Ex Parte Kurzweil

Patent Trial and Appeal Board

May 31, 2017

10735294 (P.T.A.B. May. 31, 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.
10/735,294 12/12/2003 Raymond C. Kurzweil 14202-002001 9946
26161 7590 06/02/2017
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND C. KURZWEIL
Appeal 2015-0010911
Application 10/735,2942
Technology Center 3700
Before MICHELLE R. OSINSKI, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
July 21, 2014) and Reply Brief (“Reply Br.,” mailed Oct. 27, 2014), the
Examiner’s Answer (“Ans.,” mailed Sept. 19, 2014) and Final Office Action
(“Final Act.,” mailed Feb. 13, 2014), a transcript of the oral hearing held on
March 23, 2017 (“Tr.,” mailed May 1, 2017), and the Board’s Decision on
Appeal (“Prior Decision,” mailed June 4, 2013).
2 Appellant identifies Kurzweil Technologies, Inc. as the real party in
interest. App. Br. 1.
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Application 10/735,294
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—23. An oral hearing was held on March 23, 2017. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED INVENTION
Appellant’s claimed invention “relates to virtual reality devices, and
in particular, using these devices for communication and contact.” Spec. 1,
11. 4—6.
Claims 1, 9, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A virtual encounter system comprising,
a mannequin having life-like features, the mannequin
comprises:
a body;
a camera coupled to the body, the camera for
sending first video signals over a communications
network; and
a microphone coupled to the body, the microphone
for sending first audio signals over the communications
network; and
a set of goggles including a display to render electrical
signals representative of second video signals received from the
communications network and a transducer to transduce electrical
signals representative of second audio signals received from the
communications network, the respective second video signals
and second audio signals at least partially reflect views and sound
of a location different from a location of the mannequin in real­
time.
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REJECTIONS
Claims 1—4, 7—10, 13—17, and 21—23 are rejected under 35 U.S.C.
§ 103(a) as upatentable over Abbasi (US 6,786,863 B2, iss. Sept. 7, 2004)
and Choy (US 6,695,770 Bl, iss. Feb. 24, 2004).
Claims 5, 6, 11, 12, and 18—20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Abbasi, Choy, and Gutierrez (US 5,111,290, iss. May
5, 1992).
ANALYSIS
Independent Claims 1, 9, and 15
Appellant argues claims 1, 9, and 15 as a group. App. Br. 9. We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1).
In rejecting independent claim 1 under 35 U.S.C. § 103(a), the
Examiner cites Abbasi for disclosing a virtual encounter system and method
comprising a partial mannequin having life-like features, and a display to
render the video signals received from the camera and a transducer to
transduce the audio signals received from the microphone. Final Act. 2
(citing Abbasi, col. 2,11. 54—67). The Examiner acknowledges that Abbasi
does not disclose that the mannequin is a complete mannequin representing
the human figure and does not provide a video display in the form of
goggles. Id. at 3. And the Examiner relies on Choy to cure the deficiencies
Id. (citing Choy, col. 3,11. 1—6, 23—25, 41—45; col. 7,11. 11—19; Figs. 1—2);
see also Ans. 11 (“Choy teaches the use of goggles to provide that audio and
video, as well as the use of [a] full human mannequin for such a remote
physical contact system”).
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Abbasi relates to enabling remote physical contact. Abbasi, col. 1,11.
66—67. A user kisses a first mechanical surrogate attached to a first
computer. The kiss is perceived at sensors located in the first mechanical
surrogate, and characteristics of the kiss are communicated by the first
computer to the second computer. Id. at col. 4,1. 62—col. 5,1. 1. The kiss is
recreated on a second mechanical surrogate attached to the second computer.
Id. at col. 5,11. 1—3. Video information is received from a video camera
attached to the first computing device and conveyed to a second computing
device for display. Id. at col. 2,11. 54—60. In addition, audio information
from a microphone attached to the first computing device is conveyed to a
speaker of the second computing device. Id. at col. 2,11. 63—67. Users
control privacy by selecting command buttons on the display to enable or
disable video or audio transmission. Id. at col. 7,11. 31—35.
Choy relates to a system using virtual reality to simulate an
environment and provide a sexual experience. Choy, col. 1.11. 6—9. The
invention may be implemented with a mannequin or doll fitted with
appropriate sensors. Id. at col. 2,11. 14—18. The system “allow[s] a user to
enter a virtual world and have a sexual experience with a virtual human, or
indeed another real human who is also linked up to the same world.” Id. at
col. 2,11. 4—7. The invention is used with a head mounted display system
and a movement and position sensing device applied to a critical part or
parts of the user’s body. Id. at col. 1,11. 63—65. The headset is lightweight,
and provides audio and images. Id. at col. 3,11. 43—45. A mannequin or doll
is fitted with appropriate sensors to sense and transmit information (e.g.,
where touched), and to receive a control message in response (e.g., moving
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an appropriate part of the doll). Id. at col. 8,11. 4—15; see also id. at col. 7,1.
