Ex Parte Vetterli et al

Patent Trial and Appeal BoardNov 30, 2012

09817314 (P.T.A.B. Nov. 30, 2012)

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. 09/817,314 03/26/2001 Martin Vetterli 123593.00106 8869 27557 7590 12/03/2012 BLANK ROME LLP WATERGATE 600 NEW HAMPSHIRE AVENUE, N.W. WASHINGTON, DC 20037 EXAMINER NGUYEN, PHU K ART UNIT PAPER NUMBER 2677 MAIL DATE DELIVERY MODE 12/03/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARTIN VETTERLI and SERGE AYER ____________ Appeal 2012-006815 Application 09/817,314 Technology Center 2600 ____________ Before SCOTT R. BOALICK, DENISE M. POTHIER, and BARBARA A. BENOIT, Administrative Patent Judges. BENOIT, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s non- final rejection of claims 44, 48, 49, and 51. Claim 50 has been allowed (Ans. 3), and claims 1-43 and 45-47 have been cancelled (App. Br. 24). We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held November 16, 2012. We affirm-in-part. Appeal 2012-006815 Application 09/817,314 2 STATEMENT OF THE CASE Appellants’ invention relates to capturing and annotating digital images. See generally Abstract. Most, but not all, of the rejected claims require a mobile phone including a camera. Claims 44 and 49 are illustrative and read as follows, with key disputed limitations emphasized: 44. A computerized method for annotating, comprising the steps of: capturing a digital image of a view having an element with a mobile phone including a camera; selecting an element from the captured image; obtaining an identification of the selected element from the captured image on the basis of the location of the mobile phone and visual cues which can be identified in the captured image; relating the identification to annotating data associated with the element; superimposing said annotating data on said view; and causing the data to be displayed on a display. 49. A computerized method for annotating, comprising the steps of: capturing a digital image of a view having an element with a camera; displaying said view on a display; selecting an element from the captured image to be annotated by pointing on said element on said display; relating the selected element to annotating data associated with the element; and superimposing said annotating data on said view. The Examiner relies on the following as evidence of unpatentability: Ellenby U.S. 6,307,556 B1 Oct. 23, 2001 (Filed Mar. 27, 1995) Harrison U.S. 6,611,725 B1 Aug. 26, 2003 (Filed Sept. 25, 2000) Jharna Majumdar, et al., A CAD Model Based System for Object Recognition, 18 J. OF INTELLIGENT & ROBOTIC SYSTEMS 351-65 (1997). Appeal 2012-006815 Application 09/817,314 3 Eric Rose, et al., Annotating Real-World Objects Using Augmented Reality, TECHNICAL REPORT ECRC-94-41, European Computer-Industry Research Centre GmbH (Forschungszentrum) (1995). The Rejections 1. The Examiner rejected claims 44, 48, 49, and 51 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Ans. 5-7.1 2. The Examiner rejected claims 44 and 48 under 35 U.S.C. § 112, second paragraph, as indefinite. Ans. 8. 3. The Examiner rejected claims 44, 48, 49, and 51 under 35 U.S.C. § 103(a) as unpatentable over Rose, Harrison, and Majumdar. Ans. 8-22. 4. The Examiner rejected claims 44, 48, 49, and 51 under 35 U.S.C. § 103(a) as unpatentable over Rose, Ellenby, and Majumdar. Ans. 22-35. THE ENABLEMENT REJECTION The Examiner finds that the Specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to configure the invention commensurate in scope with the rejected claims, which require selecting and identifying an element in an image. Ans. 5. The Examiner, while acknowledging that the Specification enables some types of objects to be identified, contends that the identification of any object or dynamic objects is not enabled. Ans. 6-7. 1 Throughout this opinion, we refer to (1) the Appeal Brief filed November 23, 2011 (“App. Br.”); (2) the Examiner’s Answer mailed January 18, 2012 (“Ans.”); and (3) the Reply Brief filed March 19, 2012 (“Reply Br.”). Appeal 2012-006815 Application 09/817,314 4 Appellants assert the Examiner erred because the claims do not require all types of objects, including dynamic objects, to be identified in a captured image and the Specification does enable a skilled artisan to make and use the recited selection and identification of an element from the captured image. App. Br. 6-9; Reply Br. 2-5. Issue Under § 112, first paragraph, has the Examiner erred in rejecting claims 44, 48, 49, and 51 as failing to comply with the enablement requirement because the Specification enables a skilled artisan to make and use the claimed invention without undue experimentation? Analysis We do not sustain the Examiner’s enablement rejection. The test for compliance with the enablement requirement is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). To evaluate whether a disclosure would require undue experimentation is a legal conclusion reached by weighing many factual considerations including: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Id. (citations omitted). Appeal 2012-006815 Application 09/817,314 5 Appellants note that the invention selects an element