Ex Parte Robbins et al

Patent Trial and Appeal BoardMay 18, 2018

13927025 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/927,025 06/25/2013 69316 7590 05/22/2018 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 FIRST NAMED INVENTOR Steve Robbins 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. 338957.01 4633 EXAMINER SUH, JOSEPH JINWOO ART UNIT PAPER NUMBER 2485 NOTIFICATION DATE DELIVERY MODE 05/22/2018 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): usdocket@microsoft.com chriochs@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVE ROBBINS, SCOTT MCELDOWNEY, XINYE LOU, DAVID NISTER, DREW STEEDL Y, QUENTIN SIMON CHARLES MILLER, DAVID D. BOHN, JAMES PEELE TERRELL JR., ANDREW C. GORIS, and NATHAN ACKERMAN 1 Appeal2017-011660 Application 13/927 ,025 Technology Center 2400 Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA II, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-5 and 7-20, 2 which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Appellant is the Applicant, Microsoft Technology Licensing, LLC, which, according to the Appeal Brief, is the real party in interest. See App. Br. 3. 2 The Examiner has stated that claim 6 would be allowable if rewritten in independent form. Final Act. 28. We note, however, the Examiner has rejected claim 6 for obviousness-type double patenting (Final Act. 29-31 ). Appeal2017-011660 Application 13/927,025 STATEMENT OF THE CASE According to Appellant, the claims are directed to a see-through head- mounted display system which includes gaze-detection; the system provides display and gaze-detection using a prism to emit and receive light. Spec. i-f 2, Abstract. 3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A see-through head-mounted display system comprising: an illumination prism including a display-facing side, an eye-facing side, a camera-facing side between the display-facing side and the eye-facing side, and an interior beam splitter; a freeform prism; a display device configured to emit display light toward the display-facing side of the illumination prism and through the freeform prism to an eye of a user, the illumination prism positioned to receive the display light from the display device at the display-facing side and to transmit the display light from the display device through the beam splitter and the eye-facing side to the freeform prism; and an imaging device configured to receive gaze-detection light reflected from the eye and directed through the freeform prism and the illumination prism, the illumination prism positioned to receive, at the eye-facing side, the gaze-detection light as reflected from the eye and to reflect the gaze-detection light at the beam splitter through the camera-facing side to the imaging device, the illumination prism positioned optically intermediate the display device and the freeform prism, optically intermediate the imaging device and the freeform prism, and optically separated from the freeform prism. 3 This Decision refers to: (1) Appellant's Specification filed June 25, 2013 (Spec.); (2) the Final Office Action (Final Act.) mailed November 28, 2016; (3) the Appeal Brief (App. Br.) filed April 28, 2017; (4) the Examiner's Answer (Ans.) mailed July 20, 2017; and (5) the Reply Brief (Reply Br.) filed September 19, 2017. 2 Appeal2017-011660 Application 13/927,025 REFERENCES AND REJECTIONS Claims 1-20 stand provisionally rejected for obviousness-type double patenting based on the claims of U.S. Patent Application No. 13/926,968. Final Act. (29-43). Claims 1, 2, 10, 11, and 13 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Inoguchi (US 2002/0034016 Al; published Mar. 21, 2002) and Mihashi (US 2006/0215111 Al; published Sept. 28, 2006). Final Act. 3-7. Claim 3 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Inoguchi, Mihashi, and Lu (US 2005/0122464 Al; published June 9, 2005). Id. at 8-9. Claims 4, 5, 7, and 14--19 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Inoguchi, Mihashi, and Gustafsson (US 2008/0024392 Al; published Jan. 31, 2008). Id. at 9-15, 19-25. Claim 8 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Inoguchi, Mihashi, and Staveley (EP 0 408 344 A3; published Jan. 16, 1991). Id. at 16-17. Claim 9 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Inoguchi, Mihashi, Staveley, and Steinle (US 5,044,727; issued Sept. 3, 1991). Id. at 17-18. Claim 12 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Inoguchi, Mihashi, and Russo (US 4,731,462; issued Mar. 15, 1988). Id. at 18-19. Claim 20 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Inoguchi, Mihashi, and Hua (US 2014/0361957 Al; published Dec. 11, 2014). Id. at 25-26. 3 Appeal2017-011660 Application 13/927,025 Our review in this appeal is limited only to the above rejections and the issues raised by Appellant. Arguments not made are waived. See MPEP Â§ 1205.02; 37 C.F.R. Â§Â§ 41.37(c)(l)(iv) and 41.39(a)(l). ANALYSIS Obviousness-type Double Patenting In the Final Action, the Examiner provisionally rejected claim 1 for obviousness-type double patenting based on the claims of U.S. Patent Application No. 13/926,968 ("the '968 application") (Final Act. 29--31) and claims 2-20 for obviousness-type double patenting based on the claims of the '968 application and Inoguchi (Final Act. 32--43). The '968 application has since issued as US 9,625,723 B2. Because the scope of the claims in the issued patent may be different from the claims in the application used in the provisional obviousness-type double patenting rejection, we decline to reach the merits of the rejection. Should Appellant choose to continue prosecution, we leave it to the Examiner to determine the propriety of the rejection. ExparteJerg, 2012 WL 1375142, *3 (BPAI 2012) (informative) ("Panels have the flexibility to reach or not reach provisional obviousness- type double-patenting rejections."). 35 USCÂ§ 103(a) Appellant contends the Examiner erred in finding the combination of Inoguchi and Mihashi teaches "an illumination prism including a display- facing side, an eye-facing side, [and] a camera-facing side between the display-facing side and the eye-facing side," as recited in claim 1. See App. Br. 14--19; see also Reply Br. 2---6. Specifically, Appellant argues, in combining Inoguchi and Mihashi, "either the display functionality or the 4 Appeal2017-011660 Application 13/927,025 eye-tracking functionality (or both) would be destroyed," and, therefore, the combination "would no longer include an illumination prism having a display-facing side" or "a camera-facing side." App. Br. 17; see App. Br. 18-19; see also Reply Br. 4---6. We are not persuaded. The Examiner finds, and we agree, Inoguchi teaches "an illumination prism including a display-facing side [and] an eye- facing side." Final Act. 3--4. In particular, Inoguchi's "illumination system" includes "prism 73" with "display device 51" positioned at one side of prism 73, i.e., "a display-facing side," and an observer's eye positioned at the opposite side of prism 73, i.e., "an eye-facing side." Inoguchi Fig. 3, i-f 11. 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