Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 1 of 31
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`EXHIBIT K
`(Part 1 of 5)
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 2 of 31
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`Docket No: 127072.00121
`
`PATENT
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`Applicant:
`Serial No.:
`Filing Date:
`Brady
`
`David J. Russek
`14/506,822
`October 6, 2014
`
`Confirmation No.:
`Group Art Unit:
`Examiner:
`
`5275
`3681
`Marie P.
`
`RESPONSE SUBMITTED WITH REQUEST FOR CONTINUED
`EXAMINATION
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Madam:
`
`In response to the Final Office Action dated July 31, 2018, Applicant
`
`submits herewith a Request for Continued Examination. Also submitted herewith
`
`is the Power of Attorney of Applicant, 10Tales, Inc.
`
`Amendments to the Claims begin on page 2 of this paper.
`
`Remarks/Arguments begin on page 6 of this paper.
`
`Please consider this response and amendments pursuant to 37 CFR 1.116.
`
`1
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`TT0006117
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 3 of 31
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`Docket No: 127072.00121
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`PATENT
`
`Amendments to the Claims
`
`1 - 30 (Cancelled)
`
`31. (New) A digital media narrative asset generation system for improving a
`
`user's mood, comprising:
`
`a server configured to store a user profile, an original content asset, and a
`
`plurality of digital media assets, and
`
`a user device communicatively coupled to the server, the user device configured
`
`to transmit a self-narrative media asset to the server, wherein the self-narrative media
`
`asset is provided by the user;
`
`wherein the server is configured to analyze the self-narrative media asset
`
`to detei wine the user's personality state,
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`the server further configured to select a digital media asset that enhances
`
`the user's personality state by comparing the user's personality state to
`
`characteristics of the plurality of digital media assets in a database;
`
`the server further configured to insert the digital media asset into the
`
`original content asset to create a narrative content asset without destroying the
`
`integrity of the original content asset.
`
`32. (New) The system of Claim 31, wherein the narrative content asset is
`
`configured to change the user's personality state.
`
`33. (New) The system of Claim 31, wherein the self-narrative media asset is
`
`an image or a video of the user.
`
`34. (New) The system of Claim 31, wherein the self-narrative media asset is
`
`an image or video uploaded to the user device by the user.
`
`2
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`TT0006118
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 4 of 31
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`Docket No: 127072.00121
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`PATENT
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`35. (New) The system of Claim 31, where the user's personality state is
`
`selected from a group consisting of the user's current mood, cognitive state, and
`
`emotional state.
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`36. (New) The system of Claim 31, wherein the digital media asset is an
`
`advertisement.
`
`37. (New) The system of Claim 31, wherein the digital media asset is an
`
`image or a video.
`
`38. (New) A personalized advertisement generation system, comprising:
`
`a server configured to store a user profile, an original content asset, and a
`
`plurality of advertisements; and
`
`a user device communicatively coupled to the server, the user device
`
`configured to transmit a user asset to the server, wherein the user asset is an image
`
`or video of the user,
`
`wherein the server is configured to analyze the user asset to determine a
`
`user's mood,
`
`the server further configured to select an advertisement that enhances the
`
`user's mood by comparing the user's mood to characteristics of the plurality of
`
`advertisements in a database;
`
`the server further configured to insert the advertisement into the original
`
`content asset to create a personalized content asset without destroying the
`
`integrity of the original content asset.
`
`39. (New) The system of Claim 38, wherein the advertisement is an image or
`
`a video.
`
`3
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`TT0006119
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 5 of 31
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`Docket No: 127072.00121
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`PATENT
`
`40. (New) The system of Claim 38, wherein the database includes a look-up
`
`table.
`
`41. (New) The system of Claim 38, wherein the server is further configured to
`
`select the advertisement based on the user profile.
`
`42. (New) The system of Claim 41, wherein the user profile includes a stored
`
`or calculated profile that includes at least one of the user's demographics,
`
`psychodemographics, and attributes.
`
`43. (New) A digital media narrative asset generation system to personalize a
`
`user's viewing experience, comprising:
`
`a server configured to store a user profile, an original content asset, and a
`
`plurality of digital media assets, and
`
`a user device communicatively coupled to the server, the user device
`
`configured to transmit a self-narrative media asset to the server, wherein the self-
`
`narrative media asset is provided by the user,
`
`wherein the server is configured to analyze the self-narrative media asset
`
`to determine at least one of the user's psychological state, wherein the
`
`psychological state includes at least one of a cognitive state and an emotional
`
`state,
`
`the server further configured to select a digital media asset that enhances
`
`the user's psychological state;
`
`the server further configured to insert the digital media asset into the
`
`original content asset to create a narrative content asset without destroying the
`
`integrity of the original content asset.
`
`4
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`TT0006120
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 6 of 31
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`Docket No: 127072.00121
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`PATENT
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`44. (New) The system of Claim 43, wherein the narrative content asset is
`
`configured to change the user's psychological state.
`
`45. (New) The system of Claim 43, wherein the self-narrative media asset is
`
`an image or a video of the user.
`
`46. (New) The system of Claim 43, wherein the self-narrative media asset is
`
`an image or video uploaded to the user device by the user.
`
`47. (New) The system of Claim 43, wherein the digital media asset is an
`
`advertisement.
`
`48. (New) The system of Claim 43, wherein the digital media asset is an
`
`image or a video.
`
`49. (New) The system of Claim 43, wherein the server is further configured to
`
`transmit the narrative content to a second user that is socially connected with the
`
`user.
`
`50. (New) The system of Claim 43, wherein the server is further configured to
`
`select the digital media asset based on the user profile.
`
`5
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`TT0006121
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 7 of 31
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`Docket No: 127072.00121
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`PATENT
`
`Remarks/Arguments
`
`Claims 1-30 have been cancelled.
`
`Support
`Support for newly added independent Claim 31 can be found in the Specification
`
`as follows:
`
`a server configured to store a user profile, an original content asset,
`and a plurality of digital media assets; and (Paras. 0081, 0082 & Fig. 5).
`
`a user device communicatively coupled to the server, the user
`device configured to transmit a self-narrative media asset to the server,
`wherein the self-narrative media asset is provided by the user; (Paras.
`0058 & 0123)
`
`wherein the server is configured to analyze the self-narrative media
`asset to determine the user's personality state, (Paras. 0058 & 0059)
`
`the server further configured to select a digital media asset that
`enhances the user's personality state by comparing the user's personality
`state to characteristics of the plurality of digital media assets in a database;
`(Paras. 0112, 0113 & 0119)
`
`the server further configured to insert the digital media asset into
`the original content asset to create a narrative content asset without
`destroying the integrity of the original content asset. (Para. 0119)
`
`Support for newly added independent Claim 38 can be found in the Specification
`
`as follows:
`
`A personalized advertisement generation system, comprising:
`
`a server configured to store a user profile, an original content asset,
`and a plurality of advertisements; and (Paras. 0081, 0082 & Fig. 5).
`
`a user device communicatively coupled to the server, the user
`device configured to transmit a user asset to the server, wherein the user
`asset is an image or video of the user; (Paras. 0058 & 0123)
`
`wherein the server is configured to analyze the user asset to
`determine a user's mood, (Paras. 0006, 0079, 0112, 0113 & 0119)
`
`the server further configured to select an advertisement that
`enhances the user's mood by comparing the user's mood to characteristics
`of the plurality of advertisements in a database; (Para. 0078 & 0111)
`
`the server further configured to insert the advertisement into the
`original content asset to create a personalized content asset without
`destroying the integrity of the original content asset. (Para. 0078, 0111 &
`0119)
`
`6
`
`TT0006122
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 8 of 31
`
`Docket No: 127072.00121
`
`PATENT
`
`Support for newly added independent Claim 43 can be found in the Specification
`
`as follows:
`
`A digital media narrative asset generation system to personalize a
`user's viewing experience, comprising:
`
`a server configured to store a user profile, an original content asset,
`and a plurality of digital media assets; and (Paras. 0081, 0082 & Fig. 5).
`
`a user device communicatively coupled to the server, the user
`device configured to transmit a self-narrative media asset to the server,
`wherein the self-narrative media asset is provided by the user; (Paras.
`0058 & 0123)
`
`wherein the server is configured to analyze the self-narrative media
`asset to determine at least one of the user's psychological state, wherein
`the psychological state includes at least one of a cognitive state and an
`emotional state, (Paras. 0073 & 0077)
`
`the server further configured to select a digital media asset that
`enhances the user's psychological state; (Paras. 0112, 0113 & 0119)
`
`the server further configured to insert the digital media asset into
`the original content asset to create a narrative content asset without
`destroying the integrity of the original content asset. (Para. 0119)
`
`Regarding any potential subject matter eligibility issues under 35 U.S.C. § 101,
`
`Applicant emphasizes that the new claim limitations directed towards creating "a
`
`narrative content asset without destroying the integrity of the original content asset"
`
`(Claims 31 and 43) and creating "a personalized content asset without destroying the
`
`integrity of the original content asset" (Claim 38) are improvements over conventional
`
`activity previously known in the video production and entertainment industries.
`
`Applicant's claimed invention allows an original content asset, such as a movie feed, to
`
`be dynamically modified based on the viewer/user's psychological state. The
`
`Specification states:
`
`The DMA action may include changing any aspect of the digital media
`narrative that enhances the experience without destroying the
`integrity of the narrative experience. The action may include time
`sensitive changes, such as the changing of events, the playback speed, the
`timing of playback or the sequence of events such as changing the
`orientation of "scenes." The action may include changing the audio
`including the volume of playback, the score (i.e., the background music),
`the language spoken or even the accent of the speaker. The action may
`
`7
`
`TT0006123
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`

