Magic Leap, Inc.

Patent Trials and Appeals Board

May 12, 2021

2019006711 (P.T.A.B. May. 12, 2021)

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.
14/704,971 05/06/2015 Brian T. Schowengerdt ML.20006.303 4764
132471 7590 05/12/2021
Vista IP Law Group, LLP (Magic Leap, Inc.)
2160 Lundy Ave., Ste. 230
San Jose, CA 95131
EXAMINER
SUN, HAI TAO
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
05/12/2021 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):
docketing@viplawgroup.com
sp@viplawgroup.com
vlm@viplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN T. SCHOWENGERDT and SAMUEL A. MILLER
Appeal 2019-006711
Application 14/704,971
Technology Center 2600

Before CAROLYN D. THOMAS, JASON V. MORGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20, which are all of the claims pending and under
consideration in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Magic Leap, Inc.
Appeal Brief filed June 24, 2019 (“Appeal Br.”) 2.
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CLAIMED SUBJECT MATTER
Summary
Appellant’s claimed subject matter relates to implementing “accurate
and low latency head pose detection” in “head-tracked display systems.”
Spec. ¶ 9.2 According to Appellant, “[i]f the latency [in the head-tracked
display system] is high, the system can create a mismatch between the user’s
vestibular and visual sensory systems, and generate motion sickness or
simulator sickness.” Id. ¶ 6.
Exemplary Claims
Claims 1 and 18 are independent. Claims 1 and 3, reproduced below
with certain limitations at issue italicized, exemplify the claimed subject
matter:
1. A method of operation in a virtual image
presentation system, the method comprising:
rendering a first complete frame having a first portion
and a second portion to an image buffer;
displaying a first frame in a sequence of frames for
virtual contents in a field of view of a user at least by retrieving
at least a portion of the first complete frame from the image
buffer and projecting light beams corresponding to the at least
the portion of the first complete frame to at least one eye of the
user with a projector of a virtual image presentation system;
determining an updated first portion to the first portion in
the first complete frame based at least in part upon a predicted
location of a virtual object for displaying in a subsequent frame
after the first frame in the sequence of frames for the virtual

2 In addition to the Appeal Brief noted above, we refer to: (1) the originally
filed Specification filed May 6, 2015 (“Spec.”); (2) the Final Office Action
mailed December 21, 2018 (“Final Act.”); (3) the Examiner’s Answer
mailed July 12, 2019 (“Ans.”); and (4) the Reply Brief filed September 11,
2019 (“Reply Br.”).
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Application 14/704,971

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contents to the user, wherein the virtual object is predicted to
change its location to the predicted location in the updated first
portion;
preparing the subsequent frame in the sequence of frame
by initiating retrieval of the first complete frame from the image
buffer;
dynamically interrupting, based at least in part upon the
predicted location, the retrieval of the first complete frame for
the subsequent frame before completion of the retrieval of the
first complete frame;
retrieving the updated first portion, without retrieving the
first portion of the first complete frame, for the subsequent
frame;
adjusting one or more perceived pixel sizes of a plurality
of pixels in the subsequent frame into one or more adjusted
pixel sizes based at least in part upon non-uniformity of pixel
spacing between adjacent pixels in the plurality of pixels; and
displaying the subsequent frame for the virtual contents
with variable resolutions between the updated first portion and
the second portion with the into one or more adjusted pixel
sizes at least by replacing the first portion in the first frame with
the updated first portion for the subsequent frame.
3. The method of claim 1, further comprising
substituting an updated second spiral scan line for the second
spiral scan line of the first complete frame.
Appeal Br. 72–73 (Claims App.).
REFERENCES
The Examiner relies on the following prior art references:3
Name Reference Date
Haskell US 3,632,865 Jan. 4, 1972
Albrecht US 5,138,555 Aug. 11, 1992

3 All citations to the references use the first-named inventor or author only.
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Name Reference Date
Maeda US 2004/0130520 A1 July 8, 2004
Johnston US 2006/0226231 A1 Oct. 12, 2006
Biocca US 2009/0225001 A1 Sept. 10, 2009
Shibasaki US 2010/0137684 A1 June 3, 2010
Nakada US 2012/0242560 A1 Sept. 27, 2012
Fein US 2014/0098137 A1 Apr. 10, 2014
REJECTIONS
The Examiner makes the following rejections:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis
Final Act.
1–20 112, first
paragraph
Written Description 7
3–6, 17 112, second
paragraph
Indefiniteness 10
1–6, 10, 18 103(a) Johnston, Haskell,
Fein, Biocca
11
7 103(a) Johnston, Nakada,
Haskell, Fein,
Biocca, Maeda
32
8, 9 103(a) Johnston, Nakada,
Haskell, Fein,
Biocca, Shibasaki
34
11, 17 103(a) Johnston, Nakada,
Haskell, Fein,
Biocca, Albrecht
37
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
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Written Description Rejection of Independent Claim 1
The Examiner rejects claim 1 under 35 U.S.C. § 112, first paragraph.
The Examiner finds “read out” in the “the specification fails to provide
support of the following claim language, ‘retrieving’, and ‘a retrieval of the
first complete frame’.” Final Act. 7. In particular, the Examiner cites to
dictionary definitions and concludes that “‘Read out’ and retrieval are not
equal” because “‘Read out’ is essentially removing or reading data in some
form” and “[r]etrieval is essentially recovering data in some form.” Id. at 9.
Appellant relies on Figures 11 and 13–15 and paragraphs 114, 181,
193, and 207 to provide written description support for the limitations at
issue. Appeal Br. 12–16. Appellant argues that the specification provides
adequate written description support for the term “retrieving” in claim 1
because:
the verbal phrases “read out”, “read out of”, or “reading out”
(e.g., “the augmented reality system starts to read out the updated
first complete frame before completion of the reading out of the
first complete frame from the frame buffer . . . “ in ¶ [00207]) in
the originally filed Specification explicitly, sufficiently describes
the claimed “retrieving data . . . from at least one frame buffer of
the virtual image presentation system.”
Id. at 42–43.
We determine whether an applicant has satisfied the written
description requirement by determining whether the patent specification
describes the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008). Our reviewing court guides us to evaluate
issues of written description using the following standard:
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In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at issue.
Nonetheless, the disclosure must . . . convey with reasonable
clarity to those skilled in the art that . . . [the inventor] was in
possession of the invention. Put another way, one skilled in the
art, reading the original disclosure, must immediately discern the
limitation at issue in the claims. That inquiry is a factual one and
must be assessed on a case-by-case basis.
Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000)
(alterations in original) (internal quotation marks and citations omitted).
The Specification discloses reading out frame data from frame buffers
or image buffers. Spec. ¶¶ 205, 207. We agree with Appellant that the
disclosure in the originally filed application would have been sufficient to
show one of ordinary skill had possession of the claimed retrieving of frame
data from the image buffer. As Appellant points out, the Specification need
not “literally describe[] the claim elements using exactly the same
language.” Appeal Br. 44. One skilled in the art would have discerned that
frame data necessarily must be retrieved to be read out from the buffer.
Accordingly, we determine there is sufficient written description support in
the Specification for retrieving of frame data from an image buffer, as
recited in claim 1.
We do not sustain the 35 U.S.C. § 112, first paragraph, rejection of
independent claim 1. Independent claim 18 includes similar limitations and
so we do not sustain that rejection for similar reasons. We also do not
sustain the rejection of claims 2–16, 19, and 20, which depend from
independent claims 1 and 18.
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Obviousness Rejection of Independent Claim 1
The Examiner relies on Johnston to teach or suggest “retrieving the
updated first portion, without retrieving the first portion of the first complete
frame, for the subsequent frame,” as recited in claim 1. Final Act. 13. In
particular, the Examiner finds:
Johnston teaches replacing the “old” frame images of one color
with a “new” frame image of the same color without updating,
i.e. retrieving other color data; Johnston further teaches each
composite frame image may just use the most recently captured
inner portion for display without retrieving other portion of the
first frame; Johnston further more teaches the outer portion 21
only updates a single color with each subsequent frame image
without updating other color.).
Id.
Appellant argues that the obviousness rejection of claim 1 in view of
Johnston is erroneous because the “alleged basis for rejection on p. 13 of the
final Office Action contains mere allegations, without providing any
citations from Johnston.” Appeal Br. 52. Appellant adds that “the final
Office Action clearly misinterprets Johnston as something Johnston never
even remotely suggests,” while again pointing out that “the final Office
Action fails to point to any figures or passages in Johnston.” Id.
The Examiner responds to these arguments by copying and pasting
verbatim the language from the Final Office Action, while still not providing
factual findings in the form of specific citations to Johnston. Ans. 41.
We find Appellant’s arguments persuasive. “When a reference is
complex or shows or describes inventions other than that claimed by the
applicant, the particular part relied on [by the Examiner] must be designated
as nearly as practicable. The pertinence of each reference, if not apparent,
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must be clearly explained and each rejected claim specified.” 37 C.F.R.
§ 1.104(c)(2).
Here, it is unclear from the Examiner’s rejection how Johnston
teaches or suggests the limitation at issue. See In re Zurko, 258 F. 3d 1379,
1386 (Fed. Cir. 2001) (“With respect to core factual findings in a
determination of patentability . . . [the Patent Office] must point to some
concrete evidence in the record in support of these findings.”). The
Examiner provides a summary of Johnston in the rejection but does not cite
to any specific figures or passages. Accordingly, the Examiner has not
provided the factual findings or evidence necessary to support the rejection.
See MPEP § 2143. Nor do we find instructive the Examiner’s cut-and-paste
in the Answer of the same paraphrased summary of Johnston provided in the
Final Office Action. Ans. 41.
Accordingly, the Examiner has not demonstrated that the cited
combination of references teaches or suggests “retrieving the updated first
portion, without retrieving the first portion of the first complete frame, for
the subsequent frame,” as recited in claim 1. Because we agree with at least
one of the dispositive arguments advanced by Appellant, we need not reach
the merits of Appellant’s other arguments.
For the reasons discussed above, and constrained by the record before
us, we do not sustain the Examiner’s rejection of independent claim 1 under
35 U.S.C. § 103. For similar reasons, we do not sustain the Examiner’s
rejection of independent claim 18, which recites a similar limitation. In
addition, we do not sustain the Examiner’s rejections of claims 2–17, 19, and
20, which depend directly or indirectly from claims 1 and 18.

