Ex Parte Canora et al

Patent Trial and Appeal Board

Oct 27, 2016

13158887 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/158,887 06/13/2011
63649 7590 10/31/2016
DISNEY ENTERPRISES, INC
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
David Canara
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.
0260359 1351
EXAMINER
TUNG,KEEM
ART UNIT PAPER NUMBER
2611
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CANORA and ROBERT A. SWIRSKY
Appeal2015-007807
Application 13/158,887
Technology Center 2600
Before ALLEN R. MacDONALD, MICHAEL M. BARRY and
JOHN R. KENNY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-007807
Application 13/158,887
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5 and 7-24. Final Act. 1. Claim 6 has been cancelled. App. Br.
14. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A system for adding a creative element to media, the
system comprising:
a memory;
a processor;
a media file, stored in the memory, having content and
metadata associated with the content;
logic for analyzing the content to determine a presence of
a marker, a unique identifier, and at least one of a lighting
characteristic and a shadow characteristic associated with the
content;
a creative element store configured to store, in the
memory, a plurality of creative elements;
a creative element addition module, for execution by the
processor, configured to determine, using the metadata, the
marker, and the unique identifier associated with the content,
which ones of the plurality of creative elements are to be
added to the content;
a rendering engine, for execution by the processor,
configured to develop a three dimensional rendering of the ones
of the plurality of creative elements to be added to the content,
the three dimensional rendering including at least one of the
lighting characteristic and the shadow characteristic; and
a compositor, for execution by the processor, configured
to add the three dimensional rendering of the ones of the
plurality of creative elements into the content.
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Appeal2015-007807
Application 13/158,887
Rejections1
The Examiner rejected claims 1-5 and 7-24 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Wells (US 2009/0073164 Al,
published Mar. 19, 2009) and Demaine (US 2011/0084983 Al, published
Apr. 14, 2011).2
Appellants' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[B]oth the Final Office Action and the Advisory Action are silent
about the how Wells or Demaine disclose the limitations:
"determine ... which ones of the plurality of creative elements
are to be added to the content."
App. Br. 8.
Wells is only discussing a determination of the reflection,
shadows, transparency, etc., and a determination of a location of
the 3D objects in the 3D image; such as in front of or behind
other 3D objects. Id. Even if, ad arguendo, the reflection,
transparency, etc., and the location of the 3D objects were
considered to be "creative elements," by any stretch of
imagination or construction, the aforementioned determination
in Wells still falls short of being a determination of "which ones
of the plurality of creative elements are to be added to the
content," as recited by independent claim 1.
App. Br. 8-9.
1 We note that line 8 of claim 8 of record ends with a typographical error
(missing the word "content") which has previously been communicated to
Appellants. Notification of Non-Compliant Appeal Brief at page 2. Should
there be further prosecution before the Examiner, correction is warranted.
2 Separate patentability is not argued for claims 2-5 and 7-24. App. Br. 11.
Except for our ultimate decision, these claims are not discussed further
herein.
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Appeal2015-007807
Application 13/158,887
2. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[J]ust like Wells, Demaine fails to disclose, teach or suggest the
limitations "determine ... which ones of the plurality of creative
elements are to be added to the content," as recited by claim 1.
Rather, Demaine merely discloses how objects in a non-virtual
world can be rendered in a virtual world.
App. Br. 10.
3. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[T]he Answer asserts that Wells discloses "a creative element
store configured to store, in the memory, a plurality of creative
elements," as recited by independent claim 1.
Reply Br. 2 (explaining the Examiner identifies the teaching in Wells of
determining hue, saturation, and brightness value (HSV) or red, green, and
blue (RGB) pixel values for the "creative elements").
However, at the same time, when it serves the Answer's
arguments, the Answer considers -Tenection, snaaows,
transparency, and refraction" to be the "creative elements" of
independent claim 1.
Reply Br. 3.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants' conclusions. Except as noted below, we adopt as
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Appeal2015-007807
Application 13/158,887
our own ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner's Answer in response to Appellants' Appeal Brief. We
concur with the conclusions reached by the Examiner. We highlight the
following additional points.
As to Appellants' above contention 1, we disagree. The Examiner
finds Wells at paragraph 41 teaches "a creative element addition module
configured to determine, using the metadata associated with the content,
which one of the plurality of creative elements are to be added to the
content." Final Act. 5. Wells at paragraph 41 states:
Effects such as reflection, shadows, transparency, and refraction
on or of the 3D object(s) relative to objects in the frame are
automatically determined and added to the composite image.
We agree with the Examiner that "creative element" is reasonably construed
to include such effects. 3 Further, Wells at paragraphs 114--17 shows that
data such as object position is used in the ray-tracing process to determine if
inclusion of a creative element in the content is appropriate (e.g., "if the ray
intersects the 3D object, a shadow effect is added to the 3D object at that
point on the ray" (i-f 116)).
As to Appellants' above contention 2, we disagree. Appellants argue
that Demaine does not disclose, teach, or suggest determining "which ones
of the plurality of creative elements are to be added to the content." We find
that Examiner did not cite Demaine for the limitation. Rather, the Examiner
3 For example, Appellants' Specification at page 2 states "[a] rendering
engine configured to develop a three dimensional rendering of the creative
element, the three dimensional rendering including at least one of the
lighting characteristic and the shadow characteristic."
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Appeal2015-007807
Application 13/158,887
cited Wells. Final Act. 5. We conclude that Appellants' argument does not
address the actual findings and reasoning of the Examiner's rejection.
Instead Appellants attack the Demaine reference singly for lacking a
teaching or suggestion that the Examiner relied on a combination of
references to show. It is well established that one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA
1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). Appellants argue
a finding the Examiner never made. This form of argument is unavailing to
show Examiner error.
As to above contention 3, we disagree. Again, we conclude that
Appellants' argument does not address the actual reasoning of the
Examiner's rejection. The Examiner explicitly stated that Wells only
"broadly teaches a creative element store ... " Final Act. 7. Then, the
Examiner turns to Demaine to teach the limitation. Id at 7-8. Now
Appellants attack the Wells reference singly for lacking a teaching that the
Examiner relied on a combination of references to show. Again, Appellants
argue a finding the Examiner never made. As above, this form of argument
is unavailing to show Examiner error.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-5 and 7-24 as
being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-5 and 7-24 are not patentable.
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Appeal2015-007807
Application 13/158,887
DECISION
The Examiner's rejection of claims 1-5 and 7-24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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