SEEREAL TECHNOLOGIES S.A.

Patent Trials and Appeals BoardApr 9, 2021

2019006800 (P.T.A.B. Apr. 9, 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. 14/361,743 05/30/2014 Gerald Futterer 357123.00140 7609 78905 7590 04/09/2021 Saul Ewing Arnstein & Lehr LLP (Philadelphia) Attn: Patent Docket Clerk Centre Square West 1500 Market Street, 38th Floor Philadelphia, PA 19102-2186 EXAMINER REED, STEPHEN T ART UNIT PAPER NUMBER 2627 NOTIFICATION DATE DELIVERY MODE 04/09/2021 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): patents@saul.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GERALD FUTTERER ____________ Appeal 2019-006800 Application 14/361,743 Technology Center 2600 ____________ Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and STEVEN M. AMUNDSON, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–4 and 6–18, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as SeeReal Technologies S.A. Appeal Br. 2. Appeal 2019-006800 Application 14/361,743 2 THE INVENTION The disclosed and claimed invention relates “to a measurement method and to an apparatus for carrying out the measurement method.” Spec. 1, ll. 3–4.2 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A measurement method for determining the relative position of a light intensity distribution at a first location in relation to an object at a second location, where - generating a light intensity distribution in a plane of a light source image in which the object, in particular an observer of the display device, is provided by means of a display device, in particular a holographic or autostereoscopic display device, where a viewing window is used as the light intensity distribution of the illumination light in the plane of a light source image or as a light source image, - predetermining of the light intensity distribution such that the first location is marked, and - recording of the first location and the object at the second location by a camera and the relative position of the first location in relation to the second location is determined in a coordinate system of the camera. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Amir et al. (“Amir”) US 6,578,962 B1 June 17, 2003 Thomas US 7,027,659 B1 Apr. 11, 2006 2 We refer to the Specification filed May 30, 2014 (“Spec.”); Final Office Action mailed Dec. 5, 2017 (“Final Act.”); Appeal Brief filed Nov. 28, 2018 (“Appeal Br.”); Examiner’s Answer mailed July 18, 2019 (“Ans.”); and the Reply Brief filed Sept. 18, 2019 (“Reply Br.”). Appeal 2019-006800 Application 14/361,743 3 Zschau et al. US 2010/0073744 A1 Mar. 25, 2010 (“Zschau”) Vertegaal et al. US 7,809,160 B2 Oct. 5, 2010 (“Vertegaal”) Bennett et al. US 2011/0157339 A1 June 30, 2011 (“Bennett”) REJECTIONS Claims 1–4, 6, 8–15, and 17 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bennett, Amir, and Zschau. Final Act. 3. Claims 7 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bennett, Amir, Zschau, and Vertegaal. Final Act. 9. Claim 16 stands rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bennett, Amir, Zschau, and Thomas. Final Act. 10. ANALYSIS Section 103(a) Rejections Where a claim is so indefinite that “considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims” is needed, it would be imprudent for us to pass judgment on such a rejection (under § 103(a)). See In re Steele, 305 F.2d 859, 862 (CCPA 1962). With regard to claims 1–4 and 6–18, for the reasons discussed below, we are unable to determine whether the Examiner’s obviousness rejection is proper because discerning the proper scope of the claims requires undue and improper speculation, as discussed in our new ground of rejection below. Appeal 2019-006800 Application 14/361,743 4 We, therefore, reverse pro forma the prior-art rejections of claims 1–4 and 6–18 under 35 U.S.C. § 103(a). We emphasize that this is a technical reversal of the rejections under 35 U.S.C. § 103(a), and not a reversal based upon the merits of the rejections. New Ground of Rejection Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject dependent claims 1–4 and 6–18 under 35 U.S.C. § 112, second paragraph, for indefiniteness. “A claim is indefinite if, when read in light of the specification, it does not reasonably apprise those skilled in the art of the scope of the invention.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). “As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms. It is the claims that notify the public of what is within the protections of the patent, and what is not.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (alterations in original); see Ex parte McAward, Appeal 2015-006416, slip op. at 4–12 (PTAB Aug. 25, 2017) (precedential in relevant part) (applying Packard during patent prosecution). Here, independent claims 1 and 15 are directed to a measurement method “for determining the relative position of a light intensity distribution at a first location in relation to an object at a second location” and an apparatus for carrying out the measurement method, respectively. Claim 1 recites a measurement method. See Appeal Br. 15 (Claims App.). Similarly, claim 15 recites an apparatus for carrying out the measurement method. Id. at 19 (Claims App.). Appeal 2019-006800 Application 14/361,743 5 Claim 1 recites a measurement method for “determining the relative position of a light intensity distribution at a first location in relation to an object at a second location.” To accomplish this determination, the claim recites: (1) “generating a light intensity distribution in a plane of a light source image in which the object, in particular an observer of the display device, is provided by means of a display device”; (2) “predetermining of the light intensity distribution such that the first location is marked”; (3) “recording of the first location and the object at the second location by a camera”; and (4) determining “the relative position of the first location in relation to the second location . . . in a coordinate system of the camera.” Regarding (1), the Specification explains that an “optical system which has a focusing effect at least in one direction generates at least in one direction a light source image which . . . lies close to the plane 13.” Spec. 12:10–16. The Specification also explains that “display device 4 illuminates an object 11” with an “illumination.” Id. at 12:25–27. The example in the Specification lends support to the claimed “the object, in particular an observer of the display device, is provided by means of a display device” encompassing a display device illuminating an observer of the display device. The Specification also lends support to the claimed “generating a light intensity distribution in a plane of a light source image” encompassing an intensity distribution of the display device’s illumination light generated in a plane of the light source