throbber
Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 1 of 23
`
`EXHIBIT J
`(Part 1 of 2)
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 2 of 23
`08/16/19 02 : 09PM PDT Envision IP , LLC -) Examiner Rojas
`5712738300 Pg 1/1C
`RECEIVED
`CENTRAL FAX CENTER
`AUG 1 6 2019
`
`Dockct No: E107-003-2016
`
`PATENT
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`Applicant:
`Serial No.:
`Filing Date:
`
`David J. Russck
`15/346,780
`November 9,2016
`
`Confirmation No.:
`Group Art Unit:
`Examiner:
`
`2378
`3681
`Marie P. Brady
`
`RESPONSE TO NON-FINAL OFFICE ACTION
`
`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Madam:
`
`In response to the Office Action dated February 8, 2019, please review the
`
`claim amendments which being on page 2 of this paper, and the
`
`remarks/arguments that begin on page 7 of this paper. The statutory three-month
`
`period to respond was May 8, 2019, and Applicant hereby submits a one-month
`
`extension of time with the applicable fcc. This response is being filed on Sunday,
`
`June 9, 2019, prior to the next business day of Monday, June 10, 2019 of the one-
`
`month extension deadline of June 8, 2019, which fell on a Saturday, pursuant to
`
`35 U.S.C. § 21.
`
`PAGE 1/10 RCVD AT 811612019 5:09:20 PM [Eastern Daylight Time] 81/R:VU-PTOFAX-003114 3 DNIS:2738300 3 CSID:6462005227 ANI:61933018973 DURATION (rnm•ss):0249
`
`1
`
`TT0006754
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 3 of 23
`08/16/19 02:09PM PDT Envision IP, LLC -> Examiner Rojas
`5712738300 Pg 2/IC
`
`Docket No: E107-003-2016
`
`PATENT
`
`Amendments to the Claims
`
`1.
`
`(Currently Amended) A method of delivering content based on emotional
`
`experiences to a user, comprising:
`
`storing, at a server, a plurality of user interactions performed with a
`
`plurality of digital media assets within a social network;
`
`determining, by the server, using a neural network or fuzzy logic system
`
`
`icial intelligence
`
`method, at least one digital media asset having an
`
`emotional impact on the user;
`
`determining, by the server, an emotional state of the user associated with
`
`the emotional impact, using the neural network or fuzzy logic system artificial
`
`identifying selecting, by the server, a first targeted digital media asset
`
`associated with the emotional state of the user;
`
`executing, by the server, a first operation to display the first targeted digital media
`
`asset to the user within the social network if it is determined that the first targeted digital
`
`media asset has the strongest emotional impact on the user, or execute a second operation
`
`to select a second targeted digital media asset if it is determined that the first targeted
`
`digital media asset does not have the strongest emotional impact on the user and
`
`2,
`
`(Currently Amended) The method of claim 1, wherein the
`
`fuzzy logic system is configured to normalize data corresponding to the plurality
`
`of user interactions.
`
`PAGE 2/10 RCVD AT 8116/2019 5:09:20 PM [Eastern Daylight Time] SVR:1N43TOFAX•003114 DNIS:2738300 CSID:6462005227 ANI:6193301897 DURATION (mm-ss):0249
`
`2
`
`TT0006755
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 4 of 23
`08/16/19 02:09PM PDT Envision IP, LLC -> Examiner Rojas
`5712738300 Pg 3/1C
`
`Docket No: E107-003-2016
`
`PATENT
`
`3.
`
`(Currently Amended) The method of claim 1, wherein the plurality of
`
`digital media assets arc selected from a group consisting of video[[,]] and
`
`animation,:
`
`4.
`
`(Currently Amended) The method of claim 1, wherein the first and second
`
`targeted digital media assets asst His]] arc advertising content.
`
`5.
`
`(Previously Presented) The method of claim 1, wherein the step of
`
`determining, by the server, an emotional state of the user associated with the
`
`emotional impact, using the artificial intelligence method, further comprises
`
`analyzing, by the server, at least one of a demographic information, psycho-
`
`demographic information, cognitive state, and group interaction of the user.
