Ex Parte Brandis et al

Patent Trial and Appeal Board

Dec 9, 2016

13079327 (P.T.A.B. Dec. 9, 2016)

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.
13/079,327 04/04/2011 Robert Craig Brandis P1700-R 9533
23735 7590 12/13/2016
DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON, OR 97008
EXAMINER
HUYNH, LINDA TANG
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
12/13/2016 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):
dl-patentnotice @ digimarc .com
lisa.parkinson@digimarc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT CRAIG BRANDIS and
TONY F. RODRIGUEZ
Appeal 2016-002025
Application 13/079,3271
Technology Center 2100
Before ERIC S. FRAHM, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—6, 16, 18, and 19, all claims pending in the
application. Appellants have canceled claims 7—15 and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Digimarc Corp. App.
Br. 3.
Appeal 2016-002025
Application 13/079,327
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions relate to methods for
"smartphone gestural user interface operations that can be used with printed
documents and other tangible objects." Abstract.
Exemplary Claims
Claims 1, 4, and 16, reproduced below, are representative of the
subject matter on appeal (emphases and labeling added to contested
limitations):
1. A user interface method for browsing items on a
printed page using a camera- and screen-equipped smartphone,
the method including the acts:
displaying, on said screen, imagery of said page captured
by said camera;
sending page identification data, based on captured page
imagery, from the smartphone to a remote server, and receiving
information in response that defines both (a) location of a two-
dimensional rollover zone within said page, and (b) particular
functionality associated therewith, said zone comprising less
than a full extent of said page;
presenting a cursor on said screen, as an overlay on said
displayed page imagery, the cursor residing at a fixed position
on said screen, but overlaying different positions within said
displayed page as the smartphone is moved relative to the page;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
May 12, 2015); Reply Brief ("Reply Br.," filed Dec. 7, 2015); Examiner's
Second Answer ("Ans.," mailed Dec. 7, 2015); Final Office Action ("Final
Act.," mailed Nov. 20, 2014); and the original Specification ("Spec.," filed
Apr. 4, 2011).
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analyzing page imagery captured by the smartphone
camera to discern a pose of the printed page relative to the
smartphone, and thereby to determine a position of the overlaid
cursor within said displayed page;
[LI] as the smartphone is moved relative to the page,
sensing that the determined position of the overlaid cursor
enters said two-dimensional rollover zone of said page, and
changing a form of the presented cursor in response to such
entry,
[L2] wherein the changed form of the smartphone cursor
signals to a user that the smartphone has been moved to a
position relative to the printed page at which some particular
position-dependent functionality has become available.
4. The method of claim 1 that further includes:
after said changing a form of the cursor, logging
information associated with the rollover zone, and providing
such logged information to a data store remote from the
smartphone, to enable study of user behavior.
16. The method of claim 1 in which the received
information includes X- and Y-position information that defines
said rollover zone.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Bresler et al. ("Bresler") US 2003/0152293A1 Aug. 14, 2003
Rhoads et al. ("Rhoads") US 2005/0213790A1 Sept. 29, 2005
Applicants' Admitted Prior Spec. p. 1,1. 18 through p. 2,1. 1
Art (hereinafter "AAPA")
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Rejection on Appeal
Claims 1—6, 16, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bresler, Rhoads, and AAPA.
Ans. 3; Final Act. 3.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 9-18), we decide the
appeal of the obviousness rejection of claims 1—3, 5, 18, and 19 on the basis
of representative claim 1; we decide the appeal of the obviousness rejection
of claims 4 and 6 on the basis of representative claim 4; and we decide the
appeal of the obviousness rejection of separately argued dependent claim 16,
infra?
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1—6,
16, 18, and 19, and we incorporate herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellants' arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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However, we highlight and address specific findings and arguments
regarding claims 1, 4, and 16 for emphasis as follows.
1. $103 Rejection of Claims 1—3, 5, 18, and 19
Issue 1
Appellants argue (App. Br. 9-14; Reply Br. 3—7) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Bresler, Rhoads, and AAPA is in error. These contentions
present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests "[a] user interface method for browsing items on a
printed page using a camera- and screen-equipped smartphone, the method
including the acts" of, inter alia,
as the smartphone is moved relative to the page, sensing
that the determined position of the overlaid cursor enters said
two-dimensional rollover zone of said page, and changing a
form of the presented cursor in response to such entry;
wherein the changed form of the smartphone cursor
signals to a user that the smartphone has been moved to a
position relative to the printed page at which some particular
position-dependent functionality has become available,
as recited in claim 1?
(b) Did the Examiner err in combining the cited prior art to reject
claim 1 under § 103 because, purportedly, the Examiner's rejection "is also
deficient for its lack of a k/S7?-adequate 'articulated reasoning with some
rational underpinning to support the legal conclusion' of obviousness?"