from the captured image and obtains an identification of the selected element on the basis of the location of the mobile phone and visual cues which can be identified in the captured image, as recited by claims 44 and 48. App. Br. 6. The Appellants then elaborate (App. Br. 6-7; Reply Br. 2-5) how the Specification describes selecting and obtaining an identification of an element in a digital image. More particularly, the Specification describes, based on the viewer’s position 2 and cartographic data 1, cartographic features visible from the viewer’s position are able to be determined. App. Br. 6 (citing Spec. ¶ [0017], Fig. 1). Appellants point to an example in which GPS tracking provides the visual position 2 of the mobile phone and the system uses cartographic data 1 to identify cartographic features near the geographical location, resulting in the determination that the body of water in the captured digital image is a particular lake. App. Br. 6 (citing Spec. ¶ [0021-22], Fig. 2). Appellants also indicate that the Specification discloses how the horizon line in the digital image is determined (App. Br. 7 (citing Spec. ¶ [0022- 28])) and how a radio beacon emits information about an object that can be used by a camera in identifying that object in an image (App. Br. 7-8 (citing Spec. ¶ [0037-40], [0045-46])). Appellants indicate the Specification describes methods for selecting an object in the image, including data extraction and correspondence matching (e.g., Spec. ¶ [0017]), and assert that well-known methods for manual or automatic selection of elements exist in the prior art, including in Harrison and Ellenby. App. Br. 9; Reply Br. 4-5. Appeal 2012-006815 Application 09/817,314 6 Appellants maintain that technology to select and identify an element in an image would be readily apparent to a skilled artisan. App. Br. 9. We agree. Based on the prior art applied in this case, and in particular (1) the technical report by Rose describing annotating real-world objects using information from a corresponding model, which among other techniques involves merging graphics with a view of the real object and (2) the journal article by Majumdar describing 3D object recognition, it appears to us that the relative level of skill in this art is high, such that one skilled in the art would be able to implement selecting and identifying an element from a captured digital image based on the disclosure provided in the Specification without undue experimentation. Accordingly, we cannot sustain the rejection of claims 44, 48, 49, and 51 under § 112, first paragraph as failing to comply with the enablement requirement. THE INDEFINITENESS REJECTION Regarding independent claims 44 and 48, the Examiner finds the term “can” as recited in the limitation “visual cues which can be identified” to be a relative term that is ambiguous and fails to define the scope of the invention. Ans. 8. In challenging the Examiner’s indefiniteness rejection, Appellants assert the term “can” is not a relative term and also assert the scope of the claim is defined as recited–namely, the claim scope extends to those visual cues which can be identified in the captured image and does not encompass identification that is based on a visual cue that cannot be identified from the captured image. App. Br. 10. Appeal 2012-006815 Application 09/817,314 7 Issue Has the Examiner erred in rejecting claims 44 and 48 under § 112, second paragraph, by finding that the term “can” renders the claims indefinite? Analysis We also do not sustain the Examiner's indefiniteness rejection. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Such is the case here–the bounds of the invention are sufficiently demarcated such that a skilled artisan would understand. The recited limitation is clear when read in the context of the claimed invention and in light of the Specification. The claim encompasses visual cues which can be identified in the captured image and does not encompass visual cues which cannot be identified in the captured image. Nor is the claim term amenable to two or more plausible constructions in this context. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (stating “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. §112, second paragraph, as indefinite.”). Rather, the term “visual cues which can be identified in the captured image” is simply broad, which does not equate to indefiniteness. In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not indefiniteness.”). Appeal 2012-006815 Application 09/817,314 8 We therefore are persuaded that the Examiner's indefiniteness rejection of claims 44 and 48 is erroneous. THE OBVIOUSNESS REJECTIONS OF CLAIMS 44, 48, and 51 Regarding illustrative claim 44, the Examiner acknowledges, in both the § 103 rejection over Rose, Harrison, and Majumdar and the § 103 rejection over Rose, Ellenby, and Majumdar, that Rose does not teach that the camera is included in a mobile phone. Ans. 10, 23-24. Nor does the Examiner rely on Harris, Majumdar, or Ellenby, alone or in combination with Rose, for teaching a mobile phone including a camera. Id. Rather, the Examiner finds, because the recited mobile phone