11. 1-63.
In a two-person embodiment, a user enters a virtual world to have a
sexual experience with another human portrayed in the software as an
avatar. Id. at col. 11,11. 13—16. The two-person embodiment, thus, replaces
the one-person embodiment’s virtual human having artificial intelligence
with another user. Id. at col. 10,11. 58—60. Each user’s movements are
tracked and transmitted to the other user in real time. Id. at col. 3,11. 23—25,
col. 10,11.5-9, col. 11,11. 1-5.
The Examiner determines that it would have been obvious to replace
the partial mannequin of Abbasi with the full-size mannequin of Choy to
allow for more involved simulation and to modify Abbasi’s display by
providing a head mounted display/goggles to enhance the reality of the
virtual environment. Final Act. 3; see also Ans. 18. In the Answer, the
Examiner reasons that “it would have been obvious to . . . substitute the
partial mannequin of Abbasi with the full size mannequin of Choy so as to
allow for substantially more involved simulation and virtual experience to
occur between a plurality of parties[,]” and that “providing a head mounted
display/goggles in order to enhance the reality of a virtual environment be
allowing a user to fantasize about a person displayed in the headset display.”
Ans. 18.
Appellant argues that the Examiner erred in rejecting claim 1 under 35
U.S.C. § 103(a) because the Examiner’s rejection “do[es] not give due
consideration to the Board’s prior decision.” App. Br. 8. In this regard,
Appellant suggests that the Board in the Prior Decision found that Choy
does not disclose a mannequin. Id. (“the Board had found that Choy did not
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cure the deficiencies in the rejection.”) But this suggestion is incorrect. In
its Prior Decision the Board found that the Examiner’s application of Choy
did not cure the deficiencies of Abbasi because the Examiner applied Choy
for disclosing goggles, not a mannequin. Prior Decision 4—5.
Appellant contends that the Examiner does not establish a prima facie
rejection under 35 U.S.C. § 103(a). App. Br. 9-11. Specifically, Appellant
asserts that the Examiner mischaracterizes the claim language of a set of
goggles that include a display that renders second video signals and
transduces second audio signals, as “routing” data from one location to
another location. App. Br. 10. Appellant charges that the Examiner has not
made the correct factual inquiry to ascertain differences between Abbasi and
the claims at issue, and improperly construed the scope and content of
Abbasi. Id. at 10-11.
But in rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner finds
that Abbasi at column 2, lines 54—67 teaches a display — not a set of
goggles — performs the claimed rendering of second video signals and
transducing of second audio signals. See Final Act. 2-4; see also Ans. 8—11
(finding Abbasi teaches all of the elements of the claim limitation except
that the display (and transducer) is a set of goggles and the mannequin being
a complete human form). We are not persuaded that the Examiner erred in
finding that Abbasi’s display renders second video signals and transduces
second audio signals under a broad, but reasonable, interpretation of the
claim language.
Appellant argues that the Examiner “mischaracterizes Abbasi as
partially reflecting views . . . different from a location of the mannequin.”
App. Br. 10. In the Reply Brief, Appellant elaborates that in Abbasi “the
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view received by one user is the view that the camera at the other user
captures, thus the camera cannot partially reflect views . . . different from a
location of the mannequin [the view that the camera of the other user
captures].” Reply Br. 3 (alterations in original). Appellant contends that
“the point of [the claimed] feature is that. . . you can actually modify part of
the surrounding.” Tr., 14,11. 8—10.
However, even though Appellant may have intended claim 1 to
require modifying views of video received from a location of a second
mannequin or to require that the claimed second video/audio signals be
video/audio with modified views and sounds meant to replace the first
video/audio signals sent by the camera/microphone of a first mannequin, the
claim language does not so require. Instead, claim 1 recites: (1) a
mannequin having a camera coupled to the body “for sending first video
signals over a communications network,” and (2) a set of goggles receiving
second video signals received from the communications network that “at
least partially reflect views ... of a location different than the mannequin
[i.e., the same mannequin that sent the first video signals, not a second
mannequin].” We agree with the Examiner that receiving a video signal at a
first location where there is a first surrogate from a second location, as
described by Abbasi, meets the recited claim language. Ans. 10-11.
Appellant argues that “Choy teaches a headset display[,] not a set of
goggles.” App. Br. 11; see also id. at 13. In the Reply Brief, Appellant
compares virtual glasses shown in Figure 3 of the Specification with pictures
from of a head mounted display from an owner’s manual for Pro View™
XL. Reply Br. 5—7. However, a set of goggles, as recited in claim 1 and
similarly recited in claim 9, requires “a display . . . and a transducer.” And
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nothing in Appellant’s Specification defines or otherwise limits the form of
the recited set of goggles to the glasses shown in Figure 3.
