Apple Inc.

Patent Trials and Appeals Board

Sep 29, 2021

2020004369 (P.T.A.B. Sep. 29, 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.
16/125,363 09/07/2018 Brett D. Miller P33303US1
(119-1289US1)
6497
61947 7590 09/29/2021
Apple - Blank Rome
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
EXAMINER
GILES, NICHOLAS G
ART UNIT PAPER NUMBER
2697
NOTIFICATION DATE DELIVERY MODE
09/29/2021 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRETT D. MILLER, MINWOONG KIM,
and RICARDO J. MOTTA
____________________

Appeal 2020-004369
Application 16/125,363
Technology Center 2600
____________________

Before TERRY J. OWENS, MAHSHID D. SAADAT, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL1

1 Our Decision refers to Appellant’s Appeal Brief filed January 24, 2020
(“Appeal Br.”); Reply Brief filed May 26, 2020 (“Reply Br.”); Examiner’s
Answer mailed March 26, 2020 (“Ans.”); the Final Rejection mailed August
23, 2019 (“Final Act.”), and the Specification filed September 7, 2018
(“Spec.”).
Appeal 2020-004369
Application 16/125,363

2
Appellant2 seeks our review3 under 35 U.S.C. § 134(a) from the final
rejection of Claims 1–20, all pending claims. Appeal Br. 2; 11–15 (Claims
Appendix). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
INVENTION.
The claims relate to a system for presenting an image of a scene. See
Abstract. Claims 1, 7, and 16 are independent. An understanding of the
invention can be derived from a reading of Claim 7 which is reproduced
below with some formatting added:
7. A non-transitory computer readable medium comprising
computer readable code for presenting an image of a scene,
executable by one or more processors to:
capture an image of a scene by a camera of an electronic
device, wherein the electronic device comprises the camera and
a display, and wherein the camera and the display have a first
spatial relationship;
determine a second spatial relationship between a
viewpoint and the display of the electronic device;

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies Apple, Inc., as the real party
in interest. Appeal Br. 3.
3 We have considered in this decision only those arguments Appellant
actually raised in the Briefs. Any other arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be forfeit. See
37 C.F.R. § 41.37(c)(1)(iv).
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warp the image to obtain an image of a first portion of
the scene based on the first spatial relationship and the second
spatial relationship; and
present the warped image on the display,
wherein, from the viewpoint, the image of the first
portion of the scene is substantially contiguous with a second
portion of the scene visible outside an edge of the electronic
device.
Prior Art
Name4 Reference Date
Robinson US 2013/0207896 A1 Aug. 15, 2013

REJECTIONS5 AT ISSUE
1. Claims 1–5, 7–10, 13, 14, 16, 18, and 19 stand rejected under 35
U.S.C. § 102 as anticipated by Robinson. Final Act. 3–8.
2. Claims 6, 11, 12, 15, 17, and 20 stand rejected under 35 U.S.C. § 103
as obvious over Robinson. Final Act. 9–12.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
argument that the Examiner has erred. We find Appellant persuasive with
respect to the rejections under §§ 102 and 103.
CLAIMS 1–5, 7–10, 13, 14, 16, 18, AND 19: ANTICIPATION BY ROBINSON.

4 All citations herein to the references are by reference to the first named
inventor/author only.
5 The present application, filed on or after March 16, 2013, is being
examined under the first inventor to file provisions of the AIA. Final Act. 2.
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Application 16/125,363