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Analysis
(a)
Limitation LI—"Changing a Form of the Presented Cursor"
Appellants contend none of the cited prior art "includes the key
ingredient — changing the form of a cursor presented with print media."
App. Br. 11. Further, Appellants argue the Examiner's rejection "relies on
electronic documents for its showing of a form changing cursor. But claim 1
requires such behavior with a printed page. None of the art shows this." Id.
Our reviewing court guides, "[i]n the patentability context, claims are
to be given their broadest reasonable interpretations . . . limitations are not to
be read into the claims from the specification." In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning
assigned to a term "must be sufficiently clear in the specification that any
departure from common usage would be so understood by a person of
experience in the field of the invention." Multiform Desiccants, Inc. v.
Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer
v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A
patentee may act as its own lexicographer and assign to a term a unique
definition that is different from its ordinary and customary meaning;
however, a patentee must clearly express that intent in the written
description."). Absent an express intent to impart a novel meaning to a
claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
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We note limitation LI of claim 1 recites, "as the smartphone is moved
relative to the page, sensing that the determined position of the overlaid
cursor enters said two-dimensional rollover zone of said page, and changing
a form of the presented cursor in response to such entry."
We disagree with Appellants arguments above, and specifically
disagree with Appellants' contentions (App. Br. 11) "there is no suggestion
in Bresler—nor any detailed in other of the cited art—as to how a printed-
on-plastic arrow could be modified to yield a cursor whose appearance
changes dynamically based on movement relative to a printed page."
We agree with the Examiner's findings that, while Bresler "depicts an
arrow printed on Plexiglass," the Examiner relies upon "the image captured
by the imager containing the arrow as recited by Bresler to teach the
presented cursor . . . [whose position is used] to determine which action to
trigger as the user moves the device across the page." Ans. 14 (citing App.
Br. 10; Bresler H 138-139). In further support of the Examiner's finding
regarding Bresler's disclosure, we note Bresler also teaches:
The human reader points the pointing device at a position of
interest on the page (e.g., either a word or phrase, or a graphical
element.) This pointing device could include an arrow,
crosshair, short vertical line or other clearly visible fixed
reference point to help the reader indicate the place of interest
on the page. In the case of a dedicated device, the image of the
pointer itself may or may not be superimposed on the image of
the page, since the system has a built-in fixed reference point
that can unambiguously indicate the user's area of interest.
Bresler 1138 (cited by the Examiner, see Final Act.3—5; Ans. 3—5)
(emphasis added).
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Thus, in light of Bresler's disclosure cited above, we do not find
Appellants' argument "[t]he modification of Bresler contemplated by the
Final Rejection would wholly change its principle of operation (e.g., from a
fixed arrow painted on plastic, to an electronically-displayed changeable
cursor)" (App. Br. 12) to be persuasive.
Accordingly, we agree with the Examiner's finding that Bresler
teaches or at least suggests limitation LI, as recited in claim 1.
Limitation L2—"changed form of the smartphone cursor signals ..."
Appellants contend none of the cited prior art teaches the concluding
"wherein" clause of claim 1, i.e., limitation L2, "wherein the changed form
of the smartphone cursor signals to a user that the smartphone has been
moved to a position relative to the printed page at which some particular
position-dependent functionality has become available." Appellants further
argue, "Bresler does not employ a changed-form cursor to signal a user that
some position-dependent functionality has become available. (Nor is this
limitation taught by AAPA, which is silent concerning a smartphone, and
silent concerning a printed page.)." App. Br. 13.
Because the Examiner rejects the claims as obvious over the
combined teachings of Bresler, Rhoads, and AAPA, the test for obviousness
is not what the references show individually but what the combined
teachings would have suggested to one of ordinary skill in the art. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner relies upon Bresler for teaching or suggesting a
smartphone used with a printed page, as claimed, including the features
discussed above, and the Examiner cites AAPA as teaching the
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conventionally well-known technique of using a changed form cursor to
signal a user that some position-dependent functionality has become
available. Final Act. 6—7; Ans. 15.
Accordingly, we agree with the Examiner's finding that AAPA, in
combination with Bresler and Rhoads, teaches or at least suggests limitation
L2, as recited in claim 1.
(b)
Lack of Articulated Reasoning to Combine the References
Appellants contend the Examiner erred in combining Bresler, Rhoads,
and AAPA because of a purportedly deficient "k/STCadequate articulated
reasoning with some rational underpinning to support the legal conclusion'
of obviousness." App. Br. 13.
In KSR, the Court stated "[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
416(2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill .... [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
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Id. at 417. Further, the relevant inquiry is whether the Examiner has set
forth "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Appellants first contend the motivation to combine Rhoads with
Bresler is deficient because the Examiner's stated basis, "to facilitate image
processing," does not meet KSR's articulated reasoning requirement. App.
