William J. Westerinen et al.

Patent Trials and Appeals Board

Dec 23, 2019

13428879 - (D) (P.T.A.B. Dec. 23, 2019)

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.
13/428,879 03/23/2012 William J. Westerinen 335393-US-NP 1969
69316 7590 12/23/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
GOOD JOHNSON, MOTILEWA
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
12/23/2019 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM J. WESTERINEN, STEVEN JOHN ROBBINS,
RAJEEV BADYAL, and ROD G. FLECK
____________________

Appeal 2018-0002591
Application 13/428,879
Technology Center 2600
____________________

Before THU A. DANG, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 7–12, 14–16, 19, 20, and 22–30, which are all of
the pending claims. Claims 1–6, 13, 17, 18, and 21 were previously
cancelled. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2015). Appellant identifies Microsoft Technology
Licensing as the real party in interest. Appeal Br. 3.
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A. INVENTION
According to Appellant, the invention relates to a “display device” to
output a “user interface to be viewable by a user within a range of distances
from the display device.” Spec. Abstr. In the invention, “closer distances
within the range permit the user to have an increased field of view” in
comparison to those further away from the user. Id.

B. REPRESENTATIVE CLAIM
Claim 7 is representative of the subject matter on appeal:
7. An apparatus comprising:

one or more processors; and

one or more computer-readable storage media devices
comprising instructions that when executed by the one or more
processors configures a user interface and causes

a display device communicatively coupled to the one or
more computer-readable storage media devices to output the
user interface to be viewable by a user such that different
portions of the user interface are viewable by the user
depending on an angle of tilt of the display device in relation to
one or more eyes of the user, the different portions of the user
interface viewable without changing the user interface
outputted by the display device between viewing the different
portions.

C. REJECTIONS
Claims 7–11 stand rejected under 35 U.S.C. § 102(e) over Kollin et al.
(US 8,754,831 B2; issued June 17, 2014) (“Kollin”). Final Act. 2.
Claims 12, 14–16, 19, 20, and 22–24 stand rejected under 35 U.S.C.
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§ 103(a) over Kollin and Son et al. (US 8,941,683 B2; issued Jan. 27, 2015)
(“Son”). Final Act. 4.
Claims 25–30 stand rejected under 35 U.S.C. § 103(a) over
Steenbergen (US 2010/0238664 A1; published Sept. 23. 2010) and Kollin.
Final Act. 8.

II. ISSUES
The principal issues before us are whether the Examiner erred in
finding that Kollin teaches a “display device” to output a “user interface to
be viewable by a user” such that “different portions of the user interface are
viewable by the user depending on an angle of tilt of the display device . . .
without changing the user interface outputted by the display device.” See
Claims App., claim 7 (emphasis added).

III. ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made, but did not make in the Brief are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). On the record before us, we are unpersuaded the
Examiner erred.
Claims 7–11
Appellant contends that, contrary to Appellant’s invention as set forth
in ¶¶ 67, 69, and 71, “Kollin does not disclose ‘different portions of the user
interface are viewable by the user depending on an angle of tilt of the
display device’ ‘without changing the user interface outputted by the display
device,’” as recited in independent claim 7. Appeal Br. 11–12 (citing Kollin
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in ¶¶ 67, 69, 71) (emphasis omitted). In particular, Appellant contends that
Appellant “can find no mention in the cited sections or elsewhere in Kollin
of the user interface displayed not changing.” Id. at 12. Although Appellant
concedes that “the end results [of the claimed invention and Kollin] are
similar,” Appellant contends that “Kollin is very much an active system,”
wherein “accomplishing the results passively” is “very much different” than
actively. Id. at 13.
We have considered all of Appellant’s arguments and evidence
presented. However, we agree with the Examiner’s finding that claims 7–11
are anticipated by Kollin.
Although Appellant contends that “Kollin is very much an active
system” which is “very much different” than a passive system (Appeal
Br. 13), we note such contention is not commensurate with the recited
language of claim 7, which does not require a “passive” system or preclude
an “active” system. Rather, claim 7 merely recites that “the different
portions of the user interface [are] viewable without changing the user
interface outputted by the display device.”2 See claim 7. Furthermore,
although Appellant contends that results accomplished “passively” are done
“without changing what is displayed,” whereas results accomplished
“actively” are done by “changing what is displayed” (Appeal Br. 13), such