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Indefiniteness Rejection of Dependent Claim 3
The Examiner rejects claims 3–6 and 17 under 35 U.S.C. § 112,
second paragraph as indefinite. Final Act. 10–11; Ans. 47. In particular, the
Examiner finds “[t]here is insufficient antecedent basis for” the “limitation
‘the second spiral scan line,’” as recited in claim 3.
Appellant argues the claims as a group. Appeal Br. 69–70. As such,
we select dependent claim 3 as representative of the claims rejected under
§ 112, second paragraph. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). Appellant
argues that “commonly-accepted grammatical construction rules require the
use of definite articles ‘the’ for nouns preceded with ordinal numbers. For
example, commonly-accepted grammatical construction rules require the use
of ‘the first [noun],’ ‘the second [noun],’ ‘the third [noun],’ etc.” Appeal
Br. 70.
Appellant’s argument is unpersuasive. The MPEP instructs that:
A claim is indefinite when it contains words or phrases whose
meaning is unclear. The lack of clarity could arise where a claim
refers to “said lever” or “the lever,” where the claim contains no
earlier recitation or limitation of a lever and where it would be
unclear as to what element the limitation was making reference.
MPEP § 2173.05(e). Claim 3 recites “the second spiral scan line.” But
neither claim 3, nor claim 1 from which claim 3 depends, recites “a second
spiral scan line,” or any spiral scan line at all for that matter. Although we
have considered Appellant’s argument based on commonly-accepted
grammatical construction rules, principles of claim drafting must take
precedence. Accordingly, we sustain the Examiner’s rejection of claims 3–6
and 17 as being indefinite under 35 U.S.C. § 112, second paragraph.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
1–20 112 Written Description 1–20
3–6, 17 112 Indefiniteness 3–6, 17
1–6, 10,
18
103(a) Johnston, Haskell,
Fein, Biocca
1–6, 10,
18
7 103(a) Johnston, Nakada,
Haskell, Fein, Biocca,
Maeda
7
8, 9 103(a) Johnston, Nakada,
Haskell, Fein, Biocca,
Shibasaki
8, 9
11, 17 103(a) Johnston, Nakada,
Haskell, Fein, Biocca,
Albrecht
11, 17
Overall
Outcome
3–6, 17 1–2, 7–16,
18–20
TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART