Ex Parte Arrasvuori

Patent Trial and Appeal Board

Oct 23, 2014

11523162 (P.T.A.B. Oct. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JUHA ARRASVUORI
____________________

Appeal 2012-0008981
Application 11/523,1622
Technology Center 3600
____________________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
KEVIN W. CHERRY, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–19 and 24–27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
March 23, 2011) and Reply Brief (“Reply Br.,” filed August 9, 2011), and
the Examiner’s Answer (“Ans.,” mailed June 9, 2011).
2 Appellant identifies the real party in interest as Nokia Corporation. App.
Br. 1.
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CLAIMED INVENTION
Appellant’s claimed invention “relates in general to computer
interfaces, and more particularly to displaying network content on mobile
devices” (Spec. ¶ 1).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method comprising:
determining to obtain a graphical representation of a
scene of a local environment using a sensor of a mobile device;
determining to obtain, via a network, graphical object
data that enables a three-dimensional representation of a
tangible object, wherein the graphical object data is obtained in
response to a shopping selection;
determining to display, via the mobile device, the three-
dimensional representation of the tangible object with the
graphical representation of the scene to simulate the appearance
of the tangible object in the scene; and
determining to update the graphical representation of the
scene of the local environment and the three-dimensional
representation of the tangible object according to changes in the
sensor including changes in a position of the sensor, changes in
sensor settings, or a combination thereof.

REJECTIONS3
Claims 1–7, 9, and10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Whitworth (US 2001/0034668 A1, pub. Oct. 25, 2001)
and Singh (US 2005/0285878 A1, pub. Dec. 29, 2005).

3 The Examiner has withdrawn the rejection of claims 1–19 and 24–27
under 35 U.S.C. § 112, second paragraph (Ans. 36–37).
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Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Whitworth, Singh, and Shimoda (US 2006/0204137 A1, pub. Sept. 14,
2006).
Claims 11–15, 17–19, and 24–27 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Shimoda, Whitworth, and Singh.4
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shimoda, Whitworth, Singh, and Okatani (US 2003/0016861 A1,
pub. Jan. 23, 2003).
Claims 1–10 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.

ANALYSIS
Obviousness
Independent claim 1 and dependent claims 2–7, 9, and 10
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because Singh, on which
the Examiner relies, does not disclose or suggest “determining to update the
graphical representation of the scene of the local environment and the three-
dimensional representation of the tangible object according to changes in the
sensor including changes in a position of the sensor, changes in sensor
settings, or a combination thereof” as recited in claim 1 (App. Br. 9–13; see

4 The Examiner does not identify claims 24–27 in the statement of the
rejection (Ans. 14). However, the Examiner provides a rationale for the
rejection of claims 24–27 based on a combination of Shimoda, Whitworth,
and Singh at pages 24–32 of the Answer.
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also Reply Br. 5–7). Instead, we agree with, and adopt the Examiner’s
response to Appellant’s argument, as set forth at pages 37–39 of the Answer.
Singh is directed to a mobile platform for providing a mixed reality
experience to a user via a mobile communication device, and describes that
the platform includes (1) an image capturing module to capture images of an
item, having at least one marker, in a first scene, and (2) a graphics module
to retrieve multimedia content associated with an identified marker, and
generate a second scene including the associated multimedia content
superimposed over the first scene in a position relative to the identified
marker (Singh Abstract, ¶ 12). Singh describes that a user employs a
camera-equipped mobile phone to capture an image having a marker. The
phone forwards the image to an augmented reality (“AR”) server and waits
to receive an augmented result (Singh ¶ 258). The augmented reality image
(including the captured scene and a 3D object rendered into the scene) is
then displayed (id.; see also Singh ¶ 380). Sigh explains that, after the
augmented image is displayed to the user, a new image can be captured, and
the process can be repeated; for live video streaming, the process is
automatically repeated continuously and is transparent to the user
(Singh ¶ 258).
Appellant argues that although Singh describes that new images are
captured and that the process may be repeated continuously, “any updating
of the image in Singh is not an update of the tangible object, where the
tangible object refers to the three-dimensional representation of the tangible
object that was enabled by the graphical object data that was obtained in
response to a shopping selection” (App. Br. 12). Appellant, thus, maintains
that “[t]o whatever extent there may be an ‘updating’ of a scene in Singh in
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the sense of capturing new images, there is certainly nothing ‘inherent’
about updating a three-dimensional representation of a tangible object
therein, as there is no requirement that such an update must occur as the
natural consequence of capturing new images” (Reply Br. 7). We disagree.
Singh discloses that for live video streaming, as a new image is
captured, i.e., as the position of the sensor changes, the process of sending
the new image to the AR server and receiving an augmented result is
“automatically repeated continuously and is transparent to the user”
(Singh ¶ 258). We agree with the Examiner that because the augmented
images being continuously repeated contain the 3D rendering/representation
of the object placed in the scene, it is inherent that the object’s 3D
representation is also continuously updated (Ans. 37). “In other words,
since video inherently includes continuous updating of images to form a
stream, the video images returned from the [AR] server with rendered 3D
objects inherently involves continuous updating/repeating of the object
rendering in the scene” (id. at 37–38).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the rejection of
dependent claims 2–7, 9, and 10, which were not argued separately.
Independent claims 11 and 24 and dependent claims 12–15, 17–19, and 25–
27
Independent claim 11 is directed to a mobile device, and recites that
the device comprises, inter alia, a processor and a memory coupled to the
processor including instructions that cause the processor to “determine to
update the graphical representation of the scene of the local environment and
the three-dimensional representation of the tangible object according to
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changes in the sensor including changes in a position of the sensor, changes
in sensor settings, or a combination thereof.” Independent claim 24 includes
substantially similar language. Appellant asserts, “[f]or the reasons
previously argued [with respect to claim 1], none of the applied references to
Shimoda, Whitworth, and Singh, nor any combination thereof, discloses or
suggest[s] this claim feature” (App. Br. 14).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Therefore,
we sustain the Examiner’s rejection of claims 11 and 24 for the same
reasons. We also sustain the Examiner’s rejection of dependent claims 12–
15, 17–19, and 25–27, which were not argued separately.
Dependent claims 8 and 16
Claims 8 and 16 depend from claims 1 and 15, respectively.
Appellant does not present any arguments for the separate patentability of
these claims 8 and 16 except to assert that the secondary references relied on
in rejecting the claims do not cure the alleged deficiencies in the art
identified with respect to the independent claims (App. Br. 13–15).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claims 1 and 15 under 35 U.S.C. § 103(a).
Therefore, we sustain the Examiner’s rejection of claims 8 and 16 for the
same reasons.
Non-Statutory Subject Matter
Having carefully reviewed Appellant’s arguments (Reply Br. 3–5), we
are not persuaded that the Examiner erred in rejecting claims 1–10 under
35 U.S.C. § 101 as being directed to non-statutory subject matter. Instead,
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we agree with the Examiner that the claims are directed to a mental process,
and, therefore, to patent-ineligible subject matter under § 101 (Ans. 33).
The patent statute provides that a patent may be obtained for “any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof.” 35 U.S.C. § 101. Yet the Supreme
Court has “long held that this provision contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). The Court, thus, has made clear that
“[p]henomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67
(1972) (emphasis added).
Following the Supreme Court, the Federal Circuit has similarly held
that mental processes are not patent-eligible subject matter. In this regard,
the court has explained that methods which can be performed entirely in the
human mind are unpatentable not because “there is anything wrong with
claiming mental method steps as part of a process containing non-mental
steps,” but rather because “methods which can be performed entirely in the
human mind are the types of methods that embody the ‘basic tools of
scientific and technological work’ that are free to all men and reserved
exclusively to none.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011) (citation omitted).
Here, we agree with the Examiner that independent claim 1 appears to
be a “mere statement of a general concept comprising mental activity
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(i.e., the ‘determining to’ steps could be performed entirely by [the] mental
process of a human being making a decision to do the subsequently recited
action)” (Ans. 35). As such, we agree with the Examiner that claims 1–10,
if allowed, would “effectively grant a monopoly on the concept of making
decisions to do some other action” (Ans. 35–36).
Appellant argues that the claimed method is tied to a particular
machine, viz., a mobile device and mobile device sensor, and that the claims
are patent-eligible because they satisfy the Bilski machine-or-transformation
test (App. Br. 6–7).5 More particularly, Appellant asserts that “both the
mobile device and the sensor play very important roles in the performance of
the method steps and are substantially tied to those method steps as the
steps, e.g., obtaining the graphical representation of the scene and upgrading
the graphical representation of the scene, could not be performed without the
recited ‘machines’ of the mobile device and the sensor” (Reply Br. 4–5).
The difficulty with Appellant’s argument is that the claims do not
require the actual steps of obtaining, displaying, and updating to be
performed. Instead, the claims only require that a determination is made
regarding whether to perform those steps – which, as the Examiner observes,
can be performed entirely by a mental process without the use of any
machine (Ans. 34–36).

5 The Supreme Court explained in Bilski v. Kappos, 130 S. Ct. 3218 (2010)
that although the machine-or-transformation test “is not the sole test for
deciding whether an invention is a patent-eligible ‘process’ [under § 101,]”
the test is a “useful and important clue [or] investigative tool.” Id. at 3227.
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We conclude that claims 1–10 are directed to a mere mental process.
Therefore, we will sustain the Examiner’s rejection of claims 1–10 under
35 U.S.C. § 101.
DECISION
The Examiner’s rejections of claims 1-19 and 24-27 under 35 U.S.C.
§ 103(a) are affirmed.
The Examiner’s rejection of claims 1-10 under 35 U.S.C. § 101 is
affirmed.
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).

AFFIRMED

rvb