Ex Parte McArdle et al

Patent Trial and Appeal Board

Jan 25, 2019

14211786 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/211,786 03/14/2014 Terrence Edward McArdle
112168 7590 01/29/2019
Kilpatrick Townsend & Stockton LLP/Dropbox (I)
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
95156-P472US 1-908073 1043
EXAMINER
SUN,HAITAO
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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):
ipefiling@kilpatricktownsend.com
mgolob@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERRENCE EDWARD McARDLE and
BENJAMIN ZEIS NEWHOUSE 1
Appeal2018-003647
Application 14/211, 786
Technology Center 2600
Before MARC S. HOFF, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 According to Appellants, the real party in interest is Dropbox, Inc. who
owns Aria Glassworks, Inc., which in tum is the assignee of the instant
application (Appeal Br. 1 ).
Appeal2009-013324
Application 11/123,435
Appellant's Disclosed Invention
Appellants' disclosed and claimed invention concerns a method for
dynamically displaying virtual and augmented reality (VAR) scenes on a
mobile phone/tablet that simulates natural perception (Title; Abs.; Spec. ,r,r
2, 3; claim 1).
Exemplary Claim
An understanding of the invention can be derived from a reading of
sole independent claim 1, which is reproduced below with bracketed
lettering and emphases added:
1. A method for dynamically displaying virtual and
augmented reality (VAR) scenes comprising:
capturing a plurality of real images comprising a plurality
of real photometric parameters with a camera of a device;
determining visual input parameters for the device based
on the plurality of real images by calculating a graphical
projection of a three-dimensional VAR scene of the plurality of
real images [Al] without synthetic components to be shown on a
digital display of the device, calculating a visual locus of the
three-dimensional VAR scene for the digital display of the
device, and computing a ray direction of the three-dimensional
VAR scene for each image of the plurality of real images through
the visual locus;
storing the plurality of real images, the plurality of real
photometric parameters of the plurality of real images, and
locations of the plurality of real images within the three-
dimensional VAR scene on the device;
determining a plurality of virtual photometric parameters
based on the plurality of real photometric parameters of the
plurality of real images;
generating a map of the three-dimensional VAR scene by
determining a pair of image values for each of the plurality of
real images, identifying the virtual photometric parameters
that intersect at each ray direction for the plurality of real images,
and, for each ray direction, computing a plurality of intrinsic
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Application 11/123,435
photographic inputs to define a parameterized
photometric simulation function; and
[BJ rendering the three-dimensional VAR scene of the
plurality of real images with a plurality of simulated virtual
photometric parameters by determining a value of each pixel for
the three-dimensional VAR scene using the parameterized
photometric simulation function and rendering a plurality of
pixels into an output image that comprises some of the plurality
of real images [ A2] without synthetic components depicted
within the VAR scene.
The Examiner's Rejections
( 1) The Examiner rejected claim 1 under 3 5 U.S. C. § 112 (a) as failing
to provide adequate written description of the claimed invention so as to
reasonably convey to one skilled in the relevant art that the inventors had
possession of the claimed invention at the time the application was
effectively filed (Ans. 2-3). Specifically, the Examiner determined that the
Specification lacks support for the recitation of "without synthetic
components," as recited in claim 1 (Ans. 2).
(2) The Examiner rejected claims 1-5 and 15-20 under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Weising (US
2011/0216060 Al; published Sept. 8, 2011), Kawamoto (US 8,698,902 B2;
issued Apr. 15, 2014 and filed Mar. 22, 2011), and Newhouse (US
2012/0214590 Al; published Aug. 23, 2012). 2 Final Act. 8-24; Ans. 3-18.
2 Although dependent claim 15 is left out of the heading of the statement of
the rejection (see Final Act. 8; Ans. 3), we consider this harmless error
because (i) the Examiner addresses claim 15 on the merits in the body of the
rejection (see Final Act. 20; Ans. 14); and (ii) Appellants do not separately
argue claim 15, and argue claim 15 on the same basis as sole independent
claim 1 from which clam 15 directly depends.
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Application 11/123,435
(3) The Examiner rejected claims 7 and 8 under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Weising, Kawamoto, Newhouse,
and Osterhout (US 2012/0194553 Al; published Aug. 2, 2012). Final Act.
24--26; Ans. 18-20.
(4) The Examiner rejected claim 9 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Weising, Kawamoto, Newhouse, and
Kim (US 2011/0234631 Al; published Sept. 29, 2011). Final Act. 26-27;
Ans. 21-22.
