Ex Parte Shintani

Patent Trial and Appeal Board

Aug 17, 2017

12849167 (P.T.A.B. Aug. 17, 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.
12/849,167 08/03/2010 Peter Shintani SA100081-US-NP 7337
36738 7590 08/21/2017
ROrTTT7 fr ASSOPTATRS
EXAMINER
750 B STREET STITT, ERIK V
SUITE 3120
SAN DIEGO, CA 92101 ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
Noelle@rogitz.com
eofficeaction @ appcoll.com
John@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SHINTANI
Appeal 2015-000014
Application 12/849,167
Technology Center 2100
Before JUSTIN BUSCH, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1—3, 6—11, and 14—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse and enter a new ground of rejection.
Appeal 2015-000014
Application 12/849,167
CLAIMED SUBJECT MATTER
Claims 1, 9, and 17 are independent claims. The claims relate
generally to virtually moving a user interface (UI) along a z-axis of a display
plane of a three-dimensional (3D) video display in response to user input to
change the location of the interface. Spec. Abstract. Claim 1 is reproduced
below:
1. Video display device comprising:
processor;
video display controlled by the processor, the video
display defining a display plane and a z-axis perpendicular
to the display plane;
user input device communicating with the processor
to send user selection signals to the processor;
the processor executing logic comprising:
responsive to a viewer selection of a user
interface (UI), presenting a UI object in a graphics
plane of the video display device, the UI object
being rendered in 3D by presenting two identical
overlapping images of the UI object separated from
each other by disparity distance;
responsive to a first command from the user
input device, causing the UI object to appear to
move in a first direction along the z-axis by
increasing the disparity;
responsive to a second command from the
user input device, causing the UI object to appear to
move in a second direction along the z-axis by
decreasing the disparity, the first direction being
opposite to the second direction.
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Application 12/849,167
REJECTIONS
Claims 1—3, 7, 9-11, 15, and 17—20 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Ewing (US 2011/0291945 Al; Dec. 1, 2011).
Non-Final Act. 3—6.
Claims 17—20 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Nevins (US 2009/0164439 Al; June 25, 2009). Non-Final Act. 7—8.
Claims 6, 8, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ewing and Nevins. Non-Final Act. 8—10.
OPINION
As an initial matter, we note the Examiner included claims 17—20 in
the statement of the rejection of claims anticipated by Ewing. Non-Final
Act. 3. However, as argued by Appellant, App. Br. 7, the Examiner
provides no explanation or basis for such a rejection. Accordingly, we
reverse any such pending rejection because the Examiner has failed to
establish a prima facie case that claims 17—20 are properly rejected as
anticipated by Ewing. We address each of Appellant’s other contentions
below.
Anticipation Rejection of Claims 1-3.7.9-11.15
Appellant contends Ewing does not anticipate independent claims 1,
9, and 17 because Ewing fails to disclose: (1) separate display and graphics
planes; (2) displaying a single UI object in 3D; (3) two identical overlapping
images of a single UI object, separated by a disparity distance; and (4)
causing the appearance of movement of the UI object by changing the
disparity. App. Br. 4—6.
Ewing is directed to scrolling through items along a z-axis through
various controls or inputs. Ewing 117. Ewing discloses “stacks of items”
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Appeal 2015-000014
Application 12/849,167
that are displayed and are “browsable forward or backward along the z-axis
direction.” Id. 118. Ewing depicts exemplary implementations in its
figures, including depicting stacks of items or applications that appear to be
at different distances along the z-axis of the display (i.e., two-dimensional
items that are distinguishably located within a third dimension). Ewing 122,
Fig. 1.
Many of Appellant’s arguments can be summarized as asserting that
the items described and depicted as “stacked” in Ewing are not 3D objects
that are displayed and manipulated as recited in claim 1. App. Br. 5—6. The
Examiner responds that Figure 1 of Ewing shows ‘“presenting two
overlapping images of the UI object separated from each other by disparity
distance’ for the purpose to create the illusion of a 3D perspective.” Ans. 3.
We agree with the Examiner that Ewing discloses creating the illusion
of a third dimension in its display so that the user interface objects appear to
move along the z-axis. Nevertheless, claim 1 recites “the UI object being
rendered in 3D by presenting two identical overlapping images of the UI
object separated from each other by disparity distance” and “causing the UI
object to appear to move . . . along the z-axis by increasing [/decreasing] the
disparity.” Although Appellant acknowledges that rendering an object in 3D
by presenting two identical overlapping images of the same object separated
by a disparity distance is not new, see Spec. 1, the Examiner has not
identified any objects in Ewing that are “rendered in 3D,” let alone any
rendering of the objects as claimed. Additionally, although the Examiner
has demonstrated that Ewing discloses causing the UI objects to appear to
move along the z-axis relative to each other, the Examiner has not