Choy describes a lightweight headset that displays video and provides
audio. See Choy, col. 3,11. 3—6, col. 3,1. 41—col. 4,1. 55. We agree with the
Examiner that Choy’s headset constitutes a set of goggles under a broad, but
reasonable, interpretation of the claim language. See Ans. 13—15; see also
Final Act. 3.
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because one of ordinary skill in the art would not have
been motivated to combine Abbasi and Choy. See App. Br. 11—15; see also
Reply Br. 9 (“No logical reason exists for combining Abbasi and Choy”).
Appellant also argues that “Abbasi, specifically[,] and Abbasi and Choy
together teach away from using ‘a set of goggles including a display to
render electrical signals representative of second video signals’ which ‘at
least partially reflect surrounding views ... of a location different from a
location of the mannequin.’” App. Br. 11. We have carefully considered
Appellant’s contentions, but none are persuasive of Examiner error.
For example, Appellant asserts that “the user would not be able to see
. . . and kiss the surrogate” using a set of goggles. App. Br. 12; see also id.
at 14 (“the user 10 would need to remove the goggles to locate the surrogate
50”); Reply Br. 6 (“when the HMD is mounted on the head, it clearly would
not enable a user to view and thus easily interact with surrogates in Abbasi
without removing the HMD”). Appellant similarly contends that Abbasi’s
user would be unable to “see both his surrogate and the user interface'1'’ if
the user of Abbasi wore a set of goggles. App. Br. 12; see also id. at 14
(“the user 10 would have had to take off the goggles to look at his keyboard
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and his user interface each time the user 10 types, sends, or receives textual
messages from the user 20, or each time the user 10 initiates, accepts or
terminates the remote physical contact.”), 15 (“Abbasi requires the users to
view the surrogate, the keyboard, and the windows on the user interface so
that the users . . . can perform one or more of (a) [remote physical contact
through surrogates], (b) [viewing video presentation on GUI], and (c)
[communicating with each other using keyboard and GUI] simultaneously or
sequentially”).
Appellant’s assertions are not persuasive, at least because the rejection
applies a combination of Abbasi and Choy as disclosing the argued
limitation, not either reference alone. The Examiner finds that the
combination of Abbasi and Choy describes a user interacting with a
mannequin — not Abbasi’s mechanical surrogate alone. See Final Act. 3.
And the Examiner finds that a user of the combined system can employ the
virtual reality headset while interacting with the mannequin. Ans. 16. The
Examiner’s finding is consistent with, and supported by, Choy. See Choy,
col. 1,1. 63—col. 2,1. 45 (generally describing a user physically interacting
with a mannequin while wearing a head mounted display system). Likewise,
the Examiner’s finding that the user can interact with a mannequin while
wearing a virtual reality headset is consistent with remarks about
Appellant’s invention made by Appellant’s counsel during the oral hearing.
See Tr., 7,11. 15—17 (“it’s not necessary for the user [of Appellant’s
invention] to actually really see the mannequin as the user can certainly
contact and feel the mannequin”).
The Examiner reasons that it would have been obvious for one of
ordinary skill to modify Abbasi to provide a mannequin for a remote
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physical contact system, as described by Choy, to provide a “substantially
more involved simulation and virtual experience.” Final Act. 3. And the
Examiner reasons that it would have been obvious to modify Abbasi by
providing Choy’s head mounted display to further “enhance the reality of a
virtual environment.” Id. Consistent with this rationale, the Examiner
determines that the user of the combined Abbasi and Choy system would
communicate using a microphone instead of by typing on a keyboard
because it provides a more realistic virtual contact experience. See Ans. 12—
13. We determine the Examiner adequately explained how and why the
proposed combination would have been obvious to one of ordinary skill in
the art. Moreover, we are not persuaded that wearing the headset only
during a virtual contact experience and not when engaged in other activities
described by Abbasi (e.g., starting or ending the physical contact session,
text messaging (see Abbasi, col. 7,11. 43^47)) would “destroy[] the intent[,]
purpose^] and function of Abbasi,” as charged by Appellant. Reply Br. 9.
For example, Abbasi does not describe or suggest that the user must see the
keyboard and interface to communicate using keystrokes while kissing the
surrogate.
Appellant charges that “nothing in Choy describes that a user is
allowed to view a video of another individual while interacting with a
surrogate or mannequin.” App. Br. 12. And Choy’s user “does not
communicate with a remote user in the [same] manner [that] the users of
Abbasi communicate, e.g., through multiple windows on a computer display
and/or keyboard.” Id. at 13. Appellant’s arguments are not persuasive, at
least because the Examiner does not rely on Choy for communicating with a
remote user in the same manner as the users of Abbasi. Instead, the
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Examiner applies Choy’s use of goggles to provide the audio and video
outputs of Abbasi. See Ans. 11.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a). We also sustain the
Examiner’s rejection of claims 9 and 15, which fall with claim 1.
