Disney engineers are actively pursuing AI-based inventions. In this post, we review an invention for a tool that can automatically annotate actions in videos to better enable other actions, such as AI-based learning of activities in video (15/202,471). The approach uses attention weights of media content frames for determining the actions depicted in the media. Claim 1 on appeal is below. Of importance on appeal is the limitation that the system determines, for each frame of a segment, an object attention weight, a scene attention weight, and an action attention weight based on segment data extracted from the segment and the frame data extracted from the frame.
The Rejection relied on a prior art reference (Jain) that was only prior art through its provisional filing. The examiner relied on disclosure in the later-filed non-provisional application. Disney pointed out that the cited paragraphs being relied on by the examiner, were no present in the provisional filing. As such, the rejection could only rely on the later-filed non-provisional, which was not prior art.
Surprisingly, this issue went up on appeal, despite two SPEs allegedly reviewing the appeal. The Examiner’s Answer set forth several dubious reasons for maintaining the rejection and forcing Disney to appeal.
The examiners repeatedly referred to disclosure in the later-filed non-provisional reference, which was admittedly only valid prior through its priority claim. Further, the examiners also relied on a figure in the later-filed non-provisional application that was also missing from the provisional. Despite Disney’s repeated requests for the Office to cite to support in the provisional application, the examiner simply refused. Rather, the examiners argued that it was simply “not possible” to provide such a comparison because the provisional was a different document than the later-filed non-provisional application. However, this reasoning appears to have no basis in fact or reality.
Further, the examiners continued to maintain the rejection based on other fundamental misunderstandings of patent law. Specifically, the examiners argued that Disney’s arguments attacking the lack of disclosure in the priovisional application was ineffective because the claims did not require the elements that they argued were missing in the provisional. But the problem was that Disney was not arguing that the claims required certain features. Rather, Disney was pointing out the differences between the disclosure of the provisional and the disclosure cited by the examiner in the later-filed non-provisional. Disney’s appeal brief points this out quite well:
The examiners’ last argument (recognizing implicitly the weakness of the rejection) was that the provisional somehow implicitly supported the missing features because the application was entitled to claim priority. However, the Office essentially had to “interpret” the provisional application using the later-filed non-provisional application.
The PTAB easily reversed the rejection (some internal citations omitted):
Here, for Jain to be considered as having been effectively filed on the date Jain Provisional was filed—for purposes of teaching or suggesting the disputed recitations of claim 1—Jain Provisional must describe (providing written description and enablement support for) the subject matter of the disputed recitations. MPEP § 2151. Therefore, we agree with Appellant that the Examiner’s rejection of claim 1 is in error, because Jain was filed after the present application and, although Jain claims priority to Jain Provisional, no mapping of the highlighted portions of Jain’s paragraph 76, or paragraph 58, to the disclosure of its underlying provisional application appears in the Office Action.
In other words, the Examiner’s findings fail to show that the subject matter of Jain pertinent to the disputed recitations has written description and enablement support in Jain Provisional. As such, Jain Provisional does not provide § 112 written description support for paragraph 76 of the Jain reference. Additionally, the Examiner’s determination that Jain is effectively filed as of the filing date of an earlier provisional application because the missing disclosure is “implied,” is based on speculation and insufficient to establish that Jain “is entitled” to claim priority to that provisional application. Thus, the Examiner has not shown that Jain is properly considered prior art to the instant application.
So, do not let an examiner skirt the requirements of showing that support for the material (relied on in the later-filed application used to reject the claims) is found in the earlier-filed priority application. Rather, put them to their proofs.