`
`6.
`
`(Currently Amended) The method of claim 1, wherein the first or second
`
`targeted digital media asset is inserted into a video by the server within the social
`
`network.
`
`7.
`
`(Currently Amended) The method of claim 6, wherein the video is a user
`
`generated video, song, slideshow, collage or digital media composition.
`
`8.
`
`A method system for delivering content based on emotional experiences to
`
`a user, comprising:
`
`t .
`
`storing a plurality of user interactions
`
`correlated with a plurality of digital media assets within a social network at a
`
`server;
`
`identify determining, by the server, at least one digital media asset having an
`
`PAGE 3/10 RCVD AT 811612019 5:09:20 PM [Eastern Daylight Time] SVR:1942TOFAX•003114 DNIS:2738300 • CSID:6462005227 'ANI:6193301897 DURATION (mm•ss):0249
`
`3
`
`TT0006756
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 5 of 23
`08/16/19 02:09PM PDT Envision IP, LLC -> Examiner Rojas
`5712738300 Pg 4/1C
`
`Docket No: E107-003-2016
`
`PATENT
`
`emotional impact on a user, wherein the emotional impact is based at least in part
`
`on the extent of user interactions with the at least one digital media asset;
`
`identifying, by the server, other digital media assets associated with the at least
`
`one digital media, the media generated further configured to generate a first
`
`content stream consisting of the at least one digital media asset and the other
`
`digital media assets; and
`
`executing, by the server, a first operation to display the first content stream
`
`to the user within the social network if it is determined that the first content
`
`stream has a strong emotional impact on the user, or execute a second operation to
`
`generate a second content stream if it is determined that that the first content
`
`stream does not have a strong emotional impact on the user
`
`9.
`
`(Currently Amended) The method system of claim 8, wherein the at least
`
`one digital media asset is selected from a group consisting of a video, a
`
`photograph, a song, and an advertisement.
`
`10.
`
`(Currently Amended) The method system of claim 8, wherein the other
`
`digital media assets are selected from a group consisting of a video, a photograph,
`
`a song, and an advertisement.
`
`1 1.
`
`(Currently Amended) The method system of claim 8, wherein the at least
`
`one digital media asset is a video and the other digital media assets include an
`
`advertisement.
`
`PAGE 4110 RCVD AT 811612019 5:09:20 PM [Eastern Daylight Time] SVR:Vd•PTOFAX-003114 DNIS:2738300 CSID:6452005227 'ANI:0193301897 DURATION (mm•ss):0249
`
`4
`
`TT0006757
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 6 of 23
`
`08/16/19 02:09PM PDT Envision IP, LLC -> Examiner Rojas
`
`5712738300 Pg 5/1C
`
`Docket No: E107-003-2016
`
`PATENT
`
`12.
`
`(Currently Amended) The method system of claim 8, wherein the server
`
`uses at least one of a machine Icamina process
`
`neural network or a fuzzy logic system
`
`Z 1'
`
`13.
`
`(Currently Amended) The method system of claim 8, wherein the artificial
`
`intelligence processor server determines the emotional impact by analyzing at
`
`least one of a demographic information, psycho-demographic information,
`
`cognitive state, and social or group interaction of the user.
`
`14.
`
`(Currently Amended) The method of claim 8, wherein the content stream
`
`is associated with a specific date or event related to the user.
`
`15.
`
`(Currently Amended) A system to generate personalized content based on
`
`user emotions, comprising:
`
`a server configured to store a plurality of user likes and user dislikes
`
`correlated with a plurality of digital media assets within a social network; and
`
`a fuzzy logic system
`
`coupled to the
`
`server and configured to identify at least one digital media asset having a positive
`
`emotional impact on the user based on the user likes, the fuzzy logic system
`
`artificial intelligence processor further configured to identify other digital media
`
`assets associated with the at least one digital media;
`
`a media generator coupled to the server further [[and]] configured to
`
`generate a first content stream consisting of the at least one digital media asset
`
`and the other digital media asscts, [[;]] and
`
`the server further configured to execute a first operation to display the first
`
`content stream to the user within the social network if it is determined that the
`
`first content stream has the strongest emotional impact on the user, or execute a
`
`PAGE 5110 2 RCVD AT 811612019 5:09:20 PM (Eastern Daylight TIme1 2 SVR:W•PTOFAX•003114 DNIS:2738300 2 CSID:6462005227 2ANI:61933018972 DURATION (mm4s):0249
`
`5
`
`TT0006758
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 7 of 23
`08/16/19 02:09PM PDT Envision IP, LLC -> Examiner Rojas
`5712738300 Pg 6/1C
`
`Docket No: E107-003-2016
`
`PATENT
`
`second operation to select a second content stream if it is determined that the first
`
`content stream does not have the strongest emotional impact on the user
`
`16.
`
`(Currently Amended) The system of claim 15, wherein the fuzzy logic
`. .
`
`WO=
`
`intelligence
`
`is further configured to identify at least
`
`one digital media asset having a negative emotional impact on the user based on
`
`the user dislikes.
`
`17.
`
`(Currently Amended) The system of claim 15, wherein the fuzzy logic
`• •
`•
`-
`system identifies other digital media assets by
`
`determining if the other digital media assets would have a positive emotional
`
`impact on the user.
`
`18.
`
`(Previously Presented) The system of claim 15, wherein the at least one
`
`digital media asset is a video and the other digital media assets include an
`
`advertisement.
`
`19.
`
`(Currently Amended) The system of claim 15, wherein the fuzzy logic
`
`system artificial intelligence processor uses at least one of a machine learning
`
`process or a fuzzy logic process.
`
`20.
`
`(Currently Amended) The system of claim 15, wherein the fuzzy logic
`
`P/M111 artificial intelligence processor determines the emotional impact by
`
`analyzing at least one of a demographic information, psycho-demographic
`
`information, cognitive state, and group interaction of the user.
`
`PAGE 6110 RCVD AT 811612019 5:09:20 PM [Eastern Daylight Timer SVR:11143TOFAX•003114 DNIS:2738300 MD:6462005227 'ANI:6193301897" DURATION (mm•ss):0249
`
`6
`
`TT0006759
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 8 of 23
`5712738300 Pg 7/1C
`08/16/19 02:09PM PDT Envision IP, LLC -> Examiner Rojas
`
`Docket No: E107-003-2016
`
`PATENT
`
`Remarks/Arguments
`
`Applicant respectfully requests reconsideration of the present application
`
`in view of the amendments set forth above and the remarks below.
`
`Claims 1-20 arc pending, and have been rejected. Applicant submits that
`
`- the claims, as amended, are in a condition for allowance. No new matter has been
`
`entered.
`
`35 U.S.C. 112
`
`The Office Action rejected Claims 1-20 under 35 U.S.C. § 112 as failing to
`
`comply with the written description requirement.
`
`Claim 1 has been amended to remove the language "artificial intelligence
`method", and replaced with "a neural network or fuzzy logic system". Support for this
`
`amendment can be found in Paragraph 0101 of the Specification, which states:
`
`"Other techniques for matching the user profile to the digital media asset
`may include neural networks and fuzzy logic, wherein aspects of the user
`profile are used to train the network or as inputs to the fuzzy logic system
`to determine the best digital media asset."
`
`Claims 2-7 have been amended accordingly as well. In addition, claim 2 has been
`
`amended to remove the language "machine learning".
`Claim 3 has been amended to remove the language "tickertape messages".
`Claim 7 has been amended to remove the language "slideshow" and "collage".
`
`Independent claims 8 and 15, as well as their respective dependent claims, have
`
`been similarly amended as well.