(5) The Examiner rejected claim 10 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Weising, Kawamoto, Newhouse, and
Lord (US 2011/0069229 Al; published Mar. 24, 2011). Final Act. 27-28;
Ans. 22-23.
(6) The Examiner rejected claim 11 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Weising, Kawamoto, Newhouse, Lord,
and Osterhout. Final Act. 28-30; Ans. 23-24.
(7) The Examiner rejected claims 12 and 13 under 35 U.S.C. § I03(a)
as being unpatentable over the combination of Weising, Kawamoto,
Newhouse, and Zimmer (US 2005/0232507 Al; published Oct. 20, 2005).
Final Act. 30-31; Ans. 24--26.
(8) The Examiner rejected claim 14 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of W eising, Kawamoto, Newhouse, and
Swanson (US 2014/0019166 Al; published Jan. 16, 2014 and filed July 13,
2012). Final Act. 31-32; Ans. 26-27.
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Appeal2009-013324
Application 11/123,435
ISSUES
Written Description Rejection Under§ l l 2(a)
Based on Appellant's arguments (Reply Br. 2--4), the following
written description issue is presented:
(1) Did the Examiner err in rejecting claim 1 as lacking written
description support for the recitations of "without synthetic components" on
the basis that the Specification as originally filed did not reasonably convey
to one skilled in the relevant art that the inventor had possession of the
claimed invention at the time the application was effectively filed?
Obviousness Rejections Under§ 103(a)
Based on Appellants' arguments (Appeal Br. 7-13; Reply Br. 4--9),
the following obviousness issue is presented: 3
(2) Did the Examiner err in rejecting claims 1-20 under 35 U.S.C.
§ 103(a) because the base combination of Weising, Kawamoto, and
Newhouse because (a) the Examiner properly modified Weising and
Kawamoto with Newhouse; and/or (b) the combination ofWeising and
Kawamoto teaches or suggests "rendering the three-dimensional VAR scene
3 Based on Appellant's arguments (Appeal Br. 7-13; Reply Br. 4--9) with
regard to the obviousness rejection of claims 1-5 and 15-20, we select claim
1 as representative of the group of claims rejected over the base combination
ofWeising, Kawamoto, and Newhouse. Notably, Appellant only presents
arguments as to claim 1, and relies on the arguments for claim 1 with regard
to the patentability of claims 2-5 and 15-20. Because Appellants similarly
do not provide separate arguments as to remaining dependent claims 7-14,
we decide the outcome of the appeal of the obviousness rejections of claims
7-14 on the same basis as claim 1, from which these claims depend.
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Application 11/123,435
of the plurality of real images," as recited in representative claim 1?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 8-32; Ans.
2-28) in light of Appellants' contentions in the Appeal Brief (Appeal Br. 7-
13) and the Reply Brief (Reply Br. 2-9) that the Examiner has erred, as well
as the Examiner's response to Appellants' arguments in the Appeal Brief
(see Ans. 28-31 ).
First Issue: Written Description Rejection of Claim 1
We agree with Appellants' conclusions that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 112(a) as failing to provide an adequate
written description of the invention recited in claim 1.
Because Figure 1 (steps 710 and 720) and paragraph 26 of the
Specification show and describe using real components, and not synthetic
components, the originally filed Specification reasonably conveys to one of
ordinary skill in the art that Appellants had possession of the disputed
limitation recited in claim 1. In this light, we agree with Appellants'
arguments (Reply Br. 3--4) that Figure 1 and paragraph 26 of the
Specification fully support the negative limitations recited in claim 1 of
"without synthetic components. "4
Accordingly, we do not sustain the Examiner's written description
rejection of claim 1.
4 Notably, at the time of withdrawing the written description rejection of
claim 1 in the Advisory Action mailed July 13, 2017 (see Adv. Act., p. 2),
the Examiner was also persuaded by Appellant's arguments in this regard.
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Application 11/123,435
Second Issue: Obviousness Rejection of Representative Claim 1
However, we disagree with Appellants' arguments with regard to the
obviousness rejections of claims 1-20 over the base combination of
Weising, Kawamoto, and Newhouse. As to the obviousness rejection of
representative claim 1, we adopt as our own: ( 1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 8-15; Ans. 3-9), and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellants' Appeal Brief (Ans. 28-31),
except for the Examiner's finding (Ans. 30) that Weising discloses disputed
limitation [BJ ("rendering the three-dimensional VAR scene of the plurality
of real images") recited in claim 1. We provide the following for emphasis
only, and highlight and amplify certain teachings and suggestions of
Weising, Kawamoto, and Newhouse as follows.
Appellants' arguments (Appeal Br. 8-10; Reply Br. 4--7) that there is
no motivation to combine Newhouse with Weising and/or Kawamoto due to
inoperability are not persuasive in light of the Examiner's cogent and well-
articulated reasoning found at pages 8-9 and 28-29 of the Answer and pages
14--15 of the Final Rejection. Furthermore, Appellants' contention that the
Examiner errs by "stripping the virtual elements and virtual object
respectively out of Weising and Kawamoto would render each reference
inoperable for its intended purpose" (Appeal Br. 10) is unpersuasive,
because the Examiner does not do so. Instead, the Examiner provides a
well-articulated rationale for why one of ordinary skill in the art would
indeed eliminate synthetic components using Newhouse (see Final 14--15;
Ans. 8-9 and 28-29).
Appellants' contentions (Appeal Br. 10-13; Reply Br. 7-9) that
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Application 11/123,435
Weising, Kawamoto, and Newhouse, either alone or in combination, fail to
disclose limitation [BJ recited in claim 1 ("rendering the three-dimensional
VAR scene of the plurality of real images") are unpersuasive. Appellant's
contentions in this regard are premised on the assertion that both (i) W eising
(see Appeal Br. 11-12); and (ii) Kawamoto (see Appeal Br. 12), fail to
disclose rendering a three-dimensional VAR scene of plural real images, and
instead rendering/displaying of a single image. Notably, Appellants neither
address nor dispute the Examiner's finding that Newhouse teaches an output
image that "is a collection of a series of discrete real images/frames 100,
1 OOA, 1 OOB" (see Final Act. 14; Ans. 9). Although we agree with
Appellants that W eising fails to disclose rendering using plural real images,
both Kawamoto (see col. 23, 11. 34--55 ( describing left eye and right eye
images); see also Ans. 31) and Newhouse (see ,r 28 describing discrete
images 100, 1 OOA, and 1 OOB) disclose plural, and not single images. We
agree with the Examiner (Ans. 31) that Kawamoto, and thus the combination
of applied references, teaches or suggests the disputed limitation of
rendering a three-dimensional VAR scene of a plurality of real images. In
this light, we agree with the Examiner's conclusion that one of ordinary skill
in the art, in view of the combined teachings and suggestions of W eising,
Kawamoto, and Newhouse, would have found it obvious to render a three-
dimensional VAR scene of a plurality of real images as set forth in claim 1.
In view of all of the foregoing, we sustain the obviousness rejection of
representative claim 1, as well as claims 2-5 and 15-20 grouped therewith,
over the combination of Weising, Kawamoto, and Newhouse.
Appellants have failed to show that the Examiner erred in determining
that the remaining six combinations applying the base combination further in
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Application 11/123,435
view of Osterhout, Kim, Lord, Zimmer, and/or Swanson teach or suggest the
method recited in claims 7-14. For similar reasons as already discussed as
to sole independent claim 1, and based on Appellants' failure to address the
Examiner's prima facie case of obviousness with regard to claims 7-14, we
sustain the Examiner's obviousness rejections of these claims proforma.
See 37 C.F.R. § 4I.37(c)(l)(iv) (requiring a statement in the briefs as to each
ground of rejection presented by Appellant for review, and stating that
arguments not presented in the briefs by Appellant will be refused
consideration).
CONCLUSIONS
(1) The Examiner erred in rejecting claim 1 as being unpatentable
under 35 U.S.C. § 112(a) for lack of written description support in the
Specification.
(2) The Examiner did not err in rejecting claims 1-20 under 35 U.S.C.
§ 103(a) as being unpatentable over the base combination of Weising,
Kawamoto, and Newhouse because (a) the Examiner properly modified
W eising and Kawamoto with Newhouse; and (b) the combination of
W eising and Kawamoto teaches or suggests "rendering the three-
dimensional VAR scene of the plurality of real images," as recited in
representative claim 1.
DECISION
(1) The Examiner's rejection of claim 1 under 35 U.S.C. § 112(a) as
failing to provide adequate written description of the claimed invention is
reversed.
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Application 11/123,435
(2) The Examiner's obviousness rejections of claims 1-20 under
35 U.S.C. § 103(a) are affirmed.
Because we sustain at least one rejection as to every claim, we affirm.
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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