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Independent Claim 7 recites, inter alia:
capture an image of a scene by a camera of an electronic
device, wherein the electronic device comprises the camera and
a display, and wherein the camera and the display have a first
spatial relationship;
determine a second spatial relationship between a
viewpoint and the display of the electronic device;
warp the image to obtain an image of a first portion of
the scene based on the first spatial relationship and the second
spatial relationship . . .
wherein, from the viewpoint, the image of the first
portion of the scene is substantially contiguous with a second
portion of the scene visible outside an edge of the electronic
device.
Claim 7. Appeal Br. 11. Independent Claims 1 and 16 recite commensurate
limitations.
The Examiner’s rejection of independent Claims 1 and 16 relies on
the narrative rejection of independent Claim 7. See Appeal Br. 8. The
Examiner finds:
Regarding claim 7, Robinson discloses:
[a] non-transitory computer readable medium (computer
readable storage device with program code, par. 70–72, see also
par. 20–53, 68–76, Figs. 1, 2A, 2B, 2C, 3, 4A, 4B, 5A, 5B, 8)
comprising computer readable code for presenting an image of
a scene, executable by one or more processors to:
capture an image of a scene by a camera . . . par. 20–53,
68–76, Figs. 1, 2A, 2B, 2C, 3, 4A, 4B, 5A, 5B, 8);
determine a second spatial relationship between a
viewpoint and the display of the electronic device . . . par. 20–
53, 68–76, Figs. 1, 2A, 2B, 2C, 3, 4A, 4B, 5A, 5B, 8);
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warp the image to obtain an image of a first portion of
the scene . . . par. 20-53, 68-76, Figs. 1, 2A, 2B, 2C, 3, 4A, 4B,
5A, 5B, 8); and
present the warped image on the display . . . par. 20–53,
68–76, Figs. 1, 2A, 2B, 2C, 3, 4A, 4B, 5A, 5B, 8),
wherein, from the viewpoint, the image of the first
portion of the scene is substantially contiguous with a second
portion of the scene visible outside an edge of the electronic
device . . . par. 20–53, 68–76, Figs. 1, 2A, 2B, 2C, 3, 4A, 4B,
5A, 5B, 8).
Final Act. 4–5 (citing Robinson, ¶¶ 20–53, 68–76; and Figs. 1, 2A, 2B, 2C,
3, 4A, 4B, 5A, 5B, and 8).
Appellant cites the C.F.R. for the proposition that: “the pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.” Appeal Br. 6. (quoting 37 C.F.R. 1.104). Appellant argues
“the broad reaching citations of the Robinson reference are not apparent, nor
are they clearly explained.” Id.
The Examiner finds:
The examiner notes that each element of the claims were
addressed with a concise explanation of how the reference read
on the element and that the necessary sections and figures of
Robinson were cited as providing the required supporting
explanation, context for the explanation.
Ans. 3.
To teach each of 5 limitations (i.e., a “non-transitory computer
readable medium . . .,” “capture an image . . .,” “determine a second spatial
relationship . . .,” “warp the image . . .,” and “wherein, from the viewpoint,
the image of the first portion of the scene is substantially contiguous . . .”)
the Examiner identically, but non-specifically, cites forty-one (41)
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paragraphs, i.e., ¶¶ 20–53 and 68–76, and ten (10) figures, i.e., Figs. 1, 2A,
2B, 2C, 3, 4A, 4B, 5A, 5B, and 8 of Robinson. See Final Act. 4–5. The
Federal Circuit has held that where, as here, a claim lists elements
separately, the clear implication of the claim language is that those elements
are distinct components of the patented invention. See Becton, Dickinson
and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir.
2010) (finding nothing in claims to suggest two claimed components could
be the same structure). It is improper for an Examiner to use a single
structure/element in the cited reference to disclose two separate claimed
elements. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claim
requiring three separate means not anticipated by structure containing two
means where one of the two means was argued to meet two of the three
claimed means). When a claim requires two separate elements, one element
construed as having two separate functions does not meet the claim’s terms.
See Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994); see
also Ex parte Wiedeman, No. 2008-003454, slip op. 7 (BPAI Jan. 27, 2009)
(“[I]t is improper to rely on the same structure in the Lohr reference as being
responsive to two different elements . . . in claim 1”). The Examiner, here,
maps five clamed limitations to the same disclosure of Robinson, clear,
reversible error.
We agree with Appellant that: that: “the pertinence of each reference,
if not apparent, must be clearly explained and each rejected claim specified.”
Appeal Br. 6 (quoting 37 C.F.R. 1.104).
[F]or each reference relied on in each rejection, the PTO’s
policy is for the examiner to compare the rejected claims
feature-by-feature or limitation-by limitation with each of the
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references relied upon in the rejection. This comparison should
map the language of the claims to the specific page number,
column number, line number, drawing number, drawing
reference number, and/or quotation from each reference relied
upon.
Ex parte Forest, Appeal No. 2000-1901, 2002 WL 33951036 at *3 (BPAI
May 30, 2002). The Examiner’s non-specific citation to Robinson fails to
provide the required specific mapping. Appellant has complained of that
omission. Appeal Br. 6.
It remains Office policy that appropriate factual findings are
required in order to apply the enumerated rationales properly.
If a rejection has been made that omits one of the required
factual findings, and in response to the rejection a practitioner
or inventor points out the omission, Office personnel must
either withdraw the rejection, or repeat the rejection including
all required factual findings.
Examination Guidelines Update: Developments in the Obviousness Inquiry
After KSR v. Teleflex, 75 Fed. Reg. 53643, 53644–45 (Sept. 1, 2010).
In view of the foregoing, we decline to sustain the rejection of Claims
1–5, 7–10, 13, 14, 16, 18, and 19.
CLAIMS 6, 11, 12, 15, 17, AND 20: OBVIOUSNESS OVER ROBINSON.
Appellant contends these claims are allowable in view of their
dependence from the independent claims. Appeal Br. 9.
In view of the foregoing, we decline to sustain the rejection of Claims
6, 11, 12, 15, 17, and 20.

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Application 16/125,363

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DECISION
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–5, 7–10,
13, 14, 16,
18, 19
102 Robinson 1–5, 7–10, 13,
14, 16, 18, 19
6, 11, 12,
15, 17, 20
103 Robinson 6, 11, 12, 15,
17, 20
Overall
Outcome
1–20

REVERSED