image. However, even considering the examples in the Specification, the claimed “generating a light intensity distribution in a plane of a light source image in which the object, in particular an observer of the display device, is provided by means of a display device” is not clear. Specifically, it is Appeal 2019-006800 Application 14/361,743 6 unclear how the observer, illuminated by the display device, “is provided.” It is also unclear whether the observer “is provided” in the “light intensity distribution,” in the “plane of a light source image,” or in the “light source image.” Other than as an observer illuminated by the display device, it is unclear how the claimed “object” relates to the claimed “generating a light intensity distribution in a plane of a light source image.” Therefore, the claimed “generating a light intensity distribution in a plane of a light source image in which the object, in particular an observer of the display device, is provided by means of a display device” is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention,” thus rendering the claims indefinite. Packard, 751 F.3d at 1311. Regarding (2), the Specification explains that “display device 4 illuminates an object 11” with an “illumination” that is “predetermined.” Spec. 12:25–27. The “object 11 is an observer of the display device 4,” and “[b]y means of the predetermined illumination, an intensity distribution of the illumination light 12 is generated in a plane of a light source image 13, and a first location of the object 11 is thereby marked.” Id. at 12:27–31. The Specification explains that “the intensity distribution of the illumination light 12 in the plane of the light source image 13 is recorded” with the camera “and the first location of the object is recorded with the camera.” Id. at 12:38–40. The example in the Specification lends support to the claimed “predetermining of the light intensity distribution such that the first location is marked” encompassing that a first location of the object is marked based on predetermined illumination information. Appeal 2019-006800 Application 14/361,743 7 However, even considering the example in the Specification, it is unclear how the first location of the object is related to the predetermined illumination. Other than as the location of an observer illuminated by the display device, it is unclear how the claimed “first location” of an object is marked based on the predetermining of the light intensity distribution. The example in the Specification further lends support to the claimed “the first location is marked” encompassing recording the first location of the object with a camera. The contradiction between the first location of the object to either (i) be marked based on predetermined illumination information or (ii) be recorded by the camera renders the claims “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” Packard, 751 F.3d at 1311. Regarding (3), the Specification explains that “the intensity distribution of the illumination light 12 in the plane of the light source image 13 is recorded” with the camera “and the first location of the object is recorded with the camera.” Spec. 12:38–40. The Specification also explains that the “camera 5 likewise records a second location of the object 11, here the eye pupil 14 of the observer.” Id. at 12:40–41. With this data from the camera, “the evaluation unit 6 then determines the relative position of the first location in relation to the second location of the object 11 in the coordinate system of the camera 5.” Id. at 12:42–13:3. The example of the Specification lends support to the claimed “recording of the first location” encompassing recording the first location of the object with a camera. The Specification also lends support to the claimed “recording . . . the object at the second location by a camera” encompassing recording a second location of the object. Appeal 2019-006800 Application 14/361,743 8 Here, the claimed “recording of the first location and the object at the second location” introduces ambiguity from the inconsistency in the claim language. Specifically, the claim recites “recording of the first location and the object at the second location,” which can be reasonably interpreted as recording not only some indication of the first location of the object but also recording the object itself at a second location. The Specification, however, supports a different interpretation that the claim requires recording the first location of the object and recording the second location of the object. This contradiction for “recording . . . the object at the second location” renders the claims “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” Packard, 751 F.3d at 1311. At least for the reasons above, and pursuant to our authority under 37 C.F.R. § 41.50(b), we reject independent claims 1 and 15 under 35 U.S.C. § 112, second paragraph, for indefiniteness.3 Furthermore, for the same reasons that independent claims 1 and 15 are indefinite, we conclude that dependent claims 2–4, 6–14, and 16–18 are likewise indefinite. We are mindful that, in rejecting the claims, the Examiner did not rely on § 112, 3 In addition to the indefiniteness issues discussed above, further ambiguity arises from the claimed “object, in particular an observer of the display device, is provided by means of a display device.” Defining the object as “an observer of the display device” lacks antecedent basis, as there is no prior disclosure of a display device. Additional ambiguity also arises from the claimed “where a viewing window is used as the light intensity distribution of the illumination light.” Defining the light intensity distribution being “of the illumination light” lacks antecedent basis, as there is no prior disclosure of an illumination light. Moreover it is unclear whether the use of “in particular” in claim 1 is meant to be limiting. That is, is the particular example required or optional? The claim is also unclear with regard to the “-” appearing before the various steps in claim 1. Appeal 2019-006800 Application 14/361,743 9 second paragraph. Accordingly, we designate a new ground of rejection under 37 C.F.R. § 41.50(b). DECISION We reverse the Examiner’s § 103(a) rejections of claims 1–4 and 6– 18. We enter a new ground of rejection for claims 1–4 and 6–18 under § 112, second paragraph. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1–4, 6, 8– 15, 17 103(a) Bennett, Amir, Zschau 1–4, 6, 8– 15, 17 7, 18 103(a) Bennett, Amir, Zschau, Vertegaal 7, 18 16 103(a) Bennett, Amir, Zschau, Thomas 16 1–4, 6–18 112 ¶ 2 Indefiniteness 1–4, 6–18 Overall Outcome 1–4, 6–18 1–4, 6–18 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: Appeal 2019-006800 Application 14/361,743 10 (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. REVERSED; 37 C.F.R. § 41.50(b)