Ex Parte Uusitalo et al

Patent Trial and Appeal Board

Mar 29, 2017

13849208 (P.T.A.B. Mar. 29, 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.
13/849,208 03/22/2013 Mikko Aleksi Uusitalo 042933/454437 1811
10949 7590
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
CRADDOCK, ROBERT J
ART UNIT PAPER NUMBER
2618
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKKO ALEKSIUUSITALO,
SERGEY BOLDYREV, JARI-JUKKA
HARALD KAAJA, and DAVID JOSEPH MURPHY
Appeal 2016-006731
Application 13/849,2081
Technology Center 2600
Before STEPHEN C. SIU, LARRY J. HUME, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1—9, 11—19, 21, and 22. Appellants have canceled
claims 10 and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Nokia Technologies
Oy. App. Br. 2.
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Application 13/849,208
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions relate to "local
synchronization of information for augmented reality objects." Abstract.
Exemplary Claims
Claims 1, 5, and 6, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A method comprising:
receiving an indication of at least one augmented reality
object associated with an augmented reality information space;
receiving an indication of local information from a first
device based, at least in part, on a relevancy of the local
information to the at least one augmented reality object;
receiving an indication of at least a second device
proximate to the first device; and
in response to the indication of the at least the second
device proximate to the first device, causing transmittal of the
local information to the second device and presentation of the
local information on the second device as one or more layers of
an augmented reality user interface depicting the at least one
augmented reality object.
5. The method of claim 1, wherein the local
information is transmitted to the second device in response to at
least a network connectivity failure associated with the second
device.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 19, 2015); Reply Brief ("Reply Br.," filed June 22, 2016); Examiner's
Answer ("Ans.," mailed Apr. 22, 2016); Final Office Action ("Final Act.,"
mailed May 18, 2015); and the original Specification ("Spec.," filed
Mar. 22, 2013).
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6. The method of claim 1, wherein the local
information includes, at least in part, lightweight data and
bulky data, and the lightweight data is transmitted to the second
device by a first connectivity means; and the bulky data is
transmitted to the second device by a second connectivity
means.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Van Wie et al. ("Van Wie") US 2010/0146085 A1 June 10, 2010
Bilbrey et al. ("Bilbrey") US 2011/0164163 Al July 7, 2011
Song et al. ("Song") US 2013/0072116 Al Mar. 21,2013
Rejections on Appeal
Rl. Claims 1, 2, 4, 6—9, 11, 12, 14, 16—19, 21, and 22 are rejected
under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by Bilbrey.
Final Act. 4.
R2: Claim 3 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bilbrey and Song. Final Act. 7.
R3. Claim 5 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bilbrey and Van Wie. Final
Act. 9.
CFAIM GROUPING
Based on Appellants' arguments (App. Br. 8—14), we decide the
appeal of anticipation Rejection Rl of claims 1, 2, 4, 7—9, 11, 12, 14, 17—19,
21, and 22 on the basis of representative claim 1; and we decide the appeal
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of anticipation Rejection R1 of claims 6 and 16 on the basis of representative
claim 6.
We decide the appeal of obviousness Rejection R3 of claims 5 and 15
on the basis of representative claim 5.
Remaining claims 3 and 13 in Rejection R2, not argued separately or
with specificity, stand or fall with the respective independent claim from
which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1—9,
11—19, 21, and 22, and we incorporate herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellants' arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv)
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker,
702 F.2d 989, 991 (Fed. Cir. 1983).
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However, we highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
1. §§ 102(a)(1) and 102(a)(2) Rejection R1 of Claims 1, 2, 4, 7—9, If
12. 14. 17-19. 21. and 22
Issue 1
Appellants argue (App. Br. 8—11; Reply Br. 1—3) the Examiner's
rejection of claim 1 under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being
anticipated by Bilbrey is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia,
in response to the indication of the at least the second device
proximate to the first device, causing transmittal of the local
information to the second device and presentation of the local
information on the second device as one or more layers of an
augmented reality user interface depicting the at least one
augmented reality object,
as recited in claim 1?
Analysis
Appellants contend "Bilbrey discusses synchronizing data for use with
an augmented reality display to a host system or other devices. However,
Bilbrey does not suggest that the synchronization (other any other
information transmittal) occurs in response to the devices being proximate
to each other, as set forth by the independent claims." App. Br. 8. Further,
"[tjhere is nothing in Bilbrey to suggest that information is transmitted in
response to the indication of the at least the second device being proximate
to the first device, as set forth by the independent claims." Id. at 9.
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Appellants make further arguments alleging Bilbrey does not disclose
an indication that the second device is proximate4 to the first device because
the reference illustrates devices in communication around comers of large
buildings, and the use of Internet communications, and that "Bilbrey is
indeed silent regarding how the initial communication is initiated." Id.
The Examiner cites Bilbrey paragraph 34 and Figure 2B as disclosing
"[t]he communication link can be a direct communication link or an indirect
communication link using wireless network access points (e.g., WiFi access
points). The communication link can also include a wide area network, such
as the Internet. [] The [EJxaminer notes direct communication links suggests
proximity." Ans. 4 (emphasis added).
"In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own
4 With respect to the recitation of the term "proximate," Appellants state,
"[w]hen a second device comes in close range of the particular location
while viewing a similar augmented reality information space, the local
information may be transmitted to the second device. For example, at least
some of the local information may be transmitted by a near field
communication protocol." App. Br. 8. We note Appellants do not recite
"near field communication" as defining "proximate" in the argued claims,