`
`35 U.S.C. § 101
`
`The Office Action rejected claims 1-20 under 35 U.S.C. § 101 as being
`
`directed to a judicial exception without significantly more.
`
`Claims 1, 8 and 15 have been amended to clarify that Applicant's claimed
`
`invention is not directed to an abstract idea, but to a tangible specific
`
`7
`
`PAGE 7/10 RCVD AT 811512019 5:09:20 PM [Eastern Daylight TImel 2 SVR:liV•PTOFAX•003114 DNI6:2738300 CSID:5452005227 ANI:6193301897 • DURATION (mm•ss):0249
`
`TT0006760
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 9 of 23
`08/16/19 02:09PM PDT Envision IP, LLC -> Examiner Rojas
`5712738300 Pg 8/1C
`
`Docket No: E107-003-2016
`
`PATENT
`
`implementation for improving the process of creating a personalized multimedia
`
`stream for a user.
`
`Claims 1, 8 and 15 arc directed to either an express or inherent
`transformation that is particular, a machine implements the steps, the article being
`
`transformed (i.e., the CPU) is particular, the article (i.e., the CPU) undergoes a
`
`change in state (e.g., the CPU changes from using a first operation for inserting a
`
`first targeted digital media asset - such as an advertisement or audio file such as
`
`music — if that particular asset is determined to have "the strongest emotional
`
`impact on the user", to a second operation of selecting a second targeted digital
`media asset if the first targeted digital media asset is determined not to have the
`
`strongest emotional impact on the user.
`
`Thus, amended claims 1, 8 and 15 describe a particular solution to a
`problem to be solved (i.e., providing a much needed determination of whether
`content should be displayed to the user based on a user's known emotional
`affinity towards that particular content) and the performance of the steps is
`
`observable and verifiable (i.e., the playback changes to the second composite
`digital media stream or remains as the first composite digital media stream) (e.g.,
`
`July 2018 § 101 Method Eligibility Quick Reference Sheet).
`
`In addition, the Federal Circuit in Enfish, LLC v. Microsoft Corp., 822
`
`F.3d 1327 found the disputed claims to be non-abstract upon determining that
`
`they were focused on specific asscrtcd improvements in computer-related
`
`technology, and not merely focused on a pre-existing process for which
`
`computers were invoked merely as a tool. Similar to the claims of Enfish, the
`features of the newly added claims are not merely limited an abstract idea to a
`computer environment by simply performing the idea via a computer, but rather
`
`arc an innovation in the computer technology itself. The claimed system
`
`manipulates operation of the CPU based on a determination that a user would
`
`respond favorably to the insertion of a particular digital media asset, and if not,
`
`then another digital media asset is identified and inserted into the media stream.
`
`PAGE 8/10 RCVD AT 811612019 5:09:20 PM (Eastern Daylight Timer SVRAN-PTOFAX•003114 DR'S:2738)00 C8ID:5402005227' ANI:51933018972 DURATION (mm•ss):0249
`
`8
`
`TT0006761
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 10 of 23
`08/16/19 02:09PM PDT Envision IP, LLC -> Examiner Rojas
`5712738300 Pg 9/1C
`
`Docket No: E107-003-2016
`
`PATENT
`
`35 U.S.C. § 103
`
`The Office Action rejected claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a)
`
`as being unpatcntable by McCarthy (U.S. Patent No. 6,904,408). In addition, the
`
`Office Action rejected claims 6-20 under 35 U.S.C. § 103(a) as being unpatcnable
`
`over McCarthy in view of Rothschild (Pre-grant Pub, No. 20010047294).
`
`McCarthy nor Rothschild discloses "executing, by the server, a first
`
`operation to display the first targeted digital media asset to the user within
`
`the social network if it is determined that the first targeted digital media
`
`asset has the strongest emotional impact on the user, or execute a second
`
`operation to select a second targeted digital media asset if it is determined
`
`that the first targeted digital media asset does not have the strongest
`
`emotional impact on the user".
`
`Specifically, Applicant's claimed invention identifies a digital media asset
`
`that would have the strongest emotional impact or affinity to the user. Paragraph
`
`0101 of the Specification states:
`
`"Regardless of the particular database structure used, some or all
`of the aspects of the user's reality described earlier may be
`captured in a database to permit a user's profile to determine digital
`media assets that have a strong impact on that user. The
`optimization process of finding the strongest or most appropriate
`affinities and best match to the user's internal narrative social
`perception identification framework 804 may be based on a
`number of algorithms."
`
`PAGE 9110 RCVD AT 811512019 5:09:20 PM [Eastern Daylight Time)" SVR:VV-PTOFAX-003114 DN16:2738300 CSID:6402005227 "ANI:5193301897 • DURATION (mm•ss):0249
`
`9
`
`TT0006762
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 11 of 23
`
`08/16/19 02:09PM PDT Envision IP, LLC -> Examiner Rojas
`
`5712738300 Pg10/1C
`
`Docket No: E107-003-2016
`
`PATENT
`
`The instant application is believed to be in a condition for allowance. Such
`
`allowance is respectfully solicited. The Examiner is hereby invited to contact Applicant's
`
`attorney at the telephone number listed below.
`
`Respectfully submitted,
`
`/Maulin V. Shah/
`
`Maulin V. Shah, Esq.
`Reg. # 56, 587
`350 5th Avenue, 59th Fl.
`New York, NY 10118
`(310) 499-8624 (phone)
`(646) 200-5227 (fax)
`June 9, 2019
`
`PAGE 10110 RCVD AT 811612019 5:09:20 PM [Eastem Daylight Time) 6VRAN.PTOFAX-003114 DNIS:2738300 CSID:6462005227 ANI:6193301897 DURATION (mm-ss):02.49
`
`10
`
`TT0006763
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 12 of 23
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 14.50
`Alexandria, Virginia 22313-1450
`w ww.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET :NO.
`
`CONFIRMATION :NO.
`
`15/346,780
`
`1 1/09/2016
`
`David J. Russek
`
`E107-003-2016
`
`2378
`
`02/08/2019
`
`7590
`
`75120
`Maulin Shah
`Envision IP
`350 5th Avenue, 59th Floor
`New York, NY 10118
`
`EXAMINER
`
`BRADY, MARIE P.
`
`ART UNIT
`
`PAPER NUMBER
`
`3681
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/08/2019
`
`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):
`
`maulin.shah@envisionip.com
`
`PTOL-90A (Rev. 04/07)
`
`TT0006781
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 13 of 23
`Application No.
`Applicant(s)
`15/346,780
`Russek, David J.
`
`Office Action Summary
`
`Examiner
`MARIE P BRADY
`
`Art Unit
`3681
`
`AIA Status
`No
`
`-- The MAIL/NG DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`)R Responsive to communication(s) filed on 11/9/16.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`2b) Ei This action is non-final.
`2a)0 This action is FINAL.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
` ; the restriction requirement and election have been incorporated into this action.
`4)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex patte Quayle, 1935 C.D. 11, 453 0.G. 213.
`
`Disposition of Claims*
`5) CI Claim(s) 1-20 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6) 0 Claim(s) is/are allowed.
`7) [1] Claim(s) 1-20 is/are rejected.
`8) 0 Claim(s)
`is/are objected to.
`are subject to restriction and/or election requirement
`9) 0 Claim(s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedbackguspto.gov.
`
`Application Papers
`10)0 The specification is objected to by the Examiner.
`1 1)0 The drawing(s) filed on 11/9/16 is/are: a)0 accepted or b)0 objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`1 2)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)0 None of the:
`b)0 Some**
`a)0 All
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No.
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`— See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) Notice of References Cited (PTO-892)
`
`2) El Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) 1) Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) 1) Other:
`
`Part of Paper No./Mail Date 20190103
`
`TT0006782
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 14 of 23
`
`Application/Control Number: 15/346,780
`Art Unit: 3681
`
`Page 2
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Status of the Claims
`
`2.