`

`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 9 of 31
`
`Docket No: 127072.00121
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`PATENT
`
`include changing the video aspect such as the gender, race or age of a
`character, the background scenery, the elements of the episode (e.g., a
`motorcycle, bicycle or horse is ridden), the color of clothing worn, an
`overcast or sunny sky, or any other visual aspect of the DMA. (Para.
`0119).
`
`Prior art system that attempted to personalize a video or multimedia feed
`
`inherently modified the original content, so that a plotline of the story would be changed,
`
`or an illogical character or element would be introduced into the feed. In contrast,
`
`Applicant's invention modifies the feed such that the original integrity (i.e.,
`
`storyline, plotline, characters, and theme) are not changed. Rather, such
`
`modifications appear logical (such as advertisements that are product placements, video
`
`that augments the plot, etc.). Further, such changes are based on enhancing the user's
`
`psychological state, such as their cognitive state, emotional state, social state, or their
`
`mood.
`
`In Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir.
`
`2018), the Federal Circuit reversed a judgment on the pleadings of ineligibility, finding
`
`that whether the claims in the challenged patent perform well-understood, routine,
`
`conventional activities is an issue of fact. Further, in Berkheimer V. HP Inc., 881F.3d1360
`
`(Fed. Cir. 2018), the Federal Circuit "drew a distinction between what is well-understood,
`
`routine, conventional, and what is simply known in the prior art, cautioning that the mere
`
`fact that something is disclosed in a piece of prior art does not mean it was a well-
`
`understood, routine, conventional activity or element." See ILLS'PTO Memorandum Re:
`
`Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent
`
`Subject Matter Eligibility Decision (Berkheimer V. HP, Inc.), April 19, 2018.
`
`8
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`TT0006124
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`

`

`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 10 of 31
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`Docket No: 127072.00121
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`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, Esq.
`Reg. # 56, 587
`350 5th Avenue, 59th Fl.
`New York, NY 10118
`(310) 499-8624 (phone)
`(646) 200-5227 (fax)
`September 27, 2018
`
`9
`
`TT0006125
`
`

`

`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 11 of 31
`
`PTOISB/06 (09-11)
`Approved for use through 1/31/2014. OMB 0651-0032
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`Application or Docket Number
`Filing Date
`PATENT APPLICATION FEE DETERMINATION RECORD
`1 4/506,822
`Substitute for Form PTO-875
`
`0 To be Mailed
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`1 0/06/2014 I
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`APPLICATION AS FILED — PART I
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`(Column 1)
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`(Column 2)
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`ENTITY:
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`LARGE
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`SMALL
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`FOR
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`N UMBER FILED
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`NUMBER EXTRA
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`(37 CFR 1.16(a), (b), or (co)
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`O EXAMINATION FEE
`(37 CFR 1.16(o), (p), or (q))
`TOTAL CLAIMS
`(37 CFR 1.16(i))
`I NDEPENDENT CLAIMS
`(37 CFR 1.16(h))
`
`0APPLICATION SIZE FEE
`(37 CFR 1.16(5))
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`N/A
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`N/A
`
`N/A
`
`N/A
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`N/A
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`N/A
`
`minus 20 =
`
`minus 3 =
`
`N/A
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`N/A
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`N/A
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`X$
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`X S
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`If the specification and drawings exceed 100 sheets
`of paper, the application size fee due is $310 ($155
`for small entity) for each additional 50 sheets or
`fraction thereof. See 35 U.S.C. 41(a)(1)(G) and 37
`CFR 1.16(s).
`
`0 MULTIPLE DEPENDENT CLAIM PRESENT (37 CFR 1.16(j))
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`* If the difference in column 1 is less than zero, enter "0" in column 2.
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`TOTAL
`
`APPLICATION AS AMENDED — PART II
`
`(Column 1)
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`(Column 2)
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`(Column 3)
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`PRESENT EXTRA
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`RATE ($)
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`ADDITIONAL FEE ($)
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`=0
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`x s230=
`
`09/27/2018
`
`Total (37 CFR
`1.160))
`Independent
`(37 CFR 1.16(h))
`
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`20
`
`HIGHEST
`N UMBER
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`PAID FOR
`Minus "23
`
`3
`
`Minus
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`0 Application Size Fee (37 CFR 1 .16(s))
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`AMENDMENT
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`E1 FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR 1.16())
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`TOTAL ADD'L FEE
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`85,7•4
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`X s
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`X $
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`LIE
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`CLAIMS
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`AMENDMENT
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`1.16(i))
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`If the entry in column 1 is less than the entry in column 2, write "0" in column 3.
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`If the "Highest Number Previously Paid For" IN THIS SPACE is less than 20, enter "20".
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`*** If the "Highest Number Previously Paid For" IN THIS SPACE is less than 3, enter "3".
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`The "Highest Number Previously Paid For" (Total or Independent) is the highest number found in the appropriate box in column 1.
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`This collection of information is required by 37 CFR 1.16. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete, including gathering.
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`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2
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`TT0006126
`
`

`

`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 12 of 31
`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.
`
`14/506,822
`
`10/06/2014
`
`David J. RUSSEK
`
`127072.00121
`
`5275
`
`21269
`
`7590
`
`PEPPER HAMILTON LLP
`500 GRANT STREET
`SUITE 5000
`PITTSBURGH, PENNSYLVANIA 15219-2507
`UNITED STATES OF AMERICA
`
`07/31/2018
`
`EXAMINER
`
`BRADY, MARIE P.
`
`ART UNIT
`
`PAPER NUMBER
`
`3681
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/31/2018
`
`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):
`
`docketingpgh@pepperlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`TT0006127
`
`

`

`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 13 of 31
`Application No.
`Applicant(s)
`14/506,822
`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 6/1/18.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`2a)0 This action is FINAL.
`2b) 0 This action is non-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) 0 Claim(s) 8-30 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) 8-30 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
`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
`12)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 20180725
`
`TT0006128
`
`

`

`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 14 of 31
`
`Application/Control Number: 14/506,822
`Art Unit: 3681
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Response to Amendment
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`2.
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`The following is a Final Office Action in response to preliminary amendments
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`received on 6/1/18. Claims 1-7 were previously cancelled. Claims 8-14, 16-19, and 21-
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`30 have been amended. Therefore, claims 8-30 are pending and addressed below.
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`Claim Rejections -35 USC § 112
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`3.
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`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`(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.
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`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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`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.
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`4.
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`Claims 8-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
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`paragraph, as failing to comply with the written description requirement. The claim(s)
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`contains subject matter which was not described in the specification in such a way as to
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`reasonably convey to one skilled in the relevant art that the inventor or a joint inventor,
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`or for pre-AIA the inventor(s), at the time the application was filed, had possession of
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`the claimed invention.
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`TT0006129
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 15 of 31
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`Application/Control Number: 14/506,822
`Art Unit: 3681
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`Page 3
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`5.
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`As to claim 8, the specification does not describe the invention in sufficient detail
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`to enable one of ordinary skill in the art to recognize that the inventor invented what is
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`claimed. The test for sufficiency is whether the disclosure of the application relied upon
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`reasonably conveys to those skilled in the art that the inventor had possession of the
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`claimed subject matter as of the filing date. Claim 8 recites, "wherein the first portion is
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`selected to increase engagement of the at least one user." The specification does not
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`discuss any kind of user engagement with a first portion or increasing the user
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`engagement based on the first portion. The specification also does not explain how the
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`user engagement is determined. Therefore, the specification does not describe in detail
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`how the claimed elements are inferred. A description that merely renders the invention
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`obvious does not satisfy the requirement. See MPEP § 2161.01- § 2163.07(b).
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`6.
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`Claims 9-21 depend directly or indirectly from independent claim 8 and are also
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`rejected under 35 U.S.C. §112(a) as failing to comply with the written description
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`requirement based on such claim dependency.
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`7.
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`The following is a quotation of 35 U.S.C. 112(b):
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`(b) CONCLUSION.—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
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`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
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`8.
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`Claims 8-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`TT0006130
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 16 of 31
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`Application/Control Number: 14/506,822
`Art Unit: 3681
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`Page 4
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention.
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`9.
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`Claim 8 recites, "wherein the first portion is selected to increase engagement of
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`the at least one user." It is unclear what is meant by "increasing engagement". It is
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`unclear what the metes and bounds are. How is the engagement determined? To what
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`is it being compared in order to determine that the engagement is "increasing"?
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`Therefore claim 8 is indefinite.
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`1 0. Claims 9-21 depend on claim 8 and are also rejected because of their
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`dependencies on claim 8.
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`1 1.
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`Claim 16 recites, "wherein the one or more instructions for determining at least
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`one of the plurality of second digital media assets to insert the determined first portion of
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`the second plurality of digital media assets into the first composite digital media
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`stream..." Claim 16 depends on claim 8 and claim 8 recites, "select, based on the user
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`information, a first portion of the second plurality of digital media assets to insert into the
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`first composite digital media stream". So claim 8 is selecting a first portion of the
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`second plurality of digital media assets" not determining. Therefore claim 16 is not
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`further limiting claim 8 and is indefinite.
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`Claim Rejections -35 USC § 101
