Ex Parte Hanson et al

Patent Trial and Appeal BoardDec 29, 2017

11416407 (P.T.A.B. Dec. 29, 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. 11/416,407 05/02/2006 William Robert Hanson QLXX.P0817US.C2/11403466 4743 15757 7590 01/03/2018 Qualcomm /Norton Rose Fulbright US LLP 2200 Ross Avenue Suite 3600 Dallas, TX 75201-7932 EXAMINER BODDIE, WILLIAM ART UNIT PAPER NUMBER 2625 NOTIFICATION DATE DELIVERY MODE 01/03/2018 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): ocpat_uspto@qualcomm.com doipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM ROBERT HANSON, SHAWN R. GETTEMY, SHERRIDYTHE A. FRASER, YOON KEAN WONG, and MARK W. OLIVER1 Appeal 2017-007261 Application 11/416,407 Technology Center 2600 Before MARC S. HOFF, JAMES R. HUGHES, and JAMES W. DEJMEK, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 16, 18, 20, 22-25, 28, 30-33, and 40- 54. Claims 1-15, 17, 19, 21, 26, 27, 29, and 34-39 have been canceled. Final Act. I.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 According to Appellants, the real party in interest is Qualcomm Incorporated. App. Br. 2. 2 We refer to Appellants’ Specification (“Spec.”) filed May 2, 2006 (claiming benefit of US 10/806,660 filed Mar. 23, 2004 and US 09/997,382 filed Nov. 29, 2001); Appeal Brief (“App. Br.”) filed Dec. 13, 2016; and Reply Brief (“Reply Br.”) filed Apr. 7, 2017. We also refer to the Appeal 2017-007261 Application 11/416,407 We reverse. Appellants ’ Invention The invention at issue on appeal generally concerns input/output devices (interfaces), electronic display devices, and methods for displaying images. The electronic display device communicates with a portable electronic device also having a display, the display device includes a processor which communicates with its (the primary) display and a wireless transceiver to communicate with the portable electronic device. The processor processes data such that the primary display displays an image relating to a complementary image displayed by the portable electronic device, which corresponds to a portion of the image displayed by the primary display. The complementary image also includes additional content corresponding to information embedded in the primary display image but not displayed or a hidden object in the corresponding portion of the primary display image. (Spec. 2-8; Abstract.) Illustrative Claim Independent claim 16, reproduced below with key disputed limitations emphasized, further illustrates the invention: 16. An electronic display device configured for communication with a portable electronic device having a display window, comprising: a processor in communication with a primary display; and a wireless transceiver configured to communicate data wirelessly with the portable electronic device, Examiner’s Answer (“Ans.”) mailed Mar. 8, 2017; and Final Office Action (Final Rejection) (“Final Act.”) mailed Aug. 29, 2016. 2 Appeal 2017-007261 Application 11/416,407 wherein the processor is configured to cause the primary display to display an image relating to a complementary image displayed on the portable electronic device, wherein the complementary image corresponds to a portion of the image, and wherein the complementary image comprises at least one of additional content corresponding to information embedded in the image but not displayed in the image or display of a hidden object contained in the corresponding portion of the image; and wherein the processor is configured to cause the primary display to display a version of the complementary image displayed on the display window of the portable electronic device. Rejections on Appeal 1. The Examiner rejects claims 16, 20, 28, 40, 41, 44, 45, and 49- 54 under 35 U.S.C. § 103(a) as being unpatentable over Tognazzini (US 7,062,573 B2, issued June 13, 2006 (filed Oct. 30, 2001)) (“Tognazzini”) and Reber et al. (US 5,938,726, issued Aug. 17, 1999) (“Reber”). 2. The Examiner rejects claims 23, 24, 31, 32, 43, and 48 under 35 U.S.C. § 103(a) as being unpatentable over Tognazzini, Reber, and Tran (US 6,054,990, issued Apr. 25, 2000) (“Tran”). 3. The Examiner rejects claims 18, 22, 30, 42, and 47 under 35 U.S.C. § 103(a) as being unpatentable over Tognazzini, Reber, and Aoki et al. (US 2003/0037013 Al, published Feb. 20, 2003 (filed Sept. 17, 2001)) (“Aoki”). 