`
`This is Non-Final Office Action in response to the filing of this application on
`
`1 1/9/16. Clams 1-20 are pending and addressed below.
`
`Priority
`
`3.
`
`The later-filed application must be an application for a patent for an invention
`
`which is also disclosed in the prior application (the parent or original non-provisional
`
`application or provisional application). The disclosure of the invention in the parent
`
`application and in the later-filed application must be sufficient to comply with the
`
`requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112,
`
`except for the best mode requirement. See Transco Products, Inc. v. Performance
`
`Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
`
`4.
`
`The disclosure of the prior-filed application, Provision Application No.
`
`60/460,998, fails to provide adequate support or enablement in the manner provided by
`
`35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of
`
`this application. Claim 3 recites, "wherein the digital media assets are selected from a
`
`group consisting of video, animation, and tickertape messages." The provisional does
`
`not mention that the digital media asset can be tickertape messages.
`
`Claim Rejections -35 USC § 112
`
`5.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`TT0006783
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 15 of 23
`
`Application/Control Number: 15/346,780
`Art Unit: 3681
`
`Page 3
`
`(a) IN GENERAL—The specification shall contain a written description of the
`i nvention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`i nventor of carrying out his invention.
`
`6.
`
`Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
`
`paragraph, as failing to comply with the written description requirement. The claim(s)
`
`contains subject matter which was not described in the specification in such a way as to
`
`reasonably convey to one skilled in the relevant art that the inventor or a joint inventor,
`
`or for pre-AIA the inventor(s), at the time the application was filed, had possession of
`
`the claimed invention. The requirement for an adequate disclosure ensures that the
`
`public receives something in return for the exclusionary rights that are granted to the
`
`inventor by a patent, and sets forth the minimum requirements for the quality and
`
`quantity of information that must be contained in the patent to justify the grant.
`
`7.
`
`In accordance with section 2161.011. of the MPEP, "original claims may fail to
`
`satisfy the written description requirement when the invention is claimed and described
`
`in functional language but the specification does not sufficiently identify how the
`
`invention achieves the claimed function. Ariad, 598 F.3d at 1349, 94 USPQ2d at 1171
`
`("[A]n adequate written description of a claimed genus requires more than a generic
`
`statement of an invention's boundaries.") (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d
`
`at 1405-06). In Ariad, the court recognized the problem of using functional claim
`
`TT0006784
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 16 of 23
`
`Application/Control Number: 15/346,780
`Art Unit: 3681
`
`Page 4
`
`language without providing in the specification examples of species that achieve the
`
`claimed function. The problem is especially acute with genus claims that use functional
`
`language to define the boundaries of a claimed genus. In such a case, the functional
`
`claim may simply claim a desired result, and may do so without describing species that
`
`achieve that result. But the specification must demonstrate that the applicant has made
`
`a generic invention that achieves the claimed result and do so by showing that the
`
`applicant has invented species sufficient to support a claim to the functionally-defined
`
`genus. Id. "This may include disclosure of the hardware and software required to
`
`perform a claimed function including the "necessary steps for implementing the claimed
`
`function" (e.g. an algorithm, description of steps, flowcharts, etc.-) (MPEP;
`
`2161.011.). "If the specification does not provide a disclosure of the computer and
`
`algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the
`
`inventor possessed the invention including how to program the disclosed computer to
`
`perform the claimed function, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.
`
`112, first paragraph, for lack of written description must be made." (MPEP; 2161.011.).
`
`8.
`
`Claim 1 recites computer-implemented functional claim language with the claim
`
`element "determining, by the server, using an artificial intelligence method, at least one
`
`digital media asset having an emotional impact on the user; determining, by the server,
`
`an emotional state of the user associated with the emotional impact, using the artificial
`
`intelligence method." The claim 1 is directed to specialized genus functions. In other
`
`words, the claim scope covers any and all ways of using an artificial intelligence method
`
`to determine at least one digital media asset having an emotional impact on the user
`
`and to determine an emotional state of the user associated with the emotional
`
`TT0006785
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 17 of 23
`
`Application/Control Number: 15/346,780
`Art Unit: 3681
`
`Page 5
`
`i mpact. However, the disclosure only provides adequate algorithm or step-by-step
`
`instructions for one way, using fuzzy logic, of using an artificial intelligence method to at
`
`least one digital media asset having an emotional impact on the user and to determine
`
`an emotional state of the user associated with the emotional impact. In other words, the
`
`disclosure adequately demonstrates possession only for only one actual solution (one
`
`species). The disclosure therefore fails to adequately demonstrate that the Applicant
`
`possessed any and all ways of using an artificial intelligence method to determine at
`
`least one digital media asset having an emotional impact on the user and to determine
`
`an emotional state of the user associated with the emotional impact. The claim(s)
`
`therefore contain/encompass subject matter which was not described in the
`
`specification in such a way as to reasonably convey to one skilled in the relevant art that
`
`the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application
`
`was filed, had possession of the claimed invention (e.g., other ways of using an artificial
`
`intelligence method to determine at least one digital media asset having an emotional
`
`i mpact on the user and to determine an emotional state of the user associated with the
`
`emotional impact.)
`
`9.
`
`Claims 2-7 depend directly or indirectly from claim 1 and are also rejected under
`
`35 U.S.C. §112(a) as failing to comply with the written description requirement based on
`
`such claim dependency.
`
`1 0. Claims 2 and 5 also recite "the artificial intelligence method" and are rejected for
`
`the similar reasons to claim 1.
`
`1 1. As to claims 2, and 7-20, the specification does not describe the invention in
`
`sufficient detail to enable one of ordinary skill in the art to recognize that the inventor
`
`TT0006786
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 18 of 23
`
`Application/Control Number: 15/346,780
`Art Unit: 3681
`
`Page 6
`
`invented what is claimed. The test for sufficiency is whether the disclosure of the
`
`application relied upon reasonably conveys to those skilled in the art that the inventor
`
`had possession of the claimed subject matter as of the filing date.
`
`1 2. Claim 2 recites, "wherein the artificial intelligence method is selected from a
`
`group consisting of machine learning and fuzzy logic." The specification does not
`
`mention any "machine learning" and does not provide any details of the kind of machine
`
`learning that is used. The specification does not describe in detail how the claimed
`
`elements are inferred or some of the components of the systems. A description that
`
`merely renders the invention obvious does not satisfy the requirement. See MPEP §
`
`2161.01- § 2163.07(b).
`
`1 3. Claim 7 recites, "wherein the video is a user generated video, song, slideshow,
`
`collage or digital media composition." The specification does not mention a video being
`
`a "slideshow" or a "collage". The specification does not describe in detail how the
`
`claimed elements are inferred or some of the components of the systems. A description
`
`that merely renders the invention obvious does not satisfy the requirement. See MPEP
`
`§ 2161.01- § 2163.07(b).
`
`1 4. Claims 8 and 15 recite "a server", "an artificial intelligence processor coupled to
`
`the server", "a media generator coupled to the server", an "a content server". The
`
`specification mentions only one server and shows only one server in figure 5A. So the
`
`specification only has support for a single server. Furthermore, the specification does
`
`not mention or provide any kind of detail for "an artificial intelligence processor coupled
`
`to the server" or "a media generator coupled to the server". The phrase "artificial
`
`intelligence" is mentioned once, in paragraph [0100] and that paragraph does not
`
`TT0006787
`
`

`

`Case 6:20-cv-00810-ADA Document 73-22 Filed 04/23/21 Page 19 of 23
`
`Application/Control Number: 15/346,780
`Art Unit: 3681
`
`Page 7
`
`mention "an artificial intelligence processor". Furthermore, the specification does not
`
`mention any kind of "processor" or "a media generator coupled to the server". The
`
`specification does not describe in detail how the claimed elements are infer

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket