Ex Parte Bean et al

Patent Trial and Appeal Board

Nov 30, 2018

14824451 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/824,451 08/12/2015
11445 7590 12/04/2018
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
FIRST NAMED INVENTOR
Chris R. Bean
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GB920150080US 1 5357
EXAMINER
BRIER, JEFFERY A
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS R. BEAN, SOPHIE D. GREEN, STEPHEN R.F. HEAD,
and MADELEINE R. NEIL SMITH
Appeal 2018-003672
Application 14/824,451
Technology Center 2600
Before MARC S. HOFF, ERIC S. FRAHM, and JOHN A. EV ANS,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of Claims 1--4, 6-11, 13-18, and 202 all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 3
1 Appellants state the real party in interest is International Business
Machines Corporation. Br. 2.
2 The present application, filed on or after March 16, 2013, is being
examined under the first inventor to file provisions of the AIA. Final Act. 2.
3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed October 12, 2017, "App. Br."), the
Examiner's Answer (mailed December 12, 2017, "Ans."), the Final Action
(mailed May 15, 2017, "Final Act."), and the Specification (filed March 8,
Appeal 2018-003672
Application 14/824,451
STATEMENT OF THE CASE
The claims relate to methods, systems, and computer programs for
nesting augmented reality markers within augmented reality overlays to
create nested menu options in augmented reality applications. See Abstract.
INVENTION
Claims 1, 8, and 15 are independent. An understanding of the
invention can be derived from a reading of claim 1, which is reproduced
below with some formatting added:
1. A method comprising:
receiving, by one or more processors, an input image,
that includes an element, from an augmented reality input
buffer, wherein the input buffer is a digital representation of
information, including the element, taken from a camera;
receiving, by one or more processors, an output image
from an augmented reality output buffer, wherein:
the output buff er comprises an overlay; and
the overlay comprises information about the
element;
scanning, by one or more processors, the output buffer
image for one or more markers, wherein the one or more
markers are associated with one or more marker
overlays;
receiving, by one or more processors, a first user input,
wherein the first user input indicates a user selection of a
first marker of the one or more markers; and
displaying, by one or more processors, a first marker
overlay, wherein the first marker overlay:
2017, "Spec.") for their respective details.
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Appeal 2018-003672
Application 14/824,451
is associated with the first marker; and
includes additional information about the element.
Reference and Rejections4
1. Claims 1--4, 6-11, 13-18, and 20 stand rejected under 35
U.S.C. § 112(a), as failing to comply with the written description
requirement. Final Act. 6-7.
2. Claims 1--4, 6-11, 13-18, and 20 stand rejected under 35
U.S.C. § I02(a)(l), as anticipated by Ballard (US 2005/0153913 Al;
June 4, 2015). Final Act. 7-13.
ANALYSIS
We have reviewed the rejection of Claims 1--4, 6-11, 13-18, and 20
in light of Appellants' arguments that the Examiner erred.
CLAIMS 1--4, 6-11, 13-18, AND 20: WRITTEN DESCRIPTION. 5
Independent Claims 1, 8, and 15 recite, inter alia, "the overlay
comprises information about the [environmental] element." The Examiner
finds the claimed overlay does not have information about the environmental
element, but rather the overlay has "markers." Final Act. 6-7 ( citing Spec.,
,r,r 2, and 21-30).
4 Claims 1--4, 6, and 7 stand as objected to in view of various informalities.
The Board lacks jurisdiction over claim objections. We, therefore, decline
to reach the merits thereof.
5 For purposes of claim interpretation, the Examiner finds the claims do not
invoke 35 U.S.C. § 112(±). Final Act. 5.
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Appeal 2018-003672
Application 14/824,451
Appellants quote from independent Claim 1: "receiving ... an input
image, that includes an element, from an augmented reality input buffer,
wherein the input buffer is a digital representation of information, including
the element, taken from a camera." Br. 13. Appellants quote from their
Specification:
[ t ]he AR input buffer is the digital representation of the
information taken from the device's camera.
Br. 13-14 (quoting Spec., ,r 22).
[i]n some embodiments, the input buffer contains an element of
an image associated with one or more markers.
Br. 14 ( quoting Spec., ,r 22).
[ f]or example, where a user views a landmark, a marker
associated with the landmark provides a menu.
Br. 14 ( quoting Spec., ,r 11 ). Appellants argue that in the example
described, the "element" would be, for example, the "landmark."
The Examiner finds Appellant's written description conveys that in
response to its selection, a marker overlay displays "additional information
about the element," but does not convey the claimed marker overlay
displaying "additional information about the element" nor does it convey
scanning an overlay having information since a marker overlay is displayed
for selection of a marker by a user for selecting information about the
element. Ans. 16. Thus, Appellants' written description fails to
convey the sense that the AR marker overlay displays "additional
