Ex Parte Marlow et al

Patent Trial and Appeal Board

May 15, 2017

14606183 (P.T.A.B. May. 15, 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.
14/606,183 01/27/2015 Stewart Marlow 066.0259D 1_P2010-07-02.1 1044
70560 7590 05/17/2017
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EXAMINER
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
ALATA, YASSIN
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
05/17/2017 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):
IPDEPT @ echostar.com
docketing @LKGlobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEWART MARLOW, MATTHEW LEWIS,
and ANDREW JOHNSON
Appeal 2016-007891
Application 14/606,1831
Technology Center 2400
Before JOHN A. EVANS, CATHERINE SHIANG, and
NORMAN H. BEAMER, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of Claims 1—4, all claims pending in the
application. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 The Appeal Brief identifies EchoStar U.K. Holdings Limited, as the real
party in interest. App. Br. 2.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed November 30, 2015, “App. Br.”), the
Examiner’s Answer (mailed June 17, 2016, “Ans.”), the Final Action
(mailed August 13, 2015, “Final Act.”), and the Specification (filed January
27, 2015, “Spec.”) for their respective details.
Appeal 2016-007891
Application 14/606,183
STATEMENT OF THE CASE
The claims relate to projection of holographic images. See Abstract.
INVENTION
An understanding of the invention can be derived from a reading of
Claim 1, the only independent claim in the application, which is reproduced
below with some formatting added:
1. A method for providing an advertisement image,
comprising:
receiving a program service transmission at a receiver, the
program service transmission having a plurality of channels;
outputting at least one channel of the plurality of channels
from the receiver for display on a display device, wherein the at
least one channel includes a display of a product; and
concurrently with the display of the at least one product,
outputting a holographic image of the product remote from the
display device.
References and Rejections
The Examiner relies upon the prior art as follows:
Windsor, et al, US 6,512,607 B1 Jan 28, 2003
Pan US 2012/0042344 Al Filed Aug. 14,2010
The claims stand rejected as follows:
Claims 1—4 stand rejected under 35U.S.C. § 101 as directed to a non-
statutory, abstract idea. Final. Act. 3—4.
Claims 1—4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Pan and Windsor. Final. Act. 4—6.
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Appeal 2016-007891
Application 14/606,183
ANALYSIS
We have reviewed the rejections of Claims 1—4 in light of Appellants’
arguments that the Examiner erred. We have considered in this decision
only those arguments Appellants actually raised in the Briefs. Any other
arguments which Appellants could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We are
not persuaded that Appellants identity reversible error. Upon consideration
of the arguments presented in the Appeal Brief and Reply Brief, we agree
with Appellants that the claims recite statutory subject matter under 35
U.S.C. §101. However, we agree with the Examiner that all the pending
claims are unpatentable under 35 U.S.C. §103. With respect to the
obviousness rejections, we adopt as our own the findings and reasons set
forth in the rejection from which this appeal is taken and in the Examiner’s
Answer, to the extent consistent with our analysis below. We provide the
following explanation to highlight and address specific arguments and
findings primarily for emphasis. We consider Appellants’ arguments
seriatim, as they are presented in the Appeal Brief, pages 12—16.
Claims 1—4: Non-statutory, Abstract Idea
Claim 1 recites, inter alia, “outputting a holographic image of the
product remote from the display device.”
The Examiner finds “outputting a holographic image can be done
without a machine. For example, it can be done by hanging a paper with a
string in space, wherein the paper has an image of a product.” Final Act. 2.
Appellants contend Claim 1 recites limitations, including limitations
directed to outputting a holographic image, which require the participation
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Appeal 2016-007891
Application 14/606,183
of a machine. Br. 13. Appellants argue the Examiner fails to cite any of the
Mayo categories of ineligible subject matter. Id. Appellants discuss various
physical mechanisms to produce the claimed holographic images. Id. (citing
Spec., 121).
The Examiner finds “outputting a holographic image” is an abstract
idea, absent proper structure. Ans. 4.
The Examiners finding that a hologram may be produced equivalently
“by hanging a paper with a string in space, wherein the paper has an image
of a product” (Final Act. 2) is not reasonable. In optics, a hologram is a
“three-dimensional image formed by interference by a coherent laser beam
and the light scattered by the object being imaged, and recorded on a high-
resolution photographic plate; viewable when illuminated with the same
light that formed the image.” Academic Press Dictionary of Science and
Technology, p. 1036 (1992).
We find Appellants’ Specification provides sufficient disclosure such
that a person of ordinary skill in the art would understand the claims were
supported by the required structure to perform the method and thus, to
remove the claims from the realm of abstract ideas. We agree with
Appellants that the claims do not relate to any of the Mayo categories of
ineligible subject matter.
Claims 1—4: Obviousness over Pan and Windsor
Claim 1 recites, inter alia, “outputting a holographic image of the
product remote from the display device.” Appellants contend this limitation
is supported by the disclosure of Figure 3 and accompanying text. Br. 14.
Appellants argue that in contrast to the claimed invention, Windsor’s
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Appeal 2016-007891
Application 14/606,183
“holographic overlay” is displayed “proximate a display screen of a wireless
communications device.” Br. 15.
The Examiner finds Pan discloses a digital TV system wherein a first
image is displayed on a conventional TV monitor and second, related image
is displayed on a user’s cellphone. Ans. 5—6. The Examiner finds Windsor
teaches a wireless communication device having a display screen with a
holographic overlay. Id. at 6. The Examiner finds the Pan-Windsor
combination teaches outputting a holographic image of a product remote
from the display device. Id.
Appellants did not file a reply brief.
Appellants separately traverse each of the Pan and Windsor
references, but do not traverse the combined teachings as set forth by the
Examiner. “[0]ne cannot show non-obviousness by attacking references
individually where ... the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck &
Co., 800 F.2d 1091 (Fed.Cir.1986). Appellants fail to persuade us the
Examiner has erred.
DECISION
The rejection of Claims \—A under 35 U.S.C. 101 is REVERSED.
The rejection of Claims \-A under 35 U.S.C. § 103 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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