and we do not import such a limitation into the independent claims.
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lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description."). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted).
We note Appellants have not cited to a definition of "proximate" in
the Specification that would preclude the Examiner's broader reading cited
above.
In the Reply Brief, Appellants allege:
A disclosure in Bilbrey that in some instances two devices may
be directly connected does not anticipate the cause-effect
relationship set forth by the claim recitation, "in response to the
indication of the at least the second device proximate to the first
device, causing transmittal of the local information to the
second device and presentation of the local information on the
second device as one or more layers of an augmented reality
user interface depicting the at least one augmented reality
object."
Reply Br. 2.
In response, we note the Examiner cited Bilbrey paragraphs 32—34
and Figure 2A-B as disclosing the contested limitation. Final Act. 4. In
light of the broad but reasonable interpretation of "proximate," i.e., relative
locations that allows direct communication, we find Bilbrey discloses the
recited "causing transmittal of the local information to the second device."
"FIG. 2B illustrates synchronizing split screen displays of first and second
devices 200a, 200b. In the example shown, device 200a has established
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communication with device 200b." Bilbrey ]f 34. Under the broad
interpretation of "proximate," we find communication in Bilbrey does not
occur if the devices are not "proximate," such that the transmission of the
local information to the second device is necessarily in response to some
indication of proximity.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the disclosure of the cited
prior art to disclose the disputed limitation of claim 1, nor do we find error
in the Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1, and grouped
claims 2, 4, 7—9, 11, 12, 14, 17—19, 21, and 22, which fall therewith. See
Claim Grouping, supra.
2. §§ 102(a)(1) and 102(a)(2) Rejection R1 of Claims 6 and 16
Issue 2
Appellants argue (App. Br. 11—12) the Examiner's rejection of claim 6
under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by Bilbrey
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1, "wherein the local information includes,
at least in part, lightweight data and bulky data, and the lightweight data is
transmitted to the second device by a first connectivity means; and the bulky
data is transmitted to the second device by a second connectivity means," as
recited in claim 6?
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Analysis
Appellants contend:
[t]he claims recite in some form or another, "local information
includes, at least in part, lightweight data and bulky data, and
the lightweight data is transmitted to the second device by a
first connectivity means; and the bulky data is transmitted to the
second device by a second connectivity means."
App. Br. 11. Appellants further argue, "there is no disclosure that the
information layer or annotation is transmitted by Bluetoothâ„¢ protocol and
the live video by WiFi." Id.
We find Appellants' arguments are not commensurate with the scope
of the claim which merely recites "the lightweight data is transmitted to the
second device by a first connectivity means; and the bulky data is
transmitted to the second device by a second connectivity means." We find
the claim does not require the first and second connectivity means to be
different protocols, and further does not require a particular type of protocol
for the lightweight data or the bulky data.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the disclosure of the cited
prior art to disclose the disputed limitation of claim 6, nor do we find error
in the Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of dependent claim 6, and grouped
claim 16, which falls therewith. See Claim Grouping, supra.
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3. $$ 103(a) Rejection R3 of Claims 5 and 15
Issue 3
Appellants argue (App. Br. 12—14) the Examiner's rejection of claim 5
under 35 U.S.C. § 103(a) as being obvious over the combination of Bilbrey
and Van Wie is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1, "wherein the local information is
transmitted to the second device in response to at least a network
connectivity failure associated with the second device," as recited in
claim 5?
Analysis
In addition to arguing Bilbrey does not teach or suggest the limitations
of claim 1 from which claim 5 depends, Appellants contend Van Wie does
not teach that for which the Examiner suggests. App. Br. 13.
In particular, Appellants argue paragraph 496 of Van Wie does not
teach or suggest the limitation "wherein the local information is transmitted
to the second device in response to at least a network connectivity failure."
Id. Instead, Van Wie purportedly teaches an attempt to reconnect after a lost
connection, or connection failure, and does not teach transmitting local
information to a device. Id.
We disagree with Appellants' contention, which argues the references
separately. The Examiner relies upon Bilbrey as teaching transmission of
local information, and upon Van Wie for the limited purpose of teaching
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connection restoration in the event the connection was lost before the data
was transmitted.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the disclosure of the cited
prior art combination to teach or suggest the disputed limitation of claim 5,
nor do we find error in the Examiner's resulting legal conclusion of
obviousness. Therefore, we sustain the Examiner's obviousness rejection of
dependent claim 5, and grouped claim 15, which falls therewith. See Claim
Grouping, supra.
4. $103 Rejection R2 of Claims 3 and 13
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claims 3 and 13 under § 103 (see App.
Br. 12), we sustain the Examiner's rejection of these claims. Arguments not
made are waived.5
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1—3) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
5 Appellants merely argue, "[cjlaims 3 and 13 are patentable over the cited
combination due at least to the failures of Bilbrey." App. Br. 12.
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CONCLUSIONS
(1) The Examiner did not err with respect to anticipation Rejection
R1 of claims 1, 2, 4, 6—9, 11, 12, 14, 16—19, 21, and 22 under 35 U.S.C.
§§ 102(a)(1) and 102(a)(2) over the cited prior art of record, and we sustain
the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 3, 5, 13, and 15 under 35 U.S.C. § 103(a)
over the cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1—9, 11—19, 21,
and 22.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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