Dependent Claims 2—4, 7, 8, 10, 13, 14, 16, and 17
Appellant argues that dependent claims 2—4, 7, 8, 10, 13, 14, 16, and
17 are allowable for the same reasons set forth with respect to independent
claims 1, 9, and 15. See App. Br. 16—18. We are not persuaded for the
reasons set forth above that the Examiner erred in rejecting claims 1, 9, and
15 under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s rejection
of claims 2-4, 7, 8, 10, 13, 14, 16, and 17 under 35 U.S.C. § 103(a) for the
same reasons set forth above with respect to the independent claims.
Dependent Claims 21—23
Claim 21 depends from claim 1 and recites “modifying one or more
characteristics of the second audio signals . . ., second audio signals . . .
represent at least partially modified sound of the surrounding of the location
different from the location of the mannequin.” Claims 22 and 23, which
each depends from one of claims 9 and 15, recite similar language.
In rejecting claims 21—23, the Examiner took Official Notice that
modifying audio signals that are captured via microphone is “notoriously old
and well known,” citing as an example the “digitizing and/or compressing”
of an analog signal (voice) captured by microphone. Final Act. 5; see also
Ans. 19.
However, we agree with Appellant that the Official Notice taken by
the Examiner does not account for partially modifying sound of the
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surrounding location to be different from the location of the mannequin, as
required by claims 21—23. See Appeal Br. 17.
Therefore, we do not sustain the Examiner’s rejection of claims 21—23
under 35 U.S.C. § 103(a).
Dependent Claims 5, 11, and 18
Appellant argues that Gutierrez does not cure the deficiency in the
Examiner’s rejection of the independent claims. See App. Br. 19. However,
we are not persuaded for the reasons set forth above that the Examiner erred
in rejecting the independent claims under 35 U.S.C. § 103(a). Therefore, we
sustain the rejection of claims 5, 11, and 18 under 35 U.S.C. § 103(a).
Dependent Claims 6, 12, and 19
Claim 6 depends from claim 1 and further recites that the body
includes an ear canal, and the microphone is positioned within the ear canal.
Claims 12 and 19, which depend from claims 9 and 15 respectively, recite
similar language.
Appellant argues that it would not have been obvious to modify
Abbasi and Choy in view of Gutierrez because Gutierrez fails to teach
placing a microphone within an ear canal of a mannequin. See App. Br. 19.
Gutierrez discloses with reference to Figure 8, a circuit diagram, locating a
microphone 112 within a mannequin, but does not disclose a location of
microphone 112 within the mannequin. Compare Gutierrez, col. 4,11. 34—
36, Fig. 8, with Fig. 7.
Responding to Appellant’s argument, the Examiner finds that
Gutierrez teaches “locating a sensor device within its appropriate anatomical
region within a mannequin” by describing locating a video camera within
the eye of the mannequin. Ans. 20. And the Examiner determines that it
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would have been obvious for one of ordinary skill to modify Abbasi and
Choy in view of Gutierrez “to locate said microphone and camera in their
appropriate anatomical areas within the mannequin, namely the camera in
the mannequin’s eye and the microphone in the mannequin’s ear, in order to
most accurately reproduce via audio and video the first user’s interaction
with the mannequin to the second user.” Id.
In the Reply Brief, Appellant responds that “Gutierrez does not
describe to locate a microphone within the ear canal merely by the
[Ejxaminer’s characterization that Gutierrez teaches locating a sensor
device within its appropriate anatomical region.” Reply Br. 12. But the
Examiner does not find that Gutierrez describes locating a microphone in the
ear canal. Rather, the Examiner determines that the modification would
have been obvious in view of the combined teachings of the references,
including Gutierrez’s disclosure of placing a device (a camera) in its
corresponding anatomical region (an eye).
We are not persuaded on the present record that the Examiner erred in
rejecting dependent claims 6, 12, and 19 under 35 U.S.C. § 103(a).
Therefore, we sustain the Examiner’s rejection.
Dependent Claim 20
Appellant argues that claim 20 is patentable for the same reasons set
forth with respect to claim 6. See App. Br. 20. We are not persuaded for the
reasons set forth above that the Examiner erred in rejecting claim 6 under 35
U.S.C. § 103(a). Therefore, we sustain the Examiner’s rejection of claim 20
under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to
claim 6.
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DECISION
The Examiner’s rejections of claims 1—20 under 35 U.S.C. 103(a) are
affirmed.
The Examiner’s rejection of claims 21—23 is reversed.
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-IN-PART
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