Ex Parte Beardsley et alDownload PDFPatent Trial and Appeal BoardJan 23, 201813742256 (P.T.A.B. Jan. 23, 2018) Copy Citation 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. 13/742,256 01/15/2013 Paul Beardsley DISNEY-0600-US 1918 94468 7590 01/25/2018 DTSNFY FNTFRPRTNFN TNC EXAMINER c/o Patent Ingenuity, P.C. 9701 Wilshire Blvd., Suite 1000 TSAI, TSUNG YIN Beverly Hills, CA 90212 ART UNIT PAPER NUMBER 2668 NOTIFICATION DATE DELIVERY MODE 01/25/2018 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): ssimpson@patentingenuity.com patents@patentingenuity.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL BEARDSLEY, ANSELM GRUNDHOEFER, and DANIEL REETZ Appeal 2017-007698 Application 13/742,256 Technology Center 2600 Before ST. JOHN COURTENAY III, NORMAN H. BEAMER, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) from a final rejection of claims 1-37, i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). 1 Appellants identify the real party in interest as Disney Enterprises, Inc., a wholly owned subsidiary of The Walt Disney Company. App. Br. 2. Appeal 2017-007698 Application 13/742,256 STATEMENT OF THE CASE The Invention According to the Specification, the invention “generally relates to the field of image capture systems” and more particularly “relates to camera calibration.” Spec. ^ 2.2 The Specification explains that “a code is emitted” by a calibration device and detected by an image-capture device, and “[t]he code indicates the three-dimensional coordinate position of the calibration device.” Abstract. The Specification also explains that “the calibration device comprises at least one light emitter that emits a code to an image capture device.” Spec. ^ 10. Exemplary Claims Independent claims 1 and 18 exemplify the claims at issue and read as follows: 1. A calibration device comprising: a controller that determines a three-dimensional coordinate position of the calibration device; and at least one light emitter that emits a code to an image capture device, the code indicating the three-dimensional coordinate position of the calibration device. 18. A system comprising: a calibration device that includes a controller and at least one light emitter, the controller determining a three-dimensional coordinate position of the calibration device, the at least one light emitter emitting a code to an image capture device, the 2 This decision uses the following abbreviations: “Spec.” for the Specification, filed January 15, 2013; “Final Act.” for the Final Office Action, mailed June 23, 2016; “App. Br.” for the Appeal Brief, filed December 20, 2016; “Ans.” for the Examiner’s Answer, mailed March 6, 2017; and “Reply Br.” for the Reply Brief, filed April 24, 2017. 2 Appeal 2017-007698 Application 13/742,256 code indicating the three-dimensional coordinate position of the calibration device; and an image capture device that includes an image capture sensor and a controller, the image capture sensor capturing an image of light emitted from a calibration device, the light including the code, the controller calibrating an image capture device three-dimensional coordinate position of the calibration device according to the real world three-dimensional coordinate position of the calibration device indicated by the code. App. Br. 10, 12 (Claims App.). The Rejection on Appeal Claims 1-37 stand rejected under 35 U.S.C. § 102(b) as anticipated by Zalewski et al. (US Patent Application Publication US 2006/0252475 Al, published November 9, 2006) (“Zalewski”). Final Act. 3-7. ANALYSIS We have reviewed the rejection of claims 1-37 in light of Appellants’ arguments that the Examiner erred. Based on the record before us and for the reasons explained below, we concur with Appellants’ contentions that the Examiner erroneously found that the cited portions of Zalewski disclose a calibration device that determines its three-dimensional coordinate position and emits light encoded to indicate its three-dimensional coordinate position. For the reasons explained below, however, the light encoded to indicate the calibration device’s three-dimensional coordinate position patentably distinguishes only some claims from Zalewski. 3 Appeal 2017-007698 Application 13/742,256 The § 102(b) Rejection of Claims 1—37 Determining the Calibration Device’s Three-Dimensional Coordinate Position Appellants assert that the Examiner erred in rejecting claim 1 because Zalewski’s inertial sensors (1) cannot “measure constant linear velocity and so could move undetected through extreme distances in a coordinate space without producing a signal” and (2) “do not determine any type of position within a three-dimensional coordinate system.” App. Br. 5-6. Appellants also assert that Zalewski’s inertial sensors “may be positioned in two completely different locations in a room having a three-dimensional coordinate system but may yield the same rotation measurements at those completely different locations.” Reply Br. 2. According to Appellants, “the three-dimensional coordinates of the inertial sensor are not germane to its measurements.” Id. The Examiner finds that Zalewski discloses inertial sensors, e.g., accelerometers and gyroscopes, for providing information on six degrees of freedom, such as translations along X, Y, and Z axes as well as rotations about X, Y, and Z axes. Final Act. 2-3 (citing Zalewski ^ 63, 76, 104, Figs. 2-6); see Ans. 4 (citing Zalewski 63); Zalewski 63. The Examiner also finds that “those skilled in the art would understand that X,Y,Z is the same as three-dimensional coordinate position.” Final Act. 2. The Examiner reasons that “the inertial sensor must know its current 3D coordinate [position] in order t[o] give those translation^] and rotation[s]” meaning “by calculating the difference between” the initial and changed positions in the 3D coordinate system. Ans. 4. 4 Appeal 2017-007698 Application 13/742,256 We agree with the Examiner. Zalewski explains that “tracking is not limited to video.” Zalewski 60. Zalewski discloses accomplishing tracking “by numerous ways,” including image analysis, inertial analysis, and acoustic analysis as well as a hybrid or mixed image-inertial-acoustic analysis. Id. For example, an “inertial analyzer” may track an “input device for inertial activity” and convey the tracking information for use by the system. Id. ^ 62. Further, a “game controller may include one or more inertial sensors” that “provide position and/or orientation information to a processor” for use by the system. Id. ^ 66. Moreover, the game controller may contain a processor-implemented “inertial analyzer.” Id. ^ 64. Accordingly, Zalewski discloses: (1) tracking three-dimensional coordinate positions through “inertial analysis” using inertial sensors, including accelerometers and gyroscopes; and (2) a processor-implemented “inertial analyzer” in a game controller for providing position information, i.e., three- dimensional coordinate positions. Zalewski ^ 60, 62-66. Appellants’ assertions regarding deficiencies with Zalewski’s inertial sensors disregard conventional inertial navigation equipment where “accelerations are sensed dynamically by devices stabilized with respect to inertial space, and the navigational quantities (such as vehicle velocity, angular orientation, or positional information) are determined by computers and/or other instrumentation.” IEEE 100 The Authoritative Dictionary of IEEE Standards Terms 552 (7th ed. 2000). Emitting a Code Indicating the Calibration Device’s Three-Dimensional Coordinate Position Appellants argue that the Examiner erred in rejecting claim 1 because Zalewski does not disclose “at least one light emitter that emits a code to an 5 Appeal 2017-007698 Application 13/742,256 image capture device, the code indicating the three-dimensional coordinate position of the calibration device,” as recited in claim 1. See App. Br. 6-7; Reply Br. 3—4. In particular, Appellants contend that “the three-dimensional coordinate position” of Zalewski’s game controller “is determined via image analysis” by Zalewski’s image-capture device and computer system “rather than being emitted in a code via a light emitter.” App. Br. 6; see Reply Br. 4. Although Appellants concede that Zalewski describes LED emissions, Appellants contend that the LED emissions do not communicate the three-dimensional coordinate position of Zalewski’s controller. App. Br. 6 ; see Reply Br. 3—4. Further, Appellants assert that Zalewski’s telemetry signal “simply does not contain any type of encoded three- dimensional coordinate position.” Reply Br. 3. The Examiner finds that Zalewski’s game controller “obtains data values such as its position, coordinates, and movement within the 3D coordinate system” using “inertial sensors such as accelerator, gyroscope and til[t] sensor to detect the translations, rotations and displacement differences within the 3D coordinate system.” Ans. 5 (citing Zalewski Tflj 63, 66, 68). The Examiner further finds that LEDs mounted on the controller “generate infrared or visible light for [the] purpose of transmitting telemetry signal[s], wherein said transmission encodes and modulates data such as player ID, speed of tracking, lighting condition, number of controller, tracking information such as coordinates of the controller for data transmission.” Id. at 6 (citing Zalewski ]fl[ 104-105). Based on the record before us, we agree with Appellants that the Examiner has not adequately explained how the cited portions of Zalewski disclose a calibration device that determines its three-dimensional coordinate 6 Appeal 2017-007698 Application 13/742,256 position and emits light encoded to indicate its three-dimensional coordinate position. In particular, the cited portions of Zalewski do not disclose that the game controller uses a light emitter to transmit a code indicating its three- dimensional coordinate position. See Zalewski 60, 63-64, 66-68, 76-77, 99, 103-105. For example, Zalewski paragraph 104 explains that “player number selection corresponds to a unique pattern or modulation of LEDs” and “the LEDs may encode information representative of the player I.D.” Zalewski 104. But paragraph 104 does not discuss encoding a three- dimensional coordinate position. Id. Instead, a video-capture device employs image analysis to compute “tracking parameters” for each player’s game controller. Id. 104-105. As a matter of claim construction, however, we conclude that the claimed light encoded to indicate the calibration device’s three-dimensional coordinate position constitutes nonfunctional descriptive material (NFDM), i.e., analogous to printed matter, if the informational content of the data (e.g., “the code indicating the three-dimensional coordinate position of the calibration device” in claim 1) is not positively recited as actually used to change or affect the manner in which a function is performed by a structural element in an apparatus claim, or the manner in which a step or act is performed in a method claim. “[A] limitation is printed matter only if it claims the content of information.” In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Here, the claimed light codes are analogous to printed matter to the extent they contain informational content (i.e., data) indicating “the three- dimensional coordinate position of the calibration device.” For example, a 7 Appeal 2017-007698 Application 13/742,256 three-dimensional coordinate position could be written on paper (as printed matter) or emitted (i.e., transmitted) as data by modulating light according to a particular code (NFDM). We conclude that the emitted light codes in independent claims 1, 36, and 37 are NFDM, because such emitted light codes are not positively recited as actually used to change or affect a function performed by a particular structural element in these apparatus claims. App. Br. 10-15 (Claims App.). Where the printed matter has no functional or structural relation to its substrate, “the printed matter will not distinguish the invention from the prior art in terms of patentability.” DiStefano, 808 F.3d at 848, 850-51 (quoting In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)). Here, claims 1,36, and 37 similarly do not require that the emitted light codes change or affect any function performed by any structural element of the claimed apparatus. These claims require nothing after the calibration device emits the encoded light. Because the emitted light codes in claims 1, 36, and 37 are not positively recited as actually used to change or affect any function performed by any structural element of the claimed apparatus, they do not impart patentable weight. See, e.g., AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064-65 (Fed. Cir. 2010); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278-79 (Fed. Cir. 2010); In re Ngai, 367 F.3d 1336, 1338-39 (Fed. Cir. 2004); Ex parte Nehls, 88 USPQ2d 1883, 1888-90 (BPAI 2008) (precedential) (“[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process.”); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), affd, 191 F. App’x 959 (Fed. Cir. 2006). 8 Appeal 2017-007698 Application 13/742,256 Thus, we sustain the § 102(b) rejection of claims 1, 36, and 37. Consistent with the Federal Circuit’s reasoning in Ngai, we conclude that permitting the claimed light codes to impart patentable weight would mean that “anyone could continue patenting a product indefinitely provided that” it emitted light codes with new content. See Ngai, 367 F.3d at 1339. This application of the printed-matter doctrine “prevents] the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.” See King Pharm., 616 F.3d at 1279. Claims 2-12 depend directly or indirectly from claim 1. Appellants do not argue patentability separately for these dependent claims. App. Br. 7; Reply Br. 2-4. Because Appellants do not argue the claims separately, we sustain the § 102(b) rejection of these dependent claims for the same reasons as claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). In contrast to claims 1, 36, and 37, independent apparatus claims 13 and 18 positively recite that the emitted light codes are actually used by a controller for calibrating an image capture device “according to the real world three-dimensional coordinate position of the calibration device indicated by the code.” Similarly, independent method claim 27 positively recites that the informational content of the emitted light codes is used to affect the calibration step: “calibrating an image capture device three- dimensional coordinate position of the calibration device according to the real world three-dimensional coordinate position of the calibration device indicated by the code.” App. Br. 13 (Claims App.) (emphasis added). Consequently, the claimed light codes impart patentable weight and distinguish claims 13, 18, and 27 from Zalewski. Hence, we do not sustain the § 102(b) rejection of claims 13, 18, and 27. 9 Appeal 2017-007698 Application 13/742,256 Claims 14-17, 19-26, and 28-35 depend directly or indirectly from claims 13, 18, and 27, respectively. For the reasons discussed regarding the independent claims, we do not sustain the § 102(b) rejection of these dependent claims. DECISION We reverse the Examiner’s decision to reject claims 13-35. We affirm the Examiner’s decision to reject claims 1-12, 36, and 37. We designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. §41.50(b). Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THIS 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”: (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. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . 37 C.F.R. §41.50(b). Further guidance for responding to a new ground of rejection appears in Manual of Patent Examining Procedure § 1214.01. 10 Appeal 2017-007698 Application 13/742,256 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) 11 Copy with citationCopy as parenthetical citation