Br. 14. Appellants also argue "[t]he second rationale (to combine Rhoads +
Bresler with AAPA) is likewise deficient" because "it is silent about the
necessary modification . . . [which] is not taught by the art, nor explained by
the Office . . . [such that] the rationale supporting the proposed combination
is inadequate." Id.
The Examiner finds:
Bresler and Rhoads are analogous art because they are
from a similar field of endeavor of processing printed materials.
Thus, it would have been obvious to a person of ordinary skill
in the art, having the teachings of Bresler and Rhoads before
him at the time the invention was made, to modify the device as
disclosed by Bresler to the device to discern a pose of the
printed page relative to the device as taught by Rhoads.
One of ordinary skill in the art would be motivated to
modify Bresler as described above to facilitate image
processing [Rhoads, para 0108].
Final Act. 6. Further,
Bresler, Rhoads, and AAPA are analogous art because
they are from a similar field of endeavor of pointer devices.
Thus, it would have been obvious to a person of ordinary skill
in the art, having the teachings of Bresler, Rhoads, and AAPA
before him at the time the invention was made, to modify the
device as disclosed by Bresler and Rhoads to changing a form
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of the presented cursor in response to such entry; wherein the
changed form of the cursor signals to a user that some particular
position dependent functionality has become available as taught
by AAPA.
One of ordinary skill in the art would be motivated to
modify Bresler and Rhoads as described above to indicate an
active zone [AAPA, pg. 1, line 24].
Final Act. 7.
We find these findings of motivation meet the articulated reasoning
and rational underpinning requirements of KSR, cited above.
Moreover, Appellants have presented no evidence that combining the
smartphone/PDA of Bresler, with Rhoads teaching of discernment of the
pose of the printed page relative to the device, and AAPA's teaching of
changing the shape of the cursor when in an active zone was "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., Inc. 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
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Examiner's obviousness rejection of independent claim 1, and grouped
claims 2, 3, 5, 18, and 19 which fall therewith. See Claim Grouping, supra.
2. $103 Rejection of Claims 4 and 6
Issue 2
Appellants argue (App. Br. 15—16; Reply Br. 7) the Examiner's
rejection of claim 4 under 35 U.S.C. § 103(a) as being obvious over the
combination of Bresler, Rhoads, and AAPA is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[t]he method of claim 1 that further includes . . . after said
changing a form of the cursor, logging information associated with the
rollover zone, and providing such logged information to a data store remote
from the smartphone, to enable study of user behavior," as recited in
claim 4?
Analysis
With respect to claim 4, Appellants contend "Rhoads does not teach
'logging information associated with the rollover zone. and providing such
logged information to a data store remote from the smartphone, to enable
study of user behavior.'" App. Br. 15.
We disagree with Appellants' contentions because, again, Appellants
are arguing the references separately, and the test for obviousness is not
what the references show individually but what the combined teachings
would have suggested to one of ordinary skill in the art. See In re Merck,
800 F.2d at 1097.
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In the "Response to Argument" section of the Answer, the Examiner
finds the "identifier information" of Rhoads is "associated with an area
within a print medium that is captured by the user device," and cites
paragraphs 442, 450, and 452 of Rhoads as therefore teaching or suggesting
"logging information associated with the rollover one . . . ," as recited in
claim 4. Ans. 19. We agree with the Examiner's findings.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 4, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 4, and grouped claim 6
which falls therewith. See Claim Grouping, supra.
3. $103 Rejection of Claim 16
Issue 3
Appellants argue (App. Br. 16—17; Reply Br. 8—9) the Examiner's
rejection of claim 16 under 35 U.S.C. § 103(a) as being obvious over the
combination of Bresler, Rhoads, and AAPA is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[t]he method of claim 1 in which the received information
includes X- and Y-position information that defines said rollover zone," as
recited in claim 16?
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Analysis
Appellants contend the Examiner's citation of Rhoads paragraph 241
as teaching or suggesting the contested limitation of claim 16 is in error
because Rhoads "is silent on defining a rollover zone . . . [but instead is
concerned with] movement of a single point within an X-Y - coordinate
system . . . [and] does not relate to defining a two dimensional area." App.
Br. 17.
In response, the Examiner finds, and we agree, the combination of
Bresler and Rhoads is relied upon to teach or suggest the contested
limitation of claim 16, in that Bresler teaches hotspots (paragraph 68), and
Rhoads paragraph 241 teaches or suggests "indicating an object's position
within a frame of data with X-Y position information." Ans. 19—20.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest disclose
the disputed limitation of claim 16, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 16.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 3—9) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
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CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1—6, 16, 18, and 19 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1—6, 16, 18,
and 19.
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
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