has no involvement in the process of capturing an image, selecting an element for annotating, finding and displaying the annotating data on the display, that the capture of images by a camera included in a mobile phone is “just a matter of design choice.” Ans. 10, 24. Appellants challenge the Examiner’s finding, asserting the mobile phone including a camera is not a design choice and, moreover, that the Examiner has not made any showing that mobile phones with a camera were known at the priority date of the invention. App. Br. 15; see also Reply Br. 6-8. Issue Under § 103, has the Examiner erred in rejecting claims 44, 48, and 51, where none of the applied references teaches or suggests a mobile phone including a camera, by finding that a mobile phone having a camera in the claimed invention? Appeal 2012-006815 Application 09/817,314 9 Analysis Based on the record before us, we are persuaded of error in the Examiner’s rejections of claim 44 which recites, “capturing a digital image of a view having an element with a mobile phone including a camera.” We are not convinced that a mobile phone including a camera is a design choice in this context where none of the applied references describe a mobile phone including a camera. A design choice may be an obviousness rearrangement of elements. See In re Japikse, 181 F.2d 1019 (CCPA 1950) (concluding claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553 (CCPA 1975) (holding the particular placement of a contact in a conductivity measuring device to be an obvious matter of design choice); accord In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (where placement of a catalyst within a bag retainer was not a design choice from the totality of the record). Here, the Examiner has not merely concluded a rearrangement of prior art elements as a design choice. Rather, the Examiner has failed to cite prior art that teaches or suggests a recited element–namely, a mobile phone including a camera—was known. From this record, cannot say that a mobile phone with a camera is merely an obvious design choice. Because the Examiner’s obviousness rejections were not based on some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness, we do not sustain the obviousness rejections of independent claim 44 over Rose, Harrison, and Majumdar and Appeal 2012-006815 Application 09/817,314 10 over Rose, Ellenby, and Majumdar. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Independent claims 48 and 51 each require a mobile phone including a camera. Independent claim 48 recites “a mobile phone including a camera for capturing a digital image of a view having an element,” whereas independent claim 51 recites, “capturing a digital image of a view having an element with a camera in a mobile phone.” Claims 48 and 51 have been rejected by the Examiner for substantially the same reasons as claim 44. We therefore do not sustain the rejections of independent claims 48 and 51 under § 103 over Rose, Harrison, and Majumdar and under § 103 over Rose, Ellenby, and Majumdar for the same reasons discussed above with respect to claim 44. THE OBVIOUSNESS REJECTIONS OF CLAIM 49 Regarding illustrative claim 49, the Examiner finds, in pertinent part, that Rose teaches selecting an element from the captured image to be annotated (Ans. 16) and that Rose suggests doing so based on teaching pointing on the element on the display (Ans. 17). Appellants assert, among other things addressed below, the Examiner erred in finding that Rose teaches or suggests “selecting an element from the captured image to be annotated by pointing on said element on said display,” recited by claim 49. App. Br. 11-12; Reply Br. 7. Appeal 2012-006815 Application 09/817,314 11 Issue Under § 103, has the Examiner erred in finding Rose teaches or suggests selecting an element from the captured image to be annotated by pointing on the element on the display? Analysis Based on this record, we are not persuaded of error in the Examiner’s rejections of claim 49 as obvious under § 103. In general, Rose describes annotating real-world objects using information from a corresponding model. Rose, Abstract. Rose uses a camera directed at an object of interest (such as an engine) to display an image of the object on a video monitor a video monitor. Id. at 2. Rose then matches the computer representation of the object with the real object and maintains the correspondence of the real-world object to the computer model as the camera moves. Rose describes displaying annotations on the computer monitor that appear in proper context in the user’s view. See Rose, Fig. 1.1 (depicting an augmented reality view of an engine showing annotated labels on the computer model with lines pointing to corresponding parts of the engine). Rose further describes how model annotations are displayed, including choosing an “annotation point” to determine whether a component of the model encompassing the annotation point is visible. Rose 10; see also Fig. 6.1 (depicting a view of an object with the computer model superimposed, showing the correspondence between the computer model and the real object). The Examiner cites this description in