information about the element," as claimed. Id.
Appellants disclose:
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Appeal 2018-003672
Application 14/824,451
Augmented reality (AR) displays enable a user to merge real
world experience with a virtual world via a visual overlay to
supplement what the user views. Connection to various
databases, via a computer network, allows AR displays to add
information to the user's view through an overlay. For example,
if a user's view includes a landmark, the AR overlay may
provide historical facts, visitor center information, etc.
Spec., ,r 10.
Id.
Id.
AR overlays are produced based on markers associated with
physical indicators in the real world. In some embodiments, the
marker is a computer generated user interface element shown in
the AR display.
Generally, information associated with a marker is displayed on
the AR display when a user interacts with the marker (e.g., the
user focuses on the marker for a predetermined time).
We find that the disclosure fairly provides written description support
for the claim that in response to its selection, a marker overlay displays
"additional information about the element." Therefore, we decline to sustain
the rejection of Claims 1--4, 6-11, 13-18, and 20 as lacking written
description support under § 112.
CLAIMS 1--4, 6-11, 13-18, AND 20: ANTICIPATION BY BALLARD.
Claim 1 recites, inter alia,:
receiving, by one or more processors, an input image, that
includes an element, from an augmented reality input buffer,
wherein the input buffer is a digital representation of
information, including the element, taken from a camera.
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Appeal 2018-003672
Application 14/824,451
The Examiner finds: the claimed "input image, that includes an
element" and "wherein the input buffer is a digital representation of
information, including the element" are conditional limitations. Final Act. 8.
The Examiner finds the claimed "element" need not be found in Ballard
because a conditional method step need not be present in the prior art. Id. at
7 ( citing Ex parte Schulhauser6 and Ex parte Gibbings 7). The Examiner
finds the claim limitations are conditional on the effect that Ballard's nested
markers has on the display of the claimed "additional information about the
element." Ans. 11.
Appellants contend that no claimed limitation is conditional, under Ex
parte Schulhauser, and therefore, the Examiner erred first, in considering
any limitation to be conditional; and second, in failing to identify art for
such claim elements found to be conditional. Br. 8.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. Ex parte Schulhauser, slip
op. 5 (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) ("Construing claims broadly during prosecution is not unfair to
the applicant ... because the applicant has the opportunity to amend the
claims to obtain more precise claim coverage").
The Board found Claim 1 of Schulhauser to be directed to a method
that included several steps that only had to be performed if certain conditions
precedent were met. Schulhauser, slip op. 6 ("Due to the language in the
'triggering' and 'determining' steps, logically, the 'triggering' and
6 Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016)
(precedential).
7 Ex parte Gibbings, Appeal 2015-004458 (PTAB Dec. 8, 2016).
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Application 14/824,451
'determining' steps do not need to be performed, after the 'comparing' step
if the condition precedent recited in each step is not met"). More
specifically, the Board found "the 'triggering' and 'determining' steps of this
claim are mutually exclusive. If the electrocardiac signal data is not within
the threshold electrocardiac criteria, then an alarm is triggered and the
remaining method steps need not be performed." Id.
We disagree with the Examiner. Claim 1 is a method, one step of
which recites "receiving, by one or more processors, an input image, that
includes an element, from an augmented reality input buffer." The claim
recites mixed method and apparatus language wherein functional language is
used to describe the structure in which the method is used. See
A1icroprocessor Enhancement Corp. v. Texas Jnstrurnents lnc., 520 F.3d
1367, 1374----5 (Fed. Cir. 2008) (finding a claim of mixed method and
apparatus language definite where functional language was used to describe
the structure in which a method was used).
Here, the claims recite a method set within an apparatus "an input
image" described using functional language "that includes an element." In
re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006). Applicant may use
functional language, alternative expressions, negative limitations, or any
style of expression or format of claim which makes clear the boundaries of
the subject matter for which protection is sought. Because the claimed
"element" was not found in the prior art Ballard (see Final Act. 7), we are
constrained to reverse the rejection of Claims 1--4, 6-11, 13-18, and 20
under§ 102.
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Appeal 2018-003672
Application 14/824,451
DECISION
The rejection of Claims 1--4, 6-11, 13-18, and 20 under 35 U.S.C. §
112 is REVERSED.
The rejection of Claims 1--4, 6-11, 13-18, and 20 under 35 U.S.C. §
102 is REVERSED.
REVERSED
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