2 Although claim 7 recites “without changing the user interface,” it is unclear
what is defined as a “user interface” that is unchanged. Appellant points to
“Figs. 1 and 5” of the Specification for showing a “user interface” (Appeal
Br. 7), but Figs. 1 and 5 merely show “display device 110” interfacing with
the user. See Figs. 1, 5. In the event of further prosecution, the Examiner
may consider whether it is appropriate to reject the claims as indefinite
under 35 U.S.C. § 112, 2nd paragraph.
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contentions are merely Attorney arguments made in the Appeal Brief,
whereas the Specification as originally filed does not provide any definition
for an “active” or “passive” system, but instead defines the system as
changing or not changing what is displayed.3
We agree with the Examiner’s reliance on Kollin for anticipation of
claims 7–11. Final Act. 2–4. In particular, we agree with the Examiner that
Kollin discloses a “display device” for displaying an image that is viewable
by a user such that different portions of the displayed image are “viewable
by the user depending on an angle of tilt of the display device” in relation to
one or more eyes of the user, the different portions being viewable “without
changing.” Id. (quoting claim 7).
Here, the Examiner finds that, similar to the claimed invention,
Kollin’s display “acts as a window on a larger virtual image” wherein “a
user may move the display screen closer to an eye to have the sensation of
revealing a wider view of items located behind the screen.” Final Act. 3
(quoting Kollin 4:3–14). Further, similar to the claimed invention, the

3 We note that the Specification does not provide any support for “without
changing the user interface” recited in claim 7. In particular, the
Specification does not discuss anything being changed or without change.
Appellant points to paragraphs 67, 69, and 71 for support (Appeal Br. 11–
12), but nothing in paragraphs 67, 69, and 71 is discussed as “without
changing” while the user tilts the display device, as claimed in claim 7. See
Spec. ¶¶ 67, 69, and 71. Although paragraphs 67, 69, and 71 discuss a
“passive” system and in the Appeal Brief, Appellant contends that results
accomplished “passively” are done “without changing what is displayed”
(Appeal Br. 13), such Attorney argument in an Appeal Brief cannot be relied
upon as support in the Specification as originally filed. In the event of
further prosecution, the Examiner may consider whether it is appropriate to
reject the claims as lacking written description support under 35 U.S.C.
§ 112, 1st paragraph.
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display “may comprise a first amount of visual information and the user may
view addition[al] detail and/or scope by changing view mode, potentially in
combination with using tilt.” Id. (quoting Kollin 5:43–52). As Appellant
concedes, the claimed invention discloses an image displayed on a display
device similar to “a billboard” being viewed “through a hole in a fence,”
wherein “[a]s the user moves closer to a hole in the fence, not only is the
type size of the billboard increased,” but “the amount of the billboard that is
viewable also increases.” Appeal Br. 11 (quoting Spec. ¶ 69). Thus, like the
claimed invention, Kollin’s display “acts as a window on a larger virtual
image” similar to the claimed invention’s display providing a view to “a
billboard,” wherein, in both cases as the user moves closer (and/or the
display device is tilted), the size of the image seen increases and the amount
of information displayed on the image also increases. Compare Kollin 4:3–
14, 5:43–52, with Spec. ¶¶ 67, 69, 71.
Contrary to Appellant’s contention (Appeal Br. 12), in Kollin, what is
displayed does not change. Kollin’s Figures 4 and 5 are reproduced below:
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Figure 4 shows the device of Kollin operating in one viewing mode,
and Figure 5 shows the device of Kollin operating in another viewing mode.
Kollin 1:52–55. As shown in Figures 4 and 5, the device displays an image
located at or near display screen 300 when user 302 holds the device at a
distance from the view “VIRTUALIMAGE HERE.” Kollin 5:53–6:18. As
the user moves the device to a closer view (and/or tilt the device), the device
changes from a “virtual image” viewing mode (Figure 4) to a “near-eye” or
“virtual retinal” viewing mode (Figure 5). Id. As the Examiner finds,
“Kollin discloses changing viewing modes, figure[s] 4–5, and the user
interface has not changed, i.e. VIRTUALIMAGEHERE.” Ans. 13.
As the Examiner finds, Kollin is similar to the claimed invention.
Figures 7 and 8 of the claimed invention are reproduced below:
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Figure 7 and Figure 8 show different viewing “stages” of the device of
the claimed invention. Spec. ¶ 21. As shown in Figure 7, at first stage 602,
“the user’s field of view is illustrated using dashed lines to show a portion of
a user interface 702 that is viewable through the display device 110.” Spec.
¶ 68. As shown in Figure 8, at second stage 604, “the user’s eye is
positioned closer to the display device 110, which enables the user to view a
larger portion of the user interface 702.” Id. Like Kollin, in Appellant’s
Figures 7 and 8, as the user moves the device to a closer view, the device
changes from one viewing mode to another viewing mode. Compare Spec.,
Figs. 7–8, with Kollin, Figs. 4–5. In both cases, the image being displayed
(Spec., “702”; Kollin, “VIRTUALIMAGEHERE”) is not shown as being
changed. Id.
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Based on the record before us, we find no error with the Examiner’s
reliance on Kollin to teach “different portions of the user interface are
viewable by the user depending on an angle of tilt of the display device . . .
without changing the user interface outputted by the display device,” as
recited in claim 7. Accordingly, we affirm the Examiner’s rejection of
claim 7, and claims 8–10 depending therefrom and not argued separately,
under 35 U.S.C. § 102(e) as anticipated by Kollin.
Although Appellant argues claim dependent claim 11 separately from
claim 7, Appellant repeats the argument that “[t]here is nothing in the cited
section or elsewhere in Kollin of changing a viewing mode passively.”
Appeal Br. 14. However, as discussed above with respect to claim 7, we
agree with the Examiner’s finding that Kollin teaches displaying portions of
the image being displayed (“VIRTUALIMAGEHERE”) passively, without
the image being changed. Ans. 13; see Kollin, Figs. 4–5. That is, the
Examiner “maintains Kollin discloses displaying different portions of the
user interface passively by changing the viewing modes based upon a
distance between a user and the mobile device.” Ans. 14. Accordingly, we
also affirm the rejection of claim 11 under 35 U.S.C. § 102(e) as anticipated
by Kollin.
Claims 12, 14–16, 19, 20, and 22–30
As for claims 12 and 25, Appellant concedes that “[a]lthough it can be
argued that the end results [between the claimed invention and Kollin] are
similar,” Appellant repeats its argument that “accomplishing the results
passively (without changing what is displayed) or actively (changing what is
displayed) is very much different.” Appeal Br. 16–18. According to
Appellant, “Kollin fails to teach or suggest changing what can be viewed by
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a user ‘without changing the user interface displayed by the light engine,’
by moving the device further or closer to a user,” as recited in claim 12. Id.
at 16. Similarly, “Kollin fails to teach or suggest ‘the user interface
displayed by the computing device in the first and second views without
change,’ by moving the device further or closer to the user,” as recited in
claim 25. Id. at 18.
However, in Kollin, as the user moves the device into a closer view
(and/or tilt the device), the device changes from a “virtual image” viewing
mode (Figure 4) to a “near-eye” or “virtual retinal” viewing mode
(Figure 5). Kollin 5:53–6:18. As discussed above with respect to claim 7,
we agree with the Examiner’s finding that “Kollin discloses changing
viewing modes, figure[s] 4–5, and the user interface has not changed, i.e.
VIRTUALIMAGEHERE.” Ans. 13.
Accordingly, we agree with the Examiner’s reliance on Kollin to
teach and suggest displaying in “first and second views without change” by
“moving the device further or closer to the user” as recited in claim 25.
Ans. 16. Further, with respect to claim 12, we also agree with the
Examiner’s conclusion that the combination of Kollin and Son teaches or
suggests “changing the amount of information displayed” to a user on a
device “without changing the image being viewed,” wherein “the light
engine is a portion of the light guide which is a display device.” Ans. 15.
Accordingly, Appellant has not shown the Examiner erred in rejecting
1) claim 12, and claims 14–16, 19, 20, and 22–24, which are not separately
argued and thus fall therewith over Kollin and Son; and 2) claim 25, and
claims 26–30, which are not separately argued and thus fall therewith over
Steenbergen and Kollin.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7–11 102(e) Kollin 7–11
12, 14–16,
19, 20, 22–
24
103(a) Kollin, Son 12, 14–16,
19, 20, 22–
24

25–30 103(a) Steenbergen,
Kollin
25–30
Overall
Outcome
7–12, 14–
16, 19, 20,
22–30

V. DECISION
We affirm the Examiner’s rejections of claims 7–11 under 35 U.S.C.
§ 102(e), and of claims 12, 14–16, 19, 20, and 22–30 under 35 U.S.C.
§ 103(a).
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