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`1 2. 35 U.S.C. 101 reads as follows:
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`W hoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
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`TT0006131
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 17 of 31
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`Application/Control Number: 14/506,822
`Art Unit: 3681
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`Page 5
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`1 3. Claims 8-30 are rejected under 35 U.S.C. 101 because the claimed invention is
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`directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an
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`abstract idea) without significantly more. The independent claims (8 and 22) are
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`directed to a system (claim 8), and a method (claim 22). Thus, on its face, each
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`independent claim is directed to a statutory category of invention. However, each of the
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`independent claims is directed to an abstract idea, as explained in detail below. The
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`claims do not include additional elements that are sufficient to amount to significantly
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`more than the judicial exception because the additional computer elements, which are
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`recited at a high level of generality, provide conventional computer functions that do not
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`add meaningful limits to practicing the abstract idea.
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`14.
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`Claim 22 recites. in Dart. identifying a first plurality of digital media assets
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`ill
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`creating a first composite digital media stream including at least a portion of the first
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`plurality of digital media assets; retrieving user information for the at least one user, the
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`user information containing one or more user attributes for the at least one user;
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`wherein the one or more attributes comprises an internal narrative traits preference
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`topology; selecting a second plurality of digital media assets, wherein at least a portion
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`of the second plurality of digital media assets is associated with one or more user
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`attributes found in the user information; determining at least a first portion of the second
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`plurality of digital media assets to insert into the first composite digital media stream;
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`creating a user-specific composite digital media stream by inserting the determined first
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`portion of the second plurality of digital media assets into the first composite digital
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`media stream; and transmitting the user-specific composite digital media stream to the
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`at least one user. This is directed to the abstract idea of determining at least a first
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`TT00061 32
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 18 of 31
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`Application/Control Number: 14/506,822
`Art Unit: 3681
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`Page 6
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`portion of the second plurality of digital media assets to insert into the first composite
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`digital media stream and creating a user-specific composite digital media stream. This
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`is analogous to "customizing information based on ... information known about the)
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`user", which has been held to be an idea 'of itself" (see Affinity Labs of Texas, LLC vs.
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`A mazon.com Inc. (Fed. Cir. 2016, #2015-2080), slip. op. at p. 10 discussing Intellectual
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`Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)),
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`since the composite digital media stream is customize by the one or more usei
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`attributes found in the user information This is also analogous to "collecting
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`information, analyzing it, and displaying certain results of the collection and analysis",
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`which has been held to also be an idea 'of itself" see Electric Power Group), since first
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`plurality of digital media assets and second plurality of digital media assets are
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`identified, the second plurality of digital media assets are analyzed to determine if they
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`are associated with one or more user attributes, and the user-specific composite digital
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`media is transmitted to the user.
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`1 5.
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`Claim 8 recites, in part, identify a first plurality of digital media assets, create a
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`first composite digital media stream including at least a portion of the first plurality of
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`digital media assets, retrieve user information for the at least one user, the user
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`information containing one or more user attributes for the at least one user, wherein the
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`one or more attributes comprise an internal narrative traits preference topology, select
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`a second plurality of digital media assets, wherein at least a portion of the second
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`plurality of digital media assets is associated with one or more user attributes found in
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`the user information, select, based on the user information, at least a first portion of the
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`second plurality of digital media assets to insert into the first composite digital media
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`TT0006133
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`

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`Case 6:20-cv-00810-ADA Document 73-24 Filed 04/23/21 Page 19 of 31
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`Application/Control Number: 14/506,822
`Art Unit: 3681
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`Page 7
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`stream, wherein the first portion is selected to increase engagement of the at least one
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`user, create a user-specific composite digital media stream by inserting the determined
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`first portion of the second plurality of digital media assets into the first composite digital
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`media stream, and transmit the user-specific composite digital media stream to the at
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`least one user. This is directed to the abstract idea of selecting a first portion of the
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`second plurality of digi