document16-6
`Filed 02/18/25
`Page 4 of 12 PagelD #: 583
`
`AMENDMENT AND RESPONSE UNDER 37 C.ELR, § LAL
`Application Number: 15/637,561
`Filing Date: June 29, 2017
`Title: SMARTPLAYLIST
`
`Page 3
`DRE: 2050, 171082
`
`4.
`
`(Previously Presented) The method of claim 2, wherein the customizing comprises selecting
`
`at least one of the popular content items for the playlist based on the viewing history data of the at
`
`least one viewer who is identified in the social connection data as a social connectionofthefirst
`
`viewer indicating a high level of interest in the at least one of the popular content items while
`
`viewing history data of the first viewer indicates a low level of interest in the at least one of the
`
`popular content items bythe first viewer.
`
`5.
`
`(Previously Presented) The method of claim 1, further comprising:
`
`communicating the playlist to a client device of the first viewer.
`
`6.
`
`(Previously Presented} The method of claim 1, wherein the sending of the instruction that
`
`causes the client device to perform the operation for the item of the items included in the playlist
`
`coniprises sending an instruction that causes initiation of recording of a live program identified in
`
`the playlist.
`
`7.
`
`(Previously Presented) The method of claim 1, wherein the sending of the instruction that
`
`causes the client device to perform the operation for the item of the ttems included in the playlist
`
`comprises sending an instruction that causes display of an alert message regarding a live program
`
`identified in the playlist.
`
`8.
`
`(Previously Presented) The method of claim 1, wherein the items inthe playlist includeat
`
`least one of a first iter that identities Internet content, a second item that identifies video on
`
`demand content, and a third item that identifies a live program.
`
`(Previously Presented} The method of claim 1, wherein the client device comprises a set top
`
`9.
`
`box,
`
`10.
`
`(Previously Presented) The method of claim 1, wherein the chent device comprises a
`
`desktop computer.
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 5 of 12 PageID #: 584
`Case 1:24-cv-01301-CFC Document16-6
`Filed 02/18/25
`Page 5 of 12 PagelD #: 584
`
`AMENDMENT AND RESPONSE UNDER 37 C.ELR, § LAL
`Application Number: 15/637,561
`Filing Date: June 29, 2017
`
`Title: SMARTPLAYLIST
`
`Page 4
`DRE: 2050, 171082
`
`11.
`
`(Previously Presented) The method of claim 1, wherein the client device comprises a mobile
`
`device.
`
`12.
`
`(Previously Presented) The method of claim 1, wherein the customizing of the list of popular
`
`content items is also based at least in part on a content category ofinterest to the first viewer.
`
`13.
`
`(Previously Presented) The method of claim 1, wherein the content utilization data indicates
`
`lengths of time during which the plurality of viewers have viewed a content item.
`
`14.
`
`(Previously Presented} A system comprising:
`
`a memorythat stores instructions; and
`
`one or more processors configured bythe instractions to perform operations comprising:
`
`accessing a database io obtain content utilization data of a plurality of chent devices
`
`associated with a plurality of viewers, wherein the content utilization data for a first viewer from the
`
`plurality of viewers 1s indicative of an interest of the first viewer in respective content items, and
`
`wherein the plurality of viewers comprises a second viewer who is not identifiedas social
`
`connections of the viewer;
`
`automatically generating a list of popular content iterns that are currently popular among the
`
`plurality of viewers based onthe content utilization data;
`
`generating a playlist by performing customization operations comprising:
`
`generating a score for each item fromthe list of popular content items based ona profile of
`
`the first viewer; and
`
`including items in the playlist based on respective scores ofthe items fromthe list of popular
`
`content items, and
`
`based on the generating ofthe playlist, automatically sending, to a client device of the first
`
`viewer, an instruction that causes the client device to perform an operation for an item of the items
`
`included in the playlist.
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 6 of 12 PageID #: 585
`Case 1:24-cv-01301-CFC Document16-6
`Filed 02/18/25
`Page 6 of 12 PagelD #: 585
`
`AMENDMENT AND RESPONSE UNDER 37 C.ELR, § LAL
`Application Number: 15/637,561
`Filing Date: June 29, 2017
`
`Title: SMARTPLAYLIST
`
`Page 5
`DRE: 2050, 171082
`
`15.|(Previously Presented) The system of claim 14, wherein the generating of the playlist is
`
`further based on viewing history dataof at least one viewer who is identified in social connection
`
`data as a social connection of the first viewer.
`
`16.
`
`(Previously Presented) The system of claim 15, wherein the generating of the score for each
`
`item fromthe list of popular content items is further based on viewing history data of the at least
`
`one viewer who is identified in social connection data as social connections of the first viewer.
`
`17.
`
`(Previously Presented) The system of claim 15, wherein the customization operations further
`
`comprise selecting at least one of the popular content items for the playlist based on viewing history
`
`data of the at least one viewer who is identified in social connection data as social connections of
`
`the first viewer indicating a high level of interest in the at least one of the popular content items
`
`while viewing history data of the first viewerindicates a lowlevel of interest in the at least one of
`
`the popular content itenis by the first viewer.
`
`18.
`
`(Previously Presented} The system of claim 14, wherein the operations further comprise:
`
`communicating the playlist to a client device of the first viewer.
`
`19.
`
`(Previously Presented) The system of claim 14, wherein the sending of the instruction that
`
`causes the client device to perform the operation for the item of the items included inthe playlist
`
`comprises sending an instruction that causes initiation of recording of a live program identified in
`
`the playlist.
`
`20.
`
`(Previously Presented) A machine-readable non-transitory storage mediumstoring
`
`instructions that, when executed by one or more processors of a machine, cause the machine to
`
`perform operations comprising:
`
`accessing a database to obtain content utilization data of a plurality of clhent devices, each
`
`client device associated with a respective viewer ofa plurality of viewers, wherein the content
`
`utilization data for a first viewer of the plurality of viewers is indicative of aninterest ofthe first
`
`viewer in respective content items, and wherein the plurality of viewers comprises a second viewer
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 7 of 12 PageID #: 586
`Case 1:24-cv-01301-CFC Document16-6
`Filed 02/18/25
`Page 7 of 12 PagelD #: 586
`
`AMENDMENT AND RESPONSE UNDER 37 C.ELR, § LAL
`Application Number: 15/637,561
`Filing Date: June 29, 2017
`Tithe: SMARTPLAYLIST
`
`6
`DRE: 2050, 171082
`
`who is not identified as a social connection of the viewer;
`
`automatically generating a list of popular content items that are currently popular among the
`
`plurality of viewers based on the content utilization data;
`
`generating a playlist , the generating of the playlist being based on the list of popular content
`
`items and profile data of the first viewer, wherein the generating of the playlist comprises:
`
`generating a score for each item fromthe list of popular content items based onthe profile
`
`data of the first viewer, and
`
`including items in the playlist based on at least some of the scores of the items fromthelist
`
`of popular content items; and
`
`based on the generating of the playlist, automatically sending, to a client device ofthe first
`
`viewer, an instruction that causes the client device to perform an operation for an item of the items
`
`included in the playlist.
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 8 of 12 PageID #: 587
`Case 1:24-cv-01301-CFC Document16-6
`Filed 02/18/25
`Page 8 of 12 PagelD #: 587
`
`AMENDMENT AND RESPONSE UNDER 37 C.ELR, § LAL
`Application Number: 15/637,561
`
`Filing Date: June 29, 2017
`Title: SMARTPLAYLIST
`
`Page 7
`DRE: 2050, 171082
`
`REMARKS
`
`This responds to the Final Office Action dated November 26, 2018.
`
`No clairns are amended, canceled, or added herein. As a result, claims 1-20 remain pending
`
`in this application.
`
`
`incomplete Office Action under MPEP 707.07G
`
`The Office Action maintains the rejections of claims 1-20 without including a response to
`
`the arguments presented in the Response filed July 23, 2018. Specifically, Applicant asserted that
`
`the claims are not directed to an abstract idea because “the causing of the client machine to perform
`an operation for a content item based on generating playlist data is something unconventional.”!
`
`The Office Action does not address this argument. Accordingly, per MPEP 707.07(1), the rejection
`
`is incomplete and withdrawal of the Finality of the Office Action is respectfully requested.
`
`Double Patenting Rejection
`
`Claims 1-20 were rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-11 and 16-18 of U.S. Patent No. 9,699,503.
`
`Applicant does not admit that the present claims are obvious in view of U.S. Patent No.
`
`9,699,503. Furthermore, the claims can change during prosecution before allowance. Accordingly,
`
`a terminal disclaimeris not filed herewith, but will be considered when the claims are found to bein
`
`condition for allowance.
`
`the Rejection of Claims Under §10)
`
`Claims 1-20 stand rejected under 35 U.S.C. § 101 as allegedly being directed to non-
`
`statutory subject matter. In particular, the Office Action alleges that “the claims are directed to
`
`abstract ideas of accessing database information (content, viewer and social network), generating a
`
`list of popular content, customizing the list to generate a playlist for individual user, and sending the
`
`playlist to display on user device (the playlist is a subset of video content items in the database, the
`items are not modified or transformed bythe above processes).”* Additionally, the Office Action
`
`i Response of Juty 23, 2018 at 10.
`? Office Action at 3-4.
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 9 of 12 PageID #: 588
`Case 1:24-cv-01301-CFC Document16-6
`Filed 02/18/25
`Page 9 of 12 PagelD #: 588
`
`AMENDMENT AND RESPONSE UNDER37 CBR. § 1.116
`Application Number: 15/637,561
`Filing Date: June 29, 2017
`Title: SMARTPLAYLIST
`
`Page 8
`DRE: 2050, 171082
`
`alleges that the claims “do not include additional elements that are sufficient to amount to
`
`significantly more than the judicial exception because the claims do not go beyond requiring the
`
`gathering, organizing/manipulating/analysis, and display of available information in a particular
`
`filed, stating those functions in general terms, without limiting themto technical means for
`
`performing the functions that are arguably an advance over conventional computer and network
`technology.”?
`
`
`Claims 1-20 Are Patent-Eligible at Step 2A Under the PTO’s New Guidance
`
`Under the guidance published in the Federal Register on January 7, 2019, a claim should be
`
`found to be “directed to” an abstract idea at Step 2A of the Mayo test only ifthe claim recites a
`
`fudicial exception and “is not integrated into a practical application.” Here, the claims recite data-
`
`gathering steps such as “accessing a database to obtain content utilization data” and data-
`
`manipulation steps such as “automatically generating ... a list of popular content items ... based on
`
`the content utilization data.” Nonetheless, these steps are integrated into a practical application that
`
`“causes the client device to perform an operationfor an item ofthe items included inthe playlist.”
`
`Accordingly, all claims should be found to be patent-eligible at Step 2A, using the new guidance.
`
`Claims 6 and 19 Are Pateni-Eligible at Step 2A Under thePTO’s New Guidance
`
`Additionally, the dependent claims further detail the practical application. Accordingly, even
`
`if the examiner maintains that the independent claims should be found patent-ineligible underthe
`
`new guidance, some dependent claims should be found to be patent-eligible at Step 2A. For
`
`example, each of claims 6 and 19 recites “sending an instruction that causes the client device to
`
`perform the operation ... comprises sending an instruction that causes initiation of recording of a
`
`live program identified in the playlist.” Thus, claims 6 and 19 are directed to a practical application
`
`of controlling a client device to record live programs, not merely to the gathering and processing of
`
`data and should be foundto be patent-eligible at Step 2A, using the new guidance.
`
`3 id. at 6.
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 10 of 12 PageID #:
`589
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 11 of 12 PageID #:
`590
`
`

`

`Case 1:24-cv-01301-CFC Document 16-6 Filed 02/18/25 Page 12 of 12 PageID #:
`591
`
`