demonstrated that is done as recited (i.e., by changing the disparity distance
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Appeal 2015-000014
Application 12/849,167
between two identical overlapping images). Claims 2, 3, and 7 depend from
claim 1 and incorporate the same features.
Appellant further argues the Examiner merely stated claim 9 “is
similar in scope to claim 1 and is rejected under similar rationale,” but that
the Examiner failed to identify any element in Ewing that allegedly discloses
the recited “alpha blend,” recited in claim 9 and not recited in claim 1. App.
Br. 6. In the Answer, the Examiner did not respond to Appellant’s argument
or explain why the scope of claim 9 should be considered the same as claim
1 for purposes of the application of Ewing as an anticipatory reference. See
Ans. 1—4. In the rejection of claims 10, 11, and 15, the Examiner provides
no further explanation regarding the “alpha blend,” recited in claim 9 and
incorporated in claims 10, 11, and 15, via their ultimate dependency from
claim 9.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987). Accordingly, the Examiner has failed to present a
prima facie case of anticipation of claim 9—11 and 15. On this record, we
are constrained to reverse the Examiner’s rejection of claims 1—3, 7, 9—11,
and 15 for the reasons discussed above.
Obviousness Rejection of Claims 6. 8.14. and 16
Claims 6 and 8 depend from independent claim 1 and claims 14 and
16 depend from independent claim 9. Appellant presents other arguments
with respect to the patentability of claims 6, 8, 14, and 16. App. Br. 7—8.
However, because Nevins is not relied upon to cure the deficiencies of the
rejection of claims 1 and 9, from which each of claims 6, 8, 14, and 16
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Application 12/849,167
ultimately depend, we need not address Appellant’s other arguments. For
the reasons discussed above, and because Nevins is not relied upon the cure
the identified deficiencies, we are constrained on this record to reverse the
Examiner’s rejection of claims 6, 8, 14, and 16.
Anticipation Rejection of Claims 17-20 by Nevins
Appellant argues Nevins fails to anticipate claims 17—20 because the
claims recite a “move up indicator arrow” and a “move back indicator
arrow,” and Nevins does not disclose an indicator arrow. App. Br. 7. The
Examiner never identified an indicator arrow in Nevins, see Non-Final
Act. 7, and does not respond to Appellant’s contention in the Answer.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros., 814 F.2d at 631. Accordingly, on this
record, we are constrained to reverse the Examiner’s rejection of claims 17—
20.
Summary of Pending Rejections
On this record, we are persuaded the Examiner erred in rejecting:
claims 1—3, 7, 9-11, 15, and 17—20 under 35 U.S.C. § 102(e) as anticipated
by Ewing; claims 17—20 under 35 U.S.C. § 102(e) as anticipated by Nevins;
and claims 6, 8, 14, and 16 under 35 U.S.C. § 103(a) as obvious in view of
the combined teachings of Ewing and Nevins.
New Ground of Rejection of Claims 14 and 15
Claims 14 and 15 depend from claim 12, which has been cancelled.
Because claims 14 and 15 depend from a cancelled claim, one of ordinary
skill in the art would be unable to determine the metes and bounds of these
claims. Therefore, we reject claims 14 and 15 under 35 U.S.C. § 112 12.
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Proper dependent claims “contain a reference to a previous claim in the
same application” and “specify a further limitation of the subject matter
claimed.” MPEP § 608.01(n)(I). Accordingly, we also newly reject claims
14 and 15 for failing to comply with 35 U.S.C. § 112 14.
New Ground of Rejection of Claims 17-20
We enter a new ground of rejection of claims 17—20 as obvious in
view of the teachings of Nevins. We adopt the Examiner’s findings from
pages 7 and 8 of the Non-Final Office Action with respect to the disclosures
in Nevins relating to claims 17—20. However, as discussed above, the
Examiner failed to point to an “indicator arrow,” as recited in claim 17 and,
therefore, failed to demonstrate that claims 17—20 are anticipated by Nevins.
However, in the paragraphs cited by the Examiner, Nevins further discloses
that a “cursor (not shown) may be used in certain embodiments to determine
the portion of the timeline along the z-axis.” Nevins 1115. An ordinarily
skilled artisan would have known that one option for displaying such a
cursor would be a scroll bar that includes a scroll up and a scroll down error,
which would at least suggest the recited “‘move up’ indicator arrow” and
“‘move back’ indicator arrow.” Accordingly, with this additional suggestion
gleaned from Nevins, claims 17—20 would have been obvious to a person of
ordinarily skill in the art, and we reject claims 17—20 under 35 U.S.C.
§ 103(a).
DECISION
For the reasons discussed above, we reverse the Examiner’s decision
to reject claims 1—3, 6—11, and 14—20.
We enter a new ground of rejection for claims 14 and 15 under
35 U.S.C. § 112.
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Application 12/849,167
We enter a new ground of rejection for claims 17—20 under 35 U.S.C.
§103.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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Appeal 2015-000014
Application 12/849,167
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
REVERSED
37 C.F.R, $ 41.50(b)
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