Apple Inc.

Patent Trials and Appeals Board

Sep 29, 2021

2020000906 (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.
16/012,802 06/20/2018 Eyal Bychkov P24034USC4/1020-1062.10 1064
123590 7590 09/29/2021
KLIGLER & ASSOCIATES PATENT ATTORNEYS LTD.
P.O. BOX 57651
TEL AVIV, 61576
ISRAEL
EXAMINER
SARMA, ABHISHEK
ART UNIT PAPER NUMBER
2622
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):
INFO@DKPAT.CO.IL
alon@dkpat.co.il
daniel@dkpat.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EYAL BYCHKOV, OREN BREZNER, MICHA GALOR,
OFIR OR, JONATHAN POKRASS, AMIR HOFFNUNG, and
TAMIR BERLINER
Appeal 2020-000906
Application 16/012,802
Technology Center 2600
Before DEBRA K. STEPHENS, MICHAEL J. STRAUSS, and
IRVIN E. BRANCH, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20 (see Final Act. 1). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 Apple Inc., having a
place of business in Cupertino, California. The assignment was recorded in
the USPTO on June 20, 2018, in reel 046136, frame 0860 (Appeal Br. 1).
Appeal 2020-000906
Application 16/012,802

2
CLAIMED SUBJECT MATTER
The claims are directed to a gaze detection in a 3d mapping
environment. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method, comprising:
receiving a sequence of three-dimensional (3D) maps of at
least a part of a body of a user of a computerized system;
processing the 3D maps in order to identify a gesture
performed by the user;
identifying a direction of a gaze of the user by analyzing
light reflected off an element of the eye; and
controlling a function of the computerized system
responsively to the gesture and the direction of the gaze.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Cleveland US 2006/0239670 A1 Oct. 26, 2006
Genc US 2013/0154913 A1 June 20, 2013

REJECTION
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–20 103(a) Cleveland, Genc

We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
(see 37 C.F.R. § 41.37(c)(1)(iv)).
Appeal 2020-000906
Application 16/012,802

3
OPINION
35 U.S.C. § 103(a): Claims 1, 15, and 20 over Cleveland and Genc
Appellant contends the invention as recited in claims 1, 15, and 20, is
not obvious over Cleveland and Genc (Appeal Br. 4). In particular,
Appellant argues the Examiner erred because the subject matter in Genc,
cited by the Examiner, does not qualify as prior art under 35 U.S.C. § 102(e)
(Appeal Br. 4; Reply Br. 2). Specifically, Appellant sets forth “[t]he present
patent application claims priority under 35 U.S.C. § 120 to PCT Patent
Application PCT/IB2012/050577, filed February 9, 2012, which claims the
benefit of U.S. Provisional Patent Application 61/440,877, filed on February
9, 2011” (Appeal Br. 4). Appellant then contends “Genc was filed
December 14, 2011, claiming the benefit of U.S. Provisional Patent
Application 61/423,701, filed December 16, 2010 [(“Provisional”)], and
U.S. Provisional Patent Application 61/537,671, filed September 22, 2011”
(id.).
Appellant argues the Examiner relies on the priority date of the
Provisional which precedes Appellant’s priority date, to establish Genc as
prior art under 35 U.S.C. § 102(e) (Appeal Br. 5). However, according to
Appellant, the subject matter relied upon by the Examiner in Genc is not
supported in the Provisional (id.). More specifically, Appellant contends the
Provisional provides “no enablement at all of the features relied upon by the
Examiner” and particularly, “no support whatsoever for anything in
paragraphs 0142–0180 of Genc” (id. at 6; Reply Br. 2). Appellant further
contends “[t]he relevant disclosure in [the Provisional] is no more than a
statement of intent to implement certain functions, with no explanation at all
as to how these functions should, or even could be implemented” (Appeal
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Application 16/012,802

4
Br. 8). Therefore, Appellant asserts, “the Examiner’s arguments that Genc’s
’701 Provisional supports the present rejection are without foundation” (id.).
The conditions for determining the critical reference date of a
published U.S. patent application is set forth under 35 U.S.C. § 102(e): “A
person shall be entitled to a patent unless . . . (e) the invention was described
in — (1) an application for patent, published under section 122(b), by
another filed in the United States before the invention by the applicant for
patent . . . .” The Federal Circuit has held “for a non-provisional application
to claim priority to a provisional application for prior art purposes, ‘the
specification of the provisional [application] must contain a written
description of the invention . . . in such full, clear, concise, and exact terms,
to enable an ordinarily skilled artisan to practice the invention claimed in the
non-provisional application’” (Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed.
Cir. 2017) (alteration in original) (quoting Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015))). The Federal Circuit
has also held “for the non-provisional utility application to be afforded the
priority date of the provisional application, . . . the written description of the
provisional must adequately support the claims of the non-provisional
application” (New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d
1290, 1294 (Fed. Cir. 2002)). Thus, to rely on the Provisional’s filing date
here, the Examiner must find not only written description support in the
Provisional for the relied-upon subject matter, but also must find the claim in
Genc is supported by the written description of the Provisional.
The Examiner’s findings, however, are insufficient on this record to
support use of Genc as a 35 U.S.C. § 102(e) reference. In particular, we do
not agree with the Examiner’s conclusion that the “disclosure of Genc [’701
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Application 16/012,802

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Provisional] is distinctly enabling and would only require routine skill for a
person having ordinary skill in the art at the time of invention to derive the
invention taught [by Genc] without performing any undue experimentation”
(Ans. 8). The Examiner has not proffered substantive analysis of how the
subject matter is claimed in Genc ’701 Provisional and, thus, has not shown
the disclosure in Genc ’701 Provisional meets the requirements under 35
U.S.C. § 112, first paragraph. More specifically, the subject matter in Genc
on which the Examiner relied in the final rejection of the claims (i.e., Figs. 4,
9–11 and ¶¶ 142–180), is entirely absent from the written description in
Genc ’701 Provisional.
In the Answer, the Examiner determines it “would only require
routine skill for a person having ordinary skill in the art at the time of
invention to derive the invention taught [by Genc] without performing any
undue experimentation” (Ans. 8); however, the Examiner does not explain
how this applies to Genc ’701 Provisional and the lack of disclosure therein.
Therefore, because Genc ’701 Provisional does not provide the disclosure, it
cannot provide Genc with the earlier filing date. As a result, we are
persuaded Genc does not qualify as prior art for purposes of this rejection.
Because we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments.
Accordingly, we are persuaded the Examiner has not shown the combination
of Cleveland and Genc teaches or suggests the limitations as recited in
claims 1, 15, and 20. Dependent claims 2–14 and 16–19 stand with their
respective with independent claims 1, 15, and 20. Therefore, we do not
sustain the rejection of claims 1–20 under 35 U.S.C. § 103(a) for
obviousness over Cleveland and Genc.
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Application 16/012,802

6
Conclusions
We are persuaded the Examiner erred in relying on Genc as qualified
prior art. Therefore, Appellant has persuaded us the combination of
Cleveland and Genc fails to teach or suggest the limitations as recited in
claims 1–20. Accordingly, we reverse the rejection of claims 1–20 under
35 U.S.C. § 103(a) for obviousness over Cleveland and Genc.
CONCLUSION
The Examiner’s rejections are reversed.
More specifically, we reverse the Examiner’s rejection of claims 1–20
under 35 U.S.C. § 103(a).
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103(a) Cleveland, Genc 1–20

REVERSED