4. The Examiner rejects claims 25 and 33 under 35 U.S.C. § 103(a) as being unpatentable over Tognazzini, Reber, and Istvan et al. (US 2002/0188952 Al, published Dec. 12, 2002 (filed June 8, 2001)) (“Istvan”). 3 Appeal 2017-007261 Application 11/416,407 5. The Examiner rejects claim 46 under 35 U.S.C. § 103(a) as being unpatentable over Tognazzini, Reber, and Montlick (US 5,561,446, issued Oct. 1, 1996) (“Montlick”). ISSUE Based upon our review of the record, Appellants’ contentions, and the Examiner’s findings and conclusions, the issue before us follows: Did the Examiner err in finding that the combination of Tognazzini and Reber would have collectively taught or suggested displaying a complementary image corresponding to “a portion of the image” (a primary image) and “wherein the complementary image comprises at least one of additional content corresponding to information embedded in the image but not displayed in the image or display of a hidden object contained in the corresponding portion of the image” within the meaning of Appellants’ claim 16 and the commensurate limitations of claims 20, 28, 40, and 45? ANALYSIS The Obviousness Rejections The Examiner rejects independent claim 16 (and independent claims 20, 28, 40, and 45) as being obvious in view of Tognazzini and Reber. See Final Act. 2-3; Ans. 4. Appellants contend that Tognazzini and Reber do not teach the disputed features of claim 16. See App. Br. 5-6; Reply Br. 2- 5. Specifically, Appellants contend, inter alia, that, with respect to Reber (cited by the Examiner as teaching the complementary image (see Final Act. 3; Ans. 4)) “it is unreasonable to construe a portion of the displayed second human viewable image 18 as either the claimed ‘information embedded in 4 Appeal 2017-007261 Application 11/416,407 the image but not displayed in the image’ or the claimed ‘hidden object contained in the corresponding portion of the image’ as urged by” the Examiner (Reply Br. 4). See App. Br. 5-6; Reply Br. 2-5. We agree with Appellants that the Examiner does not sufficiently explain how Reber teaches or suggests displaying a complementary image corresponding to a portion of a primary image displayed on a primary device, “wherein the complementary image comprises . . . additional content corresponding to information embedded in the image but not displayed in the image or . . . hidden object contained in the corresponding portion of the image” (claim 16). The Examiner simply points to a portion of Reber that describes displaying portions of images. See Final Act. 3; Ans. 4 (citing Reber, col. 12,11. 49-55; Fig. 1). The Examiner does not explain how the displaying of portions of images in Reber meets the recited feature of a complementary image including embedded, non-displayed data or a hidden object. Thus, we agree with Appellants that the Examiner has not adequately explained how the combined teachings of Tognazzini and Reber meet the disputed limitations of claim 16. Consequently, we are constrained by the record before us to find that the Examiner erred in concluding that the combination of Tognazzini and Reber renders obvious Appellants’ claim 16. Independent claims 20, 28, 40, and 45 include limitations of commensurate scope. Dependent claims 41, 44, and 49-54 depend from and fall with claims 16, 20, 28, 40, and 45, respectively. Regarding the obviousness rejections of dependent claims 18, 22-25, 30-33, 42, 43, and 46^48, the Examiner has not established on this record that the additionally cited Tran, Aoki, Istvan, and Montlick references 5 Appeal 2017-007261 Application 11/416,407 overcome or cure the aforementioned deficiencies of Reber. Dependent claims 18, 22-25, 30-33, 42, 43, and 46^48 depend from claims 16, 20, 28, 40, and 45, respectively. Accordingly, we do not sustain the Examiner’s obviousness rejections of claims 16, 18, 20, 22-25, 28, 30-33, and 40-54. CONCLUSION Appellants have shown the Examiner erred in rejecting claims 16, 18, 20, 22-25, 28, 30-33, and 40-54 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 16, 18, 20, 22-25, 28, 30-33, and 40-54. REVERSED 6