Rose as teaching, “selecting an element from the captured image to be annotated,” as recited in claim 49. Ans. 16. Appeal 2012-006815 Application 09/817,314 12 Rose also discloses a six degrees of freedom (6D) magnetic tracker which provides the computer with continually updated values for the position and orientation of the video camera, a tracked object, and the pointing device. Rose 5. The Examiner finds that Rose teaches selecting of the displayed image by looking at the picture and using a picking device, appearing on the monitor’s screen, to point at the component showed on the monitor’s screen. Ans. 17 (citing Rose 9 which describes dynamic determination of visible components during rendering). The Examiner concludes, based on this teaching, that Rose suggests the recited pointing on the element on the display. Ans. 17. Based on this functionality, we do not perceive error in the Examiner’s finding that Rose teaches or suggests selecting an element from the captured image to be annotated by pointing on said element on said display, as recited by claim 49. Appellants argue that their previous discussions regarding (1) a mobile phone and (2) selecting an element from the captured image are applicable to claim 49. App. Br. 17; see also App. Br. 11-12; Reply Br. 7. Because claim 49 does not recite a mobile phone, we are not persuaded by Appellants’ arguments which are not commensurate with the scope of claim 49. Nor are we persuaded by Appellants’ arguments that Rose does not select an element from the captured image. Appellants contend that the claimed invention is more versatile than Rose’s techniques for selecting an object, which relies on a “complicated and expensive” pointing device, requires calibration of the object, and works on different types of objects than the claimed invention. App. Br. 11. Appellants’ arguments are not persuasive because they are not commensurate with the Appeal 2012-006815 Application 09/817,314 13 scope of the claim. Claim 44 recites, “selecting an element from the captured image to be annotated by pointing on said element on said display” and does not further limit the claim regarding the type of pointing device, calibration of the object included in the captured image, or types of objects included in the captured image. On balance, the weight of the evidence favors the Examiner. Thus, we are not persuaded of Examiner error in finding that Rose teaches or suggests, based on the functionality described in Rose, selecting an element from the captured image to be annotated by pointing on the element on the display, as recited by claim 49. We are unpersuaded by Appellants’ argument that the Examiner improperly combines Rose and Harrison because Rose teaches selecting a component of a real 3D object, whereas Harrison teaches selecting a component from a 2D CAD drawing. App. Br. 13. Appellants’ arguments unduly focus on the specific structures present in the prior art and ignore the capabilities of the skilled artisan. The test for obviousness is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, as noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 550 U.S. at 421. To the extent that Appellants argue that the combination requires an actual substitution of elements, this argument is unavailing. See In re Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . .”). Accordingly, we are not persuaded of error in the Examiner’s proposed combination of Rose, Harrison, and Majumdar, which Appeal 2012-006815 Application 09/817,314 14 predictably uses prior art elements according to their established functions— an obvious improvement. See KSR, 550 U.S. at 417. Therefore, we sustain the rejection of claim 49 under § 103 over Rose, Harrison, and Majumdar. With regard to the rejection of claim 49 under § 103 over Rose, Ellenby, and Majumdar, Appellants make substantially the same arguments that Rose does not teach or suggest selecting an element from the captured image to be annotated by pointing on the element on the display as made for the § 103 rejection over Rose, Ellenby, and Majumdar. App. Br. 22. We are not persuaded for the reasons discussed above with regard to the § 103 rejection over Rose, Harrison, and Majumdar. Appellants contend Ellenby and Majumdar also fail to teach or suggest the selecting limitation. App. Br. 22. This is not persuasive for the Examiner relies on Rose, not Ellenby or Majumdar, for the selecting limitation. Ans. 29-32. We therefore are not persuaded of error in the rejection of claim 49 under § 103 over Rose, Harrison, and Majumdar. CONCLUSION The Examiner erred in rejecting claims 44, 48, 49, and 51 under § 112, first paragraph as failing to comply with the enablement requirement. The Examiner also erred in rejecting claims 44 and 48 under § 112, second paragraph for indefiniteness. Under § 103 over Rose, Harrison, and Majumdar and over Rose, Ellenby, and Majumdar, the Examiner did not err in rejecting claim 49 but erred in rejecting claims 44, 48, and 51. Appeal 2012-006815 Application 09/817,314 15 ORDER The Examiner’s decision rejecting claims 44, 48, 49, and 51 is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART gvw