Ex Parte Fateh

Patent Trial and Appeal Board

Aug 23, 2017

14014245 (P.T.A.B. Aug. 23, 2017)

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.
14/014,245 08/29/2013 Sina Fateh Atheer.370 1030
88172 7590 08/25/2017
Mohr Intellectual Property Law Solutions, P.C.
522 SW 5th Avenue
Suite 1390
Portland, OR 97204-2137
EXAMINER
ZALALEE, SULTANA MARCIA
ART UNIT PAPER NUMBER
2614
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
j oey @ mohriplaw .com
docketing@mohriplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SINA FATEH
Appeal 2017-004886
Application 14/014,245
Technology Center 2600
Before LINZY T. McCARTNEY, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—10, 12, and 14—31. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
Appeal 2017-004886
Application 14/014,245
STATEMENT OF THE CASE
The present patent application “relates to selectively presenting
content in a controlled fashion such as according to a visual map, in
response to contextual factors.” Specification 12, filed August 29, 2013
(“Spec.”). Claim 1 illustrates the claimed subject matter:
1. An apparatus, comprising:
a first sensor adapted to sense at least a first contextual
factor;
a second sensor adapted to sense an eye of said viewer;
a processor in communication with said first and second
sensors; and
a see-through display in communication with said
processor; wherein said processor is adapted to:
determine a status of said first contextual factor;
determine if said first contextual factor meets a first
standard;
generate output data from input data;
if said status of said first contextual factor meets
said standard:
determine a disposition of said eye of said
viewer with respect to said see-through display;
apply a transformation to said output data;
define a first output region at least
substantially viewable to said viewer and
substantially corresponding with a first portion of a
retina of said eye;
define a second output region at least
substantially viewable to said viewer and
substantially corresponding with a second portion
of said retina of said eye;
limit output of said output data to said first
output region;
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exclude output of said output data from said
second output region, such that said second output
region is substantially unobstructed by said output
data[;]
update said determination of said disposition
of said eye subsequent to a change in disposition of
said eye;
maintain said substantial correspondence
between said first output region and said first
portion of said retina without perceptibly changing
output data responsive to said change in disposition
of said eye; and
maintain said substantial correspondence
between said second output region and said second
portion of said retina; and
wherein said display is adapted to output said output
data to a viewer.
REJECTIONS
The Examiner rejected claims 1—10, 12, and 14—31 under
35 U.S.C. § 112(a) as failing to comply with the written description
requirement. Final Office Action 15—20, mailed August 27, 2015 (“Final
Act.”).
The Examiner rejected claims 1—5, 7—10, 12, and 14—31 under
35 U.S.C. § 103(a) as unpatentable over Bar-Zeev et al. (US 2012/0154277
Al; June 21, 2012) (“Bar-Zeev”); Fateh (US 2007/0057911 Al;
Mar. 15, 2007); and Fleck et al. (US 2013/0208014 Al; Aug. 15, 2013)
(“Fleck”). Final Act. 20-40.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Bar-Zeev, Fateh, Fleck, and Haddick et al.
(US 2011/0221656 Al; Sept. 15, 2011) (“Haddick”). Final Act. 40-41.
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Appeal 2017-004886
Application 14/014,245
ANALYSIS
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We reject claims 1—10, 12, and 14—31 under 35 U.S.C. § 112(b) as
indefinite. Claims must be “definite,” that is, claims must “particularly
point[] out and distinctly claim[] the subject matter which the inventor . . .
regards as the invention.” 35 U.S.C. § 112(b). During prosecution, “[a]
claim is indefinite when it contains words or phrases whose meaning is
unclear.” Manual of Patent Examining Procedure § 2173.05(e). For
example, a claim is indefinite if the claim is “ambiguous, vague, incoherent,
opaque, or otherwise unclear in describing and defining the claimed
invention,” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or if it is
“is amenable to two or more plausible claim constructions,” Ex Parte
Miyazaki, 89 USPQ.2d 1207, 1211 (BPAI 2008) (precedential).
Independent claim 1 recites in relevant part “maintain said substantial
correspondence between said first output region and said first portion of said
retina without perceptibly changing output data responsive to said change in
disposition of said eye.” App. Br. 13 (emphasis added). Independent claims
17, 18, and 21—23 each recite a substantially similar limitation. See App.
Br. 15—21. The term “perceptibly changing” is a term of a degree, that is, a
relative term of measurement. Generally, claims reciting a term of degree
are definite only when either the claims or their associated written
description provides a standard for measuring the relevant degree. See
Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984) (“When a word of degree is used the district court must
determine whether the patent’s specification provides some standard for
measuring that degree.”). We see nothing in either the claims or Appellant’s
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Application 14/014,245
written description that provides a standard for determining whether output
data has been perceptibly changed. We note Appellant points to paragraph
177 of the written description and to Figure 4 and claim 11 of United States
Provisional Application No. 61/695,261 for written description support for
“without perceptibly changing output data.” App. Br. 3, 7—10. But these
disclosures do not mention the words “perceptibly changing,” much less
provide a workable standard for determining their scope.
For the reasons stated above, we conclude the term “perceptibly
changing” renders claims 1, 17, 18, and 21—23 indefinite. We also conclude
dependent claims 2—10, 12, 14—16, 19, 20, and 24—31 are indefinite because
they depend from an indefinite independent claim.
REJECTIONS UNDER 35 U.S.C. §§ 103(a), 112(a)
Because claims 1—10, 12, and 14—31 are indefinite for the reasons
discussed above, one cannot ascertain the metes and bounds of these claims.
We therefore summarily reverse the Examiner’s rejections of claims 1—10,
12, and 14—31 under 35 U.S.C. §§ 103(a), 112(a) because these rejections
are necessarily based on speculation and assumptions. See In re Steele, 305
F.2d 859, 862 (CCPA 1962) (“We do not think a rejection under 35 U.S.C.
§103 should be based on . . . speculations and assumptions. . . . [I]t is
essential to know what the claims do in fact cover.”).
It should be understood, however, that our decision in this regard is
based solely on the indefmiteness of the claimed subject matter and does not
reflect the adequacy of the written description or prior art evidence before
us. The Examiner is free to enter new written description and prior art
rejections as may be appropriate once definite claims have been presented.
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Application 14/014,245
DECISION
We summarily reverse the Examiner’s rejections of claims 1—10, 12,
and 14—31 under 35 U.S.C. § 112(a).
We summarily reverse the Examiner’s rejections of claims 1—10, 12,
and 14—31 under 35 U.S.C. § 103(a).
We enter a new ground of rejection for claims 1—10, 12, and 14—31
under 35 U.S.C. § 112(b).
This decision contains new grounds of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides: When the board enters such a non-
final decision, the appellant, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new grounds of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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Application 14/014,245
rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can
be found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§§ 1.136(a)(l)(iv), 41.50(f), 41.52(b).
REVERSED
37 C.F.R, $ 41.50(b)
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