Disney Enterprises, Inc.

Patent Trials and Appeals Board

Jun 2, 2021

2020000502 (P.T.A.B. Jun. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/635,563 03/02/2015 Nicola Ranieri P250021.US.01 8577
63658 7590 06/02/2021
Disney Enterprises, Inc.
c/o Dorsey & Whitney LLP
1400 Wewatta Street
Suite 400
Denver, CO 80202-5549
EXAMINER
DESIR, JEAN WICEL
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
Docketing-DV@dorsey.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICOLA RANIERI, MARKUS GROSS,
QUINN YORKLUN JEN SMITHWICK, and
HAGEN FRIEDRICH SEIFERT

Appeal 2020-000502
Application 14/635,563
Technology Center 2400

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5–25, and 27–33. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Disney Enterprises, Inc.” Appeal Br. 3.
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Application 14/635,563

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STATEMENT OF THE CASE
Appellant’s Claimed Invention
Appellant’s claimed invention “relates generally to projection
systems[] and specifically to a system for improving the spatial resolution of
projected images.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of
argued subject matter.
1. A projection system for projecting one or more images
onto a projection surface comprising
a light source that when activated generates a beam of light;
an image forming device in optical communication with the
light source, wherein the image forming device sequentially
converts the beam of light into a first sub-image, forming a first
part of a projection image and a second sub-image, forming a
second part of the projection image; and
an optical system in optical communication with the image
forming device, wherein the optical system directs the first
sub-image toward a first sub-image region of a projection
surface and directs the second sub-image toward the second
sub-image region spatially adjacent to the first sub-image
region of the projection surface, wherein the first sub-image and
the second sub-image are directed to the projection surface at a
first time and a second time, respectively, wherein the first time
and the second time do not overlap.
Appeal Br. 22 (Claims Appendix).
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Rejection
Claims 1, 3,2 5–25, and 27–33 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Bellis (US 2008/0088800 A1; Apr. 17, 2008) and
Watson (US 7,357,513 B2; Apr. 15, 2008). Non-Final Act. 2–8.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken and (2) the Examiner’s Answer in response to
Appellant’s Appeal Brief and concur with the conclusions reached by the
Examiner. We highlight the following for emphasis.
Claim 1
Claim 1 recites, in relevant part, first and second sub-images
respectively directed toward first and second sub-image regions of a
projection surface, “wherein the first sub-image and the second sub-image
are directed to the projection surface at a first time and a second time,
respectively, wherein the first time and the second time do not overlap.”
Appeal Br. at 22 (Claims Appendix).

2 Claim 3 depends from canceled claim 2. Appeal Br. 22. Should further
prosecution ensue, the Examiner might consider whether correction is
required.
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The Examiner finds Bellis discloses two temporally successive
subframes. Non-Final Act. 3; Ans. 9–10 (citing, inter alia, Bellis ¶¶ 7, 45,
46). Bellis discloses “subframe images are spatially offset by one-half pixel
width.” Bellis ¶ 46. The Examiner determines Bellis does not disclose
those subframes as temporally discrete, i.e., as entirely non-overlapping in
duration. Non-Final Act. 3; Ans. 10–11. The Examiner finds Watson
discloses spatially-adjacent, temporally discrete subframes. Id.; see, e.g.,
Watson Fig. 12A. The Examiner concludes, “the claimed invention would
have been obvious to a person of ordinary skill in the art before the effective
filing date of the claimed invention” because “the combination would
provide, inter alia, a projection system with improved spatial resolution of
projected images.” Non-Final Act. 4.
Appellant contends Watson does not disclose sub-images and Bellis
does not disclose displaying sub-images at discrete times. Appeal Br. 13–
17; Reply Br. 3–4. This argument is unpersuasive because Appellant argues
the teachings of the references in isolation, rather than considering their
combined teachings. A reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see
also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (explaining that when the
rejection is based on a combination of references, one cannot show
nonobviousness by attacking references individually). Thus, the relevant
inquiry is whether the claimed subject matter would have been obvious to
ordinarily skilled artisans in light of the combined teachings of the
references.
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Here, the Examiner relies primarily on Bellis, not Watson, for the
disclosure of sub-images (i.e., Bellis’s “sub-frames”) and Watson for
disclosing non-overlapping time periods to form a composite image. See
Non-Final Act. 3 (citing, inter alia, Bellis ¶ 7); Bellis ¶ 7 (“the image data
making up a high-resolution image are essentially divided into multiple
lower-resolution images, or subframes, which are displayed in rapid
succession to appear to the human eye as if projected simultaneously and
superimposed.”); Watson Fig. 12A.
Accordingly, we find unpersuasive Appellant’s argument that
spatially adjacent sub-images projected at non-overlapping times is not
taught by the combined teachings of the references.
We also find unpersuasive Appellant’s argument that Bellis cannot be
relied upon for an “image forming device sequentially convert[ing] the beam
of light into a first sub-image, forming a first part of the projection image
and a second sub-image, forming a second part of the projection image”
because, in Bellis, the subframe images are formed by two different image
forming devices whereas the claim requires the same image forming device
to sequentially form the sub-images. Appeal Br. 17. We find this argument
unpersuasive because the claim does not preclude an image forming device
having multiple light modulators as in Bellis. See, e.g., Bellis Fig. 3A.
Appellant additionally argues that “[c]ombining Watson with the
Bellis system, would result merely in the substitution of the Bellis ‘color
wheel’ that already uses spatial light modulation, with the colored laser array
of Watson.” Appeal Br. 16. This argument is unpersuasive because it
presumes a bodily incorporation of Wilson’s syste and Bellis’s systems. See
Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features
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of a secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”);
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Further, Appellant has not asserted that the proposed modification
would have been beyond the capabilities of a person of ordinary skill in the
art. Absent such an assertion, we “take account of the inferences and
creative steps that a person of ordinary skill in the art would employ,” and
find a person of ordinary skill in the art would overcome those difficulties
within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007); see also id. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
In view of the foregoing, we are unpersuaded of error in the rejection
of claim 1.
The Remaining Claims
For the reasons stated by the Examiner, Appellant’s additional
arguments do not persuade us of reversible error. We adopt the Examiner’s
findings and conclusion that claims 3, 5–25, and 27–33 are not patentable.
Non-Final Act. 2–8; Ans. 9–14.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Ba
sis
Affirmed Reversed
1, 3, 5, 25,
27–33 103 Bellis, Watson
1, 